OPPOSITION No B 2 758 426

SkillSoft Limited, Belfield Office Park, Clonskeagh, Dublin 4, Ireland (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

RPIC-ViP s.r.o., Vystavni 2224/8, 709 00 Ostrava, Czech Republic (applicant), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 22/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 758 426 is partially upheld, namely for the following contested services:

Class 41: Education.

2.        European Union trade mark application No 15 204 373 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 204 373. The opposition is based on European Union trade mark registration No 2 107 027. 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 services

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

Class 41: Education; providing of training; entertainment; sporting and cultural activities, including educational services, namely, providing customized education and training courses in the fields of business skills education and professional development, and providing courses of instruction and interactive teaching tools, via means of a website on a global computer network, including the Internet, in the fields of business skills education and professional development.

Class 42: Professional consultation (non-business); computer programming; leasing access time to a computer network; providing access to a database in the field of educational computer software; consultancy in the field of educational computer software; design and updating of educational computer software.

The contested services are the following:

Class 35: Human resources consultancy.

Class 41: Education.

An interpretation of the wording of the list of the opponent’s services in Class 41 is required to determine the scope of protection of these services.

The term ‘including’ indicates that the specific 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).

However, the term ‘namely’ is used to show the relationship of individual services with a broader category. It is exclusive and restricts the scope of protection only to the specifically listed 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 human resources consultancy services are business management services, intended to help in the strategy of a commercial undertaking, such as how to efficiently allocate human resources. They are usually provided by human resources consultants. The opponent’s services in Class 41 are rendered by persons or institutions involved in the development of the mental faculties of persons or animals and include services intended to entertain or to engage the attention. The opponent’s services in Class 42 are provided by professionals such as computer programmers in relation to the theoretical and practical aspects of complex fields of activities, such as computer programming, consultancy in the field of educational computer software and design and updating of educational computer software. These services have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are provided by different undertakings, are offered through different channels and target different end users. Consequently, they are dissimilar.

Contested services in Class 41

Education is identically contained in both lists of services.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are directed at the public at large.

The degree of attention is considered at least average.

3. The signs

SKILLSOFT
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 elements ‘SOFT’, ‘SKILLERS’ and ‘SKILL’ are meaningful in certain territories, for example in those countries where English is understood. ‘SOFT’ refers to, inter alia, ‘easy to mould, cut, compress, or fold’, ‘SKILL’ is ‘the ability to do something well; expertise’ and ‘SKILLERS’ means ‘having or showing the knowledge, ability, or training to perform a certain activity or task well’ (information extracted from Oxford English Dictionary online on 13/06/2017 at https://en.oxforddictionaries.com/). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51). Therefore, the relevant public will perceive the single word ‘SKILLSOFT’ in the earlier mark as being composed of the elements ‘SKILL’ and ‘SOFT’, because both words are known to them.

The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in upper case letters, as is the case with the earlier mark.

The contested sign is figurative and consists of the phrase ‘SoftSkillers’ written in fairly standard stylised title case letters; ‘Soft’ is in thin letters and ‘Skillers’ is in thick bold letters. The letter ‘O’ in the element ‘Soft’ is a graphic depiction of a diaphragm in grey, yellow, orange, red, blue and green. The stylisation of the letters, with ‘Skillers’ in bold, will lead the consumer to perceive the contested sign as a combination of two independent words, ‘SOFT’ and ‘SKILLERS’.

The elements ‘SOFT’, ‘SKILLERS’ and ‘SKILL’ of the signs will be associated with something that is easy to do or that is done well and/or with skilful people. Bearing in mind that the relevant services are education related, these elements are weak for these services, as their combination alludes to the skills needed to learn softly or to expertise acquired or delivered softly by skilful instructors.

Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

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 have the letters ‘SKILL’ and ‘SOFT’ in common, notwithstanding the slightly stylised font used in the contested sign. However, the elements containing the sets of letters that the signs have in common are in inverse positions. The signs also differ in the figurative elements and in the additional final letters in the contested sign, ‘ers’, which have no counterparts in the earlier mark.

Taking into account the limited impact of the contested sign’s figurative elements and bearing in mind that ‘SKILLERS’ contains the earlier mark’s first five letters, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SKILL’ and ‘SOFT’, present identically in both signs, although not in the same position. The pronunciation differs in the sound of the letters ‘ers’, which have no counterparts in the earlier mark; therefore, the contested sign is longer.

Considering what has been stated above about the inversion of the coinciding elements and the fact that the relevant English-speaking public will perceive these words in both marks, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The figurative element of the diaphragm in the contested sign will be understood by the relevant public as such, but has a reduced impact in the overall impression conveyed by the sign, as the public will perceive it as a stylised depiction of the letter ‘O’.

Therefore, as the signs will be associated with highly similar meanings, the signs are conceptually highly similar, as they both allude to soft skills or people with soft skills.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for education services.

However, the earlier mark must have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

5. Global assessment, other arguments and conclusion

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).

The contested services are considered partly identical and partly dissimilar to the opponent’s services and they target the public at large, whose degree of attention is at least average. Furthermore, the earlier mark has at least a minimum degree of inherent distinctiveness.

The signs under comparison are visually and aurally similar to an average degree and conceptually highly similar.

The signs have a set of five letters and a set of four letters in common, out of 12 letters in the contested sign. The fact that these sets of letters are in inverse positions does not outweigh the strong similarities deriving from the highly similar concepts conveyed by the signs.

As a rule, when one of the conflicting trade marks or a part thereof is reproduced in the other mark, the signs will be found similar, and this, together with other factors, may lead to a likelihood of confusion.

In the present case, the coinciding letters ‘SKILL’ are placed at the beginning of the earlier mark, the part of the sign that will first catch the attention of the public.

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).

Considering all the above and, in particular, the interdependence principle, 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. 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 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.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Fabián GARCIA QUINTO

Loreto URRACA LUQUE

Gueorgui IVANOV

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.