OPPOSITION No B 2 710 252

Sovereign Military Hospitaller Order of St. John of Jerusalem of Rhodes and of Malta, Via Condotti 68, 00187 Rome, Italy (opponent), represented by Keesom & Hendriks N.V., Delistraat 45, 2585 VX Den Haag, Netherlands (professional representative)

a g a i n s t

Sovereign Order of Saint John of Jerusalem, – Knights of Malta, – The International Grand Priory, 66, Sir Patrick Stuart Street, Gzira GZR 1050, Malta (applicant), represented by Advocates Chetcuti Cauchi, Law Firm, Britannia House, Melita Street, Valletta VLT 12, Malta (professional representative).

On 10/01/2018, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 710 252 is rejected in its entirety.

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

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 168 347 for the figurative mark . The opposition is based on European Union trade mark registrations No 3 983 129 for the figurative mark  and No 10 681 047 for the figurative mark  . The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier marks and also Article 8(5) EUTMR in relation to earlier European Union trade mark registration No 3 983 129.

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.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

Earlier EUTM No 3 983 129	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 that consists of a black shield surrounded by a black line and containing a white eight-pointed cross, having the form of four V-shaped elements, each joining the others at its vertex, leaving the other two tips spread outward symmetrically.

The contested sign is a colourful and complex figurative mark with the appearance of a coat of arms, which is formed by a double-headed eagle with the orb and sceptre grasped in the eagle’s talons. A crown is depicted in front of the two necks, over each of the eagle’s heads and a bigger one on top with a blue ribbon having yellow tassels behind. In the centre, a red shield containing a white cross and around the shield four white V-shaped elements outlined in gold.

The earlier mark will be perceived by a significant part of the relevant public as the Maltese cross, an official emblem, ‘a cross with arms of equal length which broaden from the centre and have their ends indented in a shallow V-shape’ (information extracted from Oxford English Dictionaries at www.oxforddictionaries.com on 18/12/2017). The cross received that name because it was formerly worn by the Knights Hospitallers, who were based in Malta (1530-1798), as indicated by the same dictionary. For the sake of completeness, the Knights Hospitallers refers to ‘an order of military monks, following chiefly the rule of St. Augustine, which took its origin from a hospital founded at Jerusalem, in 1048, by merchants of Amalfi, for the succour and protection of poor pilgrims visiting the Holy Land, but subsequently grew to be a wealthy fraternity, received a military organization, and became one of the chief bulwarks of Christendom in the East, besides having dependent ‘hospitals’ and possessions throughout the Christian lands’ as defined by the dictionary. Since the Maltese cross has, therefore, a religious origin and have been historically associated with medical services and humanitarian causes, it can be concluded that, for this part of the public, this element of the earlier mark is allusive in relation to the relevant services in Classes 44 (medical and hospital services) and 45 (social and religious services), and, therefore, weak. However, it cannot be excluded that another part of the public will not identify this symbol present in the signs with its historic origin and, therefore, for this part of the public, it possesses a normal degree of distinctiveness.

Most of the elements present in the contested sign, namely the double-headed eagle with the orb and sceptre grasped in the eagle’s talons and the several crowns depicted in the sign, as well as their arrangement within the sign, might be perceived by a small part to the relevant public as the coat of arms of Russia. However, for a significant part of the public, some of these elements (e.g. the orb, the sceptre, the ribbon with tassels and the crowns) will be perceived as figurative elements with certain royal symbolism and, therefore, laudatory indications extoling the official standing of the coat of arms as recognised by the realm. Therefore, the distinctiveness of these elements in the sign is limited. As regards the central elements of the sign, namely the red shield containing a white cross and the V-shaped forms around it, will be perceived as such by a part of the public and, therefore, distinctive. Since the contested sign depicts several overlapping elements, it cannot be excluded that a part of the public will perceive a white eight-pointed cross behind the red shield.

Although the contested sign has no clear dominant element, the two-headed eagle is certainly outstanding by virtue of its position and size within the sign. This element is distinctive in relation to the relevant goods and services.

Visually, although the signs contain a shield with a similar basic design, they differ in all their features, namely the borders (a black and white border in the earlier mark and a gold border in the contested sign), the colours of the shield (black in the earlier mark and red in the contested sign) and the designs of the cross depicted inside the shields (an eight-pointed cross in the earlier mark and an ordinary cross in the contested sign). Furthermore, whereas the shield containing an eight-pointed cross is the only figurative element in the earlier mark, the contested sign combines several figurative elements and it is dominated by the outstanding depiction of a two-headed eagle, which is distinctive, as explained above.

