OPPOSITION No B 2 713 769
Hermann Krallmann, Alt-Moabit 90c, 10559 Berlin, Germany (opponent), represented by Loh Rechtsanwälte, Leipziger Platz 7, 10117 Berlin, Germany (professional representative)
a g a i n s t
Aucta Group, 42 bis rue de l’Est, 92100 Boulogne Billancourt, France (applicant), represented by Marks & Us, marcas y patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 713 769 is upheld for all the contested services, namely:
Class 42: Computer project management services; IT project management
2. European Union trade mark application No 15 171 771 is rejected for all the contested services. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the services of European Union trade mark application No 15 171 771, namely against some of the services in Class 42. The opposition is based on German trade mark registration No 302 014 040 260. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Data storage devices containing software; downloadable computer applications
Class 42: Computer software updating and designing; counselling as to computers and software; software creation, maintenance and adjustment
The contested services are the following:
Class 42: Computer project management services; IT project management
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 42
The services computer project management services; IT project management include the processes of planning, organising and delineating responsibility for the completion of an organisation’s specific information technology (IT) goals. IT project management includes planning and overseeing projects for software development, hardware installations, network upgrades, cloud computing and virtualisation rollouts, business analytics and data management projects, and implementing IT services.
Therefore, computer project management services; IT project management services are closely linked to computer software updating and designing of the earlier mark. This is because a service provider in the field of software is also likely to offer project management services in the field of computing.
Furthermore, the distribution channels and target public may be the same. Therefore, these services are considered similar.
- 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 similar are directed at both the public at large and business customers with specific professional knowledge or expertise in, inter alia, the IT field. The degree of attention may vary from average to higher than average depending on the price and specific purpose of the services in question.
- The signs
| Kappa |
KAPPA CONSEIL
|
|
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).
Both marks are word marks. As such, they have no elements that could be considered clearly more dominant than other elements.
The earlier mark consists of the verbal element ‘Kappa’ and the contested sign is made up of the same word followed by the additional element ‘Conseil’. It has to be taken into account that, in the case of word marks, it is the word that is protected and not its written form. Therefore, it is not relevant whether the marks at issue are in upper case or lower case letters.
The element ‘Kappa’, present in both signs, and the element ‘Conseil’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.
Visually, the signs have in common the verbal element ‘Kappa’, which constitutes the entirety of the earlier mark and is the first verbal element of the contested sign. Account must be taken of the fact 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. Consequently, it is of relevance that the coinciding element of the signs is at the beginning of the contested sign. The signs differ in the second verbal element, ‘Conseil’, of the contested sign. Taking into account that the earlier mark is fully included in the contested sign but also the abovementioned difference and the different lengths of the signs, it is considered that the signs are visually similar to an average degree.
Following the same line of reasoning as in the visual comparison, it is considered that the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the general 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.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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).
The contested services are similar to the opponent’s services and they are directed at both the public at large and business customers with specific professional knowledge or expertise in, inter alia, the IT field. The degree of attention may vary from average to higher than average depending on the price and specific purpose of the services in question.
The earlier trade mark and the contested sign are visually and aurally similar to an average degree.
The similarities between the signs are on account of the element that the signs have in common, ‘Kappa’, which is of average distinctiveness and constitutes the totality of the earlier mark and is the initial verbal element of the contested sign.
In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include ‘Kappa’ and ‘Conseil’. In support of its argument, the applicant refers to a number of trade mark registrations in Germany.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘Kappa’ and ‘Conseil’. Under these circumstances, the applicant’s claims must be set aside.
The applicant also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that the decisions submitted by the applicant are not comparable to the present case. In the decisions mentioned by the applicant, the earlier marks are descriptive or distinctive to a low degree. In the present case, this is not the case.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s German mark registration No 302 014 040 260. It follows that the contested trade mark must be rejected for all the contested 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
|
Dorothee SCHLIEPHAKE |
Patricia LOPEZ FERNANDEZ DE CORRES |
Marianna KONDAS |
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.