OPPOSITION Nо B 3 124 817

Triple Living, Michel De Braeystraat 55, 2000 Antwerpen, Belgium (opponent), represented by Ifori, Victor Braeckmanlaan 107, 9040 Gent, Belgium (professional representative)

a g a i n s t

Derag Deutsche Realbesitz AG&Co.KG, Fraunhoferstr. 2, 80469 München, Germany (applicant), represented by LS-IP Loth & Spuhler Intellectual Property Law Partnerschaft von Rechtsanwälten mbB, Alpha-Haus, Garmischer Strasse 35, 81373 München, Germany (professional representative).

On 13/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 124 817 is partially upheld, namely for the following contested services:

Class 35: All the contested services in this class.

Class 36: All the contested services in this class.

Class 37: All the contested services in this class.

Class 43: All the contested services in this class, except for rental of meeting rooms; rental of portable buildings; housing facilities for needy persons; catering for guests; restaurants; café services; café services; snack-bars.

2. European Union trade mark application No 18 190 001 is rejected for the services listed above (under 1. of this dictum). It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

On 23/06/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 190 001 ‘SILVER LIVING’ (word mark). The opposition is based on Benelux trade mark registration No 983 637 ‘TRIPLE LIVING’ (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 services

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

Class 35: Advertising; business management; business administration; clerical services.

Class 36: Insurance services; financial affairs; monetary affairs; real estate brokerage.

Class 37: Construction; repairs to buildings and accessories for buildings; installation of construction accessories.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services.

The contested services are the following:

Class 35: Advertising relating to hotels, sheltered accommodation and housing facilities for needy persons; marketing services; sales promotion; marketing studies; market studies; business management and organization consultancy; personnel management consulting; professional business consulting; commercial information agencies; commercial intermediation services; mediation of trade business for third parties; business management of hotels, sheltered accommodation and housing facilities for needy persons for others; online advertising on a computer network relating to hotels, sheltered accommodation and housing facilities for needy persons; search engine optimisation for sales promotion; search engine optimisation for personnel promotion; employment agencies; personnel recruitment; word processing; secretarial services.

Class 36: Real estate services; arranging letting of real estate; rental of offices [real estate]; rental of apartments; management of land; real estate management; real estate brokerage; rental of shared accommodation and housing facilities for needy persons.

Class 37: Construction of buildings; building of hotels; construction of apartments; construction of shared accommodation and housing facilities for needy persons; maintenance of buildings; hotel maintenance services; housing maintenance services; maintenance of shared accommodation and housing facilities for needy persons; cleaning and maintenance relating to buildings; cleaning and maintenance relating to hotels; cleaning and maintenance relating to housing; cleaning and maintenance relating to shared accommodation and housing facilities for needy persons.

Class 43: Hotel services; accommodation and catering for guests; restaurants; café services; café services; snack-bars; temporary accommodation reservations; accommodation bureaux [hotels, boarding houses]; rental of temporary accommodation; rental of meeting rooms; rental of portable buildings; providing assisted living facilities [temporary accommodation]; housing facilities for needy persons.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 advertising relating to hotels, sheltered accommodation and housing facilities for needy persons; marketing services; sales promotion; marketing studies; market studies; online advertising on a computer network relating to hotels, sheltered accommodation and housing facilities for needy persons are included in the opponent’s advertising. Therefore, they are identical.

The contested business management and organization consultancy; personnel management consulting; professional business consulting; commercial information agencies; commercial intermediation services, business management of hotels, sheltered accommodation and housing facilities for needy persons for others are either identically contained in both lists of services or are included in the opponent’s business management.

The contested word processing; secretarial services overlap with the opponent’s clerical services. Therefore, they are identical.

The contested personnel recruitment is included in the opponent’s business administration. Therefore, these services are identical.

The contested search engine optimisation for sales promotion; search engine optimisation for personnel promotion are at least similar to the opponent’s advertising. The purpose of the contested services is to optimise website traffic so that the website is visited by more potential clients. To this extent, the services in conflict have the same purpose, namely, to reach more consumers and to increase the popularity of the advertised products. Furthermore, they coincide in relevant public, distribution channels and providers.

The contested mediation of trade business for third parties; employment agencies are services rendered by specialists with the purpose of helping businesses to resolve their business-related problems, such as in relation to purchasing or wholesaling and retailing. It includes services that put relevant sellers and buyers in contact and negotiate between them, and that receive a commission for these services. Business mediation and the opponent’s business management are closely related. Companies providing business management services, which includes all aspects of overseeing and supervising business operations, may also provide mediation services aiming to resolve or prevent business-related problems. Both services may share the same purpose and target the same public. Therefore, these services are considered similar to a low degree since they have the same purpose, providers and distribution channels.

Contested services in Class 36

The contested services in this class are various real estate services. They are all identical to the opponent’s real estate brokerage because the opponent’s service is included in or includes the contested real estate brokerage services.

Contested services in Class 37

The contested construction of buildings; building of hotels; construction of apartments; construction of shared accommodation and housing facilities for needy persons are included in the opponent’s construction. Therefore, they are identical.

