iuvos | Decision 2718917 - iovos GbR v. Manolo Bimbo

Date Published: Sep 28, 2017

OPPOSITION No B 2 718 917

Iovos GbR, Adlerstr. 22, 90403 Nürnberg, Germany (opponent), represented by Iovos Rechtsanwälte, Schmiedel Schmelmer Partnerschaftsgesellschaft, Adlerstr. 22, 90403 Nürnberg, Germany (professional representative)

a g a i n s t

Bima & Partners Srls, Via Albertini, 36 stabile B8, 60131 Ancona, Italy, and Manolo Bimbo, Via della Pergola, 6, 60124 Ancona, Italy (applicants).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 718 917 is partially upheld, namely for the following contested services:

Class 35:         Business assistance, management and administrative services; business analysis, research and information services; commercial trading and consumer information services; advertising, marketing and promotional services; providing consumer product advice; administrative order processing; administrative processing and organising of mail order services; administrative processing of purchase orders within the framework of services provided by mail-order companies; administrative processing of purchase orders; providing consumer product advice relating to software; consulting in sales techniques and sales programmes; consultancy relating to costing of sales orders; advice relating to barter trade; advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; commercial administration of the licensing of the goods and services of others; import-export agencies in the field of energy; purchasing of goods and services for other businesses; procurement of contracts for others relating to the sale of goods; procurement of contracts [for others]; telephone order-taking services for others; conducting market surveys; collection and systematization of business data; acquisition (business -) searches; commercial information agencies [provides business information, e.g., marketing or demographic data]; updating of business information on a computer data base; business analysis; business analysis of markets; benchmarking (evaluation of business organisation practices); cost price analysis; cost benefit analysis; business management analysis; analysis of company behaviour; analysis of business information; economic forecasting analysis for business purposes; analysis of business management systems; economic analysis for business purposes; analysis of business statistics; assessment analysis relating to business management; assistance, advisory services and consultancy with regard to business analysis; information and data compiling and analyzing relating to business management; compilation and provision of trade and business price and statistical information; design of public opinion surveys; conducting of internal business communication surveys; conducting of business research; conducting of business feasibility studies; business administration; business administration in the field of transport and delivery; business administration of employee share schemes; administration (business -) relating to statistical methods; administration relating to business planning; business acquisitions; clerical services; updating and maintenance of data in computer databases; filing documents or magnetic-tapes [office functions]; payroll assistance; confirming scheduled appointments for others; addressing of envelopes; maintenance of registers [for others]; billing; computerised inventory control; data-based stock control; stock control services; copying of documents for others; execution of stenographic work to order; invoicing; provision of initial company secretarial services on company formation; computerised stock management; inserting printed matter into envelopes; stocktaking; inventorying merchandise; provision of clerical assistance; utility meter reading for billing purposes; gas meter reading for billing purposes; electricity meter reading for billing purposes; water meter reading for billing purposes; compilation of statistics relating to advertising; compilation of statistics [for business or commercial purposes]; compilation of registers relating to importers; compilation of registers relating to exporters; compilation of statistical models for the provision of market dynamics information; compilation of statistical information; compilation of direct mailing lists; compilation of mailing lists; compilation of indexed addresses; compilation of directories for publication on the internet; compilation of lists of prospective customers; compilation of business directories; compilation of statistical data relating to medical research; compilation of directories for publishing on global computer networks or the internet; compilation of statistical data relating to business; compilation of statistical data for use in scientific research; data compilation for others; compilation of computer databases; computerised compilation of stock control records; computerised compilation of customer indexes; computerised compilation of order lists; statistical analysis and reporting; acquisition of business information relating to company activities; acquisition of business information relating to company status; acquisition of commercial information; preparation of public opinion surveys; preparation of marketing surveys; interviewing for market research purposes; interpretation of market research data; pricing surveys; investigations of marketing strategy; profit surveys; market surveys conducted by telephone; provision of market research information; dissemination of data relating to advertising; audience rating determination for radio and television broadcasts; market research consultancy; advertising analysis; interviewing for qualitative market research; analysis relating to marketing; market analysis and research; analysis of market research statistics; market analysis; market survey analysis; analysis of market research data and statistics; analysis of market research data; consumer response analysis; analysis of advertising response; analysis of the public awareness of advertising; accountancy, book keeping and auditing; auditing utility rates for others; cost accounting; business advice relating to accounting; consultancy relating to auditing; consulting and information concerning accounting; taxation [accountancy] consultation; advice on tax preparation; accounting; administrative accounting; computerised accounting (Preparation of -); balance sheet accounting; management accounting; school fee accounting services; accounting for third parties; cost management accounting; tracking and monitoring energy consumption for others for account auditing purposes; tracking and monitoring fluctuation in gasoline prices for others for account auditing purposes; provision of information relating to accounts [accountancy]; provision of reports relating to accounting information; business accounts management; tax planning [accountancy]; preparation of business balances; preparation of accounts; preparation of documents relating to taxation; business consultancy and advisory services; human resources management and recruitment services; administrative data processing; compilation of information into computer databases; compilation and systematisation of information in databanks; consultancy relating to data processing; automated data processing; data processing; data processing for businesses; data processing for the collection of data for business purposes; processing of business survey results; electronic data processing; business file management; computerised data processing; computerized file management; management and compilation of computerised databases; data entry and data processing; collating of data in computer databases; credit card registration services; computerised business information retrieval; data search in computer files for others; business consultancy services relating to data processing; advisory services relating to data processing; advisory services relating to electronic data processing; computerised business information processing services; on-line data processing services; data processing services in the field of payroll; data processing services in the field of transportation.

