OPPOSITION No B 3 046 984

Ecomora, S.A., Pol. Ind. C/ Cuenca, 41, 45400 Mora (Toledo), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Napcsillag Kereskedelmi és Szolgáltató Kft., Hársfa utca 1 B épület, 8400 Ajka, Hungary (applicant), represented by Tiber Ügyvédi Iroda, Bartók Béla út 66, III/4, 1114 Budapest, Hungary (professional representative).

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

DECISION:

1. Opposition No B 3 046 984 is upheld for all the contested services.

2. European Union trade mark application No 17 521 212 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 17 521 212 , namely against all the services in Class 35. The opposition is based on Spanish trade mark registration No 3 079 788 (word mark ‘ECOFAMILIA’). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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

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

The applicant 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.

a) The services

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

Class 35: Sales promotion for others; advertising; commercial business management; business administration; clerical services; business management assistance of commercial and industrial companies; import-export agencies and business representative services. Market studies and market analysis. Services of studies on organization of companies, planning, control, direction and efficiency experts of companies, and accounts verification. Retail services, wholesale services or via global computer networks; exclusive sales services.

The contested services are the following:

Class 35: Consultancy services relating to the procurement of goods and services; commercial administration of the licensing of the goods and services of others; arranging the buying of goods for others; arranging of contracts for the purchase and sale of goods and services, for others; providing consumer information relating to goods and services; sales administration; sales management services; provision of information concerning commercial sales; consulting in sales techniques and sales programmes; commercial information and advice services for consumers in the field of make-up products; commercial information and advice services for consumers in the field of beauty products; arranging of trading transactions and commercial contracts; wholesale ordering services; online ordering services; provision of an on-line marketplace for buyers and sellers of goods and services; administrative processing of purchase orders placed by telephone or computer; telephone order-taking services for others; telemarketing services; business administration services for processing sales made on the internet.

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.

The contested telemarketing services are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested commercial administration of the licensing of the goods and services of others; sales administration; business administration services for processing sales made on the internet are included in the broad category of the opponent’s business administration. Therefore, they are identical.

The contested administrative processing of purchase orders placed by telephone or computer; telephone order-taking services for others are included in the broad category of the opponent’s clerical services. Therefore, they are identical.

The contested consultancy services relating to the procurement of goods and services; arranging the buying of goods for others; arranging of contracts for the purchase and sale of goods and services, for others; sales management services; provision of information concerning commercial sales; consulting in sales techniques and sales programmes; arranging of trading transactions and commercial contracts are similar to the opponent’s commercial business management, as the aforementioned contested services are services aimed at supporting or helping other businesses do to business or to improve their businesses. They therefore have the same purpose, may be provided by the same companies and target the same professional public.

The contested wholesale ordering services; online ordering services are similar to the opponent’s business administration because these services share the same purpose, relevant public and providers.

The contested provision of an on-line market place for buyers and sellers of goods and services concerns services that target third parties that want to promote and sell their products to consumers interested in a specific market field. These services are linked to the opponent’s advertising insofar as they concern consumer information activities that may have the same purpose and providers as advertising services. Moreover, the relevant public for these services is also the same to the extent that an online marketplace may be available to sellers of goods wishing to use the marketplace as a way of advertising their products. Therefore, they are similar.

The contested providing consumer information relating to goods and services; commercial information and advice services for consumers in the field of make-up products; commercial information and advice services for consumers in the field of beauty products are similar to a low degree to the opponent’s advertising, as these information and advice services for customers have a commercial orientation. The advice that consumers would receive through these services would encourage them to purchase a product or products. The aforementioned contested services and the opponent’s advertising have the same purpose and relevant public.

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 services in question.

In the present case, the relevant services target both the general public and specialists.

The degree of attention varies from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

c) The signs

ECOFAMILIA
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 contested sign contains both verbal and figurative elements. The verbal element ‘ef’ is written in large white letters on a round green background. The letter ‘f’ is more stylised and is combined with two leaves. The word ‘ecofamily’ is written in smaller green and orange letters below the green circle. All of these elements are placed on a rectangular black background.

