OPPOSITION No B 3 016 378

Hansa Urbana, S.A., Avd. Locutor Vicente Hipólito, nº 39, 03540 Playa de San Juan (Alicante), Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Areim Malmö Lybeck AB, Norrlandsgatan 18, 111 43 Stockholm, Sweden (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative).

On 30/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 016 378 is partially upheld, namely for the following contested services:

Class 36: Leasing of shopping mall space; real estate management services relating to shopping malls; estate management; real estate affairs; real-estate valuations; rental of offices [real estate]; land leasing services; renting of commercial premises; accommodation bureaux [apartments].

2. European Union trade mark application No 17 088 519 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 088 519 for the figurative mark . The opposition is based on:

1. Spanish trade mark registration No 1 975 885 for the word mark ‘HANSA URBANA’ (TM 1),

2. Spanish trade mark registration No 2 137 608 for the figurative mark (TM 2),

3. Spanish trade mark registration No 2 330 032 for the word mark ‘HANSA ALICANTE GOLF’ (TM 3),

4. Spanish trade mark registration No 2 330 033 for the word mark ‘ HOTELES HANSA’ (TM 4),

The opponent invoked Article 8(1)(b) EUTMR with regard to all the abovementioned rights.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 09/08/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 09/08/2012 to 08/08/2017 inclusive.

Furthermore, the evidence must show use of the trade marks for the services on which the opposition is based, namely the following:

Spanish trade mark registrations No 1 975 885 and No 2 137 608 (TM 1 and TM 2)

Class 36: Real estate services in general.

Spanish trade mark registration No 2 330 032 (TM 3)

Class 42: Hotels and aparthotels services.

Spanish trade mark registration No 2 330 033 (TM 4)

Class 42: Hotel services.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 20/09/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 25/11/2018 (falling on Saturday) to submit evidence of use of the earlier trade marks. A time limit that expires on a day on which the Office is not open for receipt of documents or on which ordinary post is not delivered in the Office’s locality (Saturdays, Sundays and public holidays) is extended to the first working day thereafter. Therefore, the evidence of use that the opponent submitted on 26/11/2018 was within the time limit.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

• 182 invoices dated from 01/12/2012 to 07/09/2017 (172 dated within the relevant period), issued by the opponent to different recipients in Spain; the services covered by the invoices are described as ‘alquiler’ (translated into ‘rental services’ in the opponent’s submissions). The trade mark depicted at the top of the invoices is as follows (exhibit no 1):

• documents addressed by the opponent as relating to the real estate project ‘Arroyo Golf’ from 2017. The documents include two invoices in Spanish dated in the first half of 2017 (no translation into the language of the proceedings), a plan of an apartment on sale with the trade mark depicted as follows , pictures of an office and an advertisement on a building (exhibit no 2):

• promotion catalogues from March 2017 in English and from 2016 in Spanish, describing that the opponent has been operating for more than 30 years in the development of real estate projects covering: the selection and purchase of land, product design, financial management, procurement and project management and administration, construction, marketing and sales management (exhibit no 3),

• invoices referred to by the opponent as suppliers’ invoices, addressed to the opponent (exhibit no 4),

• pictures of the opponent’s offices (exhibit no 5); trade mark depicted in the following way:

• printouts from the opponent’s website hansainmobiliaria.com in Spanish, undated, with archive information that the page has been in use since 2016, trade mark is depicted in the following way (exhibit no 6):

• press releases in Spanish from 2014, 2015, 2016, not translated, relating to the opponent, the opponent clarifies that one of the articles describes the renovation of a monastery in Murcia,

• printouts from the webpage idealista.com with on on-line advertisements of the opponent’s real estate services, according to the information on the webpage, the opponent has been offering its services on the abovementioned website since 2014; the services concerned 230 buildings, trade mark depicted in the following way (exhibit no 8):

• advertisements of the opponent, such as flyers in both Spanish and English, billboards, banners, posters on different locations; the evidence relates to sales and rental of real estate in Alicante, Spain; trade mark as follows:

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely, part of the advertising material and invoices, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation. This is also because; the opponent did in fact translate some of the relevant parts of evidence in its submissions.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the services for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C 40/01, Minimax, EU:C:2003:145; 12/03/2003, T 174/01, Silk Cocoon, EU:T:2003:68).

