OPPOSITION Nо B 3 104 396

 

Lifestory Group Limited, Unit 3 Royal Court Church Green Close Kings Worthy, SO23 7TW Winchester, United Kingdom (opponent), represented by Osborne Clarke LLP, One London Wall, EC2Y 5EB London, United Kingdom (professional representative) 

 

a g a i n s t

 

Eva Maria Kristina Andersson Manning, Centralvägen 12 Lgh 1301, 194 76 Upplands Väsby, Sweden (applicant), represented by Angelica Coppini, Standard House, Level 3 Birkirkara Hill, STJ 1149 St. Julians, Malta (professional representative).

On 11/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1. Opposition No B 3 104 396 is partially upheld, namely for the following contested services:

Class 36: Fiduciary; stock exchange quotations; deposits of valuables; financial analysis; financial affairs; business liquidation services, financial; financing services; arranging finance for construction projects; financial evaluations [banking]; financial information; financial consultancy; none being insurance and assurance services; mortgage banking; brokerage; fund investments; financial management.

2. European Union trade mark application No 18 096 216 is rejected for all the above services. It may proceed for the remaining services in Class 35.

3. Each party bears its own costs.

REASONS

 

On 27/11/2019, the opponent filed an opposition against all the services of European Union trade mark application No 18 096 216 ‘Pegasus Holding’ (word mark). The opposition is based on European Union trade mark registration No 11 905 817 ‘PEGASUS LIFE’ (word mark). The opponent initially invoked Article 8(1)(b) and Article 8(5) EUTMR. However, after the opponent’s withdrawal of the latter ground in its submissions of 06/07/2020, the opposition is based only on 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 the following:

 

Class 36: Financial services and advice relating to the payment of fees and service charges for retirement and nursing homes and the payment of fees for nursing and medical services; none being life assurance or insurance services; real estate services relating to retirement and nursing homes, nursing services, medical services and construction; management of residential property.

Class 37: Building construction; repair; installation services; painting and decorating; cleaning services.

Class 43: Retirement homes and retirement home services; provision of food, drink and catering services in retirement homes; provision of temporary accommodation including sheltered accommodation.

Following a partial refusal in parallel opposition proceedings, No B 3 104 472, the contested services are the following:

Class 35: Administrative processing of purchase orders; negotiation and conclusion of commercial transactions for third parties; business appraisals; commercial intermediation services; drawing up of statements of accounts; none being insurance and assurance services.

Class 36: Fiduciary; stock exchange quotations; deposits of valuables; financial analysis; financial affairs; business liquidation services, financial; financing services; arranging finance for construction projects; financial evaluations [banking]; financial information; financial consultancy; none being insurance and assurance services; mortgage banking; brokerage; fund investments; financial management.

Contested services in Class 35

The contested administrative processing of purchase orders; negotiation and conclusion of commercial transactions for third parties; business appraisals; commercial intermediation services; drawing up of statements of accounts; none being insurance and assurance services are dissimilar to the services covered by the opponent’s right.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The opponent argues that because of the fact that these services are all for or related to the opponent’s financial and real estate related services in Class 36 thus their channels of distribution and targeted public are the same. Moreover, it argues that these services are provided by the same undertakings and that they are complementary and in competition.

While it is true that the contested services are aimed at supporting or helping other businesses to do or improve businesses of any kind and thus also target a professional public, it is clear that the opponent’s financial and real estate related services are not, in principle, provided on the same premises as commercial intermediation or business assistance because they are usually carried out by an entity that is separate from the business in question. Services that are complementary usually share the same commercial origin, which is not so in the present case. Any other conclusion would e.g. mean that all business activities subject to finance would be complementary to a financial service.

Services are in competition with each other when one can substitute the other. That means that they serve the same or a similar purpose and are offered to the same actual and potential customers. In such a case, the goods/services are also defined as ‘interchangeable’ (04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 42). Given that financial and real estate services on the one hand and commercial trading and business assistance services on the other have very different natures, they cannot be in competition.

The coincidence in the relevant professional public only is clearly insufficient, given the vast differences in the natures, purposes and providers of these services.

