OPPOSITION No B 2 613 738

Unidad Editorial, S.A., Avda. de San Luis, 25, 28033 Madrid, Spain (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Dmitri Marinkin, Karulaugu tee 7-2, 74001 Haabneeme, Harju maakond, Estland (applicant 1) and Aleksandr Volohhonski, Kiimsi tee 19, 74011 Pringi, Harjumaa, Estland (applicant 2)

On 12/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 613 738 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 047 211 is rejected in its entirety.

3.        The applicants bear the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 047 211. The opposition is based on Spanish trade mark registrations No 2 585 973, No 3 079 799, No 2 951 990 and No 3 471 406. The opponent invoked Article 8(1)(b) EUTMR in relation to all earlier marks and 8(5) EUTMR in relation to Spanish trade mark registrations No 2 951 990 and No 3 471 406.

The opposition is based on several earlier trade marks and grounds. The Opposition Division finds it appropriate to first examine the opposition in relation to likelihood of confusion and the opponent’s Spanish trade mark registrations No 2 585 973 and No 2 951 990.

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, amongst others, the following:

Earlier Spanish trade mark No 2 951 990

Class 16: Printing products (printed matter), publications, magazines; periodicals; books; paper and goods made from paper not included in other classes; cardboard and goods made from cardboard not included in other classes; photographs; office requisites; paper sheets; bags and sacks of plastic materials for packaging; instructional materials and teaching material (except apparatus); typewriters; adhesives and glues for stationery or household use; bookbinding materials; artists’ materials.

Class 35: Industrial or commercial business management assistance; export and import services; services involving the recording, transcription, composition, compilation, transmission or systematisation of written and recorded communications; services related to the use and compilation of mathematical and statistical data; advertising.

Earlier Spanish trade mark No 2 585 973

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services; computer programming; consultancy in field of intellectual and industrial property; updating, rental, installation and design of computer software; superserver (web pages).

The contested goods and services are the following:

Class 16: Posters; forms, printed; announcement cards (stationery); pamphlets; booklets; copying paper (stationery); writing paper; Xuan paper for Chinese painting and calligraphy; wrapping paper; newsletters; signboards of paper or cardboard; printed publications; envelopes [stationery]; boxes of cardboard or paper; paper ribbons; adhesive bands for stationery or household purposes; adhesive tapes for stationery or household purposes; self-adhesive tapes for stationery or household purposes; flyers; absorbent sheets of paper or plastic for foodstuff packaging; viscose sheets for wrapping; sheets of reclaimed cellulose for wrapping; plastic bubble packs for wrapping or packaging; postage stamps; graphic prints; sealing compounds for stationery purposes; stuffing of paper or cardboard; packaging material made of starches; packing (cushioning, stuffing) materials of paper or cardboard; bags (envelopes, pouches) of paper or plastics, for packaging; plastic film for wrapping; prospectuses; bottle wrappers of cardboard or paper; stamps [seals]; shields (paper seals); prints [engravings]; labels, not of textile.

Class 35: Arranging subscriptions to telecommunication services for others; import-export agencies; commercial information agencies; advertising agencies; computerized file management; demonstration of goods; marketing studies; marketing research; commercial information and advice for consumers [consumer advice shop]; business research; layout services for advertising purposes; marketing; updating and maintenance of data in computer databases; word processing; data search in computer files for others; commercial intermediation services; on-line advertising on a computer network; compilation of information into computer databases; business inquiries; systemization of information into computer databases; negotiation and conclusion of commercial transactions for third parties; pay per click advertising; procurement services for others [purchasing goods and services for other businesses]; outsourcing services [business assistance].

Class 42: Installation of computer software; information technology (IT) consultancy; computer software consultancy; technological consultancy; quality control; updating of computer software; monitoring of computer systems by remote access; software as a service (SaaS); maintenance of computer software; digitization of documents (scanning); conversion of data or documents from physical to electronic media; providing information on computer technology and programming via a web site; data conversion of computer programs and data [not physical conversion]; rental of computer software; computer software design; computer programming; computer technology consultancy; telecommunications technology consultancy; cloud computing services; electronic data storage; surveying.

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

The contested posters; forms, printed; pamphlets; newsletters; printed publications; flyers; postage stamps; graphic prints; prospectuses; stamps [seals]; prints [engravings] fall under the broad term of the opponent’s printing products (printed matter). They are identical.

The contested copying paper (stationery); writing paper; Xuan paper for Chinese painting and calligraphy; wrapping paper fall under the broad terms of the opponent’s paper. They are identical.

The contested booklets; signboards of paper or cardboard; boxes of cardboard or paper; paper ribbons; absorbent sheets of paper  for foodstuff packaging; sheets of reclaimed cellulose for wrapping; stuffing of paper or cardboard; packing (cushioning, stuffing) materials of paper or cardboard; bottle wrappers of cardboard or paper; labels, not of textile; bags (envelopes, pouches) of paper for packaging fall under the broad terms of the opponent’s goods made from paper not included in other classes; goods made from cardboard not included in other classes. They are identical.

The contested adhesive bands for stationery or household purposes; adhesive tapes for stationery or household purposes; self-adhesive tapes for stationery or household purposes fall under the broad terms of the opponent’s adhesives for stationery or household use. They are identical.

The contested announcement cards (stationery); envelopes [stationery]; sealing compounds for stationery purposes; shields (paper seals) are stationery. They are similar to the opponent’s goods made from paper not included in other classes as they coincide in distribution channels, sales outlets and nature. They are similar.

