OPPOSITION No B 2 660 234

Paul Stricker, S.A., Núcleo Industrial de Murtede, Lote 5, 3060-372 Murtede, Portugal (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

IGO-Post B.V., Haverdijk 5, 5704 RC Helmond, The Netherlands (applicant), represented by Algemeen Octrooi- en Merkenbureau B.V., John F. Kennedylaan 2, 5612 AB Eindhoven, the Netherlands (professional representative)

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 660 234 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 683 338. The opposition is based on European Union trade mark application No 11 302 965. 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 goods and services

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

Class 3: Perfumery, essential oils, cosmetics, hair lotions, incense and incense cones, cosmetic kits.

Class 4: Candles, tapers and church candles, perfumed candles and Christmas tree candles.

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, sunglasses and cases for sunglasses.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12: Sun shields and visors for motor cars, protective heat shields for vehicles, protective interiors for vehicles, scratch guards for vehicles, spray guards for vehicles, protecting strips for vehicle doors, steering wheel covers.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; bags, boxes and packages of paper or of cardboard, photographs; stationery; adhesives for stationery or household purposes; writing instruments; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; printed publications; books.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, bamboo and substitutes for all these materials, or of plastics.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); glassware, porcelain and earthenware not included in other classes.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes).

Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers.

Class 25: Clothing, footwear, headgear, excluding motorcycle clothing.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 31: Natural plants and flowers; seeds.

Class 34: Smokers' articles, namely cigarette ash receptacles and lighters for smokers.

Class 35: Services of advertising; business management; business administration; office functions; advertising and commercial information services, via the internet; import and export services; sales promotion for others and wholesale and retail sale services relating to perfumery, essential oils, cosmetics, hair lotions, incense and incense cones, cosmetic kits, candles, tapers and church candles, perfumed candles and Christmas tree candles, hand tools and implements (hand-operated), cutlery, side arms, razors, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, sunglasses and cases for sunglasses, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, sun shields and visors for motor cars, protective heat shields for vehicles, protective interiors for vehicles, scratch guards for vehicles, spray guards for vehicles, protecting strips for vehicle doors, steering wheel covers, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments; paper, cardboard and goods made from these materials, printed matter, bookbinding material, bags, boxes and packages of paper or of cardboard, photographs, stationery, adhesives for stationery or household purposes, writing instruments, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printers' type, printing blocks, printed publications, books, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddler, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, bamboo and substitutes for all these materials, or of plastics, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), glassware, porcelain and earthenware, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags, textiles and textile goods, bed covers, table covers, clothing, footwear, headgear, excluding motorcycle clothing, games and playthings, gymnastic and sporting articles not included in other classes, decorations for Christmas trees, natural plants and flowers, seeds, smokers' articles, namely cigarette ash receptacles and lighters for smokers, commercial management assistance in relation to franchise, distribution of product samples and promotional materials, organization of exhibitions and trade fairs for commercial or advertising purposes.

The contested services are the following:

Class 35: Administrative processing of purchase orders; business management consulting; advisory services for business management; demonstration of goods; distribution of samples for publicity purposes; provision of an on-line marketplace for buyers and sellers of goods and services; marketing services; sales promotion services for third parties; all the aforesaid as an importer, wholesaler, seller and advisor in the context of promotional articles, corporate gifts, non-food consumer articles, gift articles, printed matter and advertising articles offered to the private and public sector, being diaries, stationery, umbrellas, office requisites, textiles, batteries and accumulator, USB sticks, bags, toys, mugs, drinking cups, flashlights, key rings, lanyards, sunglasses, notepads, lighters.

Class 39: Courier services for the delivery of goods; delivery of goods; delivery of goods by mail order; gift-wrapping; packaging of goods; parcel delivery; storage of goods; transport; wrapping of goods; all the aforesaid in the context of supplying promotional articles, corporate gifts, non-food consumer articles, gift articles, printed matter and advertising articles offered to the private and public sector, in particular but not exclusively relating to diaries, stationery, umbrellas, office requisites, textiles, batteries and accumulator, USB sticks, bags, toys, mugs, drinking cups, flashlights, key rings, lanyards, sunglasses, notepads, lighters.

