IMPACT BUSINESS SCHOOL | Decision 2640574
Date Published: Sep 25, 2017
OPPOSITION No B 2 640 574
Axel Springer Media Impact GmbH & Co. KG, Axel-Springer-Str. 65, 10969 Berlin, Germany (opponent), represented by Jonas Rechtsanwaltsgesellschaft MBH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)
a g a i n s t
Laureate Education Inc., 650 South Exeter Street, Baltimore Maryland 21202, United States of America (applicant), represented by Hansel Henson Limited, 4th Floor, 22 Newman Street, London W1T 1PH, United Kingdom (professional representative).
On 10/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 640 574 is partially upheld, namely for the following contested goods and services:
Class 9: Nautical, photographic, cinematographic, optical, signalling, teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Cash registers, calculating machines, data processing equipment, computers; Computer software; Electronic diaries; Mouse mats; Downloadable music files; Audiovisual teaching apparatus; Calculators; Cell phone straps; Teaching apparatus; Cases especially made for photographic apparatus and instruments; Glasses cases; Covers, bags and cases adapted for laptop computers; Bags for mobile telephones; Covers and cases for tablets and electronic book readers; Sunglasses; Spectacles [optics]; magnets (Decorative -); goggles for sports; Hands free kits for phones; Pens (Electronic -) [visual display units]; Electronic book readers; Computer memory devices; USB flash drives; Electronic publications, downloadable; Electronic publications recorded on computer media; Light-emitting electronic pointers; Mouse [computer peripheral]; Wrist rests for use with computers; Computer keyboards; Electronic pocket translators.
Class 16: Paper, cardboard; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks; Paper knives [office requisites]; Scrapbooks; Almanacs; Document files; Desk trays; Pads [stationery]; Notebooks; Calendars; Document files; Loose-leaf binders; Writing paper; Advertisement boards of paper or cardboard; Booklets; Staples for offices; Writing or drawing books; Dispensers (Adhesive tape -) [office requisites]; Booklets; Forms, printed; Wrappers [stationery]; Folders for papers; Rubber erasers; Stapling presses [office requisites]; Writing instruments; Notebooks; Books; Handbooks [manuals]; Geographical maps; Highlighters; Bookmarkers; School supplies [stationery]; Paperweights; Boxes for pens; Pencil holders; Lead holders [propelling pencils]; Clipboards; Penholders; Prospectuses; Printed publications; Periodicals; Chart pointers, non-electronic; Magazines [periodicals]; Pencil sharpeners, electric or non-electric; Stands for pens and pencils; Bookends.
Class 35: Advertising; Business management; Business administration; Office functions; Compilation of information into computer databases; Market research; Organisation of trade fairs for commercial or advertising purposes; Computerised file management; Marketing services; Retailing in shops and via global computer networks of nautical, photographic, cinematographic, optical, signalling, teaching apparatus and instruments; Retailing in shops and via global computer networks of apparatus for recording, transmission or reproduction of sound or images; Retailing in shops and via global computer networks of magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media; Retailing in shops and via global computer networks of Cash registers, Calculating machines, Data processing equipment, Computers, Computer software, Electronic diaries, Mouse mats, downloadable image files, Audiovisual teaching apparatus, calculators, Cell phone straps, Teaching apparatus, Cases especially made for photographic apparatus and instruments, Eyeglass cases; Retailing in shops and via global computer networks of Covers, bags and cases adapted for laptop computers; Retailing in shops and via global computer networks of Holders for mobile phones; Retailing in shops and via global computer networks of Covers and cases for tablets and electronic book readers; Retailing in shops and via global computer networks of Hands-free kits for phones; Retailing in shops and via global computer networks of Electronic pens [visual display units] and electronic book readers; Retailing in shops and via global computer networks of Computer memories, USB memory devices, Downloadable electronic publications, Electronic publications recorded on computer media, Light-emitting electronic pointers, Mouse [data processing equipment]; Retailing in shops and via global computer networks of Wrist rests for use with computers, Computer keypads, Pocket translators, electronic; Retailing in shops and via global computer networks of Papier mâché, Printed matter, Book-binding material, Photographs, Stationery items, Adhesives for stationery or household purposes, Artists' materials, Paint brushes, Typewriters and office requisites (other than furniture), Instructional and teaching material (except apparatus), Plastic materials for packaging (not included in other classes), Printers type, Printers' printing blocks, Paper knives [office requisites], Albums, Almanacs, Files [office requisites], Letter trays, Pads [stationery], Drawing pads, Calendars, Document sleeves, Loose-leaf binders, Writing paper, Advertisement boards of paper or cardboard, Booklets, Clips for offices, Writing books, Adhesive tape dispensers [office requisites], Pamphlet and brochures, Forms, Covers [stationery], document cases, Rubber erasers, Stapling presses [office requisites], Writing instruments, Notebooks, Books, newsletters, magazines, pamphlets, and brochures, greeting cards; Retailing in shops and via global computer networks of manuals, Geographical maps, Marking pens [stationery], book marks, School requisites, Paper-weights, Pen cases, pencil holders, Pencil lead holders, Clipboards, Penholders, Prospectuses, printed publications, Periodical printed publications, Chart pointers (non-electronic); Retailing in shops and via global computer networks of Magazines (periodicals); Retailing in shops and via global computer networks of Pencil sharpeners (electric or non-electric), Stands for pens and pencils; Retailing in shops and via global computer networks of Bookends; Retailing in shops and via global computer networks of document holders, laptop bags.
Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Academies [education]; Providing sports facilities; Camp services (Holiday -) [entertainment]; Conducting fitness classes; Health club services [health and fitness training]; Club services [entertainment or education]; Coaching [training]; Vocational retraining; Correspondence courses; Educational examination; Movie showing; Providing sports facilities; Training (Practical -) [demonstration]; Boarding schools; Organization of balls; Organisation of fashion shows for entertainment purposes; Organization of exhibitions for cultural or educational purposes; Arranging and conducting of colloquiums; Arranging and conducting of concerts; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of seminars; Arranging and conducting of symposiums; Workshops (Arranging and conducting of -) [training]; Vocational guidance; Library services; Publication of books; Publication of texts, other than publicity texts; Electronic publication of books and newspapers online; Services of schools [education]; Providing on-line electronic publications, not downloadable; Library services; Electronic library services.
Class 42: Scientific and technological services and research and design relating thereto; industry analysis and research services; Design and development of computer hardware and software; Updating of software; Hosting of internet sites; Hiring out data processing equipment; Rental of web servers; Leasing of computer software; Computer system analysis; Computer virus protection services; Information technology [IT] consultancy; Monitoring of computer systems by remote access; Quality control; Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data [not physical conversion]; Creating and maintaining web sites for others; Digitization of documents [scanning]; Computer system design; Design of software; Industrial design; Duplication of computer programs; Technical project studies; Maintenance of software; Laboratory (Scientific -) services.
2. European Union trade mark application No 14 570 733 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 14 570 733. The opposition is based on European Union trade mark registration No 14 342 811. 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 9: Recorded and unrecorded sound, image and data carriers (except unexposed films); Magnetic data carries; Computer programs and software (recorded and/or downloadable); Apparatus for recording, transmitting or reproduction of sounds, images or data; Calculators; Data processing equipment and computers; 3-D glasses; Apparatus for interactive television, decoders, cards with integrated circuits (smart cards); Computer games recorded on data carriers; Computer programs, in particular for gaming; Exposed film; Electronic publications (downloadable); Downloadable sound and/or image files; Compact discs, DVDs and other digital recording media; Apps, namely applications for smartphones, tablet PCs, e-readers and other mobile or stationary IT apparatus (downloadable); Downloadable ring tones for mobile phones; Parts and accessories for all the aforesaid goods, included in this class.
Class 16: Printed matter, in particular periodicals, newspapers and books; Bookbinding material; Photographs; Stationery; Instructional and teaching material (expect apparatus); Voucher books, non-encoded tokens and prepaid cards of paper and/or cardboard, including coated with plastic; Office requisites (except furniture); Loose-leaf publications and printouts on paper; Telephone cards and credit cards (unencoded); Chromolithographs, photographs, graphic representations, handbooks, posters, greetings cards, postcards, picture cards, transfers and stickers; Photograph albums and scrapbooks, self-adhesive foil of plastic and reclaimed cellulose for decorative purposes, ribbons for decorative purposes, included in class 16; Drawing, painting and modelling goods, drawing and painting implements; Paint brushes; Adhesives and adhesive strips for stationery or household purposes; Diaries; Calendars, greetings cards, bookmarks, beer mats, address stamps, document files for stationery, folders for papers; Plastic materials for packaging, included in Class 16; Adhesive tapes, Included in class 16; napkins, Table covers of paper or cellulose; Paper cardboard; Works of art and figurines of paper and cardboard, and architects' models, Filtering materials of paper; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Paper goods, disposable paper products; Parts and accessories for all the aforesaid goods, included in this class.
Class 35: Business management; Business administration; Office functions; Marketing services; Marketing studies; Marketing analysis; Opinion polling; Advertising; Marketing research, rental of advertising space; Auctioneering, including on the Internet; Arranging contracts, for others, for the buying and selling of goods and the providing of services; arranging commercial transactions for third parties, also within the framework of e-commerce; Receiving and administrative processing of purchase orders; Presentation of goods and services; Business management and organisation consultancy; Collating, maintenance and systematic ordering of data in computer databases; Arranging advertising contracts for others; Employment agency services; Devising advertising concepts; Advertising research; Advertising management; Distribution of products for advertising purposes; Economic information; Sales promotion, for others, in particular marketing and promotion of goods and services of all kinds, including via online portals; Dissemination of advertising matter; Arranging of subscription agreements, for others, for the broadcasting and dissemination of television programmes, in particular in the form of pay-TV and video-on-demand; Arranging of commercial and business contacts; Price calculation for goods and services; Conducting of competitions and prize games for advertising purposes; Production of lottery, television, radio and Internet commercials; Public relations; Consumer consultancy services; Rental of advertising films; Publication of publicity texts; Data searches in computer files, for others; Presentation of companies on the Internet and other media; Sponsoring in the form of advertising; Arranging of subscriptions to newspapers and periodicals, for others; Publication of printed matter (including in electronic form), for advertising purposes; Arranging and conducting of advertising events; Merchandising (sales promotion); Arranging, conducting and monitoring of sales and promotional incentive schemes for marketing purposes, included in class 35; Telephone and/or computerised order placement for teleshopping, for others; Business management consulting; Business management and organisation consultancy; Personnel management consultancy; Organizational project management in the field of electronic data processing; Building, namely the organisational preparation of building projects; Facility management, namely development of usage concepts for real estate in respect of professional business matters; Facility management, namely development of advertising and marketing concepts, and advertising and marketing for real estate; Advertising agencies; Demonstration of goods; Updating of advertising material; representation of business interests of third parties towards political decision makers and other persons; Exhibitions for commercial or advertising purposes; Procurement for others (purchasing of goods and services for other businesses); Computerised file management; Consultancy and information in relation to the aforesaid services, included in this class.
