(Trade mark without text) | Decision 2710237
Date Published: Sep 25, 2017
OPPOSITION No B 2 710 237
Sovereign Military Hospitaller Order of St. John of Jerusalem of Rhodes and of Malta, Via Condotti 68, 00187 Rome, Italy (opponent), represented by Keesom & Hendriks N.V., Delistraat 45, 2585 VX Den Haag, the Netherlands (professional representative)
a g a i n s t
Sovereign Order of Saint John of Jerusalem, - Knights of Malta - the International Grand Priory, 66, Sir Patrick Stuart Street, Gzira GZR 1050, Malta (applicant), represented by Advocates Chetcuti Cauchi, Law Firm, Britannia House, Melita Street, Valletta VLT 12, Malta (professional representative).
On 21/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 710 237 is partially upheld, namely for the following contested services:
Class 36: Accepting monetary charitable contributions; arranging charitable collections [for others]; arranging of funds for overseas aid projects; benevolent fund services; charitable collections; charitable fund raising; charitable fund raising in view of disaster precautions and prevention; charitable fund raising services; charitable fundraising; charitable fund-raising; charitable fundraising by means of entertainment events; charitable fundraising services; charitable fund-raising services; charitable fundraising services for underprivileged children; charitable fundraising through the sale of charity stamps; charitable services, namely financial services; collections (charitable -); eleemosynary services in the field of monetary donations; fund raising (charitable -); fund raising for charitable purposes; fund raising for charity; investment of funds for charitable purposes; organisation of charitable collections; organising of charitable collections; philanthropic services concerning monetary donations; providing information relating to charitable fundraising; provision of charitable fundraising services in relation to carbon offsetting.
Class 41: Conducting of educational seminars relating to medical matters; education (religious -); education services relating to religion; educational services relating to first aid; educational services relating to religious development; educational services relating to spiritual development; organisation of cultural events for charitable purposes; organization of seminars, working groups, research groups and conventions, in the field of medicine; publishing of journals, books and handbooks in the field of medicine; religious education; religious education services; religious educational services; religious instruction; vocational education relating to avoidance of drug related problems; vocational education relating to avoidance of health related problems; vocational education relating to first aid.
2. European Union trade mark application No 15 168 354 is rejected for all the above services. It may proceed for the remaining goods and 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 15 168 354. The opposition is based on European Union trade mark registrations No 3 983 129 and No 10 681 047. The opponent invoked Article 8(1)(b) and 8(5) EUTMR in relation to European Union trade mark registration No 3 983 129 and Article 8(1)(b) EUTMR in relation to European Union trade mark registration No 10 681 047.
PRELIMINARY REMARK
A large part of the opponent’s submissions concerns the alleged bad-faith of the applicant. As the opponent acknowledges, in the context of Article 8 EUTMR, bad faith cannot be a basis for the opposition. The motives and earlier conduct of the applicant do not affect the scope of the tasks to be performed by the Opposition Division in examining the grounds laid down in Article 8 EUTMR and invoked by the opponent in the current case as the basis of the opposition. Therefore, this point raised by the opponent will not be addressed further in the present decision.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the earlier European Union trade mark registration No 3 983 129 for the figurative mark registered for services in Classes 44 and 45.
The request was filed in due time and it is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
On 02/02/2017 the opponent was given two months to file the requested proof of use.
The opponent submitted evidence of use of the earlier trade mark. However, this evidence was submitted only on 18/04/2017, whereas the time limit for submitting proof of use expired on 07/04/2017. It follows from the wording of Rule 22(2) EUTMIR that the time limit laid down is a strict one, which means that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). Therefore, it is considered that the opponent did not submit proof of use or show that there were proper reasons for non-use within the time limit set by the Office.
With respect to the opponent’s argument that proof of use has already been submitted in previous proceedings at the Office, the Opposition Division points out that even though this might be the case, the Office accepts such references only on the condition that the opponent clearly identifies the material referred to and the proceedings in which it was filed. As the opponent did not specifically identify the items of evidence filed previously, this argument of the opponent has to be set aside.
According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR.
