OPPOSITION No B 3 086 175

Maxima Grupė, UAB, Savanorių pr. 247, LT-02300 Vilnius, Lithuania (opponent), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas, Gynéjų str. 16, LT-01109 Vilnius, Lithuania (professional representative)

a g a i n s t

XD-Accounting & Service AG, Gubelstrasse 12, 6300 Zug, Switzerland (applicant), represented by Möller Theobald Jung Zenger PartGmbB, Nibelungenplatz 3, 60318 Frankfurt am Main, Germany (professional representative).

On 27/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 175 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 18 023 521 ‘The X’ (word mark), namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 17 871 015 (figurative mark) and on Lithuanian trade mark registration No 53 119 (figurative mark). The opponent invoked Article 8(1)(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.

The applicant requested that the opponent submit proof of use of Lithuanian trade mark No 53 119, one of the two trade marks on which the opposition is based.

The request was filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 29/11/2019 the opponent was given two months to file the requested proof of use. On 08/01/2020 the original two month deadline to file proof of use was replaced with a new deadline, which was set as 13/03/2020, and following the opponent’s request for an extension on 09/03/2020, the deadline to file proof of use was extended until 13/05/2020.

The opponent did not submit any evidence concerning the use of the earlier trade mark on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR insofar as it is based on Lithuanian trade mark registration No 53 119.

The examination of the opposition will therefore continue on the basis of the opponent’s European Union trade mark registration No 17 871 015.

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.

a) The services

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

Class 35: Advertising; market research; sales promotion for others; development and implementation of customer attraction and customer loyalty schemes; commercial administration of the licensing of the goods and services of others; consumers (commercial information and advice for -) [consumer advice shop]; import-export agency services; administrative processing of purchase orders; wholesaling and retailing in the fields of foodstuffs and beverages; wholesaling and retailing of chemicals, adhesives, paints, varnishes, lacquers, preservatives against rust, mordants; wholesaling and retailing of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; wholesaling and retailing of soaps, perfumery, essential oils, cosmetics, dentifrices; wholesaling and retailing of industrial oils and greases, lubricants, illuminants; wholesaling and retailing of dietary supplements, sanitary preparations, dietetic substances, food for babies; wholesaling and retailing of disinfectants, preparations for destroying vermin; wholesaling and retailing of building materials, cables and wires, ironmongery, small items of metal hardware, safes, hand tools and implements (hand-operated); wholesaling and retailing of photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; wholesaling and retailing of electric and electronic instruments and apparatus, recording discs, data processing equipment, computers, fire-extinguishing apparatus; wholesaling and retailing of orthopaedic articles; wholesaling and retailing of apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; wholesaling and retailing of bicycles, parts and fittings for vehicles; wholesaling and retailing of jewellery, horological and chronometric instruments, musical instruments; wholesaling and retailing of bags for packaging, printed matter, books, napkins and tablecloths of paper, handkerchiefs of paper, toilet paper, printed matter, stationery, artists’ materials, office requisites, instructional and teaching material; wholesaling and retailing of materials for packaging, building materials, pipes, travelling bags of leather, trunks, belts, pocket wallets, handbags, briefcases, bags, backpacks, vanity cases, bags, trunks, umbrellas, sporting articles, furniture, interior fittings; wholesaling and retailing of household or kitchen utensils, grills, containers, combs and sponges, brushes; wholesaling and retailing of articles for cleaning purposes, glass, porcelain and earthenware; wholesaling and retailing of ropes, strings, nets, tents, awnings, tarpaulins, sacks and bags; wholesaling and retailing of threads, textiles and textile goods, bed covers, table covers, clothing, footwear, headgear, sewing articles, sewing accessories and materials; wholesaling and retailing of carpets, floor and wall coverings, games and playthings, gymnastic and sporting articles; wholesaling and retailing of decorations for Christmas trees; wholesaling and retailing of gardening utensils, agricultural, horticultural and forestry products and grains, fresh fruits and vegetables, seeds, plants, foodstuffs for animals, malt; wholesaling and retailing of tobacco, smokers’ articles, articles for parties and celebrations, decorative articles, decorations for Christmas trees, candles, carnival costumes, masks; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; wholesale services in relation to foodstuffs; retail services in relation to foodstuffs; wholesale services in relation to non-alcoholic beverages; retail services in relation to non-alcoholic beverages; retail services in relation to alcoholic beverages (except beer); retail services in relation to beer; retail services relating to fruit; retail services in relation to confectionery; retail services in relation to printed matter; retail services in relation to coffee; retail services in relation to teas.

