OPPOSITION Nо B 3 051 130

 

Familycash, S.L., C/Ausias March, 4 Pta-3, 46850 L´Olleria (Valencia), Spain (opponent), represented by José Miguel Muñoz Orgaz, Calle José María de Haro, 61 Planta 13-I, 46022 Valencia, Spain (professional representative) 

 

a g a i n s t

 

Familymart Co., Ltd., 3-1-21 Shibaura, Null Minato-ku, Tokyo, Japan (applicant), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158 Milan, Italy (professional representative).

On 18/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.

Opposition No B 3 051 130 is partially upheld, namely for the following contested services: Class 35: Retail services connected with the sales of foodstuffs, food, drinks, alcohols, clothing, towels, stationery, detergents, sanitary goods, beauty products, toiletries, pharmaceutical products, nutritional supplements, insecticides, bags, household utensils, toys and games, magazines and newspapers; retail store services connected with the sales of foodstuffs, food, drinks, alcohols, clothing, towels, stationery, detergents, sanitary goods, beauty products, toiletries, pharmaceutical products, nutritional supplements, insecticides, bags, household utensils, toys and games, magazines and newspapers; business management of retail store; convenience store services connected with the sales of foodstuffs, food, drinks, alcohols, clothing, towels, stationery, detergents, sanitary goods, beauty products, toiletries, pharmaceutical products, nutritional supplements, insecticides, bags, household utensils, toys and games, magazines and newspapers; on-line retail store services connected with the sales of foodstuffs, food, drinks, alcohols, clothing, towels, stationery, detergents, sanitary goods, beauty products, toiletries, pharmaceutical products, nutritional supplements, insecticides, bags, household utensils, toys and games, magazines and newspapers; sales promotion for others; auctioneering; provision of an on-line marketplace for buyers and sellers of goods and service.

 

2.	European Union trade mark application No 17 436 106 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 some of the services of European Union trade mark application No 17 436 106  (figurative mark), namely, against some of the services in Class 35. The opposition is based on national Spanish trade mark registration No 3 101 131, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

 

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

 

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

  

a) The services

 

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

 

Class 35: Retail and wholesale sales in commerce and commercial establishments, and through global computer networks, of all kinds of consumer products, food products in general and beverages, soft drinks, beers, alcoholic beverages, whitening preparations, for cleaning, soaps, perfumery, cosmetics, cleaning products, household goods, utensils and containers for domestic and culinary use, dietetic substances, hygienic and sanitary products, baby food, disinfectants, fungicides, herbicides, stationery products, tools and manually operated hand instruments; cutlery, forks and spoons; knives; razors and razors; precious metals, jewelery, jewelery, precious stones; articles of watchmaking and chronometric instruments, paper, cardboard and articles of these materials not included in other classes; printed products; binding material; photographs; stationery shop articles; adhesives (glues) of stationery or for domestic use; material for artists; brushes; typewriters and office supplies; instructional material or teaching material; of plastic materials for packing; printing characters; printing clichés; leather and faux leather; leather or imitation leather products, trunks and suitcases; umbrellas, umbrellas and canes; whips and saddlery items; of tensiles and containers for domestic and culinary use; combs and sponges; brushes; materials for manufacturing brushes; cleaning material; steel wool; raw or semi-finished glass; glassware, porcelain and earthenware; threads for textile use, textiles and textile products; bed and table linen; clothing, footwear, headgear; lace and embroidery, ribbons and laces; buttons, hooks and eyelets, pins and needles; artificial flowers; rugs, mats, mats, linoleum and other floor coverings; wall hangings; games and toys; gymnastics and sports articles, ornaments for christmas trees, food for animals and pets.