The examination of the present case will proceed as regards the other earlier trade mark basis of the opposition, namely European Union trade mark registration No 10 681 047.
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 goods and services
The services on which the opposition is based are the following:
Class 44: Medical services, hospital services.
Class 45: Social services for humanitarian and diplomatic causes; religious services.
The contested goods and services are the following:
Class 16: Address books; Advertising posters; Announcement cards; Announcement cards [stationery]; Annuals [printed publications]; Bibles; Book binders; Book bindings; Book covers; Book holders; Book jackets; Book markers; Book marks; Bookbinding covers; Bookbindings; Bookkeeping forms; Booklets; Bookmarkers; Bookmarks; Books; Brochures; Bulletins; Business cards; Calendars; Cards; Cash receipt books; Christmas cards; Coin albums; Commemorative books; Covers for books; Daily newspaper; Data books; Date books; Drafting instruments; Educational books; Educational publications; Envelopes for stationery use; Events albums; Flags of paper; Flip books; Greeting cards; Greetings cards; Guide books; Hymn books; Impression stamps; Index books; Ink stamps; Instruction sheets; Instructional and teaching materials; Instructional manuals; Invitation cards; Journals; Journals [publications]; Log books; Magazine supplements for newspapers; Magazines; Magazines [Periodicals]; Manuals; Manuals [handbooks]; Manuscript books; Marking stamps; Memorandum books; Menu cards; Motivational cards; Mounted posters; Name cards; Newsletters; Newspapers; Note cards; Occasion cards; Office paper stationery; Paper flags; Paper folders [stationery]; Paper identification tags; Paper stationery; Periodical magazines; Philatelic stamps; Photographs; Photographs [printed]; Picture books; Picture cards; Post cards; Postage stamps; Posters; Posters made of paper; Prayer books; Printed art reproductions; Printed award certificates; Printed awards; Printed booklets; Printed books; Printed certificates; Printed educational materials; Printed informational cards; Printed leaflets; Printed matter; Printed news releases; Printed reports; Printed research reports; Reference books; Religious books; Religious circular letters; Rubber document stamps; Rubber stamp; Rubber stamps; Sealing stamps; Seals [stamps]; Seals [stationery]; Stamps [seals]; Stationery; Stickers [stationery]; Thank you cards; Visiting cards.
Class 36: Accepting monetary charitable contributions; Arranging charitable collections [for others]; Arranging of funds for overseas aid projects; Benevolent fund services; Charitable collections; Charitable fund raising; Charitable fund raising in view of disaster precautions and prevention; Charitable fund raising services; Charitable fundraising; Charitable fund-raising; Charitable fundraising by means of entertainment events; Charitable fundraising services; Charitable fund-raising services; Charitable fundraising services for underprivileged children; Charitable fundraising through the sale of charity stamps; Charitable services, namely financial services; Collections (Charitable -); Collections (Organisation of -); Collections (Organising financial -); Collections (Organization of -); Eleemosynary services in the field of monetary donations; Financial sponsorship; Financial sponsorship of cultural events; Fund raising (Charitable -); Fund raising for charitable purposes; Fund raising for charity; Fund raising services via crowdfunding website; Fund sponsorship; Fundraising and sponsorship; Investment of funds for charitable purposes; Organisation of charitable collections; Organisation of collections; Organisation of financial collections; Organising financial collections; Organising of charitable collections; Philanthropic services concerning monetary donations; Providing college scholarships; Providing educational scholarships; Providing information relating to charitable fundraising; Provision of charitable fundraising services in relation to carbon offsetting; Sponsorship (Financial -).
