OPPOSITION No B 2 675 844

Novi A/S, Niels Jernes Vej 10, 9220 Aalborg Øst, Denmark (opponent), represented by Lett Law Firm P/S, Raadhuspladsen 4, 1550 Copenhagen V, Denmark (professional representative)

a g a i n s t

Novem Consulting, 5 rue Lamennais, 75008 Paris, France (applicant), represented by Willemant Avocats Selarl, 9 rue Royale, 75008 Paris, France (professional representative).

On 02/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 675 844 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 824 197, namely against all the services in Classes 35 and 42 and some of the services in Class 36. The opposition is based on, inter alia, Danish trade mark registration No VR 2001 02071. 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 Danish trade mark registration No VR 2001 02071.

1. The services

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

Class 35: Professional business and industry consultancy; business assistance and industrial business assistance; business management, business organization and business administration assistance; office functions, business research; business appraisals; arrangement and management of exhibitions with commercial or advertising purposes, professional business consultancy regarding commercialization of research and research results as well as inventions; accounting and financial revision.

Class 36: Fund investments; credit bureaux; financing; loans (financing); fund management; financial consultancy; arranging letting of real estate, including office space and laboratories; real estate assessment; financial analyses.

Class 42: Research and development for others; research parks and innovation environments; professional consultancy (non-business) regarding commercialization of research results and inventions.

The contested services are the following:

Class 35: Business assistance, management and administrative services; Administrative data processing; Business analysis, research and information services; Commercial trading and consumer information services; Consultancy in customer relations management; Consultancy in the organisation and management of loyalty programmes; Consultancy relating to the encouraging of customer loyalty and customer clubs for commercial, promotional or advertising purposes; Advertising, marketing and promotional services; Consultancy services relating to advertising, publicity and marketing; Services of a consultancy; Professional commercial business consultancy; Advisory services for business management; Consultancy services regarding business strategies; Management consultancy; Professional business consultancy; Professional business consultancy services; Business consultancy and advisory services; Business organisation consultancy, Including personnel management; Business organisation and management consultancy; Business organisation and economics consultancy; Business management consultancy services; Aid and assistance in business management and for the organisation of business activities; Consultancy and assistance relating to business planning; Business management planning; Business project management for others; Consultancy and advice in the field of business strategy; Business strategy development; Business strategy planning; Advisory services relating to business risk management; Business risk management consultancy; Business risk assessment services; Public relations consultancy; Negotiation of commercial transactions for third parties; Consultancy and assistance relating to business transaction negotiations; recruitment and human resources management services; Consultancy and assistance relating to human resources management and recruitment; Personnel administration; Serving as a human resources department for others; Consultancy and auditing in the field of human resources; Consultancy and assistance relating to assessment of staff requirements; Advisory services relating to the corporate structure of businesses; Advisory services relating to the corporate structure of businesses; Measuring, drawing up, compilation, analysis and study of statistics; Economic study and research; Surveys, Market research and analysis, In particular for advertising purposes; Collection, interpretation and evaluation of commercial data relating to the behaviour and habits of customers; Opinion polls; Surveys relating to business, business management and business organisation; Conducting of internal business communication surveys; Collection of data in a central file; Systemization of information into computer databases; Systemizing of data in computer databases; Computerised file management; Compilation of information into computer databases; Business networking services; Business networking; Business networking consultancy; Providing of information, consultancy and assistance, all in connection with the aforesaid fields; None of the aforesaid services relating to the manufacture of interior trim parts for motor vehicles.

Class 36: Valuation services; Financial and monetary services; Consultancy services relating to investment; Consultancy and advice relating to financial affairs; Financial consultancy, including financial risk management consultancy; Consultancy and assistance relating to financial planning; Services and assistance provided to businesses relating to financial reorganisation; Consultancy relating to financial management and administration; Providing of information, consultancy and assistance, all in connection with the aforesaid fields; None of the aforesaid services relating to the manufacture of interior trim parts for motor vehicles.

Class 42: Consultancy relating to computing, including in the field of design or improvement of computing solutions; Aid and assistance in the context of the management of computer projects, including project management assistance in the context of computer projects and computer specification design assistance; Technical project studies in the field of software and computer systems; Computer software design; IT services; Science and technology services; Computer software consultancy; Professional consultancy relating to technology; Engineering consultancy services; Engineering design and consultancy; Providing of information, consultancy and assistance, all in connection with the aforesaid fields; None of the aforesaid services relating to the manufacture of interior trim parts for motor vehicles.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The terms in particular, including used in the applicant’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (on the use of ‘in particular’ see a reference in judgment of 09/04/2003, T-224/01, Nu-tride, EU:T:2003:107).

