OPPOSITION No B 3 086 487

Aviva Assurances Societe Anonyme D'assurances Incendie et Risques Divers, 13, Rue du Moulin Bailly, 92270 Bois-Colombes, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur -Seine, France (professional representative)

a g a i n s t

Φ. Μυτιληναιος & Σια Μεσιτες Ασφαλισεων Ε.Ε., Ηρωδου Αττικου 7, Κηφισια, Greece (applicant), represented by Γιαννουλα Μαρινου, Αιγιαλειας 39 Βυρωνας Αττικη, Greece (professional representative).

On 25/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 487 is upheld for all the contested services.

2. European Union trade mark application No 18 031 500 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services (Class 36) of European Union trade mark application No 18 031 500 for the figurative sign . The opposition is based on French trade mark registration No 3 883 496 for the word mark ‘CONSENSIO’. 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.

1. The services

The services on which the opposition is based are, inter alia, the following:

Class 36: Insurance; Financial services; Financial evaluation [insurance, banking, real estate].

The contested services are the following:

Class 36: Insurance underwriting; Insurance for vans; Insurance services relating to motor vehicles; Health insurance; Aviation insurance; Insurance for offices; Life insurance; Insurance of buildings; Fire insurance; Insurance guarantees; Accident insurance; Non-life insurance underwriting; Insurance consultancy; Insurance information; Insurance for businesses; Private health insurance; Professional indemnity insurance; Insurance for third party liability; Financial services relating to insurance; Insurance relating to personal possessions; Planning services relating to life assurance; Health insurance underwriting; Underwriting of business insurance (Services for the -); Insurance for legal expenses; Accident insurance underwriting; Real estate insurance services; Insurance for garages; Insurance against loss of credit; Consultancy services relating to insurance; Providing insurance information; Financial evaluation [insurance, banking, real estate]; Insurance against loss of documents; Medical insurance underwriting; Advisory services relating to life insurance; Life insurance agencies; Marine insurance underwriting; Claim adjustment for non-life insurance; Underwriting of personal accident insurance (Services for the -); Claims adjustment for non-life insurance; Mortgage banking insurance; Financial advisory services relating to life assurance; Underwriting relating to transport insurance; Providing information relating to life insurance underwriting; Consultancy and brokerage services relating to health insurance; Consultancy and brokerage services relating to travel insurance; Consultancy and brokerage services relating to vehicle insurance; Consultancy and brokerage services relating to home insurance; Consultancy and brokerage services relating to accident insurance; Consultancy and brokerage services relating to life insurance; Providing purchase protection insurance for goods purchased using credit cards; Financial services relating to the issuance and sale of mortgage-backed securities.

The applicant argues in its observations that the opponent operates in France and only with regard to a specific insurance contract, which differs from the contested services, and consequently that they operate in different sectors and target different clients. The Opposition Division notes that the comparison of the services must be based on the wording indicated in the respective lists of services. Any actual or intended use not stipulated in the list of services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the applicant’s arguments must be dismissed as irrelevant for the purposes of the present assessment.

Financial evaluation [insurance, banking, real estate] are identically contained in both lists of services.

All other contested goods, except financial services relating to insurance; financial services relating to the issuance and sale of mortgage-backed securities are included in the broad category of, or overlap with, the opponent’s services insurance. Therefore, they are identical.

The contested financial services relating to insurance; financial services relating to the issuance and sale of mortgage-backed securities are included in the broad category of the opponent’s financial services. Therefore, they are identical.

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 target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, 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

CONSENSIO
Earlier trade mark	Contested sign

The relevant territory is France.

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 contested mark is composed of three verbal elements ‘CONSENSUS’, ‘INSURANCE SERVICES’, the first one in black large letters and the other two much smaller and in light grey letters. The figurative element on top of the verbal element ‘CONSENSUS’ is a yellow square divided into two parts by a white vertical semi-circle.

The earlier mark word mark is composed of the word ‘CONSENSIO’, which is meaningless and, therefore, distinctive for the relevant services. Nevertheless, the relevant public might perceive the French word ‘consentir’ or ‘consensus’ in it, meaning ‘agreement in attitude, opinion or thought’.

The large verbal element ‘CONSENSUS’ of the contested mark means ‘agreement’. This is distinctive for the relevant services as it is not descriptive or in any other manner weak/non-distinctive regarding the characteristics of the services. Below are the English words ‘INSURANCE SERVICES’ which are descriptive of the relevant services and, therefore, non-distinctive. These are also basic terms for the specialized public. Furthermore, the Opposition Division considers these verbal elements negligible, as they are much smaller in size than the word ‘CONSENSUS’. Consequently, they are not noticeable at first sight and very likely to be disregarded by the relevant public. Even if it is noticed by the public, they are entirely descriptive for the services.

The figurative element of the contested sign consists of a simple geometrical shape, although divided into two parts, is of purely decorative nature. Therefore, the verbal element ‘CONSENSUS’ is more distinctive than the figurative 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).

The verbal element ‘CONSENSUS’ and the figurative element of the contested mark are visually striking and, therefore, co-dominant.

Visually and aurally, the signs coincide in ‘CONSENS**’ and differ in their endings ‘IO’/’US’, as well as in the figurative element of the contested sign, which has a very limited impact in the comparison. 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. As stated before, the verbal element ‘INSURANCE SERVICES’ is negligible, and if perceived, non-distinctive, therefore, with barely any impact. Consequently, the signs are visually similar to an average degree and aurally to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar, if not identical meaning, namely ‘CONSENSUS’/’CONSENTIR’, the signs are conceptually highly similar. In case the earlier sign will only be perceived as a fantasy word without any meaning, the signs are conceptually not similar.

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 services question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 23).

The services are identical, the earlier mark has a normal degree of distinctiveness and the relevant public will have a higher degree of attention with regard to these insurance/finance services.

The signs are visually similar to an average degree, aurally to an above average degree based on the identity of seven out of nine letters ‘CONSENS**’ in their distinctive verbal element. Conceptually the signs are either highly similar in case the relevant public perceive both signs as ‘CONSENSUS’ and if they do not related ‘CONSENSIO’ to that meaning, there will not be a conceptual similarity between them.

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). In the present case, the relevant consumer will remember ‘CONSENS**’ and not necessarily remember the last two letters, even less, in case of identical services.

In cases where the services are identical, like in the present case, the differences between the signs should be significant and relevant to a degree that will allow consumers, even for those with a high level of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them. This is not the case in the present case.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘CONSENSIO’ or ‘CONSENSUS’. In support of its argument the applicant refers to some trade mark registrations in Europe.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘CONSENSIO’. Under these circumstances, the applicant’s claims must be set aside.

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

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 883 496. It follows that the contested trade mark must be rejected for all the contested services.

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

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

The Opposition Division

Gonzalo BILBAO TEJADA

Astrid Victoria WÄBER

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.