S3 Strategic Staffing Solutions International | Decision 0012919
Date Published: Sep 25, 2017
CANCELLATION No 12 919 C (INVALIDITY)
SThree IP Limited, 8th Floor, City Place, 55 Basinghall Street, London EC2V 5DX, United Kingdom (applicant), represented by Groom Wilkes & Wright LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, SG5 3PF Shillington, Hitchin, Hertfordshire, United Kingdom (professional representative)
a g a i n s t
Strategic Staffing Solutions L.C., 645 Griswold, Suite 2900, 48226 Detroit, Michigan, United States of America (EUTM proprietor), represented by Fieldfisher LLP, 8th Floor Riverbank House 2 Swan Lane, London EC4R 3TT, United Kingdom (professional representative).
On 06/07/2017, the Cancellation Division takes the following
DECISION
1. The application for a declaration of invalidity is partially upheld.
2. European Union trade mark No 9 670 993 is declared invalid for some of the contested services, namely:
Class 35: Advertising; business management; business administration; office functions; advertising services relating to the recruitment of personnel; advisory services relating to personnel recruitment; assistance relating to recruitment and placement of staff; business recruitment consultancy; consultancy relating to personnel recruitment; employment recruitment; permanent staff recruitment; recruitment of temporary technical personnel; recruitment of freelance personnel; recruitment and placement services; staff recruitment services; personnel recruitment services and employment agencies; professional recruitment services; provision of information relating to recruitment; advice relating to business management; advice relating to personnel management; assistance to commercial enterprises in the management of their business; assistance, advisory services and consultancy with regard to business planning, business analysis, business management, and business organization; management advice relating to the recruitment of staff; provision of business management assistance; consultancy relating to the selection of personnel; consultancy relating to the establishment and running of businesses; assessment analysis relating to business management; management of telephone call centres for others; business project management; business consultancy relating to the administration of information technology; contingent labour services; contingent staffing services; permanent employee placement services; business development services; business development; operating of business development centres and transferring of business development centres, namely, recruitment of personnel for others, assistance relating to recruitment and placement of staff for others, business recruitment consultancy for others, business analyst services for others, business management for others, personnel management and recruiting and utilities management including auditing utility rates for others and workforce management, personnel and human resources management for others, business project management, outsourcing relating to IT and consultancy services and process, business services outsourcing, business process reengineering, mergers, providing business advice on the use of advanced computer and communications technologies and their integration with current or future computer and communications systems, data retrieval services, computerised business information retrieval services, data processing and verification services, telephone answering services, call management services, accountancy services, change management services, payroll services, payroll processing services, invoice management, billing services for others, outsourcing services relating to financial services, pension administration, payroll services for others, invoice management and debt collection and recovery, information, advisory and consultancy services relating to all the aforesaid.
Class 41: Education; providing of training; publication of books, magazines, newsletters and texts; organisation of exhibitions, seminars and conferences; provision of educational courses, lectures and seminars; consultancy services relating to the education, training and development of personnel.
Class 42: Scientific and technological services and research and design relating thereto.
3. The European Union trade mark remains registered for all the remaining services, namely:
Class 42: Design and development of computer hardware and software; advisory and consultancy services relating to computer hardware and computer software; computer and information technology consultancy services; computer programming consultancy; computer security consultancy; consultancy in the field of software design; design and development of computer hardware and software; design and development of networks; web site design and creation services; technical testing services; compilation of information relating to information technology; information technology support services; provision of information relating to information technology.
4. Each party bears its own costs.
REASONS
The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 9 670 993 . The application is based on European Union trade mark registrations No 1 387 950 ‘STHREE’, No 1 633 734 ‘S THREE’ and No 6 652 077 . The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the element ‘S3’ of the contested mark is aurally and conceptually identical to the earlier marks ‘S Three’. The contested services are identical or similar to those of the applicant’s marks. Consequently, there is a likelihood of confusion between the marks.
The EUTM proprietor argues that the contested mark will be read as ‘strategic staffing solutions’, the initial ‘S’ being perceived as the initial letter of all the three words which dominate the mark. The number ‘3’ in the contested mark is a decorative addition to acknowledge the alliteration in the mark, namely that the letter ‘S’ is used three times as the initial letter of the words ‘strategic staffing solutions’. The EUTM proprietor also emphasizes the high stylisation of the letters in the contested mark. It concludes that the marks are not similar and, thus, there can be no likelihood of confusion regardless of the possible similarity between the services.
