VirCall | Decision 2788910
Date Published: Sep 25, 2017
OPPOSITION No B 2 788 910
Call International Limited, 3rd Floor, 207 Regent Street, London W1B 3HH, United Kingdom (opponent)
a g a i n s t
VirCall v/Frederik Weisz, Nygårdspark 143, 3520 Farum, Denmark (applicant), represented by Otello Lawfirm, Dalgasgade 25, 8., 7400 Herning, Denmark (professional representative).
On 28/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 788 910 is upheld for all the contested services.
2. European Union trade mark application No 15 564 751 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 15 564 751. The opposition is based on Benelux trade mark registration No 1 332 150. 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 services
The services on which the opposition is based are the following:
Class 35: Provision of information and advice to consumers regarding the selection of products and items to be purchased; provision of business and commercial information; business consultancy services; assistance and advice regarding business organization and management; advertising; advertising services for the promotion of goods; arranging of contracts for the purchase and sale of goods and services, for others; market research and marketing studies; compilation of computer databases; office functions; retail services relating to furniture; retail services connected with the sale of clothing and clothing accessories; online retail store services in relation to clothing.
The contested services are the following:
Class 35: Telemarketing services; business services in the form of collection of business data and searching for patterns and structures in large quantities of data; business administration; office functions; outsource service provider in the field of customer relationship management; advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet.
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 contested telemarketing services are included in the broad category of the opponent’s advertising. Therefore, they are identical (04/09/2015, R 2606/2014-4, WIFREE / FREE, § 39).
The contested business services in the form of collection of business data and searching for patterns and structures in large quantities of data overlap with the opponent’s business consultancy services, inasmuch as business consultancy services can be provided in the form of collecting business data and searching for patterns and structures in large quantities of data. Therefore, they are identical.
Office functions are identically contained in both lists of services.
The contested outsource service provider in the field of customer relationship management overlaps with the opponent’s business consultancy services. Business consultancy services consist of providing information about and help in running a business better. This also includes advice in the field of customer relationship management. Therefore, these services have to be considered identical.
The contested advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet are included in the broad category of the opponent’s provision of business and commercial information. Therefore, they are identical.
The contested business administration is similar to the opponent’s business consultancy services. The contested services consist in organising people and resources efficiently to direct activities towards the common goals and objectives of a business. On the other hand, business consultancy services consist of providing professional advice. The services at issue can coincide in their purpose, originate from the same undertakings and target the same end users (02/02/2016, R 1389/2015-2, 0909 zeronove zeronove / zero (fig.)).
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the services found to be identical or similar are mainly directed at business customers with specific professional knowledge or expertise.
The degree of attention will be high for the business services in Class 35 because of their impact on business strategy/commercial success. The same reasoning applies in relation to advertising services, since the quality of these services potentially has a significant impact on the client’s business.
- The signs
CALL | VirCall |
Earlier trade mark | Contested sign |
The relevant territory is Benelux.
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).
Both trade marks are single-word marks, the earlier mark being ‘CALL’, while the contested sign is ‘VirCall’.
Although consumers normally perceive a mark as a whole and do not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (13/06/2012, T-342/10, Mesilette, EU:T:2012:290, § 33).
In the present case, it is important to assess whether or not the relevant public, when encountering the contested trade mark, is likely to break it down.
As a whole, ‘VirCall’ is meaningless in French, German and Dutch, as are the words ‘Vir’ and ‘Call’.
On the other hand, ‘Call’ is a relatively basic English word, which may mean several things, for example to give a name to someone or something, to telephone someone etc. The word, as such, has a normal degree of distinctiveness for the services at issue, with the exception of the contested telemarketing, for which ‘Call’ is weak, as it provides information on the way in which the services are provided.
It is settled case-law that a very large proportion of European consumers and professionals have an elementary knowledge of English (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 41).
Moreover, the General Court has pointed out that the Dutch public has at least a basic understanding of English (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23).
Furthermore, the target public is composed of professionals, who generally have a certain command of English.
Therefore, it is more than likely that the relevant public will understand the element ‘Call’ in the contested sign. To that extent, as it suggests a clear meaning in the mind of consumers, they will break the contested mark down.
Visually, the marks are similar inasmuch as they have in common the word ‘Call’, which is, in addition, the sole element of the earlier mark. They differ in the additional first letters ‘Vir’ in the contested sign.
It is undisputable that the protection that results from registration of a word mark concerns the word mentioned in the application for registration and not the specific typeface accompanying that mark. Nevertheless, it cannot be ignored that the applicant filed its application as ‘VirCall’, and the upper case ‘C’, de facto, clearly splits the sign into two components.
Moreover, even though, in principle, consumers normally attach more importance to the beginning of words, that is not so in every case (11/06/2014, T-401/12, Jungborn, EU:T:2014:507, § 30; 05/01/2013, T-237/11, BELLRAM, EU:T:2013:11, § 99). In the present case, the sign is relatively short, so the final part will catch the consumer’s attention as much as the initial part (11/06/2014, T-401/12, Jungborn, EU:T:2014:507, § 30; 15/01/2013, T-237/11, Bellram, EU:T:2013:11, § 95).
For these reasons, the signs are visually similar to an average degree.
Aurally, the signs are similar to an average degree, since they have the syllable ‘Call’ in common. They differ in the sound of the additional element ‘Vir’ of the contested mark.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the word ‘Call’. The signs are similar to an average degree to the extent that they have the element ‘Call’ in common and that ‘Vir’ is meaningless.
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.
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.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
As concluded above, the contested services are identical or similar to those of the earlier mark and target professionals, whose degree of attention is high. The signs are similar overall inasmuch as they have in common the element ‘Call’, which is the sole word of the earlier mark.
As explained above, the relevant consumers will break signs down into elements that they are familiar with. Insofar as it is known to the relevant part of the public, the word ‘Call’ will trigger an association in the consumer’s mind. The contested sign consists of two components, only one of which has a meaning, joined together. The mark, taken as a whole, does not contain a new meaning or a new concept. In such a circumstance, the word ‘Call’ has an independent distinctive role even if it is not deemed the dominant element. In such a case, the composite mark and the other mark may be considered similar (see, in this regard, 11/06/2014, T-401/12, Jungborn, EU:T:2014:507, § 35; 06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 30, 37; 01/07/2009, T-16/08, Center Shock, EU:T:2009:240, § 44; 02/05/2017, R 2292/2016-2, SEVENFRIDAY / SEVEN et al., § 41).
Moreover, account is taken of the fact 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). Furthermore, it is important to note that 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).
Considering all the above, there is a likelihood of confusion on the part of the public having a certain command of English. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 1 332 150. It follows that the contested trade mark must be rejected for all the contested services.
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.
Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.
The Opposition Division
Steve HAUSER | Patricia LOPEZ FERNANDEZ DE CORRES | Adriana VAN ROODEN |
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.