OPPOSITION No B 3 097 821

Vinngroup AB, Kvarnbergsgatan 2, 411 05 Göteborg, Sweden (opponent), represented by Brimondo AB, Kvarnbergsgatan 2, 41105 Göteborg, Sweden (professional representative)

a g a i n s t

Vinnergi AB, Västerbrogatan 8A 5TR, 503 30 Borås, Sweden (applicant), represented by Vamo Varumärkesombudet AB, Kungsportsavenyen 21, 411 36 Göteborg, Sweden (professional representative).

On 19/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 097 821 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 083 409 for the figurative mark .

The opposition is based on, inter alia, European Union trade mark registration No 17 892 947 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 17 892 947.

a) The services

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

Class 35: Marketing consulting; Consultancy relating to advertising; Personnel management consultancy; Public relations consultancy; Business marketing consultancy; Consultancy regarding public relations communication strategies; Business management.

Class 36: Investment consultancy; Investment services; Investment research; Financial investment; Financial investment advisory services; Investment information.

Class 42: Civil engineering; Electrical engineering services; Engineering services; Engineering consultancy services; Telecommunications engineering; Engineering services relating to computers; Engineering research.

The contested services are the following:

Class 35: Commercial trading and consumer information namely procurement, for others; Business assistance, management and administrative services; Human resources management and recruitment services; Providing of staff for staffing; Temporary personnel services; Employment agencies; Administrative data processing; Office functions; Business consultancy and advisory services; Business analysis, research and information services; Business development services; Project management (professional business consultancy and advice); Marketing studies; Collection and systematization of business data; Business project management services for construction projects; And rental and leasing in connection with the aforesaid, included in this class; And advice, consultancy and information relating to the aforesaid, included in this class.

Class 37: Building, construction and demolition; Implementation of computers and systems; installation, Cleaning, repair, Project management and maintenance of networks and WiFi solutions; Installation, cleaning, repair and maintenance, Project management, Construction management and design relating to electrical power grids; Computer hardware and telecommunication apparatus installation, maintenance and repair; Installation, maintenance and repair of networks and telecommunications solutions; Installation of wireless telecommunications equipment and wireless local area networks; Construction project management services; Building construction supervision services for real estate projects; Installation of electric light and power systems; Fire alarm installation; And rental and leasing in connection with the aforesaid, included in this class; And advice, consultancy and information relating to the aforesaid, included in this class.

Class 38: Telecommunication services; Operation of wide-band telecommunications networks; Provision of broadband telecommunications access; Broadcasting services; Telephone and mobile telephone services; Computer communication and Internal access; Telecommunications services, namely providing fiber optic network services; Operation of networks; Radio communications for broadband; Provision of access to content, websites and portals; Providing telecommunications access to server centres; Provision and rental of telecommunications facilities and equipment; Operation of a telecommunications network; Electronic communications consultancy; Telecommunications consultancy; Consulting services in the field of electronic communications; Information, consultancy and advisory services relating to telecommunications; Communication network consultancy; Telecommunications consultancy; Consultancy services relating to data communications; And rental and leasing in connection with the aforesaid, included in this class; And advice, consultancy and information relating to the aforesaid, included in this class.

Class 42: IT services; Software development, programming and implementation; Development of computer software solutions; Computer systems integration services; Provision of on-line support services for computer program users; Providing of computer software and applications; Providing temporary use of online, non-downloadable computer software and applications; Providing temporary use of non-downloadable software and applications; Computer hardware development; IT security, protection and restoration; Monitoring of network systems; Development of technologies for the protection of electronic networks; Hosting services and software as a service and rental of software; Hosting of computerized data, files, applications and information; Consulting in the field of cloud computing networks and applications; Development of computer based networks; Operational and network security (IT services); Migration (IT services); Application operations (IT services); Network services and cloud computing; IT operations (IT services); Server operations; Server administration; Network architecture (IT services); Science and technology services; Engineering services; Technological consultation services; Electrical engineering consultancy; Technical consultancy relating to network infrastructure, Operational safety and optimised operations; Engineering relating to design; Surveying and exploration services; Technical surveying; Surveying; Engineering surveying; IT consultancy, advisory and information services; Provision of technical support in the operation of computing networks; Design services; Platform as a Service [PaaS]; Rental of computer hardware and facilities; Data duplication and conversionservices; data coding services; Computer analysis and diagnostics; research and development of computers and systems; Project management relating to computers; Data mining; Digital watermarking; Computer services; Technological services relating to computers; Services relating to data networks (IT services); Updating of memory banks relating to computer systems; Data migration services; updating worldwide web pages for others; Monitoring of computer systems by remote access; Natural science services; Testing, authentication and quality control; And rental and leasing in connection with the aforesaid, included in this class; And advice, consultancy and information relating to the aforesaid, included in this class.

