OPPOSITION No B 3 086 883

Verti Aseguradora, Compañía de Seguros y Reaseguros, S.A., C/ Manuel Silvela, 15, 28010 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Vertilite CO.,LTD., NO. 7 FengXiang Road, WuJin High-tech Industrial Zone, 213000 Changzhou, People’s Republic of China (applicant), represented by Würth & Kollegen, Auf dem Berge 36, 28844 Weyhe, Germany (professional representative).

On 03/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 883 is partially upheld, namely for the following contested goods and services:

Class 9: Computer chips; smartphones; computer software.

Class 35: Advertising; commercial or industrial management assistance; import-export agencies; marketing research; personnel management consultancy; relocation services for businesses; systemization of information into computer databases; accounting; sponsorship search.

Class 42: Technical studies; quality control; chemical research; biological research; weather forecasting; material testing; industrial design; architecture; computer programming; provision of expert appraisals relating to computing.

2. European Union trade mark application No 18 030 616 is rejected for all the above goods and services. It may proceed for the remaining goods, namely:

Class 9: Laser diodes; semi-conductors; semiconductor devices; transformers; batteries; surveying apparatus and instruments; electrical conductors; sensors; alarms; traffic-light apparatus [signalling devices].

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services (Classes 9, 35 and 42) of European Union trade mark application No 18 030 616 . The opposition is based on Spanish trade mark registration No 3 697 361 and EU trade mark registration No 10 190 247 for the same figurative mark , and EU trade mark registration No 9 454 455 for the word ‘VERTI’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 Spanish trade mark registration No 3 697 361.

a) The goods and services

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

Class 9: Downloadable electronic publications, downloadable electronic publications on CD-ROM, software, downloadable computer software applications; all the aforesaid goods relating to insurance and associated information.

Class 35: Advertising; business management; business administration; office functions, expressly excluding those relating to the motorway, telecommunications, infrastructure, parking, airport, and logistics platform sectors, but not excluding the advertising services of a direct insurance company using telephone and the internet as sales channels and all available advertising media to generate demand.

Class 36: Insurance and reinsurance; financial affairs; monetary affairs; real estate affairs.

Class 42: Scientific and technological services and research and design relating thereto, expressly excluding those relating to motorway transit or road transport; industrial analysis and research services; design and development of computer hardware and software, excluding the design, deployment, and operation of Wi-Fi networks for government bodies.

The contested goods and services are the following:

Class 9: Laser diodes; semi-conductors; computer chips; semiconductor devices; transformers; batteries; surveying apparatus and instruments; smartphones; electrical conductors; sensors; computer software; alarms; traffic-light apparatus [signalling devices].

Class 35: Advertising; commercial or industrial management assistance; import-export agencies; marketing research; personnel management consultancy; relocation services for businesses; systemization of information into computer databases; accounting; sponsorship search.

Class 42: Technical studies; quality control; chemical research; biological research; weather forecasting; material testing; industrial design; architecture; computer programming; provision of expert appraisals relating to computing.

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.

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.

Contested goods in Class 9

The contested computer software includes, as a broader category, the opponent’s downloadable computer software applications (relating to insurance and associated information). 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 downloadable computer software applications (relating to insurance and associated information) is software designed to be used specifically on computers. It is primarily used for communication and to transfer files, perform backups, update the internal firmware or software of a device, etc. The contested smartphones use various types of software to operate, but, more importantly, they also allow users to install and use other software (application software, also known as ‘apps’). In this sense, the Opposition Division finds that the contested smartphones are similar to the opponent’s goods mentioned above. The opponent’s goods are important for the use of the contested goods, as the use of software increases the functionality of the contested goods; therefore, these goods are complementary. They may have similar distribution channels and have a similar relevant public. In addition, the usual origin of these goods may be the same because the manufacturers of smartphones often design and sell their own software for these or similar products.

There is a certain degree of similarity between the contested computer chips and the opponent’s design and development of computer hardware and software, excluding the design, deployment, and operation of Wi-Fi networks for government bodies in Class 42. This is because they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary. Therefore, they are similar.

