OPPOSITION No B 3 050 316

FLEUROP INTERFLORA ESPAÑA S.a., C/ Julián Camarillo 29 Edificio D-I 4ª planta, 28037 Madrid, Spain (opponent), represented by Cuatrecasas Gonçalves Pereira Propiedad Industrial S.R.L., C/ Almagro 9, 28010 Madrid, Spain (professional representative)

a g a i n s t

ВЪЛКАНОВ ИНТЕРНЕШЪНЪЛ ООД, ул. ‘Проф. Цани Калянджиев’ №12 ет. 4 ап. 17, 9000 Варна, Bulgaria (applicant), represented by Evgeniya Gancheva, Amibue Str. Nr. 72 Fl. 2 Office 10, 1612 Sofia, Bulgaria (professional representative).

On 26/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 316 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 17 868 015 for the figurative mark . The opposition is based on Spanish trade mark registration No 3 593 475 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 goods and services

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

Class 31: Agricultural, horticultural, forestry and grain products, not included in other classes; live animals; fresh fruits and vegetables; seeds, plants and natural flowers.

Class 35: Services of import and export of plants and flowers; help services in the operation and direction of a commercial and industrial company; advertising services; retail services in commerce and through global computer networks of flowers and plants.

The contested goods and services after the limitation of 11/01/2019, which was accepted by the Office and duly notified to the opponent, are the following:

Class 31: Flowers; fresh flower arrangements; floral decorations [fresh]; live roses; Chinese roses; preserved flowers; roses; cut flowers; roses [plants].

Class 35: Business analysis, research and information services; marketing studies; commercial information services; market research and business analyses; provision of business and commercial information; providing business information in the field of social media; providing business information via a web site; provision of business information relating to franchising; provision of information and advice to consumers regarding the selection of products and items to be purchased; provision of on-line business and commercial information; providing consumer product information via the internet; conducting online business management research surveys; commercial information research studies; commercial information services, via the internet; advertising, marketing and promotional services; product demonstrations and product display services; provision of advertising space, time and media; distribution of advertising, marketing and promotional material; advertising, marketing and promotional consultancy, advisory and assistance services; business assistance relating to corporate identity; reproduction of advertising material; design of advertising logos; design of advertising materials; direct marketing; electronic publication of printed matter for advertising purposes; preparing and placing advertisements for others; preparation of custom advertisements for others; preparation of mailing lists for direct mail advertising services [other than selling]; issuing of publicity leaflets; web indexing for commercial or advertising purposes; response advertising; information services relating to advertising; database marketing; product marketing; event marketing; internet marketing; search engine marketing services; marketing; merchandising; promoting the sale of fashion goods through promotional articles in magazines; on-line promotion of computer networks and websites; on-line advertising and marketing services; online advertisements; arranging and placing of advertisements; arranging and conducting of marketing events; arranging and conducting of promotional events; arranging of product launches; arrangement of advertising; providing business marketing information; design of advertising brochures; design of advertising flyers; market campaigns; affiliate marketing; pay per click advertising; copywriting for advertising and promotional purposes; planning of marketing strategies; preparing promotional and merchandising material for others; preparation of advertising campaigns; displaying advertisements for others; provision of information relating to marketing; provision of information relating to advertising; production of advertising material; promotion of special events; promoting the goods and services of others via computer and communication networks; promotional marketing; publication of printed matter for advertising purposes; publication of publicity materials on-line; development of marketing strategies and concepts; advertisement for others on the internet; banner advertising; advertising particularly services for the promotion of goods; advertising; promoting the goods and services of others through advertisements on internet websites; promoting the goods and services of others over the internet; advertising via electronic media and specifically the internet; advertisement via mobile phone networks; advertising services relating to the commercialization of new products; advertising services relating to cosmetics; advertising services relating to perfumery; advertising services relating to the sale of goods; advertising services to create corporate and brand identity; advertising services provided via a data base; advertising services provided for florists; advertising services provided via the internet; advertising services relating to data bases; advertising services relating to hotels; assistance in product commercialization, within the framework of a franchise contract; compilation of advertisements; telemarketing services; business marketing services; business assistance relating to business image; market prospecting; sponsorship search; arranging and conducting of advertising events; arranging advertising and promotional contracts for others; arranging of presentations for advertising purposes; advertising and marketing; advertising and marketing services provided by means of social media; business advertising services relating to franchising; advertising, promotional and public relations services; trade promotional services; online community management services; marketing agency services; preparation and realization of media and advertising plans and concepts; brand creation services; corporate identity services; brand positioning services; retail services relating to flowers; retail services in relation to festive decorations; retail services in relation to chocolate; retail services relating to candy; wholesale services relating to flowers; electronic order processing; computerized on-line ordering services; consulting in sales techniques and sales programmes; arranging of commercial and business contacts; intermediary services relating to advertising; sales administration; commercial administration of the licensing of the goods and services of others; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; online ordering services; gift registry services; advice in the field of business management and marketing; management advisory services related to franchising; administration of the business affairs of franchises; business intelligence services; business consultation and management regarding marketing activities; business consultation and management regarding launching of new products; business management assistance in the field of franchising; business representative services; business assistance relating to franchising; assistance in business management within the framework of a franchise contract; market intelligence services.

