OPPOSITION No B 3 027 995

EUI Limited, TY Admiral, David Street, CF10 2EH, Cardiff, United Kingdom (opponent), represented by A.A. Thornton & Co., 10 Old Bailey, EC4M 7NG, London, United Kingdom (professional representative)

a g a i n s t

Beijing Chehejia Information Technology Co. Ltd., Room 312707, Building 5,No.1 Futong East Avenue, Chaoyang, Beijing, People´s Republic of China (applicant), represented by Gevers, Brussels Airport Business Park Holidaystraat 5 1831 Diegem

Belgium (professional representative).

On 17/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 027 995 is partially upheld, namely for the following contested services:

Class 36: Accident insurance underwriting; actuarial services; insurance brokerage; insurance underwriting; fire insurance underwriting; health insurance underwriting; marine insurance underwriting; life insurance underwriting; insurance consultancy; insurance information; instalment loans; credit bureaux; banking; mutual funds; fund investments; capital investments; exchanging money; travelers' checks [cheques] (issuing of -); clearing, financial; financial clearing; safe deposit services; organization of collections; loans [financing]; fiscal valuations; financial evaluation [insurance, banking, real estate]; financing services; financial management; mortgage banking; savings bank services; hire-purchase financing; securities brokerage; stock broking services; financial analysis; check [cheque] verification; financial consultancy; processing of credit card payments; processing of debit card payments; electronic funds transfer; financial information; rent collection; issue of tokens of value; deposits of valuables; stock exchange quotations; issuance of credit cards; retirement payment services; financial sponsorship; online banking; business liquidation services, financial; repair costs evaluation [financial appraisal]; brokerage of carbon credits; providing financial information via a web site; financial management of reimbursement payments for others; venture capital financing; monetary exchange; acquisition and transfer of monetary claims; exchange services relating to the trading of futures; automobile lease financing; equity capital investment; providing stock/securities market information; foreign exchange bureaux; foreign exchange information services; financial evaluation for insurance purposes; provision of funds for hire purchase and for leasing; atm banking services; on-line real-time currency trading; debt management services; debt recovery services; bill payment services; loan and credit, and lease-finance services; secured loans to fund the provision of instalment credit agreements on motor vehicles; leasing of real estate; real estate agencies; housing agencies; real estate appraisal; real estate management; apartment house management; renting of flats; accommodation bureaux [apartments]; rental of offices [real estate]; leasing of farms; estate agency services for sale and rental of buildings; guarantees; charitable fund raising; fiduciary; lending against security.

2. European Union trade mark application No 17 265 406 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 265 406 . The opposition is based on, inter alia, European Union trade mark registration No 16 171 324 for the word mark ‘App&Go’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

Initially, the opposition was directed against all the goods and services of the contested application. In the course of proceedings, the opponent in its letter of 24/05/2018 limited its extent, and the opposition is now directed at all services in Class 36 and some services in Class 39.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 16 171 324.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; electronic apparatus, equipment and instruments for use in recording data and information concerning vehicle performance, fuel consumption and vehicle behaviour; electronic apparatus, equipment and instruments for use in recording data and information concerning driver behaviour, driving indications and performance; electronic data recordal and retrieval devices for use in vehicles; electronic data recordal and retrieval devices for use in vehicles relating to fuel consumption, tyre pressure, brake wear and tear and vehicle efficiency and economy; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; computer software applications for use with mobile communication devices; telematics software and hardware; mobile telephone apparatus and equipment; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire extinguishing apparatus; none of the aforesaid goods relating to goods and services for the agricultural sector.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; insurance and financial services; motor and non-marine general insurance services; motor insurance; fire insurance; health insurance; life insurance; marine insurance; information services relating to insurance and finance, provided on-line from a computer database or the Internet; insurance brokerage, consultancy, information and underwriting services; underwriting of motor accident insurance; brokerage of stocks, bonds and securities; financial consultancy, information and management services; capital investment; fund investment; loan, warranty and extended warranty services financing of loans; investment services; financial management services; unit trust, mortgaging, investment management, trusteeship, pension and financial advisory services; financial sponsorship; issuance of credit cards; issuance of charge cards and debit cards; trade discount card services; financial evaluation (insurance and real estate); financial management of consumer and trade schemes; electronic transfer of funds; charitable fund raising; advice and consultancy services relating to all the aforesaid services.

