OPPOSITION No B 3 071 396

B & Q PLC, B & Q House, Chestnut Avenue, SO53 3LE, Eastleigh, United Kingdom (opponent), represented by Bird & Bird LLP, Avenue Louise 235, 1050, Brussels, Belgium (professional representative)

a g a i n s t

Exim Trade Point S.L., Calle Jose Bergamin, 24 - PLT 8 PTA B, 28030 Madrid, Spain (applicant), represented by André Guerreiro Rodrigues, Rua do Farol, 394, 3º Dto, Bairro do Rosário, 2750-341, Cascais, Portugal (professional representative).

On 06/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 396 is upheld for all the contested services.

2. European Union trade mark application No 17 880 013 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 17 880 013 . The opposition is based on, inter alia, United Kingdom trade mark registration No 2507302B and United Kingdom trade mark registration No 3070455, both for the word mark ‘TRADE POINT’. The opponent invoked Article 8(1) (b) 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 United Kingdom trade mark registration No 2507302B and United Kingdom trade mark registration No 3070455.

1. The services

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

United Kingdom trade mark registration No 2507302B

Class 35: Business consultancy; promotional services; organisation, operation and supervision of loyalty, bonus and incentive schemes; retail shop management; the bringing together, for the benefit of others, of a variety of home improvement, do-it-yourself, building, decorating, plumbing, heating, cooling, bathroom, cleaning, door, window, hand tool, power tool, ironmongery, motor vehicle accessory, fixing, flooring, kitchen, landscaping, lighting, shed, greenhouse, sealant, adhesive, security, electrical wiring, electrical cable and protective clothing products, supplies, articles and equipment enabling customers to conveniently view and purchase those goods from a retail store, from a catalogue by mail order, from a catalogue by means of telecommunications or from an internet website; advisory, information and consultancy services relating to the aforesaid services.

United Kingdom trade mark registration No 3070455

Class 39: Transport services; transport services for the distribution of goods to customers; packaging and storage of goods; travel arrangement; home delivery of goods to customers; transport and storage of home improvement, do-it-yourself, building, decorating, plumbing, heating, cooling, bathroom, cleaning, door, window, hand tool, power tool, ironmongery, motor vehicle accessory, fixing, flooring, kitchen, landscaping, lighting, shed, greenhouse, sealant, adhesive, security, electrical wiring, electrical cable and protective clothing products, supplies, articles and equipment; reservation services for transportation; advisory, consultancy and information services in relation to the aforementioned services.

The contested services are the following:

Class 35: Providing business and commercial information in the field of industrial products and services via the Internet; providing online computer databases in the nature of a directory of industrial products, services, companies and executives; online ordering services; advertising services, namely, providing listings, video catalog, line card, brochure and email information for manufacturers in on-line computer database in the nature of a directory of industrial products and services; compilation of directories for publishing on the internet; provision of space on websites for advertising goods and services; information relating to industrial products, services, companies and executives; business marketing and consultancy services in the field of website marketing and search engine optimization; conducting business and market research surveys; providing business and commercial information services in the nature of a database of computer assisted design product and service suppliers and drawings accessible by means of multiple-user global computer network; commercial and business information provided by means of a computer Database.

Class 39: Services consisting of information about journeys or the transport of goods by brokers and tourist agencies; information relating to tariffs, timetables and methods of transport.

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

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

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 35

The contested business marketing and consultancy services in the field of website marketing and search engine optimization are included in the broad category of, or overlap with, the earlier business consultancy covered by United Kingdom trade mark registration No 2507302B. Therefore, they are identical.

The contested online ordering services overlap with the earlier the bringing together, for the benefit of others, of a variety of home improvement, do-it-yourself, building, decorating, plumbing, heating, cooling, bathroom, cleaning, door, window, hand tool, power tool, ironmongery, motor vehicle accessory, fixing, flooring, kitchen, landscaping, lighting, shed, greenhouse, sealant, adhesive, security, electrical wiring, electrical cable and protective clothing products, supplies, articles and equipment enabling customers to conveniently view and purchase those goods from a retail store, from a catalogue by mail order, from a catalogue by means of telecommunications or from an internet website covered by United Kingdom trade mark registration No 2507302B. Therefore, they are identical.

The contested advertising services, namely, providing listings, video catalog, line card, brochure and email information for manufacturers in on-line computer database in the nature of a directory of industrial products and services; provision of space on websites for advertising goods and services overlap with the earlier promotional services covered by United Kingdom trade mark registration No 2507302B. Therefore, they are identical.