The possibility has to be considered that a part of the public might perceive a white eight-pointed cross behind the red shield in the applicant’s complex sign because of the presence of the V-shaped forms around the shield. Even if that would be the case, the features of the cross partially hidden behind the shield are visually different from those of the eight-pointed cross depicted in the earlier mark. In particular, the angles in the V-shaped forms in the contested sign are much sharper than those in the earlier mark and they are outlined in gold.

Indeed, since the possible eight-pointed cross depicted in the contested sign is visually not perceptible as a separate element but partially hidden in the sign, it cannot be assumed that it really features this same type of cross or that is similar to the one in the earlier mark. 

Therefore, as the signs only coincide in irrelevant aspects, it is concluded that the signs are not visually similar.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the figurative elements that form the conflicting signs. As the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.

As the signs only coincide in irrelevant aspects, it is concluded that they are dissimilar.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition based on this earlier right and the ground of Article 8(5) EUTMR must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

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.

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. As it has been found above, since earlier European Union trade mark No 3 983 129 and the contested sign are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected. Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The opposition will proceed as regards earlier European Union trade mark No 10 681 047.

1. The goods and services

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

Class 44: Medical services, hospital services. 

Class 45: Social services for humanitarian and diplomatic causes; religious services. 

The contested goods and services are the following:

Class 16: Address books; Advertising posters; Announcement cards; Announcement cards [stationery]; Annuals [printed publications]; Bibles; Book binders; Book bindings; Book covers; Book holders; Book jackets; Book markers; Book marks; Bookbinding covers; Bookbindings; Bookkeeping forms; Booklets; Bookmarkers; Bookmarks; Books; Brochures; Bulletins; Business cards; Calendars; Cards; Cash receipt books; Christmas cards; Coin albums; Commemorative books; Covers for books; Daily newspaper; Data books; Date books; Drafting instruments; Educational books; Educational publications; Envelopes for stationery use; Events albums; Flags of paper; Flip books; Greeting cards; Greetings cards; Guide books; Hymn books; Impression stamps; Index books; Ink stamps; Instruction sheets; Instructional and teaching materials; Instructional manuals; Invitation cards; Journals; Journals [publications]; Log books; Magazine supplements for newspapers; Magazines; Magazines [Periodicals]; Manuals; Manuals [handbooks]; Manuscript books; Marking stamps; Memorandum books; Menu cards; Motivational cards; Mounted posters; Name cards; Newsletters; Newspapers; Note cards; Occasion cards; Office paper stationery; Paper flags; Paper folders [stationery]; Paper identification tags; Paper stationery; Periodical magazines; Philatelic stamps; Photographs; Photographs [printed]; Picture books; Picture cards; Post cards; Postage stamps; Posters; Posters made of paper; Prayer books; Printed art reproductions; Printed award certificates; Printed awards; Printed booklets; Printed books; Printed certificates; Printed educational materials; Printed informational cards; Printed leaflets; Printed matter; Printed news releases; Printed reports; Printed research reports; Reference books; Religious books; Religious circular letters; Rubber document stamps; Rubber stamp; Rubber stamps; Sealing stamps; Seals [stamps]; Seals [stationery]; Stamps [seals]; Stationery; Stickers [stationery]; Thank you cards; Visiting cards.

Class 36: Accepting monetary charitable contributions; Arranging charitable collections [for others]; Arranging of funds for overseas aid projects; Benevolent fund services; Charitable collections; Charitable fund raising; Charitable fund raising in view of disaster precautions and prevention; Charitable fund raising services; Charitable fundraising; Charitable fund-raising; Charitable fundraising by means of entertainment events; Charitable fundraising services; Charitable fund-raising services; Charitable fundraising services for underprivileged children; Charitable fundraising through the sale of charity stamps; Charitable services, namely financial services; Collections (Charitable -); Collections (Organisation of -); Collections (Organising financial -); Collections (Organization of -); Eleemosynary services in the field of monetary donations; Financial sponsorship; Financial sponsorship of cultural events; Fund raising (Charitable -); Fund raising for charitable purposes; Fund raising for charity; Fund raising services via crowdfunding website; Fund sponsorship; Fundraising and sponsorship; Investment of funds for charitable purposes; Organisation of charitable collections; Organisation of collections; Organisation of financial collections; Organising financial collections; Organising of charitable collections; Philanthropic services concerning monetary donations; Providing college scholarships; Providing educational scholarships; Providing information relating to charitable fundraising; Provision of charitable fundraising services in relation to carbon offsetting; Sponsorship (Financial -).