Class 38: Telecommunications; telecommunication of information (including web pages), computer programmes and all other data and images; provision of telecommunications access and links to computer databases, the Internet and the World Wide Web; reception, recordal, communication, transmission, networking, and telecommunication services, namely the display of information from databanks and databases; electronic mail services; facsimile, telex, telephone and telegram services; cellular telephone communication; rental of telephones, cellular telephones and telecommunication apparatus and equipment; reception, recordal, communication, networking and transmission of data and images by means of cable, computer, electronic mail, facsimile, fibre optics, infra-red, laser beam, microwave, radio, radio paging, teleprinter, teleletter, television and satellite; message sending; paging services; computer aided transmission of facsimile messages and images; telecommunication services providing access to product and service directories and information, telephone and facsimile directories and financial transactions and information; transmission, communication and telecommunication of information for ticket sales purposes; news and press agencies; providing access via computers and communications networks including the Internet, to text, electronic documents, databases, graphic and audiovisual information; Internet portal services; providing access to MP3 web sites on the Internet; providing access to digital music web sites on the Internet; providing internet chat rooms; provision of access to computer programmes via home page interfaces; providing electronic access to periodicals and other printed matter on the Internet, computers and communications networks; advice, information and consulting services relating to all the aforesaid services.

The contested services, after the limitation of the extent of the opposition, are the following:

Class 36: Accident insurance underwriting; Actuarial services; Insurance brokerage; insurance underwriting; fire insurance underwriting; health insurance underwriting; Marine insurance underwriting; Life insurance underwriting; Insurance consultancy; Insurance information; Instalment loans; Credit bureaux; Banking; Mutual funds; Fund investments; Capital investments; Exchanging money; Travelers' checks [cheques] (issuing of -); Clearing, financial; Financial clearing; Safe deposit services; Organization of collections; Loans [financing]; Fiscal valuations; Financial evaluation [insurance, banking, real estate]; Financing services; Financial management; Mortgage banking; Savings bank services; Hire-purchase financing; Securities brokerage; Stock broking services; Financial analysis; Check [cheque] verification; Financial consultancy; Processing of credit card payments; Processing of debit card payments; electronic funds transfer; Financial information; Rent collection; Issue of tokens of value; Deposits of valuables; Stock exchange quotations; Issuance of credit cards; Retirement payment services; Financial sponsorship; Online banking; Business liquidation services, financial; Repair costs evaluation [financial appraisal]; Brokerage of carbon credits; Providing financial information via a web site; Financial management of reimbursement payments for others; Venture capital financing; Monetary exchange; Acquisition and transfer of monetary claims; Exchange services relating to the trading of futures; Automobile lease financing; Equity capital investment; Providing stock/securities market information; Foreign exchange bureaux; Foreign exchange information services; Financial evaluation for insurance purposes; Provision of funds for hire purchase and for leasing; ATM banking services; On-line real-time currency trading; Debt management services; Debt recovery services; Bill payment services; Loan and credit, and lease-finance services; Secured loans to fund the provision of instalment credit agreements on motor vehicles; Leasing of real estate; Real estate agencies; Housing agencies; Real estate appraisal; Real estate management; Apartment house management; Renting of flats; Accommodation bureaux [apartments]; Rental of offices [real estate]; Leasing of farms; Estate agency services for sale and rental of buildings; Guarantees; Charitable fund raising; Fiduciary; Lending against security.

Class 39: Car rental; vehicle rental.

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 services in Class 36

The contested accident insurance underwriting; actuarial services; insurance brokerage; insurance underwriting; fire insurance underwriting; health insurance underwriting; marine insurance underwriting; life insurance underwriting; insurance consultancy; insurance information; guarantees are included in the broad category of, or overlap with, the opponent’s insurance. Therefore, they are identical.

