ZEUS | Decision 2398975 - Barbara Volkwein v. STUDIO POLISPECIALISTICO SALUS S.R.L.
Date Published: Oct 1, 2017
OPPOSITION No B 2 398 975
Barbara Volkwein, Sollnerstrasse 42, 81479 Munich, Germany (opponent), represented by Rau & Rau, Widenmayerstr. 28, 80538 Munich, Germany (professional representative)
a g a i n s t
Studio Polispecialistico Salus S.r.l., Via Aldrovandi 7, 20129 Milan, Italy (applicant), represented by Accapi S.r.l., Via Garibaldi 3, 40124 Bologna, Italy (professional representative).
On 28/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 398 975 is partially upheld, namely for the following contested services:
Class 41: Education, entertainment and sports; Conferences, exhibitions and competitions; Conferences, exhibitions and seminars; Congresses; Organisation of seminars; Organising of education exhibitions; Arranging of competitions for training purposes; Competitions (Organization of-) [education or entertainment]; Arranging of competitions for cultural purposes; Arranging of lectures; Organisation of conferences and symposia in the field of medical science; Arranging of conventions for training purposes; Arranging of displays for training purposes; Arrangement of seminars for educational purposes; Conducting of instructional seminars; lnstruction in martial arts; Hire of teaching materials; Physical training services; Sports coaching services; Coaching; Fitness club services; Conducting of educational courses in science; Conducting courses, seminars and workshops; Conducting classes in exercise; Conducting classes in weight reduction; Conducting of educational seminars relating to medical matters; Running seminars in the field of oncology; Advisory services relating to education; Physical fitness consultation; Advice relating to medical training; Conducting of courses; Provision of courses of instruction relating to sport; Instruction courses relating to physical fitness; Providing continuing medical education courses; Instruction courses relating to health; Exercise classes; Providing continuing nursing education courses; Instruction courses relating to sporting activities; Teaching of life saving techniques; Interactive and distance learning courses and sessions provided on-line via a telecommunications link or computer network or provided by other means; Self-awareness courses [instruction]; Courses (Training -) relating to medicine; Tuition in sports; Developing educational manuals; Educational examination; Training services relating to speech; Training of sports teachers; Training of non-medical staff in the care of children; Training of sports players; Training services relating to fitness; Training services relating to first aid; Providing of training in the field of health care and nutrition; Training in the handling of food; Technical training relating to hygiene; Provision of medical instruction courses; Provision of educational health and fitness information; Providing instruction and equipment in the field of physical exercise; Provision of instruction for the disabled; Provision of educational services relating to health; Provision of educational services relating to fitness; Provision of gymnasium facilities; Operating of martial arts' schools; Provision of information relating to training; Information relating to sports education; Gymnastic instruction; Teaching of chinese martial arts; Training in yoga; Physical education instruction; Teaching of meditation practices; Tuition in acupuncture; Tuition in chiropractics; Beauty arts instruction; Teaching of diet education; Tuition in medicinal herbalism; Tuition in herbalism; Tuition in hygiene; Tuition in homeopathy; Tuition in osteopathy; Medical training and teaching; Instruction in body grooming; Provision of educational services relating to diet; Educational services relating to physical fitness; Education services relating to meditation; Instruction in cosmetic beauty; Physical fitness instruction; Life coaching (training); Educational seminars relating to beauty therapy; Education services relating to ayurvedic magnetism; Physical fitness centre services; Physical-education services; Provision of exercise facilities; Sports and fitness; Gymnasium services relating to body building; Recreation and training services; Sporting activities; Providing health club and gymnasium services; Exercise [fitness] advisory services; Gym activity classes; Conducting fitness classes; Rental of sports grounds; Organization of sports competitions; Organising of sporting activities and of sporting competitions; Gymnasium club services; Sports club services; Sporting results services; Supervision of physical exercise; Provision of recreational events; Organisation of parties; Organising of sporting events, competitions and sporting tournaments; Entertainment services relating to sport; Leisure services; Provision of amusement facilities.
Class 44: Holistic Psychotherapy; Psychological Assessment Services; Psychotherapy Services; Psychological Counseling; Stress Management Services; Music Therapy Services; Therapy Services.
2. European Union trade mark application No 12 805 636 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 some of the goods and services of European Union trade mark application No 12 805 636, namely against all the services in Class 41 and some of the services in Class 44. The opposition is based on the European Union trade mark registration No 11 072 006. 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 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Training and vocational consultancy for learners, students and professionals, in particular career consultancy; Communications and rhetoric training; Conducting of coaching, educational and lecture events and forums for training and further training purposes; Instruction for licensees of coaching methods; Services of a publishing firm, except printing; Text formatting, not for advertising purposes; Publication of printed matter (other than for advertising purposes), in particular books, newspapers, magazines and newsletters, including recorded on electronic media; Coaching using coaching methods, in particular personal consultancy through coaching; Education, training and vocational consultancy; Support in the form of coaching in the case of school, learning and exam problems, parent-child relationships, career problems; Individual coaching in the case of emotional distress, problems in terms of management behaviour of employees and superiors, and in the case of difficulties in terms of personal work attitude; Coaching for individuals seeking support by providing instruction for learning new patterns of thought and behaviour.
