OPPOSITION No B 3 064 434

Mercialys, 148 Rue de l’Université, 75007 Paris, France (opponent), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative)

a g a i n s t

Gastivo Portal GmbH, Flughafenallee 15, 28199 Bremen, Germany (applicant), represented by Görg Partnerschaft Von Rechtsanwälten MBB, Upper West Kantstraße 164, 10623 Berlin, Germany (professional representative).

On 24/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 434 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 786 823 for the figurative mark .The opposition is based on French trade mark registration No 4 186 982 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 goods and services

After a limitation, dated 29/04/2019, the goods and services on which the opposition is based are the following:

Class 9: Magnetic cards for commercial and/or financial use.

Class 16: Newsletters; blueprints, guide books; postcards; periodicals; magazines; non-magnetic cards for commercial and/or financial use.

Class 35: Advertising; promotion of goods for others; distribution of prospectuses and samples for advertising purposes, direct mail advertising; organisation of exhibitions and events for commercial or advertising purposes, presentation on any communication media, for retail sales in small, medium or large size shops or remote sale, in particular, via orders electronically placed, of foodstuffs, agricultural, horticultural and forestry products, cleaning preparations, sanitary preparations, cosmetic, pharmaceutical products, perfumery, household or kitchen equipment, stationery, books, furniture, luggage, small leather goods, jewellery, clocks, games, toys, footwear, clothing, household linen and textile goods, household appliances, audio-visual apparatus and equipment, data processing equipment, gardening and DIY apparatus, gymnastic and sporting apparatus, personal care apparatus, apparatus for lighting; grouping together for others of stores selling the aforesaid goods; retail sale of IT products, in particular, applications supplied via the internet and other IT networks and communications networks, (administrative) management of shopping centres and shopping malls; commercial advice, information and assistance to merchants settled in a shopping mall; retail sales of gift cards; sales promotion and advertising for merchants settled in a shopping mall; sales promotion for others by means of customer loyalty; organisation and management of customer loyalty programs related or unrelated to the use of a card; commercial information for holders of a card.

Class 36: Real estate services, management of buildings and real estate, sale and rental of real estate, credit card, payment card and loyalty card services; provisions of commercial spaces, automated teller machines, payment terminals for electronic transactions.

Class 37: Construction information; shoe repair, clock and watch repair; installation and repair of microcomputer, key repair.

Class 41: Education; training; arranging and conducting of congresses, conferences and seminars; arranging and conducting of workshops [training].

Class 43: Restaurant services (food); temporary accommodation; rental of temporary accommodation; provision of restaurant space; provision of meeting, resting or entertainment places in a commercial centre; provision of children’s adventure playground; provision of praying areas, arcade games, sports equipment, recreation facilities.

The contested goods and services belong to Classes 9, 29, 30, 32, 33, 35, 36, 37, 39, 41, 42 and 43. The full list of the contested goods and services, which is not reproduced here due to its length, can be found in the notice of opposition, which can be accessed through https://euipo.europa.eu.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 goods and services assumed to be identical are directed at the public at large and at business customers.

The public’s degree of attention may vary from average to high, depending on the price, specialised nature or terms and conditions of the goods and services purchased. For example, it will be high for financial and real estate services, since such services are specialised and may have important financial consequences for their users (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; 17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (FIG.MARK) / FIRST MALLORCA (FIG.MARK) et al., § 21). However, the attention of the public will be average with regard to foodstuffs, as these goods are purchased daily and are inexpressive.

3. 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 earlier sign is composed of the verbal element ‘LA GALERIE’ preceded by a stylised red letter ‘G’.

The verbal element ‘LA GALERIE’ will be understood as ‘THE GALLERY’. ‘GALLERY’, with regard to some of the services in question (e.g. retail sale of IT products, retail sales of gift cards), will be understood as a shopping or commercial gallery. For other services (e.g. organisation of exhibitions and events for commercial purposes) it could also be understood as an exhibition room where paintings or works of art are traded. Moreover, for some services, this verbal element will allude to the fact that they are available in a shopping gallery (e.g. restaurant services (food); shoe repair, clock and watch repair). The same considerations apply to all of the goods in the opponent’s earlier mark, as commercial galleries often issue their own gift cards (Class 9 and 16) and printed materials (e.g. magazines and newsletters). Therefore, when the word ‘galerie’ is put on these goods, it will only be perceived that the goods are connected with the services of the shopping gallery. Therefore, the distinctiveness of this element is at most weak for the relevant goods and services. For some, it may even be non-distinctive.

