OPPOSITION No B 3 070 337

Bold Ruler, S.L., Sierra Carbonera, 2-Local 6, 28053 Madrid, Spain (opponent), represented by Kapler, Calle Orense, 10, 12º D, 28020 Madrid, Spain (professional representative)

a g a i n s t

Besta Przedsiębiorstwo Budowlane Spółka Z Ograniczoną Odpowiedzialnością, ul. Przemysłowa 23, 35-105 Rzeszów, Poland (applicant), represented by Justyna Nykiel, ul. Kawalerzystów 20/3, 53-004 Wrocław, Poland (professional representative)

On 28/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 337 is partially upheld, namely for the following contested services:

Class 36: Real estate appraisal; rental of real estate; property leasing [real estate property only]; real estate management; real estate agency services; real estate administration; property portfolio management; real estate acquisition services; assisting in the acquisition of real estate; accommodation bureaux (real estate property); residential real estate agency services; real estate equity sharing; corporate real estate advisory services; consultancy in the purchasing of real estate; real estate brokerage; real estate consultancy.

2. European Union trade mark application No 17 950 712 is rejected for all the above services. It may proceed for the remaining services, namely all the services in Classes 37 and 42, and the following services of Class 36: Real estate financing; real estate trustee services; real estate insurance services; financial services for the purchase of real estate; provision of finance for real estate development; real estate investment planning; arranging the provision of finance for real estate purchase; insurance services relating to real estate; home contents insurance; real estate investment; commercial property investment services; administration of financial affairs relating to real estate.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 950 712 for the word mark ‘BESTA’. The opposition is based on the trade name (figurative) claimed to exist in Spain in relation to insurance; financial affairs; monetary affairs; real estate affairs, in Class 36.

The opponent invoked Article 8(4) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 04/09/2018. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Spain prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for insurance; financial affairs; monetary affairs; real estate affairs in Class 36.

On 05/12/2018 and 09/05/2019 the opponent filed the following evidence:

• website extract of the Spanish Office´s CEO database, showing the search results obtained for the trade name on which the opposition is based, accompanied by a translation.

The document shows that the date of filing was 27/12/2014, that it was registered on 09/04/2015 for the services on which the opposition is based and that it is owned by the opponent.

• Annex 1 – extract of the Spanish Trademark Law 17/2001 of 07/12/2001, containing the relevant content for the present proceedings as regards the protection of trade names. This is additional to the ‘online substantiation’ option selected in the Notice of Opposition, in which also the link to the online source is indicated (i.e. WIPO Lex).

• Annex 2 – 16 Invoices issued in 2015, 2016 and 2017 and translations of their most relevant parts. The invoices are all issued to clients in Madrid. They show the purchase of real estate services in relation to houses/parking spots sited in Madrid.

The trade name is used as registered in the upper left side of the invoices, and occasionally in the stamp at the end of the text. The opponent´s name appears also in the upper right side of the invoices, and occasionally in the stamp next to the trade name´s image.

• Annex 3 – Contracts, receipts and other documents showing the provision of real estate services, such as exclusivity contracts for the sale of a property, receipt issued in relation to the first payment for the purchase of a property, proposal for the sale of a property, a sheet regarding visits to properties by real estate agents and potential purchasers. The addresses appearing in the contracts (e.g. where the parties of the agreements live, or where the property mentioned is located) all refer to Madrid, except one which refers to Cuenca. The contracts are dated in 2015 and 2017.

The trade name is used as registered in the upper right side of the documents and in the stamp at the end of the text. The opponent´s name appears in the upper right side of the documents and also in the stamp next to the trade name´s image.

• Annex 4 – E‑mails in relation to the opponent´s website and domain name www.inmobiliariavesta.es. The e-mails originate from a company taking care of the registration of the domain name and are dated in 2014 and 2015.

This document also contains the invoice for professional web hosting services to inmobiliariavesta.es, as well as other charges related to the domain name for the period of time from 31/05/2017 to 30/05/2018. The invoice is issued to Maximiliano Peralta.

• Annex 5.

5.1 Subscription to advertisement services (service provider ‘Schibsted Classified Media Spain’). The document shows the opponent´s name, the indication that it belongs to “Sector: Inmobiliaria” (which refers to the real estate’s market field), and the name of an advertisement agency. The document is dated 9/10/2017. The opponent´s trade name appears in the domain name, which appears as part of the e-mail address.

