OPPOSITION No B 2 766 296
Scout24 Holding GmbH, Dingolfinger Str. 1-15, 81673 München, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)
a g a i n s t
Batavia Bioservices BV, Zernikedreef 16, 2333 CL Leiden, The Netherlands (holder).
On 30/06/2017, the Opposition Division takes the following
1. Opposition No B 2 766 296 is upheld for all the contested services.
2. International registration No 1 297 460 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the services of international registration designating the European Union No 1 297 460 (figurative mark ), namely against all the services in Class 42. The opposition is based on, inter alia, European Union trade mark registration No 13 636 791 (word mark ‘Scout24’). 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 European Union trade mark registration No 13 636 791.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 12: Vehicles, Apparatus for locomotion by land, In the air or On water, other than motorcycles and structural parts thereof.
Class 35: Advertising; Business management; Business administration; Office functions.
Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs.
Class 38: Telecommunications.
Class 39: Transport; Packaging and storage of goods; Travel arrangement.
Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities.
Class 42: Scientific and technological services and research and design relating thereto; Design and development of computer hardware and software.
Class 44: Medical services; Human hygiene and beauty care; Agriculture, horticulture and forestry services.
Class 45: Legal services; Security services for the protection of property and individuals; Dating services; Escorting of persons; Partnership analysis; Providing of content retrievable via the internet in relation to dating agencies.
The contested services are the following:
Class 42: Biopharmaceutical research services, namely, high-throughput cell culturing, purification and assay processes to identify high quality recombinant protein-producing cell lines, and optimized cell growth, protein production and purification conditions.
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 ‘namely’, used in the holder’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
Contested services in Class 42
The contested biopharmaceutical research services, namely, high-throughput cell culturing, purification and assay processes to identify high quality recombinant protein-producing cell lines, and optimized cell growth, protein production and purification conditions are included in the broad category of the opponent’s Scientific and technological services and research relating thereto. Therefore, they are identical.
- 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.
The services at issue are specialised services directed at customers with specific pharmaceutical-medical knowledge or expertise.
Given that these services are of a highly specialized nature, and because pharmaceutical and medical companies and their professionals exercise a high degree of care when employing research services from another undertaking, the degree of attention is high.
- The signs
Earlier trade mark
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 trade mark is a word mark; the contested sign is a figurative mark composed of the verbal element ‘Scout’ and a figurative element that depicts a magnifying glass hovering over dots that appear in different colours through its lens.
The common verbal element ‘Scout’ will be understood by the English speaking part of the relevant public as ‘make a search for someone or something in various places’ (see at: Oxford Dictionary). Bearing in mind that the relevant services are related to research, and considering that the relevant public consists of pharmaceutical and medical professionals who mostly understand English (09/03/2012, T-207/11, Isense, EU:T:2012:121, § 21-22), the element ‘Scout’ is of limited distinctiveness. Nonetheless, it cannot be excluded that a certain part of the relevant public does not understand English and the verbal element ‘Scout’. Therefore, for this part of the public, this element is distinctive.
The element ‘24’ of the earlier sign will be associated with the availability of the relevant services twenty four hours a day, and as such it is descriptive. Therefore, this element is non-distinctive for all the relevant services.
The figurative element of the contested sign reinforces the meaning encompassed by the verbal element ‘Scout’. It also conveys the meaning ‘search’ or ‘research’ for that part of the public that would not attach any meaning to the verbal element. Taking into account the relevant services, the figurative element is of limited distinctiveness.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37) In the present case, even if the verbal element ‘Scout’ is understood by a part of the relevant public and is therefore of limited distinctiveness, it still has a stronger impact on the consumers than the figurative element.
The contested sign has no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the verbal element ‘Scout’ that is of at least limited distinctiveness. However, they differ in the non-distinctive verbal element ‘24’ of the earlier mark and the figurative element of the contested mark that is of limited distinctiveness and as argued above, has less impact on the consumers than the verbal element.
Therefore, the signs are similar to an at least average degree (and even higher than average degree for the part of the public for which the coinciding element is normally distinctive).
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters
‛S-c-o-u-t’, present identically in both signs. The pronunciation differs in the syllables denoting the number ‘24’ of the earlier sign, for instance ‘twen-ty-four’ (in English) or ‘hu-szon-négy’ (in Hungarian), which have no counterpart in the contested mark. This element is however non-distinctive and as such its impact on the consumers’ perception is limited.
Therefore, and even for the part of the public for which ‘Scout’ is of limited distinctiveness, the signs are similar to a higher than average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning by the English speaking part of the public, for this part of the public the signs are conceptually similar to at least to an average degree.
The non-English speaking part of the public will however only perceive the meaning of the element ‘24’ of the earlier sign and the semantic content of the figurative element of the contested sign. Therefore, for this part of the public the signs are not conceptually similar.
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.
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 services in question from the perspective of the non-English speaking part of the public in the relevant territory. Therefore, for this part of the public, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.
Considering what has been stated above in section c) of this decision in relation to the English-speaking public however the distinctiveness of the earlier mark must be seen as below average for all of the services in question.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
In the present case, the services are identical; the similarity of the signs has been assessed in section c) of this decision.
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). In the present case, the attention of the relevant public is high, however even the highly attentive consumers need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
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 goods/services covered are from the same or economically linked undertakings.
In the present case, with respect to the English-speaking part of the public, the lower than average distinctiveness of the earlier sign is counterbalanced by the identity of the relevant services and by the similarity of the signs found in all the three aspects. Furthermore, as the differences between the signs are confined to a non-distinctive verbal element and a figurative element of secondary influence, it is easily conceivable that the relevant public, even if it perceives the coinciding verbal element ‘Scout’ as being of limited distinctiveness, will make a connection between the conflicting signs and assume that the identical services are from the same or economically linked undertakings.
The non-English speaking part of the public, that does not understand the verbal element ‘Scout’ and therefore perceives it as completely distinctive, will even more likely make a connection between the conflicting signs and assume that the relevant services are from the same or economically linked undertakings. It is true, that with respect to this part of the public the signs were found conceptually not similar. Nonetheless, the signs were found similar in two other aspects and the earlier mark is of normal distinctiveness. Furthermore, the findings that the relevant services are identical and that the differing elements are either non-distinctive or of limited distinctiveness are equally valid for the non-English speaking part of the public.
Considering all the above, there is a likelihood of confusion both on the non-English speaking and on the English speaking part of the relevant public.
As the earlier right No 13 636 791 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).
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 holder 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
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.