CANCELLATION No 12 293 C (INVALIDITY)

Equiom (Isle of Man) Limited, Jubilee Buildings, Victoria Street, IM1 2SH Douglas, Isle of Man, United Kingdom (applicant), represented by Wildbore & Gibbons LLP, Sycamore House, 5 Sycamore Street, EC1Y 0SG London, United Kingdom (professional representative)

a g a i n s t

Equium, S.L.N.E., Brusi, 102, Bajos 1ª, 08006 Barcelona, Spain (EUTM proprietor).

On 04/08/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 9 438 805 is declared invalid for some of the contested services, namely:

Class 35: Advertising; business management; business administration; office functions.

3. The European Union trade mark remains registered for all the remaining services, namely:

Class 35: Auctioneering; rental of vending machines.

Class 36: Insurance; financial transactions; monetary transaction services; real estate affairs.

Class 43: Restaurant services (food); temporary accommodation.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 9 438 805. The application is based on United Kingdom trade mark registration No 2 471 782. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the services of the marks are identical and similar and that the marks under comparison are visually and aurally highly similar. Therefore, it considers that there exists a likelihood of confusion on the part of the public.

The EUTM proprietor, despite having been duly notified of the invalidity application by the Office and invited to comment on it, did not submit any observations in response.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH 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 application is based are the following:

Class 35: Advertising, business management.

The contested services are the following:

Class 35: Advertising; business management; business administration; office functions.

Class 36: Insurance; financial transactions; monetary transaction services; real estate affairs.

Class 43: Restaurant services (food); temporary accommodation.

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.

As a preliminary remark, it should be noted that the first language indicated by the proprietor of the contested European Union trade mark No 9 438 805 is Spanish, which has been used as the source language for the translation of the services in English. The Cancellation Division notes that the terms in Spanish ‘operaciones financieras; operaciones monetarias’ are translated as ‘financial affairs; monetary affairs’ in the class heading of Class 36 in the ninth edition of the Nice Classification, and the Spanish term ‘servicios de restauración (alimentación)’ is translated as ‘services for providing food and drink’ in the class heading of Class 43 in the ninth edition of the Nice Classification. The same terms in the Spanish version of the services of the contested European Union trade mark No 9 438 805 have been translated in English as ‘financial transactions; monetary transaction services’ (Class 36) and ‘restaurant services (food)’ (Class 43), respectively. Therefore, notwithstanding the slight differences between the English wording of the contested services and the class headings in English of Classes 36 and 43 of the ninth edition of the Nice Classification, the Cancellation Division considers them to coincide.

Consequently, the contested European Union trade mark No 9 438 805 is registered for the entire class headings of Classes 35, 36 and 43 of the Nice Classification. It was filed on 12/10/2010. According to Communication No 2/12 of the President of the Office of 20/06/2012, for European Union trade mark registrations filed or registered before 21/06/2012, the Office considers that the EUTM proprietor’s intention was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the ninth edition.

Consequently, in order to take account of the entire alphabetical list in Classes 35, 36 and 43 of the contested EUTM, the Cancellation Division will compare the services of the earlier mark with both (i) the general indications specified and (ii) any items in the alphabetical lists that do not fall within the natural and usual meaning of these general indications.

In the case of Class 35, the Cancellation Division has identified the following items in the alphabetical list covered by the contested EUTM that do not fall within the natural and usual meaning of these general indications:

Class 35: Auctioneering; rental of vending machines.

Therefore, for this class, both the general indications specified and the items listed above will be compared.

In the case of Classes 36 and 43 the Cancellation Division has not identified any items in the alphabetical lists covered by the contested EUTM that fall outside of the natural and usual meaning of the general indications of the class headings. Therefore, for these classes, only the general indications will be compared.

Contested services in Class 35

The contested advertising; business management are also contained in the applicant’s list of services. Therefore, they are identical.

The applicant’s business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the management of a business, such as how to efficiently allocate financial and human resources; improve productivity; increase market share; deal with competitors; reduce tax bills; develop new products; communicate with the public; do marketing; research consumer trends; launch new products and how to create a corporate identity; etc.

The contested business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation's board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by inter alia employment agencies, auditors and outsourcing companies.

The line between business management and business administration is blurred, and it is sometimes very difficult to clearly distinguish between them. They both fall under the broader category of business services. As a general rule it can be said that business administration services are performed in order to organise and run a business, whereas business management follows a higher approach aimed at setting the common goals and the strategic plan for a commercial enterprise. These services, therefore, serve the same purpose and may be provided by the same specialised companies to the same relevant public. Therefore, the contested business administration and the applicant’s business management are considered to be similar.

The contested office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders as well as support services, such as the rental of office machines and equipment. These services and the applicant’s business management may be provided by the same companies to the same relevant public. Therefore, they are similar to a low degree.

The contested auctioneering refers to the activity of arranging the bidding for and selling of goods for others. They can be defined as the public sale of goods or property, in particular sales in which prospective purchasers bid against each other until the highest price is reached. The contested rental of vending machines is a specific service provided by specialists in order to allow other entrepreneurs to be involved in machine-operated retail sales without purchasing the vending machine. There is no relevant point of contact between these contested services and the applicant’s services in Class 35. This is because their purposes and natures are different, and they are not usually provided by the same undertakings. They are not complementary or in competition with each other. Therefore, these services are dissimilar.

