OPPOSITION No B 2 744 079

Earlybird Venture Capital GmbH & Co. KG, Maximilianstraße 14, 80539 München, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

Eat Well. Play More. Limited, 4th Floor Tanner Place, Tanner Street, London SE1 3PH, United Kingdom (applicant), represented by Rona Campbell, Eat Well. Play More. Limited, 4th Floor Tanner Place, 54-58 Tanner Street, London SE1 3PH, United Kingdom (employee representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 744 079 is upheld for all the contested services, namely:

Class 35:        Advice and information concerning commercial business management; Advice in the field of business management and marketing; Advisory services relating to business organisation; Advice relating to business management; Advice relating to the organisation and management of business; Advisory services (Business -) relating to the management of businesses; Advisory services for business management; Business advice, inquiries or information; Business administration consultancy; Assistance and advice regarding business organization and management; Assistance, advisory services and consultancy with regard to business analysis; Assistance, advisory services and consultancy with regard to business planning; Assistance, advisory services and consultancy with regard to business management; Assistance, advisory services and consultancy with regard to business organization; Advisory services relating to business management; Advisory services relating to business planning; Business consultancy (Professional -); Business consultancy; Business advisory services relating to product development; Business consultancy services; Business consultation; Business consulting; Business consulting services; Business management advice; Business management advice and assistance; Business management consultancy and advisory services; Consultancy relating to business management; Professional business consulting; Professional business consultancy; Professional business consultancy services; Business administration; Business administration services; Business administration assistance; Administration of businesses; Business administration and management; Administration of business affairs; Business administration services for processing sales made on the internet.

2.        European Union trade mark application No 15 187 611 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 187 611 (figurative mark: ), namely against all the services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 2 287 878 (word mark: EARLYBIRD). 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.

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 2 287 878.

1. The services

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

Class 35:         Business management, business administration, office functions, business consultancy, professional business consultancy.

Class 36:        Monetary affairs, financial affairs, in particular assistance in the arranging of finance, administration, gathering and placement of risk capital.

The contested services are the following:

Class 35:        Advice and information concerning commercial business management; Advice in the field of business management and marketing; Advisory services relating to business organisation; Advice relating to business management; Advice relating to the organisation and management of business; Advisory services (Business -) relating to the management of businesses; Advisory services for business management; Business advice, inquiries or information; Business administration consultancy; Assistance and advice regarding business organization and management; Assistance, advisory services and consultancy with regard to business analysis; Assistance, advisory services and consultancy with regard to business planning; Assistance, advisory services and consultancy with regard to business management; Assistance, advisory services and consultancy with regard to business organization; Advisory services relating to business management; Advisory services relating to business planning; Business consultancy (Professional -); Business consultancy; Business advisory services relating to product development; Business consultancy services; Business consultation; Business consulting; Business consulting services; Business management advice; Business management advice and assistance; Business management consultancy and advisory services; Consultancy relating to business management; Professional business consulting; Professional business consultancy; Professional business consultancy services; Business administration; Business administration services; Business administration assistance; Administration of businesses; Business administration and management; Administration of business affairs; Business administration services for processing sales made on the internet.

Contested services in Class 35

Administration of businesses; business administration and management; business consultancy (professional -); business consultancy; business consultancy services; business consultation; business consulting; business consulting services; professional business consulting; professional business consultancy; professional business consultancy services; business administration; business administration services are identically contained in both lists of services (including synonyms).

The contested advice and information concerning commercial business management; advice in the field of business management and marketing; advisory services relating to business organisation; advice relating to business management; advice relating to the organisation and management of business; advisory services (business -) relating to the management of businesses; advisory services for business management; business advice, inquiries or information; business administration consultancy; assistance and advice regarding business organization and management; assistance, advisory services and consultancy with regard to business analysis; assistance, advisory services and consultancy with regard to business planning; assistance, advisory services and consultancy with regard to business management; assistance, advisory services and consultancy with regard to business organization; advisory services relating to business management; advisory services relating to business planning; business advisory services relating to product development; business management advice; business management advice and assistance; business management consultancy and advisory services; consultancy relating to business management are included in or overlap with the broad category of the opponent’s business consultancy. Therefore, they are identical.

The contested business administration assistance; administration of business affairs; business administration services for processing sales made on the internet overlap with or are included in the broad category of the opponent’s business administration. Therefore, they are identical.

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.

The services at issue are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention is considered higher than average. This is because the contested services can have a serious impact on businesses’ performance, as trustworthiness and confidentiality are demanded of the service providers.

3. The signs

EARLYBIRD
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

The joined words ‘EARLYBIRD’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in Ireland, Malta and the United Kingdom.

The earlier mark is a word mark; the contested mark is a figurative mark consisting of the joined words ‘EARLYBIRD’ in bold black letters and a figurative element, depicting a bird with a crest, formed by the space between the letters ‘R’ and ‘D’.

The joined words ‘EARLYBIRD’ will be understood by the English-speaking public as an ‘early bird’, a ‘person who rises, arrives, or acts before the usual or expected time’ (Oxford Dictionary). In commercial practice, this expression is also used in relation to a discount that is available when the consumer purchases the goods or services offered early. Although the verbal element, following this reasoning, could be understood as indicating a possibility of saving money or obtaining a substantial discount, this link between the signs and the relevant services is rather indirect, as it requires several logical steps. Therefore, the verbal element ‘EARLYBIRD’ is not descriptive or otherwise allusive in a way that would materially affect its distinctiveness.

Although the figurative element of the contested sign depicting a bird is distinctive for the relevant services, its size and the way it is depicted between the letters ‘R’ and ‘D’ mean it may not be noticed at first. Furthermore, 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). Consequently, the figurative element, which reinforces the meaning of the verbal element, will not have as strong an impact on consumers as the verbal element in the overall impression of the contested sign.

The joined words ‘EARLYBIRD’ are the dominant element of the contested sign, as they are the most eye-catching, while the additional figurative element is secondary.

Visually, the signs coincide in the distinctive verbal element ‘EARLYBIRD’, which is also the dominant element of the contested mark. The signs differ in the stylisation of this element and in the additional figurative element of the contested mark. The stylisation of the contested sign will not prevent consumers from easily recognising the verbal element, and the figurative element depicting a bird has less visual impact. It is possible that a substantial part of the public will not even notice the figurative element at first. Therefore, the signs are visually highly similar.

Aurally, as the marks have their only verbal element in common, they are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The additional figurative element of the contested sign depicting a bird does not alter the abovementioned conceptual meaning, but rather reinforces it. Therefore, the signs are conceptually identical.

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 a meaning; however, following the reasoning set out in section c) above, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case, the services are identical and the signs are visually similar to a high degree and aurally and conceptually identical. The differences between the signs are confined to the stylisation of the joined words ‘EARLYBIRD’ and to the non-dominant figurative element of the contested sign, which has less impact on the consumer than the verbal element.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54). In the present case, the relevant public is the professional public, which is deemed to exercise a higher degree of care. Taking into account the degree of similarity between the signs and between the services, however, a high degree of attention on the part of the public is not sufficient to exclude a likelihood of confusion.

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 services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the ‘EARLYBIRD’ mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). This seems even more probable when considering that the earlier mark is fully contained in the contested mark and the latter does not have any additional element that could substantially alter the perception of the mark.

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 2 287 878.

As the earlier right, namely the European Union trade mark registration No 2 287 878, leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

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

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Martin EBERL

Claudia MARTINI

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.