Class 41: Academies [education]; Academy education services; Academy services (Education -); Archive library services; Arrangement of conferences for educational purposes; Arrangement of conventions for educational purposes; Arrangement of seminars for educational purposes; Arrangement of training courses in teaching institutes; Arranging and conducting award ceremonies; Arranging and conducting conferences; Arranging and conducting educational conferences; Arranging and conducting of competitions [education or entertainment]; Arranging and conducting of conferences; Arranging and conducting of conferences and seminars; Arranging and conducting of conferences, congresses, concerts and symposiums, seminars, training courses, classes and lectures; Arranging and conducting of conferences, congresses, seminars, symposiums, training courses, classes and lectures; Arranging and conducting of conventions; Arranging and conducting of day school courses for adults; Arranging and conducting of educational discussion groups, not on-line; Arranging and conducting of educational seminars; Arranging and conducting of in-person educational forums; Arranging and conducting of meetings in the field of education; Arranging and conducting of seminars, congresses, conferences and symposiums; Arranging for students to participate in educational activities; Arranging for students to participate in educational courses; Arranging of an annual educational conference; Arranging of award ceremonies; Arranging of award ceremonies to recognise achievement; Arranging of award ceremonies to recognise bravery; Arranging of competitions for cultural purposes; Arranging of competitions for education or entertainment; Arranging of competitions for educational purposes; Arranging of competitions via the Internet; Arranging of conferences relating to cultural activities; Arranging of conferences relating to education; Arranging of conventions for cultural purposes; Arranging of conventions for educational purposes; Arranging of cultural events; Arranging of demonstrations for cultural purposes; Arranging of demonstrations for educational purposes; Arranging of displays for cultural purposes; Arranging of displays for educational purposes; Arranging of educational conferences; Arranging of educational events; Arranging of exhibitions for cultural purposes; Arranging of exhibitions for educational purposes; Arranging of festivals for cultural purposes; Arranging of festivals for educational purposes; Arranging of presentations for cultural purposes; Arranging of presentations for educational purposes; Arranging of seminars relating to cultural activities; Arranging of seminars relating to education; Audio-visual display presentation services for educational purposes; Book lending; Book loaning; Book publishing; Book rental; Book-lending; Books (Publication of -); Club education services; Club services [entertainment or education]; Competitions (organisation of -) [education or entertainment]; Competitions (Organising of education -); Competitions (Organising of entertainment -); Competitions (Organising of sports -); Competitions (Organization of -) [education or entertainment]; Competitions (Organization of sports -); Computer assisted education services; Computer based educational services; Computer based library services; Computer education training; Computer education training services; Conducting of competitions on the Internet; Conducting of cultural events; Conducting of educational conferences; Conducting of educational courses; Conducting of educational events; Conducting of educational seminars relating to medical matters; Conducting of exhibitions for educational purposes; Conducting of instructional, educational and training courses for young people and adults; Conferences (Arranging and conducting of -); Congresses (Arranging and conducting of -); Correspondence school services; Correspondence schools; Cultural activities; Cultural and sporting activities; Cultural services; Design of educational courses, examinations and qualifications; Developing educational manuals; Development of educational materials; Dissemination of educational material; e-Books; Educating at senior high schools; Educating at university or colleges; Education; Education (Information relating to -); Education (Religious -); Education academy services; Education and instruction; Education examination; Education information; Education information services; Education services; Education services in the nature of courses at the university level; Education services relating to religion; Education services relating to vocational training; Educational and teaching services; Educational assessment services; Educational courses (Provision of -); Educational establishments providing courses of instruction (Services of -); Educational examination; Educational examination services; Educational information; Educational information provided on-line from a computer database or the internet; Educational information services; Educational institute services; Educational instruction; Educational research; Educational seminars; Educational services; Educational services for providing courses of education; Educational services for providing courses of instruction; Educational services in the nature of correspondence courses; Educational services in the nature of correspondence schools; Educational services provided by a school; Educational services provided by academies; Educational services provided by institutes of further education; Educational services provided by institutes of higher education; Educational services relating to first aid; Educational services relating to religious development; Educational services relating to spiritual development; Educational testing; Electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information; Electronic online publication of periodicals and books; Electronic publication; Electronic publication of texts and printed matter, other than publicity texts, on the Internet; Electronic