Class 42:        Legal services; legal administration of licences; litigation support services; legal assistance in the drawing up of contracts; compilation of legal information; consultancy in the field of data theft and identity theft.

2.        European Union trade mark application No 15 219 371 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 15 219 371. The opposition is based on European Union trade mark registration No 5 078 001. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The services

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

Class 35: Tax consultancy, namely tax preparation; business consultancy, auditing.

Class 36: Fiscal valuations; tax consultancy, namely fiscal assessments.

Class 42: Legal research, legal consultancy; tax consultancy, namely legal consultancy with regard to tax.

The contested services are the following:

Class 35: Business assistance, management and administrative services; business analysis, research and information services; commercial trading and consumer information services; advertising, marketing and promotional services; providing consumer product advice; administrative order processing; administrative processing and organising of mail order services; administrative processing of purchase orders within the framework of services provided by mail-order companies; administrative processing of purchase orders; providing consumer product advice relating to software; consulting in sales techniques and sales programmes; consultancy relating to costing of sales orders; advice relating to barter trade; advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; commercial administration of the licensing of the goods and services of others; import-export agencies in the field of energy; purchasing of goods and services for other businesses; procurement of contracts for others relating to the sale of goods; procurement of contracts [for others]; telephone order-taking services for others; subscription to a television channel; subscription to an information media package; subscriptions to electronic journals; newspaper subscriptions; auctioneering services; rental of vending machines; rental of sales stands; retail services in relation to printed matter; conducting market surveys; collection and systematization of business data; acquisition (business -) searches; commercial information agencies [provides business information, e.g., marketing or demographic data]; updating of business information on a computer data base; business analysis; business analysis of markets; benchmarking (evaluation of business organisation practices); cost price analysis; cost benefit analysis; business management analysis; analysis of company behaviour; analysis of business information; economic forecasting analysis for business purposes; analysis of business management systems; economic analysis for business purposes; analysis of business statistics; assessment analysis relating to business management; assistance, advisory services and consultancy with regard to business analysis; information and data compiling and analyzing relating to business management; compilation and provision of trade and business price and statistical information; design of public opinion surveys; conducting of internal business communication surveys; conducting of business research; conducting of business feasibility studies; business administration; business administration in the field of transport and delivery; business administration of employee share schemes; administration (business -) relating to statistical methods; administration relating to business planning; business acquisitions; clerical services; updating and maintenance of data in computer databases; filing documents or magnetic-tapes [office functions]; payroll assistance; confirming scheduled appointments for others; addressing of envelopes; maintenance of registers [for others]; billing; computerised inventory control; data-based stock control; stock control services; copying of documents for others; execution of stenographic work to order; invoicing; provision of initial company secretarial services on company formation; computerised stock management; inserting printed matter into envelopes; stocktaking; inventorying merchandise; provision of clerical assistance; utility meter reading for billing purposes; gas meter reading for billing