OPPOSITION No B 3 048 961

ETL AG Steuerberatungsgesellschaft, Steinstr. 41, 45128 Essen, Germany (opponent), represented by Wagner Webvocat® Rechtsanwaltsgesellschaft Mbh, Großherzog-Friedrich-Str. 40, 66111 Saarbrücken, Germany (professional representative)

a g a i n s t

FTL Group B.V., Koningshoeven 18, 5018 AB Tilburg, Netherlands (applicant), represented by MERK-ECHT B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative).

On 29/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 961 is upheld for all the contested services.

2. European Union trade mark application No 17 509 803 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 509 803 for the word mark ‘FTL’, namely against all the services in Classes 35, 36 and 45. The opposition is based on international trade mark registration No 1 263 104 designating the European Union for the 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.

1. The services

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

Class 35: Advertising; business management; business administration; office functions; payroll preparation; cost price analysis; commercial information agencies; business inquiries; organization of exhibitions for commercial or advertising purposes; business management and organization consultancy; professional business consultancy; business organization consultancy; personnel management consultancy; book-keeping; auditing; computerized file management; systemization of information into computer databases; compilation of information into computer databases; business auditing services; business investigations; compilation of statistics; invoicing; business information; business research; business appraisals; business management assistance; efficiency experts; commercial or industrial management assistance; marketing; marketing research; marketing studies; opinion polling; organization of trade fairs for commercial or advertising purposes; data search in computer files for others; public relations; outsourcing services (business assistance); tax preparation; relocation services for businesses; economic forecasting; collection of information into computer databases; business analysis of data in electronic form; compilation of statistics; consultancy relating to tax accounting; economic forecasting; none of the aforementioned services related to technical documentation, adaption of technical documents to the local, linguistic and cultural conditions and translation services.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; tax consultancy in financial respect, especially drawing up of tax certificates and tax estimations.

Class 45: Legal services; security services for the protection of property and individuals; legal consultancy in the field of taxation; legal consultancy; litigation services; arbitration services; licensing of intellectual property rights; mediation; licensing and management of copyright; assigning licenses for franchising concepts.

The contested services are the following:

Class 35: Advertising, publicity and sales promotion; business management; business administration; office functions, including in connection with the finance and tax sectors; accounting; auditing; tax preparation; business economics, business organisation and business administration consultancy; marketing services; market prospecting, research and analysis; compilation of statistics; office functions in the context of establishing and managing databases; advice and consultancy in relation to business management, including in the context of risk and process management; provision of trade information; office functions in relation to preparing files; holding company services, namely administrative monitoring, guidance and consultancy for subsidiaries; consultancy and support for the management of a variety of social enterprises relating to commercial and administrative work; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet.

Class 36: Financial services; financial advice to business; financial services provided by tax advisors and accountants; monetary affairs; asset advice, investment advice and investment consultancy; asset management; consultancy relating to loans and credit; financial services in connection with preparing files; mortgage services; financial information; financial consultancy in connection with tax issues; financial analyses and studies; studies in the field of finance and insurance, including in connection with tax issues; financial analysis of markets; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet.

Class 45: Legal services, including in connection with tax issues; legal consultancy relating to tax law; legal services and consultancy relating to drawing up deeds, agreements, contracts, papers and documents; legal research; information and consultancy relating to the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet.

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 applicant’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).

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

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 services are essentially services related to advertising, marketing, business management, business administration, office functions and the related consultation and advice services. All the contested services are identical to the opponent’s advertising; business management; business administration; office functions; business management and organization consultancy; professional business consultancy (overlap with the contested consultancy and support for the management of a variety of social enterprises relating to commercial and administrative work); business organization consultancy; personnel management consultancy; book-keeping; auditing; compilation of statistics; business information; marketing; marketing research; marketing studies (overlap with the contested market prospecting, research and analysis); tax preparation, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested consultancy and information regarding the aforesaid services must also be considered identical to the opponent’s services, since consultancy and information services are, in principle, included in these services, and the contested services were found identical to the opponent’s services.

The clarification the aforesaid services also provided via electronic networks, such as the internet does not affect the identity between the services, as it only gives an example of the means by which the applicant’s services can be provided.

Contested services in Class 36

The contested services are essentially various types of financial, monetary or real estate services and the related consultancy and advice services. They are identical to the opponent’s services in Class 36, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested consultancy and information regarding the aforesaid services must also be considered identical to the opponent’s services, since consultancy and information services are, in principle, included in these services, and the contested services were found identical to the opponent’s services.

The clarification the aforesaid services also provided via electronic networks, such as the internet does not affect the identity between the services, as it only gives an example of the means by which the applicant’s services can be provided.

Contested services in Class 45

The contested services are identical to the opponent’s legal services, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested information and consultancy relating the aforesaid services must also be considered identical to the opponent’s services, since information and consultancy services are, in principle, included in these services, and the contested services were found identical to the opponent’s services.