The contested services are the following:

Class 35: Retail services connected with the sales of foodstuffs, food, drinks, alcohols, tobaccos, clothing, towels, stationery, detergents, sanitary goods, beauty products, toiletries, pharmaceutical products, nutritional supplements, insecticides, batteries, chargers for electric batteries, electric lamps, bags, household utensils, gas containers for cigar lighters, lighters for smokers, toys and games, magazines and newspapers; retail store services connected with the sales of foodstuffs, food, drinks, alcohols, tobaccos, clothing, towels, stationery, detergents, sanitary goods, beauty products, toiletries, pharmaceutical products, nutritional supplements, insecticides, batteries, chargers for electric batteries, electric lamps, bags, household utensils, gas containers for cigar lighters, lighters for smokers, toys and games, magazines and newspapers; business management of retail store; convenience store services connected with the sales of foodstuffs, food, drinks, alcohols, tobaccos, clothing, towels, stationery, detergents, sanitary goods, beauty products, toiletries, pharmaceutical products, nutritional supplements, insecticides, batteries, chargers for electric batteries, electric lamps, bags, household utensils, gas containers for cigar lighters, lighters for smokers, toys and games, magazines and newspapers; business management of convenience store; business management of franchise convenience stores; on-line retail store services connected with the sales of foodstuffs, food, drinks, alcohols, tobaccos, clothing, towels, stationery, detergents, sanitary goods, beauty products, toiletries, pharmaceutical products, nutritional supplements, insecticides, batteries, chargers for electric batteries, electric lamps, bags, household utensils, gas containers for cigar lighters, lighters for smokers, toys and games, magazines and newspapers; business management of department stores; business management of supermarkets; issuance, settlement and management of loyalty cards; promoting the goods and services of others through issuance of loyalty cards; sales promotion for others; professional business consultancy; marketing research; commercial sales information supply; preparation/auditing/certification of financial statements; import-export agency services; auctioneering; employment agencies; rental of vending machines; marketing; on-line advertising on a computer network; provision of an on-line marketplace for buyers and sellers of goods and service.

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.

Retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between retail of specific goods on the one hand and retail of other goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors.

Dissimilarity between specific goods involved in the retail services concerned does not automatically mean that the retail services themselves are dissimilar too. A degree of similarity may still be found if, because of the particularities on the market, such dissimilar goods are retailed together in the same places and target the same public.

The contested retail services, retail store services, convenience store services and on-line retail store services connected with the sales of foodstuffs, foods, drinks, alcohols, clothing, stationery, sanitary goods, household utensils, toys and games are identically contained in both list of services, even though there is a slight difference of wording.

The contested retail services, retail store services, convenience store services and on-line retail store services connected with the sales of detergents, beauty products, toiletries include, as a broader category, are included in or overlap with, the opponent’s retail sales in commerce and commercial establishments, and through global computer networks of soaps, perfumery, cosmetics, cleaning products. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested retail services, retail store services, convenience store services and on-line retail store services connected with the sales of nutritional supplements include, as a broader category the opponent’s retail sales in commerce and commercial establishments, and through global computer networks of dietetic substances. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested retail services, retail store services, convenience store services and on-line retail store services connected with the sales of insecticides are considered identical to the earlier retail sales in commerce and commercial establishments, and through global computer networks of fungicides as these services overlap.

The contested retail services, retail store services, convenience store services and on-line retail store services connected with the sales of magazines and newspapers is included in the opponent’s retail services connected with the sales of printed products. Therefore, they are identical.

The contested retail services, retail store services, convenience store services and on-line retail store services connected with the sales of towels is included in the opponent’s retail services connected with the sales of textiles and textile products. Therefore, they are identical.

The contested retail services, retail store services, convenience store services and on-line retail store services connected with the sales of bags is considered similar to an average degree to the earlier retail and wholesale sales in commerce and commercial establishments, and through global computer networks of trunks and suitcases as the goods being sold are commonly retailed together in the same outlets and they target the same public.

The contested retail services, retail store services, convenience store services and on-line retail store services connected with the sales of pharmaceutical products are considered similar to an average degree to the earlier retail and wholesale sales in commerce and commercial establishments, and through global computer networks of disinfectants as the goods being sold are commonly retailed together in the same outlets, that is, in pharmacies, and they target the same public.