Some of the contested goods and services are identical or similar to the 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 remaining 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.

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 goods and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature or terms and conditions of the goods and services purchased and/or provided.

c) The signs

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 Opposition Division supports the conclusions regarding the meaning and distinctiveness of the elements of the earlier mark already reached in decision B 3 050 200 of 18/04/2018, where the opponent was also a party. However, they will be reiterated here as part of this decision.

Regarding the verbal element ‘Interflora’ in the earlier mark, although composed of one verbal element, 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). Therefore, the relevant public will split the term ‘Interflora’ into two elements, ‘inter’ and ‘flora’. The first element is the Spanish prefix ‘inter’, which means ‘between, in the middle or expresses a relationship among several subjects’ (information extracted from Real Academia Española Spanish Dictionary on 15/07/2019 at https://dle.rae.es/?id=Ls9wx2s; translation provided by the examiner). As it is a common prefix in the business field, it has a lower-than-average degree of distinctiveness for some of the relevant services in Class 35 (namely services of import and export of plants and flowers and retail services in commerce and through global computer networks of flowers and plants).

The element ‘flora’ refers to ‘the variety of flowers and plants of a country or region (plant life) or to the variety of microorganisms adapted to a media’ (information extracted from the Real Academia Española Spanish Dictionary on 15/07/2019 at https://dle.rae.es/?id=I6Rqxk5; translation provided by the examiner). Bearing in mind that most of the relevant goods and services are related to plants or flowers and supporting services relating thereto, this element is weak for those goods and services, as it refers to their nature, purpose or subject matter. In relation to other services like help services in the operation and direction of a commercial and industrial company and advertising services in Class 35, the element is distinctive.

Taken as a whole, the relevant public will perceive the verbal element ‘Interflora’ as indicating a relationship in the context of several flower and plant systems.

The figurative element of the earlier mark depicts a running man (some could recognise the ancient Greek god Hermes) with a bouquet of flowers in his right hand and an incomplete circle surrounding him. Bearing in mind that some of the services are related to the retail or delivery of flowers and plants, it is considered a weak element for some of the relevant services, namely services of import and export of plants and flowers and retail services in commerce and through global computer networks of flowers and plants in Class 35. For the rest of the opponent’s goods and services, this figurative element is distinctive.

The black background of the earlier mark is a less distinctive element of a purely decorative nature, which will have a lesser impact on the relevant public.

In the contested sign the word ‘Roses’, although in English, will be understood in its usual meaning as the Spanish equivalent, ‘rosas’, is very close to it. The figurative element depicting a rose and the word ‘Roses’ are non-distinctive in relation to the contested goods in Class 31 and to some of the services in Class 35, namely retail services relating to flowers; retail services in relation to festive decorations; wholesale services relating to flowers as they indicate their nature, type and components (fresh flower arrangements; floral decorations [fresh]) and the possible object of sales. For the remaining services these elements are of average distinctiveness.

