OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 250 077
MyCircle Inc. Limited, Winchester House 259-269, Old Marylebone Road Suite 3.02, London NW1 5RA, United Kingdom (opponent), represented by Origin Limited, Twisden Works, Twisden Road, London NW5 1DN, United Kingdom (professional representative)
a g a i n s t
Jerome Cazes, 44B Rue Benoit Malon, 92130 Issy les Moulineaux, France (applicant).
On 25/11/2015, the Opposition Division takes the following
Class 36: Insurance; financial affairs; monetary affairs.
trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the services of Community
trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 services on which the opposition is based are the following:
Class 35: Registration services for credit cards, charge cards, cash cards, cheque guarantee cards, debit cards, payment cards, prepayment cards, financial cards, purchase cards, electronic payment and interactive transactions facilities; user incentive schemes relating to the use of credit cards, charge cards, cash cards, debit cards, payment cards, prepayment cards, financial cards, purchase cards, electronic payment and interactive transactions facilities; retail store services featuring mobile telephones and accessories and replacement parts for mobile telephones; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through digital and on-line medium; advertising by transmission of on-line publicity for third parties through electronic communications networks; analysis of advertising response.
Class 36: Insurance; financial affairs; monetary affairs; provision of electronic funds transfer services and on-line transaction facilities; financial services; banking services; home and Internet banking; investment and fund management services; administration of funds and investments; computerised financial services; provision of financial information; stocks and shares information services; stocks and bonds brokerage; information and advisory services relating to insurance, financial affairs, monetary affairs, home and Internet banking, stocks and share information, stocks and bonds brokerage, provided on-line from a computer database or the Internet; credit card, charge card, cash card, cheque guarantee card, payment card, prepayment card and debit card services; processing of data relating to card transactions, electronic payment transactions, interactive transactions and other payment transactions.
The contested services are the following:
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.
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 36
The contested insurance; financial affairs; monetary affairs are identically contained in both lists of services.
The contested real estate affairs comprise the managing of real estate properties, real estate agency and the evaluation of real estate properties, as well as the consultancy and provision related thereto. This mainly involves the finding of property, making it available for potential buyers and acting as an intermediary. The opponent’s services in Class 35 consist of registration services in the financial field, user incentive schemes in the financial field, retail store services in the mobile telephone sector and of advertising services that consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These latter services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc. Furthermore, the opponent’s services in Class 36 are all kinds of banking services that consist of the provision of all those services carried out for savings or commercial purposes concerning the receiving, lending, exchanging and safeguarding of money, transacting of other financial business, investments, leasing and factoring services, etc. and insurance services that consist of accepting liability for certain risks and respective losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingency occurs, such as death, accident, sickness, contract failure or, in general, any event capable of causing damages. When comparing the contested real estate affairs with the opponent’s services in Classes 35 and 36, consumers clearly distinguish the real estate agents’ services from those of advertising companies, financial institutions, retail stores in mobile phones and insurance companies. They do not expect a bank or an insurance company, for example, to find them housing or expect a real estate agent to manage their finances or their advertising strategies. The mere fact that real estate may have to be financed in order to be purchased or has to be assured against certain risks is not enough to find similarity between real estate affairs and the opponent’s services in Classes 35 and 36. Although financial services may be important for the acquisition of real estate or for the real estate to be ensured, consumers usually turn, first, to a real estate agent to search for a property and, second, to a financial institution or an insurance company to finance or ensure the property. Any other conclusion would mean for example that all non-financial transactions subject to funding would be complementary to a financial service. It must, therefore, be concluded that these services are dissimilar, even if the opponent’s financial affairs may be essential or important for the use of the contested real estate affairs. The consumers would not attribute responsibility for both services to the same company (see judgment of 11/07/2013, T-197/12, ‘GRUPOMETROPOLIS’, paragraphs 47-51).
Earlier trade mark
The relevant territory is the European Union. The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a word mark consisting of the word ‘MYCIRCLE’. The contested sign is a word mark consisting of the word ‘MyCercle’. Both marks are word marks and, thus, the words themselves are protected, not their written form. Therefore, it is irrelevant whether the word marks are represented in lower or upper case or a combination of those letters.
Visually, the signs are similar to the extent that they coincide in the letters ‘M-Y-C-*-R-C-L-E’. On the other hand, they differ in the fourth letter ‘I’ of the earlier mark versus ‘e’ of the contested sign.
Aurally, the pronunciation of the signs coincides in the sound of the letters /M-Y-C-*-R-C-L-E/, and to that extent the marks are similar. Furthermore, the marks have three syllables /MY-CIR-CLE/ and /MY-CER-CLE/. The marks differ slightly in the sound of the fourth vowel /-I-/ of the earlier mark versus the vowel ‘-e-’ of the contested sign.
Conceptually, for the English-speaking public, it is reasonable to assume that the earlier mark will be split into two elements, ‘MY’ and ‘CIRCLE’ that will be perceived as ‘of, belonging to, or associated with the speaker or writer (me)’ (MY) and ‘something formed or arranged in the shape of a circle’ (CIRCLE). The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (judgment of 13/02/2007, T-256/04, ‘Respicur’, paragraph 57). Regarding the contested sign, the public would also split it into two elements ‘My’ and ‘Cercle’. The element ‘MY’ is understood as having the same meaning as in the earlier mark. The element ‘Cercle’, even though it is not an English word, it is very similar to the word ‘circle’ and will be seen as a misspelling, so that it is perceived by the majority of the public as having the same meaning as the word ‘circle’. For that part of the public that will perceive the contested sign as having the same meaning, the marks are conceptually identical. By that part of the public that will only perceive the meaning of the element ‘MY’, the marks are conceptually similar only to this extent.
Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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.
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 in, inter alia, the financial and insurance sector. Bearing in mind that these services may have important financial consequences for their users, the level of attention of the relevant public is considered to be high.
Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods 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.
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22).
The services are partly identical and partly dissimilar and the attention of the public is high.
The marks are both word marks, have seven out of eight letters in common and are both pronounced in three syllables. The only letters that are visually and aurally different are the fourth letters ‘I’ of the earlier mark versus ‘e’ of the contested sign; these are not shared. Therefore, the Opposition Division finds that the visual and aural differences in only one letter of the earlier mark and one of the contested sign, in the same positions, are not sufficient to differentiate the marks. Due to the visual and aural similarity there is a likelihood of confusion. Furthermore, the English-speaking public would also establish a conceptual link between the marks, either in the whole mark or only in the element ‘MY’. Therefore, one mark could be mistaken for the other, since the similarities between the marks are more than sufficient to outweigh the differences.
Moreover, account should be taken of the fact that consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind.
The relevant consumers might be led, therefore, by the visual, aural and conceptual similarity of the words ‘MYCIRCLE’/’MyCercle’, to believe that the identical services covered by the marks come from the same undertaking or economically linked undertakings. Taking into account all the circumstances, the few differences between the signs are not enough to counteract the similarities and to safely exclude a likelihood of confusion, even taking into account that the public will pay a higher degree of attention. It can reasonably be concluded that consumers will not be able to distinguish the marks in dispute and will perceive them as having the same origin.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the English-speaking part of the public.
As stated above in section b) 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 partially well founded on the basis of the opponent’s Community trade mark registration No 11 501 161. It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.
The rest of the contested services in Class 36, namely real estate affairs, are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these services cannot be successful.
For the sake of completeness, it must be mentioned that the opposition must also fail in so far as based on the ground under Article 8(1)(a) CTMR and directed against the remaining services, because the services are obviously not identical.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part 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
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.