INTEGRA | Decision 2802679
Date Published: Sep 22, 2017
OPPOSITION No B 2 802 679
Integration Empreendimentos e Participàçoes Ltda., Rua de Jerónimo da Veiga, 45, Conjunto 153/154, Sala 2, Sao Paulo, Brazil (opponent), represented by Manresa Industrial Property, Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative)
a g a i n s t
Integra Business Solutions Limited, Integra House, Vaughan Court, Celtic Springs, Newport Newport, Casnewydd GB-CNW, NP10 8BD, United Kingdom (applicant), represented by Stevens Hewlett & Perkins, 1 St Augustine's Place, Bristol BS1 4UD, United Kingdom (professional representative).
On 06/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 802 679 is partially upheld, namely for the following contested services:
Class 35: Business advisory services; administration services; provision of information, advice, assistance and support in the field of stationery and office supplies; advertising services; business management assistance; marketing services; outsourcing services; business negotiating and purchasing services; sales promotion services; information and advisory services relating to all the aforesaid services.
2. European Union trade mark application No 15 395 387 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 395 387 . The opposition is based on, inter alia, European Union trade mark registration No 9 954 471 ‘INTEGRATION’. 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 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 9 954 471.
- The services
The services on which the opposition is based are the following:
Class 35: Advertising; Business management; Business administration; Office functions.
The contested services are the following:
Class 35: Business advisory services; administration services; the bringing together of a variety of office requisites, stationery and furniture, enabling customers, dealers, wholesalers and retailers conveniently to view and purchase those goods; provision of information, advice, assistance and support in the field of stationery and office supplies; advertising services; business management assistance; marketing services; outsourcing services; business negotiating and purchasing services; sales promotion services; information and advisory services relating to all the aforesaid 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.
Advertising services are identically contained in both lists of services.
The contested business management assistance is included in the broad category of the opponent’s Business management and is therefore identical.
The contested information and advisory services relating to all the aforesaid services [Advertising services; business management assistance] also form part of advertising services and business management assistance services respectively as they are included in these services. They are therefore identical.
The contested administration services include the opponent’s Business administration. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
The contested outsourcing services also form part of business administration services as essential part of business services. They are therefore identical.
The contested information and advisory services relating to all the aforesaid services [administration services; outsourcing services] are included in the opponent’s Business administration services and are identical to those.
The contested purchasing services are procurement services and involve buying goods for other businesses. They have similar nature and purpose as the opponent’s Business administration. They can be complementary, have same origins and users. The goods are similar.
The contested information and advisory services relating to all the aforesaid services [purchasing services] are included in the opponent’s Business administration and are thus identical.
The contested marketing services; sales promotion services are included in or overlap with the opponent’s Advertising since they all relate to promoting a sale of goods or services. Therefore, they are identical.
The contested information and advisory services relating to all the aforesaid services [marketing services; sales promotion services] are included in the Advertising services and are thus identical.
The opponent’s Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. Therefore, these services include, as a broader category, or overlap with the contested Business advisory services and business negotiating. The services are identical.
The contested information and advisory services relating to all the aforesaid services [Business advisory services and business negotiating] also form a business service. They are included in the opponent’s Business management and are thus identical.
The contested provision of information, advice, assistance and support in the field of stationery and office supplies are support services that fall within the broad category of the opponent’s Office functions and are identical to these services.
The contested the bringing together of a variety of office requisites, stationery and furniture, enabling customers, dealers, wholesalers and retailers conveniently to view and purchase those goods; information and advisory services relating to all the aforesaid services are retail and whole sale services and respective information services. These services have different nature, purpose and methods of use compared to all the opponent’s services. They have different origins and users. These services are dissimilar.
- 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 are directed at the business customers with specific professional knowledge or expertise. The degree of attention ranges from average to higher than average.
- The signs
INTEGRATION | |
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 Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the public for which the word elements of the marks have no meaning and are, therefore, distinctive.
The device element in the contested mark is formed of six colourful slices making up a circular shaped object. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive. The mark has no dominant elements.
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). This applies also in the present case for the contested mark.
Visually, the signs coincide in the letters INTEGRA, having the whole contested mark encompassed in the beginning of the earlier mark. It is also noted that the earlier mark is a word mark, and as such, it is the word that is protected, not its written form. Therefore, the use of upper case letters in the earlier mark is irrelevant.
The marks differ in the remaining letters -TION of the earlier mark, and in the device element, stylisation and colours of the contested mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables IN-TE-GRA, present identically in both signs. The pronunciation differs in the sound of the letters –TION of the earlier sign, which has no counterpart in the contested mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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 services in question from the perspective of the Greek- speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The services have been found to be partially identical and similar and partially dissimilar. The similarities and dissimilarities between the signs have been established.
The signs have been found to be visually and aurally similar to the extent that they share the letters INTEGRA, having the word element of the contested mark completely encompassed in the beginning of the word element of the earlier mark, where the consumer focuses first since they read from left to right. The differentiating letters TION are placed at the end of the earlier sign. The marks also differ in the device element, stylisation and colours of the contested mark. However, as mentioned, the consumer tends to play more attention to word elements. The marks can be easily mistaken by public when seen or pronounced as the similarities are not sufficiently outweighed by dissimilarities that would help the consumers to distinguish between the marks.
Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).
Based on the principles of imperfect recollection, it is considered that the similarities between the signs established above are sufficient to cause at least part of the public to believe that the conflicting services, which are identical or similar, come from the same undertaking or economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Greek-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.
It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
The opponent has also based its opposition on the earlier European Union trade mark registration No 9 954 686 for the same services in Class 35.
Since this other earlier right invoked by the opponent covers the same scope of the services, the outcome cannot be different with respect to dissimilar services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Zuzanna STOJKOWICZ | Erkki MÜNTER | Irina SOTIROVA |
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.