MW | Decision 1972010 - Manfred Schnabel v. MavenWire LLC
Date Published: Sep 22, 2017
OPPOSITION No B 1 972 010
Manfred Schnabel, Eichelbergstr. 25, 68163 Mannheim, Germany (opponent), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany (professional representative)
a g a i n s t
MavenWire LLC, 3rd Floor 630 Freedom Business Center Dr. King of Prussia, Pennsylvania 19406, United States of America (applicant), represented by Simkins LLP, Lynton House 7-12 Tavistock Square, London WC1H 9LT, United Kingdom (professional representative).
On 14/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 972 010 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 324 796, namely against all goods and services in Classes 9, 35, 41 and 42. The opposition is based on European Union trade mark registration No 4 701 462, registered for services in Classes 35, 38 and 42. 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 signs
| MW |
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).
Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components.
The earlier mark comprises a figurative device alongside the English words “brand added value”. Added value is something which makes a product more appealing to customers (https://www.collinsdictionary.com/dictionary/english/added-value). This verbal element is not distinctive for the English-speaking public for whom it will be perceived as a simple slogan which promotes the added value given to brands by the service-provider in respect of its advertising, business management, consultancy and telecommunications services, in particular relating to branded products, in Classes 35 and 38 respectively, together with the design, development and provision of related databases in class 42. The slogan is distinctive for the non-English speaking public, but not visually dominant. The figurative device is made up of two interlocking elements in contrasting black and grey, which appear to be outlined in white at the join. The particular arrangement of contrasting light and dark adds depth to the device, creating the effect of an optical illusion. As a result, this element may be perceived as a grey, crenellated device with three spurs, which either project from a dark background or retreat from a darker foreground. It is submitted that the device makes up a particular letter combination, but there is no evidence to suggest that the configuration would be perceived in this way in concreto. In particular, the secondary verbal elements do not suggest to the consumer that the device, or part of it, stands for a particular letter, or letter combination.
It can be reasonably assumed that, due to the whimsical and unusual stylisation, the relevant public will not perceive letters in the contested sign. Rather, the sign will be perceived as a fanciful figurative device with no relation to the words beside it, no concrete meaning in and of itself, and no meaning in relation to the services in respect of which it is distinctive.
The contested sign is made up the letters “M” and “W”. This letter combination is meaningless in respect of the applicant´s management software goods in Class 9 and their corresponding hosting services in class 42, together with the business consulting and training services in Classes 35 and 41 respectively. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
Visually, the signs differ in every respect. The earlier sign contains an arbitrary figurative device which is striking and depicted with perspective in contrasting shades. It contains a triple-spur effect which is mirrored inversely by its corresponding back or foreground, while the contested sign is a word mark which simply contains two letters in orthodox font. The former is visually complex, sophisticated and dominant. It is also different to the extent that it contains three English words, albeit in a secondary position, which are lacking in distinctive character for the English-speaking public, but not otherwise.
It is concluded that the signs are visually dissimilar.
Aurally, as the signs do not aurally coincide in any element, it is concluded that the signs are not aurally similar.
Conceptually, although the public in the English-speaking territory will perceive the meaning of the verbal element of the earlier sign, as explained above, the other sign has no concrete meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. With regard to the part of the public to which neither of the signs conveys any particular meaning, a conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs do not coincide in any element, they are dissimilar.
b) Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
Consequently, the opposition must be rejected in its entirety.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Plamen IVANOV | Keeva DOHERTY | Natascha GALPERIN |
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.