OPPOSITION No B 3 072 057

Ignace De Paepe, Kleine Verbindingslaan 21, 1640, Sint-Genesius-Rode, Belgium (opponent), represented by Bap IP Bv - Brantsandpatents, Charles de Kerchovelaan 17, 9000 Gent, Belgium (professional representative)

a g a i n s t

Mezzalira Investment Group S.P.A., Piazza Matteotti, 6, 36100 Vicenza, Italy (applicant), represented by Praxi Intellectual Property S.P.A., Via Francesco Baracca, 5/a, 30173 Venezia Mestre, Italy (professional representative).

On 24/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 057 is upheld for all the contested services.

Class 35: Advertising, marketing and promotional services; providing consumer product advice relating to software; import and export services.

Class 37: Building, construction and demolition; furniture maintenance and repair; building maintenance and repair.

Class 42: Testing, authentication and quality control; science services.

2. European Union trade mark application No 17 954 807 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 17 954 807 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 13 572 359 for the figurative mark . 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 13 572 359.

1. The services

Following the partial rejection of the earlier mark (decision on opposition No B 2 507 112 of 28/02/2018), which has become final, the services on which the opposition is based are the following:

Class 35: Advertising and advertising agency services; advertising, including for the promotion of trade fairs, publicity events in relation to residential and building projects; dissemination of advertising matter, advertising messages and promotional material; advertising via television, the internet and other networks; auctioning and public sales; provision of commercial information; market operation, -research and analysis; business organisation and management consultancy; business mediation in the sale of building projects and building supplies; office functions; organization of fairs and exhibitions for commercial goals; arranging trade fairs and exhibitions for business, commercial and marketing purposes.

Class 36: Financial services connected with real estate; drafting of financial plans within the framework of project development; mediation in financing in relation to real estate for shopping centres, and consultancy relating thereto.

Class 37: Contracting; demolition work; carpentry services; plastering; painting and decorating; insulation services; roofing services; tiling; interior decorating; damp-proofing in buildings; scaffolding; glazing; dredging; bridge building, road building, railway construction; paving services; underpinning; repair and maintenance of buildings; installation, maintenance and repair of lighting installations, lightning-protection devices and earthing, telecommunications devices, apparatus for heating, ventilating, refrigerating and sanitary purposes, and of industrial and machine installations; plumbing and installation of gas and water supply systems; laying of cables and pipelines; cleaning of buildings, chimneys, land vehicles and textile goods; repair or maintenance of clothing, electrical apparatus and installations, tools, precision instruments, vehicles, mechanical apparatus and devices for medical and orthopaedic purposes, photographic, projection and film apparatus, upholstery, footwear and horological instruments; shipbuilding; work involving explosives; rental of construction equipment; cloth laundry.

The contested services are the following:

Class 35: Advertising, marketing and promotional services; providing consumer product advice relating to software; import and export services.

Class 37: Building, construction and demolition; furniture maintenance and repair; building maintenance and repair.

Class 42: Testing, authentication and quality control; science 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 35

Advertising is identically contained in both lists of services.

Marketing and promotional services are included in the broad category of, or overlap with, the opponent’s advertising and advertising agency services. Therefore, they are identical.

The contested import and export services relates to the movement of goods and normally require the involvement of customs authorities in both the country of import and of export. They are linked to the opponent’s business organisation and management consultancy since they can be provided by the same undertakings and target the same public through the same distribution channels. Therefore, they are similar.

The contested providing consumer product advice relating to software is related to the opponent’s provision of commercial information, which may include inter alia, provision of commercial information to consumers (e.g. in the field of software). These services can be provided by the same undertakings and target the same public through the same distribution channels. Therefore, they are similar.

Contested services in Class 36

The contested building maintenance and repair is equivalent to the opponent’s repair and maintenance of buildings. Therefore, they are identical.

The contested building, construction and demolition include, as broader categories, or overlap with, the opponent’s bridge building, railway construction; demolition work, respectively. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested furniture maintenance and repair are included in the broad category of, or overlap with, the opponent’s carpentry services. Therefore, they are identical.

Contested services in Class 37

The contested science services includes services such as technical projects studies and may be provided by, inter alia, engineers in the fields of science and technology. They are specialised in nature and are likely to be provided to businesses developing specific technologies. These services are related to the opponent’s bridge building, road building, railway construction in Class 37, which includes construction of buildings or infrastructure and requires technology-orientated solutions or services provided by engineers. These services can have the same end users and distribution channels and are complementary to each other. Therefore, they are similar to a low degree.

The contested testing, authentication and quality control are worded broadly and, depending on their exact nature, could be related to several of the general categories protected by the earlier mark (e.g. installation, maintenance and repair of apparatus for ventilating, refrigerating and sanitary purposes, and devices for medical and orthopaedic purposes) and refer to the process of checking products before they are brought to market, after their installation or during their maintenance. The contested testing is a process used to identify characteristics or problems. The contested authentication is the action of establishing something as genuine or valid. The contested quality control is a procedure or set of procedures intended to ensure that a manufactured product or performed service adheres to a defined set of quality criteria or meets the requirements of the client or customer. This includes, inter alia, testing and authentication, machinery testing and quality control after the installation of these type of products or repair or as a part of their maintenance services. Consequently, the contested testing, authentication and quality control are similar to a low degree to some of the opponent’s goods such as installation, maintenance and repair of apparatus for ventilating, refrigerating and sanitary purposes and repair or maintenance of devices for medical and orthopaedic purposes in Class 37, since they can have the same providers and end users and are complementary to each other.

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.

