OPPOSITION No B 2 795 238

Dewaele Vastgoed Groep CVBA, Vlamingstraat 62, 8000, Bruges, Belgium (opponent), represented by K.O.B. N.V., Kennedypark 31c, 8500, Kortrijk, Belgium (professional representative)

a g a i n s t

Acomodeo UG, Am Salzhaus 4, 60311, Frankfurt am Main, Germany (applicant), represented by Taylor Wessing, Thurn-und-Taxis-Platz 6, 60313, Frankfurt am Main, Germany (professional representative).

On 30/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 795 238 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 15 523 92115 523 921 for the figurative mark , namely against all the services in Classes 35 and 36. The opposition is based on Benelux trade mark registration No 947 143 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON THE ADMISSIBILITY OF THE EARLIER BENELUX TRADE MARK REGISTRATION No 947 142

According to Article 46(1)(a) EUTMR (in the version in force at the time of filing of the opposition), the proprietors of earlier marks referred to in Article 8(2) EUTMR as well as licensees authorised by the proprietors of those trade marks may give notice of opposition (on the grounds of Article 8(1) and 8(5) EUTMR) to registration of a European Union trade mark application, within a period of three months following the publication of the application.

The notice of opposition has to be expressed in writing and shall specify, in order to be admissible, the indications and elements laid down in Article 2(2) (a)-(i) EUTMDR (inter alia, a clear identification of the earlier mark or earlier right on which the opposition is based and an indication of the grounds invoked). Furthermore, it must be noted that the opponent can only complete or extend the notice of opposition, on its own initiative, during the three month opposition period following the publication of the European Union trade mark application concerned.

In the notice of opposition filed on 28/10/2016, the opponent indicated as the basis of the opposition only one Benelux trade mark registration No 947 143, even though the number was incorrectly written (as 947 142) but the representation and the rest of the information such as the relevant dates were correct. However, in its observations, filed on 12/05/2017, the opponent bases also his opposition on the Benelux trade mark registration No 947 142.

Since the latter earlier mark was not claimed as a basis of the opposition during the three-month opposition period and, as indicated above, the opposing party cannot extent the basis of the opposition once the opposition period has expired, the opposition must be rejected as inadmissible, as far as it is based on the earlier Benelux trade mark registration No 947 142.

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: Advertising services and advertising; dissemination of advertising matter, advertising messages and promotional material; making advertising space available on the internet for advertising purposes; business organization and business economics consultancy; business management; public relations services; marketing study, research and analysis; economic studies in the sectors of building and construction; administrative services for the coordination of building projects; computerized file management.

Class 36: Arranging letting of real estate, including mediation with respect to buying, selling, renting, leasing real estate related to amongst other building land, garden land, agricultural land, farms, holiday houses, houses, studios, service flats, sanatorium, apartments, villas, offices and business premises, as well as advice therefor; real estate brokerage; services of a syndic; consultancy and mediation regarding the provision of credit; leasing; mediation and surveys concerning real estate and mortgages; mediation and consultancy in the field of finance in relation to premiums and subsidies for purchasing, selling, rental and leasing of real estate.

Class 42: Planning in the field of building and construction, including within the framework of project development; architecture, engineering and land surveying; construction drafting; consultancy regarding urban and spatial planning.

The contested services are the following:

Class 35: Arranging of contracts, for others, for the providing of services, in particular providing of temporary accommodation; compilation of information into computer databases; data search in computer files for others; computerised file management; price comparison rating of accommodations; advertising and promotion services and related consulting; compilation of custom or non-custom advertising for businesses for dissemination via the internet; dissemination of advertising for others via an on-line communications network on the internet; compilation of advertisements for use as web pages on the internet; online advertising services for others; web indexing for commercial or advertising purposes; business management consulting; business consultancy and advisory services, business management, computerised file management.

Class 36: Real estate consultancy; arranging letting of real estate; arranging letting of real estate; financial payment services; processing payments for the purchase of goods and services via an electronic communications network.

Some of the contested services are identical or similar to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed both at the public at large and at business customers. The degree of attention may vary from average to high depending on the extent and price of the services and their potential impact on the consumer’s business.

The services in Class 36 are all financial services. These services target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the Benelux countries.

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).

Both signs are figurative marks consisting of two crossed keys.

In the earlier trade mark, the keys are black, pointing downwards and facing outwards. The keys are depicted in a very detailed manner and seem old-fashioned, crossed in the middle with an angle at around 70°. The bow-part, for holding the key, consists of two open ended swirls with a dot between them. The tip-part, introduced in the lock, is composed of one main prong attached to the shank. On each side of these prongs, additional prongs protrude outwards .

The keys in the contested sign are white, depicted in a simplified manner, pointing up, turned inward and are surrounded by a round dark-grey frame. They cross with an angle at 90°. The bow-part, for holding the key, has the shape of a three-leaf clover. The tip-part, introduced in the lock, is composed of three prongs attached to the shank in the middle.

The figurative elements of both signs refer to two crossed keys. However, as they are not allusive or descriptive of the relevant goods, they are considered to be distinctive to an average degree.

Contrary to what is claimed by the applicant, the marks under comparison have no elements which could be considered more dominant (visually more eye-catching) than other elements.

The earlier mark has no element that could be considered clearly more distinctive.

The contested mark is however composed of composed of a distinctive figurative element, the representation of the keys, and a less distinctive figurative element of a purely decorative nature, the round shape.

Visually, the signs coincide in the depiction of two crossed keys. However, they differ in the shape, shades of colour, direction of the keys, representation of the tips and bows of the keys, and in the additional element of a circle in the contested mark, as described above.

Therefore, it is concluded that the signs are visually similar to a low degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs reproduce two crossed keys. Signs are conceptually identical or similar when the two signs are perceived as having the same or a similar semantic content. Therefore, as both signs consist of two crossed keys, the signs are conceptually identical.

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 services were assumed to be identical. The signs are visually similar to low degree and conceptually identical.

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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).

A conceptual similarity between signs with analogous semantic content may give rise to a likelihood of confusion where the earlier mark is particularly distinctive (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24). In the present case, the opponent did not explicitly claim in its notice of opposition, nor within the period to substantiate the earlier mark, that its mark is particularly distinctive by virtue of intensive use or reputation.

In the present case, the only thing the signs have in common is that they both contain

a depiction of two crossed keys. However, as seen above, these figurative elements have obvious differences in their set-up, stylisation and aesthetic expression (e.g. the different shades of colour, the different key shapes, and the different orientation of the keys). The visual similarity is found to be of only a low degree and will not prevent consumers who are reasonably attentive from distinguishing safely between the signs, due to their sufficiently different overall impressions. Therefore, considering all the above, there is no likelihood of confusion on the part of the public, even for the public with a high level of attention.

The opponent refers to previous decisions of the Office to support its arguments. However, it must be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the CTMR, and not the Office’s practice in earlier decisions (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the case at hand, the previous cases referred to by the opponent are not relevant to the present proceedings as the signs are not comparable.

Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Erkki MÜNTER	Cristina CRESPO MOLTÓ	Francesca DRAGOSTIN

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.