Class 40: Custom assembling of materials for others; customized printing of company names and logos for promotional and advertising purposes on the goods of others; digital printing; embroidery; etching; engraving; laminating; laser engraving services; offset printing; pattern printing on textiles; pattern printing; printing; all the aforesaid in the context of promotional articles, corporate gifts, non-food consumer articles, gift articles, printed matter and advertising articles offered to the private and public sector, in particular but not exclusively relating to diaries, stationery, umbrellas, office requisites, textiles, batteries and accumulator, USB sticks, bags, toys, mugs, drinking cups, flashlights, key rings, lanyards, sunglasses, notepads, lighters.

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

It should also be noted that the limitation at the end of the specifications of the contested services in Classes 35, 39 and 40 (all the aforesaid as an importer, wholesaler, seller and advisor in the context of promotional articles, corporate gifts, non-food consumer articles, gift articles, printed matter and advertising articles offered to the private and public sector, being diaries, stationery, umbrellas, office requisites, textiles, batteries and accumulator, USB sticks, bags, toys, mugs, drinking cups, flashlights, key rings, lanyards, sunglasses, notepads, lighters) does not influence the outcome of the comparison of the goods and services made below as the opponent’s goods and services are not limited in any way and the limitations of the contested services thus do not affect their degree of similarity with the opponent’s goods and services. Therefore, for the sake of clarity, and considering that it would not alter the result of the comparisons, the aforementioned limitations will be taken into account but will not be mentioned in the comparisons that follow.

As a final preliminary remark the Opposition Division notes that the opponent argues that the opponent and the applicant commercialize the same products, attend the same trade fairs, distribute physical catalogues with very similar products, that there is an overlap in terms of customer segment and that they are competitors. The opponent also submitted different documents in support of these claims. However, these arguments are irrelevant because the task of the Opposition Division is to compare the goods and services as registered (unless proof of use has been requested and submitted, which is not the case here) and the services as applied for and not any other goods or services for which either of the signs may be actually used. Consequently, the fact that the applicant may also provide retailing services for similar goods under the contested sign is irrelevant as the contested application does not cover such services. Therefore, this can have no bearing on the comparison of the goods and services concerned in the present proceedings or any likelihood of confusion in relation to the same.

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 services in Class 35

Office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working 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.

Consequently, the contested administrative processing of purchase orders is included in the opponent’s broad category of office functions. Therefore, they are identical.

 

The contested business management consulting and advisory services for business management are included in the opponent’s broad category of business management in Class 35. Therefore, they are identical. 

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 the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

Examples of advertising services are rental of advertising time on communication media, telemarketing services, marketing, public relations and demonstration of goods, since they are all intended to promote other companies’ goods/services, albeit via different means.

Consequently, the contested demonstration of goods; distribution of samples for publicity purposes; provision of an on-line marketplace for buyers and sellers of goods and services; marketing services and sales promotion services for third parties are included in the opponent’s broad category of services of advertising in Class 35. Therefore, they are identical.

Contested services in Class 39

The contested courier services for the delivery of goods; delivery of goods; delivery of goods by mail order; parcel delivery; transport; packaging of goods; wrapping of goods and storage of goods are different services for the transportation, delivery, packaging and storage of goods. The opponent’s import and export services in Class 35 can be defined as international trade and exchange of goods. It is not uncommon that such services are rendered by a company or group of companies which specialises in preparatory works for the commercialisation of goods and provide parallel activities to the importation and exportation of goods, either by itself or in close collaboration with service providers of parallel activities, such as transport or delivery of goods, temporary storage in warehouses before the goods can be put into free circulation in a foreign market or packaging of goods to meet requirements for labelling or packaging of goods in a foreign market. Therefore, these services can share the same distribution channels; they can target the same relevant public and be provided by the same or closely connected undertakings. Consequently, the contested services are considered similar to the opponent’s services.

