OPPOSITION No B 2 725 698

Talent Garden GmbH, Schopenhauerstr. 71, 80807 München, Germany (opponent), represented by Rwzh Rechtsanwälte, Barthstrasse 4, 80339 München, Germany (professional representative)

a g a i n s t

Talent Garden SPA, Via Merano 16, 20127 Milano, Italy (applicant), represented by Dott. Franco Cicogna & C. SRL, Via Visconti di Modrone 14/A, 20122 Milano, Italy  (professional representative).

On 17/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 725 698 is partially upheld, namely for the following contested services:

Class 35: Advertising; business management; business administration; office functions; direct mail advertising; newspaper subscriptions; subscription services to telecommunication services; business management and organization consultancy; business auditing; document reproduction; employment agencies; computerised file management; on-line advertising on a computer network and on the internet; rental of advertising time on communication media; publication of publicity texts; rental of advertising space; dissemination of advertisements; public relations services; business auditing; rental of office machines; secretarial and clerical services; sorting, handling and reception of mail (office function); commercial intermediation services; business strategy advice; brand strategy services; marketing services; marketing services; devising marketing strategies and concepts; providing of advice and consultancy relating to business strategy; development and installation of marketing strategies; development of methods for the analysis and the implementation of strategy plans and management projects; information in the field of marketing; conducting of marketing studies; marketing agency services; merchandising consultancy services; business marketing information; organisation, arranging and conducting of exhibitions for trade, commercial and advertising purposes; organisation and conducting of advertising events; consultancy relating to sponsorship search; business networking; outsourced administrative management for companies; relocation services for businesses; services relating to franchising; leasing, hire and rental of advertising space for bill-posting, including advertising space on vehicles and property, boardings and billboards; billboard advertising services; distribution of goods for advertising purposes, direct mail advertising; advertising, commercial sales information supply; advertising, business management, rental of advertising space; direct mail and electronic billboard advertising; advertising, including publication and dissemination of direct mail advertising and advertising catalogues via media of all kinds, including the internet and global communications network; business advice, advertising sponsorship, advertising, marketing, rental of advertising space and publicity materials; public relations and market research; business advice relating to business sales and acquisitions, company flotations and investigation of businesses; advice on business organization and business economics; advisory and consultancy services relating to the running, administration and management of businesses; management advice and assistance; advisory services relating to mergers, acquisitions, franchising and business liquidations; business advice relating to business sales and acquisitions, company flotations and investigation of businesses; business management assistance; business administration; office functions; office machines and equipment rental; rental of photocopying machines; secretarial services; taking telephone calls; outsourcing; relocation services for businesses; payroll preparation; invoicing; photocopying services; commercial information agencies; publicity agencies; bill-posting; marketing studies; business auditing; market studies; business inquiries; business research; professional business consulting; business management and organization consultancy; personnel management consulting; business inquiries; accounting; commercial or industrial management assistance; assistance in management of business activities; on-line advertising on a computer network; organisation of trade fairs for commercial purposes; exhibitions for commercial or advertising purposes; import-export agencies; opinion polling; computerised file management; sponsorship search; employment agencies; public relations services; systemization of information into computer databases; computer data; telemarketing services; business appraisal; rental of advertising space; demonstration of goods; compilation of information into computer databases; acquisition; commercial administration of licenses of goods and services; advisory services for business management; management of serviced and managed offices; office management; business office support services; administration of business activities in the field of managed offices, typing, word processing and shorthand secretarial services; document reproduction and shredding services; services carried out for and/or on behalf of others in the advertising and business sectors; public relations and market research; business administration; office functions.

