OPPOSITION No B 2 729 310
DJM Consulting GmbH, Limburger Str. 50, 61462 Königstein, Germany (opponent), represented by Danckelmann und Kerst, Mainzer Landstr. 18, 60325 Frankfurt am Main, Germany (professional representative)
a g a i n s t
Arbortree Creations, 2nd Floor, Chamber Building, North Street, Swords, Dublin, Ireland (applicant).
On 09/06/2017, the Opposition Division takes the following
1. Opposition No B 2 729 310 is upheld for all the contested goods.
2. European Union trade mark application No 15 368 913 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 368 913. The opposition is based on European Union trade mark registration No 3 254 158. The opponent invoked Article 8(1)(b) and Article 8(5) 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 goods and services
The services on which the opposition is based are the following:
Class 36: Insurance; financial affairs; monetary transactions; real estate development services.
Class 38: Telecommunications; online services, namely providing, processing, offering and transmitting of information.
Class 41: Arranging and conducting of trade fairs, exhibitions, seminars and congresses for cultural or educational purposes; consultancy in the field of further training; providing of training; vocational guidance with regard to career planning.
Class 42: Website development services; software development; data provision; data processing for others.
The contested goods are the following:
Class 9: Software applications for use with mobile devices.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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.
The contested goods, namely software applications for use with mobile devices, are similar to the opponent’s software development. They can have the same producers and end users. Furthermore, they are complementary.
- 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, both the contested goods and the opponent’s services are directed at the public at large and at business customers with specific professional knowledge or expertise. Therefore, the relevant public for assessing likelihood of confusion will be the public at large only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).
The degree of attention is average.
- The signs
Earlier trade mark
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).
Both signs are word marks consisting of one word, namely ‘JobStairs’ (the earlier mark) and ‘JobStars’ (the contested sign).
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 Opposition Division finds it appropriate to focus the comparison on the part of the public to which neither of the signs as such will convey any meaning, for example the Czech-, Greek-, Polish- and Slovak-speaking parts of the public. However, some verbal elements of the signs under comparison have certain meanings. The words ‘job’ and ‘stars’ will be understood by a significant part of the public mentioned above. The word ‘job’, used in both signs, will be understood as ‘the work that someone does to earn money’ (information extracted from Collins English Dictionary on 25/05/2017 at www.collinsdictionary.com/dictionary/english/job) and the word ‘stars’, present in the contested sign, will be understood by a significant part of the public mentioned above as the plural of ‘a large ball of burning gas in space’ or ‘a famous actor or actress’ (information extracted from Collins English Dictionary on 25/05/2017 at https://www.collinsdictionary.com/dictionary/english/star). By contrast, the word ‘stairs’, present in the earlier mark, will not be understood by the parts of the public mentioned above.
Although the relevant public may understand some of the aforesaid verbal elements, the signs as a whole do not have any meaning for the relevant public, as it will not split these words into separate verbal elements.
The signs, each consisting of one word, have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.
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.
Visually, the signs coincide in the string of letters ‘JobSta*rs’, including their beginnings (i.e. ‘job’). However, they differ in the letter ‘i’ appearing in the earlier mark as its seventh letter, where it will not easily be spotted by consumers. The signs have almost the same number of letters, that is, nine (earlier mark) or eight (contested sign).
Therefore, the signs are visually highly similar.
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 letters ‘JobSta*rs’, present identically in both signs. The pronunciation differs in only one letter, ‘i’ (the seventh letter of the earlier mark). The rhythms and intonations of the signs will be almost identical.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘job’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to an average degree.
- 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 claimed that the earlier mark enjoys reputation but did not file any evidence in order to prove such a claim.
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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The Court has stated that 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).
The first element, ‘job’, of the earlier mark is identically included in the contested sign (also as its first part), which results in a high degree of visual similarity and an average degree of aural and conceptual similarity between the marks.
The differences between the signs are confined to the letter ‘i’, which appears as the seventh letter in the earlier mark and, therefore, could even go unnoticed by the relevant public.
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).
Therefore, a significant part of the relevant public, when encountering similar goods and services under the marks in question, and when displaying an average degree of attention, is likely to believe that they come from the same undertaking or from economically linked undertakings, taking into account also that for part of the public the signs as such have no meanings that could help consumers distinguish between them.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public to which the signs as a whole do not convey any meaning, for instance the Czech-, Greek-, Polish- and Slovak-speaking parts of the public, and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 254 158. 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.
It follows that the contested trade mark must be rejected for all the contested goods.
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(5) EUTMR.
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
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.