The remaining contested goods, laser diodes; semi-conductors; semiconductor devices; transformers; batteries; surveying apparatus and instruments; electrical conductors; sensors; alarms; traffic-light apparatus [signalling devices], are clearly different from the opponent’s goods in Class 9 and services in Classes 35, 36 and 42. Indeed, none of the remaining contested goods in Class 9 are similar to any of the opponent’s goods and services. Although the contested surveying apparatus and instruments may function with integrated software, that does not automatically make them similar to software, as they are not complementary, and differ in relevant public, producer, distribution channels, and purpose. Furthermore, the opponent has not argued or proved that any of these goods require software that is purchased independently to give, for example, more or different functionalities to those goods.

Consequently, none of the contested goods has anything relevant in common with the opponent’s goods and services: they do not have the same nature, purpose or method of use; they are neither in competition nor complementary; they have different distribution channels and producers/providers. Therefore, they are dissimilar.

Contested services Class 35

Advertising is identically included in both lists of goods and services.

The contested commercial or industrial management assistance is included in the broad category of the opponent’s business management. They are identical.

The contested relocation services for businesses are included in the broad category of, or overlap with, the opponent’s business administration. They are identical.

The contested marketing research, that is the study of influences upon customer and consumer behaviour and the analysis of market characteristics and trends, is a specific activity that is usually carried out by undertakings providing advertising services and business management. Therefore, these contested goods are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested systemization of information into computer databases is identical to the opponent’s office functions, expressly excluding those relating to the motorway, telecommunications, infrastructure, parking, airport, and logistics platform sectors, but not excluding the advertising services of a direct insurance company using telephone and the internet as sales channels and all available advertising media to generate demand. These services can overlap.

The contested import-export agencies are similar to the opponent’s business management, as they usually coincide in provider, relevant public and distribution channel.

The contested accounting is an administrative/support task intended to support the daily operation of companies and is similar to the opponent’s business administration, as they have the same purpose. They usually coincide in producer and relevant public

The contested sponsorship search looks for people or companies that will support an event, activity or organisation, usually in return for advertising space at the event or for including the sponsor in the publicity for the event. These services can be distributed through the same channels as the opponent’s advertising, can target the same public and be offered by the same undertakings. Therefore, they are similar.

The contested personnel management consultancy is at least similar to an average degree to the opponent’s business administration since they can have a similar ultimate purpose (support companies in achieving their business goals) and coincide in end users and providers.

Contested services Class 42

The contested computer programming is identical to the opponent’s design and development of computer hardware and software, excluding the design, deployment, and operation of Wi-Fi networks for government bodies. These services can overlap.

The contested chemical research; biological research are included in the opponent’s industrial analysis and research services; they are identical.

The opponent’s scientific and technological services and research and design relating thereto, expressly excluding those relating to motorway transit or road transport are services of a technical nature related to research and the creation of studies. They are carried out by engineers or technical experts, who provide reports and projects following a process analysis, and are based on a number of techniques. They have the same nature and purpose as the contested technical studies; quality control; material testing, which may be provided by the same undertakings. Furthermore, they are complementary. Therefore, they are considered similar.

The contested industrial design is similar to the opponent’s industrial analysis and research services; as they usually coincide in provider, relevant public and distribution channels.

The contested weather forecasting is a science developed on the basis of mathematical models or computer simulation. This service is at least similar to an average degree to scientific and technological services, since the opponent’s services do not indicate the specific field that they relate to, and since ‘science’ and ‘technology’ are very broad terms, these can include the contested weather forecasting. They usually coincide in provider, relevant public and distribution channels.

The contested provision of expert appraisals relating to computing is similar to the opponent’s design and development of computer hardware and software, excluding the design, deployment, and operation of Wi-Fi networks for government bodies. These services have the same purpose, target the same public and are complementary.

The contested architecture is at least similar to an average degree to scientific and technological services and research and design relating thereto, expressly excluding those relating to motorway transit or road transport. They are carried out by engineers or by technical experts, who provide reports and projects following a process analysis, and are based on a number of techniques. They usually coincide in provider, relevant public and distribution channel.

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 goods and services that were found to be identical or similar to varying degrees are directed primarily at the public at large; however, some of the services in Class 35, for example import-export agencies, and the services in Class 42 are also directed at business customers with specific professional knowledge or expertise.

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

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 verbal elements ‘verti’ of the earlier mark and ‘VERTILITE’ of the contested sign have no meanings for the relevant public and are, therefore, distinctive. The figurative aspects of the verbal elements of the signs have a limited impact, since the stylisation of the letters is rather common and the typeface is standard.

The orange figurative element of the earlier sign will be perceived as an original device with no particular meaning. Therefore, it is considered distinctive.