Class 41: Academies [education]; Academy education services; Academy services (Education -); Archive library services; Arrangement of conferences for educational purposes; Arrangement of conventions for educational purposes; Arrangement of seminars for educational purposes; Arrangement of training courses in teaching institutes; Arranging and conducting award ceremonies; Arranging and conducting conferences; Arranging and conducting educational conferences; Arranging and conducting of competitions [education or entertainment]; Arranging and conducting of conferences; Arranging and conducting of conferences and seminars; Arranging and conducting of conferences, congresses, concerts and symposiums, seminars, training courses, classes and lectures; Arranging and conducting of conferences, congresses, seminars, symposiums, training courses, classes and lectures; Arranging and conducting of conventions; Arranging and conducting of day school courses for adults; Arranging and conducting of educational discussion groups, not on-line; Arranging and conducting of educational seminars; Arranging and conducting of in-person educational forums; Arranging and conducting of meetings in the field of education; Arranging and conducting of seminars, congresses, conferences and symposiums; Arranging for students to participate in educational activities; Arranging for students to participate in educational courses; Arranging of an annual educational conference; Arranging of award ceremonies; Arranging of award ceremonies to recognise achievement; Arranging of award ceremonies to recognise bravery; Arranging of competitions for cultural purposes; Arranging of competitions for education or entertainment; Arranging of competitions for educational purposes; Arranging of competitions via the Internet; Arranging of conferences relating to cultural activities; Arranging of conferences relating to education; Arranging of conventions for cultural purposes; Arranging of conventions for educational purposes; Arranging of cultural events; Arranging of demonstrations for cultural purposes; Arranging of demonstrations for educational purposes; Arranging of displays for cultural purposes; Arranging of displays for educational purposes; Arranging of educational conferences; Arranging of educational events; Arranging of exhibitions for cultural purposes; Arranging of exhibitions for educational purposes; Arranging of festivals for cultural purposes; Arranging of festivals for educational purposes; Arranging of presentations for cultural purposes; Arranging of presentations for educational purposes; Arranging of seminars relating to cultural activities; Arranging of seminars relating to education; Audio-visual display presentation services for educational purposes; Book lending; Book loaning; Book publishing; Book rental; Book-lending; Books (Publication of -); Club education services; Club services [entertainment or education]; Competitions (organisation of -) [education or entertainment]; Competitions (Organising of education -); Competitions (Organising of entertainment -); Competitions (Organising of sports -); Competitions (Organization of -) [education or entertainment]; Competitions (Organization of sports -); Computer assisted education services; Computer based educational services; Computer based library services; Computer education training; Computer education training services; Conducting of competitions on the Internet; Conducting of cultural events; Conducting of educational conferences; Conducting of educational courses; Conducting of educational events; Conducting of educational seminars relating to medical matters; Conducting of exhibitions for educational purposes; Conducting of instructional, educational and training courses for young people and adults; Conferences (Arranging and conducting of -); Congresses (Arranging and conducting of -); Correspondence school services; Correspondence schools; Cultural activities; Cultural and sporting activities; Cultural services; Design of educational courses, examinations and qualifications; Developing educational manuals; Development of educational materials; Dissemination of educational material; e-Books; Educating at senior high schools; Educating at university or colleges; Education; Education (Information relating to -); Education (Religious -); Education academy services; Education and instruction; Education examination; Education information; Education information services; Education services; Education services in the nature of courses at the university level; Education services relating to religion; Education services relating to vocational training; Educational and teaching services; Educational assessment services; Educational courses (Provision of -); Educational establishments providing courses of instruction (Services of -); Educational examination; Educational examination services; Educational information; Educational information provided on-line from a computer database or the internet; Educational information services; Educational institute services; Educational instruction; Educational research; Educational seminars; Educational services; Educational services for providing courses of education; Educational services for providing courses of instruction; Educational services in the nature of correspondence courses; Educational services in the nature of correspondence schools; Educational services provided by a school; Educational services provided by academies; Educational services provided by institutes of