OPPOSITION Nо B 3 023 879

 

Cecabank, S.A., Alcalá, 27, 28014 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Cheung Kong Property Holdings Limited, 7/f, Cheung Kong Center, 2 Queen’s Road Central, Hong Kong, Hong Kong (applicant), represented by Sodema Conseils S.A., 16 Rue Du Général Foy, 75008 Paris, France (professional representative).

On 19/04/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 023 879 is partially upheld, namely for the following contested goods and services:

 

Class 16: All the goods in this class except cardboard; typewriters; plastic materials for packaging (not included in other classes); printers' type; printing blocks. Class 35: All the services in this class except retail services of dietetic preparations, blood pressure monitors, cosmetics, food and beverages, pharmaceuticals, fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, air fresheners; all included in Class 35. Class 36: All the services in this class. Class 38: All the services in this class. Class 39: Telecommunication services providing and operating a global computer network for the transfer and dissemination of e-commerce and real world business. Class 41: Education; providing of training. Class 42: Engineering project management services; project management [design]; project management [technical support]; technological services and research and design relating thereto; information technology consulting services; information services relating to information technology; providing research and analysis in the field of Internet, interactive and digital media and information technology; design and development of new technology for others; all included in Class 42. Class 43: Temporary accommodation; hotel services and hotel operation; serviced apartment, serviced suite and temporary accommodation services; provision of resort and conference facilities; information relating to the aforesaid services; advisory and consultancy services relating to the aforesaid services; all included in Class 43.

2.

European Union trade mark application No 16 977 001 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 15/01/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 16 977 001 ‘CK Asset’ (word mark). The opposition is based on:

1) Spanish trade mark registration No 3 510 746 (figurative mark);

2) European Union trade mark registration No 16 631 401 ‘CK-LAB’ (word mark);

3) Spanish trade mark registration No 3 050 573 (figurative mark);

4) European Union trade mark registration No 11 206 471 (figurative mark);

5) European Union trade mark registration No 11 206 497 (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.

 

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 Spanish trade mark registration No 3 510 746 and European Union trade mark registration No 16 631 401 (earlier marks 1 and 2).

 

a) The goods and services

 

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

 

1) Spanish trade mark registration No 3 510 746:

Class 9: Computer programs and computer software, for use in the financial and banking sector; mechanisms for previous payment devices and equipment for the processing of information; bank cards (codified or magnetic).

Class 36: Insurance services; financial business; financial analysis; monetary business; bank business; distance banking (home banking); brokerage services and quotations in stock exchanges; capital administration and investment; administration, brokerage and assessment of real estate; real estate services; deposit of securities; issuance of credit cards and debit; fiduciary services; constitution and investment of funds; constitution of mortgages; banking, financial, monetary, insurance and real estate services online, through telecommunication networks (including mobile telephones), telematic networks and global computer communications networks.

2) EUTM registration No 16 631 401:

Class 16: Printed matter including printed publications, periodicals, user guides; Instructional and teaching material (except apparatus); printed advertising matter; calendars and diaries; credit, debit and pre-paid cards (non-magnetic).

Class 35: Accounting; book-keeping; payroll preparations; commercial business appraisals; inquiries, investigations, research and consultancy relating to business management; business management consultancy; advertising and promotion services and information services relating thereto; business management; business consultancy and advisory services; organisation of trade fairs for commercial or advertising purposes; organisation, management and administration of customer loyalty schemes.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; banking; real estate management; apartment house management; financial management; customs brokerage; accommodation bureaux [apartments]; debt collection agencies; credit agency services; estate agency; housing agents; rental of apartments; rental of offices; financial analysis; credit leasing; arranging letting of real estate; leasing of farms; home banking; safe deposit services; clearing-houses, financial; rent collection; mutual funds; insurance consultancy; financial consulting; brokerage; brokerage of carbon credits; insurance brokerage; securities brokerage; stock exchange quotations; deposit of valuables; factoring; issuance of tokens of value; issuance of travelers' checks; issuance of credit cards; evaluation (repair costs -) [financial appraisal]; fiscal assessments; evaluation (financial -) [insurance, banking, real estate]; guarantees; fiduciary; financing services; provident fund services; insurance information; financial information; fund investments; retirement payment services; business liquidation services, financial; currency trading and exchange services; organisation of collections; installment loans; financial sponsorship; lending against security; loans [financing]; pawnbrokerage; charitable fund raising; mortgage banking; savings bank services; insurance underwriting; accident insurance underwriting; fire insurance underwriting; life insurance underwriting; marine insurance underwriting; health insurance underwriting; card services; debit card services; antique appraisal; jewellery appraisal; art appraisal; stamp appraisal; numismatic appraisal; real-estate valuations; electronic transfer of funds; valuation of standing timber (financial -); financial evaluation of wool; verification (check [cheque] -).

The contested goods and services are, further to a limitation filed by the applicant on 22/09/2017, the following:

 

