OPPOSITION No B 3 081 505

Foyer Finance S.A., 12, rue Léon Laval, 3372 Leudelange, Luxembourg (opponent), represented by Office Freylinger S.A., 234, route d’Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative)

a g a i n s t

Flabon UG, Elisenstraße 4-10, 50667 Köln, Germany (applicant), represented by HMS. Barthelmeß Görzel, Hohenstaufenring 57a, 50674 Köln, Germany (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 081 505 is partially upheld, namely for the following contested goods and services:

Class 9: All goods except magnets, magnetizers and demagnetizers.

Class 35: All services.

Class 36: All services.

Class 37: All services.

Class 38: All services.

Class 42: All services except technical research.

2. European Union trade mark application No 18 004 820 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 004 820 for the word mark ‘Fyer’. The opposition is based on European Union trade mark registration No 4 709 044 and Benelux trade mark registration No 775 559 both for the word mark ‘FOYER’. 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 examine the opposition in relation to the European Union trade mark registration No 4 709 044.

1. The goods and services

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

Class 35: Advertising; publication of publicity texts; business management; business administration; office functions; business management and organisation consultancy; efficiency experts; market research services; information, business investigations and research; commercial business estimates; economic forecasting; cost-price analysis; provision of statistical information; tax assessment preparation; drawing up of statements of account; updating of advertising material; collection and systematic ordering of data in a central file; computerized file management; bookkeeping; administrative management of insurance companies, investment companies and insurance and investment funds; administrative management of companies (for others), company payment administration services; data searches in computerised files for others; projects (business management assistance).

Class 36: Insurance; advice relating to insurance; providing insurance information; direct insurance; accident insurance underwriting; fire insurance underwriting; life assurance; non-life assurance underwriting; liability insurance; household or personal insurance; life assurance; health insurance underwriting; marine insurance underwriting; insurance brokerage; actuarial services; financial affairs; banking; monetary transactions; financial consulting services; savings services; securities brokerage; factoring; financing services; mutual funds; fund investment; mutual funds; capital investments; financial management; financial analysis; financial transactions; banking business; direct banking (home-banking); loans (financing); financial evaluation (insurance, banking, real estate); monetary affairs; electronic funds transfers; real estate affairs; leasing of real estate; real estate leasing; real-estate brokerage; real estate appraisal; real-estate valuations; jewelry appraisal; issuing of tokens of value; pension funds; savings banks; surety services; brokerage; tax estimates; fiscal assessments; financial sponsorship; trustee services; financial services relating to company payment.

Class 38: Telecommunications; electronic advertising (telecommunications); communications by and/or between computers and computer terminals; computer-aided transmission of messages and images; electronic mail; communication of financial information and information relating to insurance by all means of telecommunications, including by computer, computer or electronic networks.

The contested goods and services are the following:

Class 9: Computer hardware; computer networking hardware; data communications hardware; data processing equipment; peripheral devices for data reproduction; smart cards [integrated circuit cards]; chip coils; smart card readers; multiprocessor chips; electronic chips; DNA chips; computer chipsets; electronic chip cards; multichip modules; integrated circuit chips; encoded electronic chip cards; system on a chip (SoC); information technology and audio-visual, multimedia and photographic devices; magnets, magnetizers and demagnetizers; data processing equipment and accessories (electrical and mechanical); multimedia apparatus and instruments; software; downloadable software; software programs for video games; computer programmes for data processing; mobile software; web server software; USB card readers; USB chargers; USB flash drives; USB web keys; USB adapters; credit card-style USB flash drives; memory modules; memory boards; memory apparatus; flash card readers; flash card adapters; electronic memories; flash memory cards; optical cards; digital storage media; integrated circuit memories; electronic memory circuits; memories for data processing equipment; memory cards; computer memory hardware; integrated circuit memory cards; secure digital (SD) memory cards; data storage devices; security tokens [encryption devices]; microprocessors; software programmable microprocessors; secure microprocessors; cards containing microprocessors; smart card readers; encoded smart cards; blank smart cards; electronic components for integrated circuit cards; blank electronic chip cards; smart cards [integrated circuit cards]; graphics cards; authentication software; computer software for biometric systems for the identification and authentication of persons; encryption apparatus; cryptography software; electronic encryption units; computer software for encryption; cards encoded with security features for identification purposes; microchips; microchip cards; encryption apparatus.

