ParkLaneInsight | Decision 2565466 – The Insights Group Limited v. ParkLane Insight B.V.

OPPOSITION No B 2 565 466

The Insights Group Limited, Terra Nova, 3 Explorer Road, Dundee DD2 1EG, United Kingdom (opponent), represented by Ablett & Stebbing, 7-8 Market Place, London W1W 8AG, United Kingdom (professional representative)

a g a i n s t

ParkLane Insight B.V., Teleportboulevard 110, 1043 EJ Amsterdam, The Netherlands (applicant), represented by Bakker & Verkuijl B.V., Alexander Office, Prinsenkade 9D, 4811 VB Breda, the Netherlands (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 565 466 is partially upheld, namely for the following contested services:

Class 35: Personnel recruitment and selection (including of interim professionals); selection of personnel, in particular by means of psychological testing; deployment and secondment of personnel; temporary personnel services; employment agencies; personnel consultancy and employment management; vocational guidance; assisting employees in finding new work, outplacement, interim management; consultancy and assistance for businesses and institutions in the business implementation of projects, project management; business strategy consultancy; office functions; consultancy on the drawing up of cvs; administration of cvs and the providing of cvs, including via electronic means and via computer networks; providing of information in relation to available jobs, role requirements and skills, including via computer networks and computer network platforms; data gathering in computerised files (for others), and in particular searching for candidates in personnel databases; arranging of exhibitions, trade fairs and events for business or advertising purposes, in particular in relation to personnel recruitment; career guidance; screening of jobs and employment; online business network services; providing of an online searchable database containing information on career opportunities and business, employment and professional questions and answers; personnel selection using psychological methods; providing of online services in relation to career networks and online information in the field of employment, recruitment (personnel —) and secondment services; drawing up of expert reports with regard to business.

Class 41: Education, training, teaching and tuition services; workshops for training services; organisation of exhibitions and shows for educational purposes; arranging and conducting of colloquiums, conferences, congresses and seminars; editorial services including electronic editorial services; coaching (education); drawing up, compiling, distribution and publication of training material and educational material; career information services; entertainment, computer game and gambling; online providing of games, including radiotelephonic, including via television, the internet or via telecommunications and network communications; entertainment.

Class 44: Psychological counseling and coaching in personal development, in particular for the purpose of increasing personal effectiveness; psychological testing; psychological coaching of individuals and teams in personal and work relationships; psychological consultancy in relation to personal development and competency; psychological testing and assessment; psychological diagnosis; intelligence tests.

2. European Union trade mark application No 13 817 937 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 817 937, namely against all the services in Classes 35, 41 and 44. The opposition is based on, inter alia, European Union trade mark registration No 7 120 661. The opponent invoked Article 8(1)(b) and 8(5) EUTMR. The opponent also based its opposition on the non-registered trade mark ‘INSIGHTS’ used in the course of trade in various Member States and accordingly invoked Article 8(4) 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 right. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 7 120 661.

The goods and services

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

Class 9: Computer software in the field of individual, team and organisational development and HR consulting.

Class 35: Psychometric testing for the selection, professional development and advising on staff or personnel; testing by psychological type theory for the selection, professional development and advising on staff or personnel.

Class 41: Organisation and arranging of seminars, workshops, training sessions, conferences and symposiums, congresses and colloquiums; educational information; educational services; publication of books and texts; all of the aforementioned in the field of people (but not personal relationship) and organisational development; arranging training courses; training and seminars for personnel and business assessment, consultancy and development; presentation skills training; team building training; career consultancy; training service in relation to conflict and stress management; sales training.

The contested services are the following:

Class 41: Education, training, teaching and tuition services; workshops for training services; organisation of exhibitions and shows for educational purposes; arranging and conducting of colloquiums, conferences, congresses and seminars; production of television programmes; editorial services including electronic editorial services; coaching (education); drawing up, compiling, distribution and publication of training material and educational material; career information services; entertainment, computer game and gambling; online providing of games, including radiotelephonic, including via television, the internet or via telecommunications and network communications; entertainment.