The contested services are the following:
Class 41: Education, entertainment and sports; Conferences, exhibitions andcompetitions; Conferences, exhibitions and seminars; Congresses; Organisation of seminars; Organising of education exhibitions; Arranging of competitions for training purposes; Competitions (Organization of-) [education or entertainment]; Arranging of competitions for cultural purposes; Arranging of lectures; Organisation of conferences and symposia in the field of medical science; Arranging of conventions for training purposes; Arranging of displays for training purposes; Arrangement of seminars for educational purposes; Conducting of instructional seminars; lnstruction in martial arts; Hire of teaching materials; Physical training services; Sports coaching services; Coaching; Fitness club services; Conducting of educational courses in science; Conducting courses, seminars and workshops; Conducting classes in exercise; Conducting classes in weight reduction; Conducting of educational seminars relating to medical matters; Running seminars in the field of oncology; Advisory services relating to education; Physical fitness consultation; Advice relating to medical training; Conducting of courses; Provision of courses of instruction relating to sport; Instruction courses relating to physical fitness; Providing continuing medical education courses; Instruction courses relating to health; Exercise classes; Providing continuing nursing education courses; Instruction courses relating to sporting activities; Teaching of life saving techniques; Interactive and distance learning courses and sessions provided on-line via a telecommunications link or computer network or provided by other means; Self-awareness courses [instruction]; Courses (Training -) relating to medicine; Tuition in sports; Developing educational manuals; Educational examination; Training services relating to speech; Training of sports teachers; Training of non-medical staff in the care of children; Training of sports players; Training services relating to fitness; Training services relating to first aid; Providing of training in the field of health care and nutrition; Training in the handling of food; Technical training relating to hygiene; Provision of medical instruction courses; Provision of educational health and fitness information; Providing instruction and equipment in the field of physical exercise; Provision of instruction for the disabled; Provision of educational services relating to health; Provision of educational services relating to fitness; Provision of gymnasium facilities; Operating of martial arts' schools; Provision of information relating to training; Information relating to sports education; Gymnastic instruction; Teaching of Chinese martial arts; Training in yoga; Physical education instruction; Teaching of meditation practices; Tuition in acupuncture; Tuition in chiropractics; Beauty arts instruction; Teaching of diet education; Tuition in medicinal herbalism; Tuition in herbalism; Tuition in hygiene; Tuition in homeopathy; Tuition in osteopathy; Medical training and teaching; Instruction in body grooming; Provision of educational services relating to diet; Educational services relating to physical fitness; Education services relating to meditation; Instruction in cosmetic beauty; Physical fitness instruction; Life coaching (training); Educational seminars relating to beauty therapy; Education services relating to ayurvedic magnetism; Physical fitness centre services; Physical-education services; Provision of exercise facilities; Sports and fitness; Gymnasium services relating to body building; Recreation and training services; Sporting activities; Providing health club and gymnasium services; Exercise [fitness] advisory services; Gym activity classes; Conducting fitness classes; Rental of sports grounds; Organization of sports competitions; Organising of sporting activities and of sporting competitions; Gymnasium club services; Sports club services; Sporting results services; Supervision of physical exercise; Provision of recreational events; Organisation of parties; Organising of sporting events, competitions and sporting tournaments; Entertainment services relating to sport; Leisure services; Provision of amusement facilities.
Class 44: Mental health services; Personality testing [mental health services]; Holistic psychotherapy; Psychological assessment services; Psychotherapy services; Psychological counseling; Speech and hearing therapy; Health centers; Health care relating to homeopathy; Health advice and information services; Consultation relating to bio-rhythms; Counselling relating to the social relief of medical ailments; Dietary guidance; Provision of information relating to nutrition; Stress management services; Speech therapy services; Music therapy services; Therapy services; Therapeutic treatment of the body; Medical advisory services; Services for the provision of medical care information; Medical advisory services; Medical evaluation services; Issuing of medical reports; Alternative medicine services; Conducting of medical examinations.
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 services in Class 41
The contested services are all related to education, training, entertainment, sport and cultural activities in different fields. They are identical to the opponent’s education; providing of training; entertainment; sporting and cultural activities either because they are identically contained in both lists (including synonyms) or because the opponent’s services include the contested services.