purposes; electricity meter reading for billing purposes; water meter reading for billing purposes; compilation of statistics relating to advertising; compilation of statistics [for business or commercial purposes]; compilation of registers relating to importers; compilation of registers relating to exporters; compilation of statistical models for the provision of market dynamics information; compilation of statistical information; compilation of direct mailing lists; compilation of mailing lists; compilation of indexed addresses; compilation of directories for publication on the internet; compilation of lists of prospective customers; compilation of business directories; compilation of statistical data relating to medical research; compilation of directories for publishing on global computer networks or the internet; compilation of statistical data relating to business; compilation of statistical data for use in scientific research; data compilation for others; compilation of computer databases; computerised compilation of stock control records; computerised compilation of customer indexes; computerised compilation of order lists; statistical analysis and reporting; acquisition of business information relating to company activities; acquisition of business information relating to company status; acquisition of commercial information; preparation of public opinion surveys; preparation of marketing surveys; interviewing for market research purposes; interpretation of market research data; pricing surveys; investigations of marketing strategy; profit surveys; market surveys conducted by telephone; provision of market research information; dissemination of data relating to advertising; audience rating determination for radio and television broadcasts; market research consultancy; advertising analysis; interviewing for qualitative market research; analysis relating to marketing; market analysis and research; analysis of market research statistics; market analysis; market survey analysis; analysis of market research data and statistics; analysis of market research data; consumer response analysis; analysis of advertising response; analysis of the public awareness of advertising; accountancy, book keeping and auditing; auditing utility rates for others; cost accounting; business advice relating to accounting; consultancy relating to auditing; consulting and information concerning accounting; taxation [accountancy] consultation; advice on tax preparation; accounting; administrative accounting; computerised accounting (Preparation of -); balance sheet accounting; management accounting; school fee accounting services; accounting for third parties; cost management accounting; tracking and monitoring energy consumption for others for account auditing purposes; tracking and monitoring fluctuation in gasoline prices for others for account auditing purposes; provision of information relating to accounts [accountancy]; provision of reports relating to accounting information; business accounts management; tax planning [accountancy]; preparation of business balances; preparation of accounts; preparation of documents relating to taxation; business consultancy and advisory services; human resources management and recruitment services; rental of office machines; administrative data processing; compilation of information into computer databases; compilation and systematisation of information in databanks; consultancy relating to data processing; automated data processing; data processing; data processing for businesses; data processing for the collection of data for business purposes; processing of business survey results; electronic data processing; business file management; computerised data processing; computerized file management; management and compilation of computerised databases; data entry and data processing; collating of data in computer databases; credit card registration services; computerised business information retrieval; data search in computer files for others; business consultancy services relating to data processing; advisory services relating to data processing; advisory services relating to electronic data processing; computerised business information processing services; on-line data processing services; data processing services in the field of payroll; data processing services in the field of transportation.