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

The contested business assistance, management and administrative services; administrative data processing; business analysis, research and information services; commercial trading and consumer information services; consultancy in customer relations management; consultancy in the organisation and management of loyalty programmes; services of a consultancy; professional commercial business consultancy; advisory services for business management; consultancy services regarding business strategies; management consultancy; professional business consultancy; professional business consultancy services; business consultancy and advisory services; business organisation consultancy, including personnel management; business organisation and management consultancy; business organisation and economics consultancy; business management consultancy services; aid and assistance in business management and for the organisation of business activities; consultancy and assistance relating to business planning; business management planning; business project management for others; consultancy and advice in the field of business strategy; business strategy development; business strategy planning; advisory services relating to business risk management; business risk management consultancy; business risk assessment services; negotiation of commercial transactions for third parties; consultancy and assistance relating to business transaction negotiations; recruitment and human resources management services; consultancy and assistance relating to human resources management and recruitment; personnel administration; serving as a human resources department for others; consultancy and auditing in the field of human resources; consultancy and assistance relating to assessment of staff requirements; advisory services relating to the corporate structure of businesses; advisory services relating to the corporate structure of businesses; measuring, drawing up, compilation, analysis and study of statistics; economic study and research; surveys, market research and analysis, in particular for advertising purposes; collection, interpretation and evaluation of commercial data relating to the behaviour and habits of customers; opinion polls; surveys relating to business, business management and business organisation; conducting of internal business communication surveys; business networking services; business networking; business networking consultancy; providing of information, consultancy and assistance, all in connection with the aforesaid fields; none of the aforesaid services relating to the manufacture of interior trim parts for motor vehicles are identical to the opponent’s business management, business organization and business administration assistance because the opponent’s services include or overlap with the contested services.

The contested collection of data in a central file; systemization of information into computer databases; systemizing of data in computer databases; computerised file management; compilation of information into computer databases; providing of information, consultancy and assistance, all in connection with the aforesaid fields; none of the aforesaid services relating to the manufacture of interior trim parts for motor vehicles are included in the opponent’s services business assistance and industrial business assistance and are therefore identical.

The contested services consultancy relating to the encouraging of customer loyalty and customer clubs for commercial, promotional or advertising purposes; advertising, marketing and promotional services; consultancy services relating to advertising, publicity and marketing; public relations consultancy; providing of information, consultancy and assistance, all in connection with the aforesaid fields; none of the aforesaid services relating to the manufacture of interior trim parts for motor vehicles are lowly similar to the services business management of the opponent because they have the same purpose. They can also coincide in provider and end user.

Contested services in Class 36

The contested valuation services; financial and monetary services; consultancy services relating to investment; consultancy and advice relating to financial affairs; financial consultancy, including financial risk management consultancy; consultancy and assistance relating to financial planning; services and assistance provided to businesses relating to financial reorganisation; consultancy relating to financial management and administration; providing of information, consultancy and assistance, all in connection with the aforesaid fields; none of the aforesaid services relating to the manufacture of interior trim parts for motor vehicles are identical to the opponent’s financial consultancy either the opponent’s services include or overlap with the contested services.

Contested services in Class 42

The contested consultancy relating to computing, including in the field of design or improvement of computing solutions; aid and assistance in the context of the management of computer projects, including project management assistance in the context of computer projects and computer specification design assistance; technical project studies in the field of software and computer systems; computer software design; IT services; science and technology services; computer software consultancy; professional consultancy relating to technology; engineering consultancy services; engineering design and consultancy; providing of information, consultancy and assistance, all in connection with the aforesaid fields; none of the aforesaid services relating to the manufacture of interior trim parts for motor vehicles are identical to the opponent’s research and development for others, because the opponent’s services include or overlap with the contested services.

2. 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 and at business customers with specific professional knowledge or expertise. The degree of attention varies from average to high. The services in Classes 35 and 42 are only directed at professional consumers with an average to higher than average attention. The services in Class 36 are directed at professionals and average consumers, however as the purchase of these services can have enormous consequences, the level of attention will be higher.

3. The signs

NOVI	NOVEM
Earlier trade mark	Contested sign

The relevant territory is Denmark.

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). 

Neither of the signs has a meaning for the public in the relevant territory and are, therefore, normally distinctive.