further education; Educational services provided by institutes of higher education; Educational services relating to first aid; Educational services relating to religious development; Educational services relating to spiritual development; Educational testing; Electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information; Electronic online publication of periodicals and books; Electronic publication; Electronic publication of texts and printed matter, other than publicity texts, on the Internet; Electronic publishing; Entertainment, education and instruction services; Entertainment, sporting and cultural activities; Examination services (Educational -); Exhibition services for educational purposes; Exhibitions (Arranging -) for cultural purposes; Exhibitions (Arranging -) for educational purposes; Exhibitions (Conducting -) for cultural purposes; Exhibitions (Conducting -) for educational purposes; Exhibitions (Organization of -) for cultural or educational purposes; Festivals (Organisation of -) for cultural purposes; Festivals (Organisation of -) for educational purposes; Fetes (Organisation of -) for cultural purposes; Fetes (Organisation of -) for educational purposes; Film production for educational purposes; Further education; Guidance (Vocational -) [education or training advice]; Higher education services; Hire of books; Hosting [organising] awards; Information (Education -); Information about education; Information on education; Information relating to education, provided on-line from a computer database or the internet; Information services relating to books; Information services relating to education; Institutes of education (Services provided by -); Interviewing of contemporary figures for educational purposes; Lending libraries for books; Lending library services and library services; Lending of books; Lending of books and other publications; Lending of books and periodicals; Library services; Library services for the lending of books; Library services provided by means of a computerised database; Library services provided by means of a computerised database containing information extracted from newspapers; Library services related to documents stored and retrieved by electronic means; Loan of books; Loaning of books; Loans of books; Magazine publishing; Magazines (Publication of -); Multimedia publishing of books; Multimedia publishing of magazines, journals and newspapers; Newspaper publication; Newspaper publishing; Online electronic publishing of books and periodicals; On-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; On-line library services, namely, providing electronic library services which feature newspapers, photographs, and pictures via an on-line computer network; Online publication of electronic books and journals; On-line publication of electronic books and journals; On-line publication of electronic books and journals (non-downloadable); On-line publication of electronic journals; Organisation of artistic competitions; Organisation of ceremonial events; Organisation of competitions; Organisation of competitions (education or entertainment); Organisation of competitions [education and/or entertainment]; Organisation of competitions [education or entertainment]; Organisation of competitions and awards; Organisation of competitions for education or entertainment; Organisation of conferences relating to education; Organisation of conferences, exhibitions and competitions; Organisation of congresses and conferences for cultural and educational purposes; Organisation of continuing educational seminars; Organisation of cultural events for charitable purposes; Organisation of educational events; Organisation of educational seminars; Organisation of entertainment and cultural events; Organisation of events for cultural, entertainment and sporting purposes; Organisation of examinations [educational]; Organisation of exhibitions for cultural and educational purposes; Organisation of exhibitions for cultural or educational purposes; Organisation of exhibitions for educational purposes; Organisation of group recreational activities; Organisation of seminars relating to education; Organisation of sporting activities and competitions; Organisation of sporting competitions; Organisation of sporting competitions and sports events; Organisation of sporting events; Organisation of sporting events and competitions; Organisation of symposia relating to education; Organising competitions; Organising events for cultural purposes; Organising of competitions for education; Organising of conferences for educational purposes; Organising of conferences relating to education; Organising of education competitions; Organising of education conferences; Organising of education conventions; Organising of education exhibitions; Organising of education seminars; Organising of educational conferences; Organising of educational congresses; Organising of educational exhibitions; Organising of educational lectures; Organising of educational seminars; Organising of exhibitions for educational purposes; Organising of meetings in the field of education; Organising of shows for educational purposes; Organising of sporting activities and competitions; Organising of sporting activities and of sporting competitions; Organising of sporting activities or competitions; Organising of sporting events, competitions and sporting tournaments; Organising of sports competitions; Organising of sports competitions and events; Organising of sports competitions