OPPOSITION DIVISION
OPPOSITION No B 1 621 377
Mip Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235
Düsseldorf, Germany (opponent), represented by Harmsen Utescher, Neuer Wall
80, 20354 Hamburg, Germany (professional representative)
a g a i n s t
Metro International S.A., 2-4, Avenue Marie-Thérèse, 2132 Luxembourg,
Luxembourg (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114
85 Stockholm, Sweden (professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 621 377 is upheld for all the contested services.
2. European Union trade mark application No 8 596 645 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against all the services of European Union trade
mark application No 8 596 645 for the figurative sign
, namely all the services in Classes 35 and 41.
The opposition is based on European Union trade mark registration No 779 116 for
the figurative mark . The opponent invoked
Article 8(1)(b) EUTMR.
Decision on Opposition No B 1 621 377 page: 2 of 8
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.
a) The services
The services on which the opposition is based are the following:
Class 35: Marketing, sales promotion, purchasing consultancy, marketing studies
and marketing analysis, business, organisation, personnel and professional business
consultancy, advertising, including radio and television advertising, cinema
advertising, advertising documentation, public relations; opinion polling, organising
trade fairs and exhibitions; commercial and professional business consultancy, in
particular for the retail food sector, providing commercial and professional business
information, in particular for the retail food sector.
Class 41: Tuition, further education and professional consultancy for employers and
of commercial employees and trainees of foreign businesses, arranging of seminars,
congresses and correspondence courses in the professional business sector,
arranging sporting competitions, public entertainment.
The contested services are the following:
Class 35: Advertising, marketing, personnel recruitment, organisation of trade fairs
for commercial or advertising purpose, publication of publicity texts.
Class 41: Organisation of exhibitions for cultural or educational purposes; education;
providing of training.
An interpretation of the wording of the list of services is required to determine the
scope of protection of these services.
The terms ‘including’ and ‘in particular’, used in the opponent’s list of services,
indicates that the specific services are only examples of items included in the
category and that protection is not restricted to them. In other words, it introduces a
non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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.
Decision on Opposition No B 1 621 377 page: 3 of 8
Contested services in Class 35
Advertising and marketing are identically contained in both lists of services.
The contested organisation of trade fairs for commercial or advertising purpose are
included in the broad category of the opponent’s organising trade fairs. Therefore,
they are identical.
The contested publication of publicity texts is included in the broad category of the
opponent’s advertising. Therefore, they are identical.
The contested personnel recruitment is similar to the opponent’s personnel and
professional business consultancy. They have a similar purpose, as both are related
to the hiring of staff. Furthermore, they are likely to target the same end users,
namely business owners, and may well be provided by the same companies, namely
those skilled in personnel recruitment.
Contested services in Class 41
The contested education and providing of training include, as broader categories, the
opponent’s tuition and further education for employers and of commercial employees
and trainees of foreign businesses. 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 organisation of exhibitions for educational purposes is similar to the
opponent’s arranging of seminars, congresses and correspondence courses in the
professional business sector. They have a broadly similar purpose, as both are
related to the organisation of educational events, and consequently they can target
the same end users and may well be provided by the same companies.
The contested organisation of exhibitions for cultural purposes is similar to the
opponent’s arranging public entertainment, as they have a similar purpose, can
coincide in end users and may have the same distribution channels.
b) 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 are directed in part at
the public at large, namely the services in Class 41, and in part at business
customers with specific professional knowledge or expertise, namely the services in
Class 35.
The degree of attention will vary from average, for the everyday services in Class 41
directed at the public at large, to high, for the services in Class 35 which are
infrequent purchases directed at business customers.
Decision on Opposition No B 1 621 377 page: 4 of 8
c) 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).
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
All the verbal elements in both signs are meaningful in those countries where English
is understood. Consequently, the Opposition Division finds it appropriate to focus the
comparison of the signs on the English-speaking part of the public such as the United
Kingdom and Ireland.
The word ‘METRO’ present in both signs, will be understood as originally meaning:
the Metropolitan Underground Railway of Paris (usually in form métro), but
subsequently also any urban railway system or network, esp. one which runs wholly
or partly underground (all definitions taken from the Oxford English Dictionary online,
oed.com). It has no meaning in relation to the relevant services and is, therefore,
distinctive.
The words ‘TraineePartner’ present in the contested sign, will be understood by the
relevant public as ‘Trainee’ (meaning a person or (formerly) an animal undergoing
training) and ‘Partner’ (meaning a person who takes part with another or others in
doing something, esp. either of a pair of people engaged together in the same
activity, occupation, etc.; an associate, companion, or accomplice). As a whole it can
be understood in two ways: as referring to a training program intended for trainee
associates, or as referring to training services where the provider of the services acts
more than just an educator but as a partner in the training. Regardless of which of
these ways it is understood, in relation to the relevant services it is weak for the
training and educational services in Class 41, namely organisation of exhibitions for
educational purposes; education; providing of training, and of normal distinctiveness
for the remaining services.
The words ‘Powered by’ present in the contested sign, will be understood as a whole
as a slightly laudatory construction identifying the provider or source of a service.
Consequently, it is less distinctive than other elements.
Decision on Opposition No B 1 621 377 page: 5 of 8
The earlier mark uses a yellow slightly stylised figurative typeface. The word
‘METRO’ in the contested sign does have a slight figurative flourish in that the ‘o’ is a
figurative element reminiscent of a stylised globe. However, consumers are used to
see letters replaced with figurative elements and are accustomed to finding meaning
especially when the result forms a known word, as is the case here.
