OPPOSITION Nо B 3 117 358

 

United Finance Oyj, Eteläesplanadi 8, 00130 Helsinki, Finland (opponent), represented by Mari Must, Roosikrantsi 2, 10119 Tallinn, Estonia (professional representative) 

 

a g a i n s t

 

Unione Fiduciaria S.p.A., Via Amedei, 4, 20123 Milan, Italy (applicant), represented by Nicola Novaro, Via Marconi, 14, 18013 Diano Castello (IM), Italy (professional representative).

On 08/06/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 117 358 is rejected in its entirety.

 

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

 

REASONS

 

On 29/04/2020, the opponent filed an opposition against all the goods and services in Classes 9, 35, 36, 41, 42 and 45 of European Union trade mark application No 18 177 119 (figurative mark) The opposition is based on the European Union trade mark registration No 17 075 268 ‘UF’ (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.

 

 

a) The signs

 

UF
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).

It must be noted at the outset, that it is apparent from the case-law that the likelihood of confusion is to be assessed on the basis of a comparison between the mark applied for and the earlier mark as registered (07/05/2015, T‑599/13, GELENKGOLD, EU:T:2015:262, § 35 and the case-law cited). Thus, when comparing the signs, it is the perception by the relevant public of the signs as registered or applied for that is taken into account. To that end, facts, such as the underlying idea for the creation of a sign or what kind of concept was intended to be enshrined in it are irrelevant, to the extent that such idea or concept are not perceived by the consumers. Furthermore, the fact that the owner of the mark refers to it in a specific way, including, inter alia, in the application form for registration or other documents, is not relevant either (29/05/2019, R 2455/2018-4, § 18).

The comparison must be based on the perception, pronunciation and meaning of the conflicting signs in the languages of the relevant territory where the earlier mark is protected, and by reference to the target public of the goods and services at issue.

The earlier mark is the two-letter word mark ‘UF’. In most of the languages of the relevant territory, these two letters are meaningless. This is the case, for instance, in English or in Italian. However, in some languages, such as in Spanish, ‘UF’ has a meaning, since it indicates the equivalent of expressions such as ‘phew!’ or ‘ugh!’ in English, which are used to express boredom or disgust. In both scenarios this element is nevertheless normally distinctive, since it is meaningless or possesses a meaning that bears no connection with the good and services in Classes 9, 35, 36, 41, 42 and 45.

The contested sign is figurative and it is composed of two vertical black lines with rounded lower sides and a longer line next to them, also black, the lower part of which is of the same length and parallel to the first two lines, while its upper part is slightly inclined to the right to form with the lower part an obtuse angle.

It is unclear how this sequence of geometric elements could trigger the relevant public, be it the public at large or the professional public, to read a word in it without an in-depth analysis or speculation. In that regard, it is noted that the 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). Thus, even if the public might be able to recognise some letters or even a word in the contested sign if prompted, e.g. by seeing it next to a letter combination, this is not the perception subject to analysis. Indeed, as a result of such aided perception of the contested sign, consumers might end up seeing in it various letters and letter combinations, e.g. OF, OL, UF, UL, iiL, iiF, iir, UR, m, etc.

In its observations of 10/03/2021, the opponent refers to the EUTM application where the applicant itself has identified the trade mark as figurative mark with word part “UF”.

The opponent recalls that according to the Regulation (EU) 2017/1001 of the European Union trade mark Article 4 (b) an EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

The opponent underlines the fact that the applicant classified the applied EUTM as figurative mark with word part “UF” in the trade mark application and that the Office has examined the application and published and identified in Code 541 the two letters ‘UF’.

The opponent claims that according to the European Union Trade Marks Vademecum code 541 refers to “Reproduction of the trade mark in standard script”. Therefore, according to the officially published information the reproduction of the applied trade mark in standard script is “UF”.

According to the opponent, as the opposed trade mark is “UF” in a specific script, then in oral use it will be referred to as “UF”. Also, in occasions (domain names, articles) where it is not possible or suitable to use the figurative sign, the trade mark will be referred to as “UF”.

However, the Opposition Division does not see any specific reason that would prompt consumers to recognise in the contested mark that specific letter combination. Since ‘UF’ is a meaningless letter combination or it possesses a meaning that is not likely to be associated to any of the goods and services, the goods and services at issue would not lead to such a perception either. As noted above, the fact that the applicant refers to the earlier mark as ‘UF’ has no impact on its perception by the relevant public. Similarly, the fact that ‘UF’ is the abbreviation of the opponent’s name is not relevant either, because the perception of the trade mark is assessed as an identifier of commercial origin when it appears on or in relation to the goods and services at issue and not next to the company name of its owner. This is because the trade mark serves to identify the origin of the goods or services and not the identity of its owner or the manufacturer or provider of the goods and/or services. In the real market situation consumers are guided by the trade marks they see and not by the names of the companies from which they originate, as in most cases consumers are unaware of the name of the provider of the goods or services.

Taken into account all the above mentioned findings, visually the signs do not bear any similarity, as the contested sign is a figurative sign consisting of geometrical shapes, while the earlier mark is a two-letter word mark. Hence, the signs are not visually similar.

Aurally, purely figurative signs are not subject to a phonetic assessment. As the contested mark is purely figurative, it is not possible to compare them aurally.

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.

Since the signs do not reveal any similarity in any of the relevant aspects of comparison, they are dissimilar.

 

b) Conclusion

 

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

 

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

 

 

Martin MITURA

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

 

 

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.