and sports events; Organising of sports events and of sports competitions; Organization of competitions; Organization of competitions [education or entertainment]; Organization of competitions for education or entertainment; Organization of cultural shows; Organization of education competitions; Organization of educational conferences; Organization of educational congresses; Organization of educational symposia; Organization of events for cultural purposes; Organization of exhibitions for cultural and educational purposes; Organization of exhibitions for cultural or educational purposes; Organization of exhibitions for educational purposes; Organization of seminars, working groups, research groups and conventions, in the field of medicine; Organization of shows for cultural purposes; Organization of sports competitions; Organizing and conducting college sport competitions; Organizing cultural and arts events; Photograph library searching services; Photographic library services; Planning of conferences for educational purposes; Planning of lectures for educational purposes; Planning of seminars for educational purposes; Preparation of educational courses and examinations; Preparatory schools; Production and rental of educational and instructional materials; Production of course material distributed at professional seminars; Production of course material distributed at vocational courses; Production of educational materials; Production of educational sound and video recordings; Production of educational television programmes; Production of films for educational purposes; Production of video tapes for corporate use in corporate educational training; Production of video tapes for corporate use in management educational training; Providing computer-delivered educational testing and assessments; Providing cultural activities; Providing electronic publications from a global computer network or the Internet, not downloadable; Providing facilities for educational purposes; Providing information relating to continuing education via the Internet; Providing non-downloadable electronic publications from a global computer network or the Internet; Providing of education; Providing of information relating to continuing education via the Internet; Providing on-line non-downloadable general feature magazines; Providing publications from a global computer network or the internet which may be browsed; Provision of education and training; Provision of education courses; Provision of education on-line from a computer database or via the internet or extranets; Provision of educational examination facilities; Provision of educational examinations; Provision of educational examinations and tests; Provision of educational information; Provision of facilities for education; Provision of information relating to books; Provision of sporting competitions; Provision of training and education; Publication and edition of books; Publication of audio books; Publication of booklets; Publication of books; Publication of books, magazines, almanacs and journals; Publication of books, reviews; Publication of brochures; Publication of catalogues; Publication of educational and training guides; Publication of educational books; Publication of educational materials; Publication of educational printed matter; Publication of educational teaching materials; Publication of educational texts; Publication of electronic books and journals online; Publication of electronic books and journals on-line; Publication of electronic books and periodicals on the Internet; Publication of electronic magazines; Publication of electronic newspapers accessible via a global computer network; Publication of magazines; Publication of material which can be accessed from databases or from the internet; Publication of newspapers; Publication of newspapers, periodicals, catalogs and brochures; Publication of periodicals; Publication of periodicals and books in electronic form; Publication of posters; Publication of printed matter in electronic form on the Internet; Publication of printed matter relating to education; Publication of text books; Publishing of books; Publishing of books, magazines; Publishing of educational material; Publishing of educational matter; Publishing of electronic books and journals on-line; Publishing of journals, books and handbooks in the field of medicine; Publishing of magazines in electronic form on the Internet; Publishing of newsletters; Publishing of newspapers; Publishing of web magazines; Publishing services for books and magazines; Religious education; Religious education services; Religious educational services; Religious instruction; Rental of books; Rental of magazines; Rental of newspapers and magazines; School services; Secondary school educational services; Services for the publication of magazines; Services of schools [education]; Setting of educational standards; Sporting competitions (Arranging of -); Sporting competitions (Organising of -); Sports competitions (Organising of -); Summer camps [entertainment and education]; Teaching academy services; Training and education services; University education services; Vocational education; Vocational education and training services; Vocational education for young people; Vocational education relating to avoidance of drug related problems; Vocational education relating to avoidance of health related problems; Vocational education relating to first aid; Vocational guidance; Workshops for educational purposes; Writing of texts.

