OPPOSITION No B 3 088 383

Elisa Oyj, Ratavartijankatu 5, 00520, Helsinki, Finland (opponent), represented by Borenius Attorneys Ltd, Eteläesplanadi 2, 00130, Helsinki, Finland (professional representative)

a g a i n s t

MariCare Oy, Pohjantähdentie 17, 01450 Vantaa, Finland (applicant), represented by Papula Oy, Mechelininkatu 1 a, 00180 Helsinki, Finland (professional representative).

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

DECISION:

1. Opposition No B 3 088 383 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 032 407 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 032 407 for the word mark ‘eLsa’. The opposition is based on, inter alia, European Union trade mark registration No 16 337 602 and on Finnish trade mark registrations No 234 195 and No 245 160, all for the word mark ‘ELISA’. 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 European Union trade mark registration No 16 337 602 and Finnish trade mark registrations No 234 195 and No 245 160.

1. The goods and services

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

European Union trade mark registration No 16 337 602:

Class 9: Computer software.

Finnish trade mark registration No 234 195:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and coin-operated apparatus for machines; cash registers, calculating machines, data processing equipment, computers.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Finnish trade mark registration No 245 160:

Class 45: Security services for the protection of property and individuals.

The contested goods and services are the following:

Class 9: Measuring apparatus, namely, sensors, sensor films and other electronic apparatus for counting, monitoring movement and position of people, animals or objects on a given area; computer software for receiving data from sensors and to display data to end users.

Class 42: Scientific and industrial research in the field of sensor technology and its applications.

Class 45: Security services for the protection of property and individuals, namely to counting and monitoring movement of people, animals or objects on a given area through sensor technology; personal and social services rendered by others to meet the needs of individuals, namely to monitor unusual position, movement or non-movement of people, animals or objects through sensor technology.

An interpretation of the wording of the contested list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

Contested goods in Class 9

The contested measuring apparatus, namely, sensors, sensor films and other electronic apparatus for counting, monitoring movement and position of people, animals or objects on a given area are included in the broad category of the opponent’s measuring apparatus and instruments covered by earlier Finnish TM No 234 195. Therefore, they are identical.

The contested computer software for receiving data from sensors and to display data to end users are included in the broad category of the opponent’s computer software covered by the earlier EUTM. Therefore, they are identical.

Contested services in Class 42

The contested scientific and industrial research in the field of sensor technology and its applications are included in the broad category of the opponent’s scientific and technological services and research and design relating thereto covered by earlier Finnish TM No 234 195. Therefore, they are identical.

Contested services in Class 45

The contested security services for the protection of property and individuals, namely to counting and monitoring movement of people, animals or objects on a given area through sensor technology are included in the broad category of the opponent’s security services for the protection of property and individuals covered by earlier Finnish TM No 245 160. Therefore, they are identical.

The contested personal and social services rendered by others to meet the needs of individuals, namely to monitor unusual position, movement or non-movement of people, animals or objects through sensor technology are limited, as the usage of the term ‘namely’ indicates, to services related to the monitoring of the movements and position of people, animals and/or objects. Therefore, they cannot be clearly separated from the broad category of the opponent’s security services for the protection of property and individuals covered by earlier Finnish TM No 245 160, which may also encompass services for the monitoring and control of movements. When provided to individuals or to a given social group, the opponent’s services can also be considered to form personal or social services (respectively), all related to the same specific field: monitoring the movements and/or position of people, animals and/or objects. Consequently, these broad categories of services overlap and are, therefore, considered 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 goods and services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise in market sectors like the provision of security services or the scientific and industrial research.

The degree of attention will vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

ELISA	eLsa
Earlier trade marks	Contested sign

The relevant territory is the European Union in relation to the earlier EUTM and Finland in relation to the two earlier Finnish marks.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs under comparison are word marks. The earlier marks, ‘ELISA’, will be understood throughout the EU as a female given name. The name in question derives from (and is a popular shorter form thereof) the name Elisabeth, which also has other popular variants and abbreviations, such as Élise, Eliza, Lisa or Elsa.

The contested sign consists of the verbal element ‘eLsa’. The spelling chosen by the applicant departs from the usual way of writing, as it includes an ‘irregular capitalisation’ of the second letter ‘L’. Such irregular capitalisations must be taken into account in the comparison, as they may have an impact on how the public perceives the sign, and consequently, on the assessment of similarity. In the present case, the Opposition Division notes that the introduction of the capital ‘L’ does not create or bring to light any meaningful unit (a significant element) in the sign, that would otherwise go unnoticed or be ignored, if the sign were spelled fully in capitals or in lower case letters.

