OPPOSITION No B 2 615 204

O2 Worldwide Limited, 20 Air Street, London  W1B 5AN, United Kingdom (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge  CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

Hay Group Holdings Inc, 103 Foulk Road, Suite 202, Wilmington Delaware 19803 United States of America (applicant), represented by Keltie LLP, No. 1 London Bridge, London  SE1 9BA, United Kingdom (professional representative).

On 14/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 615 204 is upheld for all the contested services.

2.        European Union trade mark application No 14 332 597 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application (EUTM) No 14 332 597. The opposition is based on, inter alia, EUTM No 13 108 139.The opponent invoked Article 8(1)(b) and 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 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 EUTM No 13 108 139.

1. The services

The services on which the opposition is based are, inter alia, the following:

Class 35: Business management; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network

Class 41: Education; providing of training; Providing on-line electronic publications, not downloadable; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network

The contested services are the following:

Class 35: Management consulting and advisory services in the areas of corporate growth strategy, innovation and growth processes, organizational transformation, and talent management and development strategies.

Class  41: Business training in the field of sales and leadership development, executive coaching and development of education programs for employees and executives; Providing training in the form of courses, classes, seminars, workshops and online training in the form of webinars, courses, seminars, workshops in the fields of leadership development, executive compensation, establishing compensation plans, organizing management performance appraisals, creating strategic plans, measuring corporate performance and evaluating employee benefit plans; Consulting in the field of business training for leadership development, executive compensation, establishing compensation plans, organizing management performance appraisals, creating strategic plans, measuring corporate performance and evaluating employee benefit plans; Providing online publications, namely, newsletters, books, magazines, written articles, and studies in the field of leadership development, executive compensation, establishing compensation plans, organizing management performance appraisals, creating strategic plans, measuring corporate performance and evaluating employee benefit plans.

Class 35

The contested management consulting and advisory services in the areas of corporate growth strategy, innovation and growth processes, organizational transformation, and talent management and development strategies are included in the broader services from Class 35 of the earlier right. Thus they are identical.

Class 41

All of the services are identical, for the reasons below:

The contested business training in the field of sales and leadership development, executive coaching and development of education programs for employees and executives; providing training in the form of courses, classes, seminars, workshops and online training in the form of webinars, courses, seminars, workshops in the fields of leadership development, executive compensation, establishing compensation plans, organizing management performance appraisals, creating strategic plans, measuring corporate performance and evaluating employee benefit plans are included in the broader providing of training from Class 41 of the earlier right. As are the  contested consulting in the field of business training for leadership development, executive compensation, establishing compensation plans, organizing management performance appraisals, creating strategic plans, measuring corporate performance and evaluating employee benefit plans given that these are included in the provision of training information; advisory services relating to the aforesaid service as found in the earlier right.

The contested providing online publications, namely, newsletters, books, magazines, written articles, and studies in the field of leadership development, executive compensation, establishing compensation plans, organizing management performance appraisals, creating strategic plans, measuring corporate performance and evaluating employee benefit plans is included in the broader providing on-line electronic publications, not downloadable from Class 41 of the earlier right.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high given that some of the services such as the management consultancy related activities may be expensive and also have important implications on the smooth running of a business.

3. The signs

	O2L
Earlier trade mark	Contested sign

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).

The earlier mark refers to the concept of a chemical formula, namely, oxygen in its stable form. This formula is commonly known throughout the world and as such the relevant public will be aware of this concept. ‘O2’ is distinctive in relation to the relevant services.  

As to the contested sign, even if it includes the letter ‘L’ at the end, this does not alter the fact that the public will most probably perceive the same concept of a chemical formula as this is visually and aurally clear. The fact that ‘O2’ is not represented on a split-level, as in the earlier mark, is not relevant since the chemical formula is frequently referred to in both ways.

The letter ‘L’ may be perceived as just that (a letter of the alphabet) or as a reference to ‘Large’ or even ‘Litre’, for example, as the use of the letter ‘L’ is a common abbreviation. However this has no bearing on distinctiveness in the case at hand. Even if it is true that differences in short signs are clearly perceivable, the fact that the disparity is in the last letter of the contested sign diminishes the impact of this divergence given that signs are read from left to right.

In view of the foregoing, visually and aurally the signs coincide in ‘O2’. The figurative elements of the earlier mark are so minimal that they hardly constitute a great difference between the signs as the colouring will be perceived as a decorative feature. This only leaves the last letter of the contested sign as a true differentiator and even then this, as explained above, is not significant. Thus the signs are highly similar.

Conceptually, the signs both refer to a chemical formula for oxygen and the fact that ‘L’ may be perceived as a reference to the letter of the alphabet, a size or a measurement does not alter this. Consequently there is at least an average degree of similarity. 

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 identical and are directed at professionals displaying an average to high degree of attention.

The comparison of signs illustrates the strong similarities between them.

It should be borne in mind that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the services covered are from the same or economically linked undertakings. In this regard, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub brand, a variation of the earlier mark, configured in a different way according to the type of services which it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). Consequently, there is a patent risk that the marks will be confused.

Considering all the above, there is a likelihood of confusion on the part of the public.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the  services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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.

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

Adriana VAN ROODEN

Vanessa PAGE

Lucinda CARNEY

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.