The definite article ‘LA’ is merely a basic grammatical device that introduces the feminine noun which follows it. According to case-law, because definite articles are used in everyday language to highlight the nouns that follow them, they have a weaker impact on consumers than those nouns (05/11/2018, R 928/2018‑2, La passiata / Passina (fig.), § 41; 24/06/2014, T‑330/12, The Hut, EU:T:2014:569, § 44). Therefore, it must be considered that this element plays a secondary role in the sign.

The stylised letter ‘G’ within the earlier sign will be perceived merely as a depiction of the first letter of the main verbal element of the sign ‘Galerie’, and therefore, in itself, does not add much distinctiveness or conceptual content to the mark. This is because it is common practice for manufacturers and service providers to form figurative elements on the basis of the first letter(s) of the verbal components of the signs. Therefore, the relevant consumers are accustomed to this practice and will generally regard the letter ‘G’ as emphasis added to the verbal element.

Within the earlier mark, none of the elements is more dominant than others. The single letter ‘G’ is clearly larger than the letters used to depict the verbal element ‘LA GALERIE’ but the latter element is much longer and occupies approximately two thirds of the mark.

The contested sign is formed by a highly stylised letter ‘G’, which alludes to an inverted droplet or a localisation pin, often used to depict places on digital maps. Nevertheless, the latter allusion does not alter the distinctiveness of the stylisation itself, as the sign as a whole, serves to identify origin when put on goods or in the context of providing services.

Visually, the signs coincide in the fact that both, contain, or consist of, a stylised red letter ‘G’. However, they differ in the particular stylisations of these letters and the presence of the additional verbal elements in the earlier sign, which are visually much longer than the letter ‘G’.

In the earlier sign, the letter ‘G’ is clearly perceptible. It is bold but a very simple shape. Its stylisation is created by the letter being cut by two vertical white lines on the left side.

The contested sign is much more stylised than the earlier mark, as it is composed of a drop/localisation pin formed by the letter ‘G’. It is reasonable to assume that most consumers will directly recognise the letter, but also, it cannot be excluded that some might need a few seconds to recognise it within the figurative element.

Moreover, it must be borne in mind that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. In this case, the contested mark is formed by only one, particularly stylised letter. Therefore, in the Opposition Division’s view the differences between the signs outbalance the similarities and consequently the signs can be found visually similar only to a low degree.

Aurally, it is highly unlikely that within the earlier mark the letter ‘G’ will be separately pronounced as consumers usually find the most obvious and easiest way to pronounce a mark. In this case, the earlier mark will be pronounced ‘la galerie’, as the letter ‘G’ will be regarded as a figurative element, which only reinforces the verbal component, as mentioned above. However, the contested sign can only be pronounced as ‘G’.

Therefore, as the signs do not aurally coincide in any element, it is concluded that the signs are not aurally similar.

Conceptually, the earlier sign will be associated mostly with a gallery. The contested sign could be perceived as a droplet or a location pin. Although both signs, contain the additional letter ‘G’, they will not be perceived conceptually identical because the earlier sign ‘G’ represents ‘gallery’, while in the contested sign, ‘G’ evokes no further associations and will be merely perceived as a random letter.

Therefore, despite the coincidence in the letter ‘G’, the signs are conceptually at most similar to a low degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods and services. This is because the verbal elements are partly non-distinctive and partly weak. The distinctiveness of the earlier sign lies mostly in the specific configuration of the sign, its composition and slight stylisation.

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

In the present case, the similarities between the signs are limited to the fact that both signs contain the letter ‘G’. Considering this, it must be stated the way the letter appears in each sign is determinant. As argued above in detail, these letters are depicted in a sufficiently different way for consumers not to associate them with each other. The use of the same colour, namely red, in both cases is, in itself, insufficient to create an association. This is because red is a basic colour, which is eye-catching (i.e. making everything depicted in it visible from afar). Therefore, since it is an attractive and commonly used colour, the use of this colour in trade marks cannot be monopolised.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tu Nhi VAN

Marta Maria CHYLINSKA

Gonzalo BILBAO TEJADA

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.