OPPOSITION No B 3 113 050

Telekom Slovenije, d.d., Cigaletova ulica 15, Sl-1000 Ljubljana, Slovenia (opponent), represented by Patentna Pisarna D.O.O., Čopova 14, Sl-1001, Ljubljana, Slovenia (professional representative)

a g a i n s t

CBien, 4 rue du Général Lanrezac, 75017 Paris, France (applicant).

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

DECISION:

1. Opposition No B 3 113 050 is partially upheld, namely for the following contested services:

Class 35: Compilation of information relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; computerised management permitting the access, update, manipulation, modification, organisation, storage, saving, synchronisation, transmission, export and sharing of data, documents, files and information via global computer network, all the aforesaid relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; price comparison services; connection of community members to websites of others for giving, exchanging, hiring, lending, resaling, selling and buying any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; connection between community members for giving, exchanging, hiring, lending, resaling, selling and buying any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings.

Class 36: Value appraisal and evaluation of any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; value appraisal and evaluation of any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings, using software, compilation and price analysis algorithms accessible via internet, software as a service (SaaS) or programming interfaces; insurance consultancy; insurance relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; insurance claim settlements via an automatic chatting platform; repossession cover on purchased goods; loans and financing of goods in cooperation with banking establishments; the bringing together of sellers and buyers with banking establishments for the recovery of various goods or for the providing of loans in order to enable purchase thereof.

Class 45: Licensing, licensing of intellectual property, of industrial property, of databases and technology.

2. European Union trade mark application No 18 029 612 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 029 612 ‘VALOO’. The opposition is based on, inter alia, Slovenian trade mark registration No 201 770 720 ‘VALU’. 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 Slovenian trade mark registration No 201 770 720.

1. The services

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

Class 35: Administrative processing of purchase orders; secretarial services; shop window dressing; invoicing; data search in computer files for others; compilation of information into computer databases; updating of advertising material; rental of vending machines; office machines and equipment rental; outdoor advertising; opinion polling; direct mail advertising; publication of publicity texts; word processing; rental of advertising space; rental of advertising time on communication media; publicity material rental; on-line advertising on a computer network; organisation of exhibitions for commercial or advertising purposes; organisation of trade fairs for commercial or advertising purposes; writing of publicity texts; billposting; commercial or industrial management assistance; assistance in management of business activities; commercial administration of the licensing of the goods and services of others; sales promotion for others; presentation of goods on communication media, for retail purposes; demonstration of goods; publicity columns preparation; production of advertising films; bookkeeping; news clipping services; dissemination of advertising matter; advertising; advertising by mail order; advertising services; radio advertising; television advertising; document reproduction; drawing up of statements of accounts; compilation of statistics; systemization of information into computer databases; telephone answering for unavailable subscribers; public relations services; price comparison services; telemarketing services; layout services for advertising purposes; outsourcing services (business assistance); marketing services; market studies; market research; computerized file management; arranging subscriptions to telecommunication services for others.

Class 36: Home banking; banking; electronic funds transfer; charitable fund raising; financial analysis; capital investment; clearing, financial; financial affairs; financial information; financial sponsorship; financial consultancy; financial management; savings bank services; debit card services; card services; issuance of travellers’ cheques; issuance of tokens of value; credit brokerage; credit leasing; currency trading and exchange services; instalment loans; stocks and bonds brokerage; loans [financing]; trusteeships; providing rebates at participating establishments of others through use of a membership card; insurance information; insurance consultancy; insurance services; insurance brokerage; accident insurance underwriting; health insurance; life insurance.

Class 38: Wireless broadcasting; rental of access time to global computer networks; transmission of electronic mail; facsimile transmission; information about telecommunication; rental of message sending apparatus; cable television broadcasting; forums (chat rooms) for social networking; mobile telephone communication services; communications by computer terminals; communications by fiber (fibre) optic networks; radio broadcasting; television broadcasting; rental of access time to global computer networks; rental of modems; rental of facsimile apparatus; rental of telephones; rental of telecommunication equipment; providing access to databases; providing user access to global computer networks; providing internet chatrooms; providing telecommunication channels for teleshopping services; providing telecommunications connections to a global computer network; paging services (radio, telephone or other means of electronic communication); message sending; sending of telegrams; transmission of telegrams; transmission of digital files; transmission of greeting cards online; computer aided transmission of messages and images; satellite transmission; electronic bulletin board services (telecommunications services); voice mail services; telephone and mobile telephone services; telegraph services; communications by telegrams; providing telecommunication channels for teleshopping services; telecommunications routing and junction services; teleconferencing services; telex services; news agency services; news agencies.

Class 45: Intellectual property (monitoring the field); intellectual property consultancy; licensing of intellectual property; licensing of computer software (legal services); registration of domain names (legal services); advisory services in the field of intellectual property; physical security consultancy; copyright management.

The contested services are the following:

Class 35: Compilation of information relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; computerised management permitting the access, update, manipulation, modification, organisation, storage, saving, synchronisation, transmission, export and sharing of data, documents, files and information via global computer network, all the aforesaid relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; price comparison services; connection of community members to websites of others for giving, exchanging, hiring, lending, resaling, selling and buying any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; connection between community members for giving, exchanging, hiring, lending, resaling, selling and buying any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; The bringing together, excluding the transport thereof, of any type of real estate, of works of art, of wine bottles and of alcoholic beverages, enabling interested parties to view, purchase, rent and exchange these goods and objects at a marketplace.