The applicant claims that the dominant and distinctive element of the contested mark is ‘S3’ which is aurally and conceptually identical to the earlier marks. The words ‘strategic staffing solutions’ are not distinctive in relation to the relevant services as well as the element ‘international’. It maintains that the services are identical or similar and that there is a likelihood of confusion between the marks.
The EUTM proprietor insists that the letter ‘S’ and the number ‘3’ in the contested mark do not form a separate element but that the letter ‘S’ will be perceived as the initial letter of the three words and the number ‘3’ merely refers to the fact that the letter ‘S’ is repeated three times, at the beginning of the three words. The mark will not be read as ‘S3 strategic staffing solutions’ but only as ‘strategic staffing solutions’. The words in the mark are incomplete without the initial ‘S’ and this letter will not be pronounced separately as ‘S3’ and then again in the three words. It refers to the previous opposition proceedings (B 2 088 055) where the Opposition Division stated that the number 3 in superscript in the mark was smaller than the rest of the letters and it is the least dominant element of the mark. The same number therefore cannot be the dominant element of the contested mark. The EUTM proprietor maintains that the marks are sufficiently different to exclude likelihood of confusion between them.
LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 services
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.
The services on which the application is based are the following:
- EUTM No 1 387 950 ‘STHREE’
Class 35: Personnel recruitment services; personnel recruitment services in connection with personnel for the management, construction and programming of computers; provision of advice with respect to the recruitment of personnel; provision of advice with respect to the seeking of employment; management consultancy services.
Class 36: Financial services; financial introduction services.
Class 41: Training of personnel in the areas of recruitment, human resources and business management.
- EUTM No 1 633 734 ‘S THREE’
Class 35: Personnel recruitment services; personnel recruitment services in connection with personnel for the management, construction, programming or operation of computers; provision of advice with respect to the recruitment of personnel; provision of advice with respect to the seeking of employment; management consultancy services.
Class 36: Financial services; financial introduction services.
Class 41: Training of personnel in the areas of recruitment, human resources and business management.
- EUTM No 6 652 077
Class 35: Employment and recruitment services; recruitment consultancy services; personnel recruitment services; personnel selection services; human resource management services; employment and recruitment agency services; employment and recruitment services relating to the financial, management consultancy and IT sectors; project management services in the field of employment and recruitment; advertising services relating to recruitment and employment; market research services in the fields of employment recruitment, employee and job profiling; employee and job profiling services; online recruiting services, namely searchable job postings and resumes; executive recruitment services; psychometric testing relating to employment and personnel selection; advisory, consultancy and information services relating to all the aforesaid.
Class 36: Financial introduction services; advisory, consultancy and information services relating to all the aforesaid.
Class 41: Educational, training and teaching services; training of personnel in the areas of recruitment, human resources and business management; management and personnel training services; advisory, consultancy and information services relating to all the aforesaid.
The contested services are the following:
Class 35: Advertising; business management; business administration; office functions; advertising services relating to the recruitment of personnel; advisory services relating to personnel recruitment; assistance relating to recruitment and placement of staff; business recruitment consultancy; consultancy relating to personnel recruitment; employment recruitment; permanent staff recruitment; recruitment of temporary technical personnel; recruitment of freelance personnel; recruitment and placement services; staff recruitment services; personnel recruitment services and employment agencies; professional recruitment services; provision of information relating to recruitment; advice relating to business management; advice relating to personnel management; assistance to commercial enterprises in the management of their business; assistance, advisory services and consultancy with regard to business planning, business analysis, business management, and business organization; management advice relating to the recruitment of staff; provision of business management assistance; consultancy relating to the selection of personnel; consultancy relating to the establishment and running of businesses; assessment analysis relating to business management; management of telephone call centres for others; business project management; business consultancy relating to the administration of information technology; contingent labour services; contingent staffing services; permanent employee placement services; business development services; business development; operating of business development centres and transferring of business development centres, namely, recruitment of personnel for others, assistance relating to recruitment and placement of staff for others, business recruitment consultancy for others, business analyst services for others, business management for others, personnel management and recruiting and utilities management including auditing utility rates for others and workforce management, personnel and human resources management for others, business project management, outsourcing relating to IT and consultancy services and process, business services outsourcing, business process reengineering, mergers, providing business advice on the use of advanced computer and communications technologies and their integration with current or future computer and communications systems, data retrieval services, computerised business information retrieval services, data processing and verification services, telephone answering services, call management services, accountancy services, change management services, payroll services, payroll processing services, invoice management, billing services for others, outsourcing services relating to financial services, pension administration, payroll services for others, invoice management and debt collection and recovery, information, advisory and consultancy services relating to all the aforesaid.
