OPPOSITION Nо B 3 124 056

BTC Africa, S.A., 50 Val Fleuri, L‑2520 Luxembourg, Luxembourg (opponent), represented by Pilar Azagra Sáez, Las Damas 17, Pral. Centro, 50008 Zaragoza, Spain (professional representative)

a g a i n s t

Verslo Tyrimu Agentura, I.Kanto G.18, 304744234 Kaunas, Lithuania and Colemont Draudimo Brokeris, Konstitucijos Pr. 26, 08105 Vilnius, Lithuania (applicants).

On 20/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 124 056 is upheld for all the contested services.

2. European Union trade mark application No 18 210 221 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

On 15/06/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 210 221 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 18 124 026, (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 18 124 026.

a) The services

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

Class 36: Financial services; monetary services; banking services; electronic payment services; currency trading and exchange services; provision of prepaid cards and tokens; insurance services; warranty services; real estate services; securities and commodities trading services; loan and credit, and lease-finance services; debt recovery and factoring services; investment services; fund investments; financial underwriting and securities issuance (investment banking); financial transfers and transactions, and payment services; cash, check (cheque) and money order services; credit card and payment card services; tax and duty payment services; financial information, data, advice and consultancy services; financial rating and credit reports; financial appraisal services; financing and funding services; venture capital services.

The contested services are the following:

Class 36: Insurance; insurance services.

Insurance; insurance services are identically contained in both lists of services.

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 business customers with specific professional knowledge or expertise.

The degree of attention is above average.

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 Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, because the verbal elements in the signs are meaningful for (at least a part of) this public, as explained below.

The verbal element ‘AZA’, contained in both signs, will be understood by a part of the public as a combining form ‘denoting the presence of nitrogen, especially a nitrogen atom in place of a -CH group or an -NH group in place of a -CH2 group’ (information extracted from Collins English Dictionary on 19/04/2021 at https://www.collinsdictionary.com/dictionary/english/aza). Since the field in which this combining form is used and that of the services at issue are entirely different, it is reasonable to assume that the vast majority of the relevant consumers will not know the abovementioned meaning of the combining form ‘AZA’. Therefore, the Opposition Division finds it appropriate to focus on the part of the public (probably the vast majority) for whom this element has no meaning. Since it will not be associated with any meaning by this part of the public, the verbal element ‘AZA’ has a normal degree of distinctiveness.

The contested sign’s verbal element ‘INSURANCE’ will be understood as ‘the act, system, or business of providing financial protection for property, life, health, etc., against specified contingencies, such as death, loss, or damage, and involving payment of regular premiums in return for a policy guaranteeing such protection’ (information extracted from Collins English Dictionary on 19/04/2021 at https://www.collinsdictionary.com/dictionary/english/insurance). This word is directly descriptive of the kind of services at issue. Therefore, it lacks distinctiveness.

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).

Consequently, the stylisation of the signs’ verbal element ‘AZA’, while not banal, has less impact than the verbal element itself. In both signs, the letters ‘AZA’ are clearly legible and will be used by consumers to refer to these brands and to the services offered. In addition, consumers are used to similar stylisations of the verbal elements of trade marks in figurative signs.

‘AZA’ is the contested sign’s dominant element, as it is the most eye-catching.

Visually, the signs coincide in the verbal element ‘AZA’. They differ in this element’s stylisation. They also differ in the earlier sign’s figurative element and the contested sign’s verbal element, ‘INSURANCE’, neither of which has a counterpart in the other sign. Both the stylisation of the verbal element ‘AZA’ (in both signs) and the earlier sign’s figurative element (according to the aforementioned general principle) have less impact. Furthermore, the contested sign’s verbal element ‘INSURANCE’ lacks distinctiveness. Consequently, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ’A-ZA’, present identically in both signs. The pronunciation differs in the syllables ‘IN-SU-RANCE’ of the contested mark, which have no counterparts in the earlier sign. However, given the lack of distinctiveness of this word, the signs are aurally highly similar.

The figurative element of the earlier sign has no impact on the aural comparison of the signs, as it will not be pronounced.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘INSURANCE’ in the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, the existence of the concept ‘INSURANCE’ in the contested sign has a very limited impact (if any) on the comparison of the signs, as consumers will not attribute any trade mark significance to this descriptive term; they will focus essentially on the common and fully distinctive verbal elements ‘AZA’.

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).

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.

The services are identical. The signs are visually similar to an average degree, aurally highly similar and conceptually not similar – although the impact of the conceptual aspect is very limited. The earlier mark has a normal degree of distinctiveness and the degree of attention of the relevant public is above average.

The similarities between the signs outweigh the differences. The earlier sign’s verbal element ‘AZA’, which is the element with the strongest impact in that sign, is contained in the contested mark, where it is the only distinctive element (because the other verbal element, ‘INSURANCE’, is non-distinctive). The stylisation of the verbal element ‘AZA’ in the signs does not establish a decisive difference. Consumers are used to such stylisations of verbal elements in figurative marks and, consequently, its visual impact is limited (and, naturally, it has no aural impact).

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). 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).

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 goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Given the identity of the services and the reproduction of the fully distinctive verbal element ‘AZA’, it is likely that consumers will perceive the contested sign as a new stylised version or variation of the earlier mark.

Due to the identity of the services and the similarity of the signs, the relevant consumers are likely to believe – despite their above-average degree of attention – that the services in question 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 English-speaking part of the public for whom the verbal element ‘AZA’ will not be associated with any meaning. 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 18 124 026. It follows that the contested trade mark must be rejected for all the contested services.

As the above mentioned 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 applicants are the losing party, they 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

Gueorgui IVANOV

Ivo TSENKOV

Tobias KLEE

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.