Class 16: Printed publications; paper, cardboard and advertising and promotional materials made of paper and cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 35: Advertising; business management; business administration; office functions; business development services; business development services relating to trade, commerce, industry and infrastructure development; business management services relating to the development of businesses; business project management; business project management relating to trade, commerce, industry and infrastructure development; business advisory and consultancy services relating to manufacturing, product development and manufacturing; business strategy services; business evaluation, appraisals and assessments; business consultancy; business, trade (business), commercial, industrial and infrastructure development (business) information; business, trade (business), commercial, industrial and infrastructure development (business) inquiries, investigations, surveys and research; operation of businesses; business assistance; business assistance and operation of business relating to trade, commerce, industry and infrastructure development; economic forecasting and analysis for business or commercial purposes; compilation of business information and data relating to business, trade, commercial, industrial and infrastructure development; business information, assistance, advice or consultancy services relating to planning and development of business, trade, a certain industry or industrial enterprises; business studies, evaluation, assessment, advice, assistance and consultancy relating to business, trade, commercial opportunities, projects, commercial deals and commercial transactions; efficiency experts; provision of business information, advice, assistance and consultancy for managing, resolving, preventing, evaluating and appraising business, commercial, industrial and trade disputes, disruptions, crisis or conflict; personnel management consultancy; market research and analysis; market studies; market surveys; market forecasting; planning and development of marketing strategies; organization of business, commercial and trade exhibitions, trade shows and/or competitions; preparation and provision of business statistical information; preparation of business reports; promotional, marketing and publicity services; providing information, business assistance, advisory and consultancy services relating to all of the aforesaid services; marketing; product marketing; promotional marketing; provision of marketing information; all relating to products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; retail services of dietetic preparations, blood pressure monitors, tablet computers, cosmetics, food and beverages, pharmaceuticals, fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, air fresheners; business consultancy, information, management and advisory services relating to the aforesaid services; business management consultation for businesses in the fields of the global computer information network, computer media and information technology; business advisory and consultancy services relating to telecommunications, information technology and media; provision of business advice relating to e-commerce; business assistance in relation to the facilitation of commercial transactions over the Internet; hotel management and hotel franchising; hiring of sub-contractors and suppliers for the development and construction of industrial and infrastructural plants for the operation of business; all included in class 35.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; investment; investment holding; industrial investment; investment in infrastructure; investment in the fields of real estate, industrial property, commercial retail property, residential property and infrastructure development projects, investment in the fields energy infrastructure, transportation infrastructure and water infrastructure and infrastructure related business and development projects relating thereto; investment in industries developing, manufacturing and commercializing products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; investment business services; real estate investment services; real property investment, portfolio investment; funds investment; financial investment; capital investments; capital investment services; investment in the field of venture capital; capital settlement; direct investment services; investment in securities; investments in the form of equities, equity-related securities, debt securities, all in listed and unlisted companies; investment banking; investment management; investment holding management; investment management in the field of real estate, industrial, commercial retail, residential and infrastructure development projects; property management; real property investment management; property portfolio management; portfolio investment management, funds management, assets management; venture and development capital funds management services; investment information; investment analysis; investment research; investment advisory and consultancy services; investment studies, appraisals, reports, analysis and valuations; investment evaluations; preparation of investment reports; preparation of financial reports; preparation of financial records and of investment records; financing of property development; corporate financing; corporate finance advice; financial services; financial services in the nature of merger, acquisition, restructuring, and other corporate finance activities; initial public offering advisory services (financial services); raising of capital; financial information; financial analysis services; financial research; financial advisory and consultancy services; financial studies, appraisals, reports, analysis and valuations; financial evaluations; financial planning and management; financial administration; financing of loans services; financial sponsorship; fiscal assessments and evaluations; risk analysis services; processing of financial transactions; collection of financial data; consultancy, transactions and analysis relating to financial matters; banking services; money lending; financial brokerage services; securities stocks and bonds brokerage services; securities exchange services; securities trading services; exchanging money; surety services; fiduciary; real estate agency, real estate management; real property management; real estate brokerage services; renting and leasing of real estate; leasing of office space; rental of office space; real estate information; real estate advisory and consultancy services; real estate appraisals, reports, analysis and valuations; real estate evaluation services; provision of information relating to the aforesaid services; advisory, consultancy, and analysis services relating to all the aforesaid services; the provision of the aforesaid services on-line from a computer data base or the Internet or through telecommunication systems; financing services for new technology; investment services relating to the field of new technology; all included in class 36; price and cost evaluation and analysis; price and cost forecasting or estimation.

Class 37: Property development; real estate development; residential property development; commercial retail and industrial property development; infrastructure development; building construction; civil engineering, construction engineering and supervision of construction; construction services in infrastructure, industrial, residential and commercial developments; construction and installation of equipment and systems relating to underground transport networks, civil works and infrastructure projects; construction, maintenance, repair and renovation of property, construction of telecommunications network; building project management; on-site building project management; on site project management and refurbishment relating to the construction of buildings, infrastructure facilities, commercial, industrial, residential and real estate facilities, industrial plants, educational, hospital, transport, aviation, port and shipping facilities; on site project management and refurbishment relating to the construction of airport and aerodrome facilities; management of construction projects; management of property development projects, real estate development projects, residential property development projects, commercial retail to industrial property development projects and infrastructure development projects; installation of electricity, water and gas supply in buildings; building maintenance; maintenance, cleaning and repair of buildings, infrastructure facilities, commercial, industrial, residential and real estate facilities, industrial plants, educational, hospital, transport, aviation, port and shipping facilities; installation, maintenance, repair and servicing of buildings, maintenance, cleaning and repair of utilities in buildings, dismantling of industrial plant, construction, repair and maintenance of civil, structural, industrial, mechanical and electrical installations and real estate property; installation, maintenance and repair of telecommunications equipment, apparatus and instruments, networks and systems and infrastructure; installation, maintenance and repair of installations for use in the supply and distribution of electricity, gas, water or telecommunications; installation of electricity, gas, water or telecommunication supply and distribution installations; installation, repair, emergency servicing and maintenance of gas, electricity and water appliances, apparatus and instruments; laying, repair, maintenance, replacement and refurbishment of pipelines; repair of roads and paths, construction, repair and maintenance of gas and electricity installations; installation repair and maintenance of card access systems, computerized security surveillance systems, electricity systems and electronic monitoring systems relating to buildings; construction of energy-using installations Installation of Insulating materials; utilities metering Installation, repair and maintenance services, construction of installations for distribution of gas, gaseous fuels, oils and electricity, consultancy services relating to the maintenance and repair of mechanical engineering structures and engineering works, the aforementioned goods excluding software for maintenance of aircrafts and vehicles; provision of precision engineering services; structural steel engineering, assembly, installation and erection services; constructions, fabrication and erection of steel structures for building; provision of services for the development and construction of industrial and Infra structural plants for the operation of business; information, advisory and consultancy services relating to ail the aforesaid services, the aforementioned goods excluding software for maintenance of aircrafts and vehicles; all included in class 37.

Class 38: Telecommunication services providing and operating a global computer network for the transfer and dissemination of e-commerce and real world business.