It is possible that a part of the public may comprehend the sign as some sort of abbreviation with an unclear meaning. Nonetheless, as the verbal element in question still displays clearly a popular feminine given name, ‘ELSA’, and considering that the use of a capital letter ‘L’ in the second character is not sufficient to detract the attention from this clear meaning - nor does it create or bring to light any other meaning-, the Opposition Division considers that a substantial part of the public in the European Union will associate the contested sign with the female name ‘Elsa’, by comprehending it and reading it as a whole, as a conceptual unit.

For the purpose of procedural economy, the Opposition Division will focus the comparison of signs on the aforementioned substantial part of the public which will recognise the name ‘Elsa’ in the contested sign.

For the referred public, both ‘ELISA’ and ‘eLsa’ have no descriptive or otherwise allusive meaning in relation to the relevant goods and services, as they will be perceived as given names. These terms are, therefore, inherently distinctive to an average degree in relation to the relevant goods and services.

Visually and aurally, the signs coincide in the letters ‘EL’ and ‘SA’ of the terms ‘eLsa’ and ‘ELISA’ and in the sound or their pronunciation. These coinciding letters form the entire contested sign. The signs differ only in the additional letter ‘I’ of ‘ELISA’.

It must be noted that consumers generally tend to focus on the initial part of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the beginning of the sign (the initial part) the one that first catches the attention of the reader. Therefore, it is relevant that the signs coincide in their initial letters ‘EL-’, whereas the only differing letter is placed in the middle, and less conspicuous, section of the earlier marks.

Therefore, considering that the signs coincide in the majority of their letters and also the identical positioning of these coinciding characters (first two and last two letters), the marks are considered visually similar to an average degree.

Aurally, bearing in mind that the additional vowel (‘I’) in the earlier marks determines that they will be pronounced in three syllables (‘E-LI-SA’), whereas the contested sign will be pronounced in two (‘EL-SA’), the signs are considered similar to a lower than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the substantial part of the public taken into consideration, both signs will be associated with a female given name.

The mere fact that two names can be grouped under a common generic term of ‘names’ does not constitute, per se, a relevant conceptual similarity. However, in the present case, the names ‘Elisa’ and ‘Elsa’ have a common origin. As covered above, ‘Elisa’ is a common short form/variant used for the name ‘Elisabeth’ whereas ‘Elsa’ also derives from that same name and constitutes another frequently used variant of it. This leads to a relevant conceptual link between the signs, as they will be perceived as variants/versions of the same name. Therefore, the signs are deemed conceptually similar to an average degree.

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.

According to the opponent, the earlier marks have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods and services are identical to the goods and services covered by earlier EUTM No 16 337 602 and Finnish marks No 234 195 and No 245 160. The earlier marks have an average degree of inherent distinctive character.

The signs under comparison are visually similar to an average degree and aurally similar to a lower than average degree, on account of the coinciding letters in their distinctive verbal elements: the initial letters ‘EL-’ and the final letters ‘-SA’, which form the entire contested sign and four out of the five letters of the earlier marks. As previously explained, the coincidence in these letters/sounds is a relevant one, because the signs have a similar length and the coincidences are placed in the same positions (first two and last two letters). The only differing letter (‘I’) appears in the mid-section of the earlier marks and is not sufficient to establish a striking difference between them, considering that the remaining letters coincide entirely.

In this regard, although the signs differ in the referred third letter of the earlier marks, account must be 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 addition, there is a relevant conceptual link between the signs, as they will be perceived as female names deriving from - or being different variants/versions of -, the same name, ‘Elisabeth’.

Furthermore, in determining the existence of likelihood of confusion, the Opposition Division must also take into consideration the principle that a likelihood of confusion implies some interdependence among the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or 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). Therefore, it is considered that the identity of the goods and services at issue outweighs and offsets any differences resulting from the comparison of the signs, including the lower than average degree of aural similarity.

Consequently, taking into consideration all the circumstances of the case, the Opposition Division concludes that the marks under comparison convey a similar overall impression, which is not counteracted by the differences established between them. Considering all the above and weighing up all the relevant factors, there is a likelihood of confusion on the substantial part of the public taken into consideration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM No 16 337 602 and Finnish TM’s No 234 195 and No 245 160. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation, as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As the earlier EUTM No 16 337 602 and Finnish TM’s No 234 195 and No 245 160 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

	Dorothée SCHLIEPHAKE		Gueorgui IVANOV		Jiri JIRSA

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.