The contested provision of an on-line marketplace for buyers and sellers of goods and services are considered similar to a low degree to the opponent’s retail and wholesale services, as these services have the same purpose and relevant public.

The contested auctioneering concerns the act of selling goods or property to the highest bidder. These services are considered similar to a low degree to the opponent’s retail and wholesale services, as some of the goods being sold are also commonly sold on auction, for example, jewelry. Therefore, the services have the same purpose and target the same end users.

The contested retail services, retail store services, convenience store services and on-line retail store services connected with the sales of sales of tobacco, gas containers for cigar lighters, lighters for smokers, batteries, chargers for electric batteries, electric lamps are considered dissimilar to the opponent’s services, as the goods being sold are not commonly sold in the same places nor do they target the same public.

The contested business management of retail store; business management of convenience store; business management of franchise convenience stores; business management of department stores; business management of supermarkets are all types of business management, a category that covers business management of retail or wholesale outlets. It consists of the services related to the management of business for others. These services do not include retail/wholesale activities as such. They are directed at a different public and do not share the same providers. Nor are they complementary. Therefore, they are considered dissimilar to the opponent’s retail and wholesale services.

The term ‘retail and wholesale sales in commerce and commercial establishments, and through global computer networks, of all kinds of consumer products’ is unclear or imprecise. The lack of clarity or precision of the wording is not a sufficient basis in itself for arguing in support of identity or similarity. Unclear or imprecise terms may only be taken into account in their most natural and literal meaning and may not be construed as relating to goods, qualities, properties, methods of use, etc. to which that term is not expressly limited (14/07/2003, R 559/2002‑4, MOBILIX / OBELIX, § 17; 02/02/2015, R 391/2014‑4 POWERMATIC / POWRMATIC et al., § 29, 33). Therefore, in the absence of any limitation clarifying the goods or the category of goods involved in the retail services concerned, they must be considered dissimilar to retail services of any specific goods.

The contested issuance, settlement and management of loyalty cards; promoting the goods and services of others through issuance of loyalty cards; sales promotion for others; professional business consultancy; marketing research; preparation/auditing/certification of financial statements, marketing are all services that are included in the above mentioned business management, business administration or advertising. They are directed at a different public and do not share the same providers. Nor are they complementary. Therefore, they are considered dissimilar to the opponent’s retail and wholesale services.

The contested on-line advertising on a computer network, commercial sales information supply, employment agencies, rental of vending machines have nothing in common with the opponent’s earlier retail and wholesale services and therefore they differ in their nature, purpose, producers/providers and distribution channels. Furthermore, they are neither in competition nor complementary. They are therefore considered dissimilar.

The contetsed import-export agency services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. While these services are aimed at supporting or helping other businesses to do business and are preparatory or ancillary to the commercialization of goods, they do not relate to the actual retail or wholesale of the goods. The nature and purpose of these services is different and the providers are not usually the same. While a retail or wholesale company may require import/export services, those services would not be acquired by the end consumer purchasing the goods offered at retail or wholesale, a factor that rules out any complementary relationship between the services, even where they concern the same goods (expressly or potentially). Therefore, they are considered dissimilar to the opponent’s retail and wholesale services.

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 services in class 35 found to be identical or similar to varying degrees are directed at the public at large as well as business customers with specific professional knowledge or expertise. The degree of attention is considered to vary from average to high, depending on the terms and conditions of the services purchased.

