OPPOSITION No B 2 916 891

T.S.I., Avenue Louise 523, 1050 Bruxelles, Belgium (opponent), represented by Céline Pires, ARGYMARK, 52 boulevard Sébastopol, 75003 Paris, France (professional representative)

a g a i n s t

Eugenija Sutkiene, Konstitucijos 21A, 08130 Vilnius, Lithuania (applicant), represented by Lina Darulienė, Konstitucijos ave. 21ª, 08130 Vilnius,

Lithuania (professional representative).

On 24/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 916 891 is upheld for all the contested services.

2. European Union trade mark application No 16 516 221 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 16 516 221 for the word mark ‘TGS Baltic’. The opposition is based on European Union trade mark registration No 12 236 618 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

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.

a) The services

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

Class 45: Legal services, including legal and research services.

The contested services are the following:

Class 45: Legal services.

The term ‘including’, 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 (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

Legal services are identically contained in both lists of services.

b) Relevant public — degree of attention

The average consumer of the category of services concerned is deemed to be reasonably well-informed, observant and circumspect. It is assumed 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 both at the public at large and at business customers (companies).

The degree of attention will be higher than average due to the fact that the services will probably be expensive and that they may have important consequences for their users.

c) The signs

	TGS Baltic
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, 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 letters ‘tgs’, depicted in white lower-case letters, placed within an orange square. It is obvious that the letters ‘tgs’ convey no meaning and are distinctive in connection with the services. Although, in principle, the verbal element has more impact, in the present case the orange background is a noticeable feature of the earlier mark. Its importance should not be overestimated, as it has the effect of making the white letters ‘tgs’ stand out, yet it does not have more impact on consumers than the letters.

This mark has no element which could be considered more visually dominant than other elements.

The contested sign is a word mark consisting of the elements ‘TGS’ and ‘Baltic’. Word marks have no elements that could be considered clearly more visually dominant (eye-catching) than other elements.

Reference is made to the above findings concerning the distinctive character of the verbal element ‘TGS’. The word ‘Baltic’ will be understood by the vast majority of relevant consumers as a reference to the Baltic Sea or to the region and countries surrounding it. Considering the services in question, this word will be perceived as describing their geographical origin; therefore, it lacks distinctiveness. Therefore, ‘TGS’ is the only distinctive element in the contested sign considering the services in question.

Visually and aurally, the signs coincide in the distinctive element ‘TGS’. The only notable differentiating factors between the earlier mark and the contested sign are due to the figurative depiction of the earlier mark, which aids in highlighting the letters, and to the non-distinctive word ‘Baltic’ at the end of the contested sign.

Given that the signs coincide in the same distinctive verbal element and differ in the figurative depiction of the earlier mark and in the non-distinctive element of the contested sign, they are considered visually and aurally highly similar.

Conceptually, the public in the relevant territory will not perceive the letter combination ‘TGS’ to have any meaning. The fact that the additional word ‘Baltic’ evokes a concept has no impact as this element is non-distinctive and cannot indicate the commercial origin. Consequently, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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, 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.

e) Global assessment, other arguments and conclusion

The marks are visually and aurally highly similar and the services are identical.

The contested sign contains the additional word ‘Baltic’, which the applicant argues will enable consumers to distinguish the contested sign from the earlier mark. However, the word ‘Baltic’ has been found lacking in distinctiveness for the relevant consumers. Additionally, the word is placed at the end of the sign; hence, the relevant consumer will place less importance on it. Therefore, consumers will focus more attention on the three-letter sequence ‘TGS’. This finding is reinforced by the fact that ‘tgs’ is the only verbal element in the earlier mark and is distinctive for all consumers.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the applicant’s European Union trade mark registration No 12 236 618. It follows that the contested trade mark must be rejected for all the contested services.

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, she 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, 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

Justyna GBYL

Maria SLAVOVA

Francesca CANGERI

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.