OPPOSITION No B 2 567 579

CoStar Realty Information, Inc., CoStar Group, 1331 L Street, NW, Washington District of Columbia 20005, United States of America (opponent), represented by D Young & Co LLP, 120 Holborn, London EC1N 2DY, United Kingdom (professional representative)

a g a i n s t

Starcoproperty S.L., Avenida de Linares 1, 1ºC, 15005 A Coruña, Spain (applicant), represented by Cuatrecasas Gonçalves Pereira Propiedad Industrial S.R.L., C/ Almagro 9, 28010 Madrid, Spain (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 567 579 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 019 509. The opposition is based on European Union trade mark registration No 4 069 688 and on United Kingdom trade mark registrations No 2 161 148 and No 3 093 500. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier United Kingdom trade mark registrations No 2 161 148 ‘COSTAR’ and No 3 093 500 on which the opposition is based.

On 07/09/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was then extended upon request and expired on 12/03/2016.

The opponent did not submit any evidence concerning the substantiation of these two earlier trade marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the following trade mark on which the opposition is based, European Union trade mark registration No 4 069 688.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 01/06/2015. The opponent was therefore required to prove that the trade marks were put to genuine use in the European Union from 01/06/2010 to 31/05/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 36: Providing real estate information, namely, space availability, building characteristics, property for sales, sales comparables, contact information, historical trends, and high resolution digital imagery; and real estate consultation services.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 06/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/08/2016 to submit evidence of use of the earlier trade mark and after a request by the opponent the time limit expired on 11/10/2016.On 07/10/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• A witness statement of Matthew Green, Finance & Operations Director of the opponent´s company, CoStar UK Limited, stating that the company changed name to COSTAR in 1999 and that it currently tracks and monitors 450 000 commercial property buildings in the UK. Mