OPPOSITION No B 2 446 329

Helvetia Compañía Suiza, Sociedad Anónima de Seguros y Reaseguros, Paseo de Cristóbal Colón, 26, 41001 Sevilla, Spain (opponent), represented by Herrero & Asociados, Alcalá, 35, 28014 Madrid, Spain (professional representative)

a g a i n s t

Hevhetia s.r.o., Alžbetina 22, 04001 Košice, Slovakia (applicant), represented by Vojčík & Partners, Rázusova 28, 040 01 Košice, Slovakia (professional representative).

On 20/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 446 329 is partially upheld, namely for the following contested goods and services:

Class 9: Audiovisual apparatus; Audio visual recordings; Musical sound recordings; Musical sound recordings; Magnetic recordings; Trading cards [magnetic]; Optical communications instruments; Computer software to enhance the audio-visual capabilities of multimedia applications; Compact disc recorders; Downloadable musical sound recordings; Electronic publications, downloadable; Telephone ring tones [downloadable]; Interactive video software; Video communications apparatus; Video games on disc [computer software]; Apparatus for the transmission of sound; Audio electronic apparatus; Talking books; Audio mixing apparatus; Sound records; Sound samplers.

Class 38: Delivery of digital music by telecommunications; Provision of on-line forums; Providing access to mp3 web sites on the internet; Transmission of interactive entertainment software; Transmission of sound by electronic means; Streaming of audio material on the internet.

Class 41: Providing digital music [not downloadable] from MP3 internet web sites; Music recording studio services; Music publishing and music recording services; Musical entertainment; Information and advisory services relating to entertainment; Consultancy on film and music production; Recording of music; Arranging and conducting of concerts; Organising of festivals relating to jazz music; Provision of facilities for live band performances; Rental of acoustic recording equipment; Production of musical recordings; Cultural services; Selection and compilation of pre-recorded music for broadcasting by others; Audio production.

2. European Union trade mark application No 13 106 919 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 106 919. The opposition is based on European Union trade mark registration No 13 106 919, Spanish trade mark registrations No 13 106 919, No 13 106 919, No 13 106 919, No 13 106 919 and No 13 106 919 and the Spanish well-known mark ‘HELVETIA’. The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier marks and Article 8(5) EUTMR in relation to Spanish trade mark registration No 13 106 919, namely with regard to services in Class 36.

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 13 106 919 and Spanish trade mark registrations No 13 106 919 and No 13 106 919.

1. The goods and services

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

European Union trade mark registration No 13 106 919

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 36: Insurance; financial affairs; monetary affairs; real-estate affairs; banking and banking services.

Class 38: Telecommunications; communication.

Spanish trade mark registration No 13 106 919

Class 36: Insurance and reinsurance services.

Class 41: Education; providing of training; entertainment; organisation of sporting and cultural activities.

Spanish trade mark registration No 13 106 919

Class 9: Electronic publications (downloadable electronically).

Class 16: Publications.

After a limitation, the contested goods and services are the following:

Class 9: Audiovisual apparatus; Audio visual recordings; Musical sound recordings; Musical recordings in the form of discs; Musical sound recordings; Discs (Compact -) [audio-video]; Laser discs for use in storing music; Magnetic encoders; Magnetic recordings; Magnetic data carriers; Trading cards [magnetic]; Compact disc cases; Jackets for video cassettes; Optical discs; Optical communications instruments; Optical recording media; Computer software to enhance the audio-visual capabilities of multimedia applications; Compact disc recorders; Downloadable musical sound recordings; Electronic publications, downloadable; Telephone ring tones [downloadable]; Interactive video software; Video communications apparatus; Video games on disc [computer software]; Apparatus for the transmission of sound; Audio electronic apparatus; Talking books; Audio mixing apparatus; Sound records; Sound samplers.

Class 35: Distribution of products for advertising purposes; Distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; Business management for freelance service providers; Commercial administration of the licensing of the goods and services of others; On-line promotion of computer networks and websites; Arranging and conducting marketing promotional events for others; Sales promotion for others; Provision of on-line business and commercial information; Promotion [advertising] of concerts; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Import-export agency services; Production of sound recordings for advertising purposes; Advertising by mail order.

Class 38: Delivery of digital music by telecommunications; Provision of on-line forums; Providing access to mp3 web sites on the internet; Transmission of interactive entertainment software; Transmission of sound by electronic means; Streaming of audio material on the internet.

