OPPOSITION Nо B 3 062 497

 

As Mintos Marketplace, Skanstes Street 50, 1013 Riga, Latvia (opponent), represented by Law Firm Fort, 8-4 Antonijas Street, 1010 Riga, Latvia (professional representative) 

 

a g a i n s t

 

Intuit Inc., 2535 Garcia Avenue, 94043 Mountain View, United States of America (applicant), represented by William James Kopacz, 129, Boulevard St-Germain, 75006 Paris, France (professional representative).

On 21/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 062 497 is partially upheld, namely for the following contested services:

 

Class 35: Providing commercial information on, and comparisons of, the financial services of others, including through computer and communication networks, the internet, and social media; comparison shopping services and price comparison services, including through computer and communication networks, the internet, and social media; providing economic forecasting and analysis, including through computer or communication networks, the internet, and social media, not intended for import export businesses, clothing retailers or luxury goods retailers. Class 36: Electronic payment services, namely, receipt, processing and payment of bills, issuance of personal payments; providing bill payment and tax payment processing services via computer and communication networks; money transfer services; currency exchange services; on-line real-time currency trading; cash management, namely, facilitating transfers of electronic cash equivalents; digital currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value; providing information related to personal finance; financial information; providing a website featuring personal finance information and guidance; editorial content services related to personal finance, namely, providing an online blog featuring articles, tips, questions and answers, and guidance in the field of personal finance, financial planning, budgeting, and saving money; personal and small business financial management services; financial transaction management; financial analysis services; bill tracking and management in the nature of personal and small business financial management; payment tracking and management in the nature of bill payment, invoice, and person to person payment services for personal and small business finance; expense tracking and management in the nature of personal and small business financial management; taxable item tracking and management in the nature of personal and small business financial management; bill payment services; forecasting and analysis of financial data for others; financial data aggregation, namely, electronically compiling financial data from multiple accounts into a single location for financial purposes; services for the financial management of credit and debit cards, loans, investments and financial accounts; providing financial information, news, commentary, and advice in the fields of financial management, budgeting, financial planning and retirement planning accessible via a global computer network, the internet, social media web sites, and mobile software applications; credit scoring services; taxable item tracking and management, namely, tracking of taxable income and expense data for the purpose of personal and business tax planning and filing. Class 41: Education services, namely, online instruction featuring news, opinion, and advice, in the field of finance; online journals and educational content, namely, blogs in the field of finance; providing a website featuring blogs and non-downloadable publications in the nature of articles in the field of finance; providing on-line non-downloadable articles, namely, news, opinion, feature and blog content, in the field of personal finance; none of the foregoing for use in insurance brokerage services and investment brokerage services; providing on-line non-downloadable educational content, namely, news and opinions in the field of personal and small business finance.

2.

European Union trade mark application No 17 835 811 is rejected for all the above services. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 21/08/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 835 811 ‘MINT’ (word mark). The opposition is based on the following earlier trade marks:

 European Union trade mark No 13 662 143 (figurative mark).

 Latvian trade mark registration No M  68  943, (figurative mark).

The opponent invoked  Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In accordance with Article 8(2) EUTMR and Rule 20(7)(a) EUTMIR this case was suspended at the applicant’s request made by means of communication of 09/10/2018 because the earlier European Union trade mark application No 13 662 143 ‘mintos’ (figurative mark) had not yet been registered. In fact this earlier mark was being opposed by the applicant, and a suspension request until a final decision was given in the other opposition proceedings was granted.

This earlier right was refused in total following the decision taken in opposition proceedings B 2 532 946. Refusal was confirmed by decision of the Fifth Board of Appeal in case 2002/2019-5 dated 07/04/2020 and it is now final.

As it is apparent from the facts stated above, this earlier mark cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 46(1)(a) EUTMR and Article 8(2) EUTMR.

The opposition must, therefore, be rejected as unfounded as far as it is based on this earlier right but it can continue with regard to the other earlier national trade mark as the basis of the opposition, i.e. Latvian trade mark registration No. M  68  943 (figurative mark).

No further facts and arguments from the opponent nor from the applicant were received after the Office informed the parties that the proceedings were resumed.

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 goods and services

 

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

 

Class 35: Auctioneering services, including via the Internet; Interactive auctioneering services; On-line auctioneering services; Advertising services relating to financial services; Intermediary services related to trade; Sales promotion of goods and services for others related to financial services; Consultancy and information services related to above mentioned services.

Class 36: Financial and monetary services, and banking; Financial investment; Financial information, data, advice and consultancy services; Financing and funding services.

