OPPOSITION Nо B 3 103 811

 

The Co-Operative Bank Plc, P.O. Box 101 1 Balloon Street, Manchester M60 4EP, United Kingdom (opponent), represented by Marks & Clerk LLP, 1 New York Street, Manchester M1 4HD, United Kingdom (professional representative)

 

a g a i n s t

 

Stephania Mohrbutter, Lürmannstr. 55, 49074 Osnabrück, Germany (applicant), represented by Christian Weil, Hauptstraße 90, 50996 Köln, Germany (professional representative).

On 18/02/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 103 811 is upheld for all the contested services, namely: Class 36: Insurance; financial affairs; monetary affairs; insurance and financing of dentures.
2.	European Union trade mark application No 18 076 216 is rejected for all the contested services. It may proceed for the remaining goods and services.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 076 216 for the figurative mark , namely against all the services in Class 36. The opposition is based on European Union trade mark registration No 1 676 253 and United Kingdom trade mark registration No 21 980 89B, both for the word mark 'SMILE' in relation to which the opponent invoked  Article 8(1)(b) EUTMR. The opposition is also based on a non-registered sign used in the course of trade in the United Kingdom, also for the word mark 'SMILE', in relation to which the opponent invoked Article 8(4) EUTMR.

PRELIMINARY REMARKS 

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1)(b) and Article 8(4) EUTMR, worded in the present tense, must also be fulfilled at the time of taking the decision.

 

As a result, United Kingdom trade mark registration No 21 980 89B and the non-registered sign used in the course of trade in the United Kingdom, both for the word mark 'SMILE', in relation to which the opponent invoked Article 8(1)(b) and Article 8(4) EUTMR respectively can no longer form a valid basis of the opposition.

Consequently, the opposition must be dismissed insofar as it is based on those earlier rights and the ground of Article 8(4) EUTMR.

Moreover, the Opposition Division notes that in its further facts, arguments and evidence submitted on 18/05/2020, the opponent, apart from submitting arguments concerning likelihood of confusion between the signs in accordance with Article 8(1)(b) EUTMR also submitted claims under Article 8(5) EUTMR, namely that the use of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks, including of the earlier European Union trade mark registration No 1 676 253.

However, pursuant to Article 46(1) and 46(3) EUTMR and Article 2(2)(c) and Article 5(2) and 5(3) EUTMDR, the opponent must specify the grounds on which the opposition is based within the opposition period, namely within the period of three months following the publication of the contested European Union trade mark application failing which the opposition shall be rejected as inadmissible.

In this respect, the contested application was published on 21/08/2019 and the opposition period therefore ended on 21/11/2019. The opponent’s claims under Article 8(5) EUTMR, specified for the first time as a ground for opposition on 18/05/2020, were thus made only after the expiry of the opposition period. As a result, the opponent’s arguments and claims based on Article 8(5) EUTMR as a ground for the opposition must therefore be rejected as inadmissible and cannot be taken into consideration in the present proceedings.

Nevertheless, the examination of the opposition may proceed on the basis of European Union trade mark registration No 1 676 253 for the word mark 'SMILE' in relation to which the opponent invoked Article 8(1)(b) EUTMR within the opposition period as outlined above.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

 

a) The services

 

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

 

Class 36: Financial banking and insurance services; advisory services relating to financial, banking and insurance; investment, credit, savings, loan and safe deposit services; financial management and assistance; credit and finance services; asset finance; capital investment services; tax advice; financial, banking and insurance services provided in an online environment or via the Internet.

 

The contested services are the following:

 

Class 36: Insurance; financial affairs; monetary affairs; insurance and financing of dentures.

Contested services in Class 36

Financial affairs; insurance are identically contained in both lists of services (including synonyms).

The contested insurance of dentures is included in the opponent's broad category of insurance services. Therefore, they are identical.

The contested monetary affairs; financing of dentures are included in the opponent's broad category of finance services. Therefore, they are identical.

 

b) Relevant public — degree of attention

 

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

In the present case, the services found to be identical are directed at public at large, who 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).

c) The signs

 

SMILE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word mark 'SMILE'.

The contested sign is a figurative mark consisting of the verbal element 'SpeedSmile' depicted as two capitalised words in grey standard typeface, the first of which in italics and, above that element in a central position, there is a stylised capital letter 'S' with some speed lines.

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.

 

All the words in both signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the relevant territory, such as that in Ireland and Malta.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). In this respect, both 'Speed' and 'Smile' will have a clear meaning for the relevant public under analysis as explained further below. Moreover, the verbal element of the contested sign is depicted as two capitalised words, one of which in italics as outlined above. Therefore, the relevant public will immediately perceive the verbal element of the contested sign as consisting of those two words, even if not separated by a space.

 

The coinciding word 'SMILE' will be understood by the relevant public under analysis as referring to 'a facial expression characterized by an upturning of the corners of the mouth, usually showing amusement, friendliness, etc, but sometimes scorn, etc' (information extracted from Collins English Dictionary on 15/02/2021 at www.collinsdictionary.com/dictionary/english/smile). Since this concept has not as such any particular meaning in relation to the services concerned, the verbal element 'SMILE' in both signs will be perceived as distinctive to a normal degree.