Class 41: Providing digital music [not downloadable] from MP3 internet web sites; Music recording studio services; Music publishing and music recording services; Musical entertainment; Information and advisory services relating to entertainment; Consultancy on film and music production; Recording of music; Arranging and conducting of concerts; Organising of festivals relating to jazz music; Provision of facilities for live band performances; Rental of acoustic recording equipment; Production of musical recordings; Cultural services; Selection and compilation of pre-recorded music for broadcasting by others; Audio production.

Earlier European Union trade mark registration No 13 106 919 is registered for the entire class headings of Classes 16, 36 and 38 of the Nice Classification. It was filed on 22/07/2003. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 8th edition.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 goods in Class 9

The contested electronic publications, downloadable are identical to the opponent’s electronic publications (downloadable electronically), covered by Spanish trade mark registration No 13 106 919, since they are synonymous.

The contested downloadable musical sound recordings; telephone ring tones [downloadable] are similar to the opponent’s electronic publications (downloadable electronically), covered by Spanish trade mark registration No 13 106 919, as they have the same purpose and nature. They can also have the same producers, relevant public and distribution channels.

The contested computer software to enhance the audio-visual capabilities of multimedia applications, interactive video software, video games on disc [computer software] are different types of software. These contested goods are similar to the opponent’s electronic publications (downloadable electronically), covered by Spanish trade mark registration No 13 106 919, as they can have the same producers, relevant public and distribution channels. Furthermore, they are complementary.

The contested audiovisual apparatus; audio visual recordings; musical sound recordings; musical sound recordings; magnetic recordings; optical communications instruments; compact disc recorders; video communications apparatus; apparatus for the transmission of sound; audio electronic apparatus; audio mixing apparatus; sound records; sound samplers are apparatus and devices used to communicate audio or video information over a distance via radio waves, optical signals, etc., or along a transmission line.

The opponent’s telecommunications services in Class 38, covered by European Union trade mark registration No 13 106 919, are services that allow people to communicate with one another by remote means.

Since the 1990s, the boundary between telecoms equipment and IT hardware/software has become blurred as a result of the growth of the internet and its increasing role in the transfer of telecoms data. Equipment used for purposes of telecommunication, such as modems, mobile phones, landline telephones, answering machines, fax machines, pagers, routers, etc., is also considered to cover the telecommunications control software that must be in place to support successful telecommunications activities. Any software that provides the ability to perform telecommunications activities or operations can be considered telecommunications control software.

Clearly, a link exists between the abovementioned contested goods and telecommunications services in Class 38. These goods and services are similar, given their complementary character; although their natures are different, their purpose and distribution channels are the same (12/11/2008, T‑242/07, Q2web, EU:T:2008:488, §§ 24-26).

The contested talking books are similar to the opponent’s books, covered by the alphabetical list of Class 16 of European Union trade mark registration No 13 106 919, as they have the same purpose. They can also have the same producers and relevant public. Furthermore, they are in competition.

The contested trading cards [magnetic] are any of a set of magnetic cards printed with images or information relating to a specific subject, intended to be traded between collectors seeking to acquire a full set. Trading cards [magnetic] are similar to a low degree to the opponent’s printed matter in Class 16, covered by European Union trade mark registration No 13 106 919, as they can have the same producers and relevant public.

The contested discs (compact -) [audio-video]; laser discs for use in storing music; musical recordings in the form of discs; magnetic data carriers; optical discs; optical recording media differ in their nature, purpose, method of use, distribution channels and producers from the opponent’s goods and services covered by EUTM No 3 281 383 (i.e. the general indications in Classes 16, 36 and 38, the goods and services in the alphabetical lists that fall under the natural and literal meaning of those general indications as well as the items in the alphabetical list of Class 16 that do not fall within the natural and literal meaning of the general indications of this class, namely aquarium hoods; chaplets; holders for checkbooks [cheque books]; indoor aquaria; indoor terrariums [vivariums]; passport holders) and by Spanish marks No 13 106 919 and No 13 106 919. Therefore, these contested goods are dissimilar to the opponent’s goods and services.

