OPPOSITION No B 2 418 666

Nowhere Group Limited, Summerhouse, Vicarage Lane, Little Eaton, Derby DE21 5EA, United Kingdom (opponent), represented by Marks & Clerk LLP, 90 Long Acre

London WC2E 9RA, United Kingdom (professional representative)

a g a i n s t

Nowhere (Europe) Ltd, 65 Lichfield Court Sheen Rd, Richmond TW9 1AX, United Kingdom (applicant).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 418 666 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 011 952 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 13 011 952 for the word mark ‘Growing Nowhere’. The opposition is based on European Union trade mark registration No 6 768 782 for the figurative mark. The opponent invoked Article 8(1)(b) EUTMR.

Remark:

Article 8(4) EUTMR was also invoked in the notice of opposition. However, in its observations received on 13/02/2017, the opponent informs the Office that this ground should no longer be taken into consideration.

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 16: Printed matter; instructional and teaching materials; brochures; leaflets; business cards; user manuals; books; magazines; publications; stationery; printed promotional materials; paper and plastic used for wrapping; paper bags and paper carrier bags; printed teaching aids.

Class 25: Clothing, footwear and headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; model figures (teaching aids); educational playthings for use in teaching.

Class 35: Advertising; business management; business administration; office functions; business consultancy.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; provision of management courses.

The contested goods and services are the following:

Class 16: Events programmes; advertisement boards of card; advertisement boards of paper; advertising posters; advertising signs of cardboard; advertising signs of paper; calendars; cards; flyers; events programmes; entry tickets; posters; postcards and picture postcards; photographs [printed]; photographs; printed publications; printed tickets; cardboard.

Class 25: Clothing; headwear.

Class 41: Organising of festivals; arranging of festivals for entertainment purposes; festivals (organisation of -) for entertainment purposes; arranging of festivals for cultural purposes; festivals (organisation of -) for cultural purposes; dance events; organising dancing events; organisation of entertainment events; musical events (arranging of -); entertainment; entertainment information; festivals (organisation of -) for recreational purposes; information relating to entertainment, provided on-line from a computer database or the internet; information and advisory services relating to entertainment; live music performances; live entertainment; musical entertainment; organising of entertainment; organisation of parties; organisation of live performances; organisation of events for cultural, entertainment and sporting purposes; organizing cultural and arts events; organization of dancing events; providing cultural activities; provision of live entertainment; festivals (organisation of -) for entertainment purposes; festivals (organisation of -) for educational purposes; providing online electronic publications; cultural activities.

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 16

The contested cardboard are included in the broad category of the opponent’s stationery. Therefore, they are identical.

The rest of the contested goods in Class 16 are all included in the broad category of the opponent’s printed matter. Therefore, they are identical.

Contested goods in Class 25

Clothing and headwear are identically contained in both lists of goods (including synonyms).

Contested services in Class 41

The contested entertainment; cultural activities; providing cultural activities are identically contained in both lists of services (including synonyms).

The contested organising of festivals; arranging of festivals for entertainment purposes; festivals (organisation of -) for entertainment purposes; arranging of festivals for cultural purposes; festivals (organisation of -) for cultural purposes; dance events; organising dancing events; organisation of entertainment events; musical events (arranging of -); festivals (organisation of -) for recreational purposes; live music performances; live entertainment; musical entertainment; organising of entertainment; organisation of parties; organisation of live performances; organisation of events for cultural, entertainment and sporting purposes; organizing cultural and arts events; organization of dancing events; provision of live entertainment; festivals (organisation of -) for entertainment purposes; festivals (organisation of -) for educational purposes are included in the broad categories of the opponent’s entertainment or sporting and cultural activities. Therefore, they are identical.

The contested entertainment information; information relating to entertainment, provided on-line from a computer database or the internet; information and advisory services relating to entertainment are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested providing online electronic publications are publishing services that are similar to the opponent’s publications in Class 16 since they both have the same purpose and it is now common for undertakings to be involved in both printed matter and electronic publishing. The relevant public is likely to coincide as well.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods or services, the frequency of purchase and their price.

3. The signs

	Growing Nowhere
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 common element ‘NOWHERE’ has no meaning in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public for which this element is distinctive.

The remaining verbal element in the contested sign, ‘GROWING’ has no meaning either for those consumers and is also distinctive.

As regards the earlier sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature, namely the black background. Therefore, the verbal element is more distinctive than the figurative element.

The signs have no elements that could be considered clearly more eye-catching than other elements.

Visually and aurally, the signs coincide in the word ‘NOWHERE’ which is the only verbal element of the earlier mark, and in its sound. However, they differ in the word ‘GROWING’ in the contested sign and in its sound. Visually, they also differ in the typeface used in the earlier mark, although rather standard, and in the black background that have no counterpart in the contested sign but which only fulfil a decorative purpose and only has a limited impact on consumers.

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

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

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 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

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.

In the present case, the goods and services are partly identical and partly similar and the signs are visually and aurally similar to an average degree. The conceptual aspect does not influence the comparison of the signs. The one and only verbal element of the earlier mark is entirely reproduced in the contested sign where it also plays an independent and distinctive role. Furthermore, although the additional verbal element in the contested sign also has a distinctive role, consumers can still confuse the signs since there is no additional differentiating element of particular relevance that would catch the consumers’ attention in order to allow them to distinguish the signs. Instead, they are likely to make a connection between them and assume that the goods and services covered are from the same or economically linked undertakings. Indeed, it must be pointed out that likelihood of confusion includes the likelihood of association.

Also, the relevant consumer will most probably 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). Although it is true that consumers normally exercise a certain degree of attention in relation to the goods services at issue, even sophisticated consumers are not immune to trade mark confusion, especially taking into account the fact that some of the goods and services are identical and similar.

Moreover, 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).

Considering all the above, there is a likelihood of confusion on the part of the non-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 application No 6 768 782. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Frédérique SULPICE

Sandra IBAÑEZ

Benoit VLEMINCQ

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.