OPPOSITION Nо B 3 105 411

AFA Sjukförsäkringsaktiebolag, 106 27 Stockholm, Sweden (opponent), represented by Advokatfirma DLA Piper Sweden KB, Kungsgatan 9, 103 90 Stockholm, Sweden (professional representative)

a g a i n s t

Appleby Global Group Services Limited, 33 Athol Street, IM1 1LB Douglas, Isle of Man (applicant), represented by Murgitroyd & Company, Unit 1, Block 8 Blanchardstown Corporate Park Cruiserath Road, Dublin 15, Ireland (professional representative).

On 19/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 411 is partially upheld, namely for the following contested goods and services:

Class 9: All goods in this class.

Class 16: All goods in this class except plastic bags; paper.

Class 36: All services in this class except real estate services; property development services (real estate); property portfolio management services; preparation of reports relating to all the foregoing services; information, advisory and consultancy services relating to all the aforesaid services; none of the aforesaid being insurance services, save for insurance management services exclusively provided in a framework of fiduciary services.

2. European Union trade mark application No 18 020 114 is rejected for all the above goods and services. It may proceed for the remaining contested and non-contested goods and services.

3. Each party bears its own costs.

REASONS

On 06/12/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 020 114 for the word mark ‘AGS’, namely against some of the goods and services in Classes 9, 16 and 36. The opposition is based on Swedish trade mark registration No 254 189 for the word mark ‘AGS’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

In its letter of 24/09/2020, that is, within the time limit laid down by the Office, the applicant requested proof of use of the earlier mark. However, in the same letter the opponent set out its arguments concerning other issues, such as the identity of the signs, the similarity of the goods and services and the likelihood of confusion. Therefore, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION – Article 8(1)(a) EUTMR and Article 8(1)(b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

Pursuant to Article 8(1)(b) EUTMR, a likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

a) The goods and services

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

Class 16: Printed matter for insurance services, including, insurance statements, insurance terms, comments to insurance terms, forms and information material.

Class 36: Insurance services.

Following the limitation requested by the applicant on 06/12/2019, the contested goods and services are the following:

Class 9: Electronic publications (downloadable); downloadable publications in electronic form supplied online from databases and from facilities provided on the Internet (including web pages and websites); downloadable electronic publications; downloadable weekly electronic publications; downloadable publications, newsletters, magazines, pamphlets and leaflets all in electronic form provided on the Internet (including web pages and websites); publications, newsletters, magazines, pamphlets and leaflets all in digital or electronic format; none of the foregoing in relation to fonts, typefaces or software for fonts and typefaces.

Class 16: Printed matter, printed publications; stationery; books; photographs; plastic bags; paper; periodical publications; address books; personal organisers in paper form; newsletters; leaflets; catalogues; geographic maps; posters; prints; newspapers; note paper, writing paper; none of the foregoing in relation to fonts, typefaces or software for fonts and typefaces.

Class 36: Real estate services; financing of property development; property development services (real estate); property letting and management services; property portfolio management services; capital investments in real estate; financial affairs; financial management consultancy services; monetary affairs; actuarial services; administration of financial affairs; financial management, planning and research; preparation of financial reports and analysis; tax consultations (financial); insolvency services; investment business services; venture capital investment and management services; venture capital funding for established, start-up and emerging companies; acquisition for financial investment; administration of funds and investments; insurance management; pensions administration; fiduciary services; financing of loans; arranging investments and capital fund investments; development of investment portfolios; venture capital and investment brokerage services; fund investment services; trust and unit trust investment services; trusteeship services; private equity services; equity investment services; provision of financial information; preparation of financial reports; financial appraisals and valuations; preparation of reports relating to all the foregoing services; escrow services; trustee services; trustee establishment and administration services; securities trading; fiduciary services (financial); aircraft financing services; preparation of documentation (financial) relating to the sale and purchase of aircraft; financial advisory services relating to taxation and VAT; financial advisory services relating to taxation and VAT in connection with aircraft; arranging insurance and underwriting of aircraft, aviation and other vehicles; financial reporting for businesses; investment business services; information, advisory and consultancy services relating to all the aforesaid services; none of the aforesaid being insurance services, save for insurance management services exclusively provided in a framework of fiduciary services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ’including’, used in the applicant’s and the opponent’s lists of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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.

The goods in Class 16 of the contested sign contain the limitation ‘none of the foregoing in relation to fonts, typefaces or software for fonts and typefaces’ and the services in Class 36 of the contested sign contain the limitation ‘none of the aforesaid being insurance services, save for insurance management services exclusively provided in a framework of fiduciary services’. While these limitations have been duly taken into account in the comparison below (in relation to each contested item), to avoid repetition it will not be expressly mentioned, but will be considered included by way of reference.