Class 42: IT services; testing, authentication and quality control; design services; science and technology services; environmental testing; environmental testing of noise pollution; environmental testing of exhaust emissions; water analysis; analysis and evaluation of product design; analysis and evaluation of product development; industrial testing of engineering works; industrial testing; certification [quality control]; material testing; product safety testing; materials testing and analysing; testing of architectural ironmongery; constructing an internet platform for electronic commerce; animation design for others; interior and exterior design services; preparation of reports relating to design; computer graphics design services; design of land surveys; advice relating to the design of computer hardware; interior decoration consultation; product development consultation; web site design consultancy; consultancy services for designing information systems; professional consultancy relating to industrial design; professional consultancy relating to the design of interior accommodation; consultancy with regard to webpage design; engineering consultancy relating to design; surveying and exploration; engineering services; architectural and urban planning services; analysis of the structural behaviour of buildings; analysing of air in building environments; analysis of stream water quality; handwriting analysis [graphology]; analysis of telecommunication signals; computer aided scientific analysis services; compilation of scientific information; conducting industrial experiments; conducting industrial tests; consultancy in the field of energy-saving; consultancy relating to filtration technology; consultancy relating to membrane technology; technological engineering analysis; civil engineering consultancy; engineering consultancy relating to testing; engineering consultancy relating to data-processing; engineering consultancy relating to manufacture; technical consulting in the field of environmental engineering; telecommunications engineering consultancy; conducting engineering surveys; provision of information relating to industrial engineering; provision of engineering reports; engineering services for applications on large and medium-sized computer systems; levee engineering; Telecommunications engineering; engineering services relating to robotics; mechanical engineering; technical engineering; technical project planning in the field of engineering; preparation of reports relating to technical project studies for construction projects; design of engineered building systems; design of engineering works for the prevention of inundation of buildings by flood water; design of engineering works for the prevention of inundation of land by flood water; design of engineering works for flood prevention; design services relating to civil engineering; architecture; preparation of reports relating to architecture; architectural consultation; town planning advisory services; professional consultancy relating to architecture; consultancy in the field of architecture and construction drafting; architectural project management; estates (planning of building -); planning in relation to town planning and commercial town planning; urban planning; preparation of architectural design; preparation of reports relating to real estate planning; architectural design; architectural design for exterior decoration; architectural design for town planning; design of hotels; house design; design of buildings; design of industrial buildings; design of health care buildings; design of industrial plant; research relating to architecture; research relating to buildings; architectural design services relating to exhibitions; architectural services relating to the development of land; scientific research and development; chemical analysis; analysis of the structural behaviour of building materials; analysis of geological samples; laboratory testing of materials; analysis of materials; analysis of polymeric coatings; scientific analysis.

Class 45: Legal services; safety, rescue, security and enforcement services; legal administration of licences; litigation support services; legal assistance in the drawing up of contracts; compilation of legal information; consultancy in the field of data theft and identity theft; consultancy on regulations on safety at work; consulting in the field of workplace safety; security consultancy; fire prevention consultation; escorting in society [chaperoning]; fostering of children; baby sitting; personal letter writing; providing personal support services for families of patients with life threatening disorders; providing personal support services for cancer patients and their families.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

Business management services are usually rendered by companies specialising in this specific field 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.

These services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to allocate financial and human resources efficiently, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products, how to create a corporate identity, etc.

Indeed, business consultancy, like business management, is aimed at helping a business in acquiring, developing and expanding market share.

The contested business management services; business management analysis; analysis of business management systems include, as a broader category, the opponent’s business consultancy. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

As regards the contested business consultancy and advisory services, the contested business consultancy is identically included in the opponent’s list of services and the contested business advisory services are included in the broad category of, or overlap with, the opponent’s business consultancy. Therefore, they are identical.

The contested consulting in sales techniques and sales programmes; consultancy relating to costing of sales orders; advice relating to barter trade; advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; consultancy relating to data processing; business consultancy services relating to data processing; consultancy relating to auditing are included in the broad category of the opponent’s business consultancy. Therefore, they are identical.

The contested preparation of documents relating to taxation is included in the broad category of, or overlaps with, the opponent’s tax consultancy, namely tax preparation. Therefore, they are identical.