publishing; Entertainment, education and instruction services; Entertainment, sporting and cultural activities; Examination services (Educational -); Exhibition services for educational purposes; Exhibitions (Arranging -) for cultural purposes; Exhibitions (Arranging -) for educational purposes; Exhibitions (Conducting -) for cultural purposes; Exhibitions (Conducting -) for educational purposes; Exhibitions (Organization of -) for cultural or educational purposes; Festivals (Organisation of -) for cultural purposes; Festivals (Organisation of -) for educational purposes; Fetes (Organisation of -) for cultural purposes; Fetes (Organisation of -) for educational purposes; Film production for educational purposes; Further education; Guidance (Vocational -) [education or training advice]; Higher education services; Hire of books; Hosting [organising] awards; Information (Education -); Information about education; Information on education; Information relating to education, provided on-line from a computer database or the internet; Information services relating to books; Information services relating to education; Institutes of education (Services provided by -); Interviewing of contemporary figures for educational purposes; Lending libraries for books; Lending library services and library services; Lending of books; Lending of books and other publications; Lending of books and periodicals; Library services; Library services for the lending of books; Library services provided by means of a computerised database; Library services provided by means of a computerised database containing information extracted from newspapers; Library services related to documents stored and retrieved by electronic means; Loan of books; Loaning of books; Loans of books; Magazine publishing; Magazines (Publication of -); Multimedia publishing of books; Multimedia publishing of magazines, journals and newspapers; Newspaper publication; Newspaper publishing; Online electronic publishing of books and periodicals; On-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; On-line library services, namely, providing electronic library services which feature newspapers, photographs, and pictures via an on-line computer network; Online publication of electronic books and journals; On-line publication of electronic books and journals; On-line publication of electronic books and journals (non-downloadable); On-line publication of electronic journals; Organisation of artistic competitions; Organisation of ceremonial events; Organisation of competitions; Organisation of competitions (education or entertainment); Organisation of competitions [education and/or entertainment]; Organisation of competitions [education or entertainment]; Organisation of competitions and awards; Organisation of competitions for education or entertainment; Organisation of conferences relating to education; Organisation of conferences, exhibitions and competitions; Organisation of congresses and conferences for cultural and educational purposes; Organisation of continuing educational seminars; Organisation of cultural events for charitable purposes; Organisation of educational events; Organisation of educational seminars; Organisation of entertainment and cultural events; Organisation of events for cultural, entertainment and sporting purposes; Organisation of examinations [educational]; Organisation of exhibitions for cultural and educational purposes; Organisation of exhibitions for cultural or educational purposes; Organisation of exhibitions for educational purposes; Organisation of group recreational activities; Organisation of seminars relating to education; Organisation of sporting activities and competitions; Organisation of sporting competitions; Organisation of sporting competitions and sports events; Organisation of sporting events; Organisation of sporting events and competitions; Organisation of symposia relating to education; Organising competitions; Organising events for cultural purposes; Organising of competitions for education; Organising of conferences for educational purposes; Organising of conferences relating to education; Organising of education competitions; Organising of education conferences; Organising of education conventions; Organising of education exhibitions; Organising of education seminars; Organising of educational conferences; Organising of educational congresses; Organising of educational exhibitions; Organising of educational lectures; Organising of educational seminars; Organising of exhibitions for educational purposes; Organising of meetings in the field of education; Organising of shows for educational purposes; Organising of sporting activities and competitions; Organising of sporting activities and of sporting competitions; Organising of sporting activities or competitions; Organising of sporting events, competitions and sporting tournaments; Organising of sports competitions; Organising of sports competitions and events; Organising of sports competitions and sports events; Organising of sports events and of sports competitions; Organization of competitions; Organization of competitions [education or entertainment]; Organization of competitions for education or entertainment; Organization of cultural shows; Organization of education competitions; Organization of educational conferences; Organization of educational congresses; Organization of educational symposia; Organization of events for cultural purposes; Organization of exhibitions for cultural and educational purposes; Organization of exhibitions for cultural or educational purposes; Organization of exhibitions for educational purposes; Organization of seminars, working groups, research groups and conventions, in the field of medicine; Organization of shows for cultural purposes; Organization of sports competitions; Organizing and conducting college sport competitions; Organizing cultural and arts events; Photograph library searching services; Photographic library services; Planning of conferences for educational purposes; Planning