OPPOSITION No B 2 480 039

Advocard Rechtsschutzversicherung AG, Besenbinderhof 43, 20097 Hamburg, Germany (opponent), represented by Uexküll & Stolberg Partnerschaft von Patent- und Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional representative)

a g a i n s t

Milan Chovanec, Na Podstráni 1283, 024 01 Kysucké Nové Mesto, Slovakia, and Roman Chrappa, Jaseňová 3220/18, 010 01 Žilina, Slovakia (applicants).

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

DECISION:

1. Opposition No B 2 480 039 is upheld for all the contested services.

2. European Union trade mark application No 13 294 111 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 294 111. The opposition is based on European trade mark registration No 10 126 969. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

On 22/07/2015 the applicants were given a new time limit to submit their observations in reply to the opposition ending on 03/10/2015. On 13/10/2015, that is, after the expiry of the time limit, the Office received a submission of the applicants. The parties were informed that in accordance with Rule 20(2), (3) and (4) CTMIR this document will not be taken into account being belated. In their letter of 09/12/2015 the applicants replied that said document was sent on 30/09/2015 and therefore ‘submitted‘ in time and that it should be taken into account. However, it must be reminded that where the Office sets a time limit in a notification to submit evidence or observations it is only the date of actual receipt at the Office which counts and not the date on which the document was sent (see also Rule 72(1) EUTMIR).

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: The bringing together and Systematic ordering of data in databases, Updating and maintenance of data in computer databases; Providing of business and commercial information; Arranging of commercial and business contacts, also provided via the Internet, in particular in the field of claims management.

Class 36: Insurance; Arranging of insurance; Financial affairs; Issuing of credit cards.

Class 38: Collection and delivery of messages.

Class 45: Legal consultancy; Legal research; Legal services.

The contested services are the following:

Class 35: Compilation of information into computer databases; Systematic ordering of information in computer databases.

Class 38: Providing access to databases.

Class 42: Recovery of computer data; Maintenance of software; Upgrading and updating of computer software; Provision of software via the Internet.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The terms ‘also‘ and ‘in particular’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 35

Systematic ordering of information in computer databases is identically contained in both lists of goods and services (including synonyms). The same applies for the contested compilation of information into computer databases which is a mere synonym for the opponent’s the bringing together of data in databases. Therefore, the services are identical.

Contested services in Class 38

The contested providing access to databases overlaps with the opponent’s collection and delivery of messages since electronic messaging services are often stored in specific databases to which the sender and/or recipient has access. Therefore, they are identical.

Contested services in Class 42

The contested recovery of computer data; maintenance of software; upgrading and updating of computer software; provision of software via the Internet are similar to a low degree to the opponent’s collection and delivery of messages as they have the same purpose. Furthermore, they can coincide in producer and distribution channels.

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 a low degree 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.

3. The signs

Advo
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 finds it appropriate to focus the comparison of the signs on the Spanish- and Greek-speaking part of the relevant public.

The earlier mark is a word mark and in the case of word marks it is the word as such that is protected and not its written form. Therefore, it is immaterial if it is written in upper- or lower-case letters.

The contested sign is a figurative mark containing the word element ‘ADVO’ in standard upper-case letters followed by the section sign ‘§”, all depicted in white colour and with a velvet marking.

Both marks have no elements that could be considered clearly more distinctive than other elements or that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘ADVO’. They differ in the presence of the section sign and the graphical stylization of the contested sign.

The first part of the contested sign is identical to the earlier mark. Consumers generally tend to focus on the first element of a sign 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. Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ADVO’, present identically in both signs. The vast majority of the relevant public will perceive the section sign as a typographical character used to refer to a section of a text. However, since it is not followed by a number it will most probably not be pronounced. Therefore, the signs are identical as regards this part of the public. However, it cannot be excluded that a part of the relevant public will perceive the symbol as a kind of stylized letter ‘S’ and will pronounce it accordingly. As regards this part of the public, the signs are highly similar.

Conceptually, while the majority of the public in the relevant territories will perceive the section sign in the contested mark as a typographical character, the remaining part of the contested sign as well as the earlier sign lack any meaning in that territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the rest of the public which will perceive the section sign rather as the letter ‘S’ none of the signs has any meaning and a conceptual comparison is not possible.

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 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.

5. Global assessment, other arguments and conclusion

The signs are visually and aurally at least highly similar. The services are partly identical and partly similar to a low degree.

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).

The graphical differences in the contested sign (colour, typeface of the letters) are of a standard nature and not very striking. Furthermore, the earlier sign is a word mark which is protected for the word as such regardless its typographical appearance. The earlier sign is entirely reproduced in the contested mark which only differs in the presence of the section sign ‘§’, which however, is in the end and will therefore have a lesser impact on the overall impression of the contested sign. Consequently, the Opposition Division considers that the differences between the marks are not sufficient to exclude a likelihood of confusion. Therefore, a significant part of the public may believe that the identical and similar services come from the same or at least economically-linked undertakings.

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 the high degree of similarity between the signs outweighs the low similarity of part of the services.

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and Greek-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 well founded on the basis of the opponent’s trade mark registration No 10 126 969. It follows that the contested trade mark must be rejected for all the contested services, even the ones which are similar to a low degree.

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 applicants are the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Beatrix STELTER

Konstantinos MITROU

Karin KUHL

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.