OPPOSITION No B 2 196 783

Continental Exchange Solutions, Inc., 13850 Cerritos Corporate Drive, Suite E, 90703 Cerritos, United States (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

International Online Transactions OÜ, Punane tn 24a, 13619 Tallinn, Estonia (applicant)

On 24/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 196 783 is partially upheld, namely for the following contested services:

Class 35: publication of publicity texts, publicity texts (publication of-), publicity texts (writing of-), texts (writing of publicity-), writing of publicity texts, invoicing

2. European Union trade mark application No 11 553 401 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 11 553 401 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 2 149 565 for the word mark RIA, European Union trade mark registration No 1 270 842 for the word mark RIA ENVIA, European Union trade mark registration No 2 386 761 for the word mark RIA FINANCIAL SERVICES and European Union trade mark registration No 1 271 279 for the word mark RIA EXPRESS. The opponent invoked Articles 8(1)(b) and (5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, however, the applicant does not claim to have due cause for using the contested mark.

a) Reputation of the earlier trade marks

According to the opponent, the earlier trade marks as indicated above have a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 07/02/2013. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely

European Union trade mark registrations, No 2 149 565

Class 16: Telephone calling cards, not magnetically encoded, and printed matter.

Class 36: Financial services, electronic funds transfer services, electronic payment, electronic processing and transmission of bill payment data; money order services; credit cards and services.

European Union trade mark registration No 2 386 761

Class 16: Telephone calling cards, credit cards and printed matter.

Class 36: Financial services, electronic funds transfer services, electronic payment, electronic processing and transmission of bill payment data; money transfer, check cashing, foreign currency exchange and money order services; credit card services.

European Union trade mark registration No 1 270 842

Class 16: Telephone calling cards, not magnetically encoded.

Class 36: Financial services, electronic funds transfer services, electronic payment, electronic processing and transmission of bill payment data; money order services; credit card services.

European Union trade mark registration No 1 271 279

Class 16: Telephone calling cards, not magnetically encoded.

Class 36: Financial services, electronic funds transfer services, electronic payment, electronic processing and transmission of bill payment data; money order services; credit card services.

The opposition is directed against the following services:

Class 35: Advertising; business management; business administration; office functions; providing online marketplaces for sellers and buyers of goods and services, promoting the goods and services of others; Accounting; accounts (drawing up of statements of-); administration (commercial -) of the licensing of the goods and services of others; administrative processing of purchase orders; advertising; advertising agencies; advertising by mail order; advertising material (updating of-); advertising matter (dissemination of -); advertising space (rental of-); advice for consumers (commercial information and -) [consumer advice shop]; analysis (cost price - ); answering (telephone - ) for unavailable subscribers; appraisals (business -); arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; artists (business management of performing -); assistance (business management-); auctioneering; auditing; bill-posting; book-keeping; business appraisals; business consultancy (professional - ); business information; business inquiries; business investigations; business management and organization consultancy; business management assistance; business management consultancy; business management of hotels; business management of performing artists; business management of sports people; business organization consultancy; commercial information and advice for consumers [consumer advice shop]; commercial or industrial management assistance; communication media (presentation of goods on - ), for retail purposes; comparison services (price -); compilation of information into computer databases; compilation of statistics; computer databases (compilation of information into - ); computer databases (systemization of information into - ); consultancy (professional business -); consumers (commercial information and advice for-) [consumer advice shop]; cost price analysis; data search in computer files for others; demonstration of goods; direct mail advertising; dissemination of advertising matter; distribution of samples; document reproduction; economic forecasting; efficiency experts; employment agencies; exhibitions (organization of -) for commercial or advertising purposes; fashion shows for promotional purposes (organization of-); file management (computerized -); forecasting (economic -); hotels (business management of - ); import-export agencies; industrial management assistance (commercial or-); information agencies (commercial -); information (business-); inquiries (business -); investigations (business-); invoicing; management assistance (commercial or industrial -); management (computerized file -); management consultancy (personnel -); marketing; marketing research; marketing studies; modelling for advertising or sales promotion; news clipping services; newspaper subscriptions (arranging - ) for others; office machines and equipment rental; on-line advertising on a computer network; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; outdoor advertising; outsourcing services [business assistance]; payroll preparation; personnel management consultancy; personnel recruitment; photocopying services; polling (opinion-); presentation of goods on communication media, for retail purposes; price comparison services; processing (administrative -)of purchase orders; processing (word -); procurement services for others [purchasing goods and services for other businesses]; production of advertising films; psychological testing for the selection of personnel; public relations; publication of publicity texts; publicity; publicity agencies; publicity columns preparation; publicity material rental; publicity texts (publication of-); publicity texts (writing of-); purchase orders (administrative processing of-); radio advertising; radio commercials; recruitment (personnel -); relocation services for businesses; rental of advertising space; rental of advertising time on communication media; rental of photocopying machines; rental of vending machines; rental (office machines and equipment-); rental (publicity material - ); reproduction (document-); research (business -); retail purposes (presentation of goods on communication media, for -); sales promotion for others; samples (distribution of-); secretarial services; shop window dressing; shorthand; sponsorship search; statements of accounts (drawing up of-); statistics (compilation of-); subscriptions (arranging -) to telecommunication services for others; subscriptions (arranging newspaper-) for others; systemization of information into computer databases; tax preparation; telecommunication services (arranging subscriptions to -)for others; telemarketing services; telephone answering for unavailable subscribers; television advertising; television commercials; testing (psychological -) for the selection of personnel; texts (writing of publicity-); trade fairs (organization of-) for commercial or advertising purposes; transcription; typing; updating of advertising material; vending machines (rental of-); word processing; writing of publicity texts.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 14/11/2018, the opponent submitted the following evidence:

