INFORMA | Decision 1903288 - Informa Europe B.V. v. INFORMA D & B, S.A.
Date Published: Sep 24, 2017
OPPOSITION No B 1 903 288
Informa IP GmbH, Baarerstrasse 139, 6300 Zug, Switzerland (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative)
a g a i n s t
Informa D & B, S.A., Av. de la Industria 32, 28010 Alcobendas, Madrid, Spain (applicant), represented by Aspamar Asesores, S.L., Calle de Miguel Ángel, 16 - 2º Dcha, 28010 Madrid, Spain (professional representative).
On 24/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 903 288 is partially upheld, namely for the following contested goods:
Class 16: Publications, catalogues, pamphlets, printed matter, teaching materials, books, newspapers, magazines.
2. European Union trade mark application No 9 944 315 is rejected for all the above goods. It may proceed for the remaining 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 9 944 315 . The opposition is based on European Union trade mark registration No 8 617 045
, international trade mark registration No 728 627 ‘INFORMA’ designating Czech Republic, Denmark, Germany, France, Italy, Austria, Romania, Slovakia, Finland and Sweden; and Benelux trade mark registrations No 651 542
and No 650 489 ‘INFORMA’. The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION-earlier Benelux trade mark registrations No 651 542 and No 650 489
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.
In the present case the evidence (printouts from the Benelux Intellectual Property Office database) filed by the opponent, regarding earlier Benelux trade mark registrations No 651 542 and No 650 489, is not in the language of the proceedings.
On 19/09/2011 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. After an extension of the cooling- off period, the time limit was extended and finally expired on 24/11/2013.
The opponent submitted the necessary translations on 24/04/2017, that is, only after the expiry of the abovementioned time limit.
According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
It follows that the evidence filed by the opponent cannot be taken into account.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.
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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 617 045 and international trade mark registration No 728 627 designating Sweden.
- The goods and services
The goods and services on which the opposition is based are the following:
European Union trade mark registration No 8 617 045:
Class 16: Paper and cardboard; book binding material, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters, plastic materials for packaging (not included in other classes), printers' type, printing blocks, holders for checkbooks [cheque books]; money clips; passport holders; rosaries.
Class 35: Advertising, business management, business administration, office functions, management of data files, the providing of data from address files.
Class 41: Education, providing of training, entertainment, sporting and cultural activities, arranging study days, courses and congresses, publication of periodicals, newsletters and books, publication of written courses.
International trade mark registration No 728 627 designating Sweden:
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; periodicals; printed instruction and teaching aids; newsletters; printed matter, including printed matter containing data from files.
Class 35: Computerized file management; providing data from address files.
Class 41: Organization of seminars, courses and congresses; publication and issuing of periodicals, newsletters and books; publication and issuing of correspondence courses.
The contested goods and services are the following:
Class 16: Publications, catalogues, pamphlets, printed matter, teaching materials, books, newspapers, magazines.
Class 36: Financial affairs, monetary affairs, provision of information relating to finance, financial services, financial consultancy.
Class 38: Telecommunications, transmission of messages by computer, communications by computer terminals, communications via global computer networks.
Class 42: Consultancy in the field of computers, computer programming.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, 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).
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 16
Printed matter; teaching materials are identically contained in the lists of goods of the earlier international registration and the contested sign (including synonyms).
The contested publications, catalogues, pamphlets, books, newspapers, magazines are included in the broader category of the opponent’s printed matter, including printed matter containing data from files, covered by the earlier international registration. The goods are considered identical.
Contested services in Class 36
The contested financial affairs, monetary affairs, provision of information relating to finance, financial services, financial consultancy are all financial services, which are offered by institutions like banks for the facilitation of various financial transactions and other related activities in the world of finance. These are not the producers/providers of the opponent’s goods (including goods such as a variety of paper materials, stationery and printed matter) and services (including services such as business management, administration and office functions; education, entertainment, sports and cultural services). The goods and services in comparison have no points of contact. They do not coincide in nature, purpose or method of use. They are neither complementary, nor in competition and are furthermore provided through different distribution channels. It follows that these are dissimilar.
It is noted that the earlier EUTM is registered for the entire class headings of Classes 35 and 41 of the 9th edition of the Nice Classification. However, even if the earlier mark covered all the services from the entire alphabetical lists of these classes, these additional services (e.g. auctioneering; business investigations in Class 35; booking of seats for shows; calligraphy services in Class 41) and the contested services would be dissimilar, as they do not coincide in nature, purpose or method of use. Furthermore, they would be neither complementary, nor necessarily in competition and would not coincide in producer or distribution channels.
Contested services in Class 38
The contested telecommunications, transmission of messages by computer, communications by computer terminals, communications via global computer networks are services which relate to: providing the means to allow one person to talk to another; as well as transmitting messages from one person to another, and placing a person in oral or visual communication with another and providing the modern communication means for this. The contested services are considered dissimilar to any and all of the opponent’s goods and services, as they have a completely different nature, purpose and method of use. Furthermore, they are neither complementary to, nor in competition with the opponent’s goods and services and although they may coincide in the target public, this is not a strong argument for finding a level of similarity between them.
As noted above, the earlier EUTM is registered for the entire class headings of Classes 35 and 41 of the 9th edition of the Nice Classification. However, even if the earlier mark covered all the services from the entire alphabetical lists of these classes, these additional services (e.g. auctioneering; business investigations in Class 35; booking of seats for shows; calligraphy services in Class 41) and the contested services would be dissimilar, as they do not coincide in nature, purpose or method of use. Furthermore, they would be neither complementary, nor necessarily in competition and would not coincide in producer or distribution channels.