Class 41: Training services; training; education; providing of training; training courses in strategic planning relating to advertising, promotion, marketing and business; education information; arranging events, conferences, colloquiums or congresses for educational purposes; organization of exhibitions for educational purposes; organisation of competitions in relation to education; rental of meeting rooms in the context of training activities; arranging of prize-giving ceremonies and gala evenings for business networking purposes; conducting of instructional lecturers; arranging and conducting conferences and seminars; arranging and conducting of conferences; arranging and conducting of conferences and congresses; arranging, conducting and organisation of conferences; organisation and conducting of colloquiums, conferences and congresses; arranging and conducting of conferences, congresses and symposiums; organisation of congresses and conferences for educational purposes; organisation of events, shows, conventions and conferences for educational purposes; arranging and conducting of events, conferences, congresses, seminars and workshops; arranging and conducting of events, conferences, congresses, seminars, symposiums, training courses, lessons and lectures; arranging and conducting of events, conferences, conventions and exhibitions for educational purposes; training; continuous training; vocational skills training; examination services for educational purposes; instructional services, namely examination services consisting of the development, creation and providing of examinations and tests for candidates for the post of internal auditor; a service provided for and/or on behalf of others, in the sectors of instruction, teaching and education of individuals.

Class 43: Hire of temporary office space; services for providing food and drink; temporary accommodation; running of hotels, boarding houses and inns; management of restaurants, bars, trattorias and canteens; provision of food and drink prepared for consumption; food and catering services; providing facilities for exhibitions, colloquiums and fairs; providing facilities for exhibitions and trade fairs.

2.        European Union trade mark application No 15 382 757 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 services of European Union trade mark application No 15 382 757, , namely against all the service in Classes 35, 36, 41 and 43. The opposition is based on German trade mark registration No 30 2016 200 6319,. 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 35: Job and personnel placement; consultancy of personnel recruitment; employment counselling; consultancy services relating to the administration and management of hotels ; evaluation of personnel requirements; assistance relating to recruitment and placement of staff; employment agencies; personnel recruitment; personnel placement and recruitment; personnel consultancy; staff utilisation planning; personnel relocation; placement of staff; personnel management; temporary personnel services.

Class 41: Staff training services.

Class 43: Information relating to hotels; catering.

The contested services are the following:

Class 35: Advertising; business management; business administration; office functions; direct mail advertising; newspaper subscriptions; subscription services to telecommunication services; business management and organization consultancy; business auditing; document reproduction; employment agencies; computerised file management; on-line advertising on a computer network and on the internet; rental of advertising time on communication media; publication of publicity texts; rental of advertising space; dissemination of advertisements; public relations services; business auditing; rental of office machines; secretarial and clerical services; sorting, handling and reception of mail (office function); commercial intermediation services; business strategy advice; brand strategy services; marketing services; marketing services; devising marketing strategies and concepts; providing of advice and consultancy relating to business strategy; development and installation of marketing strategies; development of methods for the analysis and the implementation of strategy plans and management projects; information in the field of marketing; conducting of marketing studies; marketing agency services; merchandising consultancy services; business marketing information; organisation, arranging and conducting of exhibitions for trade, commercial and advertising purposes; organisation and conducting of advertising events; consultancy relating to sponsorship search; business networking; outsourced administrative management for companies; relocation services for businesses; services relating to franchising; leasing, hire and rental of advertising space for bill-posting, including advertising space on vehicles and property, boardings and billboards; billboard advertising services; distribution of goods for advertising purposes, direct mail advertising; advertising, commercial sales information supply; advertising, business management, rental of advertising space; direct mail and electronic billboard advertising; advertising, including publication and dissemination of direct mail advertising and advertising catalogues via media of all kinds, including the internet and global communications network; business advice, advertising sponsorship, advertising, marketing, rental of advertising space and publicity materials; public relations and market research; business advice relating to business sales and acquisitions, company flotations and investigation of businesses; advice on business organization and business economics; advisory and consultancy services relating to the running, administration and management of businesses; management advice and assistance; advisory services relating to mergers, acquisitions, franchising and business liquidations; business advice relating to business sales and acquisitions, company flotations and investigation of businesses; business management assistance; business administration; office functions; office machines and equipment rental; rental of vending machines; rental of photocopying machines; secretarial services; taking telephone calls; outsourcing; relocation services for businesses; payroll preparation; invoicing; photocopying services; commercial information agencies; publicity agencies; bill-posting; marketing studies; business auditing; auctioneering services; market studies; business inquiries; business research; professional business consulting; business management and organization consultancy; personnel management consulting; business inquiries; accounting; commercial or industrial management assistance; assistance in management of business activities; on-line advertising on a computer network; organisation of trade fairs for commercial purposes; exhibitions for commercial or advertising purposes; import-export agencies; opinion polling; computerised file management; sponsorship search; employment agencies; public relations services; systemization of information into computer databases; computer data; telemarketing services; business appraisal; rental of advertising space; demonstration of goods; compilation of information into computer databases; acquisition; commercial administration of licenses of goods and services; advisory services for business management; management of serviced and managed offices; office management; business office support services; administration of business activities in the field of managed offices, typing, word processing and shorthand secretarial services; document reproduction and shredding services; services carried out for and/or on behalf of others in the advertising and business sectors; public relations and market research; business administration; office functions.