A magnetic encoder is a device, circuit, transducer, software program or algorithm that converts information from one format or code to another, for the purpose of standardisation, speed, secrecy, security or saving space by reducing size. The contested magnetic encoders are, therefore, dissimilar to all the opponent’s goods and services (including the items in the alphabetical list of Class 16 of EUTM No 3 281 383 that do not fall within the natural and literal meaning of the general indications in this class), since the natures, purposes and methods of use of these services are different. They do not have the same providers or distribution channels and they are not in competition.

The contested compact disc cases; jackets for video cassettes are items for storing and protecting discs or cassettes, respectively. These contested goods are dissimilar to the opponent’s goods and services (including the items in the alphabetical list of Class 16 of EUTM No 3 281 383 that do not fall within the natural and literal meaning of the general indications in this class), since they have different purposes, producers and distribution channels. Furthermore, they are neither in competition nor complementary.

Contested services in Class 35

The contested distribution of products for advertising purposes; distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; arranging and conducting marketing promotional events for others; on-line promotion of computer networks and websites; sales promotion for others; provision of on-line business and commercial information; promotion [advertising] of concerts; publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; production of sound recordings for advertising purposes; advertising by mail order are different types of advertising services. Advertising services 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 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.

The nature and purpose of advertising services are fundamentally different from the manufacture of goods or from the provision of many other services. The mere fact that some goods or services may appear in advertisements is insufficient for finding a similarity. Therefore, these contested services are dissimilar to the opponent’s goods or services being advertised (including the items in the alphabetical list of Class 16 of EUTM No 3 281 383 that do not fall within the natural and literal meaning of the general indications in this class).

The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising, such as the opponent’s printed matter in Class 16, covered by the European Union trade mark registration No 13 106 919. These goods and services are considered dissimilar.

The contested business management for freelance service providers; commercial administration of the licensing of the goods and services of others are activities that are carried out in order to plan, organise and run a business. These contested services have different purposes and methods of use from the opponent’s goods and services. They do not have the same distribution channels and they are not in competition. Furthermore, they are not provided by the same companies. Therefore, these contested services are dissimilar to the opponent’s goods and services (including the items in the alphabetical list of Class 16 of EUTM No 3 281 383 that do not fall within the natural and literal meaning of the general indications in this class).

The contested import-export agency services are offered by specialised companies. They relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. These services have no sufficient connection with the opponent’s goods and services. They have a different nature and purpose, and they do not usually have the same producers and/or providers, relevant public or distribution channels. These goods and services are not in competition or complementary. Therefore, the contested import-export agency services are dissimilar to the opponent’s goods and services (including the items in the alphabetical list of Class 16 of EUTM No 3 281 383 that do not fall within the natural and literal meaning of the general indications in this class).

Contested services in Class 38

The contested delivery of digital music by telecommunications; provision of on-line forums; providing access to mp3 web sites on the internet; transmission of interactive entertainment software; transmission of sound by electronic means; streaming of audio material on the internet are included in the broad category of the opponent’s telecommunications in Class 38, covered by European Union trade mark registration No 13 106 919. Therefore, they are identical.

Contested services in Class 41

Cultural services are identically included in the applicant’s list of goods and services and in the opponent’s list of goods and services covered by Spanish trade mark registration No 13 106 919.

The contested information and advisory services relating to entertainment; arranging and conducting of concerts; organising of festivals relating to jazz music; provision of facilities for live band performances are included in the broad category of the opponent’s organisation of cultural activities, covered by Spanish trade mark registration No 13 106 919. Therefore, they are identical.

The contested musical entertainment is included in the broad category of the opponent’s entertainment, covered by Spanish trade mark registration No 13 106 919. Therefore, they are identical.

The contested music recording studio services; recording of music; consultancy on film and music production; rental of acoustic recording equipment; production of musical recordings; audio production are activities related to audio production. Production includes, but is not limited to, gathering ideas for the project, selecting songs/videos and/or session musicians, proposing changes to song arrangements, coaching the artist and musicians in the studio, controlling the recording sessions, and supervising the entire process through audio mixing (recorded music) and, in some cases, to the audio mastering stage. Producers also often take on a wider entrepreneurial role, with responsibility for the budget, schedules, contracts and negotiations. These services are similar to the opponent’s entertainment, covered by Spanish trade mark registration No 13 106 919, as they have the same purpose. They can also have the same providers and relevant public.