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

The terms ‘in particular’ and ‘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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

The contested selection of personnel, in particular by means of psychological testing; personnel selection using psychological methods include, as a broader category, the opponent’s testing by psychological type theory for the selection, professional development and advising on staff or personnel. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested personnel recruitment and selection (including of interim professionals); temporary personnel services; employment agencies; personnel consultancy and employment management; vocational guidance; assisting employees in finding new work, outplacement, interim management; providing of information in relation to available jobs, role requirements and skills, including via computer networks and computer network platforms; career guidance; screening of jobs and employment; providing of an online searchable database containing information on career opportunities and business, employment and professional questions and answers; providing of online services in relation to career networks and online information in the field of employment, recruitment (personnel —) and secondment services; deployment and secondment of personnel; consultancy on the drawing up of cvs; administration of cvs and the providing of cvs, including via electronic means and via computer networks are all services whose purpose is the organisation of people and resources efficiently to direct activities towards common goals and objectives of a business. These contested services therefore overlap with the opponent’s testing by psychological type theory for the selection, professional development and advising on staff or personnel. Therefore, they are identical.

The contested office functions are services of performing the day-to-day operations required by a business to achieve its commercial purpose. They mainly consist of activities that assist in the running of a commercial enterprise (e.g. activities typical of secretarial services, for instance shorthand and typing), as well as support services (e.g. the rental of office machines and equipment). They are considered similar to a low degree to the opponent’s services in Class 35, since these services may have the same purpose: to help others to carry out or improve their businesses. Furthermore, they can coincide in their producer and end user.

The contested consultancy and assistance for businesses and institutions in the business implementation of projects, project management; business strategy consultancy; office functions; data gathering in computerised files (for others), and in particular searching for candidates in personnel databases; arranging of exhibitions, trade fairs and events for business or advertising purposes, in particular in relation to personnel recruitment; online business network services; drawing up of expert reports with regard to business are all business administration or office function services. The opponent’s testing by psychological type theory for the selection, professional development and advising on staff or personnel is at least similar to those contested services, as all of these services aim to assist third parties with the operation and administration of their businesses; they belong to the same market sector and they may be provided by the same undertakings. These services are considered similar to a low degree, as they can coincide in their producer and end user.

Contested services in Class 41

Education services are identically contained in both specifications (including synonyms). They are, therefore, identical.

The contested training services include, as a broader category, the opponent’s training service in relation to conflict and stress management. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested teaching and tuition services; organisation of exhibitions and shows for educational purposes; coaching (education) are educational services and, therefore, overlap with the opponent’s educational services; all of the aforementioned in the field of people (but not personal relationship) and organisational development. Therefore, they are identical.

The contested drawing up, compiling, distribution and publication of training material and educational material overlap with the opponent’s organisation and arranging of training sessions; all of the aforementioned in the field of people (but not personal relationship) and organisational development. Therefore, they are identical.

The contested workshops for training services are included in the broad category of the opponent’s training for personnel. Therefore, they are identical.

The contested arranging and conducting of colloquiums, conferences, congresses, and seminars; all of the aforementioned in the field of people (but not personal relationship) and organisational development are included in the broad category of the opponent’s organisation and arranging of seminars, workshops, training sessions, conferences and symposiums, congresses and colloquiums. They are therefore identical.

The contested career information services include, as a broader category, the opponent’s career consultancy. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested editorial services including electronic editorial services include, as a broader category, the opponent’s publication of books and texts; all of the aforementioned in the field of people (but not personal relationship) and organisational development. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested entertainment (listed twice) is similar to a low degree to the opponent’s publication of books and texts; all of the aforementioned in the field of people (but not personal relationship) and organisational development, as these services can coincide in their distribution channels and are also complementary.

The same applies to the contested computer game and gambling; online providing of games, including radiotelephonic, including via television, the internet or via telecommunications and network communications. These services can have the same distribution channels as and are complementary to the opponent’s abovementioned services; therefore, they are similar to a low degree.