Class 39: Telecommunication services providing and operating a global computer network for the transfer and dissemination of e-commerce and real world business; distribution of products, namely products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 42: Architectural project management; engineering project management services; management of scientific research projects; off site building project management; project management [design]; project management [technical support]; scientific and technological services and research and design relating thereto; industrial analysis and research services; scientific research into the development of new products; design, research and development of products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; preparation of reports relating to the development of products; biological development services; biological research services; development of test equipment for biological apparatus; development of test stands for biological apparatus; cell separation technology services; biotechnology research; biotechnology testing; consultancy relating to biotechnology; design and development of biotech products; scientific research and development of the biological function of yeast; design services relating to plant for the biotechnology industry; design services relating to process systems for the biotechnology industry; preparation of reports in the biotechnology field; information technology consulting services; information services relating to information technology; providing research and analysis in the field of Internet, interactive and digital media and information technology; design and development of new technology for others; all included in Class 42.

Class 43: Services for providing food and drink; temporary accommodation; hotel services and hotel operation; serviced apartment, serviced suite and temporary accommodation services; restaurant and catering services; provision of resort and conference facilities; information relating to the aforesaid services; advisory and consultancy services relating to the aforesaid services; all included in Class 43.

Class 45: Legal services; security services for the protection of property and individuals; personal legal affairs consultancy; licensing of intellectual property; copyright management.

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

 

The term ‘including’, used in both the applicant’s and the opponent’s lists of goods and services, indicates that the specific goods and 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).

 

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

  

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 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 goods in Class 16

Printed matter; instructional and teaching material (except apparatus) are identically contained in the lists of goods of both the contested mark and the earlier EUTM No 2 (including synonyms).

The contested printed publications are included in the broad category of the opponent’s printed matter including printed publications of the earlier EUTM No 2. Therefore, they are identical.

The contested advertising and promotional materials made of paper and cardboard are included in the broad category of, or overlap with, the opponent’s printed advertising matter of the earlier EUTM No 2. Therefore, they are identical.

The contested stationery overlaps with the opponent’s instructional and teaching material (except apparatus) of the earlier EUTM No 2. The broad categories of stationery and teaching materials overlap insofar as they both include items such as notebooks to practise writing and teacher planners. Therefore, they are identical.

The contested paper is similar to the opponent’s instructional and teaching material (except apparatus) of the earlier EUTM No 2. Teaching materials include, inter alia, colouring books, activity books, notebooks to practise writing and paper includes, inter alia, writing paper and drawing paper. These goods can all be used for educational purposes, such as for taking notes, other writing or drawing and therefore they coincide in their purpose and method of use. In stationery shops and sections of department stores teaching materials can be found next to writing or drawing paper and they are directed at the same consumers.

The contested photographs are similar to the opponent’s printed matter including printed publications, periodicals, user guides of the earlier EUTM No 2. Printed matter can be entirely devoted to photography, in particular where a catalogue or an album of photographs are concerned. Furthermore, printed matter and photographs share a common purpose, namely, to display the text or images in the case of the former and display the images in the case of the latter, images and text which are often combined. Consequently, photographs [printed] and printed matter cannot only have the same nature and methods of use but also share the same purpose. Furthermore, they can share the same distribution channels, target the same relevant public and be produced by the same undertakings. Therefore, photographs [printed] are considered similar to printed matter (see to this effect 13/12/2016, T-58/16, APAX, EU:T:2016:724, § 39-40).

The contested artists' materials; paint brushes are similar to a low degree to the opponent’s instructional and teaching material (except apparatus) of the earlier EUTM No 2. Teaching materials include, inter alia, colouring books, activity books, notebooks to practice writing. Artists’ materials include, inter alia, colouring pens and pencils, graphite pencils, calligraphy pens, brush pens, fineline pens, gel pens. In stationery shops and relevant sections of department stores, teaching materials can be found next to artists’ materials and they are directed at the same consumers. Furthermore, these goods are frequently sold together in sets.

The contested bookbinding material; adhesives for stationery or household purposes; office requisites (except furniture) are included in the broad category of stationery or are highly similar to it as the latter broad category encompasses materials to bind sheets of paper or documents, adhesives and indeed also includes files which pertain to office requisites. Therefore, these contested goods are at least similar to a low degree to the opponent’s instructional and teaching material (except apparatus) of the earlier EUTM No 2, as they are usually distributed through the same channels and directed as the same public.

However, the contested cardboard; typewriters; plastic materials for packaging (not included in other classes); printers' type; printing blocks are dissimilar to all the opponent’s goods and services, as they do not have any relevant criteria in common. The opponent’s earlier EUTM No 2 goods in Class 16 consist of educational equipment, printed matter, stationery and the opponent’s services in Class 35 consist of business assistance, management and administrative services, advertising, marketing and promotional services, and in Class 36 consist in financial, monetary and banking services, real estate, insurance and valuation services. The opponent’s earlier Spanish mark No 1 goods in Class 9, which are computer software for the banking sector, banking cards and mechanisms for previous payment devices and equipment for the processing of information and the services in Class 36 are financial, monetary and banking services, real estate and insurance services. Therefore, their producers/providers are different, as well as their nature, purpose and method of use. Their distribution channels and relevant publics do not coincide either. Moreover, they are neither in competition nor complementary. The Opposition Division also notes that the opponent has not adduced any tangible arguments as to why these goods would be similar to any of the goods and services of the earlier marks and which would alter the findings herein.

Contested goods in Class 19

The contested building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal have nothing in common with the opponent’s goods and services summarized above. Their producers/providers are different, as well as their nature, purpose and method of use. Their distribution channels and relevant public do not coincide either. Moreover, they are neither in competition nor complementary. The Opposition Division also notes that the opponent has not adduced any tangible arguments as to why these goods would be similar to any of the goods and services of the earlier marks and which would alter the findings herein. Therefore, they are dissimilar.

Contested services in Class 35

The contested advertising; promotional, marketing and publicity services; marketing; product marketing; promotional marketing; provision of marketing information; all relating to products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; all included in class 35 are included in the broad categories of, or overlap with, the opponent’s advertising and promotion services and information services relating thereto covered by earlier EUTM No 2. Therefore, they are identical.

