OPPOSITION No B 3 062 917

Fondia Oyj, Lönnrotinkatu 5, 00120 Helsinki, Finland (opponent), represented by Tomas Lodenius, Fondia Oyj, Lönnrotinkatu 5, 00120 Helsinki, Finland (professional representative),

a g a i n s t

Fondee IP Group Limited, Marienburgerstr. 69, 81929 Munich, Germany (applicant).

On 30/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 917 is upheld for all the contested services.

2. European Union trade mark application No 17 931 306 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 17 931 306 for the word mark ‘FONDEE’. The opposition is based on, inter alia, the European Union trade mark registration No 4 180 105 for the word mark ‘Fondia’. 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.

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 4 180 105.

a) The services

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

Class 42 : Legal services.

The contested services are the following:

Class 45: 45Patent and patent application licensing; Patent attorney services; Patents (Licensing of -); Licensing of patents; Management of patents; Patent licensing [legal services]; Licensing of patent applications; Consultancy relating to patent licensing; Consultancy relating to patent protection; Advisory services relating to patents; Licensing of patent applications [legal services]; Intellectual property consultancy services in the field of patents and patent applications; Legal services relating to the exploitation of patents; Trademark watch services; Trademark agent services; Licensing of trademarks; Management of trademarks; Trademark monitoring [legal services]; Consultancy relating to trademark licensing; Consultancy relating to trademark protection; Licensing of trademarks [legal services]; Trademark watch services for legal advisory purposes; Legal services relating to the registration of trademarks; Licensing of intellectual property in the field of trademarks [legal services]; Intellectual property services; Intellectual property consultation; Intellectual property consultancy; Consultancy (Intellectual property -); Intellectual property licensing services; Protection of intellectual property; Intellectual property watching services; Intellectual property (Licensing of -); Licensing of intellectual property; Intellectual property management services; Intellectual property agency services; Management of intellectual property; Licensing of intellectual property rights; Enforcement of intellectual property rights; Licensing of intellectual property [legal services]; Granting of licences on intellectual property; Investigations in relation to intellectual property; Licensing of intellectual property and copyright; Consultancy relating to intellectual property management; Intellectual property consultancy services for inventors; Advisory services relating to intellectual property rights; Advisory services relating to intellectual property protection; Advisory services relating to intellectual property licensing; Legal consultancy relating to intellectual property rights.Patent and patent application licensing; patent attorney services; patents (licensing of -); licensing of patents; management of patents; patent licensing [legal services]; licensing of patent applications; consultancy relating to patent licensing; consultancy relating to patent protection; advisory services relating to patents; licensing of patent applications [legal services]; intellectual property consultancy services in the field of patents and patent applications; legal services relating to the exploitation of patents; trademark watch services; trademark agent services; licensing of trademarks; management of trademarks; trademark monitoring [legal services]; consultancy relating to trademark licensing; consultancy relating to trademark protection; licensing of trademarks [legal services]; trademark watch services for legal advisory purposes; legal services relating to the registration of trademarks; licensing of intellectual property in the field of trademarks [legal services]; intellectual property services; intellectual property consultation; intellectual property consultancy; consultancy (intellectual property -); intellectual property licensing services; protection of intellectual property; intellectual property watching services; intellectual property (licensing of -); licensing of intellectual property; intellectual property management services; intellectual property agency services; management of intellectual property; licensing of intellectual property rights; enforcement of intellectual property rights; licensing of intellectual property [legal services]; granting of licences on intellectual property; investigations in relation to intellectual property; licensing of intellectual property and copyright; consultancy relating to intellectual property management; intellectual property consultancy services for inventors; advisory services relating to intellectual property rights; advisory services relating to intellectual property protection; advisory services relating to intellectual property licensing; legal consultancy relating to intellectual property rights.

All the contested services in Class 45 are legal services related to intellectual property law. Therefore, they are all included in the opponent’s broad category of legal services in Class 42.

The fact that these services were initially classified in different classes does not change this finding, as legal services were transferred from Class 42 to Class 45 with the eighth edition of the Nice Classification. The nature of these services, however, has not changed. In such cases the list of goods/services of both the earlier and the contested sign must be interpreted according to the edition of the Nice Classification in force at the time of filing. Therefore, the services at issue are held identical.

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 target both the public at large and business customers with specific professional knowledge or expertise. The degree of attention will be higher than average, due to the fact that these Class 45 services in question are not acquired on an everyday basis.

c) The signs

Fondia	FONDEE
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 string of letters ‘FONDEE’ / ’Fondia’ is meaningful in certain territories, for example in those countries where French is understood (and thus the French word ‘fondée’, i.e. the female singular adjective meaning ‘founded’), or where ‘Fondia’ may be understood as an (uncommon) first female name or may evoke the term ‘fondiaria’, meaning related to land (properties), such as in Italy. In the present case, for reasons of economy of proceedings, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- speaking part of the public for which both terms as a whole are meaningless but may evoke, on account of their first four letters, the English term ‘fond’ evoking the meaning of ‘funds’/’stock’.

The earlier mark is a pure word mark consisting of a sole verbal element, ‘FONDEE’. The contested sign is a word mark consisting of the sole verbal element ‘Fondia’.

First of all, as regards word marks, such as the signs in the present case, it must be noted that where both marks are registered as word marks, the typeface actually used by the respective office in the official publication (e.g. the EUTM Bulletin) is immaterial. Differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate (as in the contested sign).

The signs’ beginning parts are identical, while their endings differ only in that the earlier mark ends with the vowels ‘EE’ and the contested sign with the vowels ‘IA’.

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.

As seen above, the public under analysis will see the signs as a whole as meaningless although their coinciding string of letters, ‘FOND(**)’, as such, may allude to the same concept as seen above; in any event, the signs as a whole, given their meaningless suffixes, ‘-EE and ‘-IA’, are meaningless and sufficiently fanciful in relation to the services.

Visually and aurally, and irrespective of the different pronunciation rules in the different parts of the relevant public taken into account, the signs coincide in the (sound of the) string of letters ‘FOND(**)’, which appears at the beginning of both signs. The signs merely differ in their suffixes, ‘-EE’ and ‘-IA’, to which consumers usually pay less attention than to the beginning of the marks. Furthermore, the signs have similar structures (one word composed of the same number of letters, with the same four letters at their beginnings) and a similar vowel structure.

Therefore, it is considered that the signs are visually and aurally similar to at least an average degree.

Conceptually, the coinciding element will be associated in both signs by a relevant part of the public on which the present decision focuses on, with the same concept. Therefore, to this extent the signs are considered conceptually similar to an average degree for a substantial part of the public under examination, as detailed above.

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. 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 relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or 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.

In the present case, the services are identical. They also target the public at large and the degree of attention is higher than average. The similarity between the signs results from the visual, aural and conceptual commonalities in the string of letters ‘FOND(**)’, included in both signs of which it forms their beginning. Although the additional differing verbal suffixes of the signs (i.e. their two final letters) under comparison create differences between the marks, considering that in substance the signs coincide in their four first letters that will also first catch the consumers’ attention, they are deemed to be insufficient to counteract the similarities arising from the abovementioned coinciding letters for identical services, even if the consumers’ attention is heightened.

Account must also be 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public taken into account and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration compared above. 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.

It follows from the above that the contested sign must be totally rejected, for all the contested services.

As the earlier EUTM compared above leads 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Justyna GBYL

Edith Elisabeth VAN DEN EEDE

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.