Class 36: Rental and leasing of offices and spaces intended for co-working; rental and leasing of offices and spaces intended for co-manufacturing; real estate management relating to event structures; real estate management relating to structures for entertainment events; leasing and rental of offices and commercial premises; rental and leasing of real estate intended for work and commercial activities; rent collection; real estate agency; rental of office space; rental of apartments and offices; arranging letting of real estate; rental of real estate, offices and flats; management, brokerage, leasing and appraisal of real estate; real estate affairs; real-estate valuations; financial management; real estate management; arranging the provision of finance; financial analysis; mutual funds and capital investments; financial advice; fund investments; office rental services; rental of apartments, houses, commercial premises and offices; real estate management services relating to office premises; financial sponsorship and patronage; financing of real estate developments; real estate financing; capital investment in real estate; management of financial assets, real estate and investments; arranging of leases for the rental of offices; provision of serviced and managed offices; collection of money; real estate brokerage; rent collection; financial evaluation (real estate); financial evaluation in the field of insurance and banking; evaluation (repair costs -) [financial appraisal]; real-estate valuations; rental, brokerage, leasing and management in the field of commercial real estate, offices and office space; financing of property development services; provision of serviced and managed offices; financial business liquidation services; fund investments; insurance; financial affairs; financial advice; insurance consultancy; financial sponsorship; finance services; banking; services provided for and/or on behalf of others, in the insurance sector; services for and/or on behalf of others by banking institutions or related bodies, such as foreign exchange bureaux and clearing houses; services provided by credit institutions other than banks, such as cooperative credit associations and individual financial companies; services provided by investment trusts and holding companies; stockbroking services; services relating to monetary affairs, insured by trustee agents; issuing of travellers' cheques and letters of credit; services provided by real estate managers, such as rental services, real estate appraisal or provided by financial backers; services connected with the insurance sector, such as services provided by insurance agents or brokers; services provided to insurers and the insured; insurance underwriting services.