Contested goods in Class 9

The contested electronic publications (downloadable); downloadable publications in electronic form supplied online from databases and from facilities provided on the Internet (including web pages and websites); downloadable electronic publications; downloadable weekly electronic publications; downloadable publications, newsletters, magazines, pamphlets and leaflets all in electronic form provided on the Internet (including web pages and websites); publications, newsletters, magazines, pamphlets and leaflets all in digital or electronic format; none of the foregoing in relation to fonts, typefaces or software for fonts and typefaces are various downloadable electronic publications, which are essentially electronic versions of traditional media, like e-books, electronic journals, online magazines, online newspapers, online leaflets, pamphlets and newsletters etc. It is becoming common to distribute books, magazines and newspapers, leaflets, pamphlets and newsletters to consumers through tablet reading devices by means of ‘apps’ in the form of electronic publications. Therefore, contrary to the applicant’s assertions, the abovementioned contested goods are similar to the opponent’s printed matter for insurance services in Class 16 as they have the same purpose. They usually coincide in producer and relevant public. Furthermore, they are in competition.

Contested goods in Class 16

As a preliminary remark, it must be noted that the opponent stated in the notice of opposition that, insofar as the goods in Class 16 are concerned, the current opposition is directed against ‘matter, printed publications; stationery; books; photographs; plastic bags; paper; periodical publications; address books; personal organisers in paper form; newsletters; leaflets; catalogues; geographic maps; posters; prints; newspapers; note paper, writing paper; none of the foregoing in relation to fonts, typefaces or software for fonts and typefaces’. However, in its submissions of 07/05/2020, the opponent clearly indicated that the opposition is directed against ‘printed matter’. In this regard, there are no special provisions in the Regulations regarding the correction of mistakes in the notice of opposition. Applying Article 49(2) EUTMR, which refers to the EUTM application, by analogy, obvious mistakes in the notice of opposition may be corrected. The Office considers ‘obvious error’ in relation to Article 49(2) EUTMR and Article 102(1) EUTMR to be understood as meaning mistakes that obviously require correction, in the sense that nothing else would have been intended than what is offered as the correction. Consequently, considering that the word ‘matter’ appears only once in the contested sign’s specification in Class 16, it is evident that the opponent intended to object to the term ‘printed matter’. Therefore, the Opposition Division considers that the opponent directed the opposition against ‘printed matter’ in Class 16 and the omission of the word ‘printed’ was an obvious mistake.

The contested printed matter includes, as a broader category, the opponent’s printed matter for insurance services. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The opponent’s printed matter for insurance services is a broad category, which includes carriers (e.g. paper, cardboard, plastic) on which text and/or images are depicted using a printing process. Printed matter for insurance services encompasses goods, such as publications for educational or informative purpose (e.g. books, magazines, textbooks), carriers that are used as a token of value (e.g. non-magnetic cards, vouchers), printed stationery items (e.g. blank forms, envelopes, announcement cards, document files), all the above in relation to insurance services. For these reasons, the contested printed publications; stationery; books; periodical publications; newsletters; leaflets; catalogues; newspapers at least overlap with the opponent’s printed matter for insurance services. Therefore, they are identical.

The contested address books; personal organisers in paper form; geographic maps; posters; note paper, writing paper are similar to the opponent’s printed matter for insurance services as they have the same purpose and nature. They usually coincide in producer, relevant public, distribution channels and method of use.

The opponent’s printed matter for insurance services can be to a certain extent devoted to photography, in particular where a catalogue is concerned. Furthermore, they share a common purpose, namely, to display the text or images in the case of the former and display the images in the case of the latter, images and text which are often combined. Consequently, the contested photographs; prints and the opponent’s printed matter for insurance services can have not only the same nature and methods of use but also the same purpose. Furthermore, they can share the same distribution channels, target the same relevant public and be produced by the same undertakings. Therefore, these goods are considered similar (see, to this effect, 13/12/2016, T‑58/16, APAX / APAX et al., EU:T:2016:724, § 39-40).

The remaining contested plastic bags; paper are dissimilar to the opponent’s printed matter for insurance services. Although some of the opponent’s goods may be made of paper or be wrapped in a plastic bag, their ultimate purpose is clearly different, and the industrial processes used in the manufacturing of the goods are very distinct. In addition, the goods at issue have a different nature and different distribution channels, are not found on the same shelves in retail outlets and are neither complementary nor in competition. In addition, they do not coincide in methods of use, relevant public and usual producer. These contested goods also have nothing in common with the opponent’s insurance services in Class 36 as they have a different nature, purpose, method of use, distribution channels, relevant public and usual providers. In addition, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested services in Class 36

The contested insurance management; preparation of reports relating to all the foregoing services; arranging insurance and underwriting of aircraft, aviation and other vehicles; information, advisory and consultancy services relating to all the aforesaid services; none of the aforesaid being insurance services, save for insurance management services exclusively provided in a framework of fiduciary services are included in the broad category of, or at least overlap with, the opponent’s insurance services. Therefore, contrary to the applicant’s assertions, they are identical.