Class 36: Insurance; Insurance consultancy, providing insurance information; Financial affairs; Monetary affairs; Financial consultancy, arranging financing and leasing agreements; Credit agencies; Real estate affairs; Design and organisation of customer loyalty schemes from a financial perspective; Issuing (for others) of vouchers, savings stamps, customer cards with payment functions for processing bonus, incentive and reward schemes for customer loyalty purposes; Customs handling for third parties; Issuing of credit, debit, customer and identification cards for payment of goods and services; Financial advice and consultancy services; Payment processing, for others, including via the Internet; Electronic commerce payment services, namely, processing payments for the purchase of goods and services via an electronic communications network; Electronic commerce payment services, namely establishing funded accounts used to purchase goods and services on the Internet; Fiduciary services (asset management); Consultancy and information in relation to the aforesaid services, included in this class.
Class 38: Telecommunications; Provision of portals on the Internet; Video and/or audio streaming (continuous real-time transmission of video and/or audio streams on computer networks); Broadcasting and retransmitting of film, television, radio, videotext, teletext and Internet programmes or transmissions; Hotline telephone services; News agencies; Providing access to software on data networks for Internet access; Providing of chat lines, chat rooms, forums and access to blogs on the internet; Internet provider services, namely the leasing and arranging of access time to data networks, in particular to the Internet; Providing press services in connection with online services, namely the gathering, supplying and transmission of messages and information of all kinds, being online press agency services, including on-demand services and other electronic media services; Providing access to information on the Internet; Telecommunications, in particular computer-aided electronic information and communication services, included in class 38, for public and private users; Sound, image and data transmission by cable, satellite, computer, computer network, telephone, ISDN and DSL lines and any other transmission media; News and general information agencies, being press agency services, including electronic agencies, and broadcasting of (television/radio) programmes on the World Wide Web, and broadcasting of (television/radio) programmes by cable, satellite and other media; Internet provider services (telecommunications); Rental and arranging of access time to computer databases, in particular on the Internet and/or intranets; Providing access to licensed content on the Internet by means of content syndication for customers; Providing access to computer programs on data networks; Discussion groups and chat rooms; Providing user access to computer programmes in data networks; Consultancy and information in relation to the aforesaid services, included in this class.
Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Development, design and production of film, television, multimedia, Internet and radio programmes and transmissions (for educational, instructional and entertainment purposes, and of news broadcasts); Publication (including in electronic form), in particular of newspapers, periodicals and books (other than for advertising purposes); Providing online electronic publications, not downloadable; Production and conducting of shows, quizzes, games, interviews, theatrical, sporting and musical events, and arranging of competitions (education and entertainment); Film production and sound studio services; Photography; Scriptwriting services; Services of a publishing house (excluded printing services); Rental of motion pictures; Editing of written texts; News reporters services; Photographic reporting; Publication of texts (except publicity texts); Information regarding events (entertainment); Production of Internet, television and radio programmes; Booking of seats for shows; Awarding of prizes for cultural, sporting and entertainment purposes; Rental of audio, film and projection apparatus, rental of motion pictures, film showings; Music composition services; Arranging and conducting of cultural, entertainment and sporting events, live musical performances, arranging of concerts; Photography; Arranging and conducting of conferences, congresses, symposiums, seminars and workshops (training); Photographic reporting; Training consultancy and further training consultancy and education consultancy; Vocational guidance; Coaching; Academies [education]; Education services; Casting services; Consultancy and information in relation to the aforesaid services, included in this class.
Class 42: Computer programming; Programmable electronic Internet, television and radio programme guides; Research in databases and on the Internet, for scientific and research purposes; Graphic design services; Rental of hardware for voice-controlled telephone inquiry applications; Design of advertising space on the Internet; Electronic data back-up; Creation, care, rental, maintenance and installation of software; Server administration; Providing or rental of electronic memory space on the Internet (webspace); User management and authorisation on computer networks; Providing platforms on the Internet; Services of an EDP programmer; Design and development of computer hardware and software; Design, design consultancy, and design of homepages and Internet pages; Provision of search engines for the Internet; Editing, formatting and transfer of data on to blank CDs (premastering); Computer animation; Implementation of computer programs on networks; Configuring computer networks by means of software; Webpage design; Technical performance monitoring and technical analysis of network operations; Security services for protection against illegal network access; Consultancy in the field of computer hardware, hardware and software consultancy; Technical project management and consultancy in the field of electronic data processing; Telecommunications engineering consultancy; Rental of web servers; Rental of computers and computer software; Digital image processing (graphic design); Building, namely the technical preparation of building projects; Architectural consultancy; Information technology, computer programming, architecture, interior design, product design and industrial design, design, graphic design; Rental of software for Internet access; Electronic data storage; Hosting of digital content, namely blogs; Consultancy and information in relation to the aforesaid services, included in this class.