The Spanish public will perceive the oriental characters in the contested sign as a figurative element or a mere decorative design referring to something of an Asian origin. They will be perceived as meaningless abstract symbols (09/02/2017, R 539/2016‑5, C@BONUS BONUSLINE (fig.) / bonus net (fig), § 32, 33, 35; 28/10/2016, R 250/2016‑5, LOTTE (fig.) / KOALA-BÄREN Schöller lustige Gebäckfiguren (3D) et al., § 70). The relevant public will not be able to verbalise the Asiatic characters, which, therefore, will not be easily memorised. As a consequence, this element is considered weak.

While is true that in the signs there are no dominant element, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This applies in the present case. The verbal elements will be perceived and taken as the most important element of the signs, while the figurative elements will only play a secondary role. Therefore, the verbal element, as opposed to the figurative element, can be conveniently grasped, memorised and reproduced, so that the public will usually perceive it as the characteristic part of the sign as a whole.

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.

Visually and aurally, the signs coincide in the string of five letters ‘VERTI’ and its sound, which forms the whole verbal element of the earlier mark and the beginning of the contested sign. The signs differ in the additional string of letters (and its sound) ‘LITE’ in the contested sign. The signs also differ visually in their figurative aspects which will not be pronounced and have less impact than the verbal elements, as stated above.

Consequently, the signs are considered visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. The figurative elements of the signs do not evoke any clear concepts. 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

e) Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large and professionals. The degree of attention varies from average to high.

The signs are visually and aurally similar to an average degree, and the conceptual aspect does not influence the present comparison.

The earlier mark’s entire verbal element coincides with the beginning part of the verbal element of the contested sign, which is the part that consumers will pay most attention to when they encounter the trade mark. The differences between the signs are limited to elements of reduced impact, namely the figurative elements and aspects and the additional letters (LITE) at the end of the contested sign. 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 with 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, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

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, namely in Class 9: Laser diodes; semi-conductors; semiconductor devices; transformers; batteries; surveying apparatus and instruments; electrical conductors; sensors; alarms; traffic-light apparatus [signalling devices] 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

EU trade mark registration No 9 454 455 for the word ‘VERTI’

Class 36: Insurance; monetary affairs; monetary transaction services; real estate affairs, except for the use of services included in this class for trade unions.

EU trade mark registration No 10 190 247 for the figurative mark

Class 36: Insurance; financial affairs; monetary transaction services; real estate affairs, except for the use of services included in this class for trade unions.

The Opposition Division notes that these goods and services are clearly dissimilar to those for which protection is sought (the contested goods). The opponent’s services are provided by financial institutions, real estate agencies and have nothing in common with the contested goods. They differ in nature, purpose, providers/producers and distribution channels. They are neither complementary nor in competition.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

The examination will continue on the basis of the other ground claimed by the opponent in relation to the goods in Class 9 found to be dissimilar.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

According to the opponent, the earlier EU trade marks have a reputation in the European Union in relation to services in Class 36 (see below), and the earlier Spanish trade mark has reputation in Spain for goods and services in Classes 9, 35, 36, and 42.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 04/03/2019. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union and Spain prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely

EU trade mark registration No 9 454 455

Class 36: Insurance; monetary affairs; monetary transaction services; real estate affairs, except for the use of services included in this class for trade unions.

EU trade mark registration No 10 190 247

Class 36: Insurance; financial affairs; monetary transaction services; real estate affairs, except for the use of services included in this class for trade unions.

Spanish trade mark registration No 3 697 361

Class 9: Downloadable electronic publications, downloadable electronic publications on CD-ROM, software, downloadable computer software applications; all the aforesaid goods relating to insurance and associated information.

Class 35: Advertising; business management; business administration; office functions, expressly excluding those relating to the motorway, telecommunications, infrastructure, parking, airport, and logistics platform sectors, but not excluding the advertising services of a direct insurance company using telephone and the internet as sales channels and all available advertising media to generate demand.

Class 36: Insurance and reinsurance; financial affairs; monetary affairs; real estate affairs.

Class 42: Scientific and technological services and research and design relating thereto, expressly excluding those relating to motorway transit or road transport; industrial analysis and research services; design and development of computer hardware and software, excluding the design, deployment, and operation of Wi-Fi networks for government bodies.