However, the contested gift-wrapping consists of a specific packaging service to wrap gifts provided to third parties as an independent service. Therefore, the contested gift-wrapping does not share the same distribution channels as the opponent’s import and export services in Class 35 or the opponent’s business management; business administration; office functions and different advertising services in this class; they do not target the same relevant public and are not provided by the same undertakings; furthermore, they are not complementary nor in competition. Therefore, these services are dissimilar. As regards the opponent’s goods in Classes 3, 4, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 24, 25, 28, 31, 34 and the remaining wholesale and retail services of specific goods in Class 35, manufacturers, wholesale and retail companies of at least some of the goods can sometimes offer to wrap their own goods as gifts, in particular on specific occasions, such as during Christmas. Nevertheless, this is not typically provided as an independent service but rather as a purely ancillary service to their core activity of selling goods and provided in relation to purchases made at their own premises. In addition, even if the opponent’s bags, boxes and packages of paper or of cardboard in Class 16 include such goods for gift-wrapping purposes and may therefore be used in relation to the provision of gift-wrapping services, manufacturers or retailers of gift wrapping bags, boxes and packages do not normally provide gift-wrapping services independently and companies providing gift-wrapping services do not normally manufacture the bags, boxes or packages used for wrapping the gifts. Therefore, and although the opponent’s goods and remaining services in Class 35 can target the same relevant public and some of the opponent’s goods may be used together with the contested services, they do not normally share the same distribution channels and are not expected to be provided by the same undertakings. Furthermore, they are not in competition. Therefore, the Opposition Division considers that there is no sufficient point of contact between the goods and services concerned for a finding of a degree of similarity. As a result, the contested gift-wrapping is considered dissimilar to all the opponent’s goods and services.

Contested services in Class 40

The contested custom assembling of materials for others consists of a service concerning the putting together of materials or parts during the production of any substance or object, in the sense that different materials or components are assembled to create a new product. Given the specialised nature of the services, the provider of such services will not produce the materials needed to render the services or market the newly created products. Therefore, none of the opponent’s goods are complementary to this service in the sense that one is essential or important for the use of the other in such a way that consumers may think that the responsibility for the production of the opponent’s goods and the provision of the contested assembling services lies with the same undertaking. Moreover, all the opponent’s goods and services in Class 35 differ in nature, purpose and pertinent distribution channels to the contested assembling services. Therefore, all the opponent’s goods and services are considered to be dissimilar to the contested services.

Embroidery is a service consisting of decorating cloth and other fabrics with figures of needlework, etching and engraving are services consisting of printing a picture from a plate on which designs have been cut by different means (e.g. by etching with acid or by carving with tools or laser) and laminating is a service consisting of sticking or bonding together two or more layers of a particular substance. Therefore and although some of the opponent’s goods, in particular in Classes 25 and 16 respectively, may be the subject of the contested services embroidery; etching; engraving; laminating and laser engraving services, given their specialised nature and for the same reasons as those outlined above, all the opponent’s goods and services are considered dissimilar to the contested services.

 

The contested customized printing of company names and logos for promotional and advertising purposes on the goods of others; digital printing; offset printing; pattern printing on textiles; pattern printing; printing are all different kinds of printing which essentially refer to the process or business of producing printed matter (company names or logos printed on different materials, books, newspapers, magazines etc.) by impression from movable types, plates, etc. Within this process, text or pictures can be produced by applying inked types, plates, blocks, or the like, to paper, textiles or other material either by direct pressure or indirectly by offsetting an image onto an intermediate roller. Digital printing refers to methods of printing from a digital-based image directly to a variety of media. It usually refers to professional printing where small-run jobs from desktop publishing and other digital sources are printed using large-format and/or high-volume laser or inkjet printers. Offset printing specifically refers to the inked image which is transferred (or "offset") from a plate to a rubber blanket, then to the printing surface. When used in combination with the lithographic process, which is based on the repulsion of oil and water, the offset technique employs a flat image carrier on which the image to be printed obtains ink from ink rollers, while the non-printing area attracts a water-based film (called "fountain solution"), keeping the non-printing areas ink-free. Designs or patterns can be reproduced by engraving on a plate or block (pattern printing).