The contested business management; business development services; business development services relating to trade, commerce, industry and infrastructure development; business management services relating to the development of businesses; business project management; business project management relating to trade, commerce, industry and infrastructure development; business advisory and consultancy services relating to manufacturing, product development and manufacturing; business strategy services; business evaluation, appraisals and assessments; business consultancy; business, trade (business), commercial, industrial and infrastructure development (business) information; business, trade (business), commercial, industrial and infrastructure development (business) inquiries, investigations, surveys and research; operation of businesses; business assistance; business assistance and operation of business relating to trade, commerce, industry and infrastructure development; economic forecasting and analysis for business or commercial purposes; compilation of business information and data relating to business, trade, commercial, industrial and infrastructure development; business information, assistance, advice or consultancy services relating to planning and development of business, trade, a certain industry or industrial enterprises; business studies, evaluation, assessment, advice, assistance and consultancy relating to business, trade, commercial opportunities, projects, commercial deals and commercial transactions; efficiency experts; provision of business information, advice, assistance and consultancy for managing, resolving, preventing, evaluating and appraising business, commercial, industrial and trade disputes, disruptions, crisis or conflict; personnel management consultancy; market research and analysis; market studies; market surveys; market forecasting; planning and development of marketing strategies; preparation and provision of business statistical information; preparation of business reports; providing information, business assistance, advisory and consultancy services relating to all of the aforesaid services; all relating to products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; business consultancy, information, management and advisory services relating to the aforesaid services; business management consultation for businesses in the fields of the global computer information network, computer media and information technology; business advisory and consultancy services relating to telecommunications, information technology and media; provision of business advice relating to e-commerce; business assistance in relation to the facilitation of commercial transactions over the Internet; hotel management and hotel franchising; all included in Class 35 are included in the broad categories of the opponent’s business management consultancy; business management covered by earlier EUTM No 2. Therefore, they are identical.

The contested office functions; all relating to products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; all included in Class 35 overlap with the opponent’s book-keeping covered by earlier EUTM No 2. Therefore, they are identical.

The contested business administration; all relating to products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; hiring of sub-contractors and suppliers for the development and construction of industrial and infrastructural plants for the operation of business; all included in Class 35 are included in the broad category of, or overlap with, the opponent’s business consultancy and advisory services covered by earlier EUTM No 2. Therefore, they are identical.

The contested organization of business, commercial and trade exhibitions, trade shows and/or competitions; all relating to products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; all included in class 35 are included in the broad categories of, or overlap with, the opponent’s organisation of trade fairs for commercial or advertising purposes covered by earlier EUTM No 2. Therefore, they are identical.

The contested retail services of tablet computers; all included in Class 35 are similar to the opponent’s earlier Spanish mark No 1 equipment for the processing of information which includes tablet computers in Class 9. This is because retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places where the goods are offered for sale. Furthermore, they are directed at the same public.

However, the contested retail services of dietetic preparations, blood pressure monitors, cosmetics, food and beverages, pharmaceuticals, fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, air fresheners; all included in class 35 are dissimilar to all the opponent’s goods and services. First of all, these contested retail services are not similar to the opponent’s goods in Class 9 (mainly computer software for the banking sector, banking cards and mechanisms for previous payment devices and equipment for the processing of information) and in Class 16 (mainly educational equipment, printed matter, stationery). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are offered in the same places, belong to the same market sector and are of interest to the same consumer. These conditions are not fulfilled in the present case, since the goods sold at retail are dissimilar to the goods themselves. Moreover, these contested retail services are not similar to the opponent’s services in Class 35 (mainly business assistance, management and administrative services, advertising, marketing and promotional services) and in Class 36 (mainly financial, monetary and banking services, real estate, insurance and valuation services). Their producers/providers are different, as well as their nature, purpose and method of use. Their distribution channels and relevant publics do not coincide either. Moreover, they are neither in competition nor complementary.

Contested services in Class 36

The contested insurance; financial affairs; monetary affairs; real estate affairs; investment; investment holding; industrial investment; investment in infrastructure; investment in the fields of real estate, industrial property, commercial retail property, residential property and infrastructure development projects, investment in the fields energy infrastructure, transportation infrastructure and water infrastructure and infrastructure related business and development projects relating thereto; investment in industries developing, manufacturing and commercializing products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; investment business services; real estate investment services; real property investment, portfolio investment; funds investment; financial investment; capital investments; capital investment services; investment in the field of venture capital; capital settlement; direct investment services; investment in securities; investments in the form of equities, equity-related securities, debt securities, all in listed and unlisted companies; investment banking; investment management; investment holding management; investment management in the field of real estate, industrial, commercial retail, residential and infrastructure development projects; property management; real property investment management; property portfolio management; portfolio investment management, funds management, assets management; venture and development capital funds management services; investment information; investment analysis; investment research; investment advisory and consultancy services; investment studies, appraisals, reports, analysis and valuations; investment evaluations; preparation of investment reports; preparation of financial reports; preparation of financial records and of investment records; financing of property development; corporate financing; corporate finance advice; financial services; financial services in the nature of merger, acquisition, restructuring, and other corporate finance activities; initial public offering advisory services (financial services); raising of capital; financial information; financial analysis services; financial research; financial advisory and consultancy services; financial studies, appraisals, reports, analysis and valuations; financial evaluations; financial planning and management; financial administration; financing of loans services; financial sponsorship; fiscal assessments and evaluations; risk analysis services; processing of financial transactions; collection of financial data; consultancy, transactions and analysis relating to financial matters; banking services; money lending; financial brokerage services; securities stocks and bonds brokerage services; securities exchange services; securities trading services; exchanging money; surety services; fiduciary; real estate agency, real estate management; real property management; real estate brokerage services; renting and leasing of real estate; leasing of office space; rental of office space; real estate information; real estate advisory and consultancy services; real estate appraisals, reports, analysis and valuations; real estate evaluation services; provision of information relating to the aforesaid services; advisory, consultancy, and analysis services relating to all the aforesaid services; the provision of the aforesaid services on-line from a computer data base or the Internet or through telecommunication systems; financing services for new technology; investment services relating to the field of new technology; all included in class 36, price and cost evaluation and analysis; price and cost forecasting or estimation are all included in the broad categories of insurance; financial affairs; monetary affairs; real estate affairs of earlier EUTM No 2 at least. Therefore, they are identical.