 Exhibit 1: excel sheet on account activities ‘Pago automatic: Visa’ or ‘Pago rechazado: Visa’ dated between January 2012 to December 2014.

 Exhibit 2: Power point presentation issued by the opponent showing pictures of business premises with the ‘RIA’ trade mark on them and charts related to different marketing campaigns dated between 2012 - 2014.

 Exhibit 3: twelve invoices dated between January and December 2012 issued by Google Ireland Ltd to Envia Telecomunicationes with regard to AdWords.

 Exhibits 4-5: twenty four invoices dated between 2013 and 2014 issued by Google Ireland to Envia Telecomunicationes with regard to AdWords.

 Exhibits 6 to 13 and from 19 to 23 and from 25 to 27: pictures of the business premises’ exterior showing the trade mark ‘RIA’ and some invoices regarding the work carried out in these business premises.

 Exhibit 14: excel sheet on correspondents’ banners.

 Exhibit 15: excel sheet on banner dated 2012 as stated by the opponent.

 Exhibit 16: excel sheet on Henry Banners. However, the sign does not appear and there is not a link to the relevant services. The following data appear on the table: name, addresses, which are all in Spain, telephone numbers and other numbers which is not possible to understand what they correspond to.

 Exhibit 17: excel sheet on the signage of the business premises of the agents dated 2011 in Spain.

 Exhibit 18: excel sheet on stock banners, dated February 2011.

 Exhibit 24: two invoices from the company ‘Juvasol Rotulos Recreativos’ pertaining to communication work for agent ES9818 in San Isidro de Nijar and communication work for agent ES4272 897 in Granada.

 Exhibit 28: a printout of the website www.euronetworldwide.com containing information on awards won by a company in relation to money transfer services.

 Exhibit 29: printouts from different social media describing the story of the company ‘Ria’ which offers, inter alia, bill payment and check cashing services. These documents are dated in 2018.

 Exhibit 30: a list of the numerous trade marks registered by the opponent containing the word ‘RIA’ and three US certificates of trade mark registrations containing the word element ‘RIA’, dated 17/01/2012, 8/11/2011 and 01/11/2011 respectively.

 Exhibit 31: a printout of a webpage indicating that the money transfers are possible in 350,000 locations in 149 countries, among them, Romania and United Kingdom and a screenshot of a webpage explaining the story of the company ‘RIA’ related to money transfer services. Both dated 2018.