The contested instalment loans; credit bureaux; banking; mutual funds; fund investments; capital investments; exchanging money; travellers' checks [cheques] (issuing of -); clearing, financial; financial clearing; safe deposit services; organization of collections; loans [financing]; fiscal valuations; financial evaluation [insurance, banking, real estate]; financing services; financial management; mortgage banking; savings bank services; hire-purchase financing; securities brokerage; stock broking services; financial analysis; check [cheque] verification; financial consultancy; processing of credit card payments; processing of debit card payments; electronic funds transfer; financial information; issue of tokens of value; deposits of valuables; stock exchange quotations; issuance of credit cards; retirement payment services; financial sponsorship; online banking; business liquidation services, financial; repair costs evaluation [financial appraisal]; brokerage of carbon credits; providing financial information via a web site; financial management of reimbursement payments for others; venture capital financing; monetary exchange; acquisition and transfer of monetary claims; exchange services relating to the trading of futures; automobile lease financing; equity capital investment; providing stock/securities market information; foreign exchange bureaux; foreign exchange information services; financial evaluation for insurance purposes; provision of funds for hire purchase and for leasing; ATM banking services; on-line real-time currency trading; debt management services; debt recovery services; bill payment services; loan and credit, and lease-finance services; secured loans to fund the provision of instalment credit agreements on motor vehicles; charitable fund raising; fiduciary; lending against security are at least similar, if not identical, to the opponent’s financial affairs, as they at least target the same public and have the same distribution channels and commercial origin.

The contested leasing of real estate; real estate agencies; housing agencies; rent collection; real estate appraisal; real estate management; apartment house management; renting of flats; accommodation bureaux [apartments]; rental of offices [real estate]; leasing of farms; estate agency services for sale and rental of buildings are included in the broad category of, or overlap with, the opponent’s real estate affairs. Therefore, they are identical.

Contested services in Class 39

The contested car rental; vehicle rental have nothing relevant in common with any of the opponent’s goods and services, as they belong to different market sectors. They target different publics and have different distribution channels. They are neither complementary nor in competition. They are not usually offered by the same or economically-linked undertakings. They satisfy different needs and have different methods of use. The opponent argues that vehicle rental services are often offered by insurance companies as a part of a car insurance package. Even if this may be the case, customers are well aware that the replacement cars are offered by car rental companies and not by insurance companies and as such they have a distinct commercial origin. This argument needs to be set aside as unfounded and these services are therefore considered 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 and similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

The public’s degree of attentiveness will be higher than average.

3. The signs

App&Go
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘GO’ is meaningful at least in certain territories, for example in those countries where English is spoken. As its English meaning may be somehow allusive to the method in which the relevant services are rendered, that is through mobile communication means or easily, quickly and without delaying or stopping the customer, the degree of distinctiveness of this coinciding element might be lower than average for this part of the public. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public such as the Spanish-speaking part of the public.

The earlier mark is a word mark ‘App&Go’. In case of word marks, it is the words as such that are protected and not their written form; therefore, it is immaterial for the visual comparison whether they are depicted in upper or lower class letters, or in which particular typeface they are presented.

The contested sign is figurative and it is composed of the words ‘AmpGO’ presented in a combination of upper- and lower-case bold black standard characters (except for the fact that the letter ‘O’ is divided into two halves).

The verbal element ‘App’ of the earlier sign is commonly used as an abbreviation of ‘application’, which is a software program designed to perform a specific function directly for the user or, in some cases, for another application. Bearing in mind that the relevant services are related to finance, insurance and real estate, this element is at most weak for these services, as it merely indicates that they can be provided/offered by using applications.

The ampersand symbol ‘&’ of the earlier mark will be understood as ‘y’ (meaning ‘and’ in Spanish). It will not be given too much attention as it will be perceived merely as a word connector.