The contested business assistance and administrative services; business analysis (listed twice), research and information services have the same nature and purpose as the opponent’s business consultancy. The relevant public may believe that these services have the same professional origin, since they have the same providers and end users. Therefore, the contested services are similar to the opponent’s business consultancy.

The contested commercial trading and consumer information; providing consumer product advice; administrative order processing; administrative processing and organising of mail order services; administrative processing of purchase orders within the framework of services provided by mail-order companies; administrative processing of purchase orders; providing consumer product advice relating to software; commercial administration of the licensing of the goods and services of others; purchasing of goods and services for other businesses; procurement of contracts for others relating to the sale of goods; procurement of contracts [for others]; collection and systematization of business data; acquisition (business -) searches; commercial information agencies [provides business information, e.g., marketing or demographic data]; business administration; business administration in the field of transport and delivery; business administration of employee share schemes; administration (business -) relating to statistical methods; administration relating to business planning; business acquisitions; acquisition of business information relating to company activities; acquisition of business information relating to company status; acquisition of commercial information consist of administering business, so they have the same purpose as the opponent’s business consultancy. These services have the same professional origin and the same professional consumers. Therefore, they are similar.

The contested telephone order-taking services for others; updating of business information on a computer data base; clerical services; updating and maintenance of data in computer databases; filing documents or magnetic-tapes [office functions]; payroll assistance; confirming scheduled appointments for others; addressing of envelopes; maintenance of registers [for others]; billing; computerised inventory control; data-based stock control; stock control services; copying of documents for others; execution of stenographic work to order; invoicing; provision of initial company secretarial services on company formation; computerised stock management; inserting printed matter into envelopes; stocktaking; inventorying merchandise; provision of clerical assistance; utility meter reading for billing purposes; gas meter reading for billing purposes; electricity meter reading for billing purposes; water meter reading for billing purposes; compilation of registers relating to importers; compilation of registers relating to exporters; compilation of statistical models for the provision of market dynamics information; compilation of statistical information; compilation of direct mailing lists; compilation of mailing lists; compilation of indexed addresses; compilation of directories for publication on the internet; compilation of lists of prospective customers; compilation of business directories; compilation of statistical data relating to medical research; compilation of directories for publishing on global computer networks or the internet; compilation of statistical data relating to business; compilation of statistical data for use in scientific research; data compilation for others; compilation of computer databases; computerised compilation of stock control records; compilation and provision of trade and business price and statistical information; compilation of statistics [for business or commercial purposes]; compilation of statistics relating to advertising; dissemination of data relating to advertising; computerised compilation of customer indexes; computerised compilation of order lists; administrative data processing; compilation of information into computer databases; compilation and systematisation of information in databanks; automated data processing; data processing; data processing for businesses; data processing for the collection of data for business purposes; electronic data processing; business file management; computerised data processing; computerized file management; management and compilation of computerised databases; data entry and data processing; collating of data in computer databases; credit card registration services; computerised business information retrieval; data search in computer files for others; advisory services relating to data processing; advisory services relating to electronic data processing; computerised business information processing services; on-line data processing services; data processing services in the field of payroll; data processing services in the field of transportation are services involving a variety of office and administrative support duties. They have the same purpose, relevant public and providers as the opponent’s business consultancy. Therefore, they are similar.

Import-export services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. The contested import-export agencies in the field of energy are similar to the opponent’s business consultancy, as they can have the same producers, end users and distribution channels.