Place of Use

The evidence shows that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (‘EUR’) and addresses on the invoices, or in the advertisements. Therefore, the evidence relates to the relevant territory.

Time of use

The relevant evidence, including especially most of the invoices, is dated within the relevant period. Moreover, even if it is true, as the applicant pointed out, that the photos of advertisements on billboards and buildings, as well as the photos of the opponent’s offices are not dated (by nature), this is only complementary material that is assessed together with the remaining dated evidence.

Extent of use

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Over a 170 invoices, from different dates during the years from 2012 to 2017, issued to different recipients in Spain, together with advertising material, clearly show the mark has been used in an extent that is far beyond just token use.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Use for registered services

The applicant argued that it is unclear what services are the trade marks actually used for. In this regard the Opposition Division finds that, as for the TM 1 and TM 2 the services could be inferred from the invoices. In all the 182 invoices the services are referred to as ‘alquiler’, which the opponent correctly translated into rental. When accessed together with the remaining evidence namely the advertising material (exhibit 8 and 9) and the pictures of the offices (exhibit 5) it is clear that the services at issue refer to rental of real estate.

Nevertheless, in the evidence submitted there is no sign of rendering hotel or aparthotel services by the opponent. Therefore, the Opposition Division considers that the opponent has not provided any indications concerning the nature of use of the earlier marks TM 3 and TM 4. In such case, the examination will procced only with regard to TM 1 and 2.

Use of the trade marks in their function

The verbal element of the TM 1 and TM 2 overlaps with the company name of the opponent. Nevertheless, it must be borne in mind that use of a sign as company name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (judgment of 13/04/2011, T-209/09, Alder Capital, EU:T:2011:169, § 55-56). In general, this is not the case when the company name appears on the back of a catalogue or as an incidental indication on a label (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 47). However, this is obviously not the case here. Clearly, in this case, the presentation of the sign on the offices’ doors, in documents, advertisements, in the catalogues in visible places and at the top of the invoices must be regarded as sufficient to establish trade mark use for services (06/11/2014, T-463/12, MB, EU:T:2014:935, § 44-45).

Use of the trade marks as registered

In the present case, the way the mark is used on the invoices (exhibit 1) and most advertising material either fully complies with the registered form or just adds colours to the depiction. Even if in some cases, the figurative element is placed not at the top but at the side of the verbal element, or even if the verbal element ‘URBANA’ is replaced by ‘INMOBILARIA’, this does not alter the distinctive character of the marks. This is because the Spanish verbal elements ‘urbana’ and ‘Inmobiliaria’, mean ‘urban’ and ‘real estate’ in English, and therefore are non-distinctive for the services rendered. According to settled case law if the omitted element is in a secondary position and not distinctive, its omission does not alter the distinctive character of the trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37). Likewise, the addition of a non-distinctive and secondary element also does not constitute an unacceptable alteration.

In this case, the verbal element ‘HANSA’ and the figurative device that precedes it are the most distinctive elements of the registered mark TM 2. A coincidence in those elements is therefore sufficient not to change the distinctive character of the sign, according to a well-established practice. Therefore, the signs as used and registered are considered broadly equivalent (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

As for the word mark TM 1, the stylisation of the verbal element ‘HANSA URBANA’ as used is not particularly striking and will be perceived as a graphical means of bringing the verbal element to the attention of the public. Therefore, in the Opposition Division’s view, using this standard font to depict the word mark also does not alter the distinctiveness of this trade mark.

Overall assessment

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade marks TM 1 and TM 2 during the relevant period in the relevant territory.

However, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks TM3 and TM 4 were genuinely used in the relevant territory during the relevant period of time. Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) insofar as based on these earlier rights.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The services

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

Class 36: Real estate in general.

