OPPOSITION No B 2 855 735

Orange Brand Services Limited, 3 More London Riverside, SE1 2AQ, London, United Kingdom (opponent), represented by Taylor Wessing LLP, 5 New Street Square, EC4A 3TW, London, United Kingdom (professional representative)

a g a i n s t

Koldaria Commercial Ltd, Arestotelous 6 Pallouriotissa, P.C. 1056, Nicosia, Cyprus (applicant), represented by Alīna Lepere, Brivibas street 40 – 29, 1050 Riga, Latvia (professional representative).

On 29/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 855 735 is upheld for all the contested services.

2. European Union trade mark application No 15 988 819 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 15 988 819 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 11 428 323 for the word mark ‘ORANGE’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to this earlier right.

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 11 428 323 for the word mark ‘ORANGE’.

1. The services

The services on which the opposition is based are, inter alia, the following:

Class 36: Insurance; financial affairs; monetary affairs; insurance and financing of telecommunications apparatus, systems and installations; provision of credit card facilities and services; provision of electronic funds transfer services and on-line transaction facilities; financial services; banking services; investment and fund management services; administration of funds and investments; computerised financial services; provision of on-line valuation services; real estate affairs; real estate property management and information and advice relating to the aforesaid; provision of financial information; stock exchange quotations; stocks and shares information services; stocks and bonds brokerage; fund raising activities; charitable collections, organising collections and organising fund raising activities; financial sponsorship; discount services; information and advisory services relating to insurance, financial affairs, monetary affairs, home and internet banking, stocks and share information, stocks and bonds brokerage, provided on-line from a computer database or the internet.

The contested services are the following:

Class 36: Financial affairs; banking; monetary affairs; insurance; real estate affairs; charitable fund-raising; online charitable fund raising; provision of financing for charity projects; providing monetary grants to charities; charity fund services; charity fund services in the field of social welfare, education, health, children's interests, sports; arranging fundraising events for charitable purposes.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The contested financial affairs; banking; monetary affairs; insurance; real estate affairs; arranging fundraising events for charitable purposes are identically contained in both lists of goods (including synonyms).

The contested charitable fund-raising; online charitable fund raising; provision of financing for charity projects; providing monetary grants to charities; charity fund services; charity fund services in the field of social welfare, education, health, children's interests, sports are all financial services that specifically aim to fund institutions or projects that provide help to the needy. As such, they are included in the broad category of the opponent’s financial services.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

In both instances, the degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price, for example since financial 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). Likewise, the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

3. The signs

ORANGE
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.

The words ‘BLUE’, ‘ORANGE’ and ‘CHARITY’ have meanings in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in the United Kingdom, Ireland and Malta.

The earlier mark is a word mark consisting of the word ‘ORANGE’, which will be understood by the relevant public as meaning ‘a round juicy citrus fruit with a tough bright reddish-yellow rind or a bright reddish-yellow colour like that of the skin of a ripe orange’ (information extracted from Oxford Dictionaries on 28/03/2019 at https://en.oxforddictionaries.com/definition/us/orange#Orange ). Contrary to the applicant’s arguments, it does not describe any characteristics of the goods and services in question; it is not laudatory or otherwise weak. Therefore it is considered distinctive.

The contested mark is a figurative mark consisting of the words ‘Blue’ and ‘Orange’ written in slightly stylised blue letters. The letters ‘B’ and ‘O’ are upper case while the rest of the letters are lower case. Underneath these two words there appears, in much smaller orange characters, the word ‘charity’. A figurative device made up of one blue dot and various orange dots of different sizes is depicted to the left of the verbal elements. Although this element is fanciful, it will be perceived as an embellishment. It has to be borne in mind 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).