Class 41: Education; providing of training; publication of books, magazines, newsletters and texts; organisation of exhibitions, seminars and conferences; provision of educational courses, lectures and seminars; consultancy services relating to the education, training and development of personnel.
Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software; advisory and consultancy services relating to computer hardware and computer software; computer and information technology consultancy services; computer programming consultancy; computer security consultancy; consultancy in the field of software design; design and development of computer hardware and software; design and development of networks; web site design and creation services; technical testing services; compilation of information relating to information technology; information technology support services; provision of information relating to information technology.
Contested services in Class 35
The contested advertising; advertising services relating to the recruitment of personnel are identical to advertising services relating to recruitment and employment of the earlier mark (3) because they are synonymous or the former include the latter.
The contested advisory services relating to personnel recruitment; assistance relating to recruitment and placement of staff; business recruitment consultancy; consultancy relating to personnel recruitment; employment recruitment; permanent staff recruitment; recruitment of temporary technical personnel; recruitment of freelance personnel; recruitment and placement services; staff recruitment services; personnel recruitment services and employment agencies; professional recruitment services; provision of information relating to recruitment; contingent labour services; contingent staffing services; permanent employee placement services; consultancy relating to the selection of personnel; operating of business development centres and transferring of business development centres, namely, recruitment of personnel for others, assistance relating to recruitment and placement of staff for others, business recruitment consultancy for others, recruiting, information, advisory and consultancy services relating to all the aforesaid are identical or highly similar to personnel recruitment services of all three earlier marks as these contested services are either synonymous to those of the applicant, are included in them, overlap with them or are very closely connected to them in terms of nature, purpose, commercial origin and the relevant public.
The remaining contested services in this class, that is, business management; business administration; office functions; advice relating to business management; advice relating to personnel management; assistance to commercial enterprises in the management of their business; assistance, advisory services and consultancy with regard to business planning, business analysis, business management, and business organization; management advice relating to the recruitment of staff; provision of business management assistance; consultancy relating to the establishment and running of businesses; assessment analysis relating to business management; management of telephone call centres for others; business project management; business consultancy relating to the administration of information technology; business development services; business development; operating of business development centres and transferring of business development centres, namely, business analyst services for others, business management for others, personnel management and utilities management including auditing utility rates for others and workforce management, personnel and human resources management for others, business project management, outsourcing relating to IT and consultancy services and process, business services outsourcing, business process reengineering, mergers, providing business advice on the use of advanced computer and communications technologies and their integration with current or future computer and communications systems, data retrieval services, computerised business information retrieval services, data processing and verification services, telephone answering services, call management services, accountancy services, change management services, payroll services, payroll processing services, invoice management, billing services for others, outsourcing services relating to financial services, pension administration, payroll services for others, invoice management and debt collection and recovery, information, advisory and consultancy services relating to all the aforesaid are types of business management or administration or office functions. The earlier marks’ services such as personnel recruitment services; personnel recruitment services in connection with personnel for the management or project management services in the field of employment and recruitment are at least similar to those contested as all those services aim to assist third parties with the operation and administration of their businesses, they belong to the same market sector and they may be provided by the same undertakings.
Contested services in Class 41
The contested education; providing of training; provision of educational courses, lectures and seminars; consultancy services relating to the education, training and development of personnel are synonymous or fall into the category of the services of the earlier mark (3) educational, training and teaching services. These services are identical.
The contested services organisation of exhibitions, seminars and conferences are closely connected to the services of the earlier mark (3) educational, training and teaching services. Seminars and conferences are often organized with training and education purposes and it is common that the same undertakings provide such services. These services may be complementary and use the same distribution channels. Consequently, these services are considered to be similar.
The contested publication of books, magazines, newsletters and texts are similar to a low degree to the services of the earlier mark (3) educational, training and teaching services as these services are complementary and have the same distribution channels.
Contested services in Class 42
The contested scientific and technological services and research and design relating thereto are services similar to the applicant’s teaching services. These services are interconnected, the research services are often provided hand in hand with teaching services, for example, by universities. Moreover, they may coincide in distribution channels and in providers.