Some of the contested services are identical or similar to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary between average and higher than average, depending on the price, specialised nature, or terms and conditions of the services purchased.

c) The signs

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 figurative. Despite the stylisation of letters, the word ‘vinn’ is discernible. For the Swedish-speaking part of the relevant public the word ‘vinn’ is the imperative of the Swedish word ‘vinna’ which is the equivalent of the English verb ‘to win’. If perceived with this meaning, it is likely to be considered as laudatory and of limited distinctiveness. For the remaining part of the relevant public the word ‘vinn’ has no meaning and is distinctive to a normal degree in relation to the relevant services.

The element to the right of the word ‘vinn’, given its size, is rather secondary. It is likely to be perceived by the consumer as a decorative component and not a component indicating the commercial origin of the services (01/03/2016, T 61/15, 1e1 / UNOE et al., EU:T:2016:115, § 61). According to the opponent, this element represents an asterisk which suggests that the word ‘vinn’ could be followed by other word elements. However, even if this element is perceived in this way, it does not mean that the consumer would perceive the component ‘ERGI’ of the contested sign as the added part to the component ‘VINN’.

The word ‘VINNERGI’ of the contested sign has no meaning as such in the languages of the relevant territory. It is distinctive to a normal degree in relation to the relevant services.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a verbal sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Referring to this case-law and the submitted pages/printouts from www.wordsense.eu/-ergy, https://dictionary.cambridge.org/dictionary/english/synergy and www.collinsdictionary.com/dictionary/english/energy, the opponent argues that the element ‘VINNERGI’ of the contested sign will be broken down by the consumers into ‘VINN’ and ‘ERGI’. With reference to the attached documents, the opponent indicates that ‘“ergi” is a suffix that will be associated with the suffix -ergy from Ancient Greek -εργία (-ergía), from ἔργον (érgon, “work”)’ and that this suffix is part of English words such as ‘synergy’ and ‘energy’ that ‘relate to power, capacity, ability of an activity or of a cooperation’. In view of this, the opponent considers that this element is weak for all the contested services which are provided mainly to businesses as a support of their services. However, the Opposition Division considers that any such connotation presented by the opponent is not obvious and would require a more detailed analysis which is usually not performed by consumers. The search results showing the numbers of registered trade marks with the suffixes ‘-INNERGY’ or ‘-ERGY’ do not demonstrate that the consumers will interpret these components in the way presented by the opponent. Furthermore, the Opposition Division notes that the existence of various 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 ‘-INNERGY’ or ‘-ERGY’. Under these circumstances, the applicant’s claims must be set aside.

In view of the above it is concluded that the consumers are not likely to single out the component ‘VINN’ in the contested sign as an independent element because it is not visually separated by any space, hyphen or upper/lower case lettering from the ‘ERGI’ combination that follows. Furthermore, for the Swedish-speaking consumers the word ‘VINN’, when it is presented on its own, is an imperative from of the Swedish word ‘vinna’ (to win’). However, ‘ERGY’ is not an established suffix in Swedish. Therefore, even the consumers who understand the word ‘VINN’ will perceive word ‘VINNERGI’ as a whole, either as a meaningless term or as a fanciful play on words ‘vinn’ and ‘energy’. Similarly, the combination ‘VINNERGY’ may evoke the concept of ‘wind energy’ for the Danish-speaking consumers. However, the word ‘VINN’, on its own (as it is in the earlier mark) does not evoke any particular or obvious concept for the Danish-speaking consumers. Apart from being considered as meaningless, it is more likely to evoke the concept of ‘wine’ (‘vin’ in Danish) rather than being associated with ‘wind’ (‘vind’ in Danish).