The services found to be identical and similar to varying degrees target the public at large business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the nature and type of goods and services concerned and, particularly, due to the highly technical nature, specificity and price of some of them, as well as the infrequency with which they will be purchased/offered.

3. The signs

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).

Both signs are figurative marks clearly recognisable as containing the upper-case letters ‘M’ and ‘G’ separated by a line, despite the letters being arranged differently, namely horizontally v vertically, respectively. The letter combination ‘MG’ has no meaning for the relevant services and, therefore, they are distinctive to an average degree in both signs.

The typeface of the signs is very standard and their figurative elements (square backgrounds and dividing lines) are decorative. Moreover, 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). Consequently, the figurative elements of the signs are less distinctive than verbal element ‘MG’ present in both signs, which has a particular relevance in this case.

The element ‘REAL ESTATE’ of the earlier mark will be associated with ‘land or building that someone owns’ or the activity of buying and selling land and buildings’ (information extracted from Cambridge Dictionary on 12/02/2020 at https://dictionary.cambridge.org/dictionary/english/real-estate) by part of the public such as English speakers or professionals in the real-estate sector. Given that some of the services are related to construction, the element may be seen as describing or alluding to this business field and, therefore, will have a very low degree of distinctive character. However, for those services that are not related to said field, or for that part of the public that does not understand the meaning of the expression, the element has an average degree of distinctiveness. Nevertheless, due to its much smaller size and subordinate position, this element is of secondary importance within the overall impression given by the sign.

Visually, the same two letters, ‘M’ and ‘G’, in both signs are written in a white standard typeface (rather classic in both signs) against a darker rectangular background, namely black and turquoise blue. Notwithstanding these slight variations, there is no striking difference in colour or typeface. Therefore, the typeface and colour are similar, rather than dissimilar. Another element of similarity, to some extent, is that in both signs these letters are separated by a line/stroke.

The different arrangement of the letters ‘M’ and ‘G’ (i.e. vertically v horizontally and next to each other) does not alter the perception of the signs. It is a common practice in all European languages that consumers read from left to right and from top to bottom. Therefore, the different arrangement will be noticed but cannot be considered a major difference given that consumers will retain, in any case, the combination of the upper-case letters ‘MG’.

The signs also differ in the additional verbal element of the earlier mark, ‘REAL ESTATE’. However, this element plays a secondary role due to its considerably smaller size and limited distinctive character for some of the services.

It is true that in short signs the public notices the differences between the signs more easily than in long signs. However, in this case the differences are confined to elements which are not of such nature as to distract the consumer’s visual perception of the signs at issue from the upper-case letter combination ‘MG’.

Based on the above, the Office considers that the differences do not outweigh the similarities between the signs, which are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛MG’ since, as seen above, the contested sign’s letters (arranged vertically) would be read and pronounced from top to bottom. Given the considerably smaller size and, for some of the services and/or part of the public, limited distinctive character of the element ‘REAL ESTATE’, it is likely that this term may not even be pronounced (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44).

Therefore, the signs are aurally similar to a high degree, or even identical.

Conceptually, neither of the signs has a meaning as a whole. Although the element ‘REAL ESTATE’ of the earlier mark will evoke a meaning for part of the public, it is not sufficient to create a significant difference between the signs due to its secondary character and limited distinctiveness for some of the services. The attention of the relevant public will be attracted by the additional fanciful letters ‘MG’ of the earlier mark, which has no meaning. The contested sign also has no meaning. Therefore, the conceptual aspect does 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.

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 as a whole must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested services are partly identical and partly similar (to varying degrees), and they target the public at large and the professional public. The degree of attention may vary from average to high. The distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree and aurally similar to a high degree, or even identical. It is true that the coinciding signs are very short, containing only two characters, and that as a rule, consumers would perceive the existing differences between them more easily (23/09/2009, T‑391/06, S-HE, EU:T:2009:348, § 69). However, as explained above, the slight visual differences in the representation of the letter combination ‘MG’, and the fact that they are arranged differently (i.e. vertically v horizontally and next to each other), is not striking enough or of such a nature as to safely exclude a likelihood of confusion. The additional element ‘REAL ESTATE’ of the earlier mark does not exclude a likelihood of confusion either, due to its secondary role within the overall impression given by the sign.

Indeed, it must be borne in mind that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (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).

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 undertaking or economically linked undertakings. It is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, to denote new product lines or to endow a trade mark with a new, fashionable image. Since, notwithstanding the slight visual differences, both marks will be remembered as having the letter sequence ‘MG’, and would be read and pronounced as such, the relevant public could perceive the contested mark as a new product line of the same undertaking, that is, the proprietor of the earlier mark.

In this case, although it is true that the services applied for in Class 42 were considered similar to a low degree to the opponent’s goods in Class 37, it must also be borne in mind that the signs are, at least for a significant part of the public, aurally identical. This means that, in the case of oral communication, the marks cannot be distinguished phonetically, even by highly attentive consumers. By virtue of the principle of interdependence between the factors, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the trade marks, and vice versa (11/09/2018, C‑248/18 P, CRABS (fig.) / RAKOVYE SHEIKI KARAMEL (fig.), EU:C:2018:699, § 14). Therefore, bearing this in mind and the closeness between these services/sectors (e.g. they are complementary to each other), a likelihood of confusion cannot be safely excluded even for the services found to be similar to a low degree.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 572 359. It follows that the contested trade mark must be rejected for all the contested services. As this earlier mark 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 rights 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, 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

Michele M. BENEDETTI-ALOISI

Birgit FILTENBORG

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.