5.2 Subscription to advertisement services (service provider is ‘idealista’). The document shows the opponent´s name, e-mail and website, the kind of advertisement services purchased, and contains the date 01/11/2017 as the date of commencement of the services. The opponent´s trade name appears in the domain name, which appears as part of the e-mail address.

5.3. Website extract from www.pisos.com showing the results of the search carried out when filtering by ‘INMOBILIARIA VESTA’. The results consist of properties available under the opponent´s trade name. The date of printing is 04/05/2019, and the properties had been recently uploaded/updated, some of them only 1 minute before the printing of the document, and others a maximum of 47 days beforehand. Therefore, they fall out of the relevant period of time (significantly after).

5.4. One e-mail received though the opponent´s website referred to above, asking for information in relation to a property in Madrid, dated 2015.

• Annex 6 – Screenshot of the website GoogleMaps showing a picture of the front part of the ‘INMOBILIARIA VESTA’ real estate agency in Madrid. The opponent´s sign is visible on the front of the store, together with its website address and pictures of properties available. The image was taken in October 2018.

On 21/11/2019 (i.e. after the time limit to substantiate the earlier right) the opponent submitted further evidence. These documents consist of the following:

• Annex 1 – An extract of a website for phonetic transcription for the words ‘vesta’ and ‘besta’.

• Annex 2 – Deeds of constitution of the opposing company, showing that the date of commencement of the activities is 29/01/2015 and also that Maximiliano Peralta (see Annex 4 above) is one of the founding shareholders of the opposing company.

• Annex 3 – List of activities for which the opponent is registered in the Tax Agency of Spain. This document is not in the language of proceedings or self-explanatory, and is not accompanied by a translation.

As said above, these three documents were submitted out of the relevant period of time to substantiate the earlier sign, and will not be taken into account for substantiation purposes. However, for the sake of completeness, the Opposition Division notes that, even if this evidence had been taken into account for the purpose of substantiation of the earlier sign, the findings and conclusion reached in this decision would not be altered.

The documents show that the earlier sign has been used mainly in Madrid (Spain). This can be inferred from the fact that the real estate agency appearing in the picture (Annex 6) is located in Madrid, the properties referred to in the documents are located in various parts of the Community of Madrid, the documents are in Spanish and the invoices submitted are issued to clients in various parts of Madrid in relation to properties in that same part of Spain. Although it is true that the evidence shows use of the trade name only in part of the territory of Spain, it is common for this kind of companies to develop their activity in one geographical area. Also, the Community of Madrid is where the capital and most populous city of Spain, Madrid is located.

The evidence is mainly dated before the relevant date.

The evidence shows that the opponent’s sign has been used in the course of trade for real estate affairs.

The documents described provide sufficient information concerning the commercial volume of use, the length of time of use and the frequency of use.

Even if all the services had been offered from the same office in Madrid (e.g. the one appearing in the picture described in Annex 6), under certain circumstances, one sole establishment may be of more than local significance because of its geographically widespread clientele and/or because of the reputation it enjoys among the public at a national level (being promoted, as it is seen in the evidence relating to advertisement described above). The evidence on file suggests that this is the case for the opponent’s sign, since it has not only been used within the office and in relation to the clients of the real estate services offered (e.g. in the invoices), but also on the specialised websites described in Annex 5 and in advertisements available/published online throughout the whole of the national territory as well as further afield.

Consequently, the Opposition Division concludes that the opponent’s sign was used in the course of trade of more than local significance in Spain for real estate affairs before the filing date of the contested trade mark.

However, the evidence does not succeed in establishing that the sign has been used in the course of trade of more than local significance for the rest of services on which the opposition is based, namely insurance; financial affairs; monetary affairs, since the evidence submitted does not contain any references to such services.

2. The right under the applicable law

Trade names are the names used to identify businesses. Trade names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

In the present case, according to the law governing the sign in question:

Prior Trade Names

7.(1) Signs may not be registered as trademarks if they are:

(a) identical to a previous trade name which designates activities identical to the goods or services for which the trademark is sought;

(b) identical or similar to a prior trade name and, since the activities which they designate are identical or similar to the goods or services for which the trademark is sought, there is a risk of confusion among the public; the risk of confusion includes the risk of association with the prior trade name.

(2) For the purposes of this Article, prior trade names means:

(a) trade names registered in Spain, the application for registration of which has a filing or priority date prior to that of the application under examination.