of lectures for educational purposes; Planning of seminars for educational purposes; Preparation of educational courses and examinations; Preparatory schools; Production and rental of educational and instructional materials; Production of course material distributed at professional seminars; Production of course material distributed at vocational courses; Production of educational materials; Production of educational sound and video recordings; Production of educational television programmes; Production of films for educational purposes; Production of video tapes for corporate use in corporate educational training; Production of video tapes for corporate use in management educational training; Providing computer-delivered educational testing and assessments; Providing cultural activities; Providing electronic publications from a global computer network or the Internet, not downloadable; Providing facilities for educational purposes; Providing information relating to continuing education via the Internet; Providing non-downloadable electronic publications from a global computer network or the Internet; Providing of education; Providing of information relating to continuing education via the Internet; Providing on-line non-downloadable general feature magazines; Providing publications from a global computer network or the internet which may be browsed; Provision of education and training; Provision of education courses; Provision of education on-line from a computer database or via the internet or extranets; Provision of educational examination facilities; Provision of educational examinations; Provision of educational examinations and tests; Provision of educational information; Provision of facilities for education; Provision of information relating to books; Provision of sporting competitions; Provision of training and education; Publication and edition of books; Publication of audio books; Publication of booklets; Publication of books; Publication of books, magazines, almanacs and journals; Publication of books, reviews; Publication of brochures; Publication of catalogues; Publication of educational and training guides; Publication of educational books; Publication of educational materials; Publication of educational printed matter; Publication of educational teaching materials; Publication of educational texts; Publication of electronic books and journals online; Publication of electronic books and journals on-line; Publication of electronic books and periodicals on the Internet; Publication of electronic magazines; Publication of electronic newspapers accessible via a global computer network; Publication of magazines; Publication of material which can be accessed from databases or from the internet; Publication of newspapers; Publication of newspapers, periodicals, catalogs and brochures; Publication of periodicals; Publication of periodicals and books in electronic form; Publication of posters; Publication of printed matter in electronic form on the Internet; Publication of printed matter relating to education; Publication of text books; Publishing of books; Publishing of books, magazines; Publishing of educational material; Publishing of educational matter; Publishing of electronic books and journals on-line; Publishing of journals, books and handbooks in the field of medicine; Publishing of magazines in electronic form on the Internet; Publishing of newsletters; Publishing of newspapers; Publishing of web magazines; Publishing services for books and magazines; Religious education; Religious education services; Religious educational services; Religious instruction; Rental of books; Rental of magazines; Rental of newspapers and magazines; School services; Secondary school educational services; Services for the publication of magazines; Services of schools [education]; Setting of educational standards; Sporting competitions (Arranging of -); Sporting competitions (Organising of -); Sports competitions (Organising of -); Summer camps [entertainment and education]; Teaching academy services; Training and education services; University education services; Vocational education; Vocational education and training services; Vocational education for young people; Vocational education relating to avoidance of drug related problems; Vocational education relating to avoidance of health related problems; Vocational education relating to first aid; Vocational guidance; Workshops for educational purposes; Writing of texts.
An interpretation of the wording of the applicant’s list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of goods and 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 goods and services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 goods in Class 16
A ‘religious service’ is a ritual performed in as part of a religious observation.
Even though the opponent’s religious services in Class 45 is, therefore, a broad term that could refer to many different services or rituals performed by practitioners of a religion, it is clear enough for comparison purposes in the sense that, regardless of the particular aspects of any ritual, there is a religious background. The contested goods are, in general, goods made from paper, printed matter and office requisites. The mere fact that some of the contested goods (e.g. bibles, hymn books, prayer books, religious books and religious circular letters) are commonly used in the celebration of some religious rituals (a Mass, a wedding, a funeral, a thanksgiving, etc.) or for the information and learning of the practitioners of a religion is not sufficient to link these goods with the opponent’s religious services in Class 45; similarly, the mere fact that some of the contested goods (e.g. calendars, Christmas cards, greeting cards and posters) are commonly offered by certain organizations to help people in need, and therefore they may be connected in some way to charity, does not lead to find a similarity between these goods and the opponent’s social services for humanitarian causes in Class 45.