The contested goods, after the applicant’s restriction dated 05/03/2020, are the following:

Class 9: Computer software for performing financial transactions and transmitting and receiving information in the fields of electronic payments and electronic bill payments and bill presentment; computer software for use in processing electronic payments and transferring funds to and from others; computer software for use in transferring funds between financial accounts; for use in sending and receiving payments, transferring funds, bill payment and bill presentment; computer software for bill presentment and payment; computer software for generating bill reminders and bill payment status alerts; downloadable computer software for use in electronically trading, storing, sending, receiving, accepting and transmitting digital currency, and managing digital currency payment and exchange transactions; computer software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing of data; downloadable computer software applications for use in monitoring progress toward personal goals; computer software for online banking management and personal financial management; computer software for financial transaction management; computer software for tracking and analysis of personal and small business financial transactions; computer software for financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; computer software for creating reports and graphs; computer software for forecasting and analysis of data; computer software for data aggregation; computer software for providing alerts; computer software for providing wireless access to data and databases; computer software for enabling users to retrieve account balances and transaction information using mobile devices and mobile telecommunication networks; computer software for making electronic payments and for transferring funds to and from others; computer software for electronic bill payment; computer software for managing credit and debit card accounts; computer software for credit monitoring and credit scoring; computer software for enabling users to retrieve digital currency account balances and transaction information using mobile devices and mobile telecommunication networks; computer software for making electronic payments and for transferring funds to and from others using digital currency accounts.

Class 35: Providing commercial information on, and comparisons of, the financial services of others, including through computer and communication networks, the internet, and social media; comparison shopping services and price comparison services, including through computer and communication networks, the internet, and social media; providing economic forecasting and analysis, including through computer or communication networks, the internet, and social media, not intended for import export businesses, clothing retailers or luxury goods retailers.

Class 36: Electronic payment services, namely, receipt, processing and payment of bills, issuance of personal payments; providing bill payment and tax payment processing services via computer and communication networks; money transfer services; currency exchange services; on-line real-time currency trading; cash management, namely, facilitating transfers of electronic cash equivalents; digital currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value; providing information related to personal finance; financial information; providing a website featuring personal finance information and guidance; editorial content services related to personal finance, namely, providing an online blog featuring articles, tips, questions and answers, and guidance in the field of personal finance, financial planning, budgeting, and saving money; personal and small business financial management services; financial transaction management; financial analysis services; bill tracking and management in the nature of personal and small business financial management; payment tracking and management in the nature of bill payment, invoice, and person to person payment services for personal and small business finance; expense tracking and management in the nature of personal and small business financial management; taxable item tracking and management in the nature of personal and small business financial management; bill payment services; forecasting and analysis of financial data for others; financial data aggregation, namely, electronically compiling financial data from multiple accounts into a single location for financial purposes; services for the financial management of credit and debit cards, loans, investments and financial accounts; providing financial information, news, commentary, and advice in the fields of financial management, budgeting, financial planning and retirement planning accessible via a global computer network, the internet, social media web sites, and mobile software applications; credit scoring services; taxable item tracking and management, namely, tracking of taxable income and expense data for the purpose of personal and business tax planning and filing.

Class 41: Education services, namely, online instruction featuring news, opinion, and advice, in the field of finance; online journals and educational content, namely, blogs in the field of finance; providing a website featuring blogs and non-downloadable publications in the nature of articles in the field of finance; providing on-line non-downloadable articles, namely, news, opinion, feature and blog content, in the field of personal finance; none of the foregoing for use in insurance brokerage services and investment brokerage services; providing on-line non-downloadable educational content, namely, news and opinions in the field of personal and small business finance.