Class 41: Training services; training; education; providing of training; training courses in strategic planning relating to advertising, promotion, marketing and business; entertainment; cultural activities; entertainment or education information; publication of books; library services; film production services; rental of motion pictures; rental of sound recordings; arranging events, conferences, colloquiums or congresses for cultural or educational purposes; organization of exhibitions for cultural or educational purposes; organisation of competitions in relation to education and entertainment; organisation of events and competitions in the sports sector; rental of meeting rooms in the context of training activities; publication of electronic books and journals on-line; desk-top publishing; arranging of cinema showings; arranging of prize-giving ceremonies and gala evenings for entertainment and business networking purposes; sporting and cultural activities; conducting of instructional lecturers; arranging and conducting conferences and seminars; arranging and conducting of conferences; arranging and conducting of conferences and congresses; arranging, conducting and organisation of conferences; organisation and conducting of colloquiums, conferences and congresses; arranging and conducting of conferences, congresses and symposiums; organisation of congresses and conferences for cultural and educational purposes; organisation of events, shows, conventions and conferences for cultural or educational purposes; arranging and conducting of events, conferences, congresses, seminars and workshops; arranging and conducting of events, conferences, congresses, seminars, symposiums, training courses, lessons and lectures; arranging and conducting of events, conferences, conventions and exhibitions for cultural and educational purposes; training; continuous training; vocational skills training; examination services for educational purposes; instructional services, namely examination services consisting of the development, creation and providing of examinations and tests for candidates for the post of internal auditor; information about entertainment and entertainment events provided via online networks and the internet; a service provided for and/or on behalf of others, in the sectors of instruction, teaching and education of individuals; publishing services; on-line publishing; electronic publishing and custom publishing; publication; publication of printed matter, in particular pamphlets, catalogues, books, newspapers and magazines; publication of texts; publication of material which can be accessed from databases or from the internet; publication of material on magnetic or optical data media; publication and edition of books, newspapers, periodicals, information stored on data carriers of all types, and software programs; publication of texts, materials, books, software and catalogues, downloadable from the internet; an activity carried out for and/or on behalf of others and consisting of services whose essential purpose is amusement, entertainment or recreation; a service provided in the show and prize competition sectors.

Class 43: Hire of temporary office space; services for providing food and drink; temporary accommodation; running of hotels, boarding houses and inns; management of restaurants, bars, trattorias and canteens; provision of food and drink prepared for consumption; food and catering services; providing facilities for exhibitions, colloquiums and fairs; providing facilities for exhibitions and trade fairs.

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

The term ‘namely’, used in the applicant’s list of Class 41 services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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

Employment agencies (listed twice) are identically contained in both lists of services.

The contested personnel management consulting is included in the broad category of the opponent’s personnel consultancy. Therefore, they are identical.

The contested business management (listed twice) includes, as a broader category or overlap with, the opponent’s consultancy services relating to the management of hotels. 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 same applies for the contested business management and organization consultancy (listed twice); business strategy advice; providing of advice and consultancy relating to business strategy; development of methods for the analysis and the implementation of strategy plans and management projects; outsourced administrative management for companies; services relating to franchising; business advice; market research; business advice relating to business sales and acquisitions, company flotations and investigation of businesses (listed twice); advice on business organization and business economics; advisory and consultancy services relating to the running, administration and management of businesses; management advice and assistance; advisory services relating to mergers, acquisitions, franchising and business liquidations; business management assistance; commercial intermediation services; commercial sales information supply; commercial information agencies; marketing studies; market studies; business inquiries (listed twice); business research; professional business consulting; brand strategy services; devising marketing strategies and concepts; development and installation of marketing strategies; conducting of marketing studies; opinion polling; business appraisal; advisory services for business management; management of serviced and managed offices; office management; services carried out for and/or on behalf of others in the business sector which include, as a broader category or overlap with, the opponent’s consultancy services relating to the management of hotels. 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 business administration (listed twice) includes, as a broader category or overlap with, the opponent’s consultancy services relating to the administration of hotels. 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 same applies for the contested relocation services for businesses (listed twice); accounting; commercial or industrial management assistance; assistance in management of business activities; business auditing (listed twice); organisation of trade fairs for commercial purposes; exhibitions for commercial or advertising purposes; acquisition; commercial administration of licenses of goods and services; business office support services; administration of business activities in the field of managed offices, typing, word processing and shorthand secretarial services; organisation, arranging and conducting of exhibitions for trade and commercial purposes which include, as a broader category or overlap with, the opponent’s consultancy services relating to the administration of hotels. 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 office functions (listed three times); newspaper subscriptions; subscription services to telecommunication services; document reproduction; computerised file management (listed twice); rental of office machines; secretarial and clerical services; sorting, handling and reception of mail (office function); office machines and equipment rental; rental of photocopying machines; secretarial services; taking telephone calls; outsourcing; payroll preparation; invoicing; photocopying services; systemization of information into computer databases; computer data; compilation of information into computer databases; document reproduction and shredding services are similar to the opponent’s consultancy services relating to the administration and management of hotels as they have the same purpose. They can coincide in producer and end user.