The remaining contested services design and development of computer hardware and software; advisory and consultancy services relating to computer hardware and computer software; computer and information technology consultancy services; computer programming consultancy; computer security consultancy; consultancy in the field of software design; design and development of computer hardware and software; design and development of networks; web site design and creation services; technical testing services; compilation of information relating to information technology; information technology support services; provision of information relating to information technology relate to software and hardware development. They are specific services provided by IT experts and they do not share any relevant points in common with the applicant’s services related to recruitment, advertising, education, teaching and financial services. They differ in purpose and distribution channels, they are not complementary or in competition and they are not commonly provided by the same undertakings. These services are, therefore, dissimilar.
- 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, some of the services found to be identical or similar to various degrees are directed at business consumers (services in Class 35), others are directed at both public at large and business clients (services in Class 41 and 42). The degree of attention will range from average to higher (higher for example as regards specialised and sophisticated services such as scientific research).
- The signs
- STHREE
- S THREE
| |
Earlier trade marks | Contested trade mark |
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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier marks contain the letters ‘sthree’. Two of them are word marks (marks 1 and 2), one of which is composed of a single element formed by those letters, the other is divided into two components ‘s’ and ‘three’ by a space. Since they are word marks, it is irrelevant whether they are represented in upper or lower case letters. The third earlier mark (mark 3) is figurative, the letters are represented in standard typeface and divided into ‘s’ and ‘three’ by a vertical red line. There are three dots of the same colour hovering over the last letter ‘e’.
The contested mark is a figurative mark containing a large stylised letter ‘S’ followed by the figure ‘3’ in superscript. On the right side of the letter there are the words ‘trategic’, ‘taffing’ and ‘olutions’ written under each other in the same stylised typeface. The word ‘International’ is written below a line that underlines both the letter and the words. All the elements of the mark are green.
The earlier marks 1) and 2) do not have any elements that could be considered more or less distinctive than other elements. The figurative elements in mark (3) are of a very simple and decorative nature, their degree of distinctiveness is low and they will have lower importance within the overall impression created by the sign than the normally distinctive verbal elements. Neither of the earlier marks has any dominant (visually more striking) elements.
The words ‘trategic’, ‘taffing’ and ‘olutions’ are meaningless as such; however, if read together with the letter ‘S’ that precedes all of them, they become meaningful words for the English-speaking part of the public. Those words are non-distinctive from the perspective of the English-speaking part of the public in relation to the relevant contested services that relate to recruitment, staff management or other business support or educational services that may include offering personnel related solutions. For the part of the public that does not understand these words, they are of average distinctiveness. The word ‘International’ will be understood across the entire EU on account of its widespread use and this word is also non-distinctive in relation to all the relevant contested services as it merely indicates that the services are offered internationally, that the provider of the services is an international entity, etc. Therefore, at least from the perspective of the English-speaking part of the public, the most distinctive element of the mark is the element ‘S3’. The EUTM proprietor claims that this cannot be regarded as a separate element as the ‘S’ is merely the initial letter of all the three words. However, the ‘S3’ is clearly visually separated from the rest of the elements of the mark, it stands out as a separate element and it is the only element that English-speaking consumers can refer to from the mark that is not completely non-distinctive. It takes an interpretative effort for consumers to understand that the letter ‘S’ should be read together with the words placed on its right side, whereas the element ‘S3’ is perceived immediately. Therefore, the Cancellation Division finds it reasonable to consider the element ‘S3’ to be a separate and distinctive element of the contested mark, in addition to the letter ‘S’ serving at the same time as the initial letter of the three words following it. Moreover, due to its size and a prominent position at the beginning of the mark, the stylised letter ‘S’ can be considered to be the dominant (visually most striking) element of the contested mark.
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 cancellation proceedings. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to invalidate the contested trade mark.
In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since the elements of the marks are meaningful for this part of the public.
Visually, the only relevant coincidence between the signs is the letter ‘s’. This is the first letter of the earlier marks, a separate element in earlier marks 2) and 3). It is also the first letter and visually the most prominent element of the contested mark. However, the stylization of this letter in the contested mark is different from that of the earlier marks and the marks differ in all their other elements. Although the majority of the additional elements of the contested mark, in particular the word ‘International’ and the words ‘strategic staffing solutions’ (read together with the initial ‘S’), are non-distinctive and their impact on the comparison of the marks is limited, in view of the distinctive additional element of the earlier marks ‘three’ and the overall graphic composition of the marks, which is different, it is considered that the marks are visually similar only to a very low degree.