The opponent’s business consultancy is a service usually offered by consulting companies and consists principally in counselling business owners or managers. As explained above, this services is (like business management services) aimed at helping a business in acquiring, developing and expanding market share. In particular, consultants 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 contested conducting market surveys; business analysis of markets; benchmarking (evaluation of business organisation practices); cost price analysis; cost benefit analysis; analysis of company behaviour; analysis of business information; economic forecasting analysis for business purposes; economic analysis for business purposes; analysis of business statistics; assessment analysis relating to business management; assistance, advisory services and consultancy with regard to business analysis; information and data compiling and analyzing relating to business management; design of public opinion surveys; conducting of internal business communication surveys; conducting of business research; conducting of business feasibility studies; statistical analysis and reporting; preparation of public opinion surveys; preparation of marketing surveys; interviewing for market research purposes; interpretation of market research data; pricing surveys; investigations of marketing strategy; profit surveys; market surveys conducted by telephone; provision of market research information; processing of business survey results; advertising analysis; audience rating determination for radio and television broadcasts; market research consultancy; interviewing for qualitative market research; analysis relating to marketing; market analysis and research; analysis of market research statistics; market analysis; market survey analysis; analysis of market research data and statistics; analysis of market research data; consumer response analysis; analysis of advertising response; analysis of the public awareness of advertising consist in gathering information and providing tools and expertise to enable the consumers of these services to carry out their business or providing businesses with the necessary support to acquire, develop and expand market share. The services include analysis that may be useful in the management of a business, such as advice on how to efficiently allocate resources, improve productivity, increase market share, communicate with the public, etc. Therefore, they are similar to the opponent’s business consultancy, as they have the same purpose and target the same public.

Moreover, since professionals who offer advice on how to run a business efficiently may reasonably include advertising strategies in their advice because advertising plays a role in business management, business consultants may offer advertising (and marketing) consultancy as part of their services. It follows that the relevant public may believe that these two services have the same professional origin. Therefore, the contested advertising, marketing and promotional services are similar to a low degree to the opponent’s business consultancy.

Auditing is identically contained in both lists of services. The contested auditing utility rates for others; tracking and monitoring energy consumption for others for account auditing purposes; tracking and monitoring fluctuation in gasoline prices for others for account auditing purposes are included in the broad category of the opponent’s auditing. Therefore, they are identical.

The contested accountancy, book keeping; cost accounting; business advice relating to accounting; consulting and information concerning accounting; taxation [accountancy] consultation; advice on tax preparation; accounting; administrative accounting; computerised accounting (preparation of -); balance sheet accounting; management accounting; school fee accounting services; accounting for third parties; cost management accounting; provision of information relating to accounts [accountancy]; provision of reports relating to accounting information; business accounts management; tax planning [accountancy]; preparation of business balances; preparation of accounts are similar to the opponent’s business consultancy, since they have the same general purpose of organising and running a business. The services target the same professional public and they are used together in a complementary way. Moreover, they are usually provided by the same professionals.

The contested human resources management and recruitment services are business administration services consisting in organising people and resources efficiently, so they may have the same purpose as the opponent’s business consultancy. The services target the same professional public. Therefore, they are similar.

The contested auctioneering services are services rendered by specialised companies (auction agencies) that mediate the process of buying and selling of goods or services by offering them up for bidding, taking bids and then selling the item to the highest bidder. The contested rental of vending machines; rental of sales stands are services whereby lessors lease devices for automatically dispensing items or ‘portable sales points’. The contested retail services in relation to printed matter; rental of office machines involve bringing together, for others, the specific goods mentioned. These contested services have a different nature, purpose and method of use from the opponent’s services in Classes 35, 36 and 45; they are not in competition with or complementary to each other. Therefore, they are dissimilar.

The contested subscription to a television channel; subscription to an information media package; subscriptions to electronic journals; newspaper subscriptions are not included in business advisory, business project management or tax preparation services, or any other of the opponent’s services in Classes 35, 36 and 42. The contested services and the opponent’s services have different natures and purposes. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these services came from the same undertaking or from economically linked undertakings. Therefore, they are dissimilar.

Contested services in Class 42

The contested services are services provided in relation to the theoretical and practical aspects of complex fields of activity, such as services provided by chemists, physicists, engineers or computer programmers. These services involve the provision of evaluations, estimates, research and reports in the scientific and technological fields. In addition, the contested services include design services related to architecture, interior decoration and IT products.

