W | Decision 2770785

Date Published: Sep 22, 2017

OPPOSITION No B 2 770 785

Warwick Legal Network Limited, Aylesbury House, 17-18 Aylesbury Street, London EC1R 0DB, the United Kingdom (opponent), represented by Zumtobel Kronberger Rechtsanwälte OG, Rainbergstr. 3c, 5020 Salzburg, Austria (professional representative)

a g a i n s t

Ward Trade Marks Limited, St John's Innovation Centre, Cowley Road, Cambridge Cambridgeshire CB4 0WS, United Kingdom (applicant), represented by Ward Trade Marks Limited, St John's Innovation Centre, Cowley Road, Cambridge CB4 0WS, United Kingdom (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 770 785 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 488 661  (figurative). The opposition is based on European Union trade mark registration No 10 828 853  (figurative). The opponent invoked Article 8(1)(a) and (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.

1. The services

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

Class 35: Commercial consultancy; Business consultancy.

Class 36: Tax advice.

Class 45: Legal services; Services pertaining to legal matters including consultancy, advocacy, litigation and handling of legal formalities.

The contested services are the following:

Class 35: Strategic business consultancy; business strategic planning services; business analysis, research and information services; business assistance, management and administrative services; business organisation and management consultancy; business auditing; business administration; company record-keeping; office functions; business risk management services; business project management; marketing and promotional services; public relations services; market research; provision of business advice relating to franchising; provision of business information relating to franchising; preparation of business reports; preparation of commercial reports; preparation of economic reports; preparation of expert evaluations and reports relating to business matters; cost management accounting; management accounting; book keeping and auditing; provision of initial company secretarial services on company formation; provision of nominee company directors; business advisory services relating to company performance; data management services; database management services; advisory, consultancy and information services in relation to the aforesaid services.

Class 45: Trade mark attorney services; patent attorney services; legal services; litigation services; provision of legal services in the field of intellectual property; copyright protection; copyright management; filing of trade marks, patents and registered designs; trade mark watch services; patent and trade mark agency services; establishment, maintenance and enforcement of intellectual property rights; intellectual property licensing and assignment services; legal, professional, advisory and consultancy services, all relating to intellectual property; searching, research and investigation of intellectual property rights; arbitration, mediation, conciliation and alternative dispute resolution services; domain name registration, maintenance, enforcement, recovery and dispute services; preparation and provision of reports relating to all the aforesaid services; preparation of legal reports; attorney services; legal advice relating to franchising; professional legal consultations relating to franchising; advisory, consultancy and information services in relation to the aforesaid 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.

Contested services in Class 35

The contested strategic business consultancy; business strategic planning services; business organisation and management consultancy; business risk management services; provision of business advice relating to franchising; business advisory services relating to company performance; advisory, consultancy and information services in relation to the aforesaid services all represent or include inter alia specific types of business and/or commercial consultancy services. Therefore, these services are considered identical to commercial consultancy and business consultancy of the earlier mark.

The contested business assistance, management and administrative services and advisory, consultancy and information services in relation to the aforesaid services is a broad category, which includes the earlier mark’s commercial consultancy and business consultancy. Since the Opposition Division may not dissect ex officio the broader category of the services of the contested sign, these services are considered identical.

Business analysis, research and information services; market research; provision of business information relating to franchising; preparation of business reports; preparation of commercial reports; preparation of economic reports; preparation of expert evaluations and reports relating to business matters; advisory, consultancy and information services in relation to the aforesaid services of the applicant’s sign are services aimed at assisting businesses in their operations, by providing them with necessary analysis and information. The business consultancy services of the earlier sign are business management services where the business consultants assist clients in carrying out their business or provide them with the necessary support to acquire, develop and expand market share. Accordingly, there is no clear-cut difference between the two types of services. Often business consultants offer also services of analysis and provision of business-related information. The end-users of these services coincide, also their distribution channels. Hence these services are considered similar.

Business auditing; company record-keeping; cost management accounting; management accounting; book keeping and auditing; advisory, consultancy and information services in relation to the aforesaid services of the contested sign fall under the general category of accounting, book-keeping and auditing services. These services and business consultancy of the earlier mark are business management and assistance services and therefore have the same purpose. They target the same end users, share the same distribution channels and are often provided by the same services providers. Hence these services are considered similar to a high degree. Similarly, business project management and business administration of the contested sign, falling under the general category business management and assistance, share the same purpose, end users, distribution channels and service providers with business consultancy of the earlier mark. Accordingly, these services are highly similar, as well.

Office functions; provision of initial company secretarial services on company formation; provision of nominee company directors; data management services; database management services; advisory, consultancy and information services in relation to the aforesaid services are different types of administrative services provided to businesses, which are necessary for their everyday operation. Accordingly, they have the same end-users, service providers and distribution channels as business consultancy of the opponent’s mark. These services are therefore similar.