Finally, the remaining contested services, production of television programmes, are sufficiently different from the opponent’s services in Class 41 as regards their providers, intended purpose and methods of use. Moreover, they are not complementary to or in competition with each other, so consumers will not be led to believe that they are rendered by the same company. Therefore, they are dissimilar. For the same reasons, the contested services are also dissimilar to the opponent’s goods in Class 9 and services in Class 35. The contested services relate to the production of television programmes, while the opponent’s goods in Class 9 relate to computer software and the opponent’s services in Class 35 are related to the provision of psychological tests and of all forms of education of persons.

Contested services in Class 44

The contested psychological counseling and coaching in personal development, in particular for the purpose of increasing personal effectiveness; psychological testing; psychological coaching of individuals and teams in personal and work relationships; psychological consultancy in relation to personal development and competency; psychological testing and assessment; psychological diagnosis; intelligence tests are similar to a low degree to the opponent’s services in Class 35. Although the contested services relate to health care and medical practice, they coincide with the opponent’s services in their purpose of organising people and resources efficiently to direct activities towards common goals and objectives of a business. Moreover, these services may target the same public and might be provided by the same undertakings.

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 and similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise. The relevant public’s degree of attention will vary from average to higher than average, depending on the price and frequency of purchase of these services.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

The signs

INSIGHTS

ParkLaneInsight

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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element of the marks, ‘INSIGHT’, and the other element of the contested mark, ‘PARKLANE’, have meanings in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Both marks are word marks.

The earlier mark contains only the element ‘INSIGHTS’, whilst the contested mark features the element ‘INSIGHT’ together with the element ‘PARKLANE’.

The contested sign as a whole is meaningless. However, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58), and thus the contested mark will be split into the elements ‘PARKLANE’ and ‘INSIGHT’.

The word ‘INSIGHT(S)’ of both marks in English means ‘the ability to perceive clearly or deeply’ (http://www.wordreference.com/definition/insight) and the element ‘PARKLANE’ of the contested mark will be understood as a whole by the relevant public as referring to a major road in many cities.

The applicant is of the opinion that the element ‘INSIGHTS’ of which the earlier mark is composed is inherently weak and descriptive of the services offered by the opponent. The Opposition Division finds that, despite the word being allusive of the consequence of the services offered or their function, it must also be considered that this is a very subjective notion in itself and, therefore, it is considered that the word ‘INSIGHTS’ has at least a minimum degree of distinctive character.

Therefore, however these words are understood, there is no obvious connection with the services at issue and, as such, there are no elements that are more distinctive than others in the contested mark.

Moreover, both marks are word marks and, therefore, they contain no elements that are clearly more eye-catching than others.

Visually, the earlier sign is included almost in its entirety at the end of the contested sign, with the exception of its final letter, ‘S’. However, the marks differ in the first component of the contested mark, ‘ParkLane’. The fact that one mark is in upper case and the other in upper and lower case is irrelevant, as the marks are word marks, meaning that protection is sought for the words themselves rather than the way in which they are depicted.

Therefore, considering that the signs coincide in the only verbal element of the earlier mark, with the exception of its final letter, ‘S’, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the letters ‛INSIGHT’, which are present identically in both signs. The pronunciation differs in the letters ‘PARKLANE’ of the contested sign, which have no counterparts in the earlier mark. Moreover, the final letter, ‘S’, of the earlier mark will not be pronounced by the relevant public and, therefore, does not affect the aural comparison.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the meanings of the signs have been explained above and, without any doubt, the signs are conceptually similar due to the marks’ coinciding element ‘INSIGHT’. Therefore, taking into account the signs as a whole, they are found to be conceptually similar to an average degree.

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.

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 being of at least a minimum degree, considering what has been stated above in section c) of this decision.

Global assessment, other arguments and conclusion

The services are partly identical and similar to a low degree and partly dissimilar. The degree of attention is average, since the examination has proceeded on the basis of the general public. The earlier mark has at least a minimum degree of distinctive character and, on top of these factors, the earlier mark is almost wholly included in the contested mark.

In addition, 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). 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).

It is clear from the above that consumers will confuse the marks or make a connection between the conflicting signs and assume that the services covered are from the same or economically linked undertakings. Indeed, 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 goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 7 120 661. 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 from the above that the contested trade mark must be rejected for the services found to be identical or similar to a low degree to those of the earlier trade mark.