Contested services in Class 37

The contested property development; real estate development; residential property development; commercial retail and industrial property development; infrastructure development; building construction; civil engineering, construction engineering and supervision of construction; construction services in infrastructure, industrial, residential and commercial developments; construction and installation of equipment and systems relating to underground transport networks, civil works and infrastructure projects; construction, maintenance, repair and renovation of property, construction of telecommunications network; building project management; on-site building project management; on site project management and refurbishment relating to the construction of buildings, infrastructure facilities, commercial, industrial, residential and real estate facilities, industrial plants, educational, hospital, transport, aviation, port and shipping facilities; on site project management and refurbishment relating to the construction of airport and aerodrome facilities; management of construction projects; management of property development projects, real estate development projects, residential property development projects, commercial retail to industrial property development projects and infrastructure development projects; installation of electricity, water and gas supply in buildings; building maintenance; maintenance, cleaning and repair of buildings, infrastructure facilities, commercial, industrial, residential and real estate facilities, industrial plants, educational, hospital, transport, aviation, port and shipping facilities; installation, maintenance, repair and servicing of buildings, maintenance, cleaning and repair of utilities in buildings, dismantling of industrial plant, construction, repair and maintenance of civil, structural, industrial, mechanical and electrical installations and real estate property; installation, maintenance and repair of telecommunications equipment, apparatus and instruments, networks and systems and infrastructure; installation, maintenance and repair of installations for use in the supply and distribution of electricity, gas, water or telecommunications; installation of electricity, gas, water or telecommunication supply and distribution installations; installation, repair, emergency servicing and maintenance of gas, electricity and water appliances, apparatus and instruments; laying, repair, maintenance, replacement and refurbishment of pipelines; repair of roads and paths, construction, repair and maintenance of gas and electricity installations; installation repair and maintenance of card access systems, computerized security surveillance systems, electricity systems and electronic monitoring systems relating to buildings; construction of energy-using installations Installation of Insulating materials; utilities metering Installation, repair and maintenance services, construction of installations for distribution of gas, gaseous fuels, oils and electricity, consultancy services relating to the maintenance and repair of mechanical engineering structures and engineering works, the aforementioned goods excluding software for maintenance of aircrafts and vehicles; provision of precision engineering services; structural steel engineering, assembly, installation and erection services; constructions, fabrication and erection of steel structures for building; provision of services for the development and construction of industrial and Infra structural plants for the operation of business; information, advisory and consultancy services relating to ail the aforesaid services, the aforementioned goods excluding software for maintenance of aircrafts and vehicles; all included in class 37 have nothing in common with the opponent’s goods and services summarized above. Their producers/providers are different, as well as their nature, purpose and method of use. Their distribution channels and relevant public do not coincide either. Moreover, they are neither in competition nor complementary. This is also true in relation to the specific contested services in this class related to property development; real estate development; residential property development. These services relate to construction or restoration of property. Therefore, they have nothing in common with real estate affairs in Class 36, which comprise real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of related information. This mainly involves finding a property, making it available for potential buyers and acting as an intermediary. Consumers will distinguish real estate agents’ services from those of constructors. Therefore, they are all dissimilar.

Contested services in Class 38

The contested telecommunication services providing and operating a global computer network for the transfer and dissemination of e-commerce and real world business are similar to the opponent’s earlier Spanish mark No 1 equipment for the processing of information in Class 9, which include items essential for telecommunications such as computers. Therefore, they have the same purpose, they usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 39

As just seen above, the opponent’s earlier Spanish mark No 1 equipment for the processing of information in Class 9 includes items essential for telecommunications such as computers. As already mentioned above, the Nice Classification serves only administrative purposes, that is goods or services are not regarded as being dissimilar from each other on the ground that they appear in different classes. Therefore, since the contested telecommunication services providing and operating a global computer network for the transfer and dissemination of e-commerce and real world business in this class and the aforementioned opponent’s goods have the same purpose, usually coincide in relevant public and distribution channels and are complementary, they are similar.

However, the contested distribution of products, namely products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry have nothing in common with the opponent’s goods and services summarized above. Their producers/providers are different, as well as their nature, purpose and method of use. Their distribution channels and relevant publics do not coincide either. Moreover, they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 41

The contested education; providing of training are similar to the opponent’s instructional and teaching material (except apparatus) in Class 16 of earlier EUTM No 2. Teaching material is essential to educational services (such as provision of educational courses, providing of training). Therefore, these goods and services are complementary. This is because, in order to supply educational services, it is both helpful and usual to use educational textbooks, teaching manuals, etc. Service providers offering any kind of course often hand out these goods to participants as learning supports. Given the close link between the goods and services in question as regards their relevant public, common origin, distribution channels, and the fact that the goods complement the services, these goods and services are considered similar.

However, the contested entertainment; sporting and cultural activities have nothing in common with the opponent’s goods and services summarized above. Their producers/providers are different, as well as their nature, purpose and method of use. Their distribution channels and relevant public do not coincide either. Moreover, they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 42

The contested engineering project management services; project management [design]; project management [technical support]; technological services and research and design relating thereto; information technology consulting services; information services relating to information technology; providing research and analysis in the field of Internet, interactive and digital media and information technology; design and development of new technology for others; all included in Class 42 are broad terms that include, for example, IT project management or software development. Therefore, they are similar to the opponent’s computer programs and computer software, for use in the financial and banking sector of earlier Spanish mark No 1 in Class 9, as they usually coincide in producer/provider and relevant public. Furthermore, they are complementary.