Aurally, from the perspective of the English-speaking relevant public, the earlier marks will be pronounced identically to the element ‘S3’ of the contested mark. The EUTM proprietor argues that this element will not be pronounced but the Cancellation Division cannot agree with such a claim. First, the consumers do not tend to analyse the marks but are guided by the overall impression the marks create. In the present case, the letter ‘S’ is the obvious first element to be perceived by the consumers. Only after more detailed analysis of the sign will the consumers realize that the words following the large letter ‘S’ become meaningful when read together with the letter ‘S’. Moreover, the number ‘3’ is placed between the letter ‘S’ and the first following word, making it less natural at first glance to read the word together with the letter ‘S’. Furthermore, the following words, when read together with the letter ‘S’ become non-distinctive in relation to the relevant services and they will not be perceived as indicators of the commercial origin of the services. It has been confirmed by the case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words, in particular where there are descriptive elements in the mark (03/07/2013, T-243/12, Aloha 100% natural, EU:T:2013:344). It is, therefore, possible that consumers will refer to the contested mark only as ‘es three’, as it is in fact the only distinctive element of the mark. Considering all the above, and the fact that the words ‘strategic staffing solutions international’ are, even if pronounced, non-distinctive, and that aurally, the earlier marks are, as a whole, reproduced completely in the first (and possibly the only) pronounced element of the contested mark, the Cancellation Division concludes that the marks are aurally similar to a high degree.
Conceptually, the English-speaking relevant public will perceive the letter ‘s’ and the number 3 in the earlier marks, in particular in the marks (2) and (3) since the marks are split into these two elements. An independent element containing the letter ‘s’ and the number 3 is also included in the contested mark. The marks thus coincide conceptually to this extent. On the other hand, the contested mark also conveys the descriptive concept carried by the words ‘strategic staffing solutions international’. Considering the non-distinctive character of the only differing elements, the conceptual difference is of limited impact and the identical concept contained in the element ‘S3’ leads to the conceptual similarity of a high degree.
As the signs have been found similar in at least one aspect of the comparison from the perspective of at least part of the public, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
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 applicant did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.
- 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). 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).
The contested services are partly identical, partly similar to various degrees and partly dissimilar. The distinctiveness of the earlier marks is average. The attentiveness of consumers is average or higher than average.
The marks are visually similar to a low degree, whereas they are similar to a high degree from the aural and conceptual perspective. Despite the numerous additional elements in the contested mark, the fact remains that the only element capable of fulfilling the function of a trade mark is the element ‘S3’, which is not only distinctive but also, as far as the letter ‘S’ is concerned, visually prominent in the mark, and that this element is aurally and conceptually identical to the earlier marks. This coincidence between the marks is not outweighed by the number of additional elements of the contested mark. These non-distinctive elements of the contested mark are not able to change the overall impression created by the contested mark to such an extent as to exclude the perception of the average consumers that the contested mark is just another variation of the ‘S three’ marks and that the marks originate from the same or economically linked undertakings.
The EUTM proprietor refers to the decision of the Opposition Division B 2 088 055 of 15/10/2013 in which the Opposition Division stated that the number 3 in superscript is the least dominant element of the mark and that in the present case it should also be given less importance. The Cancellation Division notes, first, that in the case referred to by the EUTM proprietor, the number 3 was considered to be less dominant but in the presence of otherwise non-distinctive acronym it was finally considered to be one of the decisive differentiating elements in the mark to prevent likelihood of confusion. In the present case, similarly, while the number 3 is not visually striking (it is only the letter ‘S’ that is outstanding in size and it is therefore only that letter that can be considered to be the visually prominent part of the mark), this does not prevent the conclusion that the unit ‘S3’ is the most distinctive element in the mark. In the present case, as in the case referred to by the EUTM proprietor, in view of the non-distinctive character of the remaining elements, the smaller size of the number 3 is not decisive.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 declare the contested EUTM invalid.
Pursuant to the above, the contested trade mark must be declared invalid for the services found to be identical or similar to those of the earlier trade mark. The application is also successful insofar as the services that are similar to a low degree are concerned as the degree of similarity between the marks compensates for the low degree of similarity between the services.
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 application based on this article and directed at these services cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
According to Article 85(1) EUTMR, the losing party in cancellation 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 Cancellation Division will decide a different apportionment of costs.
Since the cancellation 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 Cancellation Division
Ioana MOISESCU | Michaela SIMANDLOVA | María Belén IBARRA DE DIEGO |
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.