The contested conducting business and market research surveys are similar to a high degree to the earlier business consultancy covered by United Kingdom trade mark registration No 2507302B because they coincide in nature, purpose, distribution channels, relevant public and provider.

The contested providing business and commercial information in the field of industrial products and services via the Internet; providing online computer databases in the nature of a directory of industrial products, services, companies and executives; information relating to industrial products, services, companies and executives; providing business and commercial information services in the nature of a database of computer assisted design product and service suppliers and drawings accessible by means of multiple-user global computer network; commercial and business information provided by means of a computer Database are at least similar to the earlier business consultancy covered by United Kingdom trade mark registration No 2507302B because they coincide in their nature. Also, they have the same distribution channels, relevant public and provider.

The contested compilation of directories for publishing on the internet are similar to the earlier business consultancy covered by United Kingdom trade mark registration No 2507302B because even if they have a different nature, it cannot be excluded that they share their distribution channel, relevant public and provider.

Contested services in Class 39

The contested services consisting of information about journeys or the transport of goods by brokers and tourist agencies; information relating to tariffs, timetables and methods of transport are included in the broad category of the earlier advisory, consultancy and information services in relation to the aforementioned services [transport services] covered by United Kingdom trade mark registration No 3070455. Therefore, they are identical.

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 to varying degrees are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

3. The signs

TRADE POINT
Earlier trade marks	Contested sign

The relevant territory is the United Kingdom.

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 marks are word marks consisting of the two words ‘TRADE POINT’. The contested mark is a figurative mark. It consists of the verbal elements ‘EU’, ‘TRADE’ and ‘POINT’, depicted using black capital letters. The letters which form the word ‘TRADE’ are thinner, so that is graphically clear that three different words are part of the sign. On the left, a figurative element is placed, consisting of two dark blue circles of different size which are connected and, surrounding the circle on the left, three three-pointed sort of stars.

The first element ‘EU’ of the contested sign will be perceived as the abbreviation of European Union. Consequently, this element is likely to be perceived as, for instance, a mere indicator of the origin of the services. In view of this, this element is considered to be non-distinctive.

As regards the expression ‘TRADE POINT’, identically contained in the signs in dispute, though it is not normally used as such, it is considered that its meaning will be immediately grasped by the relevant public as indicating a place or a centre of commerce. Accordingly, this expression is weak for all the services in Classes 35 and 39.

The contested sign has no element that could be considered clearly more dominant than other elements. However, account must be taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the verbal elements ‘TRADE POINT’, which although weak, constitute the only elements of the earlier marks and the largest part, and with a stronger impact, of the contested sign. The signs differ in the figurative element and in the non-distinctive element ‘EU’ of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters of the weak elements ‘TRADE POINT’, present identically in all of them. The pronunciation differs in the sound of the letters ‛EU’ of the contested mark, which constitute a non-distinctive element.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, to the extent that they all contains the expression ‘TRADE POINT’, the signs are conceptually highly similar.

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 marks

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 marks have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as rather low for all the services in question.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The services in classes 35 and 39 covered by trade marks in dispute have been found partly identical and partly similar to varying degrees. The signs are similar to an average degree from a visual perspective and aurally and conceptually highly similar.

On principle, when the marks share an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks, as previously assessed in the comparison of signs. That assessment takes into account the similarities/differences and distinctiveness of the non-coinciding components.

A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar. There may also be likelihood of confusion if the overall impression of the marks is highly similar or identical.

In fact, the earlier marks are fully incorporated within the contested sign. This circumstance clearly offsets the fact that the elements the marks have in common are rather weak for services in classes 35 and 39. Furthermore, the additional elements of the contested sign are, respectively secondary (the figurative element) and non-distinctive (the acronym EU). It follows that it can be safely affirmed that the overall impression of the marks is highly similar.

Also, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

As services in classes 35 and 39 are identical and similar to varying degrees and in view of the coincidence in the only elements of the earlier signs and the presence, in the contested sign, of only a few differentiating elements which are likely to play a secondary role for the reasons explained above, a likelihood of confusion exists.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 2507302B and United Kingdom trade mark registration No 3070455. 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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As the earlier United Kingdom trade mark registrations No 2507302B and No 3070455 lead to the success of the opposition and to the rejection of the contested trade mark for all the services 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 ground of the opposition, namely Article 8(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

Riccardo RAPONI

Andrea VALISA

Francesca CANGERI

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.