OPPOSITION Nо B 3 111 911

 

Investitionsbank Berlin, Anstalt des Öffentlichen Rechts, Bundesallee 210, 10719 Berlin, Germany (opponent), represented by Hertin und Partner Rechts- und Patentanwälte PartG mbB, Kurfürstendamm 54/55, 10707 Berlin, Germany (professional representative) 

 

a g a i n s t

 

IBB-HIB Romania Srl, Calea Floreasca Nr. 169, Floreasca Cube, Etaj 1, Sector 1, Bucuresti, 014459 Bucuresti, Romania (applicant).

On 23/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 111 911 is upheld for all the contested services, namely:

 

Class 36: Real estate administration; real estate settlement services [financial services]; renting of commercial premises; rental of real estate and property; apartment house management leasing.

2.	European Union trade mark application No 18 157 319 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

 

On 19/02/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 157 319 (figurative mark), namely against all the services in Class 36. The opposition is based on, inter alia, German trade mark registration No 30 353 058 ‘IBB’ (word 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 German trade mark registration No 30 353 058.

a) The services

 

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

 

Class 36: Finance and real estate affairs.

The contested services are the following:

 

Class 36: Real estate administration; real estate settlement services [financial services]; renting of commercial premises; rental of real estate and property; apartment house management leasing.

All the contested services are included in the broad categories of, or overlap with, the opponent’s finance and real estate affairs. 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.

 

Since the services at issue are specialized services which may have important financial consequences for their users, the consumers’ level of attention would be at least higher-than-average (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; 17/02/2011, R 817/2010-2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

 

c) Distinctiveness of the earlier mark and the comparison of signs

 

IBB
Earlier trade mark	Contested sign

 

The relevant territory is Germany.

 

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 signs coincide fully in their sole verbal element, ‘IBB’. It has no meaning for the relevant public and is, therefore, distinctive.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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. Since the earlier trade mark has no meaning for any of the services in question from the perspective of the public in the relevant territory, its distinctiveness must be seen as normal.

The contested sign includes the red and yellow oval device, which embraces the verbal element depicted in stylized blue bold, outlined in white, lettering. These figurative components will be perceived by consumers as mere ornamental features. They have no striking characteristics as such, and are meant to embellish and to draw the public’s attention to the verbal element of the sign. It follows that the public will afford more trade mark significance to the verbal element than to the sign’s stylisation.

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 contested sign has no element that could be considered clearly more dominant than other elements.

It follows that the signs are visually similar to a high degree and aurally identical. Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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) Global assessment, other arguments and conclusion

The services are identical, and they target the public at large and professionals. The degree of attention of the relevant public will be at least higher-than-average. The inherent distinctiveness of the earlier mark must be seen as normal. The signs are visually similar to a high degree, aurally identical, while a conceptual comparison is not possible.

Taking into account the aforementioned, and especially the fact that the contested sign reproduces the verbal element of the earlier mark in its entirety, the differences between the signs – consisting of the stylised typeface and the figurative device in the contested sign – are not sufficient to counteract their prominent similarities. In addition, consumers will most readily refer to a sign by its verbal component. Furthermore, 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 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).

Therefore, it is likely that the relevant consumer, on encountering both signs in relation to identical services, and having an imperfect recollection of the contested sign, might think that the services originate from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 353 058. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is 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 extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

As the above 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 right 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

 

 

María del Carmen COBOS PALOMO

Marzena MACIAK

Marta GARCÍA COLLADO

 

 

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.