 

c) The signs

 

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 earlier mark is a figurative mark, consisting of the English word combination ‘FAMILY CASH’ in lower-case letters, where the word ‘FAMILY’ is slightly bigger than the word ‘CASH’. The words are placed inside a brown square above a green line. The English word ‘family’ is similar to the equivalent Spanish word ‘familia’ and will therefore be understood by the relevant public as referring to ‘a group of one or more parents and their children living together as a unit’. Similarly, the word ‘cash’, despite being an English word, will be understood by the majority of the relevant public as ‘money in coins or notes, as distinct from cheques, money orders, or credit’, as the use of the term is widespread in the relevant territory, especially in relation to financial transactions or in the context of purchasing and/or selling. Furthermore, the mark contains a representation of a green and white purchase trolley. Bearing in mind that the nature of the services, the figurative element is weak as a purchase trolley is connected with the services. As a whole, the earlier mark may be considered by part of the public as referring to savings or purchasing capacity of the purchaser, therefore, the expression ‘FAMILY CASH’ has a limited degree of distinctive character. However, for the part of the public which does not associate any meaning in the term ‘CASH’, the earlier trade mark will be understood as ‘something relating to the family’. Therefore, for this part of the public, the expression is distinctive.

 

The contested mark is a figurative mark, consisting of the word element ‘FamilyMart’ in blue stylized letters, on a white background between two squares of blue and green colors. The verbal element ‘family’ will be understood as ‘familia’ as explained above. The verbal element ‘mart’ is English for ‘mercado’, that is, ‘a trade centre or market’. However, the word ‘mart’ does not have a meaning in the relevant territory and will therefore not be understood by the relevant public. As a whole, the contested mark will be seen understood by the relevant public as referring to ‘something relating to the family’. The expression ‘FAMILY MART’ is therefore distinctive as the mark as a whole has no direct meaning for the services. Furthermore, the slight stylisation of the mark is not particularly striking.

 

Visually and aurally, the signs coincide in the word and pronunciation of the first word of both marks ‘FAMILY’. However, they differ in their second word elements, ‘CASH’ and ‘MART’ as well as the figurative elements and stylizations of both marks. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Indeed, the identical beginning of the marks gives a similar overall impression of the marks as the public reads from left to right, which makes the initial part of a trademark the one that first catches the attention of the public. As the marks coincide in the first word of the marks which is pronounced in the same way and they differ only in the second word of both marks which is shorter, as well as the stylization and figurative element of the earlier mark, they are considered to be visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the common element ‘FAMILY’ will be associated with the same meaning, the signs are conceptually similar to an above average degree.

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

 

d) Distinctiveness of the earlier mark

 

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

 

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

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, for the part of the public that understands the term ‘CASH’, the distinctive character of the earlier trade mark must be considered to be low in respect of the services in question. However, for the small part of the relevant public which does not understand the element ‘CASH’, the earlier trade mark has a normal distinctive character since, overall, it has no meaning in relation to any of the services in question. Therefore, for that part of the public, the distinctive character of the earlier trade mark must be considered to be normal, despite the presence of weak elements in the trade mark, as indicated in paragraph c) of the present decision.

e) Global assessment, other arguments and conclusion

 

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.

The contested services have been found partially identical, partially similar to varying degrees and partially dissimilar to those of the earlier mark and they target the public at large and the professional public. The degree of attention is considered to vary from average to high. The signs have been found to be visually and aurally similar to an average degree and conceptually similar to an above average degree.

For that part of the public that understands the word element ‘CASH’, the earlier trade mark has a low degree of distinctive character. However, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, this is only one of the factors to take into account. Therefore, even in those cases where the earlier trade mark has low distinctive character, there may be a likelihood of confusion on account of the similarity between the signs and between the goods or services in question (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70;13/09/2010, T-72/08, smartWings, EU:T:2010:395, § 63 and 27/02/2014, T-25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38). For the remainder of the relevant public, the earlier trade mark has a normal degree of distinctive character.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Taking into account the principle of interdependence, the lesser degree of similarity between the services at issue is offset by the above average degree of conceptual similarity between the trade marks.

Therefore, the differences between the signs is not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can be reasonably concluded that consumers will not be able to distinguish between the marks in dispute for the services that are identical and similar to varying degrees, including low degree and they will perceive them as having the same commercial origin.

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 registration. 

 

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar, to varying degrees, 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

 

 

Richard BIANCHI

Dagný Fjóla JÓHANNSDÓTTIR

Martin LENZ

 

 

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.