Class 35: Advertising; online advertisements; marketing services; business management; business administration; direct mail advertising; presentation of goods on communication media, for retail purposes; web site traffic optimization; organization of exhibitions for commercial or advertising purposes; on-line advertising on a computer network; rental of advertising time on communication media; publication of publicity texts; rental of advertising space ; dissemination of advertising matter; public relations services; updating and maintenance of data in computer databases; systemization of information into computer databases.

Class 36: Financial and monetary services, and banking; valuation services; insurance underwriting.

Class 37: Computer hardware and telecommunication apparatus installation, maintenance and repair.

Class 38: Communications services; digital communications services; on-line communication services; mobile communications services; internet communication; communication services over computer networks; providing access to computer networks.

Class 42: Design of computer hardware; design of computer hardware; rental of computer hardware and computer software; consultation services relating to computer hardware; development of hardware for audio and video operators; design of hardware for compression and decompression of multimedia contents; computer software design; computer software consultancy; software creation; software development; installation of software; computerised business information storage; electronic storage of audio files; electronic storage of documents; electronic storage of images; electronic storage of videos; electronic storage of photographs; encryption, decryption and authentication of information, messages and data; authentication services (control) of messages transmitted via telecommunications; authentication for computer security; consultancy services relating to computer networks; configuration of computer networks by software; computer system analysis; data encryption and decoding services; internet security consultancy; design and development of electronic data security systems; consulting services in the field of software as a service [SaaS]; IT services; software development, programming and implementation; hosting services and software as a service and rental of software; IT consultancy, advisory and information services; IT security, protection and restoration; updating of memory banks of computer systems; data mining; advisory and information services relating to computer peripherals; providing temporary use of on-line non-downloadable software development tools; computer analysis; development of data processing apparatus; development of systems for the storage of data; development of systems for the transmission of data; consultancy relating to the design and development of computer programs; development of computer software for computer aided design/computer aided manufacturing [CAD/CAM]; engineering consultancy relating to data-processing; engineering consultancy relating to computer programming; advisory services relating to computer systems design; technical consultancy relating to smart cards (integrated circuit cards); research and development of new products; technical research; design (development) of computer systems comprising memory cards or smart cards, and telecommunications systems; preparation of professional opinions, customisation (programming) and implementation (programming) of software, chip cards, integrated circuit cards (smart cards), microchip cards, memory cards, encoded magnetic cards, electronic cards, contactless cards.

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 goods in Class 9

The contested goods can be divided into two groups, namely computer hardware, and software. All these relevant goods are similar to the opponent’s telecommunications in Class 38. The computer hardware includes data processing equipment and also smart cards and chips, that are integrated circuits and are needed in order to successfully support telecommunication activities. This is because telecommunications, computer network access, telephone and mobile phone service providers supply the apparatus alongside or with the service (e.g. a SIM card, memory cards; data cards, smart cards, telephone cards, encoded cards,). Therefore, these sets of goods and services are complementary and coincide in distribution channels. Their purpose is the same: to enable reception and full use of the service to take place and they coincide in the relevant public.

The only exception to the above are the contested magnets, magnetizers and demagnetizers (magnets or devices used to make a substance or object magnetic or to reduce or remove magnetic properties), which are dissimilar to all of the opponent’s services, as they have nothing relevant in common to the advertisement and business related services of Class 35, nor to the finance services of Class 36, or the telecommunication services of Class 38.

Contested services in Class 35

Advertising; business management and business administration are identically contained in both lists of services.

The contested online advertisements; marketing services; direct mail advertising; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; rental of advertising time on communication media; publication of publicity texts; rental of advertising space; dissemination of advertising matter; public relations services are all included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested updating and maintenance of data in computer databases and systemization of information into computer databases are included in the broad category of the opponent’s office functions. Therefore, they are identical.

The contested web site traffic optimization and organization of exhibitions for commercial or advertising purposes are similar to the opponent’s advertising as they have the same purpose and usually coincide in provider and relevant public. Both contested services facilitate or encourage the promotion and sale of the client’s goods and services, as such these are considered similar to advertising services since these could be offered to third parties in the form of organisation of exhibitions (01/12/2014, R 557/2014-2, TRITON WATER (FIG.MARK) / TRITON COATINGS TRITON (FIG.MARK) et al., § 31).

