OPPOSITION No B 2 521 527

CNC – Communications and Network Consulting AG, Leopold-Palais, Leopoldstraße 10, 80802 Munich, Germany (opponent), represented by Geskes Patent- und Rechtsanwälte, Gustav-Heinemann-Ufer 74b, 50968 Köln, Germany (professional representative)

a g a i n s t

CNC Global Companies Ltd, Igoumenitsas 12, 2027 Strovolos, Nicosia, Cyprus (holder), represented by Jiří Střelák, Šumberova 42, 162 00 Praha 6, Czech Republic (professional representative).

On 20/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 521 527 is upheld for all the contested services, namely:

Class 35:        Economic and business organizational consultancy, business management services and consultancy; business consulting – business management of companies, negotiation of contracts for the purchase and sale of companies, business appraisals, business information, office functions, tax and book-keeping, marketing activities, promotional activities, advertising, market research, personnel management consultancy, demonstration of goods.

2.        International registration No 1 220 204 is refused protection in respect of the European Union for all of the contested services. It may proceed for the remaining services.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the services of international registration designating the European Union No 1 220 204, namely against some of the services in Class 35. The opposition is based on European Union trade mark registration No 11 532 371. The opponent invoked Article 8(1)(b) 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.

1. The services

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

Class 35:        Business management and organisation consultancy; strategic communications consultancy; services of a consultancy, namely optimisation and adaptation of communication structures and business reputations; marketing, namely brand communication and marketing communication, including in digital networks, the aforesaid services not being related to coal; marketing studies, conducting of marketing studies and market analysis, the aforesaid services not being related to mushroom cultivation; opinion polling; efficiency experts; business management consultancy, in particular in reference to strategy and marketing; consultancy with regard to the development of processes for the analysis and the implementation of strategy plans and management projects; services of a consultancy, namely network consultancy; public relations, including on the internet, including in relation to shareholders, investors, analysts and financial media; services of a consultancy, namely lobbying of political decision makers and other individuals; consultancy with regard to corporate identity; consultancy services relating to advertising, consultancy relating to the organisation of promotional campaigns for business; presentation of businesses and their products and services, including on the internet; writing of publicity texts; arranging advertising events; all of the aforesaid services not being connected to businesses for cinematography, film production and film promotion and not being connected to businesses in the transport, packaging and storage industries, and also not being connected to businesses for technical monitoring of vehicles, safety tests, material tests, building assessments and preparation of damage assessment.

The contested services are the following:

Class 35:        Economic and business organizational consultancy, business management services and consultancy; business consulting – business management of companies, negotiation of contracts for the purchase and sale of companies, business appraisals, business information, office functions, tax and book-keeping, marketing activities, promotional activities, advertising, market research, personnel management consultancy, demonstration of goods.

An interpretation of the wording of the list of services is required to determine their scope of protection.

The terms ‘in particular’ and ‘including’, used in the opponent’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, 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 limitation included at the end of the list of the opponent’s services, namely all of the aforesaid services not being connected to businesses for cinematography, film production and film promotion and not being connected to businesses in the transport, packaging and storage industries, and also not being connected to businesses for technical monitoring of vehicles, safety tests, material tests, building assessments and preparation of damage assessment, restricts the scope of the opponent’s services, but does not affect their nature. Therefore, the limitation is not mentioned below, although due consideration has been given to its effect on the comparison and it would not change the outcome.

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.

Business organizational consultancy and business management consultancy are identically contained in both lists of services (albeit with synonyms or slightly different wording).

The opponent’s business management and organisation consultancy services are usually rendered by companies specialising in this field such as business consultants. These companies gather information and provide expertise and tools to enable their customers to carry out their business or provide businesses with the necessary support in order to acquire, develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as analysis, benchmarks or studies on how to allocate financial and human resources efficiently, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products, how to create a corporate identity, etc. With this in mind, the contested economic consultancy; business consulting; business appraisals; business information; personnel management consultancy are included in the broad category of, or overlap with, the opponent’s business management and organisation consultancy. Therefore, they are identical.

Examples of business management are business research and appraisals, cost-price analysis and organisation consultancy, since they are all intended to help in the strategy of a commercial undertaking. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the management of a business; therefore, the contested business management services; business management of companies include, as broader categories, the opponent’s business management consultancy. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested marketing activities, market research include, as broader categories, the opponent’s opinion polling. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The opponent’s consultancy services relating to advertising consist of providing others with expert advice in the sale of their goods and services by suggesting or advising on how to better promote their launch and/or sale, or how to better reinforce the client’s position in the market and acquire competitive advantage through publicity. In order to fulfil this target, the companies or individuals providing consultancy might recommend or suggest using many different means and products. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice on how to better market their products and services; it is not rare for companies providing consultancy in advertising matters to also provide or organise the recommended measures to implement the advised or suggested marketing strategy, such as online advertising, organising promotional events, etc. Based on the above, the contested promotional activities, advertising, demonstration of goods are similar to the opponent’s consultancy services relating to advertising, as they may be rendered by the same companies through the same distribution channels and target the same relevant public.

As outlined above, the opponent’s business management consultancy encompasses a range of more specific services, namely a wide range of business management advisory, consultancy and information services, which are, in principle, always similar, or even identical, to the services to which they relate (27/02/2008, T-325/04, Worldlink, EU:T:2008:51, § 58). Therefore, the contested negotiation of contracts for the purchase and sale of companies; tax and book-keeping are similar to the opponent’s business management consultancy, since they may have the same purpose, have the same providers and target the same public.

