OPPOSITION No B 2 770 892

The Chancellor, Masters and Scholars of the University of Cambridge, The Old Schools, Cambridge CB2 1TN, United Kingdom (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

Cambridge Academy of Education and Technology Ltd, Suite G7, Gemini House Sunrise Parkway, Milton Keynes MK14 6LS, United Kingdom (applicant), represented by Kai Xiao, Cambridge Academy of Education and Technology Ltd, Suite G7, Gemini House Sunrise Parkway, Milton Keynes MK14 6LS, United Kingdom (employee representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 770 892 is upheld for all the contested services.

2.        European Union trade mark application No 15 219 827 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 219 827. The opposition is based on, inter alia, European Union trade mark registration No 12 019 733. The opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 019 733.

1. The services

The services on which the opposition is based are, among others, the following:

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; academies [education]; arranging and conducting of colloquiums; arranging and conducting of workshops [training]; arranging and conducting of congresses; arranging and conducting of conferences; arranging and conducting of seminars; arranging and conducting of symposiums; boarding schools; schools; club services [entertainment or education]; coaching [training]; correspondence courses; distance learning courses; education information; educational examination; electronic desktop publishing; game services provided on-line from a computer network; holiday camp services [entertainment]; holiday camp services [education]; publishing consultancy services; advisory services relating to publishing; publishing services; electronic publishing services; providing electronic publications; publication of printed matter and printed publications; language interpreter services; lending libraries; mobile library services; providing museum facilities; nursery schools; organisation of competitions [education or entertainment]; organisation of exhibitions for cultural or educational purposes; physical education; practical training; production of radio and television programmes; providing online electronic publications, not downloadable; publication of texts, other than publicity texts; publication of books; publication of reference books; publication of directories; publication of manuals; publication of reports; publication of magazines; publication of journals; publication of periodicals; publication of dictionaries; publication of exam papers; publication of lecture notes; publication of worksheets; publication of quizzes; publication of puzzles; publication of examination marking criteria; publication of pamphlets; publication of booklets; publication of flashcards; publication of vocabulary lists; publication of educational material; publication of electronic books online; publication of electronic journals online; publication of electronic reference books online; publication of directories online; publication of manuals online; publication of reports online; publication of magazines online; publication of periodicals online; publication of dictionaries online; publication of exam papers online; publication of lecture notes online; publication of educational worksheets online; publication of quizzes online; publication of puzzles online; publication of examination marking criteria online; publication of pamphlets online; publication of booklets online; publication of flashcards online; publication of vocabulary lists online; publication of educational material online; publishing; services of schools [education]; sport camp services; teaching services; educational services; instruction services; tuition; translation; vocational guidance [education or training advice]; vocational retraining; writing of texts, other than publicity texts; academic examination services; adult education services; analysing educational test scores and data for others; arrangement of training courses; arranging of festivals for educational purposes; bibliographic information; business educational services; business training; certification of education and training awards; computer assisted education services; computer assisted examination services; design of educational courses, examinations and qualifications; development of educational material; educational assessment services; educational examination services; educational research; provision of educational examination facilities; setting of educational standards; university education services; university services; provision of training, teaching, examination and assessment services including such services being provided via computer assisted and computer mediated means and via on-line means; provision of distance learning programmes; information, advisory and consultancy services relating to the aforesaid services.

The contested services are the following:

Class 41:        Education, entertainment and sports; publishing and reporting.        

Education, entertainment and sports; publishing and reporting are identically contained in both lists of services (including synonyms).

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are directed at both the public at large and business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high.

3. The signs

CAMBRIDGE	CAMBRIDGE ACADEMY OF EDUCATION AND TECHNOLOGY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘ACADEMY OF EDUCATION AND TECHNOLOGY’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is the word mark ‘CAMBRIDGE’, while the contested mark is also a word mark, composed of the elements ‘CAMBRIDGE ACADEMY OF EDUCATION AND TECHNOLOGY’.

The word ‘CAMBRIDGE’, contained in both marks, will be associated by the relevant public with ‘a city in eastern England, the county town of Cambridgeshire’ (information extracted from Oxford Dictionaries on 19/07/2017 at https://en.oxforddictionaries.com/definition/cambridge). As this element is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The elements ‘ACADEMY OF EDUCATION AND TECHNOLOGY’ of the contested mark will be understood by the relevant public as referring to an academy offering education and technology services. As all these elements are non-distinctive or weak for all the relevant services, since they clearly indicate the nature and/or subject matter of the services offered, the impact of these non-distinctive elements is limited when assessing the likelihood of confusion between the marks.

The element ‘CAMBRIDGE’ of the contested mark is its most distinctive element.

Neither of the signs has a dominant element.

Visually, the signs coincide in the word ‘CAMBRIDGE’. However, they differ in the additional words ‘ACADEMY OF EDUCATION AND TECHNOLOGY’ of the contested sign. These elements are all weak or non-distinctive, as explained above, and therefore have a very limited impact on the visual comparison.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the word ‛CAMBRIDGE’, present identically in both signs. The pronunciation differs in the sound of the additional words ‘ACADEMY OF EDUCATION AND TECHNOLOGY’ of the contested sign, which have no counterparts in the contested mark. However, as these words are weak or non-distinctive and, as such, play a very limited role in the mark as a whole, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings and differ only in the concepts conveyed by weak or non-distinctive elements, they are conceptually similar to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The services are identical and target the public at large and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

For the relevant public, the signs are visually, aurally and conceptually highly similar, as they have in common the verbal element ‘CAMBRIDGE’, which is the only element of the earlier mark and the most distinctive element of the contested mark. The signs differ in the additional words ‘ACADEMY OF EDUCATION AND TECHNOLOGY’ of the contested mark, which are weak or non-distinctive for all the relevant services.

In addition, account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The fact that the earlier mark is entirely included in the contested sign may lead the public to believe that the goods and services at issue derive, at the very least, from companies that are linked economically, in which case the likelihood of confusion must be held to be established (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 31, 32). Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 019 733. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right European Union trade mark registration No 12 019 733 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) and 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DRAGOSTIN

Cristina CRESPO MOLTÓ

Michaela SIMANDLOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.