Contested services in Class 36

The contested financial and monetary services, and banking; valuation services are identically contained or included in the broad category of the opponent’s financial affairs. Therefore, they are identical.

The contested insurance underwriting is similar to the opponent’s financial affairs as they are of a similar nature, may be provided by the same undertaking or related undertakings and share the same distribution channels. These circumstances demonstrate that finance services are similar to insurance underwriting.

Contested services in Class 37

The contested computer hardware and telecommunication apparatus installation, maintenance and repair are similar to the opponent’s telecommunications in Class 38. These are complementary and coincide in providers and relevant public.

Contested services in Class 38

The contested communications services; digital communications services; on-line communication services; mobile communications services; internet communication; communication services over computer networks; providing access to computer networks are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 42

The contested services are either related to the design or rental of computer hardware, the development of software, electronic storage, security issues through encryption, and consultation thereof. Consequently, these contested services are similar to the opponent’s telecommunications in Class 38 as they have the same purpose and usually coincide in producer and distribution channels. Furthermore, they are complementary. The same is applicable to the contested research and development of new products as these may include the development of software, data processing systems and storage systems, which are all related to the opponent’s telecommunications in Class 38. Therefore, these services are similar.

The contested technical research, which is about gathering information in order to answer questions and solve an engineering or technical problem, is dissimilar to all of the opponent’s goods and services, as it has nothing relevant in common to the advertisement and business related services of Class 35, nor to the finance services of Class 36, or the telecommunication services of Class 38.

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 goods and services found to be identical or similar are directed at the public at large and at the professional public with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. For example, the financial services, which are specialised and may have important financial consequences for their users, therefore, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (FIG. MARK) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

3. The signs

FOYER	Fyer
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 of the earlier sign has a meaning is some languages, for example, in Dutch, English, French and German ‘FOYER’ is understood as ‘a large area where people meet or wait just inside the main doors of a building such as a theatre, cinema, or hotel’ (extracted from the Collins Dictionary on 12/02/2020 at https://www.collinsdictionary.com/dictionary/english/foyer). For this public, there will be a clear conceptual difference between both signs, as the contested sign will not evoke the same concept.

Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the public who does not understand the word ‘FOYER’, as the Spanish-speaking public.

For the relevant public all marks, ‘FOYER’ and ‘Fyer’, are normally distinctive word marks with no meaning. Being word marks, they do not have any particular figurative elements or graphical stylisation; the typeface used to depict them and the use of lower- or upper-case letters is immaterial, as in the case of word marks it is the word that is protected.

Visually, the signs coincide in the sequence of letters ‘FYER’, start with the same letter and only differ in the vowel ‘O’ found only in the contested sign. The difference in the missing letter is noticeable as it is the second letter and it changes the visual impact. Therefore, the signs are visually similar to at least an average degree.

Aurally, in Spanish, the letter ‘y’ will be pronounced as /i/, therefore, the pronunciation of the signs coincides in the first letter ‘F’ and the sequence ‘YER’, present identically in both signs and only differs in the additional vowel ‘O’ of the earlier sign. Aurally the additional vowel does make an obvious difference and, therefore, the signs are aurally similar to a low degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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 goods and 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.

5. 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, § 23).

The goods are partly identical, partly similar and partly dissimilar. The earlier sign has a normal degree of inherent distinctiveness and the relevant public, both general and professional, will have an average to high level of attention.

The contested sign is visually similar to at least an average degree to the earlier sign only differing in one missing letter, namely the first vowel / second letter ‘O’. However, this alteration affects the aural comparison more than the visual one, making it similar to only a low degree. There is also no clear concept to help the relevant public to differentiate the signs.

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 difference of only one missing letter is not sufficient for the relevant public to safely distinguish between the signs. Furthermore, taking into account that the goods and services are at least similar to an average degree, there is likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the Benelux trade mark registration No 775 559 for the word mark ‘FOYER’. Although the verbal sign is identical to the European Union trade mark, the territory is different and it will clearly be understood in Dutch, French and German. Therefore, based on the conceptual difference between the signs, the signs are less similar to each other. Therefore, the outcome cannot be different with respect to the goods, which are found to be dissimilar; no likelihood of confusion exists with respect to those goods.

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gonzalo BILBAO TEJADA

Astrid Victoria WÄBER

Marta Maria CHYLINSKA

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.