An interpretation of the wording of the applicant’s list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and 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 goods and 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 goods in Class 16

A ‘religious service’ is a ritual performed in as part of a religious observation.

Even though the opponent’s religious services in Class 45 is, therefore, a broad term that could refer to many different services or rituals performed by practitioners of a religion, it is clear enough for comparison purposes in the sense that, regardless of the particular aspects of any ritual, there is a religious background. The contested goods are, in general, goods made from paper, printed matter and office requisites. The mere fact that some of the contested goods (e.g. bibles, hymn books, prayer books, religious books and religious circular letters) are commonly used in the celebration of some religious rituals (a Mass, a wedding, a funeral, a thanksgiving, etc.) or for the information and learning of the practitioners of a religion is not sufficient to link these goods with the opponent’s religious services in Class 45; similarly, the mere fact that some of the contested goods (e.g. calendars, Christmas cards, greeting cards and posters) are commonly offered by certain organizations to help people in need, and therefore they may be connected in some way to charity, does not lead to find a similarity between these goods and the opponent’s social services for humanitarian causes in Class 45.

Therefore, the contested address books; advertising posters; announcement cards; announcement cards [stationery]; annuals [printed publications]; bibles; book binders; book bindings; book covers; book holders; book jackets; book markers; book marks; bookbinding covers; bookbindings; bookkeeping forms; booklets; bookmarkers; bookmarks; books; brochures; bulletins; business cards; calendars; cards; cash receipt books; Christmas cards; coin albums; commemorative books; covers for books; daily newspaper; data books; date books; drafting instruments; educational books; educational publications; envelopes for stationery use; events albums; flags of paper; flip books; greeting cards; greetings cards; guide books; hymn books; impression stamps; index books; ink stamps; instruction sheets; instructional and teaching materials; instructional manuals; invitation cards; journals; journals [publications]; log books; magazine supplements for newspapers; magazines; magazines [periodicals]; manuals; manuals [handbooks]; manuscript books; marking stamps; memorandum books; menu cards; motivational cards; mounted posters; name cards; newsletters; newspapers; note cards; occasion cards; office paper stationery; paper flags; paper folders [stationery]; paper identification tags; paper stationery; periodical magazines; philatelic stamps; photographs; photographs [printed]; picture books; picture cards; post cards; postage stamps; posters; posters made of paper; prayer books; printed art reproductions; printed award certificates; printed awards; printed booklets; printed books; printed certificates; printed educational materials; printed informational cards; printed leaflets; printed matter; printed news releases; printed reports; printed research reports; reference books; religious books; religious circular letters; rubber document stamps; rubber stamp; rubber stamps; sealing stamps; seals [stamps]; seals [stationery]; stamps [seals]; stationery; stickers [stationery]; thank you cards; visiting cards are dissimilar to the opponent’s services in Class 44 (medical and hospital services) and Class 45 (social services for humanitarian and diplomatic causes and religious services). This is not only because goods are articles of trade while services consist of the provision of intangible activities, but also because the goods and services in question have different natures, intended purposes and methods of use. Their producers and providers, distribution channels and relevant publics are also different.

Contested services in Class 36

The contested accepting monetary charitable contributions; arranging charitable collections [for others]; arranging of funds for overseas aid projects; benevolent fund services; charitable collections; charitable fund raising; charitable fund raising in view of disaster precautions and prevention; charitable fund raising services; charitable fundraising; charitable fund-raising; charitable fundraising by means of entertainment events; charitable fundraising services; charitable fund-raising services; charitable fundraising services for underprivileged children; charitable fundraising through the sale of charity stamps; charitable services, namely financial services; collections (charitable -); eleemosynary services in the field of monetary donations; fund raising (charitable -); fund raising for charitable purposes; fund raising for charity; investment of funds for charitable purposes; organisation of charitable collections; organising of charitable collections; philanthropic services concerning monetary donations; providing information relating to charitable fundraising; provision of charitable fundraising services in relation to carbon offsetting have all a common purpose, namely raising funds for those in need. Therefore, these contested services are similar to the opponent’s social services for humanitarian causes in Class 45 as they have the same ultimate purpose, namely aid to meet the various needs of individuals, and consequently they target the same relevant public. Finally, these services will be provided by the same entity providing humanitarian aid. The financial services of financing charitable services are necessarily complementary to charitable services (09/07/2015, R 863/2011-G, Malta Cross + International + Foundation (fig. mark) / Malteserkreuz (fig. mark), para 61). Indeed, the fact that the applicant’s and the opponent’s services are specifically described in the respective lists, all pursuing the same goal, derives in a finding of similarity that could not be probably reached otherwise.

Similarly, the contested collections (organisation of -); collections (organising financial -); collections (organization of -); fund raising services via crowdfunding website; fundraising; organisation of collections; organisation of financial collections; organising financial collections are similar to the opponent’s social services for humanitarian causes in Class 45. Fundraising (even if for charitable purposes) is the process of soliciting and gathering contributions of money or other resources by requesting donations from individuals, businesses, charitable foundations, or governmental agencies. Likewise, when organising collections for charity, the organiser collects money from people to give to charity. Therefore, the above mentioned contested services are necessarily complementary to the opponent’s charitable services.

However, the remaining contested services, namely financial sponsorship; financial sponsorship of cultural events; fund sponsorship; sponsorship; providing college scholarships; providing educational scholarships; sponsorship (financial -) are dissimilar to the opponent’s services in Classes 44 and 45, mainly because they have no link with charitable services, unlike the previous similarities found above. The services in question have different intended purposes and methods of use. Furthermore, their providers, distribution channels and relevant publics are also different and they are not complementary nor in competition.

Contested services in Class 41

The contested conducting of educational seminars relating to medical matters; educational services relating to first aid; organization of seminars, working groups, research groups and conventions, in the field of medicine; publishing of journals, books and handbooks in the field of medicine; vocational education relating to avoidance of drug related problems; vocational education relating to avoidance of health related problems; vocational education relating to first aid are similar to the opponent’s medical services in Class 44 as they all relate to the same field, medicine. They normally have the same providers since medical professionals may also provide training to others in the same field, and distribution channels and they target the same relevant public.

The contested education (religious -); education services relating to religion; educational services relating to religious development; educational services relating to spiritual development; religious education; religious education services; religious educational services; religious instruction are similar to the opponent’s religious services in Class 45 as they all directly focus on religion. They normally have the same providers as the people responsible for preaching a religion are often involved in educating others about it, and distribution channels and they target the same relevant public.