The contested music publishing and music recording services; selection and compilation of pre-recorded music for broadcasting by others are different types of music editing, since this activity includes the recording, selection, collection and publishing of music. These contested services are similar to the opponent’s entertainment, covered by Spanish trade mark registration No 13 106 919, as they have the same purpose. They can also have the same providers and relevant public.

The contested providing digital music [not downloadable] from MP3 internet web sites is similar to a low degree to the opponent’s organising cultural activities, covered by Spanish trade mark registration No 13 106 919, as these services can have the same distribution channels. Furthermore, they are complementary.

2. 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 goods and services found to be identical or similar (to different degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high depending on the purpose and price of the goods or services.

3. The signs

European Union trade mark registration No 13 106 919 HELVETIA Spanish trade mark registration No 13 106 919 Spanish trade mark registration No 13 106 919	Hevhetia
Earlier trade marks	Contested sign

The relevant territory is the European Union for European Union trade mark registration No 13 106 91913 106 919and Spain for Spanish trade mark registrations No 13 106 919 and No 13 106 919.

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 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs, as regards European Union trade mark registration No 13 106 91913 106 919, on the Spanish-speaking part of the relevant public.

Earlier European Union trade mark registration No 13 106 91913 106 919is a figurative sign consisting of two verbal elements, ‘HELVETIA’ and ‘PREVISION’, and a figurative element. The verbal element ‘HELVETIA’ is placed above the verbal element ‘PREVISION’. The two word elements are in upper case bold letters. The figurative element, placed to the right of the verbal elements, is a depiction of a three-dimensional triangle. The sides of the triangle are in different colours, namely red, green and purple.

Earlier Spanish trade mark registration No 13 106 919 is a word mark, ‘HELVETIA’.

Earlier Spanish trade mark registration No 13 106 919 is a figurative sign consisting of two verbal elements, namely ‘ORIENTACIÓN’ written in upper case letters and ‘HELVETIA’ written in lower case letters. The element ‘ORIENTACIÓN’ is placed above the element ‘HELVETIA’. The figurative element, placed to the right of the word elements, is a depiction of a three-dimensional triangle. The sides of the triangle are in different colours, namely red, pale green and purple.

The contested sign is a word sign, ‘Hevhetia’, written in title case letters.

The word element ‘HELVETIA’, present in the earlier signs, will not be associated by the majority of the Spanish-speaking public with any meaning. However, it is likely that consumers with a good knowledge of Latin or history will associate it with ‘the female national personification of Switzerland, officially Confœderatio Helvetica, the Swiss Confederation’. It will be perceived by this part of the relevant public as merely describing the origin or place of provision of the goods and/or services or as an indication that the goods and services are in compliance with Swiss standards; consequently, it will most likely be perceived as a reference to the nature of the goods and services, namely that they are from Switzerland, and, therefore, it has a weak character. This means that the part of the relevant public that understands this element will not pay as much attention to this weak element.

Earlier European Union trade mark registration No 13 106 91913 106 919has no element that could be considered more dominant (visually eye-catching) than other elements. The element ‘PREVISÓN’ will be understood by the relevant public as ‘the act or power of foreseeing’ (information extracted from Diccionario de la lengua española on 23/03/2016 at www.rae.es). For the majority of the public, this mark has no element that is clearly more distinctive than other elements. For the part of the public that understands the element ‘HELVETIA’, the word element ‘PREVISIÓN’ is the most distinctive element.

As regards earlier mark No 2 805 668, formed of the word ‘HELVETIA’, and bearing in mind the above considerations, it must be considered that its distinctiveness for this part of the public is lower than normal. This earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The element ‘ORIENTACIÓN’ in earlier Spanish trade mark registration No 13 106 919 will be understood by the relevant public as ‘the act or process of orienting or the state of being oriented’ (information extracted from Diccionario de la lengua española on 23/03/2016 at www.rae.es). For the majority of the public, this mark has no element that is clearly more distinctive than other elements. For the part of the public that understands the element ‘HELVETIA’, the element ‘ORIENTACIÓN’ is more distinctive. Earlier Spanish trade mark registration No 13 106 919 has no element that could be considered more dominant (visually eye catching) than other elements.

The contested sign has no element that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, earlier sign 1) and the contested sign coincide in ‘HE**ETIA’. They also have in common the letter ‘V’, albeit in different positions in the signs (the fourth letter in the earlier mark and the third letter in the contested sign). They also differ in the third letter of the earlier mark, ‘L’, and in the fourth letter of the contested sign, Once you case and themendments directly in teh ner since you would have to send the draft first to him. nd ics ut this is just ‘H’, and in the word ‘PREVISION’ and the figurative element in the earlier sign, which have no counterparts in the contested sign.