 Exhibit 32: an article published on the website www.wikipedia.org with the title ‘Ria Money Transfer’ explaining the history of the company.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

None of the documents refer to the recognition of the earlier trade marks by the relevant end consumers, nor was evidence about the market share of the opponent’s goods filed. There was no information on the market as a whole that would allow the Opposition Division to reach a conclusion on the market share held by the opponent. In particular, some of the evidence does not concern the relevant territory (exhibits 14 and 28) or are undated (pictures in exhibits 6 to 13, 16, 19 to 23, 25 to 27). Furthermore, in some evidence it is not possible to link the content of the documents to the earlier trade marks or the goods and services in question (exhibits 1, 3, 4, 5, 15, 17, 18 and 24).

In any event, the PowerPoint presentation in Exhibit 2 shows some promotional efforts. However, the evidence emanates from the opponent itself and has thus little probative value. Additionally, it was not sufficient to reach the threshold for proving reputation, as there is no information about, or evidence of, the extent of the distribution of these promotional materials among the relevant public.

In the light of all above, there is no true information about the awareness of the trade marks in the relevant territory, the intensity of use or the size of the investment made by the undertaking in promoting the marks. All these factors have to be taken into account in order to determine whether or not the marks concerned enjoy a reputation from the standpoint of the consumers targeted by the opponent. The opponent could have filed more supporting documentation, for example, declarations made by independent parties attesting as to the reputation of the mark, verified or verifiable data as to the market share held, opinion polls and market surveys, certifications and awards, invoices and other commercial documents, audits and inspections, etc. However, since the opponent did not submit any such documentation, it cannot be proven that the marks have a higher than normal degree of distinctiveness.

As a result, the evidence does not demonstrate the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

As to the invoked well-known marks in each of the Member States, for the sake of completeness, the Opposition Division points out that the evidence submitted by the opponent as shown above does not even prove that the unregistered earlier marks, ‘RIA’, ‘RIA ENVIA’, ‘RIA EXPRESS’ and ‘RIA FINANCIAL SERVICES’ are well-known within the meaning of Article 8(2)(c) EUTMR, as claimed in the notice of opposition. Even though the terms ‘well-known’ (a traditional term used in Article 6bis of the Paris Convention) and ‘reputation’ denote distinct legal concepts, there is a substantial overlap between them, as shown by a comparison of the way well-known marks are defined in the WIPO Recommendations with the way reputation was described by the Court in its judgment of 14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 22 (concluding that the different terminology is merely a ‘…nuance, which does not entail any real contradiction …’). In practical terms, the threshold for establishing whether a trade mark is well-known or enjoys reputation is usually the same. This has also been confirmed by case-law. In its judgment of 22/11/2007, C-328/06, Fincas Tarragona, EU:C:2007:704, the Court qualified the notions of ‘reputation’ and ‘well-known’ as kindred notions (‘notions voisines’), underlining in this way the substantial overlap and relationship between them (para. 17). See also the judgment of 11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 56-57. Therefore, failure on this condition means these earlier rights must be set aside.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2149565 for the word mark RIA and European Union trade mark registration No 2386761 for the word mark RIA FINANCIAL SERVICES.

a) The goods and services

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

European Union trade mark registrations, No 2 149 565

Class 16: Telephone calling cards, not magnetically encoded, and printed matter.

Class 36: Financial services, electronic funds transfer services, electronic payment, electronic processing and transmission of bill payment data; money order services; credit cards and services.

European Union trade mark registration No 2 386 761

Class 16: Telephone calling cards, credit cards and printed matter.

Class 36: Financial services, electronic funds transfer services, electronic payment, electronic processing and transmission of bill payment data; money transfer, check cashing, foreign currency exchange and money order services; credit card services.

The contested services are the following:

