OPPOSITION No B 2 377 508
Matthew Desmier, 69 Green Road, Poole BH15 1QH, United Kingdom (opponent)
a g a i n s t
Bright Blue Day Ltd, Quay House, The Quay, Poole BH15 1HA, United Kingdom (applicant) represented by Brookes IP, Windsor House, 6-10 Mount Ephraim Road, Tunbridge Wells, Kent TN1 1EE, United Kingdom (professional representative).
On 14/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 377 508 is partially upheld, namely for the following contested services:
Class 35: Advertising; business management; business administration; office functions.
Class 45: Legal services.
2. European Union trade mark application No 12 585 485 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 all the goods and services of European Union trade mark application No 12 585 485 for the figurative mark .
The opposition is based on United Kingdom trade mark registration No 3 016 727 for the series of two trade marks ‘SILICON BEACH’ and ‘silicon beach’. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 16: Printed matter, publications, brochures, advertising material, stationary; writing implements; envelopes; note pads; pens; pencils; magazines; books; calendars; diaries; paper bags; promotional material, posters.
Class 25: Clothing; headwear; footwear; polo shirts, t-shirts, pullovers, sweatshirts; hats; belts (non-leather); other clothing and clothing accessories included in Class 25.
Class 35: Business analysis services; business advice, assistance, appraisal, consultancy, evaluation and planning; business development services; promotional and marketing activities; arranging of exhibitions.
Class 41: Arranging of seminars and conferences, delivery of seminars and conferences; performance of seminars and conferences; Educational and training services; all relating to technology, telecommunications, intellectual property and digital media.
Class 42: Services for the creation, acquisition, enforcement, protection and exploitation of intellectual property rights, digital media and technology; hosting websites; design of telecommunications apparatus and installations.
The contested services are the following:
Class 35: Advertising; business management; business administration; office functions.
Class 41: Education; providing of training; entertainment, sporting and cultural activities.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Class 45: Legal services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 advertising is included in the broad category of the opponent’s promotional and marketing activities. Therefore, they are identical.
Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. These services include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the management of a business.
Given the above it is clear that the contested business management includes as broader category the opponent’s business advice and 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.
Business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. The contested business administration is similar to the opponent’s business assistance services. These services have a similar nature and purpose and may be offered by the same company. They also target the same relevant consumer.
Office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. The contested office functions are similar to a low degree to the opponent’s business advice. These services may coincide in relevant public and may come from the same provider.
Contested services in Class 41
The contested education, providing of training include as broader categories the opponent’s educational and training services; all relating to technology, telecommunications, intellectual property and digital media. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested entertainment, sporting and cultural activities are dissimilar to all of the opponent’s goods and services. The nature and purpose of the goods and services are different as are their method of use. They are neither in competition nor are they complementary. The distribution channels and relevant public do not normally coincide.
Contested services in Class 42
The contested scientific and technological services and research and design relating thereto include as broader categories or overlaps with the opponent’s design of telecommunications apparatus and installations. 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 design and development of computer hardware and software includes as a broader category or overlaps with the opponent’s design of telecommunications apparatus. 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 industrial analysis is similar to a low degree to the opponent’s business analysis services in Class 35. The object of the analysis differs but the purpose of the services is similar, that is to make an analysis of a given set of circumstances or variables and to come to conclusions in order to aid decision taking in the particular fields. In addition the services may be directed at the same consumers.
The contested research services are similar to a low degree to the opponent’s educational and training services; all relating to technology, telecommunications, intellectual property and digital media. Education and research are related fields and are often provided by the same providers for example universities. The purpose of research is to discover new facts and findings in a given field. The purpose of education is to transmit knowledge and information. Therefore the purpose of learning is common to both services.
Contested services in Class 45
The contested legal services are similar to the opponent’s services for the enforcement of intellectual property rights in Class 42. The nature of these services may coincide. They are often offered by the same kind of undertaking and may be directed at the same end consumer.
- 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 varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention is considered to vary from average to high. In particular the business management services and some of the technological services tend to be costly and may have an important impact on the success of a business and so the degree of attention will be high at least for these services.
- The signs
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Series of two marks:
SILICON BEACH
silicon beach
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Earlier trade mark |
Contested sign |
The relevant territory is the United Kingdom.
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 opponent’s mark is a series of two marks with protection of two variants, ‘SILICON BEACH’ and ‘silicon beach’ The marks are reproduced in standard typeface in one line and so are word marks, the only difference between them being that one is in upper case while the other is in lower case letters. However differences in upper case and lower case are immaterial and so the Opposition Division will refer to the series of marks of the opponent jointly as the earlier mark and will make no distinction between the two marks in the series.