The contested services are the following:

Class 35: Advertising; Business management; Business administration; Office functions; Retail services in relation to sporting equipment; Retail services in relation to sporting articles; Retail services in relation to baked goods; Retail services in relation to toys; Retail services in relation to games; Retail services in relation to clothing; Retail services in relation to furnishings; Retail services in relation to tableware; Retail services in relation to cookware; Retail services in relation to sewing articles; Retail services in relation to furniture; Retail services in relation to art materials; Retail services in relation to stationery supplies; Retail services in relation to bags; Retail services in relation to umbrellas; Retail services in relation to luggage; Retail services in relation to jewellery; Retail services in relation to works of art; Retail services in relation to ice creams; Retail services in relation to chocolate; Retail services in relation to confectionery; Retail services in relation to footwear; Retail store services in the field of clothing; Retail services relating to delicatessen products; Retail services in relation to mobile phones; Retail services in relation to time instruments; Retail services in relation to lighting; Retail services in relation to coffee; Retail services in relation to horticulture products; Retail services in relation to toiletries; Retail services in relation to foodstuffs; Retail services in relation to teas; Retail services in relation to beauty implements for humans; Retail services in relation to festive decorations; Retail services in relation to hygienic implements for humans; Retail services in relation to smartwatches; Retail services in relation to smartphones; Retail services in relation to wearable computers; Online retail store services relating to clothing; Retail services in relation to recorded content; Retail services in relation to non-alcoholic beverages; Retail services in relation to dietary supplements; Retail services in relation to dietetic preparations; Retail services in relation to frozen yogurts; Retail services in relation to audio-visual equipment; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail services in relation to food cooking equipment; Retail services in relation to preparations for making beverages; Product demonstrations and product display services; Advertising, marketing and promotional consultancy, advisory and assistance services; Loyalty, incentive and bonus program services; Trade show and commercial exhibition services; Provision of advertising space, time and media; Advertising services provided via the internet; Advertising and marketing services provided by means of social media; Organisation of trade fairs for advertising purposes; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Arranging of competitions for advertising purposes; Brand strategy services; Marketing the goods and services of others; Computerized file management; Publication of publicity materials on-line; Compilation of information into computer databases; The bringing together and displaying of a variety of goods relating to accessories, facial treatments, facial products, bathroom articles, bathroom furnishings, children's fashion clothing, children's shoes, flowers, books, café and restaurant food, compact discs, women's fashion clothing, women's shoes, leisure articles, leisurewear, spectacles, handbags, home furnishings, men's fashion clothing, men's shoes, skin care products, hair care products, coffee and tea sold by weight, cameras, clocks/watches, cosmetics, kitchen products, toys, mobile telephones, MP3 players, furniture, perfume, porcelain, travelling bags, pearls sold by weight, rucksacks, beauty products, jewellery, bedroom furnishings, sporting articles, stereo systems, stockings, tights, beds, bed clothes, textiles, television sets, tents, underclothing and fashion clothing for young people, enabling customers and users to obtain information about and to purchase goods via the internet; Systemization of information into computer databases; Business information; Information services relating to businesses; Advertising services relating to the provision of business; Business operation of shopping centers for others; Providing consumer information relating to goods and services; Online ordering services; Online community management services; Conducting virtual trade show exhibitions online; Online retail services relating to jewelry; Online retail services relating to luggage; Online retail services relating to handbags; Online retail services relating to clothing; Online retail services relating to toys; Online retail services relating to cosmetics; Promotion, advertising and marketing of on-line websites; Commercial information services; Information services relating to business matters; Consumer market information services; Provision of information concerning commercial sales.

Class 36: Leasing of shopping mall space; Issue of tokens, coupons and vouchers of value; Real estate management services relating to shopping malls; Estate management; Real estate affairs; Real-estate valuations; Rental of offices [real estate]; Land leasing services; Renting of commercial premises; Accommodation bureaux [apartments].