The clarification the aforesaid services also provided via electronic networks, such as the internet does not affect the identity between the services, as it only gives an example of the means by which the applicant’s services.

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 both the general public and business customers. The services in Class 35 are mainly business-to-business services, but some, such as tax preparation, may also target general consumers. The same applies to financial affairs (Class 36) and legal services (Class 45).

However, since all services are either specialised services that may have important financial or legal consequences for their users or are intended for business customers, the level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (FIG. MARK) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874).

3. The signs

	FTL
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a figurative mark that will be recognised by the public as the word ‘ETL’, regardless of the slight stylisation of the letter ‘T’. The contested sign is a word mark composed of the single word ‘FTL’.

The Opposition Division finds it appropriate to focus the comparison on the part of the public that will pronounce the letters ‘E’ as [e] and ‘F’ as [ef], for instance the French-, German- and Polish-speaking part of the public. In this case, the aural similarity between the signs will be higher for the reasons explained below.

The elements of both signs have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs are similar to the extent that they both include the letters ‘TL’ in the same position and order. Their first letters, ‘E’ and ‘F’, are also very similar as they differ only in the bottom horizontal stroke of the letter ‘E’. Although the signs differ in the depiction of the letter ‘T’ in the earlier mark, the stylisation is simple and has little impact on the visual comparison of signs. The stylisation of the earlier mark is less important in view of the verbal nature of the contested sign, which may be stylised in various ways.

Therefore, the signs are visually similar to a high degree.

Aurally, the French- and German-speaking part of the public, and also some other parts of the public, such as the Polish-speaking part of the public, will pronounce the letter ‘E’ as [e] and the letter ‘F’ as [ef]. Therefore, the signs will be pronounced by these parts of the public as ‘e-te-el’ for the earlier mark and ‘ef-te-el’ for the contested sign. This phonetic difference is not very striking, and considering the equal length and rhythm, both signs are similar to at least an average degree. The stylisation of the earlier mark is not subject to a phonetic assessment.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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, 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 mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The 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).

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).

Both signs consist of three letters and, therefore, they are short signs. While it is true that, in principle, the shorter the signs, the more easily the public is able to perceive all of their single elements, having regard to the abovementioned principle of interdependence, given the identity of the services at issue, the differences between the signs are not sufficient to overcome their visual and aural similarities and exclude any likelihood of confusion between them. Moreover, the assumption that in relatively short signs — as is the case with three-letter marks — the beginning is not more important than the middle or the ending should be understood as in principle none of the individual elements as such are to be attributed more weight than the other individual elements. It is the overall impression that has to be taken into account.

It cannot be denied that in this overall impression two of the three letters are in the same position and order. The Opposition Division disagrees with the argument of the applicant that ‘the first two of three characters are dissimilar’. To the contrary, at least a significant part of the relevant public will perceive the second element of the earlier mark as the letter ‘T’, despite its colours and figurative depiction, which as explained above is of rather decorative character, and the public will attach less trade mark significance to them. Furthermore, the difference between the specific letters ‘E’ and ‘F’ is not that striking because of their orthographical depiction, similarity in pronunciation and overall impression. Finally, when assessing the degree of similarity between the signs and likelihood of confusion, account must be taken of the fact that a consumer only rarely has the chance to make a direct comparison between the different marks but must rely on their imperfect recollection of them. (25/01/2018, R 1601/2017‑2, RCR (fig.) / RCA, § 50). 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).

Therefore, likelihood of confusion cannot be excluded in this case, even considering the high level of attention of the relevant public.

The Opposition Division considers as unfounded the applicant’s claim that the earlier trade mark was not duly substantiated because the extract submitted by the opponent explicitly mentioned WIPO, the European Union and China but not the territories (individual European Union countries) mentioned in the notice of opposition. Firstly, as the opponent correctly observed, the Madrid Monitor is the official database held by WIPO and there is a reference to the WIPO website at the bottom of each page. Secondly, in the notice of opposition the opponent mentioned the EUIPO as a territory; the Opposition Division understands this to mean the territory of the European Union. This conclusion is supported by the information provided in the registration certificate accompanying the notice of opposition, in which the European Union is one of the two territories, apart from China, where the mark is protected. Consequently, the extract provided, with the territories mentioned in it, is sufficient for a substantiation of the earlier right. As explained by the opponent, the difference in the description of the protected countries/territory are of technical character and the notice of opposition and the extract from the Madrid Monitor refer to the exact same territory, namely the Member States of the European Union.

Considering all the above, there is a likelihood of confusion for at least a part of the public, for instance the French-, German- and Polish-speaking part of the public. 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.

In light of all the foregoing, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 263 104 designating the European Union. It follows that the contested trade mark must be rejected for all the contested services on the basis of Article 8(1)(b) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ewelina SLIWINSKA

Maria SLAVOVA

Jakub MROZOWSKI

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.