All of these printing services are dissimilar to all of the opponent’s goods and services. First of all, the contested services are highly technical, specialised services and the actual process of printing is done according to strict specifications setting out the colour, font, spacing, type of text, size etc. Even in the case of the opponent’s printed matter in Class 16 or indeed any of the opponent’s goods which can be considered as being “printed” in some way, these goods cannot be deemed similar to the printing services. The instructions to print such goods are received from third parties, namely the interested party; it is not the printing establishment which is responsible for the content or for any of the editorial or other issues that may arise. Printing plants are more like factories which produce a certain set of printed goods on behalf of others. Obviously they are responsible for the printing quality of the final product but not for the product itself. Likewise, certain of the other goods in Class 16, such as the printers' type; printing blocks may form part of the machinery that is used to print or are accessories or materials used in conjunction but the undertaking providing the printing service does not also manufacture the machinery or its components/materials. Likewise the materials such as paper or cardboard, goods made from these materials; stationery; adhesives for stationery or household purposes that may be printed on are not manufactured by the printing plant but ordered from other entities. Moreover, even if bookbinding material is used to finalize the printed product this does not lead to a connection of such a nature that similarity can be determined. Indeed, it must be remembered that goods and services are different in nature, given that services are intangible whereas goods are tangible. A claim of similarity between the goods and services could be sustainable if it is common in the relevant market sector for the manufacturer of the goods to also provide such services. Clearly in the case of the aforementioned goods and any of the opponent’s other goods in Class 16, or in any other class, such a relationship cannot be determined. Indeed, together with the aforementioned goods, all other of the opponent’s goods are also completely dissimilar. There is no relevant point of contact when taking into account the relevant criteria established by the Court of Justice of the European Union. In particular, it has to be considered that the nature, the intended purpose, the pertinent distribution channels and the targeted consumers of the goods and services at issue are completely different. Moreover, they are neither in competition with each other nor are they complementary. As regards the opponent’s services in Class 35, they are related to advertising, business management, business administration, office functions, import and export services and wholesale and retail sale services relating to specific goods. These services and the different kinds of contested printing services do not share the same nature or purpose. The opponent argues that the contested printing services are complementary to advertising and the selling of promotional gifts. However, as mentioned above, the instructions to print any promotional text, pictures or logos on such goods are received from third parties, namely the interested party itself and even if users of advertising services may also seek printing services in relation to their printed advertising material, company names or logos, these services, or any of the opponent’s other services in Class 35, are not offered by the same service providers. Moreover, none of these services are interchangeable or in competition with each other. Therefore, there is no sufficient point of contact between the services concerned for a finding of a degree of similarity. As a result, the opponent’s services in Class 35 are also dissimilar to the different kinds of contested printing services.

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 in Class 35 are essentially specialised services directed at business customers with specific professional knowledge or expertise. The cost for such services is normally relatively high, they are not frequently purchased and may have a serious impact on the purchaser’s business and are thus likely to be subject to a relatively careful purchasing decision. Therefore, the degree of attention for the relevant services in Class 35 is considered to be high.

As regards the contested services in Class 39 found to be similar to the opponent’s services in Class 35, some of them can be directed at the general public and at professionals (such as transport which includes both passenger and cargo transport). However, the opponent’s relevant services are directed at a professional public only. Therefore, the relevant public for assessing the likelihood of confusion will be the professional public only. However, the degree of attention in relation to the services in Class 39 is considered to be average.

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 earlier mark is a figurative mark featuring the verbal element ‘hiidea’, with the second ‘i’ letter turned upside down, depicted in black lowercase letters in a standard typeface preceded by a figurative element. The opponent argues that the intention of the creator of the earlier mark was to play with the double meaning of the symbol “!” to refer both to an exclamation mark as well as to the letter “i” turned upside down. However, consumers will be unaware of the creator’s intentions with the particular configuration of the earlier mark and taking into account that it is preceded by an identical lowercase ‘i’ letter in the same typeface and size, the Opposition Division considers that, in the earlier mark, this component will be perceived as an ‘i’ letter turned upside down and not as an exclamation mark. The figurative element consists of a black oval shape containing two symbols that are identical to the two ‘ii’ letters depicted in the word ‘hiidea’. Therefore, when perceiving the figurative element of the earlier mark together with the word ‘hiidea’, these two symbols are also likely to be perceived as a lowercase ‘i’ letter followed by the same letter turned upside down.

