OPPOSITION DIVISION
OPPOSITION No B 2 681 578
Provadis Partner für Bildung und Beratung GmbH, Industriepark Höchst, 65926
Frankfurt am Main, Germany (opponent), represented by Best Rechtsanwälte
PartmBB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional
representative)
a g a i n s t
I Nova Consultores en Excelencia e Innovación Estratégica, S.L., Calle Policarpo
Sanz Nº 17 5º B-C, 36202 Vigo (Pontevedra), Spain (applicant), represented by
Carmen Blázquez, Estrella Polar 28 8I, 28007 Madrid, Spain (professional
representative)
On 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 681 578 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against some of the services of European Union
trade mark application No 14 958 557 , namely against all the
services in Classes 41 and 42.
The opposition is based on German trade mark registration No 30 140 620 for the
word mark ‘‘NOVIA’’. The opponent invoked Article 8(1)(b) EUTMR.
PRELIMINAR REMARK
As a consequence of the opposition decision B 2 674 466 (parallel proceedings), the
contested trade mark was partially refused (i.e. Class 42). On 16/08/2017 the
opponent was given until 21/10/2017 to inform the office of its intention to maintain
the opposition in relation to the remaining contested services in Class 41. The
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opponent did not reply, therefore, the opposition proceedings continue in relation to
the remaining contested services in Class 41.
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.
a) The services
The services on which the opposition is based are the following:
Class 41: Training; education; conducting seminars, training and workshops in the
chemical analytical field.
Class 42: Services relating to biotechnology, chemistry and analytics; chemical
analytical consultation.
The contested services are the following:
Class 41: Education and instruction; popular entertainment services; sporting and
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 services in Class 41
The contested education is identically covered by Class 41 of both parties.
The contested instruction is identical to the opponent´s training, since the same
services are covered by using synonyms.
The opponent´s training includes different kinds of training, such as sports training.
Therefore, the contested sporting activities can be considered similar to the opponent
´s training. They coincide in nature, coincide in distribution channels, can be offered
in a complementary way, can be directed at the same consumers and be offered by
the same kind of undertakings.
The contested cultural activities are similar to the opponent´s education services. The
services of the opponent consist mainly of services rendered by persons or
institutions in the development of the mental faculties of persons, by providing them
specific information that helps them to increase their knowledge about a certain topic
of field. These same purposes are frequently shared by the contested cultural
activities (e.g. an exhibition of certain ancient cultures is a cultural activity that entails
educational purposes). It is, therefore, considered that these services coincide in
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nature, can coincide in purpose, can be complementary or in competition, and can be
directed at the same consumers.
The contested popular entertainment services are dissimilar to the services of the
opponent. They differ in nature, purpose, method of use, distribution channels and
points of sale. They are neither complementary nor in competition, are not directed at
the same consumers, and are not likely to come from the same kind of undertakings.
b) 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 or similar are directed at the
public at large. The attention paid by consumers during their purchase is deemed to
be average.
c) The signs
NOVIA
Earlier trade mark Contested sign
The relevant territory is Germany.
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 element ‘NOVIA’ of the earlier mark has no meaning for the relevant public and
is, therefore, distinctive.
The element ‘inova’ of the contested sign will be perceived by German consumers as
an abbreviation used to refer to the concept of ‘innovative’. This is due to the
significant similarities in spelling and pronunciation between ‘‘inova’’ and the German
word ‘‘innovativ’’ (meaning ‘‘innovative’’ in English). It is also probable that German
consumers, who are deemed to have enough English knowledge so as to understand
basic English terms, perceive the word ‘‘inova’’ as an abbreviation of the English term
‘‘innovation’’ or ‘‘innovative’’, which will reinforce the perception of the concept
referred to before.
The word ‘‘labs’’ in the contested mark is perceived by the relevant public as an
abbreviation f of ‘‘laboratories’’, due to the similarity in spelling and pronunciation,
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between ‘‘labs’’ and the German term ‘‘Labor’’ (i.e. meaning ‘‘laboratory’’ in English).
It is also probable that German consumers, who are deemed to have enough English
knowledge so as to understand basic English terms, perceive the word ‘labs’ as an
abbreviation of the English term ‘laboratories’, which will reinforce the perception of
the concept referred to before.