The remaining contested goods after the analysis of the signs under Article 8(1)(b) EUTMR are:

Class 9: Laser diodes; semi-conductors; semiconductor devices; transformers; batteries; surveying apparatus and instruments; electrical conductors; sensors; alarms; traffic-light apparatus [signalling devices].

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The evidence to be taken into account is the following:

The opponent argues that the use of the ‘VERTI’ marks is linked to the insurance market and, particularly, to automobile insurance. Within that field the company also oversees related aspects commonly handled by insurers.

• Exhibit 1: two decisions issued on 23/11/2016 and 28/05/2019 by the Spanish Patent and Trade Mark Office (together with their corresponding translations into the language of proceedings: English) finding a likelihood of confusion between the opponent’s earlier mark (and other earlier marks) and a later Spanish application in Classes 35, 36, 42 and 45.

Copy of a decision by the EUIPO from 31/07/2018 stating that there is a likelihood of confusion between ‘VertiLight’ and the earlier Spanish trade mark ‘VERTI’, wherein it was acknowledged that the mark ‘VERTI’ has a reputation. The EUIPO’s Board of Appeal also confirmed that ruling, upon dismissing the appeal subsequently filed by the applicant, in a decision dated 16/07/2019.

Copy of a decision by the EUIPO issued on 24/10/2018 stating that there is a likelihood of confusion between VERTA (fig.) and the opponent’s ‘VERTI’ and VERTI (fig.).

• Exhibit 2: extract of the opponent’s website www.verti.es and its corresponding translation into English. The extract shows that the opponent provides ‘low cost online cars, motorcycles and home insurance’, shows use of ‘VERTI’ in combination with ‘seguros’ (SEGUROS VERTI), ‘red de talleres’ (red de talleres VERTI), ‘Tariffa web de Verti’.

• Exhibit 3: a signed declaration (in Spanish with an English translation) of an authorised officer of the opponent, stating that the opponent:

o has been active in the Spanish insurance sector since January 2011,

o has almost 300 000 customers,

o had a turnover of EUR 79 600 000 at the end of 2016,

o is one of the major players in online direct business and telephone sales of insurance in Spain;

o ‘VERTI’ is the fourth well-known brand in the sector.

Although the declaration is undated, from the information provided, it can be assumed that it was made in 2017.

• Exhibit 4: a simple table entitled ‘Verti’s billing’ prepared by the opponent with Verti’s overall turnover for 2011 to August 2017.

• Exhibit 5: around thirty vehicles, home and pet insurance policies issued between 2011 and 2017, most of which are dated within the relevant period. All the policies are in Spanish, although an English translation is provided of the headings of the first vehicle insurance policy. The policies are issued to addresses located in several Spanish provinces and show the total amounts invoiced for the insurance services provided.

• Exhibits 6-7: a table entitled INFOADEX, which, according to the opponent, is a leading company working in the field of advertising monitoring in Spain. The table shows the opponent as one of the top fifty companies investing in advertising in the period 2011-2015, with an average investment of over EUR 20 000 000 (exhibit 6). A separate table, without an indication of the source, is attached as exhibit 7 and is, according to the opponent, an extract from Infoadex studies in relation to 2016, showing a total investment of around EUR 15 000 000 by the opponent.

• Exhibit 8: press articles in Spanish (with a translation into English of the titles) on awards and recognitions given to the opponent for, inter alia, its innovation in the insurance sector (dated 2019), website of the year in the insurance sector in 2015, and marketing awards (dated 2011 and 2012). They include a press article issued by UNESPA, a professional insurance company association report of 2013 showing the opponent as the winner of several prizes for combatting fraud in the insurance sector.

• Exhibit 9: examples of, inter alia, several cultural and sports events in Spain from 2011 sponsored by the opponent; on the documents the earlier mark appears as a word mark (as ‘VERTI’ or in combination with the word SEGUROS, i.e. the Spanish term for ‘insurances’).

• Exhibit 10: a decision of WIPO’s Arbitration and Mediation centre of 2011 in relation to a conflict regarding the domain name <verti.com.es> and ordering its transfer to the opponent.

• Exhibit 11: internet extracts (all in Spanish), dated 2016, from the opponent’s website and YouTube showing the opponent’s advertising campaigns (in Spanish) in 2014 and 2016, from Twitter showing the opponent’s tweets (in Spanish), and from Facebook. They all show the use of ‘VERTI’, ‘Verti Seguros’ and the figurative representation as depicted above in relation to insurance services.