These contested services have different natures, purposes and methods of use from the opponent’s services in Classes 35 (e.g. tax consultancy, business consultancy, auditing), 36 (e.g. fiscal valuations and assessments) and 45 (e.g. legal consultancy); they are neither in competition with nor complementary to each other. Therefore, they are found to be dissimilar.

Contested services in Class 45

The contested legal services include, as a broader category, the opponent’s legal consultancy. 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 compilation of legal information is included in the broad category of, or overlaps with, the opponent’s legal research. Therefore, they are identical.

The contested consultancy in the field of data theft and identity theft is included in the broad category of, or overlaps with, the opponent’s legal consultancy. Therefore, they are identical.

The contested legal administration of licences; litigation support services; legal assistance in the drawing up of contracts are highly similar to the opponent’s legal consultancy, as they have the same nature, being legal activities, and the same purpose, that of providing legal advice. They also have the same providers and end users.

The contested safety, rescue, security and enforcement services; consultancy on regulations on safety at work; consulting in the field of workplace safety; security consultancy; fire prevention consultation are services of investigation or surveillance relating to the safety or security of people or things. The contested escorting in society [chaperoning]; fostering of children; baby sitting; personal letter writing; providing personal support services for families of patients with life threatening disorders; providing personal support services for cancer patients and their families are services provided to individuals in relation to social events (e.g. social escort services), or personal needs (e.g. childcare services).

The Opposition Division can find nothing in common between these contested services and the opponent’s services in Classes 35, 42 and 45. The services have different natures, purposes and methods of use. Furthermore, they are not provided by the same companies and they target different end users. These services are not in competition or complementary. The contested services are considered dissimilar to all of the opponent’s services.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar to varying degrees are specialised services directed at business customers with specific professional knowledge or expertise. Some of the services are also directed at the general public (e.g. legal consultancy).

The degree of attention may vary from average to high depending on the complexity of the tasks involved and the cost of the services.

3. The signs

iovos
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 earlier mark is a word mark, ‘iovos’.

The contested sign is a figurative mark consisting of the word ‘IUVOS’, written in lower case letters, the letter ‘V’ being embedded in an incomplete circle.

The earlier mark has no meaning for the relevant public and is, therefore, distinctive.

As regards the contested sign, it is composed of a distinctive verbal element (which has no meaning) and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative elements. However, the contested sign has no elements that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the string of letters ‘i*vos’. However, they differ in their second letters, ‛o’ in the earlier mark and ‛u’ in the contested sign. They also differ in the typeface and the circle of the contested sign. However, the font is fairly standard and the figurative element fairly basic.

Moreover, 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 (14/07/2005, T-312/03 Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011-4, Best Tone, § 24; 13/12/2011, R 53/2011-5, Jumbo, § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛’i*vos’, present identically in both signs, and they have an identical rhythm. The pronunciation differs in the sound of the signs’ second letters, ‛o’ in the earlier mark and ‛u’ in the contested sign.

Therefore, the signs are aurally highly similar.

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.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness in the European Union in the fields of legal, economic and tax consultation. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted screenshots from its website as evidence. Clearly, this evidence is not sufficient to demonstrate intensive use of the sign, and the degree of recognition among the relevant public cannot be deduced from it.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Moreover, 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).

As stated above, the services are partly identical or similar to varying degrees and partly dissimilar. The signs are visually similar to an average degree and aurally similar to a high degree, on account of the coinciding string of letters ‛’i*vos’.

The stylisation of the contested sign is fairly standard and basic and will have less impact on the consumers than the sign’s verbal element.

The differences between the signs are not sufficient to counteract the visual and aural similarities, even for highly attentive consumers. Given the principle of interdependence, a likelihood of confusion cannot be excluded even in the case of services that are similar only to a low degree.

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 European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to varying degrees 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)(b) EUTMR, the opposition based on this article and directed at these 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marine DARTEYRE

Julie GOUTARD

Loreto URRACA LUQUE

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.