OPPOSITION No B 2 680 299

Unowhy SAS, 80 bis, rue d'Anjou, 92100 Boulogne-Billancourt, France (opponent), represented by Cabinet Le Guen Maillet, 5, place Newquay B.P. 70250, 35802 Dinard Cédex, France (professional representative)

a g a i n s t

Scool Oy , Tarkk'ampujankuja 1, 50100 Mikkeli, Finland (applicant), represented by Dottir Asianajotoimisto Oy, Telakkakatu 6 RAK 24, 00150 Helsinki, Finland (professional representative).

On 14/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 680 299 is upheld for all the contested goods and services, namely 

Class 9:        Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing apparatus; computers; computer software; computer software in particular for teaching purposes; computer software in particular for editing news content; teaching apparatus; instructional apparatus.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; publishing and reporting; publication of educational teaching matters; publication of instructional literature; seminars; workshops; entrepreneurial workshops; conferences, exhibitions and competitions; sound and video production; photography; production of training films; education information; teaching services relating to pedagogy techniques; training and organizing of training in connection with project-based learning; arranging of award ceremonies; educational services provided by the Internet; seminars, conferences and workshops provided via the Internet; providing of studies and reports relating to teaching.

Class 42:        Design programming and development of computer hardware and software; design, development and programming of computer software in particular for teaching purposes; design, development and programming or computer software in particular for editing of news content.

2.        European Union trade mark application No 14 861 231 is rejected for all the contested goods and services. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 861 231, namely against all the goods and services in Classes 9 and 41 and some of the services in Class 42. The opposition is based on French trade mark registration No 14 4 059 480. 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.

1. The goods and services

On 23/03/2016 the opponent based its opposition on the following goods and services:

Class 9:        Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recanting media; data processing apparatus, computers; computer software; computer software in particular for teaching purposes; computer software in particular for editing news content; teaching apparatus; instructional apparatus.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; publishing and reporting; publication of educational teaching matters; publication of instructional literature; seminars; workshops; entrepreneurial workshops; conferences, exhibitions and competitions; sound and video production; photography; production of training films; education information; teaching services relating to pedagogy techniques; training and organizing of training in connection with project-based learning; arranging of award ceremonies; educational services provided by the Internet; seminars, conferences and workshops provided via the Internet; providing of studies and reports relating to teaching.

Class 42:        Design programming and development of computer hardware and software; design, development and programming of computer software in particular for teaching purposes; design, development and programming or computer software in particular for editing of news content.

However, the Opposition Division notes that not all the aforementioned goods and services are covered by the trade mark on which the opposition is based. Consequently, only the goods and services which are identically contained in both lists (i.e. the goods on which the opposition was based on one hand and the goods actually covered by the earlier mark on the other) will be taken into account, namely the following:  

Class 9:        Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, compact discs, DVDs and other digital recording media; computers; computer software; teaching apparatus.

Class 41:        Education; providing of training; entertainment; seminars; workshops; conferences, exhibitions; sound and video production.

Class 42:        Design programming and development of computers and computer programs.

The contested goods and services are the following:

Class 9:        Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing apparatus; computers; computer software; computer software in particular for teaching purposes; computer software in particular for editing news content; teaching apparatus; instructional apparatus.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; publishing and reporting; publication of educational teaching matters; publication of instructional literature; seminars; workshops; entrepreneurial workshops; conferences, exhibitions and competitions; sound and video production; photography; production of training films; education information; teaching services relating to pedagogy techniques; training and organizing of training in connection with project-based learning; arranging of award ceremonies; educational services provided by the Internet; seminars, conferences and workshops provided via the Internet; providing of studies and reports relating to teaching.

Class 42:        Design programming and development of computer hardware and software; design, development and programming of computer software in particular for teaching purposes; design, development and programming or computer software in particular for editing of news content.

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 term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the 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 goods in Class 9

The contested apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, compact discs, DVDs and other digital recording media; computers; computer software; teaching apparatus;  instructional apparatus are also covered by the earlier mark, including synonyms. Thus, these goods are identical.