The earlier mark, ‘ECOFAMILIA’, and the verbal element ‘ecofamily’ of the contested sign have no clear meaning as a whole. Although there is only one verbal element in both marks, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The relevant public will dissect these elements into the words ‘ECO’ and ‘FAMILIA’ (the earlier mark) and ‘eco’ and ‘family’ (the contested sign). The first element in both marks will be perceived by the majority of the relevant public as an abbreviation of ‘ecology’/‘ecología’ and will be understood as ‘the study of the relationships between plants, animals, people, and their environment, and the balances between these relationships’ (information extracted from Collins Dictionary on 06/05/2019 at https://www.collinsdictionary.com/dictionary/english/ecology).

The second element of the earlier mark, ‘FAMILIA’, will be understood by the relevant public as ‘a group of people who are related to each other, especially parents and their children’ (information extracted from Collins Dictionary on 06/05/2019 at https://www.collinsdictionary.com/dictionary/english/family).

As regards the second element of the contested sign, ‘family’, this is the English translation of ‘FAMILIA’. It is a very basic English word, which will be understood in all Member States including Spain. Consequently, the relevant public will associate the second element in the contested sign, ‘family’, with the meaning of its counterpart in the earlier mark, ‘FAMILIA’.

Neither of the verbal elements contained in both signs has any meaning in relation to the relevant services. Therefore, they are distinctive.

The initials ‘E’ and ‘F’ of the contested sign will be perceived as the initials of the verbal elements ‘eco’ and ‘family’ which are written below, and not as ‘environment’ and ‘future’ as argued by the applicant in its observations. Bearing in mind that the relevant services are consultancy oriented, the initials as well as the verbal elements ‘eco’ and ‘family’ are of average distinctiveness.

The figurative elements of the contested sign are of a decorative nature and primarily serve to highlight the verbal elements. Therefore, the verbal elements of the contested sign remain to be its most distinctive elements.

Contrary to what the applicant argues, there is no element in the contested sign that is more visually outstanding than others. However, 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).

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 ‘ECOFAMIL’, present identically at the beginning of each mark. The signs differ in their endings, namely ‘IA’ in the earlier mark and ‘y’ in the contested sign. They further differ in the additional figurative elements of the contested sign, namely a green circle enclosing the initials ‘E’ and ‘F’ and the rectangular black background, which have no counterpart in the earlier mark. However, for the reasons mentioned above, these figurative elements are of limited impact for the comparison.

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

Aurally, consumers have a natural tendency to shorten long or complex signs when pronouncing them. As the letters ‘EF’ of the contested sign will be perceived as an abbreviation for ‘ecofamily’, the Opposition Division finds it unlikely that the letters ‘ef’ will be pronounced. Furthermore, the figurative elements of the contested sign have no effect on the way that the sign will be pronounced. Hence, the contested sign is likely to be pronounced as ‘ecofamily’. The signs coincide in the pronunciation of the letters ‘ECOFAMIL’, present identically at the beginning of each mark. The signs differ in the sound of their endings, namely ‘IA’ in the earlier mark and ‘y’ in the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the first element in both signs will be perceived as an abbreviation of the word ‘ecology’, and the second element of the contested sign, ‘FAMILY’, will be associated with the same meaning as its counterpart in the earlier mark, the signs are conceptually highly similar.

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.

e) Global assessment, other arguments and conclusion

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).

The relevant services are partly identical and partly similar to varying degrees and they target the general public and specialists; the degree of attention will vary between average and high. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs are visually similar to an above than average degree, and aurally similar to a high degree. Conceptually, they are highly similar because they refer to the same concepts, and differ only in their language. The figurative elements of the contested sign are only of a decorative nature, and as such will not have the same importance for the consumer, who is most likely to remember above all the verbal element ‘ecofamily’.

Account is further 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 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).

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctiveness given that many trade marks include the element ‘ecofamily’.

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 ‘ecofamily’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also argues that its EUTM has a long-standing use in Hungary and submitted various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, there is a likelihood of confusion due to the striking similarities between the signs, in particular in the conceptual aspect. Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 079 788. It follows that the contested trade mark must be rejected for all the contested 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.

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

Lars HELBERT

Alexandra APOSTOLAKIS

Tu Nhi VAN

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.