Therefore, the contested address books; advertising posters; announcement cards; announcement cards [stationery]; annuals [printed publications]; bibles; book binders; book bindings; book covers; book holders; book jackets; book markers; book marks; bookbinding covers; bookbindings; bookkeeping forms; booklets; bookmarkers; bookmarks; books; brochures; bulletins; business cards; calendars; cards; cash receipt books; Christmas cards; coin albums; commemorative books; covers for books; daily newspaper; data books; date books; drafting instruments; educational books; educational publications; envelopes for stationery use; events albums; flags of paper; flip books; greeting cards; greetings cards; guide books; hymn books; impression stamps; index books; ink stamps; instruction sheets; instructional and teaching materials; instructional manuals; invitation cards; journals; journals [publications]; log books; magazine supplements for newspapers; magazines; magazines [periodicals]; manuals; manuals [handbooks]; manuscript books; marking stamps; memorandum books; menu cards; motivational cards; mounted posters; name cards; newsletters; newspapers; note cards; occasion cards; office paper stationery; paper flags; paper folders [stationery]; paper identification tags; paper stationery; periodical magazines; philatelic stamps; photographs; photographs [printed]; picture books; picture cards; post cards; postage stamps; posters; posters made of paper; prayer books; printed art reproductions; printed award certificates; printed awards; printed booklets; printed books; printed certificates; printed educational materials; printed informational cards; printed leaflets; printed matter; printed news releases; printed reports; printed research reports; reference books; religious books; religious circular letters; rubber document stamps; rubber stamp; rubber stamps; sealing stamps; seals [stamps]; seals [stationery]; stamps [seals]; stationery; stickers [stationery]; thank you cards; visiting cards are dissimilar to the opponent’s services in Class 44 (medical and hospital services) and Class 45 (social services for humanitarian and diplomatic causes and religious services). This is not only because goods are articles of trade while services consist of the provision of intangible activities, but also because the goods and services in question have different natures, intended purposes and methods of use. Their producers and providers, distribution channels and relevant publics are also different.
Contested services in Class 36
The contested accepting monetary charitable contributions; arranging charitable collections [for others]; arranging of funds for overseas aid projects; benevolent fund services; charitable collections; charitable fund raising; charitable fund raising in view of disaster precautions and prevention; charitable fund raising services; charitable fundraising; charitable fund-raising; charitable fundraising by means of entertainment events; charitable fundraising services; charitable fund-raising services; charitable fundraising services for underprivileged children; charitable fundraising through the sale of charity stamps; charitable services, namely financial services; collections (charitable -); eleemosynary services in the field of monetary donations; fund raising (charitable -); fund raising for charitable purposes; fund raising for charity; investment of funds for charitable purposes; organisation of charitable collections; organising of charitable collections; philanthropic services concerning monetary donations; providing information relating to charitable fundraising; provision of charitable fundraising services in relation to carbon offsetting have all a common purpose, namely raising funds for those in need. Therefore, these contested services are similar to the opponent’s social services for humanitarian causes in Class 45 as they have the same ultimate purpose, namely aid to meet the various needs of individuals, and consequently they target the same relevant public. Finally, these services will be provided by the same entity providing humanitarian aid. The financial services of financing charitable services are necessarily complementary to charitable services (09/07/2015, R 863/2011-G, Malta Cross + International + Foundation (fig. mark) / Malteserkreuz (fig. mark), para 61). Indeed, the fact that the applicant’s and the opponent’s services are specifically described in the respective lists, all pursuing the same goal, derives in a finding of similarity that could not be probably reached otherwise.
Similarly, the contested collections (organisation of -); collections (organising financial -); collections (organization of -); fund raising services via crowdfunding website; fundraising; organisation of collections; organisation of financial collections; organising financial collections are similar to the opponent’s social services for humanitarian causes in Class 45. Fundraising (even if for charitable purposes) is the process of soliciting and gathering contributions of money or other resources by requesting donations from individuals, businesses, charitable foundations, or governmental agencies. Likewise, when organising collections for charity, the organiser collects money from people to give to charity. Therefore, the above mentioned contested services are necessarily complementary to the opponent’s charitable services.