Contested services in Class 36

All the contested services fiduciary; stock exchange quotations; deposits of valuables; financial analysis; financial affairs; business liquidation services, financial; financing services; arranging finance for construction projects; financial evaluations [banking]; financial information; financial consultancy; none being insurance and assurance services; mortgage banking; brokerage; fund investments; financial management are of a financial nature, as are the opponent´s financial services and advice relating to the payment of fees and service charges for retirement and nursing homes and the payment of fees for nursing and medical services; none being life assurance or insurance services, which are potentially provided by the same financial institutions through the same channels of distribution and of interest to the same consumers. Consequently, these services are at least similar.

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 at least similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

Since the services at issue 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).

 

c) The signs

 

PEGASUS LIFE	Pegasus Holding
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 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.

 

Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form, insofar as its depiction does not depart from the usual way of writing (standard rules of capitalisation), as in the present case. Therefore, it is irrelevant whether they are depicted in upper or lower case letters. Being word marks, neither of the marks has any elements that could be considered clearly more dominant than other elements.

The common element ‘PEGASUS’ is meaningful in English, and will be understood as referring to the mythological winged horse, the Pegasus. This verbal element has no direct or indirect link to the relevant services and is, therefore, considered distinctive.

The verbal element ‘Holding’ of the contested mark is an English word which means, inter alia, ‘assets such as property, shares, or cash that a government, company, or person owns’ (information extracted from Cambridge dictionary on 04/03/2021 at https://dictionary.cambridge.org/dictionary/english/holding). Bearing in mind the services in question, it is non-distinctive since it is descriptive of a company organised as a holding company, known not only by the English-speaking public but also widely and internationally used in the business world (12/06/2012, R 1875/2011-4, Serafin Privat Holding / (fig), § 19).

Furthermore, the verbal element ‘LIFE’ of the earlier mark will be understood as, inter alia, ‘the experience or state of being alive’ (information extracted from the Cambridge dictionary on 04/03/2021 at https://dictionary.cambridge.org/dictionary/english/life). This element is a basic English word that is understood throughout the European Union (15/10/2018, T‑444/17, life coins / LIFE et al., EU:T:2018:681, § 52) and will therefore be understood by the relevant public. This word has, however, no descriptive, allusive or otherwise related meaning for the services in question and it is considered distinctive.

Consequently, the element ‘PEGASUS’, identically present in both signs, is considered the most distinctive element of the contested sign for the English-speaking part of the public. The Opposition Division will focus the current assessment on this part of the public given that their perception will have an influence on the level of similarity between the signs.

It is also important to note that 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.

Visually and aurally, the signs coincide in ‘PEGASUS’, which is the most distinctive element of the contested sign and, moreover, placed at the beginning of both signs. The additional elements ‘LIFE’ of the earlier mark and ‘Holding’ of the contested sign will, either because of its position or given its level or lack of distinctiveness be given less attention, if at all in the case of the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be understood as referring to the mythological winged horse, the Pegasus. Therefore, and considering the lack of distinctiveness of the concept related to ‘Holding’ in the contested sign, and the meaning of ‘LIFE’ in the earlier mark, the signs are 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.

 

The opponent claimed that the earlier trade mark enjoys a ‘high distinctive character’ but did not file any evidence in order to prove such a claim.

 

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 on which this assessment focuses. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The contested services have been found partly at least similar and partly dissimilar. The earlier mark is considered to have a normal level of distinctiveness. The signs are similar to an average degree on all levels.

The comparison of the signs focused on the English-speaking general and professional public whose degree of attention in relation to the relevant services is quite high. 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). Furthermore, 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).

Bearing in mind the consumer’s imperfect recollection and the fact that the signs coincide in the verbal element ‘PEGASUS’, which is the most distinctive element of the contested sign and is placed at their beginnings, it is considered that their differences established by the element ‘LIFE’, which is placed in second position or the non-distinctive element ‘Holding’ respectively, are not sufficient to outweigh the similarities between them.

Furthermore, it is highly conceivable that the relevant consumer will perceive the signs as variations, configured in a different way according to the type of financial services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be at least similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Valeria ANCHINI

 

 

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.