The contested recording discs overlap with the opponent’s digital recording media. It follows that these goods are identical.  

The contested computer software in particular for teaching purposes; computer software in particular for editing news content are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested data processing apparatus overlap with the opponent’s teaching apparatus. Consequently, these goods are identical.

Contested services in Class 41

The contested education; providing of training; entertainment; sound and video production; seminars; workshops, conferences, exhibitions are also covered by the earlier mark. Thus, these services are identical.

The contested entrepreneurial workshops are included in the broad category of the opponent’s workshops. These services are then identical.

The contested seminars, conferences and workshops provided via the Internet are included in the broad category of the opponent’s seminars, conferences and workshops. These services are identical.

The contested training and organizing of training in connection with project-based learning are included in the opponent’s broad category of providing of training. These services are identical.

The contested teaching services relating to pedagogy techniques; educational services provided by the Internet are included in the broad category of the opponent’s education. Thus, these services are identical.

The contested production of training films are included in the broad category of the opponent’s sound and video production. Thus, these services are identical.

The contested education information consists in providing a user with materials (general or specific) about education. This service is related to the opponent’s education. It is true that these services have a different nature. However, they share origin, relevant public and distribution channels. Thus, they are deemed to be similar.

The contested sporting and cultural activities are similar to the opponent’s entertainment, as they have the same purpose. They can coincide in their public and distribution channels.

The contested photography is similar to the opponent’s sound and video production. Although having different subjects, these services are all related to the media production. It is likely to expect that the same undertaking may provide all of these services depending on the particular needs of clients, also considering that the necessary expertise when dealing with video production or photography is rather close. Since relevant public and distribution channels can also coincide, these services are deemed to be similar.

The contested competitions; arranging of award ceremonies are related to the opponent’s conferences. These services can have the same origin. Also, they can coincide in their public and distribution channels. Thus, they are deemed to be similar.

The contested publishing and reporting; publication of educational teaching matters; publication of instructional literature are similar to a low degree to the opponent’s education, as they can coincide in their distribution channels. Furthermore, they are complementary.

The contested providing of studies and reports relating to teaching are considered similar to a low degree to the opponent’s providing of training. These services target the same public and are often supplied by the same providers. The opponent’s services could be offered by companies that also provide studies and reports on the activity organised. Therefore, these services are complementary.

Contested services in Class 42

The contested design programming and development of computer hardware and software are synonyms of the opponent’s design programming and development of computers and computer programs in Class 42. Thus, these services are identical.

The contested design, development and programming of computer software in particular for teaching purposes; design, development and programming or computer software in particular for editing of news content are included in the broad category of the opponent’s design programming and development of computers and computer programs. Therefore, they are identical.

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 goods and services found to be identical or similar to various degrees are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention is expected to be average.

3. The signs

SQOOL	SCOOL
Earlier trade mark	Contested sign

The relevant territory is France.

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 words ‘SQOOL’ and ‘SCOOL’ have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in four out of five letters in the same position, namely the letters ‘S(-)OOL’. However, they differ in their second letter, namely the letter ‘Q’ in the case of the earlier mark and the letter ‘C’ in the case of the contested sign. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of all of their letters, considering that the letters ‘Q’ and ‘C’ being in those positions will be pronounced in an identical manner. Therefore, the signs are aurally identical.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and 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 goods and services covered by the trade marks in dispute have been found partly identical, partly similar and partly similar to a low degree.

The marks are both word marks. They share four out of five letters. The only differentiating letter is, beside, aurally identical.

 

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).

Due to the aural identity and the high visual similarity and the absence of any dominant or non-distinctive elements in the signs, a likelihood of confusion exists on the part of the public.

This is also true for those services which have been found similar to a low degree. In fact, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (judgment of 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 14 4 059 480. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Angela DI BLASIO

Andrea VALISA

Janja FELC

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.