The other verbal elements of the contested sign will be perceived by the relevant public as one whole expression, ‘FLORA INTERNATIONAL’, composed of two words.

Considering that the Spanish equivalent ‘internacional’ is very close to the word ‘INTERNATIONAL’ in the contested sign, it is reasonable to conclude that the relevant public will perceive the word with the meaning of ‘belonging or related to two or more nations’ (information extracted from Real Academia Española Spanish Dictionary on 15/07/2019 at https://dle.rae.es/?id=LvcJGq6; translation provided by the examiner). Therefore, this element is of weak distinctive character in relation to all goods and services as it can be perceived as an indication that they are delivered and provided in many countries.

The meaning of the word ‘FLORA’ will be the same as in the earlier trade mark and as explained above. Therefore, the word ‘FLORA’ is of weak distinctive character for all the goods in Class 31 covered by the contested sign and for the services retail services relating to flowers; retail services in relation to festive decorations; wholesale services relating to flowers in Class 35.

Therefore, the meaning of the entire expression could be seen by the public as ‘plants from/for many countries’, which, like its elements, is also of weak distinctive character in relation to the goods in Class 31 and to retail services relating to flowers; retail services in relation to festive decorations; wholesale services relating to flowers in Class 35. For the remaining services in Class 35 the element ‘FLORA’ is distinctive and therefore the expression is also of distinctive character.

However, regardless of whether or not the public can understand the meanings of the verbal elements in the contested sign, it will be noticed that ‘INTERNATIONAL’ and ‘Roses’ are in English, or at least not Spanish, and there will be the perception that the contested sign is in a foreign language. For the earlier trade mark such a conclusion cannot be made.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The element ‘Roses’ of the contested sign is of secondary importance in the visual perception of the sign, as it only repeats the meaning of the image of the rose and is written in a significantly smaller typeface in subordinate position to the expression ‘FLORA INTERNATIONAL’. Therefore, the image of the rose and the words ‘FLORA INTERNATIONAL’ are the co-dominant elements of the contested sign.

As a preliminary point, contrary to what the applicant suggests, the visual comparison of the signs at issue cannot be made by reproducing their word elements in a uniform font as if they were the word marks ‘INTERFLORA’ and ‘FLORA INTERNATIONAL’. First, as is apparent from the previous paragraphs, the earlier mark and the mark applied for are both figurative marks. Second, the case-law cited by the applicant, according to which, in the case of a mark consisting of both word and figurative elements, the word elements must generally be regarded as more distinctive than the figurative elements (06/12/2013, T‑361/12, Ecoforce, EU:T:2013:630, § 32), cannot be interpreted as meaning that in the comparison of two figurative marks, each made up of a stylised word element, such as in the present case, the stylisation of the word elements should not be taken into account, since that would amount to considering the figurative marks as being word marks. Consequently, the comparison of the two marks at issue cannot overlook the stylisation of their respective word elements (27/02/2019, T‑107/18, Dienne Salotti (Dienne), EU:T:2019:114, § 45).

The key point is 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 (07/10/2014, T‑531/12, T, EU:T:2014:855, § 65).

Moreover, 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. In the present case, the first verbal element of the earlier mark is ‘Inter’, whereas in the contested sign it is ‘FLORA’.

Aurally, the signs coincide insofar as both contain the elements ‘flora’ and ‘inter’. However, in the earlier sign the combination is ‘Interflora’, whereas in the contested mark it is ‘FLORA INTERNATIONAL’. Therefore, the signs have completely different beginnings and significantly different lengths. Moreover, the first sign will be pronounced as one word, whereas in the contested sign there are two words, which also changes the rhythm and intonation of the signs’ pronunciations.

The distinctiveness of the elements varies as explained above in relation to the different goods and services in Classes 31 and 35. However, even for the goods and services for which the words are of average distinctive character, the differences remain equally noticeable.