As regards the additional word 'Speed' in the contested sign, it will be understood as referring to 'the act or quality of acting or moving fast; rapidity' (information extracted from Collins English Dictionary on 15/02/2021 at www.collinsdictionary.com/dictionary/english/speed). Regardless of the degree of distinctiveness of the word 'Speed' and irrespective of whether or not it could be considered less distinctive, as such, than the element 'Smile' in relation to the services concerned, since consumers will perceive the word 'Speed' within the contested sign as an adjective that always precedes the noun it describes, they will rather focus their attention on the subsequent noun 'Smile' (see by analogy 08/09/2016, R 2166/2015-1, PEACEFUL HOOLIGAN / HOOLIGAN, § 50 and 53).

As regards the additional letter 'S' of the contested sign, even if it must be considered to be distinctive as such in relation to the services concerned, it is likely to be perceived as the initial letter of the verbal element underneath, 'SpeedSmile', which is further reinforced by the speed lines depicted. As a result, even if distinctive as such, the additional letter 'S' will still be perceived as a secondary element of the contested sign.

The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

As a final remark, it should be taken into account that in the case of word marks, it is the words as such that are protected and not their written form. Therefore, it is irrelevant, for the purposes of the comparison of the signs that the coinciding verbal element 'SMILE' is depicted in upper case letters in the earlier mark whereas it is depicted as a capitalised word in the contested sign insofar as the capitalisation of that word does not depart from the usual way of writing (see to this effect 31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57).

Visually, the signs coincide in the distinctive word ‘SMILE’, which is the only element of the earlier mark. However, they differ in the additional word ‘Speed’, present at the beginning of the verbal element in the contested sign and the additional letter 'S' at the top of that sign. However, for the reasons set out above, both of these elements will be perceived as secondary elements within the overall impression produced by the contested sign. Furthermore, neither the stylisation (being a standard typeface) nor the colour of the verbal element is of such a nature as to detract the consumers’ attention away from the words themselves.

Therefore, the signs are visually similar to at least a below average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‛SMILE’, present identically in both signs and which is the element of the contested sign on which consumers will focus their attention for the reasons outlined above. The pronunciation differs in the sound of the additional word ‛Speed’ of the contested sign, which has no counterpart in the earlier mark. However, as regards the additional letter 'S' in the contested sign, since it is likely to be perceived as the initial letter of the subsequent verbal element 'SpeedSmile', it is unlikely to be pronounced by consumers when referring to that sign.

 

Therefore, the signs are aurally similar to an average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the part of the public under analysis. The additional conceptual content, ‘Speed’, conveyed by the contested sign only serves to qualify the coinciding concept of ‘SMILE’ but will not alter its meaning. Furthermore, the additional letter ‛S’ in the contested sign does not convey a concept as such but is likely to be associated with the verbal element 'SpeedSmile' underneath (thus only reinforcing the concept(s) conveyed by that verbal element).

Therefore, the signs are also 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.

 

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 enjoys an enhanced scope of protection due to its reputation. 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 has no particular meaning for any of the services in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

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

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 goods/services covered are from the same or economically linked undertakings.

In the present case, the services concerned are identical and the degree of attention of the relevant public will be quite high.

The signs have been found to be visually similar at least to a below average degree and aurally as well as conceptually similar to an average degree.

The applicant argues that the consumer has no reason to neglect the letter 'S' and the word 'Speed' in the contested sign and that consumers will see the differences between the signs very quickly. Furthermore, according to the applicant small differences are sufficient to neglect a likelihood of confusion between the signs.

 

However, the earlier mark enjoys a normal degree of distinctiveness and is fully contained in the contested sign. Although the contested sign also contains the additional word 'Speed' present at the beginning where consumers normally pay more attention, for the reasons outlined above in section c) of this decision, consumers will rather focus their attention on the coinciding element 'Smile', which is distinctive. Furthermore, even if the contested sign also contains the additional letter 'S', since it is likely to be perceived as the initial letter of the subsequent verbal element 'SpeedSmile' consumers are likely to pay more attention to that element.

Therefore, even if the relevant public will perceive that there are differences between the signs on account of the additional elements in the contested sign as argued by the applicant, the fact remains that consumers will primarily focus on the coinciding word 'Smile' in the contested sign, which is the sole element of the earlier mark.

As a result, even if consumers are unlikely to directly confuse the trade marks themselves, they are still likely to believe that the identical services concerned offered under the signs in dispute originated from the same or economically linked undertakings on account of their coincidence in the distinctive word 'Smile'.

Considering all the above, there is a likelihood of confusion on the English-speaking part of the public in the relevant territory, such as that in the Ireland and Malta, within the meaning of Article 8(1)(b) EUTMR. 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 European Union trade mark registration No 1 676 253. It follows that the contested trade mark must be rejected for all the contested services.

 

Since the opposition is fully 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. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

 

 

Loreto URRACA LUQUE

Sam GYLLING

Begoña URIARTE VALIENTE

 

 

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.