Class 43: Providing food and drink; take-away fast food services.

The contested services are the following:

Class 35: Outdoor advertising; advisory services (business -) relating to the management of businesses; consultancy services relating to the administration and management of hotels; alcoholic beverage procurement services for others [purchasing goods for other businesses]; business management; preparing and placing outdoor advertisements for others; providing hotel rate comparison information; hotel management for others; business management of resort hotels; business management of hotels; hotel management service [for others]; business management of restaurants; restaurant management for others; wholesale services in relation to non-alcoholic beverages; wholesale services in relation to alcoholic beverages (except beer); business management assistance in the operation of restaurants; business management assistance in the establishment and operation of restaurants; real estate marketing; marketing services in the field of restaurants; on-line ordering services in the field of restaurant take-out and delivery; secretarial services provided by hotels; business advice relating to restaurant franchising; business advisory services relating to the running of restaurants; business advisory services relating to the setting up of restaurants; real estate marketing analysis; advertising services relating to hotels; advertising services relating to real property.

Some of the contested services are identical or similar to services on which the opposition is based. For example, the contested wholesale services in relation to non-alcoholic beverages; wholesale services in relation to alcoholic beverages (except beer); outdoor advertising; business management are identical to the opponent’s wholesaling in the fields of beverages; wholesale services in relation to non-alcoholic beverages; advertising; market research, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with the contested services. Some of the contested services, such as the contested on-line ordering services in the field of restaurant take-out and delivery and the opponent’s providing food and drink; take-away fast food services in Class 43 are similar since they target the same relevant public, can coincide in provider and distribution channels and furthermore they are complementary. Therefore, taking into account that some of the contested services are identical or similar to the opponent’s services, for reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services assumed to be identical or similar are directed at both the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

c) The signs

	The X
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 earlier trade mark is a figurative mark containing the verbal element ‘express’ depicted in standard white lower-case letters. Above this, there is an element that the applicant argues is a cross, painted with a thick brush, displaying strokes of different lengths and widths, while the opponent claims that this element is the letter ‘X’ written in a stylised way.

It cannot be excluded that a part of the public may perceive the element in the earlier mark as a cross or as a letter ‘X’. In addition, another part of the public may see this element as a multiplication sign. However, the scenario where this element is perceived as a stylised letter ‘X’ is the most advantageous for the opponent, therefore, for the purposes of this comparison, the Opposition Division will assess the signs from this perspective.

Therefore, the earlier trade mark contains a stylised white letter ‘X’, which is not related in any way to the relevant services and has an average degree of distinctiveness. The verbal element below it, ‘express’, is an English word, which is used, inter alia, as an adjective to describe special services that are provided by companies or organisations, such as the Post Office, in which things are sent or done faster than usual for a higher price (information extracted from Collins Dictionary on 17/08/2020 at https://www.collinsdictionary.com/dictionary/english/express). On the market, this word is commonly used with this meaning and similar equivalents exist in other EU languages, for example expressz in Hungarian or expres in Romanian. Although the opponent’s services are not transport or post-related services, still the word ‘express’ alludes to the services being provided quickly and therefore it has a somewhat laudatory connotation. Therefore, the distinctiveness of the word ‘express’ is below-average.

The verbal elements ‘express’ and ‘X’ are placed against red rectangular background, which is merely decorative and non-distinctive.

Due to its size and position within the earlier mark, the verbal element ‘X’ is the dominant element as it is the most eye-catching.