The contested organisation of cultural events for charitable purposes are similar to the opponent’s social services for humanitarian causes in Class 45 as they have the same purpose (giving help to the needy), they normally have the same providers and distribution channels and they target the same relevant public.

However, the remaining contested services cover, in general, services rendered in the development of the mental faculties of persons (e.g. education services; arrangement and conducting of conferences, conventions, seminars, training courses, competitions, congresses, classes and lectures), as well as services intended to entertain or to engage the attention (e.g. arrangement and conducting of concerts; arranging of award ceremonies; club services; entertainment, sporting and cultural activities; festivals (organisation of -) for cultural purposes). These services are dissimilar to the opponent’s services in Classes 44 and 45. The services in question have different purposes and natures and are neither in competition, nor interchangeable. Furthermore, they are normally offered by different undertakings specialising in different fields of professional activities. Being the above mentioned contested services applied as broad terms with no further specification, the relevant consumer will not regard them as originating from the same undertaking as the opponent’s particular services in Classes 44 and 45.

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 goods and services found to be similar are directed at the public at large and also at professionals in the medical field, welfare organizations and religious communities with specific professional knowledge or expertise in the related fields. Indeed, in the case of the applicant’s services in Class 36, the relevant public of the services may include both charitable organizations for the benefit of which the fundraising campaigns are conducted and to which donations are presented, and the general public, including private persons, associations or companies that wishes to contribute to public welfare by means of donations via such fundraising campaigns.

The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services. In particular, the degree of attentiveness will be average in relation to, for instance, charitable collections and high in relation to, inter alia, accepting monetary charitable contributions, arranging of funds for overseas air projects, and educational services in relation to first aid as it involves financial services. The public will pay particular attention to the reliability of the service provider in this field (humanitarian causes), its professional competence, efficiency, motivation and dedication in rendering the services in question.

3. The signs

Earlier EUTM No 10 681 047	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 depicting, in the central position, a red oval shield that contains a white cross with four V-shaped elements around it. Intervened with the V-shaped elements, there is a rosary in gold on which hangs a small eight-pointed cross, known as the Maltese cross due to its features: a cross having the form of four V-shaped elements, each joining the others at its vertex, leaving the other two tips spread outward symmetrically. These elements are presented under a royal mantle with a crown and another Maltese cross on top. Since the earlier mark depicts two small Maltese crosses, as described above, it is very likely that a significant part of the relevant public will perceive the four V-shaped elements as another Maltese cross partially hidden behind the red shield.

The contested sign is a colourful and complex figurative mark with the appearance of a coat of arms. To avoid repetition, the Opposition Division refers to the detailed examination of its elements carried out above under the ground of Article 8(5) EUTMR.

For the part of the public that will associate the eight-pointed crosses present in the earlier mark with the Maltese cross, this element is allusive in relation to the relevant services in Classes 44 and 45 and, therefore, weak, as already explained above in the present decision. However, it cannot be excluded that another part of the public will not identify this design of a cross with its historic origin and, therefore, for this part of the public, it possesses a normal degree of distinctiveness.

The central elements of the contested sign, namely the red shield containing a white cross and the V-shaped forms around it, will be perceived as such by a part of the public and are, therefore, distinctive. Since the contested sign depicts several overlapping elements, it cannot be excluded that a part of the public will perceive a white eight-pointed cross behind the red shield.

The royal mantle and the crown of the earlier mark will be perceived by the entire relevant public as symbols of sovereignty, as is the case of some of the figurative elements in the contested sign (e.g. the orb, the sceptre, the ribbon with tassels and the crowns), as already explained above. These elements will be perceived as laudatory indications extoling the official standing of the respective coats of arms as recognised by the realm. Therefore, the distinctiveness of these elements in the signs is limited.

Although the contested sign has no clear dominant element, the two-headed eagle is certainly outstanding by virtue of its position and size within the sign. This element is distinctive in relation to the relevant goods and services.

Visually, the signs coincide in the depiction of a red shield containing a white cross and some V-shaped forms around it, however, they differ in the shape of their respective shields and their contours, as seen above. Although the signs contain some other coinciding elements, such as the crown and the ribbon with tassels, their number, design and colours clearly differs from one sign to the other. Furthermore, they differ in the rosary and the two small Maltese crosses of the earlier mark. Moreover, they differ in the two-headed eagle of the contested sign, which is distinctive and an outstanding element in the sign and has no counterpart in the earlier mark.