Class 36: Value appraisal and evaluation of any type of movable goods, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; value appraisal and evaluation of any type of movable goods, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings, using software, compilation and price analysis algorithms accessible via internet, software as a service (SaaS) or programming interfaces; insurance consultancy; insurance relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; insurance claim settlements via an automatic chatting platform; repossession cover on purchased goods; loans and financing of goods in cooperation with banking establishments; the bringing together of sellers and buyers with banking establishments for the recovery of various goods or for the providing of loans in order to enable purchase thereof.

Class 45: Online social networking relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; Licensing, licensing of intellectual property, of industrial property, of databases and technology.

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

The contested computerised management permitting the access, update, manipulation, modification, organisation, storage, saving, synchronisation, transmission, export and sharing of data, documents, files and information via global computer network, all the aforesaid relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings are included in the broad category of computerized file management. Therefore, they are identical.

The contested compilation of information relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings refers to the process of collecting information together. They have some similarities with the opponent’s compilation of information into computer databases. These services have the same nature and purpose: to manage information. They can have the same providers and distribution channels. Therefore, they are at least similar.

The contested price comparison services are identically contained in both lists of services.

The contested connection of community members to websites of others for giving, exchanging, hiring, lending, resaling, selling and buying any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; connection between community members for giving, exchanging, hiring, lending, resaling, selling and buying any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings consist of assembling members using platforms, including online platforms, in order to facilitate or encourage the promotion and sale of goods and services. These services are similar to the opponent’s organisation of trade fairs for commercial or advertising purposes as they share the same purpose, relevant public and same provider.

The contested the bringing together, excluding the transport thereof, of any type of real estate, of works of art, of wine bottles and of alcoholic beverages, enabling interested parties to view, purchase, rent and exchange these goods and objects at a marketplace are retail services. They are dissimilar to all of the opponent’s services in Classes 35, 36, 38 and 45. They differ in nature and purpose. Moreover, they do not coincide in their providers, distribution channels and relevant public. Finally, they are neither complementary nor in competition.

Contested services in Class 36

The contested value appraisal and evaluation of any type of movable goods, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; value appraisal and evaluation of any type of movable goods, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings, using software, compilation and price analysis algorithms accessible via internet, software as a service (SaaS) or programming interfaces consist of, or include, financial appraisals of a customer’s possessions or goods that are often insured. Therefore, they are similar to the opponent’s financial and insurance services. They have a similar nature, may be provided by the same undertakings, can share the same distribution channels and target the same relevant public.

The contested insurance consultancy; insurance relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings; insurance claim settlements via an automatic chatting platform are included in the broad category of insurance services. Therefore, they are identical.

The contested repossession cover on purchased goods; the bringing together of sellers and buyers with banking establishments for the recovery of various goods or for the providing of loans in order to enable purchase thereof are included in the broad category of financial affairs. Therefore, they are identical.

The contested loans and financing of goods in cooperation with banking establishments are included in the broad category of loans [financing]. Therefore, they are identical.

The contested value appraisal and evaluation of real estate; value appraisal and evaluation of real estate using software, compilation and price analysis algorithms accessible via internet, software as a service (SaaS) or programming interfaces are real state services. They are dissimilar to all of the opponent’s services in Classes 35, 36, 38 and 45. They differ in nature and purpose. Moreover, they do not coincide in their providers, distribution channels and relevant public. In addition, they are neither complementary nor in competition.

Contested services in Class 45

The contested licensing, licensing of industrial property, of databases and technology includes, as a broader category, the opponent’s licensing of intellectual property; licensing of computer software (legal services). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services

The contested online social networking relating to any type of movable goods, of real estate, of works of art, of wine bottles and of alcoholic beverages and any other objects, utensils and fittings have nothing relevant in common with the opponent’s services. They have a different nature, purpose and method of use. They are not complementary, nor in competition. Furthermore, they do not originate from the same undertakings, are offered through different distribution channels and target a different relevant public. They are therefore dissimilar.

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 services found to be identical and similar are directed at 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, sophistication, specialised nature, or terms and conditions of the goods and services purchased. A part of such services are specialised services that may have important financial consequences for their users, the consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / 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

VALU	VALOO
Earlier trade mark	Contested sign

The relevant territory is Slovenia.

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 mark and the contested sign are both word marks, each composed of a single verbal element, ‘VALU’ and ‘VALOO’, respectively. In the case of word marks, it is the word as such that is protected as long as its depiction does not deviate from the usual way of writing (standard rules of capitalisation). As this is the case for the earlier mark and contested sign, it is irrelevant if the marks are written in lower- or upper-case letters.

These verbal elements are meaningless. Therefore, both of them have an average degree of distinctiveness.

Visually and aurally, the signs coincide in the sequence of letters ‘VAL’, present identically in both signs. However, they differ in the last two letters, ‘OO’, of the contested sign and the letter ‘U’ in the earlier mark.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. In this instance, three letters out of five of the contested mark are identical to the earlier mark.

Therefore, the signs are visually and aurally similar to an average 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 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

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).

The services are partly identical or similar, and partly dissimilar. They target the public at large and business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high.

The signs are visually and aurally similar to an average degree. The distinctiveness of the earlier sign is normal. Moreover, the signs have no meanings that would help the relevant consumers differentiate between them.

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 services covered are from the same or economically linked undertakings.

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).

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

The contested trade mark must be rejected in respect of those services that have been considered identical or similar to the goods and services of the opponent.

The rest of the contested services 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 Slovenian trade mark registration No 201 770 719 . Since this trade mark covers the same scope of services as the services already compared the outcome cannot be any different in respect of the services for which the opposition has already been rejected.

COSTS

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

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

The Opposition Division

Angela DI BLASIO

Claudia SCHLIE

Holger Peter KUNZ

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.