Marketing and promotional services; public relations services; advisory, consultancy and information services in relation to the aforesaid services of the contested sign are generally services of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. The business consultancy services of the earlier sign are business management services where the business consultants assist clients in carrying out their business or provide them with the necessary support to acquire, develop and expand market share. When comparing these services of the signs, marketing and promotional services and public relations service are an essential tool in business consultancy because it makes the business itself known in the market. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include marketing strategies in their advice because there is little doubt that marketing and public relations plays an essential role in business management. Furthermore, business consultants may offer marketing and public relations consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they are similar to a low degree.

Contested services in Class 45

Legal services are identically present in the list of services of both marks. Further, the earlier mark’s legal services are a very broad category, covering any type of legal services. Therefore, it includes, or at least overlaps with all services in Class 45 of the contested sign, namely trade mark attorney services; patent attorney services; litigation services; provision of legal services in the field of intellectual property; copyright protection; copyright management; filing of trade marks, patents and registered designs; trade mark watch services; patent and trade mark agency services; establishment, maintenance and enforcement of intellectual property rights; intellectual property licensing and assignment services; legal, professional, advisory and consultancy services, all relating to intellectual property; searching, research and investigation of intellectual property rights; arbitration, mediation, conciliation and alternative dispute resolution services; domain name registration, maintenance, enforcement, recovery and dispute services; preparation and provision of reports relating to all the aforesaid services; preparation of legal reports; attorney services; legal advice relating to franchising; professional legal consultations relating to franchising; advisory, consultancy and information services in relation to the aforesaid services. These services are either purely legal services (e.g. litigation services, etc.) or include inter alia legal services (e.g. copyright protection; copyright management, intellectual property licensing and assignment services, etc.). Hence these services are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar at varying degrees are partially directed at professional public (all services of Class 35 and some of the services of Class 45, e.g. trademark watch services) and partially directed at the public at large and professionals (e.g. legal services).

These services are specialised services, which may have important impact on the situation and status of consumers, for example on the current and future business operations of a company or the favourable result of a law suit. Accordingly the attention of consumers is established to be higher than average.

3. 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, which comprises of the letter ‘W” and a curved line, which goes from the upper part of the right-most line of the letter and nearly touches the lower part of the left-most line of the letter, to form almost a full oval inclined on the right. The letter and the oval-forming line are in orange.

The contested sign is a figurative mark, which comprises of the letter ‘W’, which inner lines overlap and cross each other in the upper part of the letter, so that when visually perceived, the sign may also be seen as composed of two slightly overlapping letters ‘V’. The lines of the letter(s) have different width and are represented in different shades of grey and black.

Neither of the signs has a component that can be considered as particularly more eye-catching than the others.

Visually, both marks are similar to the extent for part of the public they both depict a stylised representation of the single letter ‘W’. Additionally, a similar pattern of representing the lines of the ‘W’ is used in them, where each pair of parallel lines in each of the letters has the same width. It is to be noted however that this pattern is a quite standard way of representing the capital letter ‘W’, and is used in some of the most standard fonts. While both signs feature the mentioned similarity, there is a difference in the way this pattern is depicted in them. In particular, in the earlier mark these are the lines inclined on the left that are the wider ones, while in the contested sign this is the pair of lines inclined on the right.

It is to be noted that while the depiction of ‘W’ in the earlier mark is quite standard, the depiction of the letter in the contested sign taken as a whole is original, creatively using standard patterns of representation of the sign. Thus, the lines of the letter in the contested sign are much wider than usual, the inner lines cross a bit above their centre, and are originally represented in a grey-black pattern. The overall impression created by the sign is for sharp-cut angular forms and clear lines. On the other hand, the additional oval line in the earlier sign, which has no counterpart in the contested one, has a significant impact on the overall impression from the sign, where despite the acute angles of the ‘W’, the visual impression from the sign is for oval rather than sharp forms. Finally, the orange colour of the earlier sign, being bright and attention catching, adds a significant visual difference with the contested sign and its grey and black pattern.

In view of the above, it is considered that the visual similarities between the signs, enshrined primarily to the fact that they both contain the single letter ‘W’, are not sufficient to outweigh the significant number of visual differences in them, which are clearly perceived by the consumers. In particular, the signs differ in their overall layout, in their proportions, shape and colours. It is the differing elements that dominate the visual impression created by the signs and that will be remembered by consumers. Accordingly, since the consumers are likely to focus their attention on the found differences, it is considered that the signs are visually similar at most to a very low degree.

As noted above, it is possible that part of the consumers see the contested sign as composed of two overlapping letters ‘V’. This however would not significantly change their visual perception of the signs taken as a whole, since the letter ‘W’ graphically comprises of two joined letters ‘V’.

Aurally, the signs will be pronounced the same way by the consumers, who perceive them as containing the letter ‘W’. Therefore, the signs will be aurally identical for this part of the public (15/03/2016, T-645/13, E, EU:T:2016:145, § 100)

For the part of the relevant public, which perceives the contested sign as composed of the double letter ‘V’, the signs will be pronounced as ‘W’ and double ‘V’ by part of the public (e.g. English-speaking public), for which part of the consumers the signs will be aurally dissimilar. Based on the pronunciation rules of some of the European Union languages, ‘W’ and ‘VV’ may be identically pronounced by part of the relevant consumers (e.g. the French-speaking public) and for this part of the consumers the signs will be aurally identical.