Part of the relevant public will understand the meaning of the English word ‘Go’, included in both signs, as indicating movement and mobility. Insofar as the services at issue can be accessed on a mobile communication platform, and the element ‘Go’ can imply that something is compatible with, or apt for, mobile use or can refer to the promptness of the service provided, this element is weak. However, for the remaining part of the public, this element is meaningless and as such distinctive.

The element ‘AMP’ has no clear meaning in Spanish and as such it is considered distinctive.

Visually and aurally, the signs coincide in the verbal element ‘GO’, which is placed at the end of both signs; however in the present case it is clearly noticeable because it is separated in both signs: by an ampersand in the earlier sign and by the use of a capital letter in the contested sign. The signs show similarities in the initial verbal elements (or in the sound of the initial verbal elements), ‘App’ in the earlier sign and ‘Amp’ in the contested sign. The signs differ only in the middle letter (or sound of the middle letter) of their first verbal elements ‘P’ versus ‘M’ and in the ampersand (or the ‘y’ sound when it is pronounced) of the earlier mark, which has nevertheless limited impact on the perception of the signs, as explained above. The figurative elements of the contested sign are limited to the minimal stylisation of the characters ‘AmpGO’ and have no distinctive character on their own.

Therefore, the signs are visually and aurally similar to a low or average degree depending on the distinctiveness of the element ‘GO’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the public the signs will be associated with similar meanings on account of the coinciding element ‘GO’, and therefore the signs are conceptually similar to a low degree as the coincidence lies in the element that is weak.

For the part of the public that does not grasp the meaning of ‘GO’ but only understands ‘APP’ in the earlier sign, the signs are conceptually not similar.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the services in question for part of the relevant public that grasps the meaning of the verbal element ‘GO’.

For the remaining part of the public, for which the element ‘GO’ is meaningless and distinctive, the earlier trade mark as a whole has no meaning for any of the services in question. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element ‘App’ in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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, Sabel, EU:C:1997:528, § 22).

The contested services are partly identical, partly at least similar and partly dissimilar. They target the general public as well as professionals. The degree of attention is higher than average.

For part of the public which understands the English word ‘GO’, the signs are visually, aurally and conceptually similar to a low degree and the earlier mark has a low degree of distinctiveness. For part of the public that does not understand English word ‘GO’, the signs are visually and aurally similar to an average degree and conceptually not similar and the earlier mark has normal degree of distinctiveness.

It is true that both marks include a different word element placed at their beginning (‘APP’ and ‘AMP’) one of which is weak and the other distinctive. However, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs at least for part of the public and will be clearly perceived in both signs by consumers. Indeed, 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Consequently, taking into account all the above facts, the Opposition Division considers that the differences between the earlier mark and the contested sign are not sufficient to exclude a likelihood of confusion, as the signs coincide in the element ‘GO’, which constitutes an independent and distinctive element in both signs at least for part of the relevant public. Therefore, this part of the public, even with a higher degree of attention, may believe that the services found identical or at least similar come from the same undertaking or, at least, economically-linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘APP’ or ‘GO’. In support of its argument the applicant refers to a few trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘APP’ or ‘GO’. Under these circumstances, the applicant’s claim must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public that would not grasp the meaning of the coinciding element ‘GO’ and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 services found to be identical or at least similar 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.

The opponent has also based its opposition on UK trade mark registration No 3 202 621 for the word mark ‘App&Go’. This mark is identical to the one that has been compared, and it covers identical goods and services except for the fact that the goods in Class 9 covered by the UK trade mark registration do not contain the limitation present in the earlier EUTM, namely: none of the aforesaid goods relating to goods and services for the agricultural sector and as such the scope of protection of this earlier right in this Class is broader. However, the lack of limitation does not change the outcome of the comparison and these goods are clearly different to those applied for in the contested trade mark. Therefore, the outcome cannot be different with respect to services in Class 39 for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Helen Louise MOSBACK

Katarzyna ZANIECKA

Anna ZIÓŁKOWSKA

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.