keepr | Decision 2629478

Date Published: Sep 24, 2017

OPPOSITION No B 2 629 478

Keyper GmbH, Rosengasse 2, 2700 Wiener Neustadt, Austria (opponent), represented by Geistwert, Kletzer Messner Mosing Schnider Schultes Rechtsanwälte, Linke Wiezenzeile 4/2/3, 1060 Wien, Austria (professional representative)

a g a i n s t

Sportfive GmbH & Co. KG, Barcastraße 5, 22087 Hamburg, Germany (holder), represented by Fechner Rechtsanwälte partmbB, Poststraße 37, 20354 Hamburg, Germany (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 629 478 is upheld for all the contested services, namely:

Class 35: Advertising; computerised business promotion; online advertisements; promotional management for sports personalities; business promotion; advertising services provided via a data base; dissemination of advertisements; advertising and marketing; promotional services provided by telephone; provision of information relating to advertising; publicity and sales promotion services; advertising, including online advertising on a computer network; advertising services provided via the internet; advertisement for others on the Internet; dissemination of advertising for others; online advertising on a computer network; consultancy relating to advertising; advertising in periodicals, brochures and newspapers; brand creation services (advertising and promotion); advertisement and publicity services by television, radio, mail.

2.        International registration No 1 264 869 is refused protection in respect of the European Union for all of the contested services. It may proceed for the remaining services.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the services of international registration designating the European Union No 1 264 869, ‘keepr’, namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 13 481 437, ‘keyper’. 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: Arranging of collective buying; promoting the sale of the services [on behalf of others] by arranging advertisements; promotion services.

The contested services are the following:

Class 35: Advertising; computerised business promotion; online advertisements; promotional management for sports personalities; business promotion; advertising services provided via a data base; dissemination of advertisements; advertising and marketing; promotional services provided by telephone; provision of information relating to advertising; publicity and sales promotion services; advertising, including online advertising on a computer network; advertising services provided via the internet; advertisement for others on the Internet; dissemination of advertising for others; online advertising on a computer network; consultancy relating to advertising; advertising in periodicals, brochures and newspapers; brand creation services (advertising and promotion); advertisement and publicity services by television, radio, mail.

Contested services in Class 35

The contested advertising; computerised business promotion; online advertisements; promotional management for sports personalities; business promotion; advertising services provided via a data base; dissemination of advertisements; advertising and marketing; promotional services provided by telephone; provision of information relating to advertising; publicity and sales promotion services; advertising, including online advertising on a computer network; advertising services provided via the internet; advertisement for others on the Internet; dissemination of advertising for others; online advertising on a computer network; consultancy relating to advertising; advertising in periodicals, brochures and newspapers; brand creation services (advertising and promotion); advertisement and publicity services by television, radio, mail are identical to the opponent’s promotion services because either they are included in the opponent’s broad category or they overlap.

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.

The services at issue considered identical are directed at both business customers and the public at large. The public’s degree of attentiveness will vary from average to high, depending on the price or terms and conditions of the purchased services.

3. The signs

keyper	keepr
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).

As both signs are word marks, it is the words as such that are protected and not their written form. Therefore, it is irrelevant whether the signs are depicted in upper or lower case characters.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The English-speaking part of the public is likely to perceive certain meanings in the signs, although the signs are not meaningful in certain territories, for instance in Finland, Spain or Germany. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the signs do not evoke any concepts, namely the Finnish-, Spanish- and German-speaking parts of the public.

As neither of the signs has any meaning in the relevant territory, they are distinctive.

Visually, the signs coincide in their first two letters, ‘ke’, and their last letters, ‘r’. Furthermore, both signs contain the letter ‘p’ and an additional letter ‘e’, although they are in different positions. Therefore, all the letters in the contested sign are present in the earlier mark. The signs differ in the letter ‘y’ of the earlier sign, which has no counterpart in the contested sign, and, as mentioned above, in the sequence of letters in the middle of the signs.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ke*p*r’, present identically in both signs. However, the signs differ in the sound of their third letters, ‘y’ versus ‘e’, and the difference in the pronunciation of their endings, ‘per’ of the earlier sign versus ‘pr’ of the contested sign, is so minor that it could go unnoticed by the relevant public.

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.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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

5. Global assessment, other arguments and conclusion

The signs are aurally similar to a high degree and visually similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs. The services are identical. Moreover, the earlier sign has a normal degree of distinctiveness.

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).

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).

Considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting their similarities and, as the services are identical, there is a likelihood of confusion at least on the part of the Finnish-, Spanish- and German-speaking parts of the public, even in the case that the degree of attention of the relevant public is high. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 264 869. It follows that the contested trade mark must be rejected for all the contested 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.

Since the holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Janja FELC

Birgit Holst FILTENBORG

Ana MUÑIZ RODRIGUEZ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.