The opponent also argues that the element ‘WE MAKE YOUR FUTURE SMART’ is not only written in considerably smaller letters but also consists of words belonging to the basic English vocabulary and will be understood as a value statement connected to the relevant services and consequently weak. Bearing in mind that the similarities between signs are higher where the elements of difference are less distinctive, any difference identified in an element that is less distinctive would favour the opponent’s case. Consequently, the assessment of the signs from the perspective of the consumers for whom the element ‘WE MAKE YOUR FUTURE SMART’ of the contested sign is weak considers the opponent’s case at its strongest point. At least some consumers may consider the whole expression element ‘WE MAKE YOUR FUTURE SMART’ of the contested sign as a promotional slogan, in which case it would be a weak element. In any event, this word catches less attention of the consumers because of its smaller size as compared to other elements of the contested sign.

As to the contested sign’s figurative element, the opponent argues that when a sign consists 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 applicant argues that the verbal element of a sign does not necessarily have a stronger impact and refers to some case-law in support of its argument.

The parties presented arguments and references to case-law in relation to the impact of the verbal and figurative components of the contested sign. As indicated by the opponent, in principle, when a sign consists 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). However, it does not automatically follow that the word element must always be considered to be dominant. The figurative element of a composite mark may, for example owing to its size, position or depiction, rank equally with the word element’ (12/11/2015, T-450/13, WISENT VODKA / ŻUBRÓWKA et al., EU:T:2015:841, § 74; 23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 37).

The opponent refers to the judgment where the Court stated that ‘[w]here the verbal element of a mark is substantially longer than the figurative element of that mark, it attracts more attention on the part of the average consumer because of its larger size’ (08/07/2020, T-328/19, SCORIFY (fig.) / Scor et al., EU:T:2020:311, § 60). However, in the present case, the verbal element is not substantially longer than the figurative element.

The figurative element constitutes a visible feature within the overall impression of the contested sign. It may be perceived as a highly stylised letter ‘V’ set against a red circular background. The consumers are aware that it is not uncommon for marks made up of words to be associated with symbols that refer, in a concise manner, to the mark. Therefore, the consumers are likely to consider that the highly stylised letter ‘V’ of the sign refers to the word ‘VINNERGI’ of that mark and, therefore, that its role is ancillary. For the same reason, as well as for economy of language, the letter ‘V’ is not likely to be pronounced separately from the word ‘VINNERGI’ (15/02/2012, R 45/2011-11 – ‘S Spalding’, § 26). Furthermore, despite its position at the top of the sign, the figurative element of the contested sign does not overshadow the word ‘VINNERGI’. The letters of the word ‘VINNERGI’ are fairly standard and clearly legible. The expression ‘WE MAKE YOUR FUTURE SMART’ at the bottom of the contested sign is written in much smaller letters and is less eye-catching than the other elements (the figurative element and the verbal element ‘VINNERGI’), which co-dominate the contested sign.

The comparison of signs must be based on the overall impression given by the marks. As to the opponent’s argument that the coinciding string of letters ‘VINN’ at the beginning of the dominant element of the contested sign attracts more attention because of its position, it should be pointed out that while, in principle, the initial part of word marks is more likely to capture the attention, this argument cannot hold in all cases. The Opposition Division needs to take into account and weigh up all the relevant factors. In the present case, the relevance of the position of the component ‘VINN’ at the beginning of the word ‘VINNERGI’ is attenuated by the fact that this component is not likely to be perceived independently in the contested sign. Furthermore, the Opposition Division needs also to consider the impact that the additional elements of the contested sign have on the overall impression given by this sign.

Visually and aurally, although the initial part of the word ‘VINNERGI’, which co-dominates the contested sign, shares with the earlier mark the string of letters (sounds) ‘VINN’, the additional letters (sounds) ‘ERGI’ create a sufficiently different visual and aural impression. The coincidence in ‘VINN’ is not particularly relevant in the present case because, as explained above, it is not likely to be perceived in isolation in the contested sign. These letters form the entire verbal element of the earlier mark while in the contested sign, they form part of the word ‘VINNERGI’. Even if the word ‘VINN’ has a meaning in Swedish, its distinctiveness is limited. Consequently, the coincidence in this element is not particularly relevant also from the perspective of the Swedish-speaking part of the public. Furthermore, the letters that the signs have in common are in lower case in the earlier mark and in upper case in the contested sign. In addition, the signs have different structures and, irrespectively of their impact, the other elements of the signs only add additional differences. The rhythm and intonation also differ due to the differences in the length and structure of the word elements of the signs.

