LOJJ | Decision 2553926 – 7Graus II – SOLUÇÕES WEB, LDA v. SHC Developments LLP

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OPPOSITION No B 2 553 926

7Graus II – Soluções Web, Lda, Rua Barata Feyo, n.º 140, 2.1, 4250-076 Porto, Portugal (opponent), represented by João Trigo Morais, Rua Pedro Homem de Melo, n.º 55, 4150-599 Porto, Portugal (professional representative)

a g a i n s t

SHC Developments LLP, Sixth Floor, Bedford House, 69-79 Fulham High Street, London SW6 3JW, United Kingdom (applicant), represented by Cassowary, Tower 42, 25 Old Broad Street, London EC2N 1HN, United Kingdom (professional representative).

On 11/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 553 926 is partially upheld, namely for the following contested services:

Class 35:        Business management services, business information services, business and management consultancy, assistance and advice; advisory and arrangement services relating to all the aforesaid; professional consultancy advice; advisory services relating to franchising including but not limited to all the aforesaid services provided by telecommunications networks by online delivery and via the internet and worldwide web; all of the above in relation to student accommodation.

2.        European Union trade mark application No 13 717 194 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 717 194. The opposition is based on Portuguese trade mark registration No 480 680. The opponent invoked Article 8(1)(a) EUTMR.

PRELIMINARY REMARK

Although the specific conditions under Articles 8(1)(a) and 8(1)(b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will continue to examine the case under Article 8(1)(b) EUTMR, which requires at least similarity between the signs and goods/services and hence likelihood of confusion.

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 services

The services on which the opposition is based are the following:

Class 35:        Online advertising on a computer network.

In the opposition phase, the applicant limited the list of services for which protection was sought. The Office duly informed the opponent of this limitation by letter of 23/06/2016. The opponent did not reply to the letter and maintained its opposition.

Accordingly, the contested services are the following:

Class 35:        Business organisation, business administration and business management services, business information services, business and management consultancy, assistance and advice; advisory and arrangement services relating to all the aforesaid; professional consultancy advice; advisory services relating to franchising including but not limited to all the aforesaid services provided by telecommunications networks by online delivery and via the internet and worldwide web; all of the above in relation to student accommodation.

Class 36:        The management brokerage, leasing and appraisal of real estate; real estate affairs, rental, brokerage, development, leasing, sale and management of property for student accommodation; rental of property; arranging leases for the rental of property; provision of serviced student style accommodation.

Class 43:        Provision, rental and letting of temporary accommodation; provision, rental and letting of student style accommodation; provision of information relating to all of the aforesaid; accommodation booking, reservation and allocation services; information services relating to the foregoing.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

Contested services in Class 35

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

When comparing business management with advertising, advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin.

Considering all the above, the opponents online advertising on a computer network in Class 35, which are advertising services in general, albeit using specific means, and the contested business management services, business information services, business and management consultancy, assistance and advice; advisory and arrangement services relating to all the aforesaid; professional consultancy advice; advisory services relating to franchising including but not limited to all the aforesaid services provided by telecommunications networks by online delivery and via the internet and worldwide web; all of the above in relation to student accommodation in Class 35, which refer to business management in relation to a specific field, including business advisory and consultancy or provision of business information, have the same purpose, providers and relevant public. Therefore, they are similar to a low degree.

The contested business organisation, business administration services, advisory and arrangement services relating to all the aforesaid; all of the above in relation to student accommodation in Class 35 are services intended to help companies conduct business operations and, therefore, interpret and implement policy set by a board of directors. These services consist of organising people and resources efficiently in order to direct activities towards common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable businesses to perform their business functions and are usually carried out by an entity that is separate from the business in question. Such services are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

These contested services differ in nature and purpose from the opponents online advertising on a computer network. They have a different method of use, are provided by different undertakings and are offered to different end users through different distribution channels. Furthermore, they are neither complementary nor in competition with each other. Therefore, these services are dissimilar.

Contested services in Class 36

The contested services the management brokerage, leasing and appraisal of real estate; real estate affairs, rental, brokerage, development, leasing, sale and management of property for student accommodation; rental of property; arranging leases for the rental of property; provision of serviced student style accommodation in Class 36 are related to real estate affairs. They are provided by real estate agencies.

These contested services differ in nature and purpose from the opponents online advertising on a computer network. They have a different method of use, are provided by different undertakings and are offered to different end users through different distribution channels. Furthermore, they are neither complementary nor in competition with each other. Therefore, these services are dissimilar.

Contested services in Class 43

The contested provision, rental and letting of temporary accommodation; provision, rental and letting of student style accommodation; provision of information relating to all of the aforesaid; accommodation booking, reservation and allocation services; information services relating to the foregoing in Class 43 are intended to provide a room, group of rooms, or building in which someone can live or stay for a limited period of time, as well as the provision of information related thereto. These services are usually provided by travel agencies.

These services differ in nature and purpose from the opponents online advertising on a computer network. They have a different method of use, are provided by different undertakings and are offered to different end users through different distribution channels. Furthermore, they are neither complementary nor in competition with each other. Therefore, these services are dissimilar.

  1. The signs

LOJJ

LOJJ

Earlier trade mark

Contested sign

The signs are identical.

  1. 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 (eighth recital 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).

The signs are identical and the services are partly similar to a low degree and partly dissimilar.

However, a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17). This is particularly relevant in the present case as the conflicting signs are identical. The identity of signs offsets the low similarity between the opponents online advertising on a computer network in Class 35 and the contested business management services, business information services, business and management consultancy, assistance and advice; advisory and arrangement services relating to all the aforesaid; professional consultancy advice; advisory services relating to franchising including but not limited to all the aforesaid services provided by telecommunications networks by online delivery and via the internet and worldwide web; all of the above in relation to student accommodation.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 480 680.

It follows from the above that the contested sign must be rejected for the services found to be similar to a low degree to those of the earlier trade mark.

The rest of the contested services are dissimilar to the opponent’s services. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on ground under Article 8(1)(a) EUTMR and directed against the remaining contested services because they are obviously not identical to the opponent’s 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Bekir GÜVEN

Natascha GALPERIN

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.

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