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Photography; News reporters services; Conducting educational workshops in the field of business; Sign language interpretation; Translation and interpretation; Electronic desktop publishing; Providing on-line electronic publications, not downloadable; Computer education training services; Computer training; Conducting lotteries for others; Organization, production and presentation of theatrical performances; Organising of stage shows; Amusement centers; Arranging of displays for cultural purposes; Party planning; Arranging of beauty contests; Arranging and conducting of conferences; Arranging and conducting of congresses; Seminars; Symposiums relating to entertainment; Organisation of symposia relating to training; Library services; Cinema presentations; Booking of seats for shows; Planning (Party -) [entertainment]; Golf facilities (Providing -); Publication of texts; Rental of radio and television sets; Recreation facilities (Providing -); Providing on-line publications; Vocational guidance [education or training advice]; Gambling; Publication of electronic books and periodicals on the Internet; Publication of books, magazines, almanacs and journals; Health club services [health and fitness training].

Class 43: Providing temporary housing accommodations; Hotels, hostels and boarding houses, holiday and tourist accommodation; Juice bars; Restaurants; Services for providing food and drink; Catering for the provision of food and beverages; Cafés; Rental of catering equipment.

Class 44: Medical services; Veterinary services; Agriculture, horticulture and forestry services; Beauty salons; Pharmaceutical advice; Psychologist (Services of a -); Hygienic and beauty care; Massage; Opticians' services; Medical services.

Class 45: Personal shopper services; Rental of clothing; Lost property return; Maintaining lists of wedding presents for selection by others; Personal gift selection for others.

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.

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.

Contested services in Class 36

The contested leasing of shopping mall space; real estate management services relating to shopping malls; estate management; real estate affairs; real-estate valuations; rental of offices [real estate]; land leasing services; renting of commercial premises; accommodation bureaux [apartments] are all included in the opponent’s real estate in general. Therefore, they are identical.

However, the contested issue of tokens, coupons and vouchers of value are very specialized services which are dissimilar to the opponent’s real estate in general. These services have nothing in common. Their nature, purpose, method of use are different. They are not complementary nor in completion. Finally, they usually do not have the same providers.

The services in Classes 35, 41, 43, 44 and 45

The opponent’s real estate services include a wide variety of services relating to real estate matters, such as the services provided by real estate agencies and brokers (the leasing and/or rental, purchase, sale and management of real estate etc.). However, even though these services also include rental of 'accommodation', just like the contested services in Class 43, the fact remains that the services protected by the earlier signs relate to permanent or long term rentals. On the other hand, the contested mark refers to short-term, holiday accommodation but not permanent housing. Whereas the services in Class 36 would be provided by real estate agencies, as mentioned above, the services of the earlier mark are provided by hotels, guesthouses and similar. Therefore, the services under comparison satisfy different needs and are usually provided by different entities. Consequently, the Opposition Division finds them dissimilar.

Likewise, the contested services in Classes 35, 41, 43, 44 and 45 include various services, such as the ones aimed to help business to develop (advertising, business management and administration, office functions, computerised file management etc.); education; entertainment; sporting and cultural services; providing of food and drink; medial, veterinary and beauty services, but also agriculture, horticulture and forestry. The contested mark also covers retail of different goods and related services such as personal shopper services or gift selection. These services have nothing in common with the opponent’s real estate services. There is no link of complementarity or competition, or any coincidence in terms of purpose, distribution channels and providers that could create any degree of similarity. Therefore, these services under comparison are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are directed at the public at large as well as business customers. Since the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money, the relevant consumer, whether professional or not, is in any event deemed to possess a higher than average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010-2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

3. The signs

HANSA URBANA (TM1) (TM2)
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The common verbal element ‘HANSA’ present in all the trade marks under comparison will be associated, at least by part of the public, with a medieval merchant guild or trading association. As it does not directly refer to any qualities of the services rendered, it is considered distinctive. The same level of distinctiveness equally applies for the part of the public that would not have any associations with this verbal element and would consider it meaningless.

