CONSILIUM | Decision 2732876
Date Published: Sep 28, 2017
OPPOSITION No B 2 732 876
Consileon Business Consultancy GmbH, Maximilianstr. 5, 76133 Karlsruhe, Germany (opponent), represented by Zirngibl Rechtsanwälte Partnerschaft mbB, Brienner Str. 9, 80333 München, Germany (professional representative)
a g a i n s t
Consilium SGPS S.A., Edifício Liberdade 225, Rua Rosa Araújo, nº 2, 7º, 1250 195 Lisboa, Portugal (applicant), represented by Gastão Da Cunha Ferreira LDA., Rua dos Bacalhoeiros nº. 4, 1100-070 Lisboa, Portugal (professional representative).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 732 876 is partially upheld, namely for the following contested goods and services:
Class 16: Pamphlets.
Class 35: Business management analysis; cost price analysis; business management consultancy and assistance; business organisation and management assistance and consultancy; commercial or industrial management assistance; assistance in management of business activities; business appraisal; business management and organization consultancy; business management consulting; professional business consulting; business organisation consulting; development and implementation of marketing strategies, for others; business project management and administration; conducting marketing studies and market analysis; business services including business management, administration and information; business administration and business consultancy; consultancy relating to the procurement of goods and services; business information and consultancy; market canvassing, research and analysis services.
Class 36: Apartment house management; financial evaluation and analysis; financial consultancy relating to real estate investment; property (real estate -) management; real estate investment consulting services; consultancy relating to the financing of energy projects; real estate asset management; services of investing in real estate; real estate services related to management of property investments.
2. European Union trade mark application No 15 104 763 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 104 763. The opposition is based on International trade mark registration No 1 199 336 designating Austria and Poland and on German trade mark registration No 30 2013 003 892, both for the word mark ‘CONSILEON’ in Classes 5, 9, 10, 35-38, 40-42. The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION- INTERNATIONAL TRADE MARK REGISTRATION NO 1 199 336 DESIGNATING AUSTRIA AND POLAND
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case the notice of opposition was not accompanied by any evidence as regards the earlier International trade mark registration No 1 199 336 on which the opposition is based.
On 22/07/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 27/11/2016.
The opponent did not submit any evidence concerning the substantiation of the above mentioned earlier mark.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark. The opposition continues on the basis of the earlier German trade mark registration.
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 goods and services
The goods and services on which the opposition is based are the following:
Class 5: Pharmaceutical preparations.
Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; calculating machines; teaching apparatus and instruments, computer software, data processing equipment and computers, computer hardware, mouse pads, mouse [data processing equipment]; pre-recorded and blank magnetic and optical data carriers; books and texts in electronic format; electronic publications [downloadable]; audiovisual teaching apparatus.
Class 10: Surgical, medical, dental and veterinary apparatus and instruments.
Class 35: Advertising; business management; business administration; office functions; cost price analysis; professional business consultancy; business management and organization consultancy; business management consultancy; personnel management consultancy, aforesaid consulting services in particular relating to the automotive, banking, energy, health care, trading, capital markets, telecommunication, insurance sectors as well as relating to public services; book-keeping; auditing; computerized file management; services of an accountant; relocation services for businesses; compilation of statistics; efficiency experts; economic forecasting; marketing studies; opinion polling; business research; employment agencies; public relations; business organization consultancy; organization of exhibitions for commercial or advertising purposes; online advertising on a computer network; systemization of information into computer databases; publication of publicity texts.
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial consultancy; financial evaluation (insurance and real estate); financial analysis; financial information; credit bureau; financial assessments; insurance information; health insurance underwriting; insurance consultancy.
Class 37: Installation, assembly, and maintenance services, in particular of medical devices, apparatus and instruments.
Class 38: Telecommunications; telecommunication consultancy; providing user access to data in computer networks; transmission of data in computer networks.
Class 40: Treatment of materials, in particular custom manufacture and adjustment of medical devices, apparatus and instruments to order and specification of others.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; publication of texts, other than publicity texts; arranging and conducting of lectures and courses of lectures [education], colloquia, conferences, congresses, seminars, symposiums and workshops [training]; personnel development through education and training; publication of printed matter (also electronically), except for advertising purposes; training services.
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; computer programming and quality control; computer software consultancy; computer system analysis; computer system design; technical consultancy in terms of computer programming; design and development and hosting of web sites; technical project studies; research and development for others; scientific laboratory services; surveying; medical engineering research; technical development of medical engineering products; administration of user rights in computer networks; medical research laboratory services particularly for medical engineering.
The contested goods and services are the following:
Class 16: Stationery; office requisites, pamphlets.
Class 35: Business management analysis; cost price analysis; business management consultancy and assistance; business organisation and management assistance and consultancy; commercial or industrial management assistance; assistance in management of business activities; business appraisal; business management and organization consultancy; business management consulting; professional business consulting; business organisation consulting; development and implementation of marketing strategies, for others; business project management and administration; negotiation and conclusion of commercial transactions for third parties; conducting marketing studies and market analysis; business services including business management, administration and information; business administration and business consultancy; consultancy relating to the procurement of goods and services; business information and consultancy; market canvassing, research and analysis services.
Class 36: Apartment house management; financial evaluation and analysis; financial consultancy relating to real estate investment; property (real estate -) management; real estate investment consulting services; consultancy relating to the financing of energy projects; real estate asset management; services of investing in real estate; real estate services related to management of property investments.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘in particular’, used in the opponent’s list of goods and services and the term ‘including’, used in the applicant’s list of goods and services, indicate 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 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
The contested pamphlets are similar to the opponent’s electronic publications [downloadable] as they have the same purpose. They can coincide in producer and end user. Furthermore they are in competition.