The element “inova” is allusive of the characteristics of the contested services found
to be identical or similar (i.e. Education and instruction; sporting and cultural
activities), indicating that the services are offered by using ‘innovative’ methods or
refer to ‘innovative’ topics. This element is of lower than average distinctive character
for all the contested goods found to be identical or similar.
For some of the contested services found to be identical or similar (e.g. education
and instruction) the term ‘labs’ is also allusive of their characteristics, since it can be
seen as a reference to the kind of services involved (e.g. indicating that the services
are offered in ‘laboratories’ or are related to them) This element is of lower than
average distinctive character for part of the contested goods found to be identical or
similar.
The figurative element underlining the word ‘inova’ in this same sign, formed by three
coloured lines, is merely decorative, used only to focus the attention of consumers on
the word it underlines, and void of distinctive character.
The opponent argues that ‘labs’, due to its position on one side, and smaller size,
and due to its concept (descriptive, according to the opponent), will be omitted by
consumers referring to the mark aurally.
The word ‘inova’ is dominant (visually eye-catching) due to its bigger size and central
position. However, the less eye-catching element ‘labs’, of smaller size and
positioned on one side of the mark, is not for that reason necessarily omitted when
referring to the marks aurally. Both elements ‘inova’ and ‘labs’ share colour and
typeface, and are perceived at the same time. In addition, they are both of the same
lower than average distinctive character, as explained above. Therefore, contrary to
the opponent´s argument in this regard, taking into account the scenario described,
the Opposition Division notes that this element is not necessarily omitted by
consumers.
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. In this case, it is relevant to note that the signs differ in, inter alia, their
beginnings ‘‘nov-’’ and ‘‘ino-’’.
Visually, the signs coincide in the letters ‘‘n-o-v’’ and in the ending ‘‘-a’’ of ‘‘novia’’
and ‘‘inova’’. They both contain the letter ‘‘i’’. However, this letter is in different
positions within the marks, which prevent consumers from perceiving it as a visual
coincidence between the signs.
Indeed, this difference is tantamount since it is at the beginning of their signs and
consumers see signs as a whole and are not in the habit of dissecting marks into
individual letters. Moreover, the signs are not short, meaning consumers will not
easily identify shared letters in the middle of the signs.
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The signs differ in their beginnings, as explained above. They also differ in the term
‘‘labs’’ of the contested mark and in the colour, typeface and figurative element in that
same mark.
For all of the above, and taking into account that the differences in the beginnings
cause stronger impact on the perception of consumers, it is considered that the
marks are visually similar to a low degree.
Aurally, the signs coincide in the sound of letters ‘‘n-o-v’’ and ‘‘-a’’ of ‘‘novia’’ and
‘‘inova’’. They both contain the letter ‘‘i’’. However, this letter is in different positions
within the marks, which prevent consumers from perceiving it as an aural
coincidence between the signs.
The signs also differ in the sound of ‘‘labs’’ of the contested mark.
For all of the above, it is considered that the marks are aurally similar to a low
degree.
Conceptually, although the public in the relevant territory will perceive the meanings
of the contested mark, as explained above, the earlier mark has no meaning in that
territory. Since one of the signs will not be associated with any meaning, the signs
are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
The contested services are partly identical, partly similar and partly dissimilar to the
services of the opponent.
The signs are visually and aurally similar to a low degree, and are not conceptually
similar.
Even if the signs share some visual and aural coincidences, they are not
conceptually similar (i.e. earlier mark with no concept and contested sign with two
concepts clearly perceived). The opponent argues that the words ‘‘novia’’ and ‘‘inova’’
coincide in all of their letters, despite the different position in letter ‘‘i’’, which
considers as a minor variation not capable to alter the high similarity of signs, both
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visually and aurally. In this regard, the Opposition Division notes that the difference in
position of the letter ‘‘i’’ leads to a significant difference in concept between the
marks, which contribute to their differentiation and that, for this reason, the different
position of that letter cannot be considered a minor variation of small consequences.
Taking this into account, and in the scenario described above, the Opposition
Division considers that the differences between the marks are clearly enough to
counteract their similarities, and that consumers will be capable to differentiate them,
even if used in relation to the services found to be identical or similar.
Considering all the above, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Eva Inés PÉREZ
SANTONJA
María del Carmen SUCH
SANCHEZ
Vanessa PAGE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
Decision on Opposition No B 2 681 578 page: 7 of 7
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.