OPPOSITION No B 2 266 206

C.M. Capital Markets Holding, S.A., Ochandiano, 2 (El Plantio), 28023 Madrid, Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative)

a g a i n s t

Capi-Lux Investments B.V., Rondeboslaan 35, 9936 BJ Farmsum, The Netherlands (holder), represented by Baker & McKenzie Amsterdam N.V., Claude Debussylaan 54, 1082 MD Amsterdam, The Netherlands (professional representative).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 266 206 is partially upheld, namely for the following contested goods and services:

Class 9:         Computers, computer equipment and computer programs; computer games [software]; telephone apparatus including telephone apparatus for home use and other telecommunication devices; mobile phones, audio equipment and their parts, computers, laptops, tablets and other mobile audio and telecom equipment.

Class 35:         Advertising, market research and studies, public relations, sales promotion for others; advice for sales promotion, exhibitions for commercial or advertising purposes; business management and business administration; administrative services provided in connection with the drafting and concluding of franchise agreements relating to the goods mentioned in class 9 (“franchising”); all the aforesaid services also via electronic channels, including the Internet.

2.        International registration No 1 168 085 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 168 085. The opposition is based on, inter alia, European Union trade mark registration No 4 304 416. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade marks on which the opposition is based, European Union trade marks No 3 404 662, No 4 796 504 and No 4 796 272 and Spanish trade marks No 2 308 520, No 2 000 044 and No 2 000 046.

The request was filed in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

On 21/01/2016, the opponent was given two months to file the requested proof of use; the deadline was extended at the request of the opponent until 21/05/2016.

The opponent did not furnish any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

The Opposition Division will now examine the opposition based on European Union trade mark registration No 4 304 416.

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 4 304 416.

1. The goods and services

The services on which the opposition is based are the following:

Class 35: Cost-price analysis; business management and organisation consultancy; industrial management assistance; professional business consultancy, personnel recruitment, personnel management; accountancy; tax preparation; statistical information services; marketing studies.

Class 36: Actuarial services; financial management; agencies for debt and rent collection; Analysis (financial -); stocks and bonds brokerage; issue of tokens of value; fiscal and financial estimates and evaluations; fiscal assessments; investment trust and holding company services; financial and monetary services; mutual funds and capital investment; exchange rates, stock exchange quotations.

Class 42: Industrial analysis and research services; designing and development of computers; computer programming services; studies, analysis, design of software projects and computer systems; consultancy relating to computers, rental of computers; computer software; webpage creation and design; Scientific and technological research and design relating thereto; industrial analysis and research services; legal services; all of these services exclusively in the field of financial affairs.

The contested goods and services are the following:

Class 9: Electrical apparatus not included in other classes; radio and television equipment and other apparatus for recording, transmission and reproduction of sound and/or images; computers, computer equipment and computer programs; computer games [software]; calculators, telephone apparatus including telephone apparatus for home use and other telecommunication devices; electronic apparatus and their parts, audio equipment and their parts, computers, laptops, tablets and other mobile audio and telecom equipment; cameras and digital cameras, lenses for cameras, camcorders, digital camcorders, memory cards, binoculars, mobile phones, video, audio and other data carriers in electronic, magnetic, optical or other form, including cassettes, compact discs, video compact discs (video discs), CD-I and CD-ROMs, DVDs.

Class 35: Business intermediary services related to wholesale and retail in the field of electrical and electronic equipment and accessories as well as recording media and data media, audiovisual equipment, computers, telecommunications equipment, such as laptops, tablets, phones, cameras and digital cameras, and other mobile audio and telecom equipment, radio and television equipment and other apparatus for recording, transmission and reproduction of sound and/or image, phone equipment and other devices (tele) communications; advertising, market research and studies, public relations, sales promotion for others; advice for sales promotion, exhibitions for commercial or advertising purposes; business management and business administration; the bringing together for the benefit of others of goods mentioned in classes 9 and 28 excluding the transport thereof enabling customers to conveniently view and purchase those goods; administrative services provided in connection with the drafting and concluding of franchise agreements relating to the goods mentioned in class 9 (“franchising”); all the aforesaid services also via electronic channels, including the Internet.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the holder’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘exclusively’, used in the opponent’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested telephone apparatus including telephone apparatus for home use and other telecommunication devices; mobile phones are similar to the opponent’s design of software projects and computer systems in Class 42 in spite of the fact that the goods of the earlier right are used exclusively in the field of financial affairs. Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

The contested computer games [software]; computer programs; computers, computer equipment; audio equipment and their parts, computers, laptops, tablets and other mobile audio and telecom equipment are similar to the opponent’s computer programming services in Class 42. Computer programming services and computer systems are closely linked to computers and software. This is because manufacturers of computers and/or software will also commonly provide computer- and/or software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

The contested electrical apparatus not included in other classes; radio and television equipment and other apparatus for recording, transmission and reproduction of sound and/or images; calculators, electronic apparatus and their parts; cameras and digital cameras, lenses for cameras, camcorders, digital camcorders, memory cards, binoculars, video, audio and other data carriers in electronic, magnetic, optical or other form, including cassettes, compact discs, video compact discs (video discs), CD-I and CD-ROMs, DVDs are dissimilar to all the opponent’s services. They are provided by different undertakings, they are sold through different distribution channels, and they have different natures and purposes.

Contested services in Class 35

Business management is identically contained in both lists of services.