Class 35: Advertising; business management; business administration; office functions; providing online marketplaces for sellers and buyers of goods and services, promoting the goods and services of others; Accounting; accounts (drawing up of statements of-); administration (commercial -) of the licensing of the goods and services of others; administrative processing of purchase orders; advertising; advertising agencies; advertising by mail order; advertising material (updating of-); advertising matter (dissemination of -); advertising space (rental of-); advice for consumers (commercial information and -) [consumer advice shop]; analysis (cost price - ); answering (telephone - ) for unavailable subscribers; appraisals (business -); arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; artists (business management of performing -); assistance (business management-); auctioneering; auditing; bill-posting; book-keeping; business appraisals; business consultancy (professional - ); business information; business inquiries; business investigations; business management and organization consultancy; business management assistance; business management consultancy; business management of hotels; business management of performing artists; business management of sports people; business organization consultancy; commercial information and advice for consumers [consumer advice shop]; commercial or industrial management assistance; communication media (presentation of goods on - ), for retail purposes; comparison services (price -); compilation of information into computer databases; compilation of statistics; computer databases (compilation of information into - ); computer databases (systemization of information into - ); consultancy (professional business -); consumers (commercial information and advice for-) [consumer advice shop]; cost price analysis; data search in computer files for others; demonstration of goods; direct mail advertising; dissemination of advertising matter; distribution of samples; document reproduction; economic forecasting; efficiency experts; employment agencies; exhibitions (organization of -) for commercial or advertising purposes; fashion shows for promotional purposes (organization of-); file management (computerized -); forecasting (economic -); hotels (business management of - ); import-export agencies; industrial management assistance (commercial or-); information agencies (commercial -); information (business-); inquiries (business -); investigations (business-); invoicing; management assistance (commercial or industrial -); management (computerized file -); management consultancy (personnel -); marketing; marketing research; marketing studies; modelling for advertising or sales promotion; news clipping services; newspaper subscriptions (arranging - ) for others; office machines and equipment rental; on-line advertising on a computer network; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; outdoor advertising; outsourcing services [business assistance]; payroll preparation; personnel management consultancy; personnel recruitment; photocopying services; polling (opinion-); presentation of goods on communication media, for retail purposes; price comparison services; processing (administrative -)of purchase orders; processing (word -); procurement services for others [purchasing goods and services for other businesses]; production of advertising films; psychological testing for the selection of personnel; public relations; publication of publicity texts; publicity; publicity agencies; publicity columns preparation; publicity material rental; publicity texts (publication of-); publicity texts (writing of-); purchase orders (administrative processing of-); radio advertising; radio commercials; recruitment (personnel -); relocation services for businesses; rental of advertising space; rental of advertising time on communication media; rental of photocopying machines; rental of vending machines; rental (office machines and equipment-); rental (publicity material - ); reproduction (document-); research (business -); retail purposes (presentation of goods on communication media, for -); sales promotion for others; samples (distribution of-); secretarial services; shop window dressing; shorthand; sponsorship search; statements of accounts (drawing up of-); statistics (compilation of-); subscriptions (arranging -) to telecommunication services for others; subscriptions (arranging newspaper-) for others; systemization of information into computer databases; tax preparation; telecommunication services (arranging subscriptions to -)for others; telemarketing services; telephone answering for unavailable subscribers; television advertising; television commercials; testing (psychological -) for the selection of personnel; texts (writing of publicity-); trade fairs (organization of-) for commercial or advertising purposes; transcription; typing; updating of advertising material; vending machines (rental of-); word processing; writing of publicity texts.

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 invoicing is similar to a high degree to the electronic processing and transmission of bill payment data equally designated by both earlier marks in Class 36. Both services consist of preparing and communicating payment data. They have the same nature and purpose. Furthermore, they coincide in the public, producer and distribution channels.

The contested publication of publicity texts, synonym of publicity texts (publication of-), publicity texts (writing of-), synonym of texts (writing of publicity-) and writing of publicity texts, despite the fact that these services relate to publicity text, are primarily a service of publication and they have, consequently, some link with the opponent’s printed matter in Class 16. The opponent’s printed matter covered by the earlier mark consists not only of text and images but also of publicity text. It is, therefore, very likely that the target public may think that the undertaking in charge of the publication of a magazine is the same as the one in charge of the enclosure of publicity text in a magazine. Furthermore, they may coincide in producer and distribution channels. Consequently, these services are at least similar to a low degree.

The opponent’s goods in Class 16 are telephone and credit card and printed matters whereas the opponent’s services in Class 36 are financial and monetary affairs. The remaining contested services in Class 35 encompass a variety of advertising and business services or related to them. The goods and services under comparison do not have any points of contact that could justify finding a level of similarity between them. They differ in their nature, purpose and method of use. They have different origins and distribution channels and are not in competition.

Therefore, the remaining contested services in Class 35 are dissimilar to all the goods and services for which the earlier marks are registered in Classes 16 and 36.

b) 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 goods and services found to be similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high for some services in Class 35 and 36, such as invoicing because of their specialized nature.

c) The signs

RIA European Union trade mark registration No 2149565 (earlier trade mark 1) RIA FINANCIAL SERVICES European Union trade mark registration No 2386761 (earlier trade mark 2)
Earlier trade marks	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. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public for the reasons explained below.