The rest of the contested services are dissimilar. 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.

Since the opposition is partially 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 and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

European Union trade mark registration No 1 398 478 for the word mark ‘INSIGHTS’ registered for services in Class 41.

European Union trade mark registration No 7 135 148 for the figurative mark registered for goods in Class 9 and services in Classes 35 and 41.
European Union trade mark registration No 7 135 312 for the figurative mark registered for goods in Class 9 and services in Classes 35 and 41.

European Union trade mark registration No 7 135 429 for the figurative mark registered for goods in Class 9 and services in Classes 35 and 41.
European Union trade mark registration No 7 128 747 for the word mark ‘Insights Navigator’ registered for goods in Class 9 and services in Classes 35 and 41.
European Union trade mark registration No 7 121 205 for the word mark ‘Insights Discovery’ registered for goods in Class 9 and services in Classes 35 and 41.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘INSIGHTS’ constitute a ‘family of marks’ or ‘marks in a series’. However, as similarity of goods and services is a necessary condition for its application, the opposition based on this argument cannot be successful. 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.

The opposition will be now examined on the ground of Article 8(5) EUTMR in respect of the services found to be dissimilar.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade marks

According to the opponent, all of the earlier European Union trade mark registrations have a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 12/03/2015. Therefore, the opponent was required to prove that the earlier trade marks had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

European Union trade mark registration No 7 120 661 for the word mark ‘INSIGHTS’:

Class 9: Computer software in the field of individual, team and organisational development and HR consulting.

European Union trade mark registration No 1 398 478 for the word mark ‘INSIGHTS’ registered and for which reputation has been claimed for the following services in Class 41: arranging training courses, training events and seminars for personnel assessment, consultancy and development, career consultancy, conflict and stress management, psychological type theory, psychometric testing, sales training, strategic management.

European Union trade mark registration No 7 135 148 for the figurative mark registered and for which reputation has been claimed for the following goods in Class 9: computer software in the field of individual, team and organisational development and HR consulting and services in Class 35: psychometric testing for the selection, professional development and advising on staff or personnel; testing by psychological type theory for the selection, professional development and advising on staff or personnel; strategic business management, and in Class 41: Organisation and arranging of seminars, workshops, training sessions, conferences and symposiums, congresses and colloquiums; educational information; educational services; publication of books and texts; all of the aforementioned in the field of people (but not personal relationship) and organisational development; arranging training courses; training and seminars for personnel and business assessment, consultancy and development; presentation skills training; team building training; career consultancy; training service in relation to conflict and stress management; sales training..
European Union trade mark registration No 7 135 312 for the figurative mark registered and for which reputation has been claimed for the following goods in Class 9: computer software; all in the field of employee, personal, team, leadership and organizational development and services in Class 35: psychometric testing for the selection, professional development and advising on staff or personnel; testing by psychological type theory for the selection, professional development and advising on staff or personnel; strategic business management, and in Class 41 organisational and arranging of seminars; workshops; training sessions; conferences and symposiums; congresses and colloquiums; educational information; educational services; publication of books and texts; all the aforementioned in the field of people (but not personal relationship) and organisational development; arranging training courses; training and seminars for personnel and business assessment; consultancy and development; presentation skills training; team building training; career consultancy; training service in relation to conflict and stress management; sales training; all in the field of employee, personal, team, leadership and organizational development.

European Union trade mark registration No 7 135 429 for the figurative mark registered and for which reputation has been claimed for the following goods in Class 9: computer software in the field of individual, team and organisational development and HR consulting and services in Class 35: psychometric testing for the selection, professional development and advising on staff or personnel; testing by psychological type theory for the selection, professional development and advising on staff or personnel; strategic business management, and in Class 41 organisation and arranging of seminars, workshops, training sessions, conferences and symposiums, congresses and colloquiums; educational information; educational services; publication of books and texts; all of the aforementioned in the field of people (but not personal relationship) and organisational development; arranging training courses; training and seminars for personnel and business assessment, consultancy and development; presentation skills training; team building training; career consultancy; training service in relation to conflict and stress management; sales training.