Contested services in Class 42
The contested consultancy in the field of computers, computer programming encompass activities related to creation of computer software and consulting in the computer field. These are usually provided by specialists/enterprises profiled in computer technology, which are not the producer/provider of the opponent’s goods and services. The contested services do not coincide with the opponent’s goods and services in nature, purpose or method of use and are neither complementary, nor in competition. It follows that these are dissimilar.
As mentioned above, the earlier EUTM is registered for the entire class headings of Classes 35 and 41 of the 9th edition of the Nice Classification. However, even if the earlier mark covered all the services from the entire alphabetical lists of these classes, these additional services (e.g. auctioneering; business investigations in Class 35; booking of seats for shows; calligraphy services in Class 41) and the contested services would be dissimilar, as they do not coincide in nature, purpose or method of use. Furthermore, they would be neither complementary, nor necessarily in competition and would not coincide in producer or distribution channels.
Since all the goods found to be identical are covered by the earlier international trade mark registration No 728 627 designating Sweden, the assessment of a likelihood of confusion will continue on the basis of that earlier mark.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at large. The degree of attention will be average when choosing the relevant goods.
- The signs
INFORMA | |
Earlier trade mark | Contested sign |
The relevant territory is Sweden.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark, consisting of the sole element ‘INFORMA’. The element of the earlier mark does not exist as a word in Swedish. The relevant public, however, is likely to perceive it as a reference to the word ‘information’, as in ‘acquired knowledge’. Bearing in mind that the relevant goods are ‘teaching aids; printed matter’, this element is allusive to the purpose of these goods, namely to provide information.
The contested sign is a figurative mark, consisting of the element ‘INFORMA’, written in blue, slightly stylised upper case letters; the dot above the first letter ‘I’ is in red; the letter ‘O’ is depicted as incomplete oval shape with a red dot underneath. The element ‘INFORMA’ would be perceived as in the earlier mark and a reference is made to the conclusion on its distinctiveness, which is equally applicable for the relevant goods (‘teaching materials; variety of printed matter’). The red dots in the contested sign would be perceived as completing the letter ‘I’ (the first one) and serving for decorating the letter ‘O’ (the second one). Furthermore, the additional figurative depictions of the dots do not introduce any concept capable of altering the conceptual perception of the letter string ‘INFORMA’. Therefore, as they serve for rather decorative and complementing the letter string purpose, their distinctiveness is limited.
The contested sign has no elements that could be considered clearly more dominant than other elements.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived by the relevant public as a reference to ‘information’.
Therefore, the signs are conceptually identical.
Visually, the signs coincide in the element ‘INFORMA’ (being allusive) in both signs. They differ in the colours, the dots and the stylisation of the letters of the contested sign.
Therefore, the signs are considered visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the element ‘INFORMA’.
Therefore, the signs are aurally identical.
As the signs have been found similar (and even identical) 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 claimed that the earlier trade mark enjoys enhanced distinctiveness. Furthermore, the claim was made with the opponent’s submission dated 24/04/2017. However, as noted above (in the ‘Substantiation’ part), according to Rule 19(2) EUTMIR, within the period given by the Office, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark, as well as evidence proving its entitlement to file the opposition. The period set by the Office expired on 24/11/2013. The opponent claimed that its earlier mark enjoys enhanced distinctiveness with its submission on 24/04/2017, that is, more than three years after the expiry of the abovementioned time limit. As the opponent’s claim for enhanced distinctiveness was made only after the substantiation period, it could not be taken into account.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all of the goods in question, namely teaching aids; printed matter, including printed matter containing data from files in Class 16.
- Global assessment, other arguments and conclusion
As has been concluded above, the contested goods are identical to the opponent’s goods and the contested services are dissimilar to the goods and services of the earlier mark. The degree of attention is average when choosing the relevant goods.
Although the earlier sign has a lower than average degree of distinctiveness for the relevant goods, this cannot prevent the opposition against the contested goods found to be identical to the earlier ones from succeeding. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102).
Furthermore, it has also been established above that the signs are visually highly similar and aurally and conceptually identical. Due to the figurative depiction of the contested sign, it is highly conceivable 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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
In its observations, the applicant argues that it owns several Spanish trade mark registrations with the word ‘INFORMA’, for which the applicant submits printouts from ‘SITADEX’ and for which it claims that they coexist with the opponent’s earlier marks.
According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).
In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.
In the case at issue the relevant market concerns the territory of Sweden and therefore, as the applicant’s arguments refer to Spain, there is no common market to which the alleged coexistence may apply. For the sake of completeness, it is noted that even if the claim concerned the earlier EUTM, the applicant did not submit any evidence in support of its claim in regard to any territory (or market).
Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 728 627 designating Sweden.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
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.
As noted above (in ‘The goods and services’ part) the contested services are dissimilar as well to the goods and services of the earlier European Union trade mark registration No 8 617 045. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services and the earlier European Union trade mark registration No 8 617 045.
For the sake of completeness, it is noted that, the opponent has also based its opposition on the international trade mark registration No 728 627 ‘INFORMA’ (already compared above) and designating Czech Republic, Denmark, Germany, France, Italy, Austria, Romania, Slovakia and Finland.
Since these designations cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services and these other designations of the international trade mark registration No 728 627.
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
Loreto URRACA LUQUE | Irina SOTIROVA | Erkki MÜNTER |
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.