Introduction
General Court: Orders and Judgments on appeals against decisions of the EUIPO
T-575/18; The Inner Circle / InnerCircle; Shore Capital International v EUIPO; Judgment of 9 September 2019; EU:T:2019:580; Language of the case: EN
RESULT: Action dismissed
KEYWORDS: Dissimilarity of the goods and services
Facts
The applicant designated the European Union in an international registration (IR) for the figurative mark ‘The Inner Circle’ for, inter alia, the services arranging and organization of leisure events and meetups at high-end venues, in order to bring people together for the sole purpose of matchmaking and dating in Class 41.
An opposition based on the earlier word mark InnerCircle registered for services in Classes 35- 38 and 42 and in particular consultancy services in the field of advertising or commercial strategies aimed at other business entities in Class 35 was filed pursuant to Article 8(1)(b) EUTMR. The Opposition Division (OD) rejected the opposition on the ground that the services were dissimilar.
The opponent filed an appeal. The Board of Appeal (BoA) dismissed the appeal. The services were held to be dissimilar as they had different purposes and intended uses, used different distribution channels and could not be considered as complementary or in competition with each other.
The opponent filed an action before the General Court (GC) relying on a single plea in law: infringement of Article 8(1)(b) EUTMR. It claimed that, since the services were very similar and the marks ‘almost identical’, there was a likelihood of confusion. The GC dismissed the appeal.
Substance
INFRINGEMENT OF ARTICLE 8(1)(b) EUTM. The relevant public is the general public in the European Union with a higher-than-average level of attention (para. 28). COMPARISON OF THE SERVICES. Notwithstanding the fact that the Nice Classification was adopted for exclusively administrative purposes, the explanatory notes on the different classes of that classification are relevant in determining the nature and purpose of the goods and services under comparison (para. 38).
Having regard to the explanatory notes on Classes 35 and 41, the services under comparison are of a different nature and purpose as the services for which the earlier mark is protected were principally consultancy services in the field of advertising or commercial strategies aimed at other business entities, whereas the services for which protection was sought have the sole purpose of dating and matchmaking and the very concrete aim of bringing people together. The services cannot be considered complementary or in competition with each other, since they involve different market segments, are provided by different undertakings and use different distribution channels (paras 35- 42).
The services for which protection is sought in Class 41 and the services for which the earlier mark is protected in Class 35 are dissimilar as they have a different purpose and intended use, cannot be considered as complementary or in competition with each other, and use different distribution channels (para. 45).
Likelihood Of Confusion
In the absence of similarity between the services, one of the cumulative conditions required by Article 8(1)(b) EUTMR is lacking. Accordingly, there is no likelihood of confusion.