European Union trade mark registration No 7 128 747 for the word mark ‘Insights Navigator’ registered and for which reputation has been claimed for the following goods in Class 9: computer software in the field of individual, team and organisational development and HR consulting and services in Class 35: psychometric testing for the selection, professional development and advising on staff or personnel; testing by psychological type theory for the selection, professional development and advising on staff or personnel; strategic business management, and in Class 41 organisation and arranging of seminars, workshops, training sessions, conferences and symposiums, congresses and colloquiums; educational information; educational services; publication of books and texts; all of the aforementioned in the field of people (but not personal relationship) and organisational development; arranging training courses; training and seminars for personnel and business assessment, consultancy and development; presentation skills training; team building training; career consultancy; training service in relation to conflict and stress management; sales training.

European Union trade mark registration No 7 121 205 for the word mark ‘Insights Discovery’ registered and for which reputation has been claimed for the following goods in Class 9: computer software; all in the field of employee, personal, team, leadership and organizational development and services in Class 35: Psychometric testing for the selection, professional development and advising on staff or personnel; testing by psychological type theory for the selection, professional development and advising on staff or personnel; strategic business management, and in Class 41 Organisation and arranging of seminars, workshops, training sessions, conferences and symposiums, congresses and colloquiums; educational information; educational services; publication of books and texts; all of the aforementioned in the field of people (but not personal relationship) and organisational development; arranging training courses; training and seminars for personnel and business assessment, consultancy and development; presentation skills training; team building training; career consultancy; training service in relation to conflict and stress management; sales training; all in the field of employee, personal, team, leadership and organizational development .

The opponent also claimed to have a reputation for goods in Class 16. However, as these goods have not been claimed as the basis of the opposition, they cannot be taken into consideration.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 21/12/2015, the opponent submitted the following evidence:

Witness statement by Ms Vivien Buchan, Director of Finance and Corporate Affairs of Insights Learning & Development Limited (hereinafter referred to as ‘the Company’), the exclusive licensee of Insights Group Limited. The extensive statement sets out evidence of use of the ‘INSIGHTS’ marks in relation to courses, workshops, programmes and their success since 1996.

Attached to the witness statement are the following exhibits:

Screenshot of the company’s website, www.insights.com, containing a map with indications of the locations of the global offices of the company in Europe and North America. An extract from the website dated 14/12/2015 is also included, in which the different offices are listed and are located, inter alia, in Austria, Belgium, Luxembourg, Bulgaria and Croatia. In the extract from the website, the mark can be seen.

Extracts from the company’s website dated 14/12/2015, with information on recent case studies concerning important clients, such as Philips, Novartis, Technip and Xerox. Screenshots from the company’s website are also attached, in which there are short descriptions of specific case studies followed by more detailed explanations of the studies. In this document, the figurative mark can be seen.

Information material regarding courses, workshops and programmes run under the trade marks ‘INSIGHTS’, and ‘INSIGHTS NAVIGATOR’, including material in Greek dated 2014; materials in English including, inter alia, ‘Discovering Sales Effectiveness’ dated 2009-2014 and ‘Navigating Team Effectiveness’ dated 2009, a learning guide entitled ‘Transformational Leadership’ dated 2009-2010 and a programme related to ‘Transformational Leadership’ dated 2014; and programmes in Spanish and Italian.

PowerPoint presentation (dated, according to the witness statement, 2011) of the company’s business, type of clients, etc. In the PowerPoint presentation, the trade marks ‘INSIGHTS’, , ‘INSIGHTS NAVIGATOR’, and can be seen.
Materials used for the company’s ‘Discovery’ four-day accreditation course, dated 2007-2008. The marks ‘Insights Discovery’ and can be seen.

Learning guide entitled ‘Understanding the Insights Wheel’ dated 2006-2014. The marks ‘Insights Discovery’ and can be seen. According to the witness statement, in the period 2004-2011 approximately 27 900 copies were issued to attendees in the United Kingdom only.

