OPPOSITION Nо B 3 100 207

ORIX Kabushiki Kaisha, 2-4-1, Hamamatsu-cho, Minato-ku, Tokyo, Japan (opponent), represented by Matthias Schäfer, Schwanseestr. 43, 81549 München, Germany (professional representative)

a g a i n s t

Ofix, Excelsiorlaan 31, 1930 Zaventem, Belgium (applicant).

On 14/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 207 is upheld for all the contested services.

2. European Union trade mark application No 18 095 516 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 of European Union trade mark application No 18 095 516 (figurative mark). The opposition is based on European Union trade mark registration No 3 250 206 (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.

a) The services

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

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs: including banking services (savings, mortgage, commercial, consumer); brokerage services (commodities, futures, insurance, investment, real estate, mutual funds, stocks, bonds, securities); capital investments; credit services; loan services; factoring; financial consultancy; financial management; life insurance services; securities brokerage; futures and options trading; investment banking; corporate finance; project finance; real estate related finance; warranty and surety services; hire-purchase financing; lease-purchase financing and loans; leasing and rental of automated teller machine and cash dispenser.

The contested services are the following:

Class 36: Real estate brokerage; real estate syndication; real estate investment; real estate management; valuation of property; estate agency; planning (estate -) [financial]; real estate trustee services; rental of offices [real estate]; real estate appraisal; real estate lending services; real estate financing; real estate time-sharing; real estate consultancy; housing management; financing of property loans; real estate insurance services; provision of housing accommodation; rental of real estate; property portfolio management; provision of real estate loans; insurance services relating to property; real estate investment planning; estate management; real estate agency services; real estate services; property leasing [real estate property only]; real estate management services relating to building complexes; real estate services related to management of property investments; financial evaluation [insurance, banking, real estate]; property investment banking services; real estate and property management services; financial management of real estate projects; accommodation bureaux (real estate property); commercial real estate agency services; leases (arranging of -) [real estate property only]; letting of showrooms; capital investment in real estate; arranging the provision of finance for real estate purchase; provision of finance for real estate development; management services for real estate investment; real estate equity sharing; real estate lease surrender services; insurance for property owners; building society services; real estate acquisition services; real estate investment advice; real estate lease renewal services; assessment and management of real estate; investment advisory services relating to real estate; loan services for property investment; arranging the finance for home loans; property insurance underwriting; financing of real estate development projects; real estate affairs; providing real estate information relating to property and land; insurance brokerage for property; insurance services relating to real estate; financing services relating to real estate development; residential real estate agency services; domestic property finding services; letting agency for sheltered accommodation; financial brokerage services for real estate; real estate escrow services; administration of financial affairs relating to real estate; rental of real estate and property; consultancy in the purchasing of real estate; provision of information relating to property [real estate]; advisory services relating to real estate valuations; estate management services relating to horticulture; assisting in the acquisition of real estate; real estate settlement services [financial services]; provision of financial guarantees for bonding real estate; financial services for the purchase of real estate; insurance services for thatched properties; mortgaging relating to property and land; estate management services relating to agriculture; financial valuation of personal property and real estate; financial services relating to real estate property and buildings; financial services provided by building societies; collection of debt on real estate rental; real estate procurement for others; financial consultancy relating to real estate investment; real estate management services relating to industrial premises; real estate management services relating to residential buildings; real estate management services relating to housing estates; real estate management services relating to commercial buildings; real estate management services relating to shopping malls; agency services for the leasing of real estate property; real estate agency services for the leasing of land; computerised information services relating to real estate; real estate agency services for the rental of buildings; brokerage of building society savings agreements; arranging of shared ownership of real estate; building society services relating to finance; valuation services of property for fiscal purposes; research services relating to real estate acquisition; advisory services relating to real estate ownership; corporate real estate advisory services; real estate management services relating to entertainment venues; real estate management services relating to office premises; estate management services relating to transactions in real property; providing information relating to real estate appraisal; real estate selection and acquisition [on behalf of others]; agency services for the selling on commission of real property; providing information relating to real estate affairs, via the internet; real estate listing services for housing rentals and apartment rentals; estate agency services for sale and rental of businesses; real estate agency services relating to the purchase and sale of buildings; real estate agency services relating to the purchase and sale of land; assisting in the acquisition of and financial interests in real estate; arranging of leases and rental agreements for real estate; appraisals for insurance claims of real estate; provision of information relating to the property market [real estate]; real estate management services relating to retail premises; estate agency services for sale and rental of buildings; arranging of loan agreements secured on real estate; securing of funds for the purchase of property.

