OPPOSITION No B 3 056 338

Liberty Living Limited, 32nd Floor, St Mary Axe, EC3A 8BF., London, United Kingdom (opponent), represented by Cms Cameron Mckenna Nabarro Olswang Posniak I Sawicki SP.K., Emilii Plater 53, 00-113, Warsaw, Poland (professional representative)

a g a i n s t

Liberty Sky S.L., Calle Ciudad De Melilla 15, 29630, Benalmadena, Spain (applicant).

On 18/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 338 is upheld for all the contested services.

2. European Union trade mark application No 17 877 805 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 877 805 ‘LIBERTY SKY’. The opposition is based on, inter alia, European Union trade mark registration No 16 751 232 ‘LIBERTY’. In relation to this earlier right, the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. In relation to its other earlier rights, which include other registered trade marks as well as non-registered signs used in the course of trade and a well-known trade mark in the sense of Article 8(2)(c) EUTMR, the opponent invoked Article 8(1)(b), Article 8(4) and Article 8(5) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 16 751 232 ‘LIBERTY’.

1. The services

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

Class 36: Financial affairs; financial services; financial planning services; fund management services; real estate affairs; real estate agency services and real estate services provided on the internet; rent and lease negotiations; real estate selection and acquisition; property investment services; property sales, leasing, management and acquisition services; property valuations; valuations relating to the surveying of buildings; land and estate management; property unitisation and securitisation; advice on real estate management; real estate operations and transactions; real estate mortgage brokers; electronic payment services; providing and managing electronic cash systems; account crediting and debiting services; electronic money transfer for replenishing repayment cards and accounts, including cards and accounts for pre-paid telecommunication services; rent collection; rental of property; consultancy, information and advisory services relating to all the aforesaid services.

Class 37: Building construction; real estate developments; civil engineering and engineering construction services; advisory services relating to renovation and property development; supervision of construction; installation and repair of drying, dehumidifying and air conditioning apparatus; restoration and repair of furnishings, furniture and fittings; property reinstatement; testing and inspection of alarms, systems for detection of smoke and/or fire, access control systems, closed circuit television systems and of intruder alarm systems; cleaning buildings; dry-cleaning services; shirt-pressing services; consultancy, information and advisory services relating to all the aforesaid services; all for use in connection with civil engineering and engineering construction services.

Class 38: Leasing or rental of access time to computers, to databases, to information systems, to the internet and to electronic mail services; services for the provision of access to an electronic on-line network for information retrieval; internet service provider; providing access to an internet server.

Class 42: Industrial analysis services; surveying services; design of web pages; advisory services relating to architectural, engineering, engineering consultancy and design services; project management; all for use in connection with civil engineering and engineering construction services in Class 42; interior design services; installation, construction and repair of communication and infrastructure management systems for radio, terrestrial television and satellite and cable television applications; examination of buildings for the presence of moisture or the likelihood of moisture, dry rot, wet rot and of infestations; cleaning and laundry services; storing data on an internet server.

Class 43: Temporary accommodation services; rental of temporary accommodation; temporary accommodation reservations; booking of temporary accommodation; arranging of temporary accommodation; Provision of temporary accommodation; advice and information services relating to the aforesaid services.

The contested services are the following:

Class 36: Real estate services.

Class 37: Construction.

Class 38: Telecommunication services.

Class 43: Hotel restaurant services.

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 services in Class 36

Real estate services are identically contained in both lists of services (including synonyms).

Contested services in Class 37

The contested construction includes, as a broader category or overlaps with, the opponent’s building construction. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 38

The contested telecommunication services include, as a broader category, the opponent’s leasing or rental of access time to computers, to databases, to information systems, to the internet and to electronic mail services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 43

Hotel restaurant services are similar to the opponent’s temporary accommodation services as they usually coincide in provider, relevant public, and distribution channels.

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 services found to be identical or similar are directed at the public at large and at business customers with general specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to higher than average, depending on the price, specialised nature, or terms and conditions of the services purchased.

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

3. The signs

LIBERTY	LIBERTY SKY
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).

The earlier mark consists of the verbal element ‘LIBERTY’ which, for the English-speaking part of the relevant public, means the state or condition of being free (information extracted from Oxford English Dictionary on 11/07/2019 at https://www.oed.com/view/Entry/107898?rskey=UrDoKH&result=1&isAdvanced=false#eid). Its meaning is likely to be understood also by those consumers whose language includes a word that closely resembles ‘LIBERTY’ such as the French-, Italian-, and Spanish-speaking part of the public (liberté, libertà, and libertad respectively). For the remainder of the public, this verbal element will be meaningless. In any event, as this verbal element bears no direct reference to the relevant services, it is normally distinctive in respect of them.

The contested sign consists of the verbal elements ‘LIBERTY’ (the relevant meaning and distinctiveness of which has been set out in the previous paragraph) and ‘SKY’.

The word ‘SKY’ will be perceived by the English-speaking part of the public as the region of the atmosphere and outer space seen from the earth in which the sun, moon, stars, and clouds appear (information extracted from Oxford English Dictionary on 11/07/2019 at https://www.oed.com/view/Entry/181136?rskey=wCZRt7&result=1#eid). For the remainder of the relevant public this verbal element will be meaningless. However, in any event, as this verbal element bears no direct reference to the relevant services, it is normally distinctive in respect of them.

As a whole, the word combination ‘LIBERTY SKY’ will be perceived by the English-speaking public as the mere combination of the meaningful elements ‘LIBERTY’ and ‘SKY’ given that this expression has no univocal meaning.

Visually, the signs coincide in the verbal element ‘LIBERTY’ and differ in the verbal element ‘SKY’ which comes after the verbal element ‘LIBERTY’ in the contested sign.

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.

Taking this into account, the signs are held to be visually similar to at least an average degree.

Aurally, the signs at issue coincide in the sound of the word ‘LIBERTY’ and differ in the sound of the word ‘SKY’ of the contested sign. Taking into account that consumers read from left to right, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the relevant public that understands the meaning of the verbal element ‘LIBERTY’ (including the French-, Italian-, and Spanish-speaking part, whose language includes a word that closely resembles ‘LIBERTY’: liberté, libertà, and libertad respectively), the signs coincide in the meaning of this element and, despite the fact that for English-speakers the verbal element ‘SKY’ of the contested sign introduces a point of semantic difference between the signs, they are, therefore, conceptually similar to an average degree.

For the remainder of the relevant public (for which both ‘LIBERTY’ and ‘SKY’ are meaningless), a conceptual comparison is not possible so the conceptual aspect will 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 European Union. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The marks at issue are visually and phonetically similar at least to an average degree and conceptually similar, for a significant part of the relevant public, at least to an average degree. The relevant services are partly identical and partly similar. The earlier mark is deemed to possess a normal degree of distinctive character and the degree of attention of the relevant consumer varies between average and high.

Considering all of the above the Opposition Division considers that the similarities between the marks clearly outweigh the difference, posed by the inclusion of the verbal element ‘SKY’ at the end of the contested mark, because, despite such difference, the relevant consumer is likely to believe that there is a connection in trade between the conflicting signs and assumes that the services covered are from the same or economically linked undertakings.

For these reasons, there exists a likelihood of confusion on the part of the relevant public, including for that part thereof for which the signs are meaningless.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 751 232 ‘LIBERTY’. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the aforementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(2)(c), 8(4) and (5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Angela di BLASIO

Kieran HENEGHAN

María del Carmen COBOS PALOMO

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.