OPPOSITION No B 2 223 793

Gruner + Jahr GmbH & Co KG, Am Baumwall 11, 20459 Hamburg, Germany, (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft Mbb, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Verberne Holding B.V., Helsestraat 1, 5674 BA Nuenen, the Netherlands, (applicant), represented by Hortis Legal, Veraartlaan 8, 2288 GM Rijswijk ZH, the Netherlands, (professional representative).

On 30/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 223 793 is upheld for all the contested goods and services.

2.        European Union trade mark application No 11 637 139 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 637 139. The opposition is based on, inter alia, German trade mark registration No 30 622 991 and international trade mark registration No 863 134 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR for the both above-mentioned earlier rights and 8(5) EUTMR for the indicated international registration .

On 10/06/2015 the Opposition Division rendered a decision which resulted in the rejection of the opposition pursuant to Rule 19(2) and 20(1) CTMIR.

The decision was appealed and the Board of Appeal decided on 11/08/2016, in case R 1539/2015-1, to annul the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the decision rendered by the Opposition Division wrongly rejected the opposition as unfounded.

PRELIMINARY REMARKS

The date of expiry of term of protection of the German trade mark registration No 30 622 991 was 30/04/2017. Therefore, on 08/06/2017, the Opposition Division requested the opponent to submit the renewal certificate, which was submitted on 20/06/2017. In this sense, this earlier right is valid.  

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 German trade mark registration No 30 622 991 and international trade mark registration No 863 134 designating the European Union.

1. The goods and services

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

International registration No 863 134

Class 9: Magnetic, optical, magneto-optical and electronic sound and image recording carriers and data memories, in particular CDs, CD ROMs, CD-Is, DVDs, floppy disks, video tapes, recording discs and microfilm, for on and off-line use; tape recorders, equipment for receiving, as well as for recording, transmission and reproduction of sound and images; hardware, in particular data processing apparatus, computers and computer peripheral devices; software; data processing programs, computer operating programs. 

Class 16: Printed matter; bookbinding material.  

Class 35: Services of a electronic commerce platform, namely presentation of goods and services, reception of orders and order processing services, as well as auditing services for electronic ordering systems; publication of publicity texts; compilation and systemization of information into computer databases.  

Class 38: Services in the field of telecommunications; transmission of information to third parties on the Internet; dissemination of information on wireless or cable networks; online content provider services, namely providing user access to a global computer network and information about the Internet; broadcasting of radio and (cable) television programmes. 

Class 41: Education, providing of training, entertainment, in particular radio and television entertainment; services of a publisher (except printing); publication and issuing of texts in printed and electronic form as an off-line and online publisher, included in this class; sporting and cultural activities.

 

Class 42: Computer programming; design and development of database programs; exploitation and management of intellectual property. 

German trade mark registration No 30 622 991

Class 9: Pre-recorded and blank image magnetic, optical, magneto-optical and electronic sound and image recording carriers and data memories, in particular CDs, CD ROMs, CD-Is, MP3s, DVDs, floppy disks, also for digital data transmission; video tapes, sound recording discs, tape recorders, equipment for receiving, as well as for recording, software; data processing programs, computer operating programs also for digital data transmission; computer programs (downloadable); electronic publications of any kind (downloadable). 

Class 16: Printed matter, photographs, bookbinding materials; paper; cardboard and goods of these materials included in this class; instructional and teaching material (except apparatus); stationery; adhesives for paper and stationery or household purposes; artists' materials, paint brushes; typewriters and office requisites (except furniture); plastic packaging material included in this class.

Class 18: Leather and imitations of leather and goods made thereof included in this class; trunks and traveling bags; umbrellas, parasols and walking sticks.

Class 20: Furniture, mirrors, frames; goods included in this class of wood, reed, cane and wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 25: Clothing, footwear, headgear.

Class 28: Games, playthings; gymnastic and sporting articles included in this class, decorations for Christmas trees. 

Class 42: Design and development of software.

The contested goods and services are the following:

Class 28: Games and playthings; Gymnastic and sporting articles not included in other classes; Equipment for games. 

Class 35: Advertising; Business management; Business administration; Office functions; Online webshops and online retailing for the sale of games and playthings, gymnastic and sporting articles and equipment for games.

Class 41: Entertainment; Sporting and cultural activities; Provision of workshops; Coaching services; Outdoor sports; Arranging and conducting of competitions; Providing facilities for sports and games.

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

Contested goods in Class 28

The goods games and playthings; gymnastic and sporting articles not included in other classes are identically reproduced (including synonyms) in both the contested list of goods and that of the earlier mark No 30 622 991. Therefore, these goods are identical.

The contested equipment for games overlaps with the opponent’s gymnastic and sporting articles included in this class in the earlier right No 30 622 991, as they belong to broad categories. Therefore, they are identical.

Contested services in Class 35

The contested online webshops and online retailing for the sale of games and playthings, gymnastic and sporting articles and equipment for games overlap with the opponent’s services of the earlier right No 863 134, namely services of an electronic commerce platform, namely presentation of goods and services, reception of orders and order processing services, as well as auditing services for electronic ordering systems, as they both belong to the field of online retailing. Therefore, these goods are identical.

The contested office functions include, as a broader category, the opponent’s services included in the earlier right No 863 134 compilation and systemization of information into computer databases. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested advertising services include, as a broader category, the opponent’s publication of publicity texts services included in earlier right No 863 134. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested business administration services are similar to the opponent’s compilation and systemization of information into computer databases of earlier right No 863 134, as they have the same purpose, they can coincide in producer and end users.