The same applies for the contested import-export agencies which are similar to the opponent’s consultancy services relating to the management of hotels as they can coincide in producer, end user and distribution channels.

The contested advertising (listed twice); direct mail advertising; on-line advertising on a computer network and on the internet; rental of advertising time on communication media; publication of publicity texts; rental of advertising space (listed twice); dissemination of advertisements; public relations services (listed twice); marketing services (listed twice); information in the field of marketing; marketing agency services; merchandising consultancy services; business marketing information; organisation, arranging and conducting of exhibitions for advertising purposes; organisation and conducting of advertising events; consultancy relating to sponsorship search; business networking; leasing, hire and rental of advertising space for bill-posting, including advertising space on vehicles and property, boardings and billboards; billboard advertising services; distribution of goods for advertising purposes, direct mail advertising; advertising, direct mail and electronic billboard advertising; advertising, including publication and dissemination of direct mail advertising and advertising catalogues via media of all kinds, including the internet and global communications network; publicity agencies; bill-posting; advertising sponsorship, advertising, marketing, rental of advertising space and publicity materials; public relations (listed twice); on-line advertising on a computer network; sponsorship search; public relations services; telemarketing services; rental of advertising space; demonstration of goods; services carried out for and/or on behalf of others in the advertising sector are included in the general category of advertising and are similar to a low degree to the opponent’s consultancy services relating to the management of hotels. The services have the same purpose. They can coincide in producer and end user.

As regards the contested rental of vending machines, this is a specific service. A vending machine provides various snacks, beverages and other products to consumers and the mechanisms for such machines (coin-operated) give access to the merchandise in the machine after paying for the item. The contested service is dissimilar to all the opponent’s services. The purpose and nature of the respective services are different and they are not provided by the same undertakings. The contested services are not in competition with, nor are they complementary to, any of the opponent’s services.

The same applies for the contested auctioneering services which are dissimilar to all the opponent’s services. Auctions are public sales at which goods are sold to the highest bidder, whereas the opponent’s services are services of employment agencies, staff training services, consultancy services relating to the administration and management of hotels or information relating to hotels and catering. The natures and the purposes of these services are different. They do not coincide in provider, end user or distribution channels. Moreover, they are not complementary or in competition.  

  

Contested services in Class 36

The contested services in Class 36 consist mainly of insurance; financial affairs; monetary affairs and real estate affairs services, whereas the opponent’s services are services of employment agencies, staff training services, consultancy services relating to the administration and management of hotels or information relating to hotels and catering. The natures and the purposes of these services are different. They do not coincide in provider, end user or distribution channels. Moreover, they are not complementary or in competition.  Therefore, the services are dissimilar.

 

