OPPOSITION No B 2 690 108

Desmond McCausland, Flat 37, Regal Building, 75 Kilburn Lane, London W10 4BB, United Kingdom (opponent), represented by Mathys & Squire LLP, Abbey House 32, Booth Street, Manchester Lancashire M2 4AB, United Kingdom (professional representative).

a g a i n s t

Martin Mckenzie, Communication House, 26 York Street, London W1U 6PZ, United Kingdom (applicant), represented by Brand Protect Limited, Suite B, 2nd Floor, Rowood House, Murdock Road, Bicester Oxfordshire OX26 4PP, United Kingdom (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 690 108 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 830 871, , namely against all the goods in Class 16, some of the services in Class 35 and all the services in Class 41. The opposition is based on European Union trade mark registration No 11 040 681, . The opponent invoked Article 8(1)(b) EUTMR.

It should be noted that, by request of the applicant, some of the contested goods and services have been deleted from the list of goods and services. Therefore, the decision will only cover the contested services that are still in the list of goods and services and against which the opposition was maintained by the opponent.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 16:        Paper; cardboard; paper articles; cardboard articles; printed matter; books; annuals; publications; comic books; song books; magazines; newsletters; newspapers; albums; periodicals; journals; catalogues; manuals; maps; pamphlets; leaflets; posters; stationery; labels; office requisites; drawing and painting materials, apparatus and instruments; writing instruments; instructional and teaching materials; instructional and teaching materials in the form of games, apparatus and instruments; book binding materials; book covers; book marks; printing sets; drawings; paintings; photographs; prints; pictures; calendars; pens; pencils; pencil top ornaments; paints; paintbrushes; paint kits; tags; gift wrap; gift wrap cards; gift wrap tissue; gift boxes; wrapping paper; note pads; decalcomanias; paper napkins and other decorative paper items; paper party goods and paper party decorations; paper tablecloths and table covers; paper mats; paper party streamers; embroidery patterns; decorative transfers; rulers; erasers; greetings cards; stickers; paper signs; banners; charts; parts and fittings for all the aforesaid goods.

Class 38:        Provision of chatrooms; broadcasting; television broadcasting; radio broadcasting; satellite television broadcasting; cable television broadcasting; communications by telephone; interactive telephone services; telephone messaging services; communication services by means of radio waves, telephones, the Internet, the world wide web, cable, satellite, microwaves and electricity grid; telephony for voting purposes; telephony for entertainment purposes; information, advisory and consultancy services relating to the aforesaid services.

Class 41:        Nightclub services; live entertainment services; entertainment by or relating to television and radio; organization of competitions (education or entertainment); interactive telephone competitions; publishing; production of cinematographic films, shows, radio programmes and television programmes; provision of education and entertainment by means of radio, television, satellite, cable, telephone, the worldwide web and the Internet; organization of shows; education and entertainment services all relating to television, cinema, radio and theatre; production and presentation of radio and television programmes, films and shows; education by or relating to television and radio; rental of sound recordings and of pre-recorded shows, films, radio and television performances; production of video tapes and video discs; radio entertainment; television entertainment; cinema entertainment; theatre entertainment; provision of game shows; television entertainment services involving telephonic audience participation; interactive entertainment for use with a mobile phone; provision of Internet based games; information, advisory and consultancy services relating to the aforesaid services.

Class 43:        Bar, restaurant and catering services; inn services; provision of accommodation; hotel services; café services; bistro services; information, advisory and consultancy services relating to the aforesaid services.

After the limitation mentioned above, the contested services are the following:

Class 35:        Advisory services relating to the operation of franchises; Business advice and consultancy relating to franchising; Business advisory services relating to franchising; Business management assistance in the field of franchising; Business management services in relation to franchising; Business management services within the framework of franchising; Providing assistance in the field of business management and product commercialization within the framework of a franchise contract; Providing assistance in the management of franchised businesses.