In view of the above, the signs are visually and aurally at best similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. If the element to the right of the word ‘vinn’ of the earlier mark is perceived as an asterisk, its conceptual impact cannot be significant, if any, as it is not likely to be considered as indicating the commercial origin of the relevant services. If the expression ‘WE MAKE YOUR FUTURE SMART’ of the contested sign is considered as meaningful, it only adds a conceptual difference, although it has no significant impact if it is perceived as a promotional slogan. For the Swedish-speaking consumers for whom the word ‘VINN’ has a meaning, it has limited distinctiveness and is joined by the suffix ‘ERGI’ in the contested sign. For the Danish-speaking consumers, any association of the earlier mark is not sufficiently clear to create a relevant conceptual similarity with the contested sign. Therefore, the signs are conceptually similar at best to a low degree for these consumers. For the remaining part of the public the signs are 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.

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.

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. Considering what has been stated in section c) of this decision, the distinctiveness of the earlier mark must be seen as limited for the Swedish-speaking part of the public and normal for the remaining part of the public.

e) Global assessment, other arguments and conclusion

The contested services are assumed to be identical to those of the earlier mark. The signs are visually and aurally similar at best only to a low degree on account of the coincidence in the string of letters ‘VINN’. Conceptually, depending on the perception of the relevant public, the signs are not similar or at best similar to a low degree.

The coincidence in the string of letters ‘VINN’ is either not perceptible as an independent element or cannot be given much weight while the differences are clearly perceivable for the consumers whether with normal or higher degree of attention and they are sufficient to exclude any likelihood of confusion between the marks, despite the assumed identity of the contested services with those of the earlier mark.

This finding is not called into question by the various previous cases referred to by the opponent as they concern other signs.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

 European Union trade mark registration No 17 903 400 for the word mark ‘Vinnter’;

 European Union trade mark registration No 17 684 069 for the word mark ‘Vinngroup’;

 European Union trade mark registration No 17 684 127 for the word mark ‘Vinn Venture’;

 European Union trade mark registration No 17 887 303 for the word mark ‘Invinn’;

 European Union trade mark registration No 17 884 062 for the word mark ‘Goovinn’;

 European Union trade mark registration No 17 880 493 for the word mark ‘Provinn’;

 European Union trade mark registration No 17 877 916 for the word mark ‘Eyevinn’.

The earlier European Union trade mark No 17 903 400, ‘Vinnter’, may be associated with ‘WINTER’ (e.g. by the Danish-speaking consumers). The Swedish-speaking consumers may also associate it with ‘winter’ or consider it as a play on words ‘vinn’ (win) and ‘vinter’ (winter). This creates a significant conceptual difference between this earlier mark and the contested sign. For the consumers for whom the word ‘Vinnter’ is meaningless, the coinciding part ‘VINN’ is at the beginning of the earlier mark and the contested sign’s element ‘VINNERGI’ but it does not play an independent distinctive role within them. The coincidences in the letters ‘E’ and ‘R’ are not likely to be noticed as they are in different positions and form part of different strings of letters ‘TER’ v ‘ERGI’. The pronunciation of the signs also differs in the rhythm and intonation. Furthermore, the additional elements of the contested sign additionally create sufficiently different overall impression. Therefore, this earlier mark is not considered more similar to the contested sign. Similar considerations apply to the remaining trade marks on which the opposition is also based. Even if the additional words (‘group’, ‘Venture’) are considered weak, the coincidence in the component ‘VINN’ is not sufficient for finding a likelihood of confusion for the same reasons which were explained when comparing the earlier European Union trade mark registration No 17 892 947, , with the contested sign. The other earlier rights invoked by the opponent contain additional letters/words such as ‘In’, ‘Goo’, ‘Pro’ and ‘Eye’ which are not present in the contested trade mark. These additional components create additional differences with the contested sign. Even if some of these components are considered weak, they form integral parts of these marks and cannot be completely disregarded. Therefore, the outcome cannot be different with respect to these earlier marks, even if the goods or services covered by these marks were identical or similar to the services for which the opposition has already been rejected; no likelihood of confusion exists with respect to these earlier marks.

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

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

The Opposition Division

Jakub MROZOWSKI

Justyna GBYL

Liliya YORDANOVA

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.