The contested business administration; administrative services provided in connection with the drafting and concluding of franchise agreements relating to the goods mentioned in class 9 (“franchising”); all the aforesaid services also via electronic channels, including the Internet are included in the broad category of the opponent’s professional business consultancy. Therefore, they are identical.

The contested administrative services provided in connection with the drafting and concluding of franchise agreements relating to the goods mentioned in class 9 (“franchising”); all the aforesaid services also via electronic channels, including the Internet are included in the broad category of the opponent’s professional business consultancy. Therefore, they are identical.

The contested market research and studies are identical to the opponent’s marketing studies.

The contested advertising, public relations, sales promotion for others; advice for sales promotion, exhibitions for commercial or advertising purposes are similar to a low degree to the opponent’s business management.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business.

When comparing business management with advertising (and such related activities as public relations, sales promotion, etc.), advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they are similar to a low degree.

The contested business intermediary services related to wholesale and retail in the field of electrical and electronic equipment and accessories as well as recording media and data media, audiovisual equipment, computers, telecommunications equipment, such as laptops, tablets, phones, cameras and digital cameras, and other mobile audio and telecom equipment, radio and television equipment and other apparatus for recording, transmission and reproduction of sound and/or image, phone equipment and other devices (tele) communications; the bringing together for the benefit of others of goods mentioned in classes 9 and 28 excluding the transport thereof enabling customers to conveniently view and purchase those goods are dissimilar to all the opponent’s services. They are provided by different undertakings, they are sold through different distribution channels, and they have different natures and purposes.

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 goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication or terms and conditions of the purchased goods and services.

3. The signs

CAPI
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 earlier mark is a word mark, ‘CAPI’, which means bosses or chiefs in Italian; however, it is meaningless in the other languages of the relevant territory.

The contested sign is a figurative sign composed of a verbal element, the word ‘CAPI’, in stylised white upper case letters inside a black circle, and above the verbal element is a white circle similar resembling a globe. The word ‘CAPI’ has the meaning given above, and a part of the relevant public might associate the white circle with the concept of the world.

Both signs are meaningless for the goods and services at issue; therefore, they have a normal degree of distinctiveness.

The contested sign has no elements that could be considered clearly more distinctive than other elements.

The earlier mark and the contested sign have no elements that could be considered clearly more dominant than other elements.

As regards the figurative elements in the contested sign, it should be taken into account that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the word ‘CAPI’, which is the only verbal element in both signs and which will have a greater impact on the public than the other, figurative, elements of the contested sign. They differ in the figurative elements, described above, of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛CAPI’, present identically in both signs, which constitute the entire earlier sign and the only verbal element in the contested sign.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as meaning ‘bosses’ or ‘chiefs’, the signs are conceptually identical for the Italian-speaking part of the public, and similar for the part of the Italian-speaking public that associates the white circle in the contested sign with the concept of the world.

Part of the relevant non-Italian-speaking public might associate the white circle in the contested sign with the concept of the world. Since one of the signs will not be associated with any meaning for that part of the public, the signs are not conceptually similar.

For the rest of the public in the relevant territory, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 any of the goods and 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 contested goods are partly identical, partly similar and partly dissimilar and the contested services are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s services.

The signs are visually similar to a high degree, aurally identical and conceptually identical for a part of the relevant public (the Italian-speaking public). The word ‘CAPI’ of the earlier mark is entirely contained within the contested sign, as its sole verbal element.

Although the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect, 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).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Since the differences between the marks (the stylisation and the figurative elements) are clearly insufficient to outweigh the high degree of similarity between them, they will most probably go unnoticed by the relevant public.

In its observations, the holder argues that it owns several registrations containing the word ‘CAPI’ registered with the Benelux Register Office and WIPO, some of which coexist with the opponent’s earlier marks.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the holder must be rejected as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 4 304 416.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to different degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

European Union trade mark registration No 4 304 986 for the figurative mark .

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements such as a rectangle with a ‘C’ inside it, and a decorative blue line, which are not present in the contested trade mark. Moreover, it covers the same scope of services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

The Opposition Division will now examine the opposition on the ground of Article 8(5) EUTMR in relation to the remaining contested goods and services, which are dissimilar and for which the opposition has not been successful under Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The Opposition Division will examine the opposition in relation to earlier European Union trade marks No 4 304 416 and No 4 304 986, for which the opponent claimed repute in Spain for the following services:

Class 35: Cost-price analysis; business management and organisation consultancy; industrial management assistance; professional business consultancy, personnel recruitment, personnel management; accountancy; tax preparation; statistical information services; marketing studies.

Class 36: Actuarial services; financial management; agencies for debt and rent collection; Analysis (financial -); stocks and bonds brokerage; issue of tokens of value; fiscal and financial estimates and evaluations; fiscal assessments; investment trust and holding company services; financial and monetary services; mutual funds and capital investment; exchange rates, stock exchange quotations.

Class 42: Industrial analysis and research services; designing and development of computers; computer programming services; studies, analysis, design of software projects and computer systems; consultancy relating to computers, rental of computers; computer software; webpage creation and design; Scientific and technological research and design relating thereto; industrial analysis and research services; legal services; all of these services exclusively in the field of financial affairs.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 12/05/2014 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit, extended at the request of both parties, expired on 03/11/2015.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded, insofar as these grounds are concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Liliya YORDANOVA

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Dorothee SCHLIEPHAKE

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.