OPPOSITION No B 3 061 719

L.S. Investments Limited, Spyrou Kyprianou 20, Chapo Central, 1st floor, 1075 Nicosia, Cyprus (opponent), represented by Pavel Steinwicht, Hlavni 2725/153, 141 00 Praha 4 - Zabehlice, Czech Republic (professional representative)

a g a i n s t

Octavian Ovidu Farcas and Cristina Codruta Farcas, Avenida de la Constitución 35 4 b, 28840 Mejorada del Campo (Madrid), Spain (applicants), represented by Dionisio de la Fuente Fernández, Plaza de Castilla Nº 3 BIS, 28046 Madrid, Spain (professional representative).

On 20/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 719 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 869 212 . The opposition is based on European Union trade mark registration No 5 103 577 ‘alzashop’. The opponent invoked Article 8(1)(a) and (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 the following:

Class 35: Business research, market research, mediation in the fields of commerce and advertising, commercial and industrial management assistance, business management assistance, business services and consultancy, business management and business consultancy, commercial or business information, marketing studies, organisational consultancy, brokerage in the fields of providing commercial networks, shopping centres brokerage of commercial contacts, business operations, information and consultancy for commercial and advertising purposes, economic, financial and organisational consultancy, organisation of commercial events, arranging exhibitions for commercial purposes, merchandising, franchising; commercial use of the Internet in the fields of commercial Internet media and search services, e-business, on-line advertising, presentation of users on webpages on the Internet, systematic ordering of information in computer datatbases, uter databases, lonely-hearts columns.

The contested services are the following:

Class 35: Advertising; business management; business administration; office functions; import; export; advertising relating to the marketing of goods; business and advertising information services, all provided online from a computer database or the internet; business consultancy, information and organisation services; business research and investigation; management of consumer and trade schemes; compilation of advertisements for use as web pages on the internet; devising and up-dating of advertising, promotional and publicity materials; online advertising on a computer network; rental of advertising and promotional space; rental of advertising time on communication media; distribution of advertising and promotional materials; sales promotion (for others); data searching in computer files (for others); computerised file management; gathering, arranging and disseminating statistical information; collating and systematic ordering of data in databases; public relations services; publicity columns preparation; publication of publicity texts; arranging and conducting of exhibitions and trade fairs for commercial purposes; procurement services for others (acquisition of goods and services for other companies); radio and television advertising and commercials; arranging newspaper and publication subscriptions for others; sales promotion for others via a website of art and antiques, goods in the field of babies, beauty and health, home, diy, cinema, dvds and films, collectibles, consoles and video games, cameras and photography; sales promotion for others via a website of goods in the field of sports, household electrical appliances, tickets and events, equipment and machinery, image and sound, computing and tablets, musical instruments, toys, books, magazines and comics, coins and banknotes; sales promotion for others via a website of goods in the field of motors, mobile telephones and telephony, music, compact discs and vinyl records, clocks, watches and jewellery, clothing, footwear and accessories, stamps, tourism, wine and gastronomy; advice, information and consulting services relating to all the aforesaid services; assistance in product commercialization, within the framework of a franchise contract; advertising; the bringing together, via a website, for the benefit of others, of a variety of goods (excluding the transport thereof), namely dvds and films, collectibles, consoles and video games, cameras and goods for photography, enabling consumers to conveniently view and purchase those goods; wholesaling, retailing and sale via global computer networks of art and antiques, goods in the field of babies, beauty and health, home, diy, cinema, dvds and films, collectibles, consoles and video games, cameras and photography, sports, household electrical appliances, electronics, equipment and machinery, image and sound, computing and tablets, musical instruments, toys; wholesaling, retailing and sale via global computer networks of goods in the field of books, magazines and comics, coins and banknotes, motors, mobile telephones and telephony, music, compact discs and vinyl records, clocks, watches and jewellery, clothing, footwear and accessories, stamps, tourism, wine and gastronomy.

Some of the contested services are identical or similar to the services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested 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 services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the cost, sophistication, frequency of purchase and/or terms and conditions of the services sought.

c) The signs

alzashop
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The General Court has held that the word ‘shop’ is understood throughout the European Union as a commercial establishment in which goods are sold (06/12/2016, T 735/15, ECLI:EU:T:2016:704, Shop Art, § 43).

The word ‘shop’, which appears in both signs as set out below, is devoid of distinctive character for the parties’ services in Class 35 either because it is directly descriptive of the services (e.g. the listed wholesale and retail services of the contested sign) or because it is a term the use of which is commonplace in the field of commerce such that it is not capable of indicating the commercial origin of any of the relevant services.

When perceiving a verbal sign, consumers 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).

It follows from all the above that the relevant public in the European Union will break down the earlier mark into the verbal elements ‘alza’ and ‘shop’ (which is non-distinctive, as stated above) because they will perceive the word ‘shop’ therein as a meaningful element despite the fact that it is not depicted as a separate and distinct part of the earlier mark.

Irrespective of whether the verbal element ‘alza’ of the earlier mark is meaningful in Spanish or Italian, it does not bear a direct reference to the relevant services, and so this term is normally distinctive thereof for the Spanish and Italian speaking consumers. For the rest of the relevant public, this verbal element is meaningless and distinctive of the relevant services.