Visually, the signs coincide in the first letters “NOV”. The marks differ in the letters “I” and “EM” at the end of earlier mark and contested mark respectively. The marks are not long and the different endings will be noticed by the consumers.

Therefore, the signs are visually similar at most to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters “NOV”, present identically in both signs. The pronunciation differs in the sound of the letters “EM” of the contested mark and “I” at the end of the earlier mark.

Therefore, the signs are aurally similar at most o an average degree.

Conceptually, neither of the signs has a meaning for the 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.

4. 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.

According to the opponent the earlier trade mark enjoys a high degree of recognition among the relevant public in Denmark in connection with all the services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Website printout from the opponent’s website www.novi.dk in English which states that the opponent has used the mark for 25 years. Dated 20/07/2016.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Both enhanced distinctiveness and reputation require recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

In the present case, the evidence consists of a printout from the opponent’s website dated after the date of filing of the contested mark. It is true that the printout refers to NOVI being an established service provider in Denmark prior to the filing date of the contested mark. However, this documents alone does not support a conclusion that the earlier mark was known by a significant part of the relevant consumers for all or some of the services concerned by the filing date of the contested EUTM application.

Under these circumstances and in the absence of any independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public at the relevant date, the market share held by the mark, the position it occupies in the market in relation to competitors’ services, the duration, extent and geographical area of its use or the extent to which it has been promoted, it is concluded that the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has an enhanced level of distinctiveness.

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.

5. Global assessment, other arguments and conclusion

The services are partially identical and partially similar (to various degrees).

Although the signs coincide in the letters “NOV” at the beginning of the signs, a likelihood of confusion does not exist, since even though the sign are not short according to Office practice, they are also not very long and they only coincide in three out of four/respectively five letters. Furthermore, it should be noted that the level of attention varies from average to above average as described above. The level of attention in Classes 35 and 42 may be average, but the relevant pubic is professional while the level of attention in Class 36 is higher than average while these services are directed at average consumers and a professional public. This leads to the situation that consumers will not be so easily bound for confusion between the marks because they are either a professional public or their level of attention is higher than average.

The signs present visual and aural differences due to the presence of the letters “I” in the earlier mark and “EM” in the contested mark. While it cannot be ascertained that the marks are short signs where even small differences are easily notable, it is also true that the signs are not very long, four or five letters respectively. Consequently, the differences in the end of each mark have to be taken into account when assessing the likelihood of confusion between the marks. The opponent did not prove enhanced distinctive character of the earlier mark.

In spite of the identity/similarity of the services and the normal level of distinctiveness of the earlier mark, there is no likelihood that the consumers may think that the services covered by the signs at issue come from the same undertaking or, as the case may be, from economically-linked undertakings (02/12/2009, T-434/07, Solvo, EU:T:2009:480).

As the services at issue are either specialised, expensive or directed at business consumers, the consumer acquiring such services, would carry out a scrupulous examination of the services on the market and very probably contact the providers. In the course of that selection process, those consumers would be aware not only of the characteristics of the services, but also of the identity of the providers and the marks on the market and would therefore be able to notice even slight differences between those marks. This would also apply to the average consumers who are purchasing financial services in Class 36 and whose level of attention will be higher than average.

The opponent refers to a previous national decision to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the Community trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, ‘Often’, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the case at hand, the previous case referred to by the opponent is not relevant to the present proceedings. The opponent did not provide the Office with sufficient information on the legal and factual background because from the partial translation into English it seems that the decision was based on evidence not available to the Office. Furthermore, it seems that the services are not the same as in the present case (the submitted judgment is referring to businesses as knowledge centers).

The opponent refers to previous decisions of the Office to support its arguments. However it must be noted that 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 it is settled case-law that the legality of decisions is to be assessed purely by reference to the CTMR, and not the Office’s practice in earlier decisions (30/06/2004, T-281/02, ‘Mehr für Ihr Geld’, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the case at hand, the previous cases referred to by the opponent are not relevant to the present proceedings. This is because they refer to marks which are not comparable, neither in length nor similarity in letters (for example, Alentis versus Alensys).

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark:

• Danish trade mark registration No VR 2011 01841 for the figurative mark

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains additional words such as ‘hjemsted for viden’ which are not present in the contested trade mark. Moreover, it does not cover a broader scope of services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Magnus ABRAMSSON

Lars HELBERT

Denitza STOYANOVA-VALCHANOVA

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.