However, the contested architectural project management; management of scientific research projects; off-site building project management; scientific services and research and design relating thereto; industrial analysis and research services; scientific research into the development of new products; design, research and development of products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; preparation of reports relating to the development of products; biological development services; biological research services; development of test equipment for biological apparatus; development of test stands for biological apparatus; cell separation technology services; biotechnology research; biotechnology testing; consultancy relating to biotechnology; design and development of biotech products; scientific research and development of the biological function of yeast; design services relating to plant for the biotechnology industry; design services relating to process systems for the biotechnology industry; preparation of reports in the biotechnology field; all included in Class 42 have nothing in common with the opponent’s goods and services summarized above. Their producers/providers are different, as well as their nature, purpose and method of use. Their distribution channels and relevant public do not coincide either. Moreover, they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 43

The contested temporary accommodation; hotel services and hotel operation; serviced apartment, serviced suite and temporary accommodation services; provision of resort and conference facilities; information relating to the aforesaid services; advisory and consultancy services relating to the aforesaid services; all included in Class 43 are similar to a low degree to the opponent’s real estate affairs. These contested services include the services rendered to satisfy consumer needs for short- and middle-term accommodation, for example an accommodation bureau offering holiday homes for a week or for the entire summer. It is increasingly common for such undertakings to also offer services related to the management of properties in Class 36, including rental services for real estate such as houses, flats, etc., for permanent use. Furthermore, these services are marketed through the same channels of distribution, including physical agencies and dedicated websites online. Likewise, it is nowadays common for real estate agencies to offer properties such as houses or flats not only for sale or long term rental, but also for seasonal or short-term rental. Consequently, the services of temporary accommodation and real estate affairs can share at least the same providers, channels of distribution and target the same consumers (26/02/2015, T-713/13, 9flats.com / 50.FLATS (fig.) et al., EU:T:2015:114, § 33; 15/02/2011, T-213/09, YORMA’S y (Fig.) / NORMA et al, EU:T:2011:37, § 49-50).

However, the contested services for providing food and drink; restaurant and catering services; information relating to the aforesaid services; advisory and consultancy services relating to the aforesaid services; all included in Class 43 have nothing in common with the opponent’s goods and services summarized above. Their producers/providers are different, as well as their nature, purpose and method of use. Their distribution channels and relevant public do not coincide either. Moreover, they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 45

The contested legal services; security services for the protection of property and individuals; personal legal affairs consultancy; licensing of intellectual property; copyright management have nothing in common with the opponent’s goods and services summarized above. Their producers/providers are different, as well as their nature, purpose and method of use. Their distribution channels and relevant publics do not coincide either. Moreover, they are neither in competition nor complementary. Therefore, they are dissimilar.

 

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 identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

  

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. In particular, in respect to financial services, although they usually target the general public, which is reasonably well informed and reasonably observant and circumspect, 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). Also in relation to the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money, 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).

 

c) The signs

 

(earlier Spanish mark No 1) and CK-LAB (earlier EUTM No 2)	CK Asset
Earlier trade marks	Contested sign

 

The relevant territories are Spain and 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).

With respect to the earlier EUTM No 2, 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 sequence of letters ‘ckb’ and ‘CK’ in the earlier marks and ‘CK’ of the contested sign as a whole have no concept and are normally distinctive.

The additional verbal element ‘LAB’ placed after the hyphen in the earlier EUTM No 2 is a common abbreviation for laboratory, in English but also in other languages of the relevant territory, such as in Spanish (laboratorio). Considering that this word could refer to the kind of company or place from which the goods and services at issue originate from, it is not, contrary to the applicant’s claim, particularly distinctive. Moreover, it is placed in second position within the sign, where normally consumers will concentrate less. This is justified by the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark since they read 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. The hyphen is a mere typographical element, with no distinctiveness.

Consequently, in light of the above, the Opposition Division finds it appropriate to focus the comparison of the signs in relation to earlier EUTM No 2 on the Spanish-speaking part of the public given that the signs show more similarities from this stance.

The additional verbal element ‘Asset’ of the contested sign will be perceived as a foreign word which will not be understood by the Spanish-speaking public, therefore it remains normally distinctive. Similar considerations applied above for the position of the element ‘LAB’ in the earlier EUTM No 2 are relevant here, namely that the word ‘Asset’ is placed in second position, where the consumers concentrate less.

 

The applicant claims that the contested sign differs from the earlier marks based on the following principles. Firstly, that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs, as in the present case, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. Secondly, since the alphabet is made up of a limited number of letters, it is common that short signs share some common letters. They cannot, for that reason alone, be regarded as similar. However, these claims must be set aside, at least in relation to the two earlier marks under analysis. In fact, in relation to earlier Spanish mark No 1, the signs share the first two letters, ‘CK*’, a coincidence that consumers will not easily ignore, as just explained above. This is also the case in relation to earlier EUTM No 2, which merely adds to the first two coinciding letters ‘CK’ the not particularly distinctive element ‘-LAB’, in second position.

  

Visually, the signs are similar to the extent that they both include the letters ‘CK’ in the same initial position and in the same order. They differ in their subsequent elements, the letter ‘B’ in the earlier Spanish mark No 1 and the word ‘Asset’ in the contested sign. In earlier EUTM No 2 they also differ in the additional element ‘-LAB’, which is however not particularly distinctive. They also differ in the stylisation and colours of earlier Spanish mark No 1, which, however, do not obscure the letters constituting the sign.

Therefore, the signs are visually similar to a below average degree.

  

Aurally, the signs under comparison are likely to be pronounced as acronyms, letter by letter. The pronunciation of the signs coincides in the sound of the first letters ‘CK’ and differs in the sound of their last elements, the letter ‘B’ and the word ‘LAB’ in the earlier Spanish mark No 1 and EUTM No 2 respectively and the word ‘Asset’ in the contested sign.

 

Therefore, the signs are aurally similar to a below average degree.

 

Conceptually, when the contested sign is compared with earlier Spanish mark No 1, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. However, considering that the earlier EUTM No 2 includes the meaningful word ‘LAB’, when this mark is compared with the contested sign, the signs are conceptually not similar, but account must be taken that this element is not particularly distinctive hence its impact on the conceptual comparison 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.

 

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 marks are particularly distinctive by virtue of intensive use or 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, despite the presence of a not particularly distinctive element in the earlier EUTM No 2, as stated above in section c) of this decision.

 

 

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, the goods and services at issue are identical or similar to varying degrees as well as dissimilar. They are directed at both the general and the professional public with a degree of attention varying from average to high.

