OPPOSITION No B 2 576 471
Nederlandse Vereniging voor Maatschappelijke Dienstverlening en Samenlevingsopbouw Humanitas, Sarphatistraat 4, 1017 WS Amsterdam, the Netherlands (opponent), represented by Arnold & Siedsma, A.J. Ernststraat 595F, 1082 LD Amsterdam, the Netherlands (professional representative)
a g a i n s t
Thomas Pilgrim, Kraehenbusch 30, 45307 Essen, Germany (applicant), represented by Michael Asmuth, Ophofstrasse 2, 45894 Gelsenkirchen, Germany (professional representative).
On 26/01/2017, the Opposition Division takes the following
1. Opposition No B 2 576 471 is upheld for all the contested services.
2. European Union trade mark application No 13 923 511 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the services of European Union trade mark application No 13 923 511. The opposition is based on, inter alia, Benelux trade mark registration No 471 591. 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 Benelux trade mark registration No 471 591.
- The services
The services on which the opposition is based are the following:
Class 36: Insurance and finance; property management and management of capital; financial management; financial advisory.
Class 39: Transport and storage; organizing trips and tours.
Class 41: Education and entertainment; training and courses; language education; publishing, distribution and lending of newspapers, magazines and books, organizing holiday camps (entertainment); organization of fairs and exhibitions for educational or cultural purposes.
Class 43: Services of holiday homes and organizing holiday camps (accommodation); childcare; providing temporary shelter to the homeless.
Class 44: Care of the elderly and infirm; family care (except cleaning); services provided by a psychologist.
Class 45: Arranging acquaintance and marriage; guidance of funerals and cremations; social assistance the homeless; social services; legal services.
The contested services are the following:
Class 41: Adventure training for children; providing recreation facilities; balloon decorating services.
Class 44: Medical services; home health care services; hygienic care for human beings; managed health care services; human healthcare services; consulting services relating to health care; health care relating to remedial exercise; health care services offered through a network of health care providers on a contract basis; information services relating to health care; home nursing aid services.
Class 45: Fostering of children.
Contested services in Class 41
The contested adventure training for children is included in the broad category of the opponent’s training in Class 41. Therefore, they are identical.
The contested providing recreation facilities and balloon decorating services are included in the broad category of the opponent’s entertainment in Class 41. Therefore, they are identical.
Contested services in Class 44
The contested medical services; home health care services; hygienic care for human beings; managed health care services; human healthcare services; consulting services relating to health care; health care relating to remedial exercise; health care services offered through a network of health care providers on a contract basis; information services relating to health care; home nursing aid services overlap with the opponent’s care of the infirm in Class 44, which can include health care, hygienic care, etc. services for these persons. Therefore, these services are identical.
Contested services in Class 45
The contested fostering of children is included in the broad category of the opponent’s social services in Class 45. Therefore, they are identical.
- 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 are directed at the public at large. The degree of attention may vary between average and high, since the services include those that affect consumers’ health.
- The signs
Earlier trade mark
The relevant territory is Benelux, where French, Dutch and German are the official languages.
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).
Both signs are word marks.
The earlier mark is composed of the word ‘HUMANITAS’, which is also the first word of the contested sign. This word, especially when seen in relation to the relevant services, will be associated with ‘human’, ‘humanity’ or ‘kindness’ as similar equivalents exist in the relevant languages (‘humaine’ or ‘humanité’ in French and ‘human’ or ‘Humanität’ in German, ‘humaniteit’ in Dutch); therefore, its degree of distinctiveness is reduced accordingly.
The word ‘KIDS’ in the contested sign is an English word used informally to refer to ‘children’. The general public in the Netherlands has at least a basic understanding of English (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23). Therefore, at least this part of the public will understand the meaning of this word. Bearing in mind that the relevant services are or can be intended for children, this word is non-distinctive for this part of the relevant public and in relation to these services.
The earlier mark has no elements that could be considered clearly more distinctive than other elements.
Neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the word ‘HUMANITAS’ and differ in the additional word ‘KIDS’ of the contested sign. Although the degree of distinctiveness of the coinciding word ‘HUMANITAS’ is lower than normal, more weight has to be given to this word, as the additional word ‘KIDS’ of the contested sign is non-distinctive for at least a part of the relevant public in relation to the relevant services.
Furthermore, the coinciding word ‘HUMANITAS’ appears as the first word of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. In addition, this word is much longer than the word ‘KIDS’.
Therefore, the signs are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘HUMANITAS’, present in both signs. The pronunciation differs in the sound of the word ‘KIDS’ of the contested sign, which has no counterpart in the earlier mark.
For the reasons explained in the visual comparison, more weight is given to the coinciding word ‘HUMANITAS’, at least for the part of the relevant public that understands the word ‘KIDS’.
Therefore, the signs are aurally similar to a high degree.
Conceptually, the signs coincide in the word ‘HUMANITAS’, which will be associated with ‘humanity’ or ‘kindness’, and is, therefore, not particularly distinctive for the relevant services. However, the differing element, namely the word ‘KIDS’ of the contested sign, is non-distinctive for at least a part of the relevant public and will be perceived as indicating the intended end users of the relevant services and not as a badge of origin.
Therefore, the signs are conceptually similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than normal for all of the services in question.
- Global assessment, other arguments and conclusion
The services are identical.
The signs are visually, aurally and conceptually similar to a high degree.
The degree of distinctiveness of the earlier mark is lower than normal. However this factor alone cannot prevent a finding that there is a likelihood of confusion (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).
Considering all the above, despite the fact that the degree of attention is high in relation to some services, there is a likelihood of confusion on the part of the public because the differences between the signs are confined to a non-distinctive element of the contested sign.
Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 471 591. It follows that the contested trade mark must be rejected for all the contested services.
As earlier Benelux trade mark registration No 471 591 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Begoña URIARTE VALIENTE
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.