Class 41:        Education; providing of training; Arranging of educational conferences; Arranging of educational courses; Arranging of educational events; Arranging of educational seminars; Business education services; Career counseling or coaching [training or education advice]; Career counselling [education or training advice]; Coaching [education or training]; Coaching [training]; Conducting of educational conferences; Conducting of educational courses; Conducting of educational events; Conducting of educational seminars; Consultancy services relating to education; Dissemination of educational material; Educational services in the nature of coaching; Educational services; Information about education; Life coaching [training]; Personal coaching [training]; Providing educational courses; Vocational guidance [education or training advice]; Career planning consultancy services; Career planning.

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 services in this class are, in essence, business management services and advisory services within this area. Unlike the view of the opponent, the Opposition Division finds that these services do not show any similarity in terms of their nature, usual origin or method of use with the goods and services of the earlier mark, which belong to the following areas: paper, cardboard and certain goods made of those materials, as well as office requisites (Class 16), broadcasting and telecommunication services (Class 38), entertainment and educational services (Class 41) and restaurant and accommodation services (Class 43). Furthermore, the goods and services compared are neither in competition nor complementary to one another. Therefore, they are dissimilar.

Contested services in Class 41

The contested Education; Educational services include, as broader categories, the opponent’s provision of education by means of radio, television, satellite, cable, telephone, the worldwide web and the Internet. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

Unlike the view of the applicant, the Opposition Division finds that the contested Career counseling or coaching [training or education advice]; Career counselling [education or training advice]; Coaching [education or training]; Coaching [training]; Consultancy services relating to education; Dissemination of educational material; Educational services in the nature of coaching; Information about education; Vocational guidance [education or training advice]; Life coaching [training]; Personal coaching [training]; Career planning consultancy services; Career planning; Arranging of educational conferences; Arranging of educational courses; Arranging of educational events; Arranging of educational seminars; Conducting of educational conferences; Conducting of educational courses; Conducting of educational events; Conducting of educational seminars; providing of training; Providing educational courses; Business education services overlap with the opponent’s provision of education by means of radio, television, satellite, cable, telephone, the worldwide web and the Internet. 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 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 high, depending on the price, specialised nature, or terms and conditions of the purchased services.

3. The signs

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 earlier mark is a figurative mark with the verbal elements ‘THE’ and ‘CLUB’ in black bold capital letters. The figurative element is an open crown before the verbal element. The second verbal element of the contested mark ‘CLUB’ will be understood by the relevant public throughout the European Union in its English lexical meaning as an organization of people interested in a particular activity or subject who usually meet on a regular basis (online, https://www.collinsdictionary.com/dictionary/english/club, 15/09/17), considering that it is a fairly standard English word and it is very similar to the different national counterparts in the Member States of the European Union. The first verbal element, ‘THE’, will also be perceived by the relevant public for the relevant services in Class 41 throughout the European Union in its English lexical meaning as a definite article (online, https://www.collinsdictionary.com/dictionary/english/the_1, 15/09/17) since it is a common and very basic English word. Therefore, the verbal element of the sign as a whole will immediately inform consumers that the relevant services are provided only for members of a certain or unique club. This amounts to obvious and direct information on the purpose and/or quality of the services in question and is therefore descriptive (26/03/2010, R-888/2009-2, THE Club, § 20).

Unlike the view of the applicant, the Opposition Division finds that the figurative element of the earlier mark, a depiction of a crown, is of low distinctiveness as this symbol is commonly used in advertising as a symbol of luxury and high quality.

The contested sign is a figurative mark with the verbal elements ‘THE’, ‘CLUB’ and ‘LONDON’ in grey capital letters. The figurative element consists of four squares arranged as a bigger square, all connected with the same line. The device is located above the verbal elements ‘THE’ and ‘CLUB’, all in grey colour except for the top right square which is in gold colour. The figurative element is likely to be perceived as an abstract device without any particular meaning in relation to the services concerned and is therefore distinctive as such. The verbal element ‘LONDON’ is located at the bottom of the mark. The verbal elements ‘THE’ and ‘CLUB’ will be perceived in the same way as in the earlier mark. The verbal element ‘LONDON’ will be understood as the capital of the United Kingdom and will therefore be perceived as descriptive within the contested sign as indicating the origin or place of the relevant services. Furthermore, this element is in much smaller letters and also in a lighter shade which makes it barely visible.