The signs are visually and aurally similar to a below average degree essentially on account of the coinciding letters ‘CK’ at the beginning of each sign. They differ in their last elements, the letter ‘B’ of the earlier Spanish mark No 1 and the word ‘Asset’ of the contested sign, and in the word ‘LAB’ of the earlier EUTM No 2. Despite creating some conceptual distance between the earlier EUTM No 2 and the contested sign, this latter word, however, will not have a great impact on the comparison due to the fact that it is not particularly distinctive. For the comparison between the earlier Spanish mark No 1 and the contested sign there is no meaningful concept that could render the signs more distinguishable and, thus, avoid the potential for confusion between the signs that arises from their visual and aural similarities.

Consequently, considering 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 Opposition Division considers that the visual and aural similarities between the signs are sufficient to lead to a likelihood of confusion between the marks for identical or similar goods and services. Therefore, even considering that the degree of attention that the relevant public will display in relation to some of the goods and services at issue may be high, the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers. Even consumers with 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).

Moreover, when comparing the signs a likelihood of association cannot be excluded. 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 or economically linked undertakings. In the current circumstances, it cannot be excluded 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 or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Therefore, considering the visual and aural similarities between the marks at issue, a likelihood of confusion cannot be excluded even in relation to the goods and services found to be similar only a to a low degree.

  

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish public and therefore the opposition is partly well founded on the basis of the opponent’s EUTM No 16 631 401 and Spanish trade mark No 3 510 746. 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.

 

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (including to a low degree) to those of the above mentioned earlier trade marks.

  

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

  

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

3) Spanish trade mark registration No 3 050 573 for goods and services in:

Class 9: Credit, debit and prepaid magnetic cards, coded plastic cards, coded cards for use in bank transactions; automated teller machines and terminals to process electronically payments made with credit and debit cards.

Class 36: Insurance services; financial business; financial analysis; monetary business; bank business; direct banking (home banking); brokerage services and quotations in bag; capital administration and investment; administration, brokerage and assessment of real estate; real estate services; deposit of securities; issuance of credit cards and debit; fiduciary services; constitution and investment of funds; constitution of mortgages; banking, financial, monetary, insurance and real estate services online, through telecommunication networks (including mobile telephones), telematic networks and global computer communications networks.

 

With respect to this earlier trade mark, since it covers the same or a narrower scope of goods and services as the earlier marks analysed above, 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 found dissimilar.

 

The remaining earlier marks under Article 8(1)(b) EUTMR

4) EUTM registration No 11 206 471 for goods and services in:

Class 9: Magnetic credit cards, debit cards and pre-payment cards, encoded magnetic cards, magnetic cards for banking operations; ATM cards (magnetic).

Class 16: Printed matter including printed publications, periodicals, user guides; Instructional and teaching material (except apparatus), printed advertising matter; Calendars and diaries, credit, debit and pre-pay cards (not magnetic).

Class 35: Bookkeeping and accounting services; book-keeping; payroll preparations; business appraisals, enquiries, investigations, research and business management advice; business management consultancy; advertising and promotion services and information services related thereto; business management; business advisory services; arranging of trade fairs for commercial and advertising purposes.

Class 36: Insurance, financial affairs, monetary affairs, housing agency services.

Class 38: Telecommunications service; broadcasting of programmes by radio, television and the internet; providing of access to data banks and databases; internet portal services; providing bulletin board services; services relating to communications by computer terminals; communications via fibre-optic networks, electronic communications via global computer networks, of text, graphics, databases and computer programs.

Class 41: Education; providing of training; entertainment; arranging of sporting and cultural activities; arranging of trade fairs and exhibitions for cultural or educational purposes; production of audiovisual recordings; publication of books and texts, other than publicity texts; online electronic publications (not downloadable); arranging and conducting of competitions; colloquiums, conferences and congresses, providing museum facilities (presentations, exhibitions); production and presentation of live performances.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer software (updating of -); hosting computer sites [web sites]; computer rental; rental of web servers; rental of computer software; computer system analysis; water analysis; analysis for oil-field exploitation; chemical analysis; computer virus protection services; architecture; authenticating works of art; calibration [measuring]; construction drafting; consultancy in the field of energy-saving; architectural consultation; consultancy in the design and development of computer hardware; computer software consultancy; monitoring of computer systems by remote access; quality control; oil-well testing; conversion of data or documents from physical to electronic media; data conversion of computer programs and data [not physical conversion]; creating and maintaining web sites for others; design of interior decor; digitization of documents [scanning]; packaging design; graphic arts designing; dress designing; computer system design; computer software design; industrial design; duplication of computer programs; material testing; textile testing; styling [industrial design]; project studies (technical -); evaluation of wool (quality -); valuation of standing timber (quality -); underwater exploration; weather forecasting; engineering; vehicle roadworthiness testing; installation of computer software; bacteriological research; biological research; cosmetic research; physics [research]; research in the field of environmental protection; mechanical research; geological research; chemical research; technical research; research and development for others; land surveying; maintenance of computer software; oil-field surveys; geological surveys; surveying; urban planning; computer programming; geological prospecting; oil prospecting; providing search engines for the internet; chemistry services; recovery of computer data; handwriting analysis [graphology]; provision of scientific information, advice and consultancy in relation to carbon offsetting; laboratory (scientific -) services; cloud seeding.

Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; adoption agency services; detective agencies; night guards; marriage agencies; rental of fire alarms; rental of safes; rental of fire extinguishers; clothing rental; evening dress rental; opening of security locks; arbitration services; missing person investigations; chaperoning; dating services; licensing of intellectual property; licensing of computer software [legal services]; security consultancy; intellectual property consultancy; litigation services; crematorium services; pet sitting; baby sitting; house sitting; lost property return; funerals; fire-fighting; copyright management; personal body guarding; horoscope casting; monitoring of burglar and security alarms; baggage inspection for security purposes; inspection of factories for safety purposes; personal background investigations; genealogical research; legal research; mediation; organization of religious meetings; planning and arranging of wedding ceremonies; undertaking; intellectual property watching services; guards; registration of domain names [legal services]; alternative dispute resolution services.

5) EUTM registration No 11 206 497 for services in:

Class 35: Bookkeeping and accounting services; book-keeping; payroll preparations; business appraisals, enquiries, investigations, research and business management advice; business management consultancy; advertising and promotion services and information services related thereto; business management; business advisory services; arranging of trade fairs for commercial and advertising purposes.