The element ‘Roses’, regardless of the goods and services, is very likely not to be pronounced by the public as it is in a non-dominant position and clearly separable from the dominant and long two-word expression ‘FLORA INTERNATIONAL’. Certainly, the consumer tends to economise on words that have a secondary position, since their pronunciation takes some time and can be simply separated from the most prominent verbal element (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44).

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

Visually, although the signs coincide in the letter strings ‘inter’ and ‘flora’, their graphical depiction is different. As the signs are figurative, they cannot be compared visually by reproducing their verbal elements in a uniform font as if they were word marks. The comparison of the two marks at issue cannot overlook the stylisation of their verbal elements. The contested sign is depicted entirely in upper case, whereas in the earlier mark only the first letter is in upper case. Therefore, from a visual point of view, only the letter ‘I’ from ‘Interflora’ and from ‘INTERNATIONAL’ could be said to be the same. The remaining letters, although being the same letters of the alphabet, do not have significant commonalities due to their graphical depiction. Moreover, the words ‘FLORA INTERNATIONAL’ are not presented in the same order as the elements of the earlier mark ‘Inter-flora’, which contributes to the visual differences.

The signs differ in their figurative elements that, although of weak (the earlier mark) or purely non-distinctive (the contested sign) character for some of the goods and services, will not go unnoticed by the relevant public. The signs also differ in the number of their verbal elements, namely one v three, but mainly in their overall presentation. The earlier mark has elements in gold (yellow) on a black background, while the contested sign is a graphical image with black contours without a background. The figurative element of the earlier sign is the god Hermes running with some flowers in his hand, while in the contested mark the figurative element is a single rose. Moreover, the figurative element in the earlier mark is noticeably larger than and to the right of the verbal part, whereas in the contested sign the figurative element is not as large as the verbal elements and is between them. Hence, the signs differ in their colours, typefaces, figurative elements and overall composition and therefore are visually similar to a low degree.

Conceptually, the signs will be associated with a similar meaning, to the extent that both include the element ‘Flora’.

Contrary to what the opponent claims, it cannot be concluded that both signs will evoke the same idea only because they contain ‘FLORA’ and ‘INTER’ or ‘INTERNATIONAL’. It cannot be concluded that the part ‘FLORA INTERNATIONAL’ of the contested sign will be conceptually linked with the element ‘Interflora’ of the earlier mark. To establish such a connection between the signs, it must be established, firstly, that it is very likely that the public will perceive the word ‘Interflora’ as meaning ‘flora from many countries’ or ‘international flora’ and, secondly, that for that reason the public, when encountering the contested sign ‘FLORA INTERNATIONAL’, will perceive it as having the same meaning and therefore link it to the earlier sign. Such a perception requires considerable intellectual effort, with meanings already established in the consumers’ minds and the consumers’ intentional search of similar meanings. It cannot be denied that the prefix ‘inter-’ by itself might be connected to ‘inter-nacional’ by some consumers, but the word ‘Interflora’, although composed of two distinguishable elements that enable the public to assume some meaning therein, is an invented word, and it would be farfetched to assume that the public will conceptually connect the expression ‘FLORA INTERNATIONAL’ directly and exactly to ‘Interflora’ because of the coinciding part ‘flora’ and on the basis of the string ‘inter’.

The figurative elements, namely the running man with the bouquet and the depiction of a rose, have significantly different conceptions. The word ‘Roses’ of the contested sign simply reinforces the perception of the co-dominant figurative element and reiterates it, and hence does not bring into play an additional meaning.

Therefore, regardless of the distinctiveness of ‘flora’ and ‘inter’ in relation to the goods and services in question, the signs contain too many other differentiating elements, which makes the presence of these common parts not sufficient to establish a similarity other than low due to the coincidence of the element ‘FLORA’.

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.