Since the signs are both complex marks that combine multiple figurative elements and despite the limited distinctiveness of some of the coinciding elements, as pointed out above, their design, colours and arrangement within the signs clearly differs. Therefore, the signs are visually similar to a low degree.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the relevant public will perceive the coats of arms in both signs as the combination of a shield containing a cross and four V-shaped forms around it (or even the Maltese cross behind the shield), together with some royal elements of a limited distinctiveness, the signs are conceptually similar to a low degree.

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 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 some weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The contested goods and services are partly similar and partly dissimilar to the opponent’s services, the degree of attention of the relevant public varies from average to high and the earlier mark enjoys a normal distinctiveness.

The signs are visually and conceptually similar to a low degree since they are both complex figurative marks, perceived as coats of arms, which coincide in some elements that have, however, clear different aspects, as explained above. Moreover, the contested sign contains a two-headed eagle, which is distinctive and an outstanding element of the sign, with no counterpart in the earlier mark.

The additional and differing elements in the contested sign are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the common elements are of limited distinctiveness for the relevant public and are not the dominant elements of the signs.

As stated by the opponent, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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). However, in the present case, the similarity of part of the goods and services in question cannot offset the low visual and conceptual similarity that exists between the signs.

The opponent, admitting the clear differences between the signs when placed next to each other, refers to the principle of imperfect recollection, according to which the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. The Opposition Division notes, however, that in the present case, an imperfect recollection of the signs can only lead to even less similarities between them, since consumers will keep in mind a vague overall impression of all the individual elements that form the contested sign, but will indeed recall the two-headed eagle, which is an outstanding element within the sign and is not included in the earlier mark. Even consumers who will perceive the Maltese cross behind the red shield in the contested sign will not identify that sign by that element, but by the more eye-catching element, the two-headed eagle.  

The opponent insists that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

The opponent refers to a previous decision of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the opponent, namely decision of 09/07/2015 issued by the Grand Board, in case R 863/2011 G, is not relevant to the present proceedings. In particular, the conflict in that case concerned the earlier German trade mark registration for the purely figurative mark  and the European Union trade mark application for the figurative element , seeking protection in Classes 35, 36 and 45. Therefore, the signs are clearly not comparable with the present decision.

The opponent also refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings.

In particular, the opponent refers to the judgment of The Hague Court of Appeal dated 09/09/2014, in Benelux opposition proceedings number 2007625, in the conflict between several earlier EU and Benelux trade marks for, inter alia, the word marks ‘SOVEREIGN MILITARY HOSPITALLER ORDER OF ST. JOHN OF JERUSALEM OF RHODES AND OF MALTA’, ‘SOVEREIGN MILITARY ORDER OF MALTA’ or ‘KNIGHTS HOSPITALLERS’ and the Benelux trade mark application for the word mark ‘THE KNIGHTS HOSPITALLERS OF THE SOVERIGN ORDER OF SAINT JOHN OF JERUSALEM, KNIGHTS OF MALTA, THE ECUMENICAL ORDER’ for services in Classes 35, 41 and 43. Therefore, the signs are clearly not comparable with the present decision.

The opponent also refers to the judgment of the Supreme Court of Justice of Madrid, dated 21/10/2015, in ordinary proceedings No 1141/2013, in the conflict between the earlier marks ‘KNIGHTS HOSPITALLERS’, ‘ORDER OF ST. JOHN OF JERUSALEM’ and ‘KNIGHTS OF MALTA’ against the registration in Spain of the international trade mark for the word mark ‘THE KNIGHT HOSPITALLERS of the Sovereign Order of Saint John of Jerusalem, the Ecumenical Order’, in Classes 35, 41 and 43. Therefore, the signs are clearly not comparable with the present decision.

Additionally, the opponent refers to a final judgment and permanent injunction issued by the US district Court, Southern District Court of Florida, dated 09/09/2016, in case No 09-81008-Civ-Harley in relation to the use of some US trade mark registrations for the word marks ‘SOVEREIGN MILITARY HOSPITALLER ORDER OF ST. JOHN OF JERUSALEM OF RHODES AND OF MALTA’, KNIGHTS OF MALTA and the figurative mark . Since this case refers to a conflict in a country outside the European Union, the Opposition Division cannot rely on the considerations issued under a foreign jurisdiction and, in any case, the signs therein are clearly not comparable with the present decision.

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 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Ric WASLEY

Marta GARCÍA COLLADO

Carlos MATEO PÉREZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.