OPPOSITION No B 3 046 828

3C Retail A/S, Østre Stationsvej 1 - 5, 5000, Odense C., Denmark (opponent), represented by Zacco Denmark A/S, Arne Jacobsens Allé 15, 2300, Copenhagen S, Denmark (professional representative)

a g a i n s t

SGB Finance Société anonyme, 69, Avenue de Flandre 59700, Marcq en Baroeul, France (applicant), represented by Valérie Perrichon, 109 Boulevard Haussmann 75008, Paris, France (professional representative).

On 18/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 828 is partially upheld, namely for the following contested services:

Class 36: Insurance; financial affairs; monetary affairs; banking; credit bureaux; credit institutions; financial analysis; insurance consultancy; financial consulting; provision of financial information; financial management; arranging the provision of finance; financing for the rental and purchase of vehicles for locomotion by water; credit financing; financing of rentals with an option to purchase; financing by way of long-term rental; credit agencies; credit leasing; provision of consumer credit; credit for the rental and purchase of vehicles for locomotion by water; bringing together of credit; loans (financing); surety services; financial evaluations (insurance, banking, real estate); evaluation (repair costs -) [financial appraisal]; fiscal assessments; credit card services, all of the aforesaid services being provided in the field of financing vehicles for locomotion by water, parts and fittings therefor.

2. European Union trade mark application No 17 492 323 is rejected for all the above services. It may proceed for the remaining services, namely the following:

Class 35: Advertising; business management; business administration; organization of exhibitions for commercial or advertising purposes; commercial business estimates; business management and organization consultancy; professional business consultancy, efficiency experts, business information, business enquiries; price comparison services; compilation of statistics; accounting; consumers (commercial information and advice for -) [consumer advice shop]; business appraisal; market studies; market research, invoicing; compilation of information into computer databases; computerized file management; systemization of information into computer databases; economic forecasting; data search in computer files for others; auditing; presentation of goods or services communication media for retail purposes; administrative processing of orders online; administrative processing of orders by mail order, all of the aforesaid services being provided in the field of financing vehicles for locomotion by water, parts and fittings therefor.

Class 36: Real estate affairs.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 492 323 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 12 890 414 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

In its observations of 23/11/2018, the applicant claims that while the opposition was filed by a company named 3C RETAIL A/S, the trade marks on which the opposition is based still belong to a company named L’EASY A/S. According to the applicant, since the opponent’s name does not coincide to the trade marks’ owner name at the time of filing and currently, the opposition should be dismissed on the ground that the opponent failed to prove that it was the legitimate owner of the trade mark registrations on which the opposition is based.

On 28/08/2018 and on 18/02/2019 the opponent has submitted documents in order to prove that it is common practice in Denmark for companies to have a primary and several secondary names under the same company registration number, called CVR, which is the crucial identifier for Danish companies.

The opponent submitted an extract from the Danish register of company names and an extract of the relevant Danish legislation, namely Section 3 and 28 of the Danish Company Act.

The Opposition Division deems that the information provided by these documents is sufficient to consider that L’EASY A/S is a secondary name of the opponent 3C RETAIL A/S according to the Danish legislation. Consequently there are no particular reasons to refuse that the aforementioned are different names, under the relevant legislation, of the same legal entity.

In view of all the above, the applicant’s claim about the lack of entitlement of the opponent must be dismissed.

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.

In its observations of 23/11/2018 the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 12 890 414.

1. The services

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

Class 35: Retail services in relation to household electric appliances and consumer electronics; retail services in relation to apparatus for recording, transmission or reproduction of sound or images, including TV-, video- and DVD apparatus, music centres, radios, and CD players, data processing equipment, including computers, printers, screens, computer software, magnetic and optical data carriers, photographic and optical apparatus and instruments, including video cameras and cameras(photography), telecommunication equipment, telephones, mobile phones and telefax machines, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, solariums, electric apparatus, washing machines, dishwashing machines, dryers and tumblers, refrigerators and freezers, ovens, microwave ovens and electric cookers.

Class 36: Insurance services, financial services.

The contested services are the following:

Class 35: Advertising; business management; business administration; organization of exhibitions for commercial or advertising purposes; commercial business estimates; business management and organization consultancy; professional business consultancy, efficiency experts, business information, business enquiries; price comparison services; compilation of statistics; accounting; consumers (commercial information and advice for -) [consumer advice shop]; business appraisal; market studies; market research, invoicing; compilation of information into computer databases; computerized file management; systemization of information into computer databases; economic forecasting; data search in computer files for others; auditing; presentation of goods or services communication media for retail purposes; administrative processing of orders online; administrative processing of orders by mail order, all of the aforesaid services being provided in the field of financing vehicles for locomotion by water, parts and fittings therefor.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; banking; credit bureaux; credit institutions; financial analysis; insurance consultancy; financial consulting; provision of financial information; financial management; arranging the provision of finance; financing for the rental and purchase of vehicles for locomotion by water; credit financing; financing of rentals with an option to purchase; financing by way of long-term rental; credit agencies; credit leasing; provision of consumer credit; credit for the rental and purchase of vehicles for locomotion by water; bringing together of credit; loans (financing); surety services; financial evaluations (insurance, banking, real estate); evaluation (repair costs -) [financial appraisal]; fiscal assessments; credit card services, all of the aforesaid services being provided in the field of financing vehicles for locomotion by water, parts and fittings therefor.