Class 42: Providing temporary use of on-line non-downloadable computer software for performing financial transactions and transmitting and receiving information in the fields of electronic payments and electronic bill payments and bill presentment; providing temporary use of on-line non-downloadable software for use in processing electronic payments and transferring funds to and from others; providing temporary use of on-line non-downloadable software for use in transferring funds between financial accounts; providing temporary use of non-downloadable computer software for use in sending and receiving payments, transferring funds, bill payment and bill presentment; providing temporary use of non-downloadable computer software for bill presentment and payment; providing temporary use of non-downloadable computer software for generating bill reminders and bill payment status alerts; providing temporary use of online non-downloadable software for use in electronically trading, storing, sending, receiving, accepting and transmitting digital currency, and managing digital currency payment and exchange transactions; providing temporary use of non-downloadable computer software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing of data; providing temporary use of non-downloadable computer software for use in monitoring progress toward personal goals; providing temporary use of non-downloadable computer software applications for online banking management and personal financial management, not intended for import export businesses, clothing retailers or luxury goods retailers; providing temporary use of non-downloadable computer software for financial transaction management; providing temporary use of non-downloadable computer software for tracking and analysis of personal and small business financial transactions; providing temporary use of non-downloadable computer software for financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; providing temporary use of non-downloadable computer software for creating reports and graphs; providing temporary use of non-downloadable computer software for forecasting and analysis of data, not intended for import export businesses, clothing retailers or luxury goods retailers; providing temporary use of non-downloadable computer software for data aggregation, not intended for import export businesses, clothing retailers or luxury goods retailers; providing temporary use of non-downloadable computer software for providing alerts, not intended for import export businesses, clothing retailers or luxury goods retailers; providing temporary use of non-downloadable computer software for providing wireless access to data and databases, not intended for import export businesses, clothing retailers or luxury goods retailers; providing temporary use of non-downloadable computer software for enabling users to retrieve account balances and transaction information accessible over mobile applications and mobile telecommunication networks; providing temporary use of non-downloadable computer software for making electronic payments and for transferring funds to and from others; providing temporary use of non-downloadable computer software for electronic bill payment; providing temporary use of non-downloadable computer software for managing credit and debit card accounts; providing temporary use of non-downloadable computer software for credit monitoring and credit scoring; providing temporary use of non-downloadable computer software for enabling users to retrieve digital currency account balances and transaction information using mobile devices and mobile telecommunication networks; providing temporary use of non-downloadable computer software for making electronic payments and for transferring funds to and from others using digital currency accounts; electronic monitoring of credit reports, financial accounts and other data via the internet to facilitate the detection and prevention of identity theft and fraud.

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

 

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

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.

 

Contested goods in Class 9

The contested goods computer software for performing financial transactions and transmitting and receiving information in the fields of electronic payments and electronic bill payments and bill presentment; computer software for use in processing electronic payments and transferring funds to and from others; computer software for use in transferring funds between financial accounts; for use in sending and receiving payments, transferring funds, bill payment and bill presentment; computer software for bill presentment and payment; computer software for generating bill reminders and bill payment status alerts; downloadable computer software for use in electronically trading, storing, sending, receiving, accepting and transmitting digital currency, and managing digital currency payment and exchange transactions; computer software for online banking management and personal financial management; computer software for financial transaction management; computer software for tracking and analysis of personal and small business financial transactions; computer software for financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; computer software for enabling users to retrieve account balances and transaction information using mobile devices and mobile telecommunication networks; computer software for making electronic payments and for transferring funds to and from others; computer software for electronic bill payment; computer software for managing credit and debit card accounts; computer software for credit monitoring and credit scoring; computer software for enabling users to retrieve digital currency account balances and transaction information using mobile devices and mobile telecommunication networks; computer software for making electronic payments and for transferring funds to and from others using digital currency accounts are all software which can be used by financial entities in the course of providing their services.

Certainly, in today’s high-tech society, almost all electronic or digital apparatus function using integrated software. Also, many services in the financial or business sectors in the IT and telecommunication industries clearly depend on software or computer-aided software in order to be rendered.

Nevertheless, although many financial and banking services as those of the opponent are rendered with the use of software, for example online banking platforms, such software is an integral part of the financial services themselves and is not sold independently from them. Financial companies or institutions are not normally engaged in the development of highly specialised software. Rather, they would outsource the development of such software to IT companies. These goods and services are clearly provided by different undertakings with expertise in completely different areas, and at the same time target different users, which rules out any complementary relationship. Besides taking into account that by nature goods are different from services, they neither coincide in their purpose, method of use or channels of distribution.

As a consequence thereof, even if the contested software are important for the provision of the opponent’s services, these goods and services would not be seen by the relevant consumer as offered and/or manufactured by the same producers and they also have different distribution channels. Therefore, the contested goods are dissimilar to the opponent’s financial and monetary services and banking.

The other opponent’s services regarding auctioneering, advertising and sale promotional services in Class 35, even if some of them are related with the financial services of the earlier mark, they are different in purpose and method of use. They are also usually not offered by the same kind of companies and are not complementary nor in competition either. Therefore they are dissimilar.

The remaining contested goods, unrelated specifically with financial services, i.e. computer software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing of data; downloadable computer software applications for use in monitoring progress toward personal goals; computer software for creating reports and graphs; computer software for forecasting and analysis of data; computer software for data aggregation; computer software for providing alerts; computer software for providing wireless access to data and databases have a different nature and purpose than the opponent’s services in Classes 35 and 36. On the one hand, goods are articles of trade, wares or merchandise and their sale usually entails the transfer in title of something physical, whereas on the other hand services consist of the provision of intangible activities.