However, the remaining contested services, namely financial sponsorship; financial sponsorship of cultural events; fund sponsorship; sponsorship; providing college scholarships; providing educational scholarships; sponsorship (financial -) are dissimilar to the opponent’s services in Classes 44 and 45, mainly because they have no link with charitable services, unlike the previous similarities found above. The services in question have different intended purposes and methods of use. Furthermore, their providers, distribution channels and relevant publics are also different and they are not complementary nor in competition.
Contested services in Class 41
The contested conducting of educational seminars relating to medical matters; educational services relating to first aid; organization of seminars, working groups, research groups and conventions, in the field of medicine; publishing of journals, books and handbooks in the field of medicine; vocational education relating to avoidance of drug related problems; vocational education relating to avoidance of health related problems; vocational education relating to first aid are similar to the opponent’s medical services in Class 44 as they all relate to the same field, medicine. They normally have the same providers since medical professionals may also provide training to others in the same field, and distribution channels and they target the same relevant public.
The contested education (religious -); education services relating to religion; educational services relating to religious development; educational services relating to spiritual development; religious education; religious education services; religious educational services; religious instruction are similar to the opponent’s religious services in Class 45 as they all directly focus on religion. They normally have the same providers as the people responsible for preaching a religion are often involved in educating others about it, and distribution channels and they target the same relevant public.
The contested organisation of cultural events for charitable purposes are similar to the opponent’s social services for humanitarian causes in Class 45 as they have the same purpose (giving help to the needy), they normally have the same providers and distribution channels and they target the same relevant public.
However, the remaining contested services cover, in general, services rendered in the development of the mental faculties of persons (e.g. education services; arrangement and conducting of conferences, conventions, seminars, training courses, competitions, congresses, classes and lectures), as well as services intended to entertain or to engage the attention (e.g. arrangement and conducting of concerts; arranging of award ceremonies; club services; entertainment, sporting and cultural activities; festivals (organisation of -) for cultural purposes). These services are dissimilar to the opponent’s services in Classes 44 and 45. The services in question have different purposes and natures and are neither in competition, nor interchangeable. Furthermore, they are normally offered by different undertakings specialising in different fields of professional activities. Being the above mentioned contested services applied as broad terms with no further specification, the relevant consumer will not regard them as originating from the same undertaking as the opponent’s particular services in Classes 44 and 45.
- 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 similar are directed at the public at large and also at professionals in the medical field, welfare organizations and religious communities with specific professional knowledge or expertise in the related fields. Indeed, in the case of the applicant’s services in Class 36, the relevant public of the services may include both charitable organizations for the benefit of which the fundraising campaigns are conducted and to which donations are presented, and the general public, including private persons, associations or companies that wishes to contribute to public welfare by means of donations via such fundraising campaigns.
The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services. In particular, the degree of attentiveness will be average in relation to, for instance, charitable collections and high in relation to inter alia accepting monetary charitable contributions, arranging of funds for overseas air projects, and educational services in relation to first aid as it involves financial services. The public will pay particular attention to the reliability of the service provider in this field (humanitarian causes), its professional competence, efficiency, motivation and dedication in rendering the services in question.
- The signs
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 earlier mark is a figurative mark depicting, in the central position, a red oval shield that contains a white cross and behind a white eight-pointed cross having the form of four ‘V’-shaped elements, each joining the others at its vertex, leaving the other two tips spread outward symmetrically. Intervened with the eight points of the cross, there is a rosary on which hangs a small cross with the design described above. The whole set is presented under a royal mantle with crown isolated on white.
The contested sign is a figurative mark consisting of a coat of arms represented in the central position by a shield that contains a white cross against a stripes background and behind a white eight-pointed cross having the form of four ‘V’-shaped elements, each joining the others at its vertex, leaving the other two tips spread outward symmetrically. Intervened with the eight points of the cross, there is a rosary and pendant a small crown and a small cross with the design described above.