According to the opponent, the earlier trade mark enjoys enhanced distinctiveness, but it did not file any evidence in order to prove this claim. The opponent justified this claim with the argument that its company had a large family of trade marks registered with the term ‘FLORA’ and that they have been recognised as well-known trade marks by the SPTO. Moreover, when the consumer encountered new trade marks with the term ‘FLORA’, they would think that the marks have been launched by its undertaking.

However, the present opposition has been based on only one earlier trade mark. Therefore, there are no other earlier marks with which to establish a connection or that would enable an assessment of whether the earlier mark forms part of a single ‘series’ or ‘family’ of marks. Consequently, this argument by the opponent must be set aside. Moreover, the cited REFUSAL RESOLUTION SPTO of March 4, 2016 refers to trade marks that are different from the current one, at the least because they are word marks. Finally, as the opponent indicated its website as a source of information, it must be noted that it is not for the EUIPO decision-taking bodies to search the opponent’s website for the relevant data to prove the recognition notoriety of the earlier mark (04/10/2018, T‑820/17, Alimentos Friorizados (Alfrisa), EU:T:2018:647, § 61-63).

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 lower than average for some of the goods and services in question, namely services of import and export of plants and flowers and retail services in commerce and through global computer networks of flowers and plants in Class 35 for which all the elements of the earlier mark are weak or have a lower-than-average degree of distinctiveness. The mark has a normal degree of distinctiveness for the remaining goods and services, despite the presence of a weak element or an element of a degree of distinctiveness lower than average in the mark, as stated above in section c) of this decision.

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 marks. 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, § 23). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

All the contested goods and services are assumed to be identical to those of the earlier mark and target the public at large, while some also target a professional public. The degree of attention may vary from average to high and the earlier mark has a normal degree of distinctiveness for all of the goods and for some of the services and a low degree of distinctiveness for the remaining services.

The marks are aurally, visually and conceptually similar to a low degree. Although the signs coincide in the element ‘Flora’, this element appears in a different position in both signs and therefore extra effort is required from the consumer to make a connection between the signs. Moreover, in the earlier sign, the element ‘Flora’ is part of the composite word ‘Interflora’, whereas in the contested sign it is the first independent word and part of the co-dominant phrase ‘FLORA INTERNATIONAL’. The element ‘Flora’ is also a weak element for most of the goods and services of the earlier mark and for all of the goods and some of services of the contested sign.

The string of letters ‘inter’, also common to both signs, has a different function in each. In the earlier mark ‘inter-’ is a prefix and is recognised as such, as the word ‘Interflora’ does not exist and therefore the public is prone to decompose the word into its components in an attempt to find some meaning. However, ‘INTER’ in the contested sign is part of the word ‘INTERNATIONAL’, and although from a linguistic point of view it is again a prefix, the public when encountering a regular word does not dissect it into its prefix, stem and suffix.

The signs convey overall impressions that are very far apart in the consumers’ minds. This is due to the different colours, type fonts, stylistic presentation, number of words and figurative elements, and, as mentioned above, the earlier sign can be defined as ‘Spanish’, whereas the contested one is ‘English’ or at least ‘foreign’ from the perspective of the Spanish public.

Therefore, the dissimilarities are sufficient to safely exclude a likelihood of confusion, including a likelihood of association, even for services for which the common elements are distinctive. Consumers will clearly be able to distinguish the marks in dispute and will perceive them as coming from different undertakings.

The opponent also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The opposition cases quoted by the opponent were ‘MAGNO’ v ‘MAGNON’ (14/03/2017), ‘PENHA’ v ‘PENHAP’ (18/01/2017) and ‘SPARKS’ v ‘SPARK’ (22/12/2016).

The previous cases referred to by the opponent are not relevant to the present proceedings because the signs are not comparable. In all the cases, one of the signs is completely included in the other mark and the signs only differ by one letter that appears at the end of the longer sign. Moreover, every sign is composed of only one verbal element. However, in the present proceedings, even though the conflicting signs have a common element, this element appears in different positions in the signs and the signs have a different structure and additional differing elements.

Considering all the above, even assuming that all 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

Andrea VALISA

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.