Class 45: Licensing of industrial property rights and copyright; Management of industrial property rights and copyright; Issuing licences for franchising concepts; Copyright management; Monitoring intellectual property rights for legal advisory purposes; Licensing of computer software [legal services]; Allocating and registering of domain names; Legal consultancy for franchising concepts; Film, television and video licensing; Consultancy and information in relation to the aforesaid services, included in this class.
The contested goods and services are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Electronic diaries; Mouse mats; Downloadable music files; Audiovisual teaching apparatus; Calculators; Cell phone straps; Teaching apparatus; Cases especially made for photographic apparatus and instruments; Glasses cases; Containers for contact lenses; Covers, bags and cases adapted for laptop computers; Bags for mobile telephones; Covers and cases for tablets and electronic book readers; Goggles for sports; Sunglasses; Spectacles [optics]; Magnets (Decorative -); Hands free kits for phones; Pens (Electronic -) [visual display units]; Electronic book readers; Computer memory devices; USB flash drives; Electronic publications, downloadable; Electronic publications recorded on computer media; Light-emitting electronic pointers; Mouse [computer peripheral]; Wrist rests for use with computers; Computer keyboards; Electronic pocket translators.
Class 16: Paper, cardboard; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks; Paper knives [office requisites]; Scrapbooks; Almanacs; Document files; Desk trays; Pads [stationery]; Notebooks; Calendars; Document files; Loose-leaf binders; Writing paper; Advertisement boards of paper or cardboard; Booklets; Staples for offices; Writing or drawing books; Dispensers (Adhesive tape -) [office requisites]; Booklets; Forms, printed; Wrappers [stationery]; Folders for papers; Rubber erasers; Stapling presses [office requisites]; Writing instruments; Notebooks; Books; Handbooks [manuals]; Geographical maps; Highlighters; Bookmarkers; School supplies [stationery]; Paperweights; Boxes for pens; Pencil holders; Lead holders [propelling pencils]; Clipboards; Penholders; Prospectuses; Printed publications; Periodicals; Chart pointers, non-electronic; Magazines [periodicals]; Pencil sharpeners, electric or non-electric; Stands for pens and pencils; Bookends.
Class 35: Advertising; Business management; Business administration; Office functions; Compilation of information into computer databases; Market research; Organisation of trade fairs for commercial or advertising purposes; Computerised file management; Marketing services; Retailing in shops and via global computer networks of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Retailing in shops and via global computer networks of apparatus and instruments for conducting, switching, transforming, accommodating, regulating or controlling electricity; Retailing in shops and via global computer networks of apparatus for recording, transmission or reproduction of sound or images; Retailing in shops and via global computer networks of magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media; Retailing in shops and via global computer networks of mechanisms for coin-operated apparatus; Retailing in shops and via global computer networks of Cash registers, Calculating machines, Data processing equipment, Computers, Computer software, Fire extinguishers, Electronic diaries, Mouse mats, downloadable image files, Audiovisual teaching apparatus, calculators, Cell phone straps, Teaching apparatus, Cases especially made for photographic apparatus and instruments, Eyeglass cases, contact lens cases; Retailing in shops and via global computer networks of Covers, bags and cases adapted for laptop computers; Retailing in shops and via global computer networks of Holders for mobile phones; Retailing in shops and via global computer networks of Covers and cases for tablets and electronic book readers; Retailing in shops and via global computer networks of Sports goggles, Sunglasses, Spectacles (optics); Retailing in shops and via global computer networks of decorative magnets; Retailing in shops and via global computer networks of Hands-free kits for phones; Retailing in shops and via global computer networks of Electronic pens [visual display units] and electronic book readers; Retailing in shops and via global computer networks of Computer memories, USB memory devices, Downloadable electronic publications, Electronic publications recorded on computer media, Light-emitting electronic pointers, Mouse [data processing equipment]; Retailing in shops and via global computer networks of Wrist rests for use with computers, Computer keypads, Pocket translators, electronic; Retailing in shops and via global computer networks of Papier mâché, Printed matter, Book-binding material, Photographs, Stationery items, Adhesives for stationery or household purposes, Artists' materials, Paint brushes, Typewriters and office requisites (other than furniture), Instructional and teaching material (except apparatus), Plastic materials for packaging (not included in other classes), Printers type, Printers' printing blocks, Paper knives [office requisites], Albums, Almanacs, Files [office requisites], Letter trays, Pads [stationery], Drawing pads, Calendars, Document sleeves, Loose-leaf binders, Writing paper, Advertisement boards of paper or cardboard, Booklets, Clips for offices, Writing books, Adhesive tape dispensers [office requisites], Pamphlet and brochures, Forms, Covers [stationery], document cases, Rubber erasers, Stapling presses [office requisites], Writing instruments, Notebooks, Books, newsletters, magazines, pamphlets, and brochures, greeting cards; Retailing in shops and via global computer networks of manuals, Geographical maps, Marking pens [stationery], book marks, School requisites, Paper-weights, Pen cases, pencil holders, Pencil lead holders, Clipboards, Penholders, Prospectuses, printed publications, Periodical printed publications, Chart pointers (non-electronic); Retailing in shops and via global computer networks of Magazines (periodicals); Retailing in shops and via global computer networks of Pencil sharpeners (electric or non-electric), Stands for pens and pencils; Retailing in shops and via global computer networks of Bookends; Retailing in shops and via global computer networks of Articles of clothing, Footwear, Headgear, Back packs, Document holders, School bags, Card cases (notecases), Handbags, laptop bags and Bags for sports.
Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Academies [education]; Providing sports facilities; Camp services (Holiday -) [entertainment]; Conducting fitness classes; Health club services [health and fitness training]; Club services [entertainment or education]; Coaching [training]; Vocational retraining; Correspondence courses; Educational examination; Movie showing; Providing sports facilities; Training (Practical -) [demonstration]; Boarding schools; Organization of balls; Organisation of fashion shows for entertainment purposes; Organization of exhibitions for cultural or educational purposes; Arranging and conducting of colloquiums; Arranging and conducting of concerts; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of seminars; Arranging and conducting of symposiums; Workshops (Arranging and conducting of -) [training]; Vocational guidance; Library services; Publication of books; Publication of texts, other than publicity texts; Electronic publication of books and newspapers online; Services of schools [education]; Language interpreter services; Providing on-line electronic publications, not downloadable; Translation and interpretation; Library services; Electronic library services.
Class 42: Scientific and technological services and research and design relating thereto; industry analysis and research services; Design and development of computer hardware and software; Updating of software; Hosting of internet sites; Hiring out data processing equipment; Rental of web servers; Leasing of computer software; Computer system analysis; Computer virus protection services; Information technology [IT] consultancy; Monitoring of computer systems by remote access; Quality control; Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data [not physical conversion]; Creating and maintaining web sites for others; Digitization of documents [scanning]; Computer system design; Design of software; Industrial design; Duplication of computer programs; Technical project studies; Maintenance of software; Laboratory (Scientific -) services.
The use of ‘in particular’ and ‘namely’
An interpretation of the wording of the list of goods and services is required to determine the scope of their protection.
The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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 9
Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; Compact discs, DVDs and other digital recording media; Computer software; Calculators; data processing equipment, computers; Electronic publications, downloadable are identically included in both lists of goods.
The contested recording discs are synonymous with the opponent’s unrecorded sound, image and data carriers (except unexposed films) and these goods are, therefore, identical. In addition, the said goods of the opponent make a broad category covering and being identical with the contested Computer memory devices; USB flash drives.
The contested Downloadable music files are de facto identical with the opponent’s Downloadable sound files.
The contested calculating machines are synonymous and identical with the opponent’s calculators. These goods of the opponent are also identical with the contested cash registers given that the latter belong to the category of calculating machines.
The contested Electronic pocket translators; electronic book readers; electronic diaries must be considered to be included in the opponent’s broader category of data processing equipment. Therefore, these goods are identical.
The contested nautical, signalling apparatus and instruments are used for various purposes including emitting sound from vehicles. As a result, they coincide partially (overlap) with the opponent’s apparatus for transmitting sound. These goods are, thus, identical.
The contested photographic, cinematographic, optical apparatus and instruments are included in or overlap with the opponent’s Apparatus for recording, transmission or reproduction of sound or images since nowadays multi-media electronic devices combine all functionalities such as video camera, mobile phone, mobile computing platform etc. These goods are, therefore, identical.
The contested Audiovisual teaching apparatus increasingly include various modern equipment used in classroom and, in general, for teaching purposes. As such, they must be considered to be identical with the opponent’s broad category of apparatus for recording, transmission or reproduction of sound or images.
The contested Mouse mats; Covers, bags and cases adapted for laptop computers; Covers and cases for tablets and electronic book readers; Pens (Electronic -) [visual display units]; Light-emitting electronic pointers; Mouse [computer peripheral]; Wrist rests for use with computers; Computer keyboards; Cell phone straps; Bags for mobile telephones; Hands free kits for phones are all goods that belong to the broad category of the opponent’s [data processing equipment; computers], parts and accessories for all the aforesaid goods included in this class. Therefore, these goods are identical.
The contested Electronic publications recorded on computer media and the opponent’s Electronic publications, downloadable overlap. These goods are, therefore, identical.
The contested glasses cases is a broad category that includes cases for different types of glasses. The opponent’s [3-D glasses] accessories for all the aforesaid goods is also a broad category that encompasses, e.g. cases for 3-D glasses. Since these two broad categories overlap, these goods must be considered identical.
The contested cases especially made for photographic apparatus and instruments are important accessories for cameras which belong to the opponent’s broad category of apparatus for recording, transmission or reproduction of sound or images. Therefore, these contested goods are included in the broad category of [apparatus for recording, transmission or reproduction of sound or images] accessories for all the aforesaid goods, and these goods are considered identical.