(b) applications for the trade names to which the previous subparagraph refers,

provided that they are finally registered”

(emphasis added)

As regards the registration requirement, the document submitted (first one listed above) shows that the date of filing was 27/12/2014, that it was registered on 09/04/2015 for the services on which the opposition is based and that it is owned by the opponent. The date of filing of the contested mark is 04/09/2018 and therefore the requirement is fulfilled.

3. The opponent’s right vis-à-vis the contested trade mark

Likelihood of confusion

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 Spanish Law referred to above stated that signs may not be registered as trademarks if they are, inter alia, identical or similar to a prior trade name and, since the activities which they designate are identical or similar to the goods or services for which the trademark is sought, there is a risk of confusion among the public; the risk of confusion includes the risk of association with the prior trade name.

The contested trade mark must be likely to lead the public to believe that the services to be offered by the applicant are the opponent’s services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s services in the belief that they are the opponent’s.

Therefore, a comparison of the signs and of the services involved are required.

1. The services

The opposition is directed against the following services of the contested trade mark:

Class 36: Real estate appraisal; real estate financing; rental of real estate; property leasing [real estate property only]; real estate management; real estate agency services; real estate trustee services; real estate administration; property portfolio management; real estate insurance services; real estate acquisition services; financial services for the purchase of real estate; assisting in the acquisition of real estate; provision of finance for real estate development; real estate investment planning; arranging the provision of finance for real estate purchase; insurance services relating to real estate; home contents insurance; accommodation bureaux (real estate property); real estate investment; residential real estate agency services; real estate equity sharing; commercial property investment services; corporate real estate advisory services; consultancy in the purchasing of real estate; real estate brokerage; real estate consultancy; administration of financial affairs relating to real estate.

Class 37: Construction information; construction services; concreting; paving and tiling; building of apartment buildings; custom construction of buildings; construction of manufacturing and industrial buildings; construction of parts of buildings; custom construction of houses; construction of residential properties; building of commercial properties; property development services [construction]; construction of floors; construction of walls; construction of partition walls for interiors; construction of curtain walls; refurbishment of buildings; consultancy services relating to the repair of buildings; services for the redecoration of buildings; building, construction and demolition; installation of plant; assembling [installation] of building framework; plumbing installation, maintenance and repair; building maintenance and repair; general building contractor services; construction of property; maintenance of property; cleaning of property; renovation of property; retrofitting of heating, ventilating and air conditioning installations in buildings.

Class 42: Estates (planning of building -); design services relating to residential property; design services relating to real estate; preparation of reports relating to real estate planning; research relating to buildings; research relating to architecture; architectural research; consultancy in the field of architecture and construction drafting; locating and marking placement of underground utility pipes, cable or wires; development of construction projects; planning and design of residential communities; planning and design of retail premises; planning and design of sports facilities; professional consultancy relating to architecture; architectural design; design of buildings; design of industrial buildings; interior architectural services; architectural services for the design of office facilities; architectural services for the design of retail premises; architectural services for the preparation of architectural plans; architectural services for the design of shopping centers; architectural services for the design of buildings; architectural services for the design of industrial buildings; house plans (drawing-up of -); preparation of architectural design; preparation of architectural plans; urban planning; design of industrial plant; architectural design for exterior decoration; building design services; computer aided design services relating to architecture; architectural project management; design services for temporary structures; design services for architecture; architectural and engineering services; advisory services relating to planning applications.

The opponent’s trade name has been proven to be used for real estate affairs.

The contested services in Class 36 real estate appraisal; rental of real estate; property leasing [real estate property only]; real estate management; real estate agency services; real estate administration; property portfolio management; real estate acquisition services; assisting in the acquisition of real estate; accommodation bureaux (real estate property); residential real estate agency services; real estate equity sharing; corporate real estate advisory services; consultancy in the purchasing of real estate; real estate brokerage; real estate consultancy are identical to the opponent´s services, either because they are identically contained in both lists or by using synonyms (e.g. real estate agency services) or because one include/are included in/overlap with the others (e.g. the contested real estate appraisal; residential real estate agency services are covered by the opponent´s broad category of real estate affairs).

The rest of the contested services in this class, namely real estate financing; real estate trustee services; real estate insurance services; financial services for the purchase of real estate; provision of finance for real estate development; real estate investment planning; arranging the provision of finance for real estate purchase; insurance services relating to real estate; home contents insurance; real estate investment; commercial property investment services; administration of financial affairs relating to real estate are dissimilar to the opponent´s services, since they differ in nature, purpose, method of use, distribution channels/points of sale. They are neither complementary nor in competition and do not originate from the same kind of undertakings. Even if these dissimilar services may sometimes coincide in the consumers they are directed to, this fact is not per se enough to consider them similar.