Conceptually, it is to be noted that the case law is not unified on whether signs composed of the same single letter (at least according to the perception of a part of the public) are conceptually identical and on the more general question if a letter can convey a concept or not (07/10/2014, T-531/12, T, ECLI:EU:T:2014:855, § 78 - § 80 and the case-law cited). Unquestionably, there are cases where a letter can obviously bring a concept (e.g. the letter ‘M’ may bring associations with ‘M’ size for clothing – see 12/12/2007, R-1655/2006-4, M, § 20). For the rest of the cases, there are instances where single letters are considered as not being able to evoke a concept (e.g. 07/10/2014, T-531/12, T, ECLI:EU:T:2014:855, § 81). There are also judgements, in which conceptual identity has been established on the basis that the signs refer to the same letter of the alphabet (20/07/2017, T-521/15, D, ECLI:EU:T:2017:536, § 55 and the case-law cited).

In the case at hand, basing its position on the interpretation of the General Court that it cannot be ruled out, that single letters of the alphabet might have their own conceptual content (08/052012,T-101/11, G, EU:T:2012:223, §  56; 20/07/2017, T-521/15, D, ECLI:EU:T:2017:536, § 55), it is considered that the compared signs will be conceptually identical for the part of the public that perceives the contested sign as depicting the letter ‘W’. For those, who see the contested mark as composed of the double letters ‘V’, the marks will refer to different letters of the alphabet and hence will not be conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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).

In the case at hand, it has been established that the services of the contested sign and those of the earlier mark are identical and similar at varying degrees and they target at professional public and at the public at large, who shows a higher than average degree of attention when selecting such services. The earlier mark has a normal degree of distinctiveness. The signs have been found to be conceptually and aurally identical and visually similar at most to a very low degree for part of the public and conceptually and aurally dissimilar and visually similar at most to a very low degree for the other part of the public.

Indisputably, finding likelihood of confusion for a non-negligible part of the public is sufficient for rejecting a European Union trade mark. In the case at hand, the fact that the signs are composed of the same letter for part of the public, which as a rule usually leads to aural and conceptually identity, is not irrelevant in the examination of similarity for the purposes of assessing the likelihood of confusion. Still, it is because of the usual aural and conceptual identity in such cases, that special consideration is to be given, in the context of registering a trade mark composed of a single letter for services identical to, or presenting a degree of similarity to, those covered by an earlier trade mark composed of the same letter, to ensuring that the mark applied for is sufficiently visually distinct from the earlier mark, in order to exclude any likelihood of confusion on the part of the relevant public (20/07/2017, T-521/15, D, ECLI:EU:T:2017:536, §62 and the case-law cited).

Accordingly, it is the visual perception of the signs that has a major impact on the overall impression created by them and that has bigger weight in the global assessment. Upon taking into account the found at most very low degree of visual similarity, which mainly stems from the identical single letter of the signs and also the higher degree of attention of the public when selecting the services in question, it is considered that there is no likelihood for confusion even for the services found identical or highly similar to those of the earlier mark.

The opponent refers to judgements of the General Court to support its arguments on existence of likelihood of confusion. None of the judgements referred to by the opponent is considered relevant for the present proceedings. As a general note, the outcome of each case of comparison of signs and their global assessment on the basis of all relevant factors, depend on the circumstances specific to the particular case. The circumstances, relevant for the judgements mentioned by the opponent, reveal, if at all any, quite remote similarity with the current case. One of them relates to a figurative mark which does not contain a word element (case T-522/08), while in the other cases the signs in question are completely different from those examined above and the only similarity they share is that the compared signs are one-letter marks. Specifically regarding the cases of one-letter marks, referred to by the opponent, it is to be noted that the outcome when comparing marks depends on the specific signs being compared. Thus, the fact that when comparing particular one-letter signs the competent body found similarity, is not an indication on how other cases will be decided. In all of the referenced cases the similarities between the signs were of a nature to attract the public’s attention and be remembered, while the differences were sufficiently minor not to significantly influence the overall perception. As explained above, in the case at hand the signs taken as a whole create a sufficiently different impression, dominated mainly by their differing features. Accordingly, none of the cases mentioned by the opponent reveals sufficient similarity with the case at hand and could therefore be regarded as relevant.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also invoked Article 8(1)(a) EUTMR as grounds for its opposition. The application of this ground requires identity between the goods and services and identity between the signs. In the case the signs have been found to be visually similar at most to a very low degree, while in order for this ground to be applicable, the signs should be identical. Apparently, the opposition must also fail on the grounds of Article 8(1)(a) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Eva Inés PÉREZ SANTONJA

Teodora TSENOVA-PETROVA

Vita VRONECKAITE

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.