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

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 35

The contested advertising; business management; business administration; organization of exhibitions for commercial or advertising purposes; commercial business estimates; business management and organization consultancy; professional business consultancy, efficiency experts, business information, business enquiries; price comparison services; compilation of statistics; accounting; consumers (commercial information and advice for -) [consumer advice shop]; business appraisal; market studies; market research, Invoicing; compilation of information into computer databases; computerized file management; systemization of information into computer databases; economic forecasting; data search in computer files for others; auditing; presentation of goods or services communication media for retail purposes; administrative processing of orders online; administrative processing of orders by mail order, all of the aforesaid services being provided in the field of financing vehicles for locomotion by water, parts and fittings therefor mainly consist of advertising, business management and business administration and relate to office function services. They are aimed at supporting or helping other businesses to carry out or improve their business. Advertising services generally target the professional public and are provided by business management consultants, advertising executives, market researchers and data analysts. Office function services are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the operation of a commercial enterprise, such as typing, compilation of information in computer databases.

The opponent’s services are limited to specific activities mainly in the field of finance and the retail of specific goods, which are clearly distinct, in nature and purpose, from the contested services. This distinction also corresponds to the reality of the marketplace where advertising and office function services are provided by agencies that do not normally provide the other services. They operate in different fields of business. The mere fact that they can target the same public is not sufficient in itself to lead to a finding of similarity. Furthermore, they are neither complementary nor in competition. Therefore, the contested services in Class 35 are all dissimilar to all the opponent’s services as they differ in nature, purpose, and method of use. They also usually differ in producers, distribution channels and consumers.

Contested services in Class 36

The contested financial affairs; monetary affairs; banking; credit bureaux; credit institutions; financial analysis; financial consulting; provision of financial information; financial management; arranging the provision of finance; financing for the rental and purchase of vehicles for locomotion by water; credit financing; financing of rentals with an option to purchase; financing by way of long-term rental; credit agencies; credit leasing; provision of consumer credit; credit for the rental and purchase of vehicles for locomotion by water; bringing together of credit; loans (financing); financial evaluations (insurance, banking, real estate); evaluation (Repair costs -) [financial appraisal]; fiscal assessments; credit card services, all of the aforesaid services being provided in the field of financing vehicles for locomotion by water, parts and fittings therefor are included in the broad category of the earlier financial services. Therefore, these services are identical.

Insurance are identically contained in both lists of services (including synonyms).

The contested insurance consultancy; surety services are included in the broad category of the earlier insurance services. Therefore, they are identical.

The contested real estate affairs are dissimilar to all the opponent’s services as they differ in their intended purpose. They usually differ in producers, distribution channels and consumers. Furthermore, they are neither in competition nor complementary. The fact that financial services can be needed when receiving the provision of real estate affairs is not sufficient to find complementarity between them, since it is unlikely that the public might think that they have the same commercial origin.

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 in Class 36 found to be identical 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).

3. The signs

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 elements ‘LEASY’ are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom none of the marks evoke any concept, such as the Bulgarian-speaking part of the public.

The earlier mark is a figurative mark composed of the word elements ‘L’EASY’, each letters being depicted in bold black upper-case letters and placed in a yellow rectangle. On the right of the last letter, ‘Y’, is placed the symbol ‘®’. Because of its size and meaning (registered trade mark), it is unnoticeable in the sign and will be disregarded in the comparison of the signs.

The figurative elements consist of simple geometric shapes and a basic colour and are of a purely decorative nature; they are thus non-distinctive. Moreover, 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).

The contested mark is a figurative mark, made of the term ‘LeasyBoat’. The letters are reproduced in a rather ordinary manner with the exception of the letter ‘o’ above which a depiction of a stylized propeller is placed.

The verbal elements of the marks have no meaning for the relevant public and are, therefore, distinctive. As regards the figurative element of the contested sign, the relevant public will associate it with the concept of a propeller which leads to the concept of vehicles for locomotion by water. For credit card services, all of the aforesaid services being provided in the field of financing vehicles for locomotion by water, parts and fittings therefor in Class 36 this element is weak. For the remaining services in Class 36, it is deemed to be distinctive.

The trade marks in dispute have no element that could be considered clearly more dominant than other elements.

Account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the letters ‘LEASY’. However, they differ in the additional letters ‘Boat’ of the contested sign, in its figurative element and in the apostrophe and graphic arrangement of the earlier sign, the latter being of purely decorative nature, as it has been explained above.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘LEASY’, present identically in both signs. The pronunciation differs in the sound of the additional and final letters ‛BOAT’ of the contested sign, which have no counterpart in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the signs are not similar. This is due to the presence of the depiction of a propeller in the contested sign, which is the only meaningful element 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 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, 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.

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 (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The services covered by the trade marks in dispute have been found partly identical and partly dissimilar. The services in Class 36 are directed at the public at large whose degree of attention is expected to be quite high.

As regards the signs they are visually and aurally similar to an average degree. In fact, all of the earlier trade mark’s letters are reproduced, in the same order, in the first part of the contested sign ‘LeasyBoat’. The difference arises from the presence of additional letters, namely ‘boat’ in the contested sign and from the figurative element of the contested sign, which will, for the reasons explained above in section c) of the present decision, play a secondary role, being the word elements the ones which have more impact.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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).

As concluded above, the services are identical. The signs share a visual and aural similarity to an average degree. The Opposition Division considers that, in the absence of any other factor, a likelihood of confusion exists, even considering the quite high level of attention of the relevant public. This is likely, in particular for that part of the public for whom the signs have no meaning, such as the Bulgarian-speaking part of the public, but not necessarily only.

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 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 the following earlier trade mark:

• European Union trade mark registration No 2 758 068  for the word mark ‘L’EASY’.

Since this mark covers a narrower scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, 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

Riccardo RAPONI

Andrea VALISA

Valeria ANCHINI

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.