The contested absorbent sheets of plastic for foodstuff packaging; viscose sheets for wrapping; plastic bubble packs for wrapping or packaging; packaging material made of starches; bags (envelopes, pouches) of plastics, for packaging; plastic film for wrapping are plastic materials for packaging (not included in other classes). They are highly similar to the opponent’s bags and sacks of plastic materials for packaging as they coincide in nature, purpose, producers and sales outlets.

Contested services in Class 35

Import-export agencies; advertising agencies are identically covered by earlier Spanish trade mark No 2 951 990 and the contested sign (including synonyms).

The contested demonstration of goods; layout services for advertising purposes; marketing; on-line advertising on a computer network; pay per click advertising; arranging subscriptions to telecommunication services for others fall under the opponent’s broad category of advertising. They are identical.

The contested computerized file management; updating and maintenance of data in computer databases; word processing; compilation of information into computer databases; systemization of information into computer databases overlap with the opponent’s services involving the recording, transcription, composition, compilation, transmission or systematisation of written and recorded communications. These services are identical.

The contested marketing studies; marketing research; business research; business inquiries overlap with the opponent’s services related to the use and compilation of mathematical and statistical data. These services are identical.

The contested commercial information agencies; commercial information and advice for consumers [consumer advice shop]; negotiation and conclusion of commercial transactions for third parties; procurement services for others [purchasing goods and services for other businesses]; outsourcing services [business assistance] overlap with the opponent’s industrial or commercial business management assistance. These services are identical.

The contested data search in computer files for others; commercial intermediation services are specific office functions. They are similar to the opponent’s services involving the recording, transcription, composition, compilation, transmission or systematisation of written and recorded communications, as they coincide in purpose, end users, providers.

Contested services in Class 42

Installation of computer software; updating of computer software; rental of computer software; computer software design; computer programming are identically covered by earlier Spanish trade mark No 2 585 973 and the contested sign (including synonyms).

The contested technological consultancy; telecommunications technology consultancy; surveying are included in the broad category of, or overlap with, the opponent’s scientific and technological services. The surveying consists in rendering technical reports. Therefore, they are identical.

The contested quality control is included in the broad category of, or overlaps with, the opponent’s industrial analysis and research services. Therefore, they are identical.

The contested information technology (IT) consultancy; computer software consultancy; monitoring of computer systems by remote access; software as a service (SaaS); maintenance of computer software; digitization of documents (scanning); conversion of data or documents from physical to electronic media; providing information on computer technology and programming via a web site; data conversion of computer programs and data [not physical conversion]; computer technology consultancy; cloud computing services; electronic data storage are highly similar to the opponent’s design and development of computer hardware and software, as they coincide in nature, purpose and provider.

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 identical or similar to various degrees are partly directed at the public at large and partly at a professional public. Depending on price and frequency of purchase the degree of attention varies from low to average to high.

3. The signs

Earlier mark 1/ Spanish mark No 2 951 990	Contested sign
MARCA
Earlier mark 2/ Spanish mark No 2 585 973

The relevant territory is Spain.

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 1/ is a figurative mark consisting of the word ‘MARCA’ in bold red serif letters.

The earlier sign 2/ is a word mark consisting of the word ‘MARCA’.

The contested sign is a figurative mark consisting of the word ‘ULTRAMARCA’ in thin sans serif letters. The first letter ‘A’ and the letter ‘M’ are superimposed in a geometrical form.

The earlier marks have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements. The word ‘ULTRA’ is laudatory and therefore weak.

Visually, the signs coincide in the string of letters ‘MARCA’. They differ in their typeface and colour (earlier mark 1/ bold red serif letters, contested mark thin sans serif letters) and the additional string of letters ‘ULTRA’ of the contested mark.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

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

Aurally, the pronunciation of the signs coincides in the sound of the syllables ‛MAR-CA’, present identically in all signs. The pronunciation differs in the sound of the first two syllables of the contested sign, namely ‘UL-TRA’, which have no counterparts in the earlier signs. The different number of syllables (two vs. four) changes the rhythm and intonation.

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

Conceptually, the Spanish word ‘marca’ has several meanings, such as ‘trade mark’, ‘marker’ or ‘marking’. ‘Ultra’ is a prefix which refers to something that is beyond what is ordinary, proper, or moderate; extremely. The combination ‘ULTRAMARCA’ will be immediately understood as an extraordinary trade mark, marker or marking.

The signs are conceptually highly similar, as all of them refer to a trade mark, marker or marking.

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 marks

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 Spanish mark No 2 951 990 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’).

Consequently, the assessment of the distinctiveness of the earlier Spanish mark No 2 951 990 will rest on its distinctiveness per se. In the present case, the earlier Spanish mark No 2 951 990 as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier Spanish mark No 2 951 990 must be seen as normal.

In relation to earlier Spanish trade mark No 2 585 973 the opponent did not claim enhanced distinctiveness. It has no meaning in relation to the relevant services. Therefore, its distinctiveness must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar to various degrees. The distinctiveness of the earlier marks is deemed to be average.

The word of the earlier signs is completely included in the contested mark. It is preceded by a commonly used and immediately understood prefix, which simply indicates that the following noun is extraordinary. Therefore, the signs are conceptually highly similar for the relevant Spanish public. The differences in typeface and colour are not sufficient to counterbalance these similarities.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registrations No 2 585 973 and No 2 951 990. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to reputation as claimed by the opponent. The result would be the same even if the earlier Spanish mark No 2 951 990 enjoyed an enhanced degree of distinctiveness.

As the earlier Spanish trade mark registrations No 2 585 973 and No 2 951 990 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicants are the losing party, they must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Dorothée SCHLIEPHAKE

Julia SCHRADER

Swetlana BRAUN

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.