The contested sign is a word mark. It is composed of an English definite article ‘The’ and the letter ‘X’. On its own, the definite article serves to highlight the words that follow it, but it also serves as a reference to a person, place or thing that is unique. This applies for both English and non-English-speaking public, as the Court has held that the article ‘the’ is part of the basic English vocabulary that is understood throughout the European Union (24/06/2014, T‑330/12, THE HUT, EU:T:2014:569, § 44). Both the definite article ‘The’ and the letter ‘X’ are not related in any way to the relevant services and their distinctiveness is normal.

Visually, the signs coincide in the letter ‘X’. However, they differ in the verbal element ‘express’ in the earlier mark and in the definite article ‘The’ in the contested sign. The signs also differ in the graphic depiction and colours of the earlier mark.

Although the differing element in the earlier mark, ‘express’, is placed in a secondary position, it still contributes to the overall visual perception of the earlier mark especially taking into account that the element above it is only a single letter.

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, when encountering the contested sign consumers will perceive the definite article ‘The’ first.

Taking into account that the signs visually coincide only in a single letter element whilst the remaining elements have nothing in common and, moreover, the differing element in the contested sign, ‘The’, is placed in a position that attracts the consumers’ attention most, the signs are visually similar only to a low 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 letter ‛X’, present identically in both signs. The pronunciation differs in the sounds of the letters that form the word ‘express’ in the earlier mark and the sounds of the letters that form the definite article ‘the’ in the contested sign. The signs also differ in their length, rhythm and intonation since the earlier trade mark is clearly longer than the contested sign and the coinciding single letter ‘X’ will be pronounced in different positions when referring to the signs verbally. Furthermore, the fact that the sound of the definite article ‘the’ will be pronounced at the beginning of the contested sign is of particular importance.

Therefore, taking into account that the pronunciation of the signs coincides only in the sound of one single letter whilst the differing elements are clearly longer, and also taking into account the positions of the coinciding and differing elements, the signs are aurally similar only to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the element ‘X’ evokes the concept of a single letter ‘X’ in both signs, the word ‘express’ in the earlier mark evokes a differing concept whilst the definite article ‘the’ in the contested sign can also serve as a reference to a person, place or thing that is unique. Therefore, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an element that has a below-average distinctiveness, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the services are assumed to be identical. They target both the public at large and business customers with specific professional knowledge or expertise. The degree of attentiveness of the relevant public may vary from average to high. The signs have been found visually and aurally similar to a low degree and conceptually not similar.

Even though the signs share the presence of the letter ‘X’, the overall impression created by the signs is quite different. At the beginning of the contested sign, there is a definite article, which can serve as a reference to a person, place or thing that is unique. Whilst the earlier trade mark contains the additional word ‘express’, which, despite its secondary position, still contributes to the overall perception of the earlier mark. Furthermore, the red background, although decorative, contributes to the overall composition and visual perception of the earlier mark. Moreover, when pronounced, aurally, the signs share only one sound whilst the remaining sounds are completely different, and overall the signs have different lengths, rhythms and intonations. Finally, from the conceptual point of view, the differing verbal elements, ‘express’ and ‘the’, contribute to a conceptual difference between the signs. Therefore, the differing elements and their position within the signs, as well as the different overall impression created by the signs, are sufficient, in the Opposition Division’s view, to dispel a likelihood of confusion.

Consequently, the fact that the signs contain a single letter ‘X’ does not by itself lead to a finding of likelihood of confusion. The Opposition Division considers that the consumer will be able to safely distinguish the signs and that it will not confuse the services with respect to their commercial origin. Taking into account the above, the Opposition Division also considers that the assumed identity between the services does not outweigh the overall low degree of similarity between the signs even taking into account the interdependence principle.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘X’ in the earlier mark may be perceived as a cross or as a multiplication sign. This is because, as a result of the differing concept evoked by the element ‘X’ in the earlier mark, that part of the public will perceive the signs as being even less similar.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Ferenc GAZDA

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.