The remaining figurative elements of the contested sign consist of a green irregularly
shaped background upon which appears a faint figurative element of the stylised
globe featuring in the letter ‘o’ of ‘METRO’.
However, it should be remembered 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. 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).
The earlier mark has no element which could be considered more dominant. The
dominant element of the contested sign are the conjoined words ‘TraineePartner’ due
to their size and position.
Visually, the signs coincide in the word ‘METRO’ although differing in the manner in
which it is presented (colour, typeface, position). They differ in all the other elements
described above.
Therefore, the signs are similar to a low degree.
Aurally, the pronunciation of the signs coincides in the word ‘METRO’ which is the
entirety of the earlier mark and either the most distinctive element or one of the most
distinctive elements of the contested sign. The pronunciation differs in the remaining
verbal elements of the contested sign, namely the words ‘Trainee Partner Powered
by’.
Therefore, and bearing in mind what has been said about the distinctiveness of the
word ‘METRO’ in the contested sign, the signs are at least similar to an average
degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be perceived as referring to
‘METRO’ the signs are conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
Decision on Opposition No B 1 621 377 page: 6 of 8
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 relevant services from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
In the present case, the contested services are partly identical and partly similar. The
signs are visually similar to a low degree and aurally and conceptually similar to an
average degree.
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically-linked undertakings. Furthermore, it is common practice in the relevant
market for manufacturers to make variations of their trade marks, for example by
altering the typeface or colours, or adding verbal or figurative elements to them, in
order to denote new product lines, or to endow a trade mark with a new, fashionable
image.
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 et seq.).
In the present case, although the relevant public might detect certain differences
between the conflicting signs, especially visually, the likelihood that the public might
associate the signs with each other is very real. It is highly likely that the relevant
consumer will perceive the contested sign as a sub brand or a word variation of the
earlier mark, configured in a different way according to the type of goods that it
designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
The applicant argues that ‘METRO’ is frequently used in other trade marks and
business names in different business fields. Furthermore, the applicant argues that
the element ‘METRO’ of the contested sign has been used since 1995 and has
become well-known.
According to case-law, the possibility cannot be ruled out that the coexistence of two
marks on a particular market might, together with other elements, contribute to
diminishing the likelihood of confusion between those marks on the part of the
relevant public (03/09/2009, C-498/07P, La Española, EU:C:2013:302, § 82). In
certain cases, the coexistence of earlier marks in the market could reduce the
likelihood of confusion that the Office finds between two conflicting marks (judgment
of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility
can be taken into consideration only if, at the very least, during the proceedings
before the EUIPO concerning relative grounds for refusal, the applicant for the
European Union trade mark duly demonstrated that such coexistence was based
upon the absence of any likelihood of confusion on the part of the relevant public
between the earlier marks upon which it relies and the intervener’s earlier mark on
Decision on Opposition No B 1 621 377 page: 7 of 8
which the opposition is based, and provided that the earlier marks concerned and the
marks at issue are identical (Grupo Sada, § 86).
In this regard it should be noted that formal coexistence in national or Union
registries of certain marks is not per se particularly relevant. It should also be proved
that they coexist in the market, which could actually indicate that consumers are used
to seeing the marks without confusing them. Last but not least, it is important to note
that the Office is in principle restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of
the coexistence of other marks in the market (and possibly in the register) at
national/Union level as an indication of ‘dilution’ of the distinctive character of the
opponent’s mark that might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis, and such an indicative value
should be treated with caution as there may be different reasons as to why similar
signs coexist, e.g. different legal or factual situations in the past, or prior rights
agreements between the parties involved.
Therefore, in the absence of convincing arguments and evidence thereof, including
the evidence submitted that is per se rather scarce to enable the Opposition Division
to draw any conclusion on the coexistence of those marks in the market, this
argument of the applicant must be rejected as unfounded.
Regarding the claim that the element ‘METRO’ of the contested sign has become
well-known, in this respect, the Opposition Division would like to note that the right to
an EUTM begins on the date when the EUTM is filed and not before, and from that
date on the EUTM has to be examined with regard to opposition proceedings.
Furthermore, the Office is in principle restricted in its examination to the trade marks
in conflict. Therefore, when considering whether or not the EUTM falls under any of
the relative grounds for refusal, events or facts that happened before the filing date of
the EUTM are irrelevant because the rights of the opponent, insofar as they predate
the EUTM, are earlier than the applicant’s EUTM.
Based on all the foregoing, it is considered that there are strong coincidences
between the signs with a decisive impact. Taken together with the identity and
similarity of the services, these similarities are clearly enough to outweigh the
differences, and may cause at least a part of the public to believe that the conflicting
services come from the same undertaking or economically linked undertakings,
despite a possible higher level of attention for some services.
Thus, the Opposition Division considers that the marks under comparison convey
similar overall impressions and that a likelihood of confusion between them cannot
be safely excluded for the English-speaking parts of the relevant public. As stated
above in section c) of this decision, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s earlier
European Union trade mark registration No 779 116. It follows that the contested
trade mark must be rejected for all the contested services.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier mark, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its extensive use as claimed by the opponent and in
Decision on Opposition No B 1 621 377 page: 8 of 8
relation to identical and similar services. The result would be the same even if the
earlier mark enjoyed an enhanced degree of distinctiveness.
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 applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Vít MAHELKA Ric WASLEY Chantal VAN RIEL
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.