It should be noted that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the top of the sign (the initial part) the one that first catches the attention of the reader.

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; decisions of 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an average degree.

Earlier sign 2) and the contested sign coincide in ‘HE**ETIA’. They also have in common the letter ‘V’, albeit in different positions in the signs (the fourth letter in the earlier mark and the third letter in the contested sign). They also differ in the third letter of the earlier mark, ‘L’, and in the fourth letter of the contested sign, Once you case and themendments directly in teh ner since you would have to send the draft first to him. nd ics ut this is just ‘H’.

Therefore, the signs are visually highly similar.

Earlier sign 3) and the contested sign coincide in ‘HE**ETIA’. They also have in common the letter ‘V’, albeit in different positions in the signs (the fourth letter in the earlier mark and the third letter in the contested sign). They also differ in the third letter of the earlier mark, ‘L’, and in the fourth letter of the contested sign, Once you case and themendments directly in teh ner since you would have to send the draft first to him. nd ics ut this is just ‘H’. Furthermore, they also differ in the verbal element ‘ORIENTACIÓN’ and in the figurative element in the earlier sign, which have no counterparts in the contested sign.

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; decisions of 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, earlier sign 1) will be pronounced ‘EL-VE-TIA’ and ‘PREVISION’. The contested sign will be pronounced ‘E-VE-TIA’, since in Spanish the letter ‘H’ is silent. The pronunciation differs in the sound of the third letter, ‛L’, of the earlier sign and in the sound of the letters ‛PREVISION’ which have no counterpart in the contested sign . In spite of these differences, the first word element of earlier sign 1) and the contested sign have the same number of syllables, rhythm and intonation. The figurative component of earlier sign 1) will not be referred to aurally by the relevant public and as such is not subject to a phonetic assessment.

Therefore, the signs are aurally similar to an average degree.

Earlier sign 2) will be pronounced ‘EL-VE-TIA’. The contested sign will be pronounced ‘E-VE-TIA’, since in Spanish the letter ‘H’ is silent. The pronunciation only differs in the sound of the third letter, ‛L’, of earlier sign 2) which has no counterpart in the contested sign.

Therefore, the signs are aurally highly similar.

Earlier sign 3) sign will be pronounced ‘ORIENTACIÓN’ and ‘EL-VE-TIA’. The contested sign will be pronounced ‘E-VE-TIA’, because, as stated above, in Spanish the letter ‘H’ is silent. The pronunciation differs in the sound of the third letter, ‛L’, of earlier sign 3) and in the sound of the letters forming the verbal element ‘ORIENTACIÓN’, which have no counterpart in the contested sign. The figurative component of earlier sign 3) is not subject to a phonetic assessment as it will not be pronounced by the relevant public.

Therefore, the signs are aurally similar to an average degree.

Conceptually, as already explained above, the verbal element ‘HELVETIA’ of the earlier marks has no meaning for the majority of the Spanish-speaking public. However, it cannot be ruled out that ‘HELVETIA’ may be perceived by the relevant public with a good knowledge of Latin or history as the female national personification of Switzerland. Furthermore, the Spanish-speaking consumers will understand the word ‘PREVISIÓN’ of earlier sign 1) as meaning ‘the act or power of foreseeing’ (information extracted from Diccionario de la lengua española on 18/05/2016 at www.rae.es) and the word ‘ORIENTACIÓN’ of earlier sign 3) as ‘the act or process of orienting or the state of being oriented’ (information extracted from Diccionario de la lengua española on 18/05/2016 at www.rae.es). The figurative element in the earlier marks 1) and 3) will be perceived as a triangle.

The contested sign, ‘HEVHETIA’, has no meaning, per se, for Spanish-speaking consumers.

Therefore, earlier signs 1) and 3) and the contested sign are not conceptually similar, since the contested one will not be associated with any meaning.