The common element ‘SILICON’, according to the Collins English dictionary, is ‘an element that is found in sand and in minerals such as quartz and granite. Silicon is used to make parts of computers and other electronic equipment’ and it is also a modifier ‘denoting an area of a country that contains a density of high-technology industry’ (www.collinsdictionary.com on 15/06/2017). The word ‘SILICON’ will be seen, therefore, as allusive to high technology and is weak in relation to those services that are related to technology, namely:
Class 41: The contested education; providing of training which are identical to opponent’s educational and training services; all relating to technology, telecommunications, intellectual property and digital media.
Class 42: The contested scientific and technological services and research and design relating thereto which are identical to the opponent’s design of telecommunications apparatus and installations;
The contested design and development of computer hardware and software which are identical to the opponent’s design of telecommunications apparatus;
The contested industrial analysis which is similar to a low degree to the opponent’s business analysis services in Class 35;
The contested research services which is similar to a low degree to the opponent’s educational and training services; all relating to technology, telecommunications, intellectual property and digital media
It is distinctive, however, for those services that have no relation to technology.
The word ‘BEACH’ denotes an area of sand of stones beside the sea. This has no meaning in relation to the services at hand and so is distinctive.
The contested trademark is a figurative mark composed of the verbal elements ‘SILICON SOUTH’ in a fairly standard typeface, except for the ‘N’ at the end of the word ‘SILICON’ the left stem of which veers towards the right and is cut off vertically producing a pointed tip. The word ‘SILICON’ is in bold. The above considerations regarding the distinctiveness of this verbal element also apply here.
The word ‘SOUTH’, also meaningless and distinctive in relation to the goods and services in question, appears below and is aligned towards the right. On the left of the word ‘SOUTH’ there is an abstract, colourful, figurative element in blue, purple, red, yellow, green and pink. This figurative element has no meaning in relation to the services in question and so is distinctive.
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).
Visually, the signs coincide in the first word ‘SILICON’ which is distinctive or weak depending on the services in question. However, they differ in the distinctive elements ‘BEACH’ of the earlier mark and ‘SOUTH’ of the contested sign. In addition they differ with respect to the figurative device which has no counterpart in the earlier mark.
Therefore when ‘SILICON’ is weak they are similar to a low degree and when ‘SILICON’ is distinctive, they are similar to an average degree at most.
Aurally, the pronunciation of the signs coincides in the in the sound of the letters ‛SI-LI-CON’, present identically at the start of both signs. The pronunciation differs in the in the sound of the second verbal elements of the marks ‘BEACH’ and ‘SOUTH’.
Therefore when ‘SILICON’ is weak they are similar to a low degree and when ‘SILICON’ is distinctive, they are similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘SILICON’, included in both signs, will be associated with the meanings explained above.
To that extent, the signs are conceptually similar to a low degree when ‘SILICON’ is weak and similar to an average degree when ‘SILICON’ is distinctive.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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, despite the presence of a weak element in the mark for part of the services in question, as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
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.
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 goods and services have been found to be partly identical, partly similar, partly similar to a low degree and partly dissimilar. The attention of the relevant public varies from average to high and the previous mark has a normal degree of distinctive character.
As mentioned in section c) the verbal ‘SILICON’ is weak for those services related to technology and is distinctive for those that are not.
When ‘SILICON’ is considered weak, the signs are visually, aurally and conceptually similar to a low degree. This is the case for those services related to technology found to be identical and similar to a low degree in Classes 41 and 42, namely:
Class 41: Education; providing of training.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
In this case there is no likelihood of confusion because the attention of the consumers will be drawn to the second distinctive verbal elements in the signs that are very different. The figurative element in the contested sign compounds the difference so that even on identical services and for consumers with an average degree of attention there is no likelihood of confusion.
When ‘SILICON’ is considered distinctive, however, the signs are visually similar to an average degree at most and aurally and conceptually similar to an average degree. This is the case for those services unrelated to technology found to be identical and similar to a low degree in Class 35 and similar in Class 45, namely:
Class 35: Advertising; business management; business administration; office functions.
Class 45: Legal services.
Here there is likelihood of confusion on the part of the relevant public, even for those with a high degree of attention and for services similar to a low degree, as the signs coincide in the distinctive verbal element at the start of the signs where the attention of the consumer will be focused.
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 services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks registered for services in Classes 35, 41, 42 and 45 that include ‘SILICON’. In support of its argument the applicant refers to several European Union trade mark registrations.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘SILICON’. Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public in the United Kingdom in relation to the contested services in Class 35 and Class 45, and therefore the opposition is partly well-founded on the basis of the opponent’s United Kingdom trade mark registration.
It follows from the above that the contested trade mark must be rejected for the above mentioned services.
There is no likelihood of confusion on the part of the relevant public in the United Kingdom for the contested services related to technology in Class 41 and 42 as specified above.
The rest of the contested goods 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 goods cannot be successful.
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 will 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.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.
In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.
On 03/10/2014 the cooling off period was extended by 22 months and the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 03/10/2016.
The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.
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 will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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Tobias KLEE |
Lynn BURTCHAELL |
Martin EBERL |
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.