BOOQ | Decision 2705609
Date Published: Sep 24, 2017
OPPOSITION No B 2 705 609
Gunther Diehm, Uhlandstr. 25, 74072 Heilbronn, Germany, and Jochen Diehm, Uhlandstr. 25, 74072 Heilbronn, Germany (opponents), represented by Stumpf Patentanwälte PartGmbB, Alte Weinsteige 73, 70597 Stuttgart, Germany (professional representative)
a g a i n s t
Eijsink Hengelo Werkmaatschappij B.V., Platinastraat 25, 7554 NC Hengelo, The Netherlands (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).
On 18/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 705 609 is rejected in its entirety.
2. The opponents bear the costs, fixed at EUR 300.
REASONS:
The opponents filed an opposition against some of the services of European Union trade mark application No 14 830 442, namely against some of the services in Class 35 and all the services in Class 36. The opposition is based on European Union trade mark registration No 4 685 079. The opponents invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The services
The services on which the opposition is based are the following:
Class 35: Tax consultancy (included in Class 35), tax preparation, payroll preparation, preparation of annual financial statements, financial accounting and auditing, business management, business administration, auditing; business consultancy and advisory services; active and accompanying consultancy, for others, with regard to business organisation and management, company succession, auditing (included in Class 35) and personnel management.
Class 36: Financial affairs; accountancy (included in Class 36) and trusteeship (included in Class 36); monetary affairs; investment and financial consultancy, sales financing consultancy, credit consultancy, financial management; active and accompanying consultancy, for others, with regard to financial issues, investment decisions (included in Class 36), with regard to financing, including public funds, with regard to bank discussions and credit negotiations; fiscal assessments.
The contested services are the following:
Class 35: Accounting.
Class 36: Services in the field of payment transactions; financial transactions via electronic channels, including the internet; leasing of data communications equipment, in particular for financial transactions.
Some of the contested services are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.
- 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 deemed to be identical are financial and monetary services directed at the public at large and at business consumers. Since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention could be quite high when choosing them (03/02/2011, R 719/2010-1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874, dismissed). Therefore, the degree of attention of the relevant public is considered higher than average.
- The signs
BOOKMAN | BOOQ |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark, ‘BOOKMAN’. Although it is depicted as one word, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, at least the English-speaking part of the public will recognise the English words ‘BOOK’ and ‘MAN’ in the earlier mark and perceive them as referring to, inter alia, ‘a systematic record of commercial transactions, minutes of meetings, attendance, etc. also: a volume containing such records; an account book, a ledger, or (in later use) its electronic equivalent’ and ‘an adult male human being’, respectively (information extracted from Oxford English Dictionary on 01/08/2017 at http://www.oed.com). In relation to the relevant financial and related services, the word ‘BOOK’ is considered weak for this part of the public, since it may be seen as alluding to their intended purpose (bookkeeping – the activity or occupation of keeping accounts or other records of the financial affairs of a trader, public office, etc. (information extracted from Oxford English Dictionary on 01/08/2017 at http://www.oed.com)). When taken together with the word ‘MAN’, the combination may allude to a bookkeeper – a person whose job it is to keep an accurate record of the money that is spent and received by a business or other organisation. Therefore, the distinctiveness of the expression ‘BOOKMAN’ will be lower than average in relation to the relevant financial and related services for this part of the public.
For the part of the public that will perceive the word ‘BOOKMAN’ as one meaningless word (e.g. the Bulgarian-, Czech-, Estonian-, Greek-, Hungarian-, Italian-, Latvian-, Portuguese-, Slovak- and Spanish-speaking parts of the public), its distinctiveness is seen as average. The same applies to the part of the public that might understand the word ‘MAN’ as referring to an adult male human being, such as the German-speaking part of the public, because it is very similar to the equivalent German word ‘Mann’ or because it is a basic English word.
Considering the abovementioned possible perceptions of the earlier mark, ‘BOOKMAN’, the Opposition Division will first examine the opposition in relation to the part of the public for which the word ‘BOOKMAN’ is meaningless and has a normal degree of distinctiveness. This part of the relevant public would be more likely to confuse the signs and this scenario therefore constitutes the opponents’ best-case scenario.