The figurative element of the earlier mark has no meaning in relation to the services concerned and will be perceived as distinctive. The opponent claims that the earlier mark refers to the concept of ‘idea’ and thus that the verbal element consists of the components ‘hi’ and ‘idea’. However, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28). When perceiving verbal signs, the relevant consumers will only break them down into various elements when they suggest a concrete meaning, or resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Even if the word ‘idea’ will be understood by most of the public in the EU, the expression ‘hi idea’ is nonsensical and does not suggest a concrete meaning. In addition, taking into account the rather unusual and striking combination with two subsequent ‘i’ letters one of which is turned upside down, which is also further emphasised as one component in the preceding figurative element, the Opposition Division considers that most of the public in the EU will perceive the verbal element of the earlier mark as consisting of the fanciful word ‘hiidea’ and thus not as consisting of the components ‘hi’ and ‘idea’. For this part of the public, the verbal element will have no particular meaning and will therefore be perceived as distinctive. Nevertheless, considering that the English word ‘idea’ (which is spelled the same in Spanish, Italian, Maltese and Polish) and is very close to the equivalent words in most of the official languages of the Member States of the EU (e.g. idee/idée/idé/ideja/idéia, including the transliterations of the equivalent Bulgarian and Greek words ideya/idea), part of the public may still perceive the ending of the verbal element of the earlier mark as referring to the meaning of the word ‘idea’. The word ‘idea’ means, inter alia, "a plan, suggestion, or possible course of action" and the services in question essentially concern different services to assist companies in the working and promotion of a commercial enterprise. Therefore, for the part of the public that may perceive the word ‘idea’ in the earlier mark, it will be perceived as a very weak element conveying the message that the service provider may provide a suggestion or possible course of action to assist the consumer in the working or promotion of its business. In the case of this part of the public, the beginning of the verbal element, ‘hi’ may either be perceived as referring to a greeting (i.e. ‘hello’) or otherwise as a fanciful word. Either way, it will have no particular meaning in relation to the relevant services and will therefore be perceived as distinctive.

The contested sign is a figurative mark consisting of the verbal element ‘DEAS’ depicted in white, bold uppercase letters in a standard typeface preceded by a larger white exclamation mark twice the size as the subsequent letters all of which is featured on a bright pink, rectangular background. Part of the public in the EU may perceive the contested sign precisely as consisting of the verbal components just described, in particular in parts of the relevant territory where English is not widely spoken or understood and where an ‘S’ is not used to form the plural of a word. For this part of the public, the word ‘DEAS’, which has no meaning, will be perceived as distinctive. However, in English-speaking parts of the EU, in territories where consumers have at least a basic knowledge of the English language and in the Member States where the word ‘idea’ is the same, taking into account that an exclamation mark is similar to the letter ‘i’ and that the word ‘deas’ has no meaning, it is likely that this part of the public will rather perceive the contested sign as consisting of a word they know. Therefore, for this part of the public the contested sign is likely to be perceived as consisting of the word ‘ideas’. The above considerations regarding the perception and the distinctiveness of the word ‘idea’ in the earlier mark apply equally to this element of the contested sign which covers identical services in Class 35 and essentially services for the delivery, packaging and wrapping of goods in Class 39 in relation to which the meaning of providing ideas will also be only very weak as an indication of commercial origin. The exclamation mark in the contested sign is not, as such, particularly distinctive as it is a basic punctuation mark used especially after an interjection or exclamation to indicate forceful utterance or strong feeling and thus used to emphasise the meaning of the word it follows. However, in view of its unusual position at the beginning of the contested sign and for the part of the public that perceives it as replacing the letter ‘i’, it will be perceived as adding a distinctive character in the overall impression given by the contested sign.

Neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

 

The Opposition Division finds it appropriate to first examine the opposition in relation to the part of the public that may perceive the word ‘idea’ in the earlier mark and the word ‘ideas’ in the contested sign.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive or very weak elements.

