ECCLEDIA | Decision 2390519 - Ecclesia Holding GmbH v. ODENDALL FOUNDATION

Date Published: Sep 28, 2017

OPPOSITION No B 2 390 519

Ecclesia Holding GmbH, Klingenbergstraße 4, 32758 Detmold, Germany (opponent), represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Kranhaus 1, Im Zollhafen 18, 50678 Köln, Germany (professional representative)

a g a i n s t

Odendall Foundation, Headquartered c/o Comptabilité et Gestion SA. Grand´Place 14, 1700 Fribourg, Switzerland (applicant) represented by Aurelio Richichi, Via Cola di Rienzo 212, 00192 Roma, Italy (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 390 519 is partially upheld, namely for the following contested services:

Class 45:        Religious services; evangelistic ministerial services; spiritual development; spiritual advice; pastoral counselling; counselling relating to spiritual direction; organization of religious meetings; mentoring [spiritual]; evangelistic services.

2.        European Union trade mark application No 12 805 644 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 805 644. The opposition is based on European Union trade mark registration No 10 363 281. The opponent 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.

1. The services

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

Class 35:        Advertising; business management; business administration; office functions.

Class 36:        Insurance, broking and administration of insurance contracts, processing of claims; financial affairs and services; monetary affairs; real estate affairs.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; production of text, sound and image recordings; publication of printed materials, newspapers, periodicals and books, including in electronic form and on the internet, relating to insurance.

The Opposition Division notes that the opponent has, under the provision of Article 28(8) EUTMR, declared that their intention on the date of filing had been to seek protection in respect of services beyond those covered by the literal meaning of the heading in Class 36. Those services, which have not yet been added to the Register, are:

Class 36:         Financial information; financial consulting; insurance information, insurance consultancy.

The contested services (after a limitation removing services in Class 41 requested on 20/07/2016) are the following:

Class 38:        News agency only relating to religion; news agency services only relating to religion; news agency services [transmission of news] only relating to religion; sending [transmission] of news only relating to religion; transmission of information on-line only relating to religion.

Class 45:        Religious services; evangelistic ministerial services; spiritual development; spiritual advice; pastoral counselling; counselling relating to spiritual direction; organization of religious meetings; on-line social networking services only relating to religion; mentoring [spiritual]; evangelistic 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 services in Class 38

The contested news agency only relating to religion; news agency services only relating to religion; news agency services [transmission of news] only relating to religion; sending [transmission] of news only relating to religion; transmission of information on-line only relating to religion are services that disseminate or transmit news or information to others. They do not gather or publish the news and information. Those services are classified in Class 41. These services in Class 38 are telecommunication services limited to the transmission of the news and getting it from one place to another. Therefore, contrary to the opponent’s arguments, these services are dissimilar to the opponent’s entertainment; production of text, sound and image recordings; publication of printed materials, newspapers, periodicals and books, including in electronic form and on the internet, relating to insurance; in Class 41. These latter services refer to the creation and the publishing of content to be later transmitted, or not, by means of telecommunications. This slight complementarity is not enough to find similarity between the services. In addition the subject matter of the information to be created and published (insurance) and to be transmitted (religion) is completely different. In the same way a distinction must be drawn between those services that create entertainment to be viewed via television, radio or the internet which are in Class 41 and those services that transmit the entertainment, which are in Class 38. The nature and the purpose of the services are different as is the method of use. They are not in competition. The distribution channels and relevant public do not normally coincide and these services do not usually come from the same company. The same can be said with regard to all the rest of the opponent’s services, including the following services subject of the Article 28(8) EUTMR declaration: Financial information; financial consulting; insurance information, insurance consultancy. They are dissimilar to the contested services, for the above mentioned reasons and, in addition, they are also not complementary.

Contested services in Class 45

The contested religious services; evangelistic ministerial services; spiritual development; spiritual advice; pastoral counselling; counselling relating to spiritual direction; organization of religious meetings; mentoring [spiritual]; evangelistic services are all services directed at spiritual development and growth which imply the transmission of religious information and/or advice. These are considered similar at least to a low degree with the opponent’s services education in Class 41 which will include religious education and also implies the transmission of information to those being educated. The nature and purpose of the services, that is to teach or transmit information, whether they be teachings of the Church or otherwise, are somewhat similar. The methods used to transmit such information, for example; lectures, one-to-one sessions, online exchanges, may also coincide.

The contested on-line social networking services only relating to religion are dissimilar to all the opponent’s services including the above mentioned services subject of the Article 28(8) EUTMR declaration. The nature and the purpose of the services are different as is the method of use. They are not in competition nor are they complementary. The distribution channels and relevant public do not normally coincide and the services do not usually come from the same company.

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 services found to be similar to at least a low degree are directed at the public at large.

The degree of attention is considered to vary from average to higher than average. As spiritual development is an important, personal issue for many religious people, they will tend to be quite attentive when choosing the related services.

3. The signs

ECCLESIA	ECCLEDIA
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 unitary character of the European Union trade mark means that an earlier 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.

The element ‘ECCLESIA’ is meaningful in certain territories, for example, in those countries where English is understood. ‘ECCLESIA’ means ‘(in formal church usage) a congregation’ in English. (Collins English Dictionary, seen on 15/05/2017 at https://www.collinsdictionary.com) Many English speakers may not be aware of this meaning but will relate ‘ECCLESIA’ to the more well-known word ‘ecclesiastical’ which means ‘related to the Christian Church’ (Collins English Dictionary, seen on 15/05/2017 at https://www.collinsdictionary.com). In some other European Union languages the word ‘ECCLESIA’ will also be understood, for example in Italian and Greek. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which ‘ECCLESIA’ has no meaning, and where the likelihood of confusion is greatest. The focus will be on the Estonian, Lithuanian, Bulgarian and Danish- speakers.

The earlier mark is the word mark ‘ECCLESIA’ which has no meaning for the relevant public. Therefore it is distinctive for the services in question.

The contested sign is the word mark ‘ECCLEDIA’ which has no meaning for the relevant public and therefore is distinctive for the services at issue.

Conceptually, neither of the signs has a meaning for Estonian, Lithuanian, Bulgarian and Danish-speakers. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the signs coincide in seven out of eight letters ‘ECCLE_IA’ and differ only with respect to one letter, ‘S’ in the earlier mark and ‘D’ in the contested sign.  The beginning and the end of the word elements are identical.

Therefore, the signs are visually and aurally highly similar.

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 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 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

In the present case, the services have found to be partly similar to at least a low degree and partly dissimilar. The marks are highly similar visually and aurally, the conceptual aspect not influencing this high degree of similarity. The level of attention of the relevant public varies from average to higher than average and the earlier mark has a normal degree of distinctive character.

Account is 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Estonian, Lithuanian, Bulgarian and Danish-speaking part of the public for those services found similar at least to a low degree. The high level similarity between the signs offsets the low level of similarity between the services. The marks are so alike that a likelihood of confusion cannot be ruled out for these services even for those with a higher than average degree of attention. Therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be similar at least to a low degree to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

For the sake of completeness, the Opposition Division points out that taking into account the opponent’s additional terms in Class 36 subject of the Article 28(8) EUTMR declaration, the level of similarity found between the services is not affected and the outcome is the same.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lars HELBERT

Lynn BURTCHAELL

Claudia MARTINI

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.