Class 36: Insurance, financial affairs, monetary affairs, housing agency services.

Class 41: Education; providing of training; entertainment; arranging of sporting and cultural activities; arranging of trade fairs and exhibitions for cultural or educational purposes; production of audiovisual recordings; publication of books and texts, other than publicity texts; online electronic publications (not downloadable); arranging and conducting of competitions; colloquiums, conferences and congresses, providing museum facilities (presentations, exhibitions); production and presentation of live performances.

The remaining contested goods and services are:

Class 16: Cardboard; typewriters; plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

 

Class 35: Retail services of dietetic preparations, blood pressure monitors, cosmetics, food and beverages, pharmaceuticals, fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, air fresheners; all included in Class 35.

 

Class 37: All the contested services in this class.

Class 39: Distribution of products, namely products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry.

Class 41: Entertainment; sporting and cultural activities.

Class 42: Architectural project management; management of scientific research projects; off-site building project management; scientific services and research and design relating thereto; industrial analysis and research services; scientific research into the development of new products; design, research and development of products relating to human health and environmental sustainability, biotech products, scientific and technological products, products for the health care industry, cosmetic and beauty care industry, food and beverage industry, health food and diet industry, nutraceutical industry, pharmaceutical and veterinary industries, chemical industry, agricultural, horticultural and forestry industries including industries for fertilizers, grains, seeds, natural plants, flowers and foodstuffs for animals, biological and biotechnology industries, bioremediation industry, air freshening, sanitary, recycling and waste treatment industry; preparation of reports relating to the development of products; biological development services; biological research services; development of test equipment for biological apparatus; development of test stands for biological apparatus; cell separation technology services; biotechnology research; biotechnology testing; consultancy relating to biotechnology; design and development of biotech products; scientific research and development of the biological function of yeast; design services relating to plant for the biotechnology industry; design services relating to process systems for the biotechnology industry; preparation of reports in the biotechnology field; all included in Class 42.

Class 43: Services for providing food and drink; restaurant and catering services; information relating to the aforesaid services; advisory and consultancy services relating to the aforesaid services; all included in Class 43.

Class 45: All the contested services in this class.

Comparison of the goods and services

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

Relevant public and degree of attention

The goods and services assumed to be identical target the general and the professional public with a degree of attention varying from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

Comparison of the signs

However, these earlier EUTMs and are less similar to the contested mark ‘CK Asset’. This is mainly because of their structure and length, but also their graphic representation. Account must be taken that, although their common element ‘cecabank’ is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). These earlier marks will be dissected by the relevant public because they contain the component ‘bank’, which is a basic word in English which is likely to be understood by the relevant consumer as referring to a financial institution. Therefore, its distinctiveness will vary from average to none in relation to the relevant goods and services. In particular, in relation to the goods and services that overlap with the remaining contested goods and service, such as entertaining or legal services, this word is normally distinctive. The component ‘ceca’ is meaningless for most of the EU languages and normally distinctive. However, for the Italian-speaking part of the public, ‘ceca’ is an adjective identifying a person or an object originating from the Czech Republic (information extracted from Treccani on 25/03/2021 at https://www.treccani.it/vocabolario/ceco2/), hence it is weak at best. The additional elements ‘SERVICIOS FINANCIEROS’ will be understood in some parts of the EU, such as in Spanish, Italian (servizi finanziari), Portuguese (serviços financeiros), where they will be perceived as non-distinctive in relation to part of the relevant goods and services. For the remaining part of the public in the EU for which they are meaningless and in relation to other goods and services which have no relation to financial services, they are normally distinctive. In any event, this expression is secondary due to its position underneath the element ‘cecabank’, and due to its lighter color with respect to the use of bold for the element ‘cecabank’, and finally for its reduced size in relation to the dominant element ‘cecabank’. The contested sign is composed of the meaningless two letters ‘CK’ and the English word ‘Asset’, that will be perceived by a part of the public, which includes at least the English-speaking public, as a ‘useful or valuable thing or person’ or more specifically and usually in plural, an ‘item of property owned by a person or company, regarded as having value and available to meet debts, commitments, or legacies’ (information extracted at Lexico on 25/03/2021 from https://www.lexico.com/definition/asset). Considering its possible use as a quite general term, to encompass something positive, it has a laudatory connotation that makes it not particularly distinctive for any of the goods and services at issue. For the part of the public that will not understand it, such as the Spanish-speaking public as mentioned above, it remains normally distinctive.

Considering the above, the signs are visually dissimilar, conceptually not similar and aurally dissimilar for some parts of the EU public. For another part of the relevant public, such as the Spanish-speaking public, the aural similarity is below average, due to the similar sound that the pronunciation of the syllables ‘ce’ and ‘ca’ in the earlier EUTMs under analysis and the contested sign’s letters ‘C’ and ‘K’ may produce in this language.

Distinctiveness of the earlier marks

These earlier marks’ distinctiveness as a whole is normal, despite the presence of some elements of reduced distinctiveness for some parts of the public and for some goods and services.

Global assessment

Account must be taken that the appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Some of the goods themselves and some of the goods object of the services are ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). However, the signs do not have any visual point of contact, as they only share random letters.

With reference to the remaining goods and services that could be referred to aurally, the signs have some phonetic points of contact, for example for the Spanish-speaking public. However, these phonetic similarities are not sufficient to lead to a likelihood of confusion on the part of this public. The aural coincidence lies in ‘ce’/’c’ and ‘ca’/’k’. However, the words ‘bank’, ‘SERVICIOS FINANCIEROS’ and ‘Asset’, respectively, will not go unnoticed by the relevant public. As a consequence, even if the signs have some phonetic points in common, these letters/sounds do not stand out as independent distinctive elements within both signs.

For the remaining part of the public that will not pronounce these letters similarly, the signs are even more far apart.

Therefore, even if the goods and services have been assumed to be identical, considering also that their relevant public will display a high degree of attention for some of them, it will certainly notice the differences between the signs at issue and will not be confused as to the origin of these goods and services.

In light of the analysis above, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Vanessa PAGE HOLLAND

Valeria ANCHINI

Cynthia DEN DEKKER

 

 

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.