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

The term ’including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

Without any further repetition, all the contested services in Class 36 listed above belong to the categories of real estate agency services, financial services or insurance services and are included in, or overlap with, one of the broad categories of the opponent’s insurance; financial affairs; real estate affairs: including banking services (savings, mortgage, commercial, consumer). 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 the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is above average.

The financial services covered by both marks 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, the 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).

As regards real estate services covered by both marks, it is to be noted that the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

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 figurative mark consists of the verbal element ‘ORIX’ written in slightly stylised black upper-case letters under a figurative element that is made up of red diagonal lines where the lines over the letter ‘I’ give the impression of a spherical shape.

The contested figurative mark is composed of the verbal element ‘OFIX’ repeated four times in a row. Each of the first two elements ‘OFIX’ are placed against a square black background. The verbal elements of the sign are written in a stylised typeface, with the first and third being in the colour combination of red, blue, green and orange, the second in white and the fourth in black.

Neither the word ‘ORIX’ of the earlier mark nor the word ‘OFIX’ of the contested sign has any meaning for the relevant public. Therefore, they are both distinctive to a normal degree for the relevant services.

The figurative element of the earlier mark is also meaningless and thus distinctive to a normal degree for the relevant services. However, the fact remains that 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 square black backgrounds of the contested sign are simple geometrical shapes with a merely decorative function. For this reason, they are considered non-distinctive. The stylisation of the verbal elements of the contested sign (including colours) performs only a decorative function within the sign and therefore has a low impact on the assessment of likelihood of confusion.

In terms of dominance, neither of the signs has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘O*IX’ of their verbal elements, albeit repeated four times in the contested sign. They differ in their second letters, ‘R’ of the earlier mark versus ‘F’ of the contested sign. Furthermore, they differ in the figurative element of the earlier mark and in the decorative figurative elements and aspects of the contested sign, all being secondary for the reasons given above.

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

Aurally, it must be assumed that the relevant public will not repeat the verbal element ‘OFIX’ in the contested sign four times, but will just refer to it as ‘OFIX’, pronounced once. Therefore, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘O*IX’, present identically in both signs. The pronunciation differs in the sound of the signs’ second letters, ‘R’ versus ‘F’.

Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the relevant public. 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.

The opponent claimed that the distinctiveness of the earlier mark must be seen as elevated given that the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. As regards this argument, first it should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49). However, a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link with the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). In the present case, the opponent did not submit any evidence to prove enhanced distinctiveness.

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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Account must also 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 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).

As concluded above, the contested services are all identical to the opponent’s services and target the public at large and business customers with an above-average degree of attention. The earlier mark has a normal degree of inherent distinctiveness for the relevant services.

The signs in dispute are visually similar to an average degree, aurally similar to a high degree and the conceptual aspect does not influence the assessment of their similarity, as explained in detail in section c) of this decision. This is because they have three out of four letters/sounds in common and differ in their second letter/sound. They further differ in their figurative elements and stylisations of their verbal elements which are, however, secondary, for the reasons explained above. Therefore, the Opposition Division is of the opinion that such differences are insufficient to counteract the overall similarity of the signs, even for part of the public with a higher-than-average degree of attention.

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the public in the relevant territory and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 250 206.

It follows from the above that the contested sign 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

Benoit VLEMINCQ

Martin MITURA

Kieran HENEGHAN

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.