Contested services in Class 36

The contested services in Class 36 include financial services usually provided by financial and banking institutions. They also cover insurance services, consisting of providing monetary compensation and/or assistance when a specified contingency occurs, such as death, accident, sickness, contract failure and, in general, any event capable of causing damages. The contested real estate affairs comprise real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of information related thereto. This mainly involves finding property, making it available for potential buyers and acting as an intermediary.

The applicant’s services in Class 35 include advertising services, which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In doing so, many different means and products might be used. These services are provided by specialised companies that research their client’s needs, provide all the necessary information and advice for the marketing of their goods and services, and create a personalised strategy for advertising their goods and services through newspapers, websites, videos, the internet, etc. The applicant’s services also cover business management services intended to provide businesses with the necessary support to acquire, develop and expand market share.

The services under comparison have different natures and purposes and they are normally rendered by different undertakings through different distribution channels. The applicant’s services aim to support or help other businesses to do or improve their business. Consequently, they are professional business-to-business services with the aim of assisting other companies with their commercial activities. It is very unlikely that financial, insurance and real estate companies and institutions would render such business-related services. Even if financial services can apply some of the principles of business management and consultancy, this is insufficient for a finding of similarity. The services are neither in competition nor complementary in such a way that one would be indispensable or important for the other. Therefore, the services under comparison are dissimilar.

Contested services in Class 43

The contested services in Class 43 are services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation. These services are not similar to the applicant’s advertising and business management services in Class 35, as they have different purposes and natures, they use different distribution channels, they are not rendered by the same companies and they are not complementary or in competition with each other. Therefore, these services are dissimilar.

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 (to different degrees) are directed at business customers, such as companies seeking business advice and assistance in how to be successful, expand their business activities or take advantage of business opportunities. Their degree of attention is considered to vary from average to higher than average, depending on the exact nature of the services and the (potential) financial consequences for them.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the United Kingdom.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark, consisting of the verbal element ‘Equiom’, depicted in rather standard title case letters in gradient green colour.

The contested mark is a figurative mark, containing the word ‘equium’, depicted in rather standard lower case black letters. A stylised tree in black is depicted at the beginning of the mark, starting at the first letter ‘e’, which appears in the middle of its trunk.

The verbal elements of the marks under comparison will not be associated with any meaning by the relevant public. The figurative element in the contested sign, depicting a tree, will be perceived as such. All elements of the marks have a normal degree of distinctiveness, as they are not descriptive or of limited distinctiveness for the relevant services for the public in the relevant territory; they do not describe or allude to any of their essential characteristics.

Neither of the marks has any elements which could be considered clearly more distinctive or more dominant (visually eye catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘EQUI*M’, present in both marks. It should be noted that the first four common letters of the marks, ‘EQUI’, are contained in the beginning of the signs, which is the part that consumers generally tend to focus on when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

They differ in their fifth letters, ‘O’ in the earlier mark and ‘U’ in the contested sign. They also differ in the graphical depictions and overall stylisation of the marks, which is not particularly striking, and in the figurative element, depicting a tree, in the contested mark.

It should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This principle is fully applicable to the present case, in which the relevant public will clearly read and pronounce the verbal element ‘equium’ in the contested sign and will readily use it to refer to the mark.

Therefore, considering all the above, the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘EQUI*M’, present identically in both signs, and differs in the sound of their fifth letters, ‘O’ in the earlier mark and ‘U’ in the contested sign. The marks are composed of the same number of syllables and, therefore, they have the same rhythm.

Therefore, the signs are aurally similar to a high degree.

Conceptually, as seen above, the verbal elements of the marks will not be associated with any meanings by the relevant public. The figurative element in the contested sign, depicting a tree, will be perceived as such.

Consequently, since one of the signs (the earlier mark) will not be associated with any meaning, the signs are not 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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 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

The appreciation of the 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 (eighth recital of the CTMR). 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).

As seen above, the services under comparison are partly identical, partly similar (to different degrees) and partly dissimilar. The signs are visually similar to an average degree and aurally similar to a high degree on account of their common letters ‘EQUI*M’ and their similar overall structure and aural rhythm. The different letters of the marks are placed in the last parts of the verbal elements of the signs where they are more likely to go unnoticed by consumers, who only rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. The graphical depictions and figurative elements of the marks are not sufficient to obscure or camouflage the highly similar verbal elements, ‘Equiom’ in the earlier mark and ‘equium’ in the contested sign, which the relevant consumer will be able to read and pronounce and will readily use to refer to the marks.

All the aforementioned findings lead to the conclusion that the marks convey similar overall impressions.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s United Kingdom trade mark registration No 2 471 782.

Pursuant to the above, the contested trade mark must be declared invalid for the services found to be identical or similar (to different degrees) 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 application based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation 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 Cancellation Division will decide a different apportionment of costs.

Since the cancellation 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 Cancellation Division

Begoña URIARTE VALIENTE

Alexandra APOSTOLAKIS

María Belén IBARRA DE DIEGO

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.