• Exhibit 12: a document in Spanish issued by ICEA, an insurance association, showing the ranking (with headings translated into English) of direct insurance companies in Spain, listing the opponent as number 20 in 2015 with a 0.77 % market share.

• Exhibit 13: datasheets (with headings translated into English) that, according to the opponent, are extracts from a study tracking the evolution of the reputation of brands in specific sectors, using eight different advertising media parameters. The mark ‘VERTI’ appears in the list as 19th (in 2011), 10th (in 2012) and 11th (in 2013, 2014 and 2015), out of a total of around 400 brands of financial entities.

• Exhibit 14: press articles in Spanish (and their partial translations into English), dated from 2010 to 2019, showing the use of the earlier mark in relation to (mainly direct and low-cost) insurance services. One of the articles mentions ‘a type of third-party insurance that covers civil liability, legal defence and repair services in Verti repair shops’; another article mentions collaboration with a company that offers a home tyre-fitting service.

• Exhibit 15: figures for premiums issued by Verti (Germany, Spain and Italy) during 2016, 2017, 2018 and 2019.

It is clear from the evidence that the earlier trade marks have been subject to long-standing and intensive use and are generally known in the relevant market, where they enjoy a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the marks enjoy a high degree of recognition among the relevant public.

The opponent claims reputation for all of the goods and services on which the opposition is based. However, the claim for reputation can be taken in account only for the services in relation to which reputation has been proved, namely insurance services in Class 36.

The abovementioned evidence has indicated that the earlier trade marks have been used for a substantial period of time on the relevant market. It demonstrates that the opponent has taken steps to build up a brand image and enhance trade mark awareness among the public in relation to the insurance services provided, including, and especially, in relation to vehicle insurances. In particular, from the documents showing the rankings, the sponsoring activities, as well as from the press articles on awards and recognitions given to the opponent (e.g. for its innovation in the insurance sector, website of the year in the insurance sector, marketing awards, and a press article issued by UNESPA, a professional insurance company association report of 2013 showing the opponent as the winner of several prizes for combatting fraud in the insurance sector), it can be inferred that the earlier trade marks enjoy reputation within the meaning of Article 8(5) EUTMR.

Under these circumstances, the Opposition Division finds that the evidence indicates that the earlier trade marks have a normal degree of reputation for insurance services in Class 36.

b) The signs

EUTM No 10 190 247 and Spanish No 3 697 361 VERTI EUTM No 9 454 455
Earlier trade marks	Contested sign

The signs of the opponent’s earlier EUTM No 10 190 247 and Spanish trade mark No 3 697 361 have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

It has to be pointed out that in relation to EU trade mark registration No 9 454 455 for the word ‘VERTI’, the similarities are higher due to the lack of figurative aspects. and the earlier word mark ‘VERTI’ and the contested sign are visually and aurally similar to an above-average degree and the conceptual comparison is not possible.

c) The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar. The earlier marks have a normal degree of inherent distinctiveness. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

The contested goods are so different from those for which the opponent has shown reputation, that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. While the contested goods are laser diodes; semi-conductors; semiconductor devices; transformers; batteries; surveying apparatus and instruments; electrical conductors; sensors; alarms; traffic-light apparatus [signalling devices], the earlier trade marks were found to have a reputation for insurance services in Class 36.

The contested goods and those services for which reputation has been proved have no relationship and clearly differ in their nature, purpose, distribution channels, providers and are not complementary nor in competition. Indeed, in general, the contested goods are very different from the services for which the earlier marks have a reputation. Furthermore, even if the relevant public as regards the goods or services in dispute is the same or overlaps to some extent, those goods or services are so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 45-49; 18/11/2015, T‑606/13, Mustang / MUSTANG et al., EU:T:2015:862, § 52-54; 13/12/2018, T‑274/17 MONSTER DIP (fig.) / MONSTER ENERGY (fig.) et al., EU:T:2018:928, § 81).

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

Moreover, even though the signs are similar, this does not mean that the relevant public is likely to establish a link between them, which is essential for the application of Article 8(5) EUTMR, and for unfair advantage to be taken of the distinctive character or repute of the earlier mark.

Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected in relation to laser diodes; semi-conductors; semiconductor devices; transformers; batteries; surveying apparatus and instruments; electrical conductors; sensors; alarms; traffic-light apparatus [signalling devices] in Class 9.

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

Lidiya NIKOLOVA

Gonzalo BILBAO TEJADA

Peter QUAY

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.