The contested services in Class 37 and 42 consist mainly of building/construction services, and services related to them (e.g. construction projects and building design, research therefor and preparation prior to construction). These contested services are offered by highly specialised companies or professionals, such as architects and engineers. Therefore, contrary to the opponent’s opinion, these services are all dissimilar to the opponent´s services since they differ in nature, purpose, method of use and distribution channels. They are neither complementary nor in competition, are not directed at the same consumers and do not originate from the same kind of undertakings.

2. The signs

	BESTA
Earlier sign	Contested sign

The relevant territory is Spain.

The words ‘VESTA’ and ‘BESTA’ are perceived as meaningless by the public in the relevant territory, and therefore as of average distinctive character in relation to the relevant services.

The applicant claims that “VESTA” will be perceived as the name of the Roman goddess of home. However, it is highly unlikely that the consumers to which the services are directed, and with a normal level of cultural knowledge, will be aware of such meaning, and the applicant has not submitted evidence to the contrary. Therefore this claim is set aside.

The word ‘INMOBILIARIA’ in the earlier sign means “real estate agency” in Spanish. It is, therefore, void of distinctive character for the opponent´s services, since it directly describes them. The same is applicable to the rectangular shape in the earlier sign, which will be perceived as a building, and therefore as a clear reference to the kind of services involved. Lastly, the triangular shape below ‘VESTA’ acts as a mere shadow of the rest of elements in the sign, and it is also void of distinctive character, being a merely decorative geometrical shape.

For the reasons explained above, the most relevant element in the earlier sign is ‘VESTA’.

Visually, the signs coincide in ‘*ESTA’ and differ in the letters ‘V’ and ‘B’ of the earlier and the contested sign, respectively. Letter ‘V’ of the earlier mark is somehow eye-catching due to its bigger size. However, it is perceived as a mere typeface stylisation, not far from the standard shape of a regular ‘V’. They also differ in colour, typeface of the rest of letters. Lastly, they differ in the rest of the figurative elements forming the earlier sign described above, which lack distinctive character.

For all of the above, it is considered that the signs are visually similar to an average degree.

Aurally, ‘VESTA’ and ‘BESTA’ are pronounced identically. Even if ‘V’ and ‘B’ can be pronounced in slightly different ways, such differences will not be perceived.

The signs differ in the sound of ‘INMOBILIARIA’. Since this element is void of distinctive character, it is likely that part of the public will omit it when referring to the sign. Therefore, it is considered that the signs are aurally highly similar if all the elements of the earlier sign are pronounced, and aurally identical if only the distinctive part ‘VESTA’ of the earlier sign is pronounced.

Conceptually, although the public in the relevant territory will perceive the meanings of the earlier sign as described above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination will proceed.

3. Global assessment of the conditions under the applicable law

The earlier sign has been proven to exist in Spain, in relation to part of the services for which it was claimed. Said services have been found to be in part identical and in part dissimilar to the contested services. They are directed at the public at large, whose degree of attention is likely to be higher than average, since the services in question usually involved important monetary transactions.

However, despite the higher than average degree of attention paid by consumers, the visual and aural coincidences between the marks are important, and are found in the only element forming the contested mark, and in the only distinctive element of the earlier sign. In addition, the earlier sign is of average distinctive character, despite the presence of some non-distinctive elements in it.

In addition, as claimed by the opponent, account must be taken of the fact that consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks. In this case, it is likely that the words ‘VESTA’ and ‘BESTA’ are not remembered in detail by the Spanish consumers, who perceive them as invented meaningless terms.

For all of the above, the Opposition Division considers that there is a likelihood of confusion between the signs, in relation to the services found identical, because the differences between the signs are confined to non‑distinctive or secondary elements and aspects.

4. Conclusion

Considering all the above, the Opposition Division finds that the opposition is well founded on the basis of the opponent’s earlier sign insofar as it is directed against the following services:

Class 36: Real estate appraisal; rental of real estate; property leasing [real estate property only]; real estate management; real estate agency services; real estate administration; property portfolio management; real estate acquisition services; assisting in the acquisition of real estate; accommodation bureaux (real estate property); residential real estate agency services; real estate equity sharing; corporate real estate advisory services; consultancy in the purchasing of real estate; real estate brokerage; real estate consultancy.

The opposition is not successful insofar as the remaining services are concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

María del Carmen SUCH SANCHEZ

Helen Louise MOSBACK

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.