The contested sunglasses; spectacles [optics]; goggles for sports show some similarities with the opponent’s 3-D glasses. While the latter ones are used for special purposes and in special circumstances, the fact remains that they share the essential purpose of the contested goods, namely, to help or improve vision, and they often originate from the same undertakings and are available in the same outlets. These goods are, therefore, similar.
The contested magnets (Decorative -) can be used in a number of ways and serve a variety of purposes. Amongst others, they are routinely used as a decorative piece of stationery at home (e.g. fridge magnets) or in the office environment (e.g. board magnets) to hold reminders or sheets of paper in presentations. As such, these goods can have the same distribution channels, purpose and target public as the opponent’s broad category of stationery in Class 16. These goods compared are, therefore, similar. It is noted here that the Nice Classification gives indications that can be used in the assessment of identity or similarity of goods/services. However, it mainly serves to categorise goods/services for administrative purposes and is not decisive for their comparison.
The rest of the contested goods, namely scientific, surveying, weighing, measuring, checking (supervision), life-saving apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; mechanisms for coin-operated apparatus; Fire-extinguishing apparatus; containers for contact lenses have different nature, purpose and methods of use compared to all the opponent’s goods and services. They have different consumers and distribution channels. The goods are dissimilar.
Contested goods in Class 16
Paper, cardboard; printed matter; periodicals; bookbinding material; photographs; stationery; paint brushes; adhesives for stationery or household purposes; office requisites (except furniture); instructional and teaching material (except apparatus); calendars; plastic materials for packaging (not included in other classes); books; scrapbooks; folders for papers and handbooks [manuals] are identically included in both lists of goods.
The contested artists’ materials include, as a broader category the opponent’s Drawing, painting and modelling goods, drawing and painting implements. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, these goods are considered identical.
The contested printing blocks; paper document files (listed twice); pads [stationery]; loose-leaf binders; writing paper; staples for offices; forms, printed; wrappers [stationery]; rubber erasers; stapling presses [office requisites]; writing instruments; highlighters; bookmarkers; school supplies [stationery]; paperweights; boxes for pens; pencil holders; lead holders [propelling pencils]; penholders; pencil sharpeners, electric or non-electric; stands for pens and pencils are all included in the broad category of the opponent’s stationery. Therefore, these goods are identical.
The contested typewriters; printers' type; knives [office requisites]; desk trays; dispensers (adhesive tape -) [office requisites]; clipboards; chart pointers, non-electronic; bookends are all included in the broad category of the opponent’s office requisites covering a wide range of products to be used in an office environment. Therefore, these goods are identical.
Almanacs; notebooks (listed twice); booklets (listed twice); writing or drawing books; are all various types of books and they are, therefore, identical to the opponent’s broad category of books.
The contested prospectuses; printed publications; magazines [periodicals]; geographical maps; advertisement boards of paper or cardboard are included in and are, therefore, identical to the opponent’s broad category of printed matter.
Contested services in Class 35
Advertising; Business management; Business administration; Office functions; Marketing services; Computerised file management are identically included in both lists of services.
The contested Compilation of information into computer databases belong to the broader and more complex category of the opponent’s services Collating, maintenance and systematic ordering of data in computer databases. Therefore, these services are identical.
The contested market research are de facto identical to the opponent’s marketing analysis; marketing studies.
The contested organisation of trade fairs for commercial or advertising purposes overlaps with the opponent’s arranging and conducting of advertising events; exhibitions for commercial or advertising purposes. These services are, therefore, identical.
With regard to the contested retailing services, it must be noted that retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, ‘Castello’, paragraph 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.
It should be recalled from the outset that the opponent’s list of services does not include any retailing, and that some of the contested goods in Classes 9 and 16 have been found to belong to broad categories or being synonymous to or overlapping with the opponent’s goods in the respective classes.