With regard to earlier sign 2), since a conceptual comparison is not possible for the majority of the relevant public, the conceptual aspect does not influence the assessment of the similarity of the signs. For the part of the public that understands the element ‘HELVETIA’ in the earlier mark, the signs are not conceptually similar, since one of the signs will not be associated with any meaning.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, Spanish trade mark registration No 13 106 919 has been extensively used and enjoys an enhanced scope of protection for the services in Class 36. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, for the majority of the Spanish-speaking public, Spanish trade mark registration No 13 106 919 as a whole has no meaning for any of the services in question. Therefore, for this part of the public, the distinctiveness of the earlier mark must be seen as normal. For the part of the public that understands ‘HELVETIA’, the distinctiveness of the earlier mark must be seen as low for all the services in question.

The opponent did not explicitly claim that European Union trade mark registration No 13 106 919 and Spanish trade mark registration No 13 106 919 are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of these earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of these earlier marks must be seen as normal, despite the presence (for a part of the public) in earlier European Union trade mark registration No 13 106 919 and Spanish trade mark registration No 13 106 919 of a weak element, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22). Furthermore, the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors, and in particular, a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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).

As has been concluded above, the contested goods and services are partly identical, partly similar (to different degrees) and partly dissimilar to those of the opponent; the relevant goods and services target the public at large and business customers with specific professional knowledge or expertise, whose level of attention vary from average to high. Furthermore, the earlier marks European Union trade mark registration No 13 106 919 and Spanish trade mark registration No 13 106 919 are considered to enjoy a normal degree of distinctiveness. Spanish trade mark registration No 13 106 919 is weak for a part of the public, as stated above. However, for the majority of the relevant consumers, the degree of distinctiveness of this earlier mark must also be seen as normal.

Earlier marks 1) and 3) and the contested sign are visually and aurally similar to an average degree and not conceptually similar. Earlier sign 2) and the contested sign are highly similar visually and aurally. For the majority of the relevant public, a conceptual comparison is not possible, as neither of the signs has a meaning. For the remainder of the public, the signs are not conceptually similar.

Bearing in mind the abovementioned principles, the Opposition Division finds that, because of their similarities, the differences between the marks are not sufficient to safely exclude a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 13 106 919 and Spanish trade mark registrations No 13 106 919 and No 13 106 919. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to different degrees) to those of the earlier trade marks.

The rest of the contested goods and 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 goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of earlier Spanish trade mark registration No 13 106 919, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical or similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of earlier Spanish trade mark registration No 13 106 919 in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

Spanish trade mark registrations No 13 106 919 for the word mark ‘HELVETIA SEGUROS’, No 13 106 919 for the word mark ‘CLUB HELVETIA’ and No 13 106 919 for the word mark ‘SALA HELVETIA’ and the Spanish well-known mark ‘HELVETIA’.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

Consequently, the examination continues in relation to the remaining ground of the opposition, namely Article 8(5) EUTMR, in relation to Spanish trade mark registration No 13 106 919, namely with regard to services in Class 36, for the goods and services found to be dissimilar.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier mark

According to the opponent, the earlier trade mark has a reputation in Spain for the services in Class 36. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case. The examination will proceed on the assumption that the earlier mark has a reputation in connection with the services in Class 36. This is the most favourable scenario in which the opponent’s case can be examined, which will be however without prejudice to the applicant, as it will be shown hereinbelow in section c) ‘The link between the signs’.

3. The ‘link’ between the signs

The Opposition Division has assumed in the previous section of this decision that the earlier mark is reputed for the services in Class 36. Furthermore, as seen above the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

While the relevant section of the public for the goods or services covered by the conflicting marks is the same or overlaps to some extent, those goods or services are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

As the Court has stressed, one factor when considering a link must be ‘the nature of the goods or services for which the conflicting marks were registered, including the degree of … dissimilarity between those goods or services, and the relevant section of the public’ (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42).

In the present case, when analysing the nature of the goods and services, consideration must be given to the fact that the goods and services in question – which broadly speaking are insurance services on the one hand and goods and services related to the field of data processing, data, and business management, business administration and advertising on the other – belong to completely distinct industries and constitute market sectors that have no material overlap and, in essence, have nothing whatsoever in common.

The Opposition Division is therefore of the view that the contested trade mark is unlikely to bring the earlier trade mark to the minds of the average consumer when the significantly different goods and services are taken into account. In other words, given the large gap between the goods and services in question, the relevant consumer will encounter the term ‘Hevhetia’ without making any mental connection with the earlier mark.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Plamen IVANOV

Eamonn KELLY

Oana-Alina STURZA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal shall 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 720 has been paid.