The verbal expression ‘FINANCIAL SERVICES’ of the earlier mark 2, it will be understood by the relevant public as a meaningful and descriptive expression of the nature of the opponent’s services and part of the goods. It is therefore non-distinctive. The element ‘auto’ is meaningful for the relevant public and can be perceived as an abbreviation of the words ‘automobile’ or ‘automatic’. Whatever the meaning the relevant public will attribute to the word ‘auto’, bearing in mind the relevant goods and services, the element is considered to be rather weak for them. In view of the foregoing, the similarities between the signs will be higher for this part of the public.

The verbal element ‘RIA’ is meaningless for the relevant part of the public. Furthermore, it is distinctive for the goods and services in question.

As regards the figurative elements in the contested sign, 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 analyze signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, the dark-blue/orange rectangular label will not be paid much attention to, as it is a banal and simple geometric shape, while the star shape may be perceived as a laudatory term which emphasizes the quality of the goods (15/02/2017, T-568/15, 2 STAR, EU:T:2017:78, § 72; 21/01/2010). As such, these elements lose impact when assessing the signs.

Visually, the signs coincide in the verbal element ‘RIA’ However, the contested sign is further differentiated by the verbal element ‘auto’ which has no counterpart in the earlier signs. The earlier mark 2 and the contested sign differ also in the verbal expression ‘FINANCIAL SERVICES’ which is present only in the earlier mark 2. In any event, as already mentioned, the elements ‘auto’ and ‘FINANCIAL SERVICES’ are weak and non-distinctive, thus, their impact is reduced. The signs differ in the slight stylization and figurative elements of the contested sign. However they will have a limited impact on the comparison for the reasons already given above.

Therefore, the earlier marks and the contested sign are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘RIA’ presents identically in all signs. The pronunciation between the earlier mark 1 and the contested sign differs in the sound of the verbal elements ‘auto’ present only in the contested sign. The pronunciation between the earlier mark 2 and the contested sign differs in the sound of the verbal elements ‘auto’ present only in the contested sign and of ‛FINANCIAL SERVICES’ which have no counterpart in the contested sign.

Therefore, the earlier marks and the contested sign are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘auto’ and of the star in the contested sign as explained above, the earlier mark 1 has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. Furthermore, as to the earlier mark 2 and the contested sign, they will be associated with dissimilar meaning, as explained above. Therefore, they are conceptually not similar.

d) Distinctiveness of the earlier mark

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

According to the opponent, the opponent claimed that its marks enjoy high degree of distinctiveness by virtue of reputation.

However, having examined the material listed above under article 8(5) EUTMR, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness by virtue of reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) 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 present case, some of the goods and services are similar to varying degrees and they target the general public and professional public. On the contrary, some of the goods and services are dissimilar. The degree of attention varies from average to high.

The earlier marks have a normal degree of distinctiveness.

The earlier marks and the contested sign are visually and aurally similar to an average degree. Furthermore, conceptually, the signs are dissimilar for the relevant public.

In the present case, the similarities are found in the verbal element ‘RIA’ present in all the signs in question, which is the element with greater weight. Indeed, as a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T 519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T 260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T 179/11, Seven Summits, EU:T:2012:254, § 26). Further, the differences between the signs lie in less or even non-distinctive elements. Therefore, these elements have less impact on the average consumer and are not sufficient to hold the signs apart.

Considering all the above, there is a likelihood of confusion on the part of the English- speaking part of the public. 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 partly well founded on the basis of the opponent’s European Union trade mark registration No 2 149 565 and European Union trade mark registration No 2 386 761. It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to a high degree and at least to a low degree to those of the earlier trade marks.

The rest of the contested services are dissimilar. As similarity of 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.

The opponent has also based its opposition on the following earlier rights:

 European Union trade mark registration No 1 270 842 for the word mark RIA ENVIA.

 European Union trade mark registration No 1 271 279 for the word mark RIA EXPRESS.

Since these marks cover a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The Opposition Division

Vanessa PAGE

Birgit FILTENBORG

Riccardo RAPONI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.