PriceKompass | Decision 2710674

Date Published: Sep 22, 2017

OPPOSITION No B 2 710 674

Kompass International SA, 66, Quai du Maréchal Joffre, 92400 Courbevoie, France (opponent), represented by Feral-Schuhl / Sainte-Marie Aarpi, 24, rue Erlanger, 75016 Paris, France (professional representative)

a g a i n s t

Elis-Software GmbH, Kruppstrasse 105, 60388 Frankfurt, Germany (applicant), represented by Christoph Friedrich Jahn, Rothenburg 41, 48143 Münster, Germany (professional representative).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 710 674 is upheld for all the contested services.

2.        European Union trade mark application No 15 084 684 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 084 684. The opposition is based on, inter alia, French trade mark registration No 4 168 159. 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 French trade mark registration No 4 168 159.

1. The services

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

Class 35: Advertisement services; direct mail advertising, publication of publicity texts; production of advertising films; advertising services provided via a data base; telemarketing services; online advertising and marketing services; consultancy, advice and assistance for advertising, marketing and business promotion; business marketing consultancy services; advertising, marketing and promotion, namely development of advertising campaigns; search engine marketing services; search engine optimisation services; consultancy relating to search engine optimization; business marketing consultancy services, namely media planning and placement services for others in connection with online advertising, and analysing search engine and keyword placements for others for the purpose of search engine optimisation; leasing of advertisement space and advertising material; banner advertising; planning services for advertising; pay per click advertising; online advertising network matching services for connecting advertisers to websites; advertising and business management consultancy; advertising services provided via the internet; on-line advertising on a computer network; promoting the goods and services of others via advertising on internet websites; provision of advertising space on electronic media; rental of advertising time on communication media; business information services; providing of business information and marketing information; collection of information for and about companies; business information for companies; business information for enterprises (provision of -); providing of information relating to business and commercial contacts; administrative assistance for establishing a network of business contacts; providing of information and expert opinions on companies and business; providing of information relating to companies and commercial business via computer networks; compilation of directories for publication on the internet; providing of information relating to online business directories; analysis of business data; collection, systemisation and compilation of information into computer databases; computerised file management; updating and maintenance of data in computer databases; gathering and compiling statistical information; analysis of data on business statistics; market research services regarding internet usage habits and customer loyalty; data search in computer files for others; services in connection with franchising, namely assistance in the marketing of databases on electronic or printed media; assistance in the marketing of databases on electronic or printed media; wholesaling and retailing, including online, of databases on printed or electronic media; business operations and management assistance; business management; business administration; commercial administration of the licensing of the goods and services of others; office functions; computerised verification of company data processing; business and company networking; arranging of commercial and business contacts; information and advice in relation to above-mentioned services; collection, compilation, systemisation and updating of financial data relating to companies.

Class 36: Providing of financial information and financial data on companies, via databases accessible on printed media, on electronic media or online; providing of information relating to finance, financial investments and financial fund investments; providing of information relating to financial risks and financial risk management; consultancy and information relating to the aforesaid services.

Class 38: Telecommunications for access to global computer networks; communications by computer terminals; providing internet chat rooms; providing access to databases; leasing access time to databases; providing user access to global computer networks; electronic mail; message sending; computer aided transmission of messages and images; transmission of digital files; providing access to electronic publications; electronic communications services; electronic mail; secure e-mail services; electronic mail and messaging services; transmission of digital electronic mail services; data communication by electronic mail; electronic data interchange; consultancy relating to data communications; information and consultancy services relating to all the aforesaid services; dissemination of video and audio recordings, in particular on the internet.

Class 42: Design and development of computers and computer programs (software); creating and maintaining web sites for others; development, design, rental, maintenance and updating of computer software; provision of search engines for the internet; recovery of computer data; data conversion of computer programs and data [not physical conversion]; conversion of data or documents from physical to electronic media; hosting of internet sites; electronic data storage; software as a service [SaaS]; cloud computing; rental of computer software; design of databases; hosting of databases; server hosting; server administration; hosting computer databases; hosting of computer information, applications, data and files; consultancy in the field of computing; computer diagnostic services; consultancy in the field of computer systems integration; computer software consultancy; providing of consultancy and services rendered by consultants in the field of computer software; computer virus protection services; design and creation of models for electronic mail and website pages, in particular in html; website creation and design; consultancy relating to webpage design; consultancy service relating to computer software; consultancy and information relating to the aforesaid services; technical consultancy and information relating to printed matter, printed publications, indexes, directories, company information directories, books, data compendiums and specialist magazines (publications); storage and recovery of business, commercial, financial and advertising information, including via the internet; development, updating and maintenance of data bases.