The verbal element ‘URBANA’ in the earlier signs is the Spanish equivalent of the English ‘urban’. Therefore, with reference to the services rendered under the earlier signs, it solely informs the public that the services relate to a town or city. In such case this element must be considered non-distinctive.

The figurative elements depicting different stylisations of the letter ‘H’ (in the earlier mark TM 2 and in the contested sign) are normally distinctive. However, it must be borne in mind that when signs are composed of figurative and verbal elements, the verbal element of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). Moreover, although the stylized depictions of the letter ‘H’ have no meaning in relation to the relevant services, it is quite common for businesses to ‘play’ with the appearance of the first letter of the verbal element/s in a mark, for instance transferring it into a logo. Therefore, the consumers are accustomed to this practice and will perceive the figurative elements depicting the letter ‘H’ (in the TM2 and in the contested sign) only as reinforcing the first letter of the verbal element of the marks.

Visually, the signs coincide in the only distinctive verbal element ‘HANSA’ of the marks, which is moreover depicted in black uppercase letters in both figurative signs under comparison (the contested and the earlier sign TM 2). The marks differ in the additional non-distinctive element ‘URBANA’ of the earlier signs and in the stylisations of the letter ‘H’ preceding the verbal elements of the figurative marks.

Therefore, as the signs coincide in their distinctive verbal elements, they are considered visually similar to an above average degree. This finding is only reinforced by the fact that the figurative signs also have a similar structure, with the stylised letter ‘H’ above the verbal elements.

Aurally, the pronunciation of the signs coincides in the sound of their first verbal elements ‛HANSA’, present identically in both signs. It differs in the sound of the additional word ‛URBANA’ of the earlier signs, which has no counterpart in the contested mark.

As for the letter ‘H’ in the figurative marks, it will not be pronounced, as it merely reinforces the first letter of the verbal element of the marks.

Therefore, as the signs coincide in their first distinctive elements, and as the differencing element is non distinctive, the signs are considered to be aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The figurative elements depicting the letter ‘H’ in the earlier mark TM 2 and in the contested mark, will be merely perceived as a reference to the first letter of the following verbal elements and as such will not have much impact on the conceptual comparison of the signs.

For part of the public both signs will be associated with a medieval merchant guild or trading association, therefore in this extent the signs are conceptually identical. The additional verbal element of the contested signs, being not-distinctive, will not help the consumers to identify the origin of the services. Therefore, will not create a conceptual difference between the signs.

As for the part of the public that does know the meaning of ‘HANSA’, neither of the signs has a meaning as a whole. As mentioned above the additional element ‘URBANA’, is non-distinctive and cannot indicate the commercial origin. Therefore, the attention of the relevant public will be attracted by the fanciful verbal element ‘HANSA’, which has no meaning for this part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, §22).

In the present case, the services at issue are partially identical and partially dissimilar. The relevant public’s degree of attention is higher than average. The signs are visually similar to an above average degree, aurally similar to a high degree and conceptually they are identical or the assessment does not influence the comparison.

The marks are similar in that they coincide in the verbal element ‘HANSA’; that is, the only distinctive verbal element of the earlier marks is incorporated in the contested sign. The additional verbal element in the earlier signs, ‘URBANA’, is non-distinctive and as such is unable to indicate the commercial origin of the services. The figurative stylsations of the letter ‘H’ (although different in the depictions of the figurative marks under comparison), also to some extent add to the similarity of the signs. This is because their presence creates a similar structure of the signs at issue. Moreover, it must be borne in mind that it is common practice for manufacturers or service providers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, to denote new product lines or to endow the trade mark with a new, modern image. Furthermore, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices. Therefore, the Opposition Division finds that the relevant consumer may perceive the contested sign 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 (see, by analogy, 23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49) even if the attention of the public will be higher.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registrations TM 1 and TM 2.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Renata COTTRELL

Marta Maria CHYLIŃSKA

Gonzalo BILBAO TEJADA

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.