It should also be borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right (and top to bottom), which makes the part placed at the left (or at the top) of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the very weak word ‘idea’. However, this word in the contested sign is depicted in bold white uppercase letters followed by an additional ‘S’ and the capital ‘I’ letter at the beginning is represented by a very large exclamation mark with a strong visual impact on the perception of the contested sign whereas the word ‘idea’ in the earlier mark, placed at the end of the sign, is depicted in thin, black lowercase letters and is preceded by the distinctive word ‘hi’ and an additional distinctive figurative element. This has a significant impact on the visual perception of the earlier mark, in particular taking into account that these elements are more distinctive than the word ‘idea’ and are placed at the beginning, where consumers tend to focus their attention. In addition, the unusual combination of two ‘i’ letters, the second of which is turned upside down, both in the figurative element and the verbal element hiidea’ of the earlier mark, is also visually striking and further differentiates the overall visual impression produced by the marks. Moreover, the pink background in the contested sign is also visually quite striking, in particular as it is depicted in a bright colour and because it is essential for the perception of the verbal element of the contested sign, which is depicted in white.

The opponent argues 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 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. While this is indeed generally the case, it must be stressed that this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. In the present case, for the reasons outlined above, the overall visual differences between the signs are rather striking and the only coinciding element ‘idea’ is not only very weak as such, but is also depicted in completely different ways in both signs and plays a secondary role in the overall impression produced by the earlier mark.

Therefore, contrary to the arguments of the opponent, the signs are visually similar only to a very low degree.

Aurally, regardless of the different pronunciation rules for the public under analysis, the signs coincide in the pronunciation of the letters ‛IDEA’. However, they are differentiated by the clearly audible sound produced by the additional ‛S’ letter at the end of the contested sign and the pronunciation of the additional word ‛HI’ at the beginning of the earlier mark. Taking into account that the element ‛idea’ is only very weak and that the earlier mark contains an additional syllable at the beginning which is distinctive for the part of the public under analysis that will pronounce the ‛H’ letter in the word ‛HI’, the degree of aural similarity between the signs is average. However, as correctly pointed out by the opponent, the part of the public under analysis in Member States such as France, Spain and Italy will not pronounce the ‛H’ letter in the earlier mark and will thus pronounce the earlier mark as ‛I-I-DE-A’ or ‛I-DE-A’. For this part of the public, even if the element ‛idea’ is only very weak, the signs will be aurally similar to an above average degree.

Conceptually, for the public under analysis, the earlier mark will either be associated with the meaning of the words ‘hi’ (i.e. a greeting) and ‘idea’ as explained above or as evoking the concept of ‘idea’ but without any meaning as a whole. The verbal element of the contested sign will also be associated with the meaning of the word ‘idea’ but together with the meaning of an exclamation mark as also explained above. Taking into account that the concept of ‘idea’ is very weak, for the part of the public that perceives an additional concept of a greeting in the earlier mark, which is distinctive, the conceptual coincidence will barely have any impact in the perception of the signs, if at all, and for the part of the public that perceives no particular concept in the additional element ‘hi’ in the earlier mark, the signs will be conceptually similar to a low degree to the extent that they share the very weak concept of an ‘idea’.  

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, despite the presence of a very weak element in the mark for part of the public as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

As already mentioned above, 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).

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).

The earlier figurative mark, ‘hiidea’, has a normal distinctiveness as a whole and the signs have been found to be visually similar to a very low degree, aurally similar to a degree that is either average or above average and conceptually similar to a low degree for part of the public under analysis.

As the signs at issue are visually similar to a very low degree and only coincide in a very weak element, it must be assessed whether a risk of confusion can be found based on the greater degree of phonetic similarity that exists, given that some of the services in question are identical or similar. It is true that the Court of Justice has held that it is possible that mere aural similarity between trade marks may create a likelihood of confusion (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 28). Nevertheless, the degree of aural similarity between the two marks is of less importance in the case of goods or services which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods or services. (14/10/2003, T-292/01, BASS, EU:T:2003:264, § 54, 55).

