OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 432 907
Sagitas, 3 rue de Messine, 75008 Paris, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France (professional representative)
a g a i n s t
Philipp Bierl, Josephinenstr. 18b, 81479 München, Germany (applicant), represented by Florian Reithner, Sternstr. 21, 80538 München, Germany (professional representative).
On 25/02/2016, the Opposition Division takes the following
1. Opposition No B 2 432 907 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate first to examine the opposition in relation to the opponent’s international trade mark registration No 562 540.
The services on which the opposition is based are the following:
Class 36: Insurance; businesses banking; exchange agencies; portfolio management; lending against security; debt collection; issuing of travellers’ checks and letters of credit; real estate agencies (sale and commercial funds lending and buildings); real estate expertise; apartment house management.
The contested services are the following:
Class 35: Business analysis, research and information services; commercial trading and consumer information services; business assistance, management and administrative services; advertising, marketing and promotional services.
Class 36: Real estate services; underwriting services; financial and monetary services, and banking; fundraising and sponsorship; valuation services.
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 services in Class 35 are in essence activities relating to business management, administration and advertising. These services are aimed at supporting or helping other businesses to carry out or improve their business. The opponent’s services in Class 36 are activities relating to finance, real estate transactions and insurance. These services in Classes 35 and 36 have different natures, purposes and methods of use. They are not usually complementary or in competition and they do not usually have the same distribution channels. Therefore, they are considered dissimilar.
Contested services in Class 36
The contested real estate services include, as a broader category, the opponent’s real estate agencies (sale and commercial funds lending and buildings); real estate expertise. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.
The contested underwriting services are included in the opponent’s broader category of insurance. Therefore, these services are identical.
The contested financial and monetary services, and banking; fundraising and sponsorship; valuation services and the opponent’s businesses banking belong to broad categories that overlap. Therefore, these services are identical.
Earlier trade mark
The relevant territories are Austria, Benelux, Germany, Hungary, Italy, Spain, Portugal and Romania.
The earlier mark is a figurative mark composed of the upper case letter ‘R’. In addition, there are five identical arrows pointing up at various angles, arranged symmetrically and crossing each other as if they were behind the letter ‘R’.
The contested sign is a figurative mark composed of the word ‘Westphal’ and, above it, three identical arrows pointing up at various angles, arranged symmetrically and crossing each other at a point halfway along their length.
Visually, the signs are similar to the extent that they each include a depiction of several arrows. However, they differ in the stylisation of the arrows, their number (five versus three), the letter ‘R’ of the earlier mark and the letters ‘Westphal’ of the contested sign. Therefore, the signs are visually similar to a certain extent.
Aurally, irrespective of the different pronunciation rules in the different territories, the earlier sign will be pronounced as ‘R’, and the contested sign will be pronounced according to the pronunciation rules in each of the relevant territories as ‘Westphal’. As the signs do not coincide aurally in any element, it is concluded that the signs are not aurally similar.
Conceptually, the public in the relevant territory will perceive the earlier mark as a group of five arrows crossing each other behind a letter ‘R’ in the centre, and the contested mark as three arrows crossing each other. Furthermore, at least part of the relevant public will perceive the word ‘Westphal’ as a German surname. Since the signs will be associated with similar concepts, namely those of the depictions of arrows, the signs are conceptually similar to a certain extent.
As the signs are similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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 mainly specialised services directed at the average consumer and at business customers with specific professional knowledge or expertise. Due to the type of services in question, the degree of attention is considered above average for both average consumers and the professional public.
Global assessment, other arguments and conclusion
The signs are visually and conceptually similar to a certain extent and aurally dissimilar. The services are partly identical and partly dissimilar.
In general, the identity or similarity of the figurative components of signs is insufficient to establish similarity where at least one of the signs contains a verbal component that is not contained in the other sign. The outcome will, however, depend on the particular circumstances in each individual case.
In the present case, the services found to be identical are specialised services mainly targeting a professional public. Even for services such as real estate services; underwriting services, whose public includes average consumers, the entire relevant public will have an above average degree of attention.
From the visual point of view, several elements of the trade marks differ. The earlier mark differs from the contested sign in the stylisation of the arrows, their number (five versus three), and the letter ‘R’ in the earlier mark and the letters ‘Westphal’ in the contested that also differ in their positions in the marks, ‘R’ being in the centre of the earlier mark and ‘Westphal’ at the bottom of the contested sign. The only thing the trade marks have in common, therefore, is that each contains a depiction of several crossing arrows, which are neither equal in number nor stylised in the same way.
As regards the aural comparison, the signs are dissimilar, as the verbal element of the contested sign, ‘Westphal’, does not even include the only letter of the earlier mark, namely ‘R’.
The conceptual comparison must take into account the signs in their entirety, not, for example, only one of two elements of the contested sign. In the present case, the fact that the trade marks each contain a depiction of several arrows does not justify a finding that the trade marks as a whole are similar; there is merely a slight similarity in one of their parts – only slight because the depictions differ – and no overall similarity; similarity between parts of trade marks does not mean that the trade marks are similar overall (see 02/07/2009, T‑311/08, Ibiza Republic, EU:T:2009:244, § 44). Furthermore, the signs also differ in their verbal elements (‘R’ versus ‘Westphal’).
Consequently, since, in addition to being aurally dissimilar, the signs do not have any relevant visual or conceptual similarities, and the services target a public with a high degree of attention, the likelihood of confusion can be ruled out on grounds of a lack of sufficient similarity between the trade marks.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
The opponent has also based its opposition on international trade mark registration designating the European Union No 1 008 667 for the following services in Class 36: insurance; financial affairs; monetary affairs; real estate affairs; savings banks; direct banking; issuing of travellers’ cheques or credit cards; real estate appraisal; real estate management; financing services; financial analysis; mutual funds or capital investments; financial consulting; financial evaluations (insurance, banking, real estate); funds investments.
The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains two black squares and an even more striking and prominent letter ‘R’ than in the mark compared above. Moreover, it covers very similar services in Class 36, which are not similar to the contested services in Class 35. Finally, even though the geographical scope of protection of this earlier right is broader, namely the entire European Union, the perception of those consumers who were not taken into account in the examination of the earlier mark already compared will not be different. This is because the visual and aural differences between the signs will be perceived by that public, and there is no similarity other than that already discussed above: the presence of a depiction of arrows in both marks. The signs will also have the same degree of conceptual similarity as those compared above. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.
According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) CTMIR, 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
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.