Learnably; learnably; LEARNABLY; LearnAbly | Decision 2695438 - Learnable Pty Ltd v. Enternships Limited

Date Published: Sep 28, 2017

OPPOSITION No B 2 695 438

Learnable Pty Ltd, 48 Cambridge Street, Collingwood, Victoria 3066, Australia (opponent), represented by Cooley (UK) LLP, Dashwood, 69 Old Broad Street, London EC2M 1QS, United Kingdom (professional representative)

a g a i n s t

Enternships Limited, 38-40 Elm Ave, Upminster, London RM14 2AY, United Kingdom (applicant).

On 17/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 695 438 is partially upheld, namely for the following contested services:

Class 38:        Communication by online blogs.

Class 41:                Training courses; Provision of online training; Provision of online tutorials; Distance learning services provided online; Providing information about online education; Professional consultancy relating to education; Training services; Training consultancy; Business training; Commercial training services; Training and further training consultancy; Vocational skills training; Personal development training; Vocational training services; Training and education services; Personal development courses.

2.        European Union trade mark application No 15 038 541 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 goods and services of European Union trade mark application No 15 038 541. The opposition is based on European Union trade mark No 10 067 171. 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 38:        Providing online bulletin boards and chat rooms for education and training purposes; electronic delivery of audio, video and text-based educational and training materials via a global computer network; streaming of video material via a global computer network; streaming of audio material via a global computer network.

Class 41:        Education, instruction and training services consisting of teaching, tuition, course management; and course supervision; education and training services provided on-line from a computer database or global computer network; preparation of educational and training materials; publication of educational and training materials; providing audio, video and text-based educational and training materials via a global computer network; arranging and conducting training courses, seminars, conferences and workshops; providing tutorial sessions, private lessons, group lessons, classes, seminars and workshops; educational demonstrations; conducting on-line programs; providing on-line training in the form of courses; providing a website featuring educational and training courses and materials; computer assisted or based training services; consultancy services relating to the preparation of educational and training materials; production of video and audio materials for use in training; production of software for use in training; the provision of the above services to members of a website; distribution of on-line educational and training courses and materials.

The contested services are the following:

Class 35:        Providing online commercial directory information services; Professional recruitment services; Business consultancy (Professional -); Professional business consultancy services.

Class 38:        Communication by online blogs.

Class 41:        Training courses; Provision of online training; Provision of online tutorials; Distance learning services provided online; Providing information about online education; Professional consultancy relating to education; Training services; Training consultancy; Business training; Commercial training services; Training and further training consultancy; Vocational skills training; Personal development training; Vocational training services; Training and education services; Personal development courses.

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

The contested providing online commercial directory information services is dissimilar to all the opponent’s services, including providing online bulletin boards and chat rooms for education and training purposes. Although it is obvious that these services are provided through the same means (i.e. online), their natures are different, as the opponent’s services are telecommunication services whereas the applicant’s services are business administration services. Their commercial origins are also different and usually their channels of trade are different. They are neither complementary to nor in competition with each other.

The contested professional recruitment services are business administration services. These services, as well as business consultancy (professional -); professional business consultancy services, are dissimilar to all of the opponent’s services, in as much as their natures are different, as are their purposes, commercial origins and channels of trade. Furthermore, these services are neither complementary to nor in competition with each other.

Contested services in Class 38

The contested services are similar to the opponent’s electronic delivery of audio, video and text-based educational and training materials via a global computer network, as the same companies can offer them through the same channels of trade to the same kinds of customers for the same purpose.

Contested services in Class 41

The contested services are identical to the opponent’s services in Class 41, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include the contested 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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specific nature of the services, the frequency of purchase and their price.

3. The signs

LEARNABLE	Learnably; learnably; LEARNABLY; LearnAbly
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). 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.

Both marks are derived from the English word ‘learn’, which means to gain or acquire knowledge of or skill in something by study, experience or being taught. However, this meaning will not be grasped by non-English speakers and, consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The contested mark is a word mark. Word marks are those that do not claim any particular figurative element or appearance, and the difference in the use of lower case and upper case letters in such marks is immaterial. Therefore, the contested mark consists of the word ‘Learnably’ four times. As said before, this word will mean nothing to the relevant consumers and, therefore, will be distinctive for the services in question.

The earlier mark is also a word mark and consists of the word ‘LEARNABLE’, which will also be distinctive for the services in question.

As they are both word marks, the marks in dispute have no elements that can be considered more dominant than other elements.

Visually, the signs coincide in eight of the nine letters that comprise them, namely ‘LEARNABL*’, and differ in their final letters (‘E’ in the earlier mark and ‘Y’ in the contested mark). This will not go unnoticed by consumers, even though the word appears four times in the contested mark. Given the similarity between the words and the fact that the words are distinctive for the services at issue, the signs are visually highly similar.

Following the arguments given above, the signs are also 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.

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

The high degree of similarity between the signs, both visually and aurally, arises from the fact that the earlier mark is reproduced almost in its entirety in the contested sign, except for one letter, which is at the very end of the sign; the fact that, as mentioned above, the word ‘Learnably’ is repeated several times in the contested sign will not prevent consumers from perceiving this similarity. The signs have no conceptual meaning that could help consumers to differentiate between them. In addition, 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). Furthermore, 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).

All of this means that, in the presence of identical or similar services, the consumers will confuse their origins, thinking that they originate from the same companies or from companies with economic ties. Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-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.

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

Angela DI BLASIO

María Belén IBARRA DE DIEGO

Ana MUÑIZ RODRÍGUEZ

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.