The financial, banking, auctioneering and promotional services of the earlier mark are also not complementary or in competition with the contested goods. They are also not usually offered by the same kind of companies and do not use the same distribution channels. Therefore, these goods and services have no relevant points in common and are to be held dissimilar.

Contested services in Class 35

The contested providing commercial information on the financial services of others, including through computer and communication networks, the internet, and social media and the opponent’s advertising services relating to financial services have a similar purpose, namely to reinforce a business position in the market. Furthermore, they can be offered by the same professionals and target the same public, therefore, they are at least similar to a low degree.

The contested providing comparison of the financial services of others, including through computer and communication networks, the internet, and social media; comparison shopping services and price comparison services, including through computer and communication networks, the internet, and social media are at least similar to a low degree to the opponent's information services related to sales promotion of goods and services for others related to financial services. These services have a similar purpose, namely to provide information, or to compare financial services offered by others. They are often distributed through the same channels and are aimed at the same relevant public, a part of them also have the same origin, i.e. specialist companies.

The contested providing economic forecasting and analysis, including through computer or communication networks, the internet, and social media, not intended for import export businesses, clothing retailers or luxury goods retailers and the opponent’s services financial information, data, advice and consultancy services and/or information services related to sales promotion of goods and services for others related to financial services have a similar purpose and can also be offered by the same kind of companies. They are also addressed to the same public. Therefore, they are similar to at least a low degree.

Contested services in Class 36

The contested services electronic payment services, namely, receipt, processing and payment of bills, issuance of personal payments; providing bill payment and tax payment processing services via computer and communication networks; money transfer services; currency exchange services; on-line real-time currency trading; cash management, namely, facilitating transfers of electronic cash equivalents; digital currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value; personal and small business financial management services; financial transaction management; bill tracking and management in the nature of personal and small business financial management; payment tracking and management in the nature of bill payment, invoice, and person to person payment services for personal and small business finance; expense tracking and management in the nature of personal and small business financial management; taxable item tracking and management in the nature of personal and small business financial management; bill payment services; services for the financial management of credit and debit cards, loans, investments and financial accounts; providing financial information, news, commentary, and advice in the fields of financial management, budgeting, financial planning and retirement planning accessible via a global computer network, the internet, social media web sites, and mobile software applications; credit scoring services are included within one of the broad categories of the opponent’s financial, monetary and banking services. Therefore, they are identical.

The contested providing information related to personal finance; financial information; providing a website featuring personal finance information and guidance; editorial content services related to personal finance, namely, providing an online blog featuring articles, tips, questions and answers, and guidance in the field of personal finance, financial planning, budgeting, and saving money; financial analysis services; forecasting and analysis of financial data for others; financial data aggregation, namely, electronically compiling financial data from multiple accounts into a single location for financial purposes; taxable item tracking and management, namely, tracking of taxable income and expense data for the purpose of personal and business tax planning and filing are included in, or overlap with, the broad category of the opponent’s financial information, data, advice and consultancy services. Therefore, they are identical.

Contested services in Class 41

The contested education services, namely, online instruction featuring news, opinion, and advice, in the field of finance; online journals and educational content, namely, blogs in the field of finance; providing a website featuring blogs and non-downloadable publications in the nature of articles in the field of finance; providing on-line non-downloadable articles, namely, news, opinion, feature and blog content, in the field of personal finance; none of the foregoing for use in insurance brokerage services and investment brokerage services; providing on-line non-downloadable educational content, namely, news and opinions in the field of personal and small business finance are instructional and publishing services related with the finance field. These services have the same purpose as the opponent’s financial information, data, advice and consultancy services in Class 36 in so far as any of them pretends to communicate, display and convey financial information and knowledge. It is, therefore, plausible that the opponent’s services are offered by the same providers and, moreover, targeted at the same end users. Therefore, these services are considered similar at least to a low degree.

Contested services in Class 42

All the contested services reproduced above in Class 42 are linked with the temporary use of on-line non-downloadable computer software for performing different financial transactions and activities.

Services comprise economic activities provided to third parties in exchange of a certain price. Thus, one indication for an activity to be considered a service under trade mark law is its independent economic value, that is to say, it is usually provided in exchange for some form of (monetary) compensation. Otherwise, it could be a mere ancillary activity provided together with or after the purchase of a specific product.