The rest of the contested services in this class are various maintenance and cleaning services in relation to real estate properties. They are similar to a high degree at least to the opponent’s repairs to buildings and accessories for buildings. These services coincide in at least distribution channels, relevant public and providers.

Contested services in Class 43

The contested hotel services; accommodation for guests; temporary accommodation reservations; accommodation bureaux [hotels, boarding houses]; rental of temporary accommodation; providing assisted living facilities [temporary accommodation] are various temporary accommodation services rendered to satisfy consumers’ needs for short- and mid-term accommodation, for example an accommodation bureau offering holiday homes for a week or for the entire summer. It is increasingly common for such undertakings to also offer services related to the management of properties in Class 36, including rental services for real estate, such as houses, flats, etc., for permanent use.

Furthermore, these services are marketed through the same distribution channels, including physical agencies and dedicated websites. Likewise, it is common for real estate agencies to offer properties, such as houses or flats, not only for sale or long-term rental, but also for seasonal or short-term rental. Consequently, the abovementioned contested services and the opponent’s real estate brokerage in Class 36 can share at least providers, distribution channels and consumers. They are similar to a low degree. (26/02/2015, T‑713/13, 9flats.com, EU:T:2015:114, § 33, 15/02/2011, T‑213/09, Yorma’s, EU:T:2011:37, § 49-50).

However, the above conclusions are not applicable to the contested rental of meeting rooms; rental of portable buildings; housing facilities for needy persons. Although these are also temporary accommodation services, they are dissimilar to the opponent’s real estate brokerage in Class 36. These services are not provided by real estate brokers, but by specialised companies operating in a specific market niche and targeting a public that has specific needs (e.g. housing facilities for needy persons). They are neither complementary nor in competition.

The remaining opponent’s services (summarised in the next paragraph) are even more dissimilar to these contested services in Class 43.

The contested catering for guests; restaurants; café services; café services; snack-bars are services for the provision of food and drink. They are dissimilar to all the opponent’s services that encompass advertising and business management services (Class 35), insurance, financial and real estate services (Class 36), construction and repair services (Class 37) and scientific and technological research and design (Class 42). These services do not have anything in common according to the criteria established above.

b) Relevant public – degree of attention

In the present case, part of the services are directed at both the public at large and at professionals with specific professional knowledge or expertise (e.g. construction; real estate services). Another part of the services, such as the various business management services or advertising, are directed exclusively at the professional public.

Although part of the services also target the general public, who is reasonably well informed and reasonably observant and circumspect, some of these services are specialised and relatively expensive services that are not so often purchased and consumers usually consider carefully before taking the final decision.

For instance, 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).

Therefore, the degree of attention will vary from average to relatively high depending on the nature, price and frequency of purchase of the relevant services.

c) The signs

TRIPLE LIVING	SILVER LIVING
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36). The official languages in the relevant territory are Dutch, French and German.

The common element ‘LIVING’ in French and Dutch refers to a living room (information extracted on 30/04/2021 from Larousse online dictionary at https://www.larousse.fr/dictionnaires/francais/living/47526#definition and from van Dale online dictionary at https://www.vandale.nl/gratis-woordenboek/nederlands/betekenis/living#.YIvTkufRY2w ). In addition, the earlier mark ‘TRIPLE LIVING’ will be understood by the French-speaking public as referring to a very large living space. Since part of the services, such as the various construction and real estate services, may concern residential properties, these elements are descriptive and less distinctive for this part of the public.

However, the common element ‘LIVING’ is meaningless and distinctive for the German-speaking public in that territory.

The Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public for whom the common element ‘LIVING’ has greater capacity to indicate commercial origin.

This public will understand the first element ‘SILVER’ of the contested sign since the corresponding word in German is very similar, namely ‘SILBER’. That public will also understand the meaning of the first element ‘TRIPLE’ of the earlier mark due to the similar prefix ‘TRIPEL’ in German meaning ‘three, three-times’ (information extracted on 03/05/2021 from Duden online dictionary on https://www.duden.de/suchen/dudenonline/triple ). Regardless of whether understood or not, the meanings of these elements do not affect their distinctiveness.

Visually and aurally, the signs coincide in their second and distinctive element ‘LIVING’. However, they differ in their first verbal elements, ‘TRIPLE’ versus ‘SILVER’. Although these elements share some letters and sounds, they are placed in different parts in the words and this coincidence will be unnoticed by the relevant public. Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the relevant public, their first elements will be associated with the meanings explained above. To that extent, the signs are conceptually not similar.

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).

In the present case, the services are partly identical, partly similar to varying degrees and partly dissimilar.

They target the public at large as well as professionals, whose degree of attention will vary from average to relatively high. The earlier mark is of normal distinctiveness.

As explained in section c) of this decision, the signs are visually and aurally similar to an average degree, while, conceptually, they are not similar. Both signs share the distinctive element ‘LIVING’, which also plays an independent role in the signs. The differences between the signs are confined to their first elements, which, although distinctive, cannot outweigh the similarities between the signs.

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, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (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 German-speaking public in the relevant territory and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 983 637. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public in Benelux is sufficient to reject the contested application.

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

Irena LYUDMILOVA LECHEVA

Meglena BENOVA

Sofía SACRISTÁN MARTÍNEZ

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.