Office functions are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the running of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. Accordingly, the applicant’s broad category office functions encompasses a range of more specific services with a wide range of office- and clerical-related purposes.

Therefore, the contested office functions are similar to a low degree to the opponent’s conducting of marketing studies and market analysis, since they can be rendered by the same providers (e.g. outsourcing companies) and can target the same public.

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 or similar are specialised services directed at business customers with specific professional knowledge or expertise. Some of those specialised services may have important financial consequences for their consumers (e.g. business management services and consultancy), so the relevant public will have a considerably high degree of attention when selecting those services. For all the relevant services, the degree of attention is considered high.

3. The signs

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. In the present case, the question of whether or not the public understands the element ‘GLOBAL’ of the contested sign is significant; the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of a figurative device of an undetermined shape (resembling a stylised letter ‘f’) and a verbal element consisting of the letters ‘CNC’. Both are in black and grey and the verbal element is in a rather standard font in upper case letters.

The contested sign is a figurative mark containing two verbal elements, ‘CNC’ and ‘GLOBAL’, depicted in grey and black, respectively, and both in upper case letters in a rather standard font. It also contains a figurative device consisting of a grey line in the form of half an ellipse, depicting what could be perceived as part of an orbit.

The verbal element ‘CNC’, present in both signs, has no meaning in English, and, bearing in mind that the services are mainly business, marketing and advertising consultancy services, it has no connection with the services in question. Therefore, contrary to the argument of the holder, who claims that ‘the verbal element “CNC” is neither distinctive nor dominant’, the degree of distinctiveness of this element must be seen as normal.

The verbal element ‘GLOBAL’ of the contested sign will be associated with ‘relating to the whole world; worldwide’ by the relevant public. Bearing in mind the relevant services, this element is descriptive and non-distinctive for all those services, as it may indicate that, for instance, the services are provided worldwide.

The earlier mark has no elements that could be considered clearly more distinctive than other elements. However, in the contested sign, the verbal element ‘CNC’ is the most distinctive element, as the other verbal element is descriptive and the figurative device depicting part of an orbit is secondary in the sign due to its position and colours, and because it conveys a concept related to the verbal element ‘GLOBAL’ (that of an orbit around the whole world).

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The verbal elements ‘CNC’ and ‘GLOBAL’ are the co-dominant elements of the contested sign, as they are more eye-catching than the figurative device.

Visually, the signs coincide in the verbal element ‘CNC’, which is the most distinctive and a dominant element of the contested sign. However, they differ in their figurative devices, as described above, and in the presence of the second verbal element, ‘GLOBAL’, in the contested sign; however, this element is non-distinctive.

It is important to note 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CNC’, present identically in both signs and which make up the most distinctive and a dominant element of the contested sign. However, they differ in the pronunciation of the non-distinctive verbal element ‘GLOBAL’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the contested sign as referring to the concept of ‘GLOBAL’, that is, ‘relating to the whole world; worldwide’. Furthermore, a part of the public could associate the figurative element depicting part of an orbit, in combination with the verbal element ‘GLOBAL’, as conveying the concept of an orbit around the whole world, that is a ‘global orbit’. However, the earlier mark lacks any meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. It is also worth mentioning that the conceptual comparison is based on elements that are purely descriptive or less dominant; therefore, it will have less impact when assessing the overall likelihood of confusion.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

As was concluded above, the marks in dispute are visually similar to an average degree, as they coincide in the letters ‘CNC’, which constitute the only verbal element of the earlier mark and the most distinctive element of the contested sign. This coincidence also renders the signs aurally similar to a high degree. The signs are not conceptually similar, but the conceptual aspect of the comparison of the signs has less weight, as it is based on a descriptive element. The differences between the signs are therefore confined to non-distinctive elements and aspects with less dominance or weight.

Furthermore, the global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lower degree of similarity between the services may be offset by a greater degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, the services are partly identical and partly similar to varying degrees, and the degree of attention is considered high.

In the absence of further differentiating elements, there is a clear likelihood of confusion, even for those services that are similar to a low degree and considering that a high degree of attention will be displayed. Furthermore, not only do consumers rarely have the chance to examine marks side by side, thus relying on their imperfect recollection (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), but also, in the present case, the Opposition Division finds that the relevant public may be led to think that the signs relate to economically linked undertakings or that the signs concern the same brand configured slightly differently, for example to denote different ranges of services.

In its observations, the holder argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the verbal element ‘CNC’. In support of its argument the holder refers to some trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the verbal element ‘CNC’. Under these circumstances, the holder’s claims must be set aside.

The holder has also indicated that ‘APOGEO Group SE’ is the founder of ‘CNC GLOBAL Companies Ltd’, and that it owns several other trade marks. However, it should be noted that the right to an EUTM begins on the date when the EUTM is filed (or on the date of the designation of the EU, in the case of an international registration) and not before, and that the EUTM has to be examined from that date onwards with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM (or before the date of the designation of the European Union, in the case of an international registration) are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the holder’s international registration designating the EU. Therefore, the holder’s contentions in this regard are dismissed.

Finally, the holder’s argument indicating that the business activities or sectors of both parties are different or disjointed because, as can be seen in section a), the services covered by both marks have been found to be identical or similar is also irrelevant. Therefore, this argument is also inadmissible.

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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 532 371. It follows that the contested trade mark must be rejected for all the contested services, even for those found to be similar to a low degree.

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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 holder 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

Zuzanna STOJKOWICZ

Fabián GARCÍA QUINTO

Martin EBERL

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.