Learning guide entitled ‘A Brief Journey, Extracts from the Insights Discovery Personal Effectiveness Programme’ dated 2006-2014. The marks and can be seen. According to the witness statement, in the period 2004-2011 approximately 25 450 copies were distributed across the UK.

Document with a table setting out the company’s turnover in pounds sterling from 2008 to 2014 in France, the United Kingdom, Italy and Germany.

Ten invoices, five from the regional office in France and in French without translation, dated from 2008 to 2015.

Range of advertisements of the company in French, English and Greek.

Document with a table setting out the company’s advertising and promotional expenditure in pounds sterling from 2008 to 2014 in France, the United Kingdom, Italy and Germany.

Screenshots of the company’s website in which different ‘INSIGHTS’ marks can be seen.

Screenshot of the company’s Facebook page dated 12/05/2015, in which it can be seen that it has received 9 094 likes and 61 visits.

Screenshot of the company’s Twitter page dated 12/05/2015, in which it can be seen that it has received 4 748 tweets, it is following 2 436 others, it has 3 480 followers and it has 2 218 favourites. Screenshots of the company’s LinkedIn page dated 12/05/2015 and of the company’s YouTube page dated 12/05/2015, in which it can be seen that it has received 42 417 views and 280 subscribers.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

It is clear from the evidence that the earlier trade marks have been subject to long-standing and intensive use. However, despite showing important use of the trade marks, the evidence provides little indication of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not support the sales volumes or the extent to which the trade marks have been promoted that are mentioned in the tables.

Moreover, the evidence consists primarily of documentation emanating from the exclusive licensee of the opponent and there is no information from independent third parties that could serve to corroborate the opposing party’s statements on the brand awareness and reflect in a clear and objective manner the degree of recognition of the earlier mark among the relevant public. As far as the witness statement is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR cites means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. On the other hand, as far as the probative value of this kind of evidence is concerned, the Office makes a distinction between statements coming from the sphere of the party concerned itself or its employees and statements drawn up by an independent source, following the established case-law (09/12/2014, T-278/12, PROFLEX, EU:T:2014:1045, § 51; 06/11/2014, T-463/1, MB, EU:T:2014:935, § 54). Statements coming from the sphere of the owner of the earlier mark (drawn up by the interested parties themselves or their employees) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (11/01/2011, R 0490/2010-4, BOTODERM, § 34; 27/10/2009, B 1 086 240; 31/08/2010, B 1 568 610). The probative value of a statement depends first and foremost on the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 42).

The final outcome depends on the overall assessment of the evidence in each individual case. In general, further material is necessary for establishing evidence of reputation, since such statements have to be considered as having less probative value than physical evidence or evidence originating from independent sources. Therefore, the probative strength of the further material submitted is very important. An assessment should be made of whether the content of the affidavit is sufficiently supported by the further material (or vice versa).

In the present case, the witness statement contains as attachments tables with data showing significantly high sales figures and advertisement expenditures. However, this information is provided in simple tables of unknown origin, presented by the licensee of the opponent. The evidence attached to the witness statement does not support the information provided in the statement. The invoices, the workshops, programmes and courses materials, and the web extracts do not provide any information about the degree of knowledge of the earlier trade mark amongst the relevant consumers. The only documents that demonstrate recognition amongst the consumers are the screenshots of the LinkedIn, Facebook, Twitter and YouTube pages of the company, in which the number of followers, visits and likes can be seen. However, these figures are not significant enough to consider that the marks enjoy a significant reputation. Although it is apparent that efforts were made to advertise the marks and to enhance their presence in these types of media, this information alone is not sufficient to draw a conclusion on the degree of recognition of the marks among the relevant public.

Without any direct evidence of the degree of recognition of the marks, the indirect indications, such as sales volumes and advertising, would have to be very convincing. In the present case, the high sales and advertising figures are provided in a document with only a limited probative value, supported by evidence of some but not very extensive advertisement activity. Such evidence is not sufficient to prove that a substantial part of the relevant public recognises the marks.