The contested sign and the figurative elements in the central position of the earlier mark will be perceived as containing a central white cross against a shield form. Behind this front shield, a significant part of the relevant public will perceive the eight-pointed cross depicted in both signs as the Maltese cross. This will be reinforced by the fact that each sign contains this same cross, in smaller size, pendant at the bottom. The Maltese cross is an official emblem, ‘a cross with the limbs broadened outwards and often indented at the ends, as worn by the Knights Hospitallers’ (information extracted from Oxford English Dictionary at www.oed.com on 11/07/2017). For the sake of completeness, the Knights Hospitallers refers to ‘an order of military monks, following chiefly the rule of St. Augustine, which took its origin from a hospital founded at Jerusalem, in 1048, by merchants of Amalfi, for the succour and protection of poor pilgrims visiting the Holy Land, but subsequently grew to be a wealthy fraternity, received a military organization, and became one of the chief bulwarks of Christendom in the East, besides having dependent ‘hospitals’ and possessions throughout the Christian lands’ as defined by the dictionary. Since the Maltese cross has, therefore, a religious origin and have been historically associated to medical services and humanitarian causes, it can be concluded that, for this part of the public, this element of the marks is allusive in relation to the relevant services and therefore weak. However, it cannot be excluded that another part of the public will not identify this symbol present in the signs with its historic origin and therefore, for this part of the public, it possesses a normal degree of distinctiveness.
The royal mantle and the crown of the earlier mark will be perceived by the entire relevant public as symbols of sovereignty, as is the case for the small crown in the contested sign. In other words, they will be perceived merely as laudatory indications extoling the official standing of the respective coats of arms as recognised by the realm. Therefore, the distinctiveness of these elements in the signs is very limited.
Visually, the signs coincide in the figurative elements that form the coat of arms, placed in the same positions, namely a white cross against a shield form in the central position and behind a white eight-pointed cross intervened by a rosary and pendant a small eight-pointed cross. Furthermore, both signs contain a depiction of a royal crown, although in different positions, as explained above. However, they differ in the form and background of the central shield, as described above, in the colours used and in the royal mantle of the earlier mark.
Since the royal mantle with a crown of the earlier mark and the small crown of the contested sign are less distinctive elements, as explained above, they are certainly subordinate in importance. Therefore, weighing up all the aspects that form the signs, they are visually similar to an average degree.
Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of the figurative elements that they have in common, they 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.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 despite the presence of some weak elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The goods and services are partly similar and partly dissimilar. The degree of attention of the relevant public varies from average to high.
The figurative signs are visually similar to an average degree and conceptually highly similar. The composition of the respective coats of arms features the same elements (although some differing in colours and form), as described above in section c) of the present decision. Indeed, the fact that the central shields containing the white cross have slightly different forms, the colours of some of the elements vary and the additional royal mantle in the earlier mark are not sufficient to distinguish the signs because the visual coincidences are overwhelming.
Even though the distinctiveness of the eight-pointed cross, when perceived as the Maltese cross, is weak in relation to the services in question, as explained above, the distinctiveness of an element of the earlier mark is one of the factors taken into consideration when assessing likelihood of confusion on the part of the public. Thus, even with marks or elements that may be of a weak distinctive character there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 61). Moreover, as stated above, the signs also coincide in the remaining figurative elements and the way they are displayed, namely the central shield containing a white cross, the rosary and pendant a small eight-pointed cross. Furthermore, the presence of the crown in each of the signs, as well as the royal mantle of the earlier mark, will be given less importance in the evaluation of the signs because of their laudatory meaning. All these aspects contribute to a finding of likelihood of confusion as there are no further elements in the contested sign capable of diminishing this impression of similarity.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
In the present case, the likelihood that the relevant consumers, even those displaying a higher degree of attention, might associate the signs with each other is very real. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, relevant consumers may regard the services in question as belonging to two ranges of services coming, nonetheless, from the same undertaking.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 681 047.
It follows from the above that the contested trade mark must be rejected for the services found to be similar to those of the earlier trade mark.
The rest of the contested goods and 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 goods and services cannot be successful.
Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Lucinda CARNEY | Marta GARCÍA COLLADO | Richard BIANCHI |
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.