The word ‘BLUE’ in the contested sign refers to ‘a colour intermediate between green and violet, as of the sky or sea on a sunny day’ (information extracted from Oxford Dictionaries on 28/03/2019 at https://en.oxforddictionaries.com/definition/us/blue ). In the context of the contested sign, also bearing in mind the blue dot contained in this sign, it is likely that at least a significant part of the relevant consumers will understand the expression ‘BLUE ORANGE’ as a whole, as meaning a citrus fruit that has a bluish tint. That expression does not have any meaning in relation to the services in question and is considered distinctive. On the other hand the word ‘charity’ will be understood by the relevant public as making reference to ‘an organization set up to provide help and raise money for those in need’ or ‘the voluntary giving of help, typically in the form of money, to those in need’ (information extracted from Oxford Dictionaries on 28/03/2019 at https://en.oxforddictionaries.com/definition/charity). This element is non-distinctive, due to the descriptive association with the applicant’s services in Class 36.

The verbal elements ‘BLUE ORANGE’ and the figurative element which precedes them are the most eye-catching and therefore dominant elements of the contested sign. The other word element, ‘charity’, has a reduced impact on account of its reduced size and clearly subordinate position within the mark.

Visually, the signs coincide in in ‘ORANGE’, which is the only element of the earlier sign and is clearly perceptible in the contested sign due to the use of upper case letters for the first letters of the words ‘Blue’ and ‘Orange’. The signs differ in the words ‘Blue’ and ‘charity’ of the contested sign as well as in the slight stylization and figurative elements of the same. As consumers are accustomed to the stylisation of verbal elements in marks, they will perceive it as merely a decorative depiction of the word elements. The additional device and the word ‘charity’ in the contested sign will also have a limited impact on the comparison of the signs for the reasons already given above.

In the light of the above, taking into account that the contested sign reproduces the earlier mark in its entirety, the signs are visually similar at least to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ORANGE’, present identically in both signs. It can be reasonably assumed that the secondary element ‘charity’ will be omitted from the pronunciation when referring to the contested sign by a substantial part of the public. Additionally that element is also non-distinctive for the services in question. Moreover, the figurative device of the contested sign is not aurally relevant.

Therefore, the signs are aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, due to the presence of the word ‘ORANGE’, the signs are conceptually highly similar. As explained above, the impact of the word ‘charity’ is limited.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

According to settled case-law, 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).

In the present case, the services at issue are identical. The relevant public is both the public at large and the professional public and their degrees of attention may vary from average to higher than average. The earlier mark has a normal degree of distinctiveness.

The signs are visually similar at least to a low degree, aurally similar at least to an average degree and conceptually similar to a high degree, as they coincide in the distinctive word ‘ORANGE’ and the earlier mark is also entirely reproduced in the contested sign. The additional element ‘BLUE’ in the contested sign does not have a decisive influence on differentiating the signs, as it simply qualifies and describes a characteristic of the following element, ‘ORANGE’. The slight stylisation of the verbal elements, the figurative device and the non-distinctive term ‘charity’ of the contested sign have a lesser impact on the global impression given by the signs, for the reasons explained above in section c) of the present decision.

The applicant pointed out that ‘BLUE’ is the first word in the contested sign and as such it plays a much bigger role than the other elements. The Office observes that while, in principle, the initial parts of word marks are more likely to capture the consumer’s attention, that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details (16/05/2007, T-158/05, Altrek, EU:T:2007:143, § 70). In particular, although the element ‘BLUE’ is considered distinctive, it does not contribute significantly to the differentiation of the marks, as explained above.

The applicant also stated that the manner of use of its mark, where the blue colour is dominant, further emphasizes the role of the element ‘Blue’ in the perception of the EUTM application. The Office points out that when assessing similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered/applied for. The actual or possible use of the marks in another form is irrelevant when comparing signs (judgment of 09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38). Therefore the applicant’s arguments must be rejected.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

In addition, account should also be 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

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 well founded on the basis of the opponent’s European Union trade mark registration No 11 428 323. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right European Union trade mark registration No 11 428 323 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicant is 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Michele M. BENEDETTI-ALOISI

Riccardo RAPONI

Keeva DOHERTY

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.