OPPOSITION No B 3 050 082

Carmignac Gestion, 24 Place Vendôme, 75001, Paris, France (opponent), represented by Fidal, 4-6 avenue d'Alsace, 92982, Paris La Défense, France (professional representative)

a g a i n s t

Common Grounds Holdings LLC, 5505 Cancha De Golf, 92091 Rancho Santa Fe, United States (applicant), represented by Hafner & Kohl, Schleiermacherstr. 25, 90491 Nürnberg, Germany (professional representative).

On 22/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 082 is upheld for all the contested services.

2. European Union trade mark application No 17 615 501 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 17 615 501 for the figurative mark , namely against all the services in Classes 35 and 36. The opposition is based on French trade mark registration No 4 172 206 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.

a) The services

The services on which the opposition is based are, inter alia, the following:

Class 35: Advertising; Business management.

Class 36: Arranging letting of real estate, Real estate brokerage; Real estate appraisal; Real estate and apartment house management; Rental of offices; Leasing of farms.

The contested services, following the limitation requested on 28/09/2018, are the following:

Class 35: Advertising of commercial and residential real estate; business management consulting for commercial and residential real estate with relation to strategy, marketing, production, personnel and retail sale matters, all the aforementioned services in this class related to workspace rental.

Class 36: Real estate services, namely, rental, brokerage, leasing, listing, and management of commercial property, offices, office space, and residential property; membership club services, namely, providing information and real estate services in the nature of rental, brokerage, leasing, listing, and management of commercial property, offices, office space, and residential property to members in the fields of real estate, all the aforementioned services in this class related to workspace rental.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

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

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

Contested services in Class 35

The contested advertising of commercial and residential real estate is included in the broad category of advertising covered by the earlier mark. Therefore, these services are identical.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

Business management consulting refers to giving expert advice to other professionals on matters relating to various aspects of running and directing an enterprise. This service is provided by the same business consultants as those rendering business management services. Therefore, the contested business management consulting for commercial and residential real estate with relation to strategy, marketing, production, personnel and retail sale matters, all the aforementioned services in this class related to workspace rental is included the broad category of the opponent’s business management. Therefore, they are identical.

Contested services in Class 36

The contested real estate services, namely, rental, brokerage, leasing, listing, and management of commercial property, offices, office space, and residential property are identical to the earlier arranging letting of real estate, real estate brokerage; real estate appraisal; real estate and apartment house management; rental of offices; leasing of farms, either because the earlier services include, are included in, or overlap with, the contested services.

For the same reasons, the contested membership club services, namely, providing real estate services in the nature of rental, brokerage, leasing, listing, and management of commercial property, offices, office space, and residential property to members in the fields of real estate, all the aforementioned services in this class related to workspace rental are identical to the earlier arranging letting of real estate, real estate brokerage; real estate appraisal; real estate and apartment house management; rental of offices; leasing of farms.

The contested membership club services, namely, providing information to members in the fields of real estate, all the aforementioned services in this class related to workspace rental are at least highly similar to the opponent’s arranging letting of real estate, real estate brokerage; real estate and apartment house management; rental of offices; leasing of farms because they are rendered by the same undertakings through the same distribution channels. Moreover, they coincide in the relevant public and are complementary to each other.

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 found to be identical or at least highly similar may be directed both at the public at large (e.g. various real estate services) and the professional public (in particular, business management services).

The purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

Moreover, with regard to advertising and business management services in Class 35, the public will display a high degree of attention as these services have a bearing on the commercial success or financial standing of one’s enterprise.

Accordingly, in the present case, the degree of attention of the public will vary from higher than average to high.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is France.

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 conflicting marks will be perceived by the relevant public in a number of different ways.

As correctly argued by the applicant, a part of the public would identify the earlier mark as a letter ‘C’ or two letters ‘C’ with an arrow placed in the centre of the sign, pointing to the right. The applicant also claims that the opponent’s sign could be perceived as a target circle with an arrowhead at the three o’clock position. In that context, it considers the mark to be not the most distinctive, because it merely indicates that, when using the services, one will get the best service or result.

On the other hand, according to the applicant, contested sign represents a ‘G’ letter surrounded by an unfinished circle.

Irrespective of the above considerations, taking into account the heightened degree of stylisation of the signs and the complex graphic composition they present, it cannot be excluded that an equally non-negligible part of the public will see the marks as purely abstract depictions which are fully distinctive in relation to the relevant services.

The Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public, in view of the findings this entails as regards the comparison of the signs.

The signs create an overall highly similar impression due to the equally circular shape of these marks and to the presence of the short horizontal elements placed near the central part of both signs and similarly pointing to the right. Moreover, both marks are represented in black and white and neither of them has elements that could be perceived as more distinctive or more dominant (visually eye-catching) than others. While it is true there are some graphic differences between the marks at issue relating to the thickness of the lines and rounded vs. sharper edges, those are less significant stylistic differences, which are of minor importance compared to the overall similarities between the signs under dispute. In other words, those stylistic differences cannot dispel the impression of similarity which is apparent from the overall visual comparison of the marks. From this perspective, the signs are highly similar visually.

The signs do not represent any specific object/concept and, being purely figurative signs, they will not be referred to aurally. As a result, they cannot be compared conceptually nor phonetically. Accordingly, the conceptual and aural aspects do 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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the signs. The comparison ‘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, § 22 et seq.).

In the case at hand, the contested services are identical or at least highly similar to the services covered by the earlier trade mark. While the earlier mark is distinctive to an average degree, the public’s level of attention will vary from higher than average to high.

Account must be taken of the fact that a considerable part of the relevant public in the relevant territory will see in the signs abstract geometric figures, consisting essentially of highly similar circular shapes and additional horizontal elements placed in the middle of them. For this part of the public, the signs under comparison are visually highly similar and they cannot be compared conceptually and aurally.

The applicant contends that the consumers will notice the visual differences between the conflicting signs such as the thickness of the letters or circles, rounded vs. sharper edges. However, the Opposition Division does not share this view. It must be stated that, in order to grasp the differences between the two marks at issue, the consumer would have to carry out a very detailed examination of those marks, which is unlikely, given that the average consumer only rarely has a chance to compare the various marks directly next to one another, but must rely on his 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, like in the present case, need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Additionally, it is essential to establish how the signs at issue are normally perceived overall and not how the stylistic differences between the signs may be perceived in the event that a particularly meticulous consumer is in a position to examine the graphic stylisations and draw comparisons between them (judgment of 07/10/2014, T, T‑531/12, not published, EU:T:2014:855, paragraph 65).

In view of the above, it is concluded that the relevant consumer, even the one that will display enhanced attentiveness in relation to the services in Classes 35 and 36, will not be able to recollect those additional features in the overall very similar impression given by the signs and, therefore, the risk of likelihood of confusion is inevitable.

Considering all the above, there is a likelihood of confusion on the part of the public who will perceive the signs as purely figurative abstract depictions. 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; accordingly, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 172 206. 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

Monika CISZEWSKA

Anna MAKOWSKA

Gueorgui IVANOV

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.