HQ | Decision 2590373
Date Published: Oct 1, 2017
OPPOSITION No B 2 590 373
HQ Life AG, Am Marktplatz 7-8, 15806 Zossen, Germany (opponent), represented by Lübeck Kanzlei für Wirtschaft Rechtsanwälte Steuerberater Partnerschaft, Friedensstraße 11, 60311 Frankfurt, Germany (professional representative)
a g a i n s t
HQ Aviation Ltd, 1 Berkerley Street, London W1J 8DJ, United Kingdom (applicant).
On 05/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 590 373 is partially upheld, namely for the following contested services:
Class 35: Trade information; trade information (provision of-); trade marketing [other than selling]; arranging of buying and selling contracts for third parties; all of the aforesaid being provided in relation to trading, marketing, and buying and selling contracts in the aviation field.
2. International registration No 1 260 512 is refused protection in respect of the European Union for all of the above services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 260 512, namely against all the goods and services in Classes 07, 12 and 35. The opposition is based on European Union trade mark registration No 11 949 261. 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.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 35: Advertising; business management, business administration, office functions.
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.
The contested goods and services are the following:
Class 07: Aircraft engines; distributor manifolds being parts of aircraft machines, engines or motors.
Class 12: Aircraft.
Class 35: Trade information; trade information (provision of-); trade marketing [other than selling]; arranging of buying and selling contracts for third parties; all of the aforesaid being provided in relation to trading, marketing, and buying and selling contracts in the aviation field.
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 07
The contested aircraft engines; distributor manifolds being parts of aircraft machines, engines or motors are similar to a low degree to the opponent’s scientific and technological services and research and design relating thereto. Aeronautical companies make considerable investment in research, development and design which they may apply both to their own aircraft and aircraft parts and may offer to third parties such as airlines. Consumers are aware of the existence of technical, research and design departments within aircraft and aircraft parts manufacturing companies which may be part of their general company setup. Therefore these goods and services may be complementary and may have the same origin and channels of distribution (See Board of Appeal decision R 1567/2008-1, § 15-21).
Contested goods in Class 12
The contested aircraft is similar to a low degree to the opponent’s scientific and technological services and research and design relating thereto for the same reasons mentioned above for the contested goods in Class 07.
Contested services in Class 35
The contested trade marketing [other than selling] all of the aforesaid being provided in relation to trading, marketing, and buying and selling contracts in the aviation field will include promotion and advertising of these services and therefore it overlaps with the opponent’s advertising. Therefore, they are identical.
Examples of business management are business research and appraisals, cost price analysis and organisation consultancy, since they are all intended to help in the strategy of a commercial undertaking. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the management of a business, such as how to efficiently allocate financial and human resources; improve productivity; increase market share, etc. The contested arranging of buying and selling contracts for third parties; trade information; trade information (provision of-) all of the aforesaid being provided in relation to trading, marketing, and buying and selling contracts in the aviation field fit into the category of business management services aimed at increasing market share. Therefore they are included in or overlap with the broad category of the opponent’s business management and are considered 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, the services found to be identical or similar to a low degree are specialised services directed at professional customers with specific professional knowledge or expertise.
The degree of attention is considered to be high given that the contested goods and services require a high level of technical know-how and relate to highly priced goods and services in the aviation field.
- The signs
HQ LIFE | |
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 contested sign is figurative mark composed of the stylised letters ‘HQ’ in black bold fairly standard capitals. The cross bar of the ‘H’ appears in front of the left side of the ‘Q’, the tail of which appears underneath the intersecting letters. No element is more dominating than another.
‘HQ’ may be perceived as initials for ‘High Quality’ by part of the public and so would be weak for that part of the public as it would be perceived to relate to the high quality of the services at hand. Another part of the public may see ‘HQ’ as initials for ‘Head Quarters’ which has no clear meaning in relation to the services in question and so is distinctive. Others, both non-English speakers and English-speakers that do not identify the initials, will not attach any meaning to HQ, and for this part of the public it is also distinctive.
The earlier mark is the word mark ‘HQ Life’. The considerations on the meaning of ‘HQ’ for the contested mark apply also here. ‘LIFE’ will be most likely understood by the professional relevant public that will have at least a basic demand of the English language. However ‘LIFE’ has no clear meaning in relation to the services at hand and so is distinctive.
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common element ‘HQ’ may be perceived as having different meanings or no meaning at all in certain territories as mentioned above, for example, in those countries where English is understood. Consequently, for economy of proceedings and to avoid referring to the different parts of the public that understand ‘HQ’ to mean different things, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public who, together with part of the English-speaking public, will not attach any meaning to ‘HQ’. This is the public most prone to confusion given the coincidence in a distinctive element.
Visually, the signs coincide in ‘HQ’ which has no meaning for non-English speakers and so is distinctive. They differ in the graphic representation of the contested sign. They also differ in the second distinctive word of the earlier mark, ‘LIFE’, which has no counterpart in the contested sign.
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. Therefore, the signs are similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in sound of the letters ‘HQ’, the verbal element of the contested sign present at the beginning of the earlier mark where the impact is greatest. The pronunciation differs in the sound of the distinctive word ‛LIFE’ of the earlier sign which has no counterpart in the contested mark. ‘HQ’ will imply the use of at least two syllables depending on the language, and ‘LIFE’ will be pronounced in English as it will be understood and so employs one syllable. Therefore, the signs are similar to at least an average degree.
Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘LIFE’ in the earlier mark, the common element ‘HQ’ has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
- 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.
- 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).
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).
In the present case, the contested goods and services are partly identical and similar to a low degree and partly dissimilar to those of the opponent. The signs are visually similar to an average degree and aurally similar to an at least average degree and they are not conceptually similar. The level of attention of the professional public is high and the degree of distinctive character is normal.
The signs coincide in the distinctive element ‘HQ’ that is the contested sign in full and the first part of the earlier sign which has the greatest impact. It is likely that the consumer when faced with identical goods will confuse the trademark themselves or will make a connection between the conflicting signs and assumes that the goods and services come from the same or economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English speaking part of the public and 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. The Opposition Division notes that the applicant did not file any observations.
It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.
The opposition is not successful insofar as the goods that are similar to a low degree are concerned because, the level of similarity between the signs is not such as to offset the low degree of similarity between the goods in particular given the high level of attention of the relevant public.
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
Peter QUAY | Lynn BURTCHAELL | Martin EBERL |
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.