The contested figurative sign consists of the verbal element ‘aloshop’ written in a stylised font type in which the first letter ‘a’ thereof is depicted in a relatively larger size, in a different colour, and surrounded by the shape of a hexagon, beneath which verbal element is placed the stylised word ‘Marketplace’ of which the first letter ‘M’ is highly stylised. To the right of the verbal element ‘aloshop’ appears both a full stop punctuation mark and the letters ‘TM’. All the said elements are depicted within a red rectangle.

Given the well-known fact that the relevant consumers are familiar with standard marketing practices, such as highlighting or otherwise emphasising the first letter of a brand name, the Opposition Division considers that the said letter ‘a’ will be perceived as being the first letter of the verbal element ‘aloshop’ and not as a separate and distinct verbal element of the contested sign.

That said, this does not mean that the relevant consumer will not break a sign down into elements that suggest a concrete meaning, or that resemble words that they already know.

For the reasons stated above, the Office considers that the relevant consumer will break down the verbal element ‘aloshop’ into the terms ‘alo’ and ‘shop’ the latter of which, as has been explained above, is devoid of distinctive character for the relevant services in Class 35, whereas the verbal element ‘alo’ is meaningless and, therefore, distinctive to a normal degree in respect of the relevant services.

Irrespective of whether the word combination ‘Marketplace’ or either of its component words ‘Market’ and ‘place’ will be understood, the Opposition Division considers that due to its small size and subsidiary position, it will be disregarded by the relevant public in the perception of the contested sign.

The figurative elements of the contested sign (the hexagon shape in white, the punctuation mark, the red rectangle, and the stylisation of the verbal elements) will be perceived as being primarily decorative. The contested sign includes also the trade mark symbol, ™. This is an informative indication that the sign is purportedly a trade mark and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The verbal element ‘aloshop’ is dominant (visually outstanding) within the contested sign.

Visually, the signs coincide in the first two letters and in the verbal term ‘shop’ of the verbal terms ‘alzashop’ and ‘aloshop’ in the earlier mark and contested sign respectively. They differ in the letters ‘za’ of the earlier sign and ‘o’ of the contested sign, as well as in the verbal term ‘Marketplace’ (which, for the reasons stated above, will be disregarded by the relevant consumer) and the various figurative elements of the contested sign.

Although the verbal terms ‘alzashop’ and ‘aloshop’ in the earlier mark and contested sign respectively both start with the same two letters, the visual impact of this coincidence is limited due to the way in which the letter ‘a’ of the element ‘aloshop’ is visually depicted, as explained above.

As the coinciding verbal term ‘shop’ is devoid of distinctive character, as explained above, its impact on the relevant consumer is diminished.

Although the figurative elements of the contested sign are essentially of a decorative nature, nevertheless the relevant consumer will not fail to notice the reasonably high degree of stylisation of the verbal elements as well as the hexagonal shape surrounding the first letter ‘a’ of the verbal element ‘aloshop’.

Taking all the above into consideration, the Opposition Division considers that the signs at issue are visually similar merely to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛AL-(**/*)-SHOP’, present identically in both signs. The pronunciation differs in the sound of the letters ‘ZA’ placed in third and fourth position in the earlier mark and in the sound of the letter ‘O’ placed in third position of the verbal element ‘aloshop’ of the contested sign, which said differences significantly modify the aural perception. The word-combination ‘Marketplace’ of the contested sign will not be sounded for the reasons explained above.

As the coinciding verbal term ‘SHOP’ comes at the end of the words in which it appears and is devoid of distinctive character, its aural impact on the relevant consumer is limited.

Taking all the above into account, the Opposition Division considers that the signs at issue are phonetically similar to a rather low degree.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding word ‘SHOP’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. As stated above, the word combination ‘Marketplace’ will be disregarded in the perception of the contested sign. Instead, the attention of the relevant public will be attracted by the additional verbal elements. To the extent that the verbal element ‘alza’ of the earlier mark is meaningful in Spanish and Italian, as referred to above, it amounts to a point of conceptual difference rendering the signs not conceptually similar while for the remainder of the relevant public an assessment is not possible so that 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 the earlier mark enjoys an enhanced distinctiveness through use.

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 particular 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The signs have been found to be visually similar to a low degree, phonetically similar to a rather low degree, and either not conceptually similar or with the conceptual aspect not influencing the assessment of the similarity of the signs. The services have been assumed to be identical, the earlier mark possesses normal distinctiveness and the degree of attention of the relevant consumer varies between average and high.

The Opposition Division takes the view that the additional differing elements are clearly perceptible and sufficient to exclude any likelihood of confusion between the signs, bearing in mind, in particular, that the common verbal element ‘SHOP’ is devoid of distinctive character in relation to the services concerned.

Considering all the above, it is concluded that the differences between the signs, both in figurative and verbal elements, are enough to outweigh the similarities between them. In particular, the Office considers that as the visual and aural differences between the two verbal elements ‘alza’ and ‘alo’ in the earlier mark and contested sign respectively are immediately perceptible, the coincidence in the letters placed in first and second position in those two said verbal elements is not decisive.

Following from the above, the Opposition Division does not find it likely that the relevant consumer, even with an average degree of attention, might believe that the services come from the same undertaking or economically linked undertakings, even assuming that they are identical.

Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs at issue are obviously not identical.

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

Sam GYLLING

Kieran HENEGHAN

Martina GALLE

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.