The contested financing of property development; property letting and management services; capital investments in real estate; financial affairs; financial management consultancy services; monetary affairs; actuarial services; administration of financial affairs; financial management, planning and research; preparation of financial reports and analysis; tax consultations (financial); insolvency services; investment business services; venture capital investment and management services; venture capital funding for established, start-up and emerging companies; acquisition for financial investment; administration of funds and investments; pensions administration; fiduciary services; financing of loans; arranging investments and capital fund investments; development of investment portfolios; venture capital and investment brokerage services; fund investment services; trust and unit trust investment services; trusteeship services; private equity services; equity investment services; provision of financial information; preparation of financial reports; financial appraisals and valuations; preparation of reports relating to all the foregoing services; escrow services; trustee services; trustee establishment and administration services; securities trading; fiduciary services (financial); aircraft financing services; preparation of documentation (financial) relating to the sale and purchase of aircraft; financial advisory services relating to taxation and VAT; financial advisory services relating to taxation and VAT in connection with aircraft; financial reporting for businesses; investment business services; information, advisory and consultancy services relating to all the aforesaid services; none of the aforesaid being insurance services, save for insurance management services exclusively provided in a framework of fiduciary services are all various financial, monetary and banking services.

‘Financial services’ concern the management of money, capital and/or credit and investments and are provided by the finance industry. The finance industry encompasses a broad range of organisations that deal with the management, investment, transfer, and lending of money. Among these organisations are, for example, banks, credit card companies, consumer finance companies, stock brokerages and investment funds. ‘Banking services’ consist of providing all the services necessary for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business. On the other hand, the opponent’s insurance services consist of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages. Insurance services are of a financial nature and insurance companies are subject to licensing, supervision and solvency rules similar to those governing banks and other institutions providing financial services. Most banks and the other financial institutions also offer insurance services, including health insurance, or act as agents for insurance companies with whom they are often economically linked. Additionally, it is not unusual to see a financial institution and an insurance company in the same economic group. Therefore, although the opponent’s insurance services and these contested services have different purposes, they are of a similar nature, may be provided by the same undertaking or related undertakings and have the same distribution channels. Therefore, contrary to the applicant’s assertions, they are similar at least to a low degree.

The contested real estate services; property development services (real estate); property portfolio management services; preparation of reports relating to all the foregoing services; information, advisory and consultancy services relating to all the aforesaid services; none of the aforesaid being insurance services, save for insurance management services exclusively provided in a framework of fiduciary services are essentially various real estate affairs. The term ‘real estate affairs’ comprises real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of related information. This mainly involves finding a property, making it available for potential buyers and acting as an intermediary. Consumers clearly distinguish real estate agents’ services from those of financial and insurance institutions. They do not expect a bank or insurance company to find housing or a real estate agent to manage their finances. Therefore, these contested goods and the opponent’s insurance services are dissimilar. They differ in nature, purpose, method of use, distribution channels, relevant public and usual providers. In addition, they are neither complementary nor in competition. They also have nothing in common with the opponent’s goods in Class 16, as they differ in nature, purpose, method of use, distribution channels, relevant public, usual producers/providers, and are neither complementary nor in competition. Therefore, they are dissimilar.

b) The signs

AGS	AGS
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods and services in Classes 16 and 36, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods and services.

Furthermore, some contested goods and services in Classes 9, 16 and 36, as established above in section a) of this decision, were found to be similar to varying degrees to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods and services.

The identity of the signs in conflict implies that consumers will not be able to distinguish between them in relation to goods and services that are identical and similar to varying degrees. This conclusion would hold true even if the degree of distinctiveness of the earlier mark as a whole were very low and irrespective of the degree of attention and sophistication of the relevant public.

Therefore, the opposition is partly well founded on the basis of the earlier Swedish trade mark registration No 254 189 for the word mark ‘AGS’ and, consequently, the contested trade mark must be rejected for all the goods and services found to be identical or similar to varying degrees.

The rest of the contested goods and services in Classes 16 and 36 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 and services cannot be successful.

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

Gueorgui IVANOV

Anna PĘKAŁA

Lars HELBERT

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.