Following the applicant's limitation of 07/07/2016, the contested services are the following:

Class 35: Sales promotion for others; advertising agencies; price analysis services; price comparison services; provision of online price comparison services; bidding quotation; company record keeping [for others]; ordering services for third parties; mediation of trade business for third parties; arranging the buying of goods for others.

Class 38: Providing user access to platforms on the internet; telecommunication services provided via internet platforms and portals; providing access to e-commerce platforms on the internet.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The expressions ‘in particular’ and ‘including’, used in the opponent’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, also used in the opponent’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

Contested services in Class 35

The contested sales promotion for others; advertising agencies are included in the broad category of the opponent’s advertisement services. Therefore, they are identical.

The contested mediation of trade business for third parties services are identical to the opponent’s business and company networking, because the opponent’s services include, are included in, or overlap with, the contested services.

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. In view of this, the contested price analysis services; price comparison services; provision of online price comparison services; bidding quotation are included in the broad category of the opponent’s business management. Therefore, they are identical.

Finally, the contested company record keeping [for others]; ordering services for third parties; arranging the buying of goods for others are included in the broad category of, or overlap with, the opponent’s office functions. Therefore, they are identical.

Contested services in Class 38

The contested providing user access to platforms on the internet; telecommunication services provided via internet platforms and portals; providing access to e-commerce platforms on the internet are included in the broad category of the opponent’s telecommunications for access to global computer networks. Therefore, they are identical.

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 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 (for services in Class 38 such as providing user access to platforms on the internet) to higher than average (for the services in Class 35 given their importance for the smooth running of a business).

3. The signs

KOMPASS
Earlier trade mark	Contested sign

The relevant territory is France.

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 word 'kompass', present in both signs, and 'pric' in the contested sign have no meaning whatsoever in French. Nevertheless, given its spelling and pronunciation and, in the case of the contested sign, with the additional help of its figurative element that could be perceived as a stylised compass by part of the public, it cannot be excluded that part of the public will associate the word ‘KOMPASS’ with the French word 'compas' which can inter alia be understood as designating an instrument that you use for finding directions and has a dial and a magnetic needle that always points to the north. According to the applicant, 'kompass' or 'compass' are often used in trade marks as a metaphor for 'guiding /navigational advice' services leading thus to a loss in distinctiveness. In support of its argument the applicant refers to a couple of EU trade mark registrations, namely 'nutritional compass' (No 10 823 318) and 'vote compass' (No 11 080 711) which are registered for services like market research and analysis, advisory services, providing online customer services for others and organization of promotions.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the reference to two trade marks does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word 'kompass'. Under these circumstances, the applicant’s claims must be set aside.

In addition, while the contrary may be true for an English-speaking public - which in any event does not represent the relevant public in the present analysis -, it should be noted that there is no reason whatsoever why the French public should perceive the English word 'price' in the combination made of the word 'pric' and the figurative element.

In view of the foregoing, 'pric' and 'kompass' are distinctive of the services at issue. Likewise, the figurative element of the contested sign is not considered descriptive, allusive or otherwise weak for the relevant services and is also distinctive. Finally, neither of the aforementioned elements is more eye-catching (dominant) in the contested sign. Nevertheless and contrary to the applicant's opinion regarding the device and the colours of the contested sign, it should be noted that 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).

Moreover, while it is true that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader, it must be stressed that this argument raised by the applicant cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. It remains that this circumstance is only one of the factors to take into consideration when evaluating the existence of a likelihood of confusion.

Visually, the signs coincide in the letters ‘kompass’ which form a clearly perceptible independent element in the contested sign. The signs differ for the remainder. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛k-o-m-p-a-s-s’, present identically in both signs, whereas it differs in the sound of the letters ‛p-r-i-c’ of the contested sign. Taking also into account the length of the analysed elements, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public for which 'KOMPASS' in both signs and 'pric' and the figurative element of the contested sign have no meaning, a conceptual comparison is not possible. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the remaining part of the public for which both signs may be perceived as referring to a 'compass', the signs are conceptually highly similar.

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 settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the services at issue are identical and the degree of attention of the relevant public may vary from average to higher than average depending on the type of services. The signs are visually similar to an average degree and aurally similar to a high degree. The signs are also conceptually similar to a high degree for part of the public at least.

In view of the foregoing, it is likely that a significant part of the relevant consumers may confuse the signs, especially bearing in mind 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), especially taking into account the degree of similarity between the marks in question and the fact that the services are identical.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 168 159. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier French trade mark registration No 4 168 159 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant 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

Begoña URIARTE VALIENTE

Martina GALLE

Frédérique SULPICE

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.