Accordingly, and based on the comparison of the goods and services in the preceding paragraphs, there is a low degree of similarity between some of the opponent’s goods in Classes 9 and 16 and some of the contested retailing services, namely Retailing in shops and via global computer networks of nautical, photographic, cinematographic, optical, signalling, teaching apparatus and instruments; Retailing in shops and via global computer networks of apparatus for recording, transmission or reproduction of sound or images; Retailing in shops and via global computer networks of magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media; Retailing in shops and via global computer networks of Cash registers, Calculating machines, Data processing equipment, Computers, Computer software, Electronic diaries, Mouse mats, downloadable image files, Audiovisual teaching apparatus, calculators, Cell phone straps, Teaching apparatus; , Cases especially made for photographic apparatus and instruments, eyeglass cases; Retailing in shops and via global computer networks of Covers, bags and cases adapted for laptop computers; Retailing in shops and via global computer networks of Holders for mobile phones; Retailing in shops and via global computer networks of Covers and cases for tablets and electronic book readers; Retailing in shops and via global computer networks of Hands-free kits for phones; Retailing in shops and via global computer networks of Electronic pens [visual display units] and electronic book readers; Retailing in shops and via global computer networks of Computer memories, USB memory devices, Downloadable electronic publications, Electronic publications recorded on computer media, Light-emitting electronic pointers, Mouse [data processing equipment]; Retailing in shops and via global computer networks of Wrist rests for use with computers, Computer keypads; Pocket translators, electronic; Retailing in shops and via global computer networks of Papier mâché, Printed matter, Book-binding material, Photographs, Stationery items, Adhesives for stationery or household purposes, Artists' materials, Paint brushes, Typewriters and office requisites (other than furniture), Instructional and teaching material (except apparatus), Plastic materials for packaging (not included in other classes), Printers type, Printers' printing blocks, Paper knives [office requisites], Albums, Almanacs, Files [office requisites], Letter trays, Pads [stationery], Drawing pads, Calendars, Document sleeves, Loose-leaf binders, Writing paper, Advertisement boards of paper or cardboard, Booklets, Clips for offices, Writing books, Adhesive tape dispensers [office requisites], Pamphlet and brochures, Forms, Covers [stationery], document cases, Rubber erasers, Stapling presses [office requisites], Writing instruments, Notebooks, Books, newsletters, magazines, pamphlets, and brochures, greeting cards; Retailing in shops and via global computer networks of manuals, Geographical maps, Marking pens [stationery], book marks, School requisites, Paper-weights, Pen cases, pencil holders, Pencil lead holders, Clipboards, Penholders, Prospectuses, printed publications, Periodical printed publications, Chart pointers (non-electronic); Retailing in shops and via global computer networks of Magazines (periodicals); Retailing in shops and via global computer networks of Pencil sharpeners (electric or non-electric), Stands for pens and pencils; Retailing in shops and via global computer networks of Bookends; Retailing in shops and via global computer networks of Document holders, laptop bags.
With regard to the remaining contested services in this class, namely retailing in shops and via global computer networks of scientific, surveying, weighing, measuring, checking (supervision), life-saving apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accommodating, regulating or controlling electricity, mechanisms for coin-operated apparatus, fire extinguishers, contact lens cases, sports goggles, sunglasses, spectacles (optics), decorative magnets, articles of clothing, footwear, headgear, back packs, school bags, card cases (notecases), handbags and bags for sports, it should be remembered that in principle goods are not similar to services and that retail services relating to the sale of particular goods and other goods are not similar. This applies to these contested services which are, therefore, dissimilar to the opponent’s goods. Furthermore, these contested services are dissimilar to the opponent’s services in Classes 35, 36, 38, 41 42 and 45, because they have different natures, purposes, method of use, relevant public, distribution channels; they are neither complementary, nor in competition.
Contested services in Class 41
The contested education; providing of training; entertainment; sporting and cultural activities; academies [education]; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging and conducting of symposiums; workshops (arranging and conducting of-) [training]; vocational guidance; providing on-line electronic publications, not downloadable; publication of books are identically included in both lists of services.
The contested club services [education]; coaching [training]; vocational retraining; correspondence courses; educational examination; training (practical -) [demonstration]; boarding schools; organization of exhibitions for educational purposes; arranging and conducting of colloquiums; services of schools [education]; library services; electronic library services (listed twice) all belong to the opponent’s broader categories of education; providing of training. They are, therefore, identical.
The contested club services [entertainment]; movie showing; organization of balls; camp services (holiday -) [entertainment]; organisation of fashion shows for entertainment purposes; arranging and conducting of concerts all belong to the opponent’s broader category of entertainment. They are, therefore, identical.
The contested providing sports facilities (listed twice); conducting fitness classes; health club services [health and fitness training] all belong to the opponent’s broader category of sporting activities. They are, therefore, identical.
The contested organization of exhibitions for cultural purposes belongs to the opponent’s broader category of cultural activities. They are, therefore, identical.
The contested Publication of texts, other than publicity texts; electronic publication of books and newspapers online overlap with the opponent’s providing on-line electronic publications, not downloadable; publication of books. These services are identical.
The remaining of the contested services, namely language interpreter services; translation and interpretation are usually provided either by professional individuals or by undertakings specialized in such services. Even though these services can be necessary to provide some of the opponent’s services such as arranging and conducting of conferences; production of interviews, television or radio programmes: Services of a publishing house (excluded printing services), translation and interpretation services are still normally contracted separately, and customers will not think that these services originate from the same undertaking as the one providing the opponent’s services. In summary, these services are dissimilar.
Furthermore and with regard to the remaining goods and services of the opponent, there are even greater differences between them and the said contested services regarding their usual providers, target customers and distribution channels. Moreover, these services are neither complementary nor in competition.
In summary, the contested language interpreter services; translation and interpretation translation and interpretation services are dissimilar to all of the opponent’s goods and services.
Contested services in Class 42
Design and development of computer hardware and software; design of software; Maintenance of software; Rental of web servers; Industrial design are identically included in both lists of services.
The contested updating of software; leasing of computer software; computer system design; duplication of computer programs are all covered by and identical with the opponent’s broad category of creation, care, rental, maintenance and installation of software.
The contested hiring out data processing equipment is a broad category. Since the Office cannot dissect it ex officio, it must be considered to include the opponent’s rental of computers. These services are, therefore, identical.
The contested Technical project studies are services that are usually part of and precede the implementation of a technical project. As such, they must be considered as overlapping with the opponent’s broader category of technical project management and consultancy in the field of electronic data processing. These services are, therefore, identical.
