OPPOSITION No B 3 057 138

Cityscapes International, Inc., 4200 Lyman Court, 43026 Hilliard, United States (opponent), represented by Intellectual Property IP-Götz Patent- und Rechtsanwälte, Postfach 35 45, 90017 Nürnberg, Germany (professional representative)

a g a i n s t

Gergana Milusheva, Plachkovski Manastir Str. 7, 1505 Sofia Bulgaria (applicant).

On 20/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 138 is upheld for all the contested services.

2. European Union trade mark application No 17 883 719 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 17 883 719 for the word mark ‘CITYSCAPE’. The opposition is based on European Union trade mark registration No 15 486 053 for the word mark ‘CITYSCAPES’. 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 services

The services on which the opposition is based are, inter alia, the following:

Class 37: Building; construction; installation services of outdoor screens, cover screening systems, boat dock substructures and roof systems, fence wall systems, outdoor wall partition systems, outdoor lighting systems, automated watering and plant nutrition delivery systems and plant wall systems, outdoor metal gates and doors.

The contested services are the following:

Class 36: Real estate services.

Class 37: Building, construction and demolition.

Class 42: Design services.

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 services in Class 36

The contested real estate services are similar to the opponent’s construction in Class 37. Real estate services cover a range of operations which relate to real estate and consist of the sale, purchase, lease and management of real estate, as well as intermediary services in any of these real estate activities. Although the nature and purpose of these services are different from the opponent’s construction in Class 37, they are similar inasmuch as their objective is to effect operations of monetary value in relation to real estate (10/01/2012, R 518/2011‑2 and R 795/2011‑2, COMSA / COMSA, S.A. et al., § 40; 09/04/2014, T‑144/12, Comsa / COMSA S.A., EU:T:2014:197, § 47). Consequently, the services are complementary, since real estate affairs cannot be provided without the provision of property construction services. Moreover, said services can have the same origin inasmuch as construction companies can be (and, in fact, frequently are) owners of the buildings that they construct, in which case they would also promote the sale of the building.

Contested services in Class 37

Building, construction are identically contained in both lists of services.

The contested demolition is similar to the opponent’s construction. Demolition services are necessary in some circumstances prior to construction and, to that extent, they are complementary. They can be provided by the same companies and target the same public.

Contested services in Class 42

The contested design services are similar to the opponent’s construction in Class 37. Design services are necessary in some circumstances prior to construction and, to that extent, they are complementary. They can be provided by the same companies and target the same public.

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 found to be identical or similar 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 specialised nature of the services, the frequency of purchase and their price.

c) The signs

CITYSCAPES	CITYSCAPE
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘CITYSCAPE’ of the contested sign is meaningful in certain territories, such as in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The word ‘CITYSCAPE’ means ‘an urban landscape; view of a city’ in English (information extracted from Collins Dictionary on 07/08/2019 at https://www.collinsdictionary.com/dictionary/english/cityscape). It should be explained that its plural form is the word ‘CITYSCAPES’, present in the earlier mark.

Bearing in mind that the relevant services are construction- and housing-related, these elements, namely ‘CITYSCAPES’/‘CITYSCAPE’ have limited distinctiveness for building, construction and demolition services (Class 37) and design services (Class 42). For the remaining services, namely real estate services in Class 36, these elements have a normal level of distinctiveness.

Visually and aurally, the signs coincide in ‘CITYSCAPE’. However, they differ in the last letter ‘S’ of the earlier mark.

Therefore, the signs are visually and 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 and taking into account the limited distinctiveness of the words in question, as explained above, the signs are conceptually similar to an above average degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as limited for the services in Classes 37 and 42. For the services in Class 36 the distinctiveness is average.

e) 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 (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The contested services are partly identical and partly similar. They target the general public and professionals whose degree of attention varies from average to high. The signs are aurally and visually similar to a high degree, and conceptually to an above average degree. Furthermore, the earlier mark has limited distinctiveness for the services in Classes 37 and 42 and a normal level of distinctiveness in relation to services in Class 36.

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). 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).

The sole difference between the signs lies in the additional letter ‘S’ which appears at the end of the earlier mark. For the relevant public both signs have a meaning as ‘CITYSCAPE’ is a singular form of ‘CITYSCAPES’. Although the verbal elements in question have a limited degree of distinctiveness with regard to some of the services, the public can easily confuse the signs. Therefore, the difference between the signs cannot outweigh their visual, aural and conceptual similarities (to a high/above average degree).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 486 053. It follows that the contested trade mark must be rejected for all the contested services.

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, she 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 , 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

Saida CRABBE

Michal KRUK

Marzena MACIAK

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.