Contested services in Class 41

The contested training services; training; providing of training; training courses in strategic planning relating to advertising, promotion, marketing and business; continuous training; vocational skills training include, as broader categories, or overlap with, the opponent’s staff training services. 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 rental of meeting rooms in the context of training activities; conducting of instructional lecturers; arranging and conducting conferences and seminars; arranging and conducting of conferences; arranging and conducting of conferences and congresses; arranging, conducting and organisation of conferences; organisation and conducting of colloquiums, conferences and congresses; arranging and conducting of conferences, congresses and symposiums; arranging of prize-giving ceremonies and gala evenings for business networking purposes; arranging and conducting of events, conferences, congresses, seminars and workshops; arranging and conducting of events, conferences, congresses, seminars, symposiums, training courses, lessons and lectures are overlapping with the opponent’s staff training services. 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 education; education information; arranging events, conferences, colloquiums or congresses for educational purposes (listed twice); arranging events, conferences, colloquiums or congresses for educational purposes; organization of exhibitions for cultural or educational purposes; organisation of competitions in relation to education; organisation of congresses and conferences for cultural and educational purposes; organisation of events, shows, conventions and conferences for cultural or educational purposes; organisation of congresses and conferences for educational purposes; organisation of events, shows, conventions and conferences for cultural purposes; arranging and conducting of events, conferences, conventions and exhibitions for educational purposes; examination services for educational purposes; instructional services, namely examination services consisting of the development, creation and providing of examinations and tests for candidates for the post of internal auditor; a service provided for and/or on behalf of others, in the sectors of instruction, teaching and education of individuals and the opponent’s staff training services coincide in their nature (providing knowledge and abilities through teaching and training). These services can be provided by the same undertakings and target the same public. Therefore, these services are considered similar.

The rest of the contested services, namely entertainment; cultural activities; entertainment information; film production services; rental of motion pictures; rental of sound recordings; arranging events, conferences, colloquiums or congresses for cultural (listed twice); organization of exhibitions for cultural purposes; organisation of competitions in relation to entertainment; organisation of events and competitions in the sports sector; organisation of congresses and conferences for cultural purposes; organisation of events, shows, conventions and conferences for cultural purposes; arranging of cinema showings; arranging of prize-giving ceremonies and gala evenings for entertainment purposes; sporting and cultural activities; arranging and conducting of events, conferences, conventions and exhibitions for cultural purposes; information about entertainment and entertainment events provided via online networks and the internet; a service provided in the show and prize competition sectors, as well as publication of books; library services; publication of electronic books and journals on-line; desk-top publishing; publishing services; on-line publishing; electronic publishing and custom publishing; publication; publication of printed matter, in particular pamphlets, catalogues, books, newspapers and magazines; publication of texts; publication of material which can be accessed from databases or from the internet; publication of material on magnetic or optical data media; publication and edition of books, newspapers, periodicals, information stored on data carriers of all types, and software programs; publication of texts, materials, books, software and catalogues, downloadable from the internet; an activity carried out for and/or on behalf of others and consisting of services whose essential purpose is amusement, entertainment or recreation have completely different natures, purposes and methods of use from the opponent’s services. Moreover, these services are neither in competition nor complementary, they are not usually provided by the same companies and they do not have the same distribution channels. They are, therefore, dissimilar.

Contested services in Class 43

Catering is identically contained in both lists of services.

The contested services for providing food and drink; provision of food and drink prepared for consumption; food services include, as broader categories, or overlap with, the opponent’s catering. 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 hire of temporary office space; temporary accommodation; running of hotels, boarding houses and inns; management of restaurants, bars, trattorias and canteens; providing facilities for exhibitions, colloquiums and fairs; providing facilities for exhibitions and trade fairs are overlapping with, the opponent’s information relating to hotels. Therefore, they are identical.

The contested management of restaurants, bars, trattorias and canteen are overlapping with, the opponent’s catering. 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 services found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average depending on the specialised nature of the purchased services.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Both marks are figurative. The earlier mark is a green and black mark, composed of the word combination ‘TALENT’ and ‘GARDEN’ (although it is written as one verbal element it will be broken down by the relevant consumers 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), especially due to the fact that the element ‘TALENT’ is written in bold letters). Above this, the combination ‘PERSONALSUPPORT’ is depicted in small green letters. In the left part of the earlier mark there is a green device composed of four leaves.

The contested mark is composed of the word combination ‘TALENT’ and ‘GARDEN’, written in black title letters on two lines. In the left part of the contested mark is a grey device which is rather decorative in nature and contains the word ‘tag’ and ‘…’ (three dots) in a small talking cloud.