The contested Creating and maintaining web sites for others are identical to the opponent’s webpage design.
The contested hosting of internet sites overlaps with and is therefore identical to the opponent’s hosting of digital content, namely blogs.
The contested conversion of data or documents from physical to electronic media; data conversion of computer programs and data [not physical conversion]; digitization of documents [scanning] overlap with and are therefore identical to the opponent’s editing, formatting and transfer of data on to blank CDs (premastering).
The contested industry analysis and research services are broad categories which the Office cannot dissect ex officio. As a result, they are identical to the opponent’s research in databases and on the internet, for scientific and research purposes.
The contested computer system analysis; information technology [IT] consultancy; monitoring of computer systems by remote access; quality control overlap with and are, therefore, identical to the opponent’s technical performance monitoring and technical analysis of network operations.
The contested computer virus protection services overlap with and are, therefore, identical to the opponent’s security services for protection against illegal network access.
The contested scientific and technological services and research and design relating thereto have similar nature as the opponent’s computer programming; design and development of computer software and hardware as these latter services require technological design and research before being developed and provided to customers. Consequently, these services usually originate from the same undertakings and target the same public. There is also complementarity between them. In summary, these services are similar.
The contested Laboratory (Scientific -) services are closely connected to the opponent’s research in databases and on the internet, for scientific and research purposes. These services coincide in their scientific nature and have a similar purpose. Furthermore, these services may have the same providers and target the same end users. Consequently, they are considered similar.
- 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 are directed both at the public at large and at business customers with specific professional knowledge or expertise in particular with regard to the relevant services in 35, 41 and 42.
The degree of attention may vary from average (for some of the goods in Classes 9 or 16) to higher than average (for some of the other relevant goods and services).
- The signs
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. In the present case, the contested sign’s dominant and distinctive verbal element ‘impact’ – identically present in the earlier sign – is either a meaningful word (English or French) or its equivalent is very similar (‘impacto’ in Spanish and Portuguese). For this reason, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public that does not speak the above languages, and more particularly on the Czech-, Slovak-, Polish- and Hungarian speaking public for which the said word element does not convey any relevant concept.
The earlier mark comprises the word elements ‘media’ and ‘impact’ in bold letters, and a red square. None of these elements are more dominant than the other. The red square is a banal figurative element and will have little importance when the mark is perceived by consumers. The word ‘media’ will be widely understood throughout the relevant territory to mean the system and organizations of communication through which information is spread to a large number of people. As a large part of the relevant goods and services relate in one way or another to means or sources of communication, this word is non-distinctive. The other word element, ‘impact’ is meaningless in the relevant territories and, as such, it is distinctive since it is not connected to the relevant goods and services.
The contested sign comprises the English words ‘IMPACT Business School’. It is the word ‘impact’ in bold letters that clearly dominates the sign given its central position and size being at least double the size of the other two elements and thus overshadowing them. The above findings on this word’s distinctiveness apply here too. The other two words are in English but will be widely understood, particular by younger generations and professional customers, throughout the relevant territory because of their widespread use. Both of these words in the contested sign, i.e. ‘business’ and ‘school’ are directly related to a wide range of the relevant goods and services, especially those in Class 35 and 41 and consequently these words are non-distinctive.
In its submission, the applicant claims that the word ‘impact’ has become non-distinctive due to a large number of marks that contain this word. In support of its argument the applicant refers to several trade marks registered both on national and European Union level. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation on the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the said word. Under these circumstances, the applicant’s claims must be set aside.
Visually, the signs coincide in the word element ‘impact’ which is distinctive element in both signs as well as being the dominant element in the contested sign. In both signs this word is depicted in bold letters. These coincidences are somewhat counteracted by the visual impact of the different typeface and the combination of the remaining colour and word elements (albeit non distinctive). Overall, the signs are similar to an average degree.
Aurally, irrespective of the pronunciation rules in the relevant territories, the signs coincide in the word element ‘impact’ being distinctive and dominant in the contested sign. The remaining word elements will have less impact on the aural comparison, for the reasons explained above. Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Accordingly, customer’s perception will focus on the signs’ distinctive and common element which lacks any meaning. Consequently, 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 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 goods or 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
Some of the goods and services are identical or similar to various degrees while some are dissimilar. The signs are visually similar to an average degree and aurally highly similar.
In spite of the differences between the signs, there is a likelihood of confusion because the visual and aural similarities are based on the signs’ distinctive element while the differences between the signs are confined to non-distinctive or secondary elements and aspects.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
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).
Given the coincidence in their distinctive element, it may even occur that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the Czech-, Slovak-, Polish- and Hungarian-speaking part of the public. 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, and there is no need to analyse the remaining part of the public. The likelihood of confusion exists even for consumers who will pay a higher than average degree of attention at the time of purchasing some of the relevant goods or services.
Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration. It follows that the contested trade mark must be rejected for the goods and services found to be identical or similar, even if only to a low degree, to the goods or services of the earlier trade mark.
The rest of the contested goods and services are dissimilar to the opponent’s goods and services. 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.
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
Rhys MORGAN | Ferenc GAZDA | Zuzanna STOJKOWICZ |
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.