In the present case, the identical services at issue in Class 35 are specialised services aimed at supporting or helping other businesses to do or improve their business. Considering the high degree of purchase involvement for these services that may have a significant impact on the commercial success of any business, the relevant public will pay a high degree of attention when choosing them and the visual aspect of the signs in relation to these services is therefore at least as important as the aural aspect, in particular taking into account that a visual perception of the marks in question is highly likely to take place prior to ordering the services.

Whereas consumers will immediately perceive the large exclamation mark at the beginning of the contested sign as forming an integral part of the verbal element 'ideas', they will pay more attention to the distinctive first part of the earlier mark, 'hi', the unusual and striking combination of two 'i' letters, the second of which is turned upside down in the verbal element 'hiidea', and its distinctive figurative element containing the same unusual and striking combination of two 'i' letters, none of which is present in the contested sign. Moreover, consumers will also perceive the visually quite striking combination of the white letters on a bright pink background in the contested sign which is not present in the earlier mark. Therefore, the only coinciding element in both signs, 'idea/s', which is of very weak distinctiveness as such, and plays a secondary role in the earlier mark, will have little impact in the overall impression produced by the signs. Therefore, even if the aural aspect must also be taken into consideration, the fact remains that, although the similarity is average or above average, it concerns a very weak element with still perceptible differences and the significant visual differences between the signs, as described above, will not go unnoticed. It follows that not even the above average degree of aural similarity between the signs for part of the public under analysis or the conceptual coincidence in the very weak concept of 'idea' are sufficient to outweigh the significant visual differences between the signs that will enable the relevant public under comparison to clearly distinguish the commercial origin of the services in question, even if identical. This is all the more true when taking into account that the level of attention of the relevant public will be high when perceiving the marks in relation to the services in Class 35.

As regards the contested services in Class 39 that are similar to the opponent’s services in Class 35, while oral communication in respect of the services in question and the trade marks is not excluded, the choice of the relevant services in Class 39 is generally made on a visual basis. Where the selection of a courier or parcel delivery service by telephone is possible, it usually takes place only after the consumer has consulted a directory or its electronic equivalent on the Internet where the trade mark will be perceived visually. In other words, the marks which are affixed to the services are visually perceived by consumers when choice of provider is decided on (see decision of 07/03/2012, R 2227/2010-2, CHL (fig.) / DHL (fig.)). Likewise, in relation to the other contested services in this class, which are essentially services for the packaging and storage of goods, the trade marks would also generally be perceived visually before these services are chosen. Therefore, the visual perception of the marks in question will generally take place prior to purchase in relation to these services as well. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion in relation to the contested services in Class 39 that are similar to the opponent’s services. Although the degree of attention of the relevant public, which is limited to the professional public for the reasons outlined above, will be average in relation to the services in Class 39, they are only similar to the opponent’s services in Class 35 and the relevant public will still perceive the considerable visual differences between the signs and clearly distinguish the commercial origin of the services for the same reasons as those outlined above.

Therefore, the Opposition Division considers that there is no likelihood of confusion on the part of the public in the relevant territory that may perceive the word ‘idea’ and its meaning as a component part in the earlier mark and the word ‘ideas’ in the contested sign.

This absence of a likelihood of confusion equally applies to the part of the public that will perceive the earlier mark as consisting of the fanciful word ‘hiidea’ and the contested sign as ‘ideas’ as they would not share the concept of ‘idea’ for this part of the public and thus be even less similar.

Likewise, the same applies to the part of the public that may perceive the contested sign as consisting of the fanciful word ‘DEAS’ preceded by an exclamation mark and the earlier mark as either ‘hiidea’ or ‘hi’ and ‘idea’ as the signs would not share the concept of ‘idea’ for this part of the public and thus also be less similar.

Consequently, the Opposition Division finds that there is no likelihood of confusion for any part of the public in the relevant territory in relation to any of the contested services in Classes 35 and 39 found to be identical or similar to the opponent’s services.

Finally, some of the contested services in Class 39 and all the contested services in Class 40 are dissimilar to the opponent’s goods and services. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these services cannot be successful.

In view of all the above, the opposition must be rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Anna BAKALARZ

Sam GYLLING

Martina GALLE

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.