Therefore, in the absence of additional objective evidence – such as surveys on the mark’s recognition, information about the market share held by the mark and the proportion of the relevant section of the public that, because of the marks, identifies the goods and services as originating from the opponent, or independent press articles commenting on the brand awareness – that could enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier marks by the relevant public, it is concluded that the evidence does not clearly demonstrate the degree of recognition of the trade marks in the relevant territory. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

To sum up, despite showing use of the earlier trade marks, the evidence does not provide any information on the degree of recognition of the trade marks by the relevant public. Moreover, the documents that relate to the extent of use are of limited probative value or do not demonstrate such an extent of use that would allow the conclusion to be drawn that a significant part of the public is familiar with the earlier trade mark. Consequently, despite the large volume of evidence, the information it contains does not demonstrate that the earlier marks had acquired a reputation at the time of filing of the contested EUTM.

As seen above, one of the cumulative requirements for the application of Article 8(5) EUTMR is that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled and the opposition must be rejected insofar as it is based on this ground.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opposition is also based on the non-registered trade mark ‘INSIGHTS’ used in the course of trade in the United Kingdom as well as in Bulgaria, Belgium, the Czech Republic, Denmark, Germany, Spain, Greece, France, Italy, Ireland, Luxembourg, Hungary, the Netherlands, Austria, Poland, Romania, Finland, Sweden, Slovakia and Slovenia for psychometric testing for the selection, professional development and advising on staff or personnel, organisation and arranging seminars, workshops, training sessions and conferences, including training and seminars for personnel and business assessment, consultancy and development, presentation skill training, team building training, career consultancy, training services in relation to conflict and stress management and sales training, under Article 8(4) EUTMR.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection within the period referred in Rule 19(1) EUTMIR.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘to provide EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number and the number and title of the law) and the content (text) of the legal provision, either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit within the relevant period any information on the legal protection granted to the non-registered trade mark invoked in the following Member States: Bulgaria, Belgium, the Czech Republic, Denmark, Germany, Spain, Greece, France, Italy, Ireland, Luxembourg, Hungary, the Netherlands, Austria, Poland, Romania, Finland, Sweden, Slovakia and Slovenia. It is not sufficient to make a general reference to the national legislation, which is listed merely for information purposes in the ‘Table on National Rights that constitute “earlier rights” in the sense of Article 8(4) EUTMR’ of the Office’s Guidelines concerning opposition under Article 8(4) EUTMR.

Therefore, the opposition, as far as it is based on the abovementioned non-registered trade mark in the abovementioned territories, must fail.

However, as regards the non-registered trade mark ‘INSIGHTS’ used in the course of trade in the United Kingdom, the opponent invokes the application of passing off and submits several judgments and publications related to the matter. As is apparent, for example, from the submitted judgment of the High Court of Justice before Mr Justice Henderson of 22/05/2013, [2013] EWHC 1364 (Ch), § 155, one of the conditions of a successful passing off claim is misrepresentation. Misrepresentation can be defined as a likelihood that the public will believe that the goods or services offered by the defendant (i.e. the owner of the contested mark) are goods or services of the plaintiff (i.e. the applicant).

In the present case, the remaining goods and services, for which the opposition has not been upheld, are the following:

Class 41: Production of television programmes.

These services have nothing in common with the services for which the non-registered mark was, according to the opponent, used. The contested services relate to the production of television programmes while the opponent’s goods relate to computer software, and the services are related to the provision of psychological tests and of all forms of education of persons. The conflicting services clearly differ in their nature and purpose. Moreover, they are provided by different companies, are distributed through different channels and target different consumers. In the absence of any other relevant factors in common, there is no reason to believe that consumers would assume that these services offered under the contested mark are in fact services originating from the opponent. Consequently, misrepresentation is not likely to take place and one of the conditions of the passing off action is not fulfilled.

Consequently, the opponent failed to prove that, under the national law, the invoked sign confers on the opponent the right to prohibit the use of the contested mark.

It follows from the above that one of the cumulative requirements for the opposition to be successful under Article 8(4) EUTMR is not fulfilled and the opposition must be rejected insofar as it is based on Article 8(4) EUTMR and in relation to the abovementioned 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. 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

Francesca DINU

Cristina CRESPO MOLTO

Loreto URRACA

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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