Contested services in class 44
The contested holistic psychotherapy; psychological assessment services; psychotherapy services; psychological counseling; stress management services; music therapy services; therapy services are all psychological and emotional supports for the mental well-being of a person by providing counseling, consultation, crisis intervention and strategies for managing mental stress. Psychological knowledge is not only applied to the assessment and treatment of mental health problems, it is also directed towards understanding and solving problems in several spheres of human activity, such as in family, work and school relationships. In the light of the above, these contested services are considered similar to a low degree to the opponent’s providing of training; coaching using coaching methods, in particular personal consultancy through coaching; support in the form of coaching in the case of school, learning and exam problems, parent-child relationships, career problems; individual coaching in the case of emotional distress, problems in terms of management behaviour of employees and superiors, and in the case of difficulties in terms of personal work attitude; coaching for individuals seeking support by providing instruction for learning new patterns of thought and behaviour. Even if the nature of the services under comparison is different - the contested services are health-care related while the opponent’s services in Class 41 are related to education - they can both provide, through different means, a support in cases of problems related to several areas of human relationships. Moreover they can be provided by the same entities and can target the same public.
All the other contested services do not have a close connection with services of the earlier right in Class 41. They differ in nature and purpose. Moreover they are not in competition with each other, they are not provided through the same channels and are not directed at the same consumers. Accordingly, these contested services are dissimilar to all the opponent’s services.
- 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 to a low degree are directed at the public at large and business customers with specific professional knowledge or expertise.
The degree of attention may vary from average (such as some “training services”) to high (such as some expensive ‘psychological coaching’ or ‘stress management services’ implying mental health issues), depending on the nature, on the price of the relevant services, how specialised they are and the frequency with which they are purchased.
- The signs
Ceus | ZEUS |
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case the Opposition Division considers appropriate to focus the comparison of the signs on the Spanish-speaking part of the public for which the pronunciation of the signs ‘Ceus’ and ‘ZEUS’ is identical, as will be shown below.
The earlier mark and the contested sign are word marks, each formed by a single four-letters word.
The contested sign, ‘ZEUS’, has a meaning for a relevant part of Spanish-speaking public and will be understood as referring to the sky and thunder god in ancient Greek religion. For the remaining part of the public the word ‘ZEUS’ will have no meaning.
The word ‘Ceus’ of the earlier mark does not exist as such in the Spanish language; however, given its aural identity to the word ‘Zeus’, it is reasonable to assume that it will be perceived by a substantial part of the public, who knows the meaning of ‘Zeus’, as a misspelling of this word and, hence, it will be also associated with the concept explained above. Another part of the public, for which ‘Zeus’ is meaningless, will not associate any meaning to the word ‘Ceus’.
The Opposition Division finds appropriate to proceed on the basis of that part of the public who understands the meaning of the word ‘Zeus’ and, therefore, associates the word ‘Ceus’ with this meaning.
Both words ‘ZEUS’ and ‘Ceus’ are distinctive since they are neither descriptive nor allusive with respect to the relevant services.
Moreover, since the marks in question are word marks consisting of a single term, they have no elements that could be considered visually more eye-catching (dominant) than other elements.
Visually, the signs coincide in the sequence of letters ‘*EUS’. These letters occupy the same position within the signs. They only differ in their first letters, ‘C’ in the earlier mark versus ‘Z’ in the contested sign.
Therefore, the signs are similar to a high degree.
Aurally, the signs coincide in the sound of the letters ‛EUS’. They also coincide in the sound of the first letter of the earlier sign, ‛C’, and of the first letter of the contested mark, ‘Z’, which in this case will be pronounced identically. Consequently, the signs are aurally identical.
Conceptually, bearing in mind the above considerations on the concept conveyed by the signs, the marks are conceptually identical in the view of that part of the Spanish public which will associate both marks with the god ‘Zeus’ from Greek Mythology.
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
The services are partly identical, partly similar to low degree and partly dissimilar.
The signs are visually similar to a high degree as they coincide in most of their letters, namely ‘*EUS’. The differing first letters, ‘C’ in the earlier mark versus ‘Z’ in the contested sign have an identical pronunciation and, as explained in the section c), the signs are conceptually identical for a substantial part of the Spanish public.
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). 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).
Taking into account the overall impressions of the signs, it is considered that the only difference, residing in the initial letters (‘C’ or ‘Z’) of the signs, is not sufficient to counteract the visual high similarity and the aural and conceptual identity (for a substantial part of the Spanish public) between them. Consequently, when encountering the contested sign, consumers (including those showing a higher than average degree of attention) will be led to believe that the identical services in Class 41 originate from the opponent or from an economically linked undertaking.
This is also true for the contested services which have been found similar to a low degree. In this regard, it should be mentioned that a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the signs and vice versa. Therefore the high degree of visual similarity and the aural and conceptual identity between the signs (for a substantial part of the Spanish public) is sufficient to offset the low similarity of the contested services and to find a likelihood of confusion on the part of the public with regard to these as well.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking 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 11 072 006. 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.
It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to a low degree to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
María Belén IBARRA DE DIEGO | Angela DI BLASIO | Pierluigi M. VILLANI |
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.