 

The element ‘TALENT’ of both marks will be understood as ‘the aptitude that enables someone to perform unusual or above-average performance on a particular, especially artistic level’ by the relevant public (information extracted from Duden Dictionary on 10/08/2017 at http://www.duden.de/rechtschreibung/Talent). Bearing in mind that part of the relevant services are related to education, training and entertainment, this element is non-distinctive for all these services in Class 41.

The element ‘GARDEN’ of both marks might be perceived by the relevant public as the plural of ‘garde’, meaning ‘elite troops’ (information extracted from Duden Dictionary on 10/08/2017 at http://www.duden.de/rechtschreibung/Garde) or as a misspelling of the word ‘Garten’ meaning ‘limited piece of land [to build a house] for the planting of vegetables, fruit, flowers or similar’ (information extracted from Duden Dictionary on 10/08/2017 at http://www.duden.de/rechtschreibung/Garten). As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

Although the verbal element ‘PERSONALSUPPORT’ of the earlier sign is composed of one element it will be broken down, by at least part of the relevant consumers, into elements that suggest a concrete meaning, or that resemble words that they already know, namely ‘PERSONAL’ and ‘SUPPORT’ (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). Therefore, the element ‘PERSONAL’ will be associated by the relevant public with ‘service staff’ (information extracted from Duden Dictionary on 10/08/2017 at http://www.duden.de/suchen/dudenonline/personal). Bearing in mind that the relevant services are staff related, this element is non-distinctive for part of these services, namely for al the services in Classes 35 and 41, except for consultancy services relating to the administration and management of hotels in Class 35. The element ‘SUPPORT’ will be associated, by at least part of the relevant public, with a ‘department in an authority, company’ (information extracted from Duden Dictionary on 10/08/2017 at http://www.duden.de/suchen/dudenonline/support) and it is weak for all the relevant services.

The element ‘tag’ of the contested mark will be perceived by the relevant public as, inter alia, ‘hello/welcome’ (information extracted from Duden Dictionary on 10/08/2017 at http://www.duden.de/rechtschreibung/Tag_Zeit_Zeiteinheit), especially to the figurative element containing three dots and the talking cloud, al these elements being weak for all the relevant services.

The element ‘TALENTGARDEN’ and the figurative element in the earlier sign are the dominant elements as they are the most eye-catching. The contested sign has no more dominant 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 coincide in the words ‘TALENT’ and ‘GARDEN’. The signs differ in the additional verbal elements ‘PERSONALSUPPORT’ of the earlier mark and ‘TAG’ of the contested mark, as well as in the three dots of the contested mark and the colours, stylisations and figurative elements of the sign.  

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

 

Aurally, the pronunciation of the signs coincides in the syllables ‘TA-LENT-GAR-DEN’, present identically in both signs. The pronunciation differs in rest of the elements of the signs, namely ‘PERSONALSUPPORT’ of the earlier mark and ‘TAG’ of the contested mark.

Therefore, 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. As the signs will be associated with a similar meaning, the signs are 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.

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 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 some non-distinctive and weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The services are partly identical and similar to different degrees and partly dissimilar. They target the public at large and the business customers with specific professional knowledge or expertise. The degree of attention will vary from average to higher than average depending on the specialised nature of the purchased services.

From the point of view of the relevant public, the signs are visually, aurally and conceptually similar, inasmuch as they have in common the verbal elements ‘TALENT’ and ‘GARDEN’, which are one of the most dominant element in the earlier mark. The signs differ in the additional verbal elements of the earlier mark, namely ‘PERSONAL’ (which was found to be non-distinctive for part of the relevant services) and ‘SUPPORT’ (which was found weak for all the relevant services) and ‘TAG’ of the contested mark, as well as in their colours, the figurative elements and stylisations of the sign. The signs also differ in the three dots of the contested mark.

There is a likelihood of confusion because the differences between the signs are confined to mainly non-distinctive or secondary elements and aspects.

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).

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 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 public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar, even 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.

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

Michele M. BENEDETTI-ALOISI

Francesca DRAGOSTIN

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.