The contested business management is similar to a low degree to the opponent’s publication of publicity texts in Class 35 of earlier right No 863 134, as they can coincide in purpose, producer and end user.

Contested services in Class 41

The services of entertainment; sporting and cultural activities are identically reproduced (including synonyms) in both the contested list of services and that of the earlier mark No 863 134. Therefore, these services are identical.

The contested provision of workshops and coaching services are included in the opponent’s broader education services protected under the earlier mark No 863 134, and hence, they are identical  .

The contested outdoor sports; arranging and conducting of competitions; providing facilities for sports and games are included in  the opponent’s sporting activities protected under the earlier mark No 863 134, and hence, 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.

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

The degree of attention may vary from average to high, depending on the specialised nature of the services, or the frequency of purchase and the price of the goods and services.

3. The signs

2) GEO	GEODOX
Earlier trade marks	Contested sign

The relevant territories are the European Union, as regards earlier right 1) and Germany as regards earlier right 2).

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 marks consist of the word ‘GEO’. However, the word in earlier right nº 1) is depicted in big grey standard letters.

The contested sign consists of the word mark ‘GEODOX’.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The trade marks in conflict share the common word element ‘GEO’ which, at least in German, means ‘of or relating to the earth’ (Cambridge  English-German Dictionary, extracted on 22/06/2017 from http://dictionary.cambridge.org/dictionary/english/geo?fallbackFrom=english-german&q=GEO).

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs in conflict on the German-speaking part of the public.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04 ‘Respicur’, EU:T:2007:46, § 57).

In the present case, it is likely that at least, a part of the relevant public will break down the contested mark into two different elements, ‘GEO’ and ‘DOX’ because the word ‘GEO’ has a meaning for the part of the relevant public, as already indicated. However, this word is distinctive for the goods and services at issue.

On the other hand, the element ‘DOX’ of the contested sign will be perceived by the relevant public as a meaningless element.  

Therefore, the marks have no elements that could be clearly considered more distinctive than other elements.

As regards the earlier sign 1), it is composed of a distinctive verbal element represented in standard letters. Therefore, even if it is a figurative mark, the stylization of the sign is so minimal that the verbal element plays a more relevant role in the overall representation.  

Visually, and taking into account that the earlier right 1) is depicted in a standard font, the signs coincide in the letters ‘GEO’. However, they differ in the letters ‘DOX’ of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛GEO’, present in the signs in conflict. The pronunciation differs in the sound of the letters ‛DOX’ of the contested mark, which have no counterpart in the earlier signs.

Therefore, the signs are similar to an average degree.

Conceptually, although the contested sign does not have a meaning as a whole, at least a part of the relevant public will break it into the elements ‘GEO’ and ‘DOX’. This is because the term ‘GEO’ is likely to be perceived by a part of the relevant public as ‘relating to the Earth’ (Collins English-German Dictionary). In this sense, for the part of the public that will not dissect the contested sign into the two indicated elements, they will not identify any meaning in it and hence, the signs are not conceptually similar because the earlier signs will not be associated with any meaning.

However, for the part of the public that will perceive the element ‘GEO’ in the contested mark, the signs are conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier international trade mark registration No 863 134 designating the European Union has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

5. Global assessment, other arguments and conclusion

The conflicting goods and services have been found to be identical and similar to various degrees. The consumer’s level of attention will vary from average to higher than average.

Visually and aurally the signs in conflict have been found similar to an average degree and conceptually highly similar for the part of the public that will perceive a meaning in the word ‘GEO’ and not conceptually similar for the part of the public that will not dissect the contested sign into two elements.  

The trade marks at issue coincide in the distinctive word element ‘GEO’, which is the only word element of the earlier rights and plays a leading role in the contested mark since it is written in the beginning of the sign. In this respect, it worth mentioning 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

On the other hand, the differences between the signs in conflict are the letters ‘DOX’, placed at the end of the contested sign, and the representation as a figurative mark of the letters ‘GEO’ in standard font in the earlier international registration No 863 134. To this extent, the relevant public will not pay as much attention to these elements. Therefore, the main differences between the signs will not have a significant impact on the public’s perception.

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).

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).

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.

Indeed, it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In the present case, and as seen above, the contested trade mark entirely includes the whole earlier marks, namely ‘GEO’. This element is distinctive and it will be perceived, at least by part of the relevant public, as an identifiable element of the contested sign. The fact that the earlier marks are wholly incorporated in the trade mark applied for is likely to lead consumers to assume that the opponent’s and the applicant’s signs are related trade marks having the same commercial origin or, at the very least, from companies which are linked economically.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public. As stated above in section c) of this decision, and as regards earlier marks, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, and therefore there is no need to analyse the remaining part of the public. Due to the visual, aural and conceptual similarities of the signs, the same conclusion applies to the services found similar to a low degree.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 622 991 and international trade mark registration No 863 134 designating the European Union examined above. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing International registration No 863 134, due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the German trade mark registration No 30 622 991 and international trade mark registration No 863 134 designating the European Union examined above lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

COSTS

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

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

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

The Opposition Division

Patricia LOPEZ FERNÁNDEZ DE CORRES

Juan Antonio MORALES PAREDES

Dorothée SCHLIEPHAKE

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

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.