OPPOSITION No B 3 101 832

Wizink Bank, S.A., C/ Ulises, 16-18, 28043 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

"Експлора БГ", ул. Княз Борис I No.58, 1463 София, Bulgaria (applicant).

On 02/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 101 832 is upheld for all the contested services.

2. European Union trade mark application No 18 098 214 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 18 098 214 for the figurative mark . The opposition is, inter alia, based on European Union trade mark registration No 17 381 005 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 17 381 005.

a) The services

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

Class 35: Analysis of market research data and statistics; analysis of market research data; business advice relating to marketing management consultations; market research; development of marketing strategies and concepts; financial auditing; recruitment consultants in the financial services field; financial records management; financial marketing; promotion of financial and insurance services, on behalf of third parties; administration, billing and reconciliation of accounts on behalf of others; drawing up statements of account; providing business marketing information; sales promotion for others; advertising; business management; business administration; office functions; assistance services for business management or commercial functions for an industrial or commercial company; import-export agencies and business representative services; advice relating to the conducting of studies relating to business organisation; business accounts management.

Class 42: Creating programmes for data processing; software development, programming and implementation; scientific and technological services as well as research and design services relating thereto; scientific and industrial analysis and research services; design and development of computer hardware and software; repair of software [maintenance, updating]; constructing an internet platform for electronic commerce; engineering surveying; technical supervision and inspection; commercial design services and packaging design.

The contested services are the following:

Class 35: Advertising, marketing and promotional services; consultancy relating to advertising; planning of marketing strategies; development of marketing strategies and concepts; development and implementation of marketing strategies for others; marketing consulting; advertising and marketing consultancy; advertising, marketing and promotional consultancy, advisory and assistance services; publicity personnel management services; digital marketing; business advice relating to strategic marketing.

Class 42: Web site design and creation services; design of home pages; design and creation of homepages and internet pages; design and development of homepages and websites; consultancy relating to the creation of homepages and internet pages; design and construction of homepages and websites.

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.

Contested services in Class 35

The contested business advice relating to strategic marketing overlap with the opponent´s business advice relating to marketing management consultations. Therefore, these services are identical.

The rest of the contested services in this class are broadly advertising, marketing and promotional services including consultancy in relation to them. Therefore, they are identical to the opponent’s advertising either because they are identically contained in both lists (including synonyms) or because the opponent’s advertising includes, or overlap with, the contested services in this class.

Contested services in Class 42

The contested services in this class are design and development of homepages and websites and consultancy services in relation to them. They are similar to the opponent’s design and development of computer software since they coincide in distribution channels, relevant public and producers.

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 or similar are partly directed only at business customers with specific professional knowledge or expertise (the services in Classº35) and partly at both the general public and business customers (e.g. web site design and creation services in Classº42).

The degree of attention will be high for the services in Classº35 and for the services in Classº42 it may vary from above average to high, depending on the specialised nature, frequency, price, 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 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 verbal elements constituting the signs are neither meaningful nor allusive in certain territories, for example in the countries speaking Slavic or Baltic languages (such as Poland, Czech Republic, Slovakia, Bulgaria or Lithuania). Therefore, these elements are distinctive for this public and the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The earlier mark, although being identified as a figurative mark does not posses any remarkable stylisation and will be perceived by the relevant public as two meaningless words depicted in upper and low case letters.

As regards the stylisation of the contested sign, mainly noticeable in the stylised ‘X’, it has to be noted that as consumers are accustomed to the stylisation of verbal elements in marks, they will perceive it as merely a decorative depiction of the word element. Therefore, the public will not pay significant attention to these features as indicators of commercial origin.

The signs in conflict have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the element ‘XPLORA’. They differ in the first element of the earlier mark ‘WiZink’, the fonts of their verbal elements and in the stylisation of the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, 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 ‘XPLORA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛WiZink’ of the earlier mark, which has no counterpart in the contested sign. Therefore, the signs are aurally similar at least to an average 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 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. 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

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).

The services are partly identical and partly similar. They target the general public and professionals whose degree of attention may vary from above average to high.

As explained in section c) above, the similarities between the conflicting signs stem from the same distinctive element ‘XPLORA’, which is the sole element in the contested sign and independent one in the earlier mark. The differences between the signs are confined to the other element of the earlier mark and to secondary aspects such as the stylisation of the contested sign and the fonts of the verbal elements. Therefore, the signs in conflict have been found visually similar to an average degree, aurally to at least an average degree, while the conceptual comparison is not possible.

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. Indeed, in the case at hand due to the fact that the sole element of the contested sign is a distinctive and independent element in the earlier mark, it is very likely that the consumers, even paying a high degree of attention, assume that the sings denote services rendered by the same or economically linked undertakings, but simply configured in a different way (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the Polish-, Czech-, Slovak-, Bulgarian-, and Lithuanian-speaking part of the public. 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 17 381 005. It follows that the contested trade mark must be rejected for all the contested services.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the 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).

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

Maria SLAVOVA

Meglena BENOVA

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.