It is true that, 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 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. While this is indeed generally the case, it must be stressed that this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. Moreover, it is settled case law that the public will not generally consider a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark (04/07/2003, T-129/01, BUDMEN, EU:T:2003:184, § 53). In the present case, for the reasons outlined above, the overall visual impression between the signs are different and the coinciding verbal elements are descriptive and thus play a secondary role in the overall impression produced by the marks.

Visually, the signs coincide in the verbal elements ‘THE’ and ‘CLUB’. All verbal elements in the earlier mark are incorporated in the contested sign. However, they differ in the marks respective figurative elements and the verbal element ‘LONDON’ of the contested sign. However, as mentioned above, the verbal components of the signs are descriptive and will therefore have a limited impact on the comparison as will the additional verbal element ‘LONDON’, in the contested sign considering it is barely visible and also non-distinctive while the additional differences that, although partly lying in elements that are also weak, give rise to clearly perceptible visual differences between the signs.

Therefore, taking into account the coincidence between the marks in a non-distinctive element, the signs are visually similar to a low degree.

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 verbal elements ‛THE’ and ‘CLUB’, present identically in both signs.  The pronunciation differs in the sound of the verbal element ‛LONDON’ of the contested sign, which has no counterpart in the earlier mark. However, as mentioned above, the verbal components of the signs are descriptive and will therefore have a limited impact on the comparison as will the additional verbal element ‘LONDON’, in the contested sign considering it is barely visible and also non-distinctive.

Therefore, the signs are aurally similar to at most an average degree.

Conceptually, the signs are not similar. Although the coinciding words ‛THE’ and ‘CLUB’, will evoke a concept, it is not sufficient to establish any conceptual similarity, as these elements are non-distinctive and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional distinctive elements, one of which has a meaning. Therefore, the signs are not similar conceptually.

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 mark consists of a descriptive verbal element together with a figurative element that is only of low distinctiveness for the reasons outlined above in section c) of this decision. Therefore, the distinctiveness of the earlier mark as a whole must be seen as low.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous factors 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 (recital of art. 8 of the EUTMR). 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested services are identical. The services are directed at the public at large and at business customers with a degree of attention that may vary from average to high. Furthermore, the earlier mark is considered to have a low degree of distinctiveness as a whole. Additionally, the marks in dispute have been found visually similar to a low degree, aurally similar to at most an average degree and conceptually not similar.

The verbal element of the earlier mark is included entirely in the contested sign. However, as concluded above these similarities are confined to non-distinctive elements. On the other hand, the differences between the signs concern completely different figurative elements (a crown device of low distinctiveness in the earlier mark and a distinctive abstract device consisting of four squares, or a fanciful square, in the contested sign) and a verbal element in the contested sign that is non-distinctive. Therefore, the Opposition Division finds that the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

In this respect, it must be borne in mind that the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24). It follows that a trade mark with low distinctive character also enjoys a lesser degree of protection. Whereas a company is certainly free to choose a trade mark with a low or even non-distinctive character, including trade marks with descriptive and non-distinctive words, and use it on the market, it must also accept, however, in so doing that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011-5, 4REFUEL (fig. mark)/REFUEL, § 15).

Where the similarities arise in relation to non-distinctive elements of a mark, the importance of differences must increase proportionately to the degree that a mark or its constituent elements may be considered to be non-distinctive (14/05/2001, R-257/2000-4, e plus (fig. mark)/PLUS, § 22).

Taking all the above into account, that the coinciding element in both signs, ‘THE CLUB’, is non-distinctive and that the respective figurative elements of the signs are completely different, the average degree of aural similarity between the signs is insufficient to counteract their low degree of visual similarity and the fact that they are not conceptually similar. Therefore, and bearing in mind the low distinctiveness of the earlier mark, the overall impression produced by the signs is not sufficiently similar to lead to a likelihood of confusion on the part of the relevant public and there is thus no reason why consumers would believe that services offered under the different signs, even if they are identical, originated from the same or economically linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

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

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

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

The Opposition Division

Sam GYLLING

Benjamin Erik WINSNER

Boyana NAYDENOVA

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.