The contested sign, ‘BOOQ’, will be perceived as meaningless by the relevant public and, therefore, has an average degree of distinctiveness in relation to the relevant services.
As both signs are word marks, neither of them has any element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs are similar to the extent that they coincide in their first three letters, ‘BOO’. However, the signs differ in their last letters, ‘KMAN’ of the earlier mark versus ‘Q’ of the contested sign.
Although the signs coincide in their first three letters, the significant differences in the lengths of the signs (the earlier mark consists of seven letters, whereas the contested sign consists of four) and the completely different visual impressions created by the letter ‘Q’ at the end of the contested sign and the letters ‘KMAN’ at the end of the earlier mark will be clearly noticed by the relevant consumers. Therefore, the signs are considered visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛BOO’, present identically in both signs. Moreover, for some parts of the relevant public, for example, the Czech-, Estonian-, Portuguese-, Slovak- and Spanish-speaking parts of the public, the pronunciation of the signs fully or partially coincides in the sound of the fourth letter ‘K’ of the earlier mark and the sound of the last (fourth) letter ‘Q’ of the contested sign (which will be pronounced either identically or similarly). However, the pronunciation differs in the sound of the letters /MAN/ of the earlier mark, which is an additional syllable and has no counterparts in the contested sign, which will be pronounced as one syllable. Therefore, the marks are considered aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 opponents did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and/or 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).
As concluded above, the contested services are deemed identical to the opponents’ services and they target the public at large and business consumers with a higher than average degree of attention. The degree of distinctiveness of the earlier mark is average.
The earlier mark and the contested sign are similar insofar as they have the same first three letters, ‘BOO’, and because of the aural similarity or identity between the sounds of their fourth letters, ‘K’ and ‘Q’, for a part of the relevant public. However, considering the striking visual differences between the endings ‘KMAN’ and ‘Q’ of the earlier mark and the contested sign, respectively, as described in section c), as well as their aural differences and the fact that the signs under comparison do not have a conceptual link that would lead the public to associate them with each other, it can be concluded that the differences between the marks are clearly perceptible and counteract the similarities that arise from the fact that the marks have a sequence of letters, as indicated above, in common.
Consequently, it can be concluded that, despite the similarities between the marks under comparison, the differences between them are sufficiently striking and outweigh the commonalities to such an extent that a likelihood of confusion, including a likelihood of association, on the part of the relevant public with a higher than average degree of attention can be excluded, even in relation to the identical services.
Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
The opponents refer to previous decisions of the Office to support their arguments, namely 30/05/2014, B 1 792 483, POCKET / POCKETBOOK; 30/05/2014, B 2 202 524, MONSTER / MONSTER MAN; 29/05/2015, B 1 832 784, GAS / GAZ MAN; 14/09/2012, B 1 902 264, HORSE / HORSE MAN; 04/11/2013, B 2 070 038, MAN / TOPMAN. However, in all these cases either the earlier mark was fully included in the contested sign or the differing verbal element was weak in relation to the relevant goods. Therefore, the opposition decisions cited by the opponents are not considered comparable to the present case and are not relevant to the present proceedings.
For the sake of completeness, the Opposition Division points out that there is no need to proceed further to a comparison of the signs for the English-speaking part of the public, which will perceive the abovementioned meanings of the words ‘BOOK’ and ‘MAN’ in the earlier mark. If there is no likelihood of confusion for those consumers who do not perceive any meaning in the word ‘BOOKMAN’ in the earlier mark, a fortiori there is no likelihood of confusion for those consumers who will perceive it as meaningful, since, first, the earlier mark and the contested sign will not be similar conceptually and, second, the mark ‘BOOKMAN’ will have a lower than average degree of distinctiveness for this part of the public. Since these two factors would make a likelihood of confusion even less likely, the outcome of the present decision would not be different.
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 opponents.
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 opponents are the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Ana MUÑIZ RODRÍGUEZ | Rasa BARAKAUSKIENE | Judit NÉMETH |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.