Although the opponent’s services in Class 36 financial and monetary services, and banking could be offered and performed electronically, and within these activities a temporary use of software might be needed, these services are different in purpose and method of use, as indicated above with regard to the contested goods in Class 9. They are also provided by different undertaking and addressed to different public and also use different distribution channels.

Although the temporary use of software is not merely ancillary to the provision of the opponent’s financial and monetary services rendered electronically, but is rather indispensable, these services are usually not offered by the same kind of undertaking and consumers would not think that they are provided by the financial entities using them. As a consequence thereof, these services are dissimilar.

b) Relevant public — degree of attention

The average consumer of the category of products and services 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 and similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

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

Given that those contested services in Class 36 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, § 21; 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874, §61).

c) The signs

 

	MINT
Earlier trade mark	Contested sign

 

The relevant territory is Latvia.

 

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).

Neither ‘mintos’ nor ‘MINT’ would be associated with a particular meaning by the Latvian average and professional consumer of the services at hand. As a consequence thereof both words would be seen as meaningless with a normal degree of distinctiveness.

The contested sign is a word mark and, therefore, it is the word as such that is protected and not its written form because it does not combine upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’).

The font of the earlier sign, which essentially corresponds to a bold lettering, is minimal and this stylisation would not distract the consumer’s attention from the verbal element ‘mintos’.

This is particularly the case when the figurative elements do not significantly alter the overall impression of the word element contained in it, like it is the case in the earlier mark. In fact the figurative elements are so small and have such a tenuous grey shade that they might even be overlooked by the relevant public.

Visually, the signs coincide in their initial letter correlation ‘M-I-N-T’, which corresponds to the only word of which the contested sign consists . They differ in the additional letters ‘OS’, appearing as the final part of the word element of earlier mark, as well as on the circumstance that the term ‘mintos’ is slightly stylised, which will have a limited impact as explained above.

In addition to this, it is a well-established principle in case-law that the beginning of the signs usually catches the consumer’s attention most, since they read from left to right. Thus, the coincidence in the present case, where the first four letters (out of six in total) of the single verbal element of the earlier mark corresponds to the contested sign, will lead to an above average degree of visual similarity of the signs.

While the difference in the ending ‘OS’ of the earlier sign is not likely to be disregarded, the fact that the same meaningless sequence of letters ‘mint’ is the initial and bigger part of the contested sign, may not go unnoticed.

Aurally, the signs coincide in the sound of the letters ‘MINT’ and differ in the ending ‘OS’ in the earlier trade mark. The contested sign will be pronounced as a monosyllabic word ‘MINT’, while the earlier mark will be phonetically reproduced in two syllables, namely ‘MIN-TOS’.

Thus, in spite an extra syllable is introduced with the addition of the letter combination ‘OS’ at the earlier trademark, the fact remains that the two signs have a common or very similar sound at their first syllables but also the beginning of the second syllable ‘T’ in the earlier sign ‘TOS’ coincides with the final sound of the one syllable of which the contested sign consists (21/01/2016, T‑75/15, ROD, EU:T:2016:26, § 51).

The initial part is also the one into which consumers usually focus their attention and the contested sign is entirely included in the beginning of the earlier mark, where the stress is also placed.

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

Conceptually, neither ‘MINTOS’ nor ‘ MINT’ have 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.

 Global assessment, other arguments and conclusion

 

The goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar and the degree of attention of the relevant public varies from average to high.

The earlier Latvian mark has an average degree of inherent distinctiveness. The signs are visually and phonetically similar to an average degree while the conceptual aspect remains neutral for the Latvian-speaking public.

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).

Under these circumstances, the Opposition Division finds that the total inclusion of the contested sign as the initial part of the verbal element of the earlier trade mark, as well as the addition of a final part ‘OS’ in this latter sign, are insufficient to counterbalance the similar overall impressions which the marks convey, being both composed of single words having four identical letters and sounds.

Certainly, 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) and may be also confused about the origin of the contested goods which were found identical and similar (to varying degrees).

It follows from the above that the contested trade mark must be rejected for the services found to be at least similar to a low degree to those of the earlier trade mark. The low degree of similarity between some of the services is counterbalanced by the above average visual and aural similarity between the signs, this according to the interdependence principle explained above.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the Latvian public for the services found identical or similar to varying degrees and, therefore, the opposition is partly well founded on the basis of the opponent’s Latvian trade mark registration No M  68  943 .

The rest of the contested goods and services in Classes 9 and 42 are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Saida CRABBE

Julia GARCÍA MURILLO

Chantal VAN RIEL

 

 

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.