The rest of the contested goods, namely the stationery and the office requisites, include articles such as pens, envelopes, paper, notebooks or diaries whereas the opponent’s earlier trade mark is registered for pharmaceutical preparations, information technology, audiovisual and educational equipment, medical apparatuses and instruments as well as for a wide range of services in relation to different sectors such as insurance, advertising, telecommunication, education, research or medicine. Since they have no relation whatsoever, these contested goods in Class 16 are dissimilar to the opponent’s goods and services. Indeed, they are goods and services of a different nature, they do not share the same purpose and they have a different method of use. Furthermore, they are not complementary or in competition and distribution channels and producers will normally not coincide.
Contested services in Class 35
The contested cost price analysis is identically contained in both lists of services.
The contested business management analysis; business management consultancy and assistance; business organisation and management assistance and consultancy; assistance in management of business activities; business management and organisation consultancy; business management consulting; professional business consulting; business organisation consulting; business services including business management, administration and information; business administration and business consultancy; consultancy relating to the procurement of goods and services; business information and consultancy; commercial or industrial management assistance; business project management and administration are included, include as a broader category or overlap with the opponent’s business management and organization consultancy. Therefore, they are identical.
The contested conducting marketing studies and market analysis is included in the broad category of the opponent’s marketing studies. Therefore, they are identical.
The contested development and implementation of marketing strategies, for others include, as broader categories, the opponent’s marketing studies. 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 business appraisal is a service normally provided by an accountant specialized in business valuation. It is consequently considered to be included in the broad category of the opponent’s services of an accountant and therefore, they are identical.
The contested market canvassing, research and analysis services are included in the broad category of the opponent’s marketing studies. Therefore, they are identical.
The contested negotiation and conclusion of commercial transactions for third parties are services provided by intermediaries that put buyers and sellers together. They are normally specialized in specific areas and have very specific skills, knowledge and experience. They also have a network that the buyer or seller might not have. The opponent’s services in Class 35 rather cover advertising, marketing, business management and administration, consultancy, office functions, auditing and accountancy services. As already mentioned earlier, the rest of the opponent’s goods and services are for pharmaceutical preparations, information technology, audiovisual and educational equipment, medical apparatuses and instruments as well as for a wide range of services in relation to different sectors such as insurance, telecommunication, education, research or medicine. Although some of the opponent’s goods and services might be addressed to the same public, the above mentioned contested services have a very different purpose, they are neither complementary to each other, nor in competition. Furthermore, the service provider will normally not coincide. Therefore, they are dissimilar.
Contested services in Class 36
The contested financial evaluation and analysis are identically contained in both lists of services (including synonyms).
The contested financial consultancy relating to real estate investment; consultancy relating to the financing of energy projects; real estate investment consulting services are included in the broad category of the opponent’s financial consultancy. Therefore, they are identical.
The contested apartment house management; property (real estate -) management; real estate asset management; services of investing in real estate; real estate services related to management of property investments are included in the broad category of the opponent’s real estate affairs. Therefore, they are identical.
- 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, some of the goods and services found to be identical and similar are directed at business customers with specific professional knowledge or expertise, such as the cost price analysis, while other services, such as the property (real estate -) management, are directed at the public at large.
The degree of attention is in any case considered to be relatively high since the nature of the goods and services in question is rather specialised, some of them are not so frequent even for the professional public and high costs are involved.
- The signs
CONSILEON | |
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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 consisting of the single word ‘CONSILEON’ which is distinctive since it has no significance at all in the relevant territory. It is to be noted that in the case of word marks, it is the word as such that is protected and not its written form.
The contested mark is a figurative mark consisting of the single word ‘CONSILIUM’ represented in a slightly stylized manner through the use of relatively standard light grey characters with a double contour. ‘CONSILIUM’ as such has no meaning in the relevant territory, it is nevertheless very close to the German word ‘Konsilium’ which is an assembly of doctors meeting for discussion or consultation. However, this word is not very frequent in Germany since it is rather technical and proper to the medical industry.
Consequently, since only a limited part of the public in the relevant territory will grasp a meaning in the contested sign which in any case has no connection with the goods and services at hand, this word is considered distinctive.
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).
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Visually, the signs coincide in their beginning, namely in the letters ‘CONSIL***’ but differ in the letters ‘******EON’ placed at the end of the earlier mark and in the letters ‘******IUM’ placed at the end of the contested sign. They also differ in the colour and in the slight stylisation used in the contested sign which have very little impact since they only have a decorative function.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the two first syllables ‘CON/SIL’ and only differ in the last one, ‘EON’ vs ‘IUM’. Despite being different, these last syllables have the same structure since the two first letters are vowels and the last one is a consonant. Consequently, since the signs as a whole have a very similar structure, rhythm and intonation, they are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public under analysis. Consequently, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
- 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’).
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 goods and 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
According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.
Account should also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
In the present case, the goods and services are partly identical or similar and partly dissimilar. Furthermore, the signs are visually similar to an average degree and aurally similar to a high degree because they coincide in six letters out of a total of nine which are, moreover, placed at the beginning of both signs. Indeed, taking into consideration the limited impact of the figurative elements in the contested sign, the signs only differ further in their respective three final letters albeit sharing the same structure as already mentioned.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s German trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to those of the earlier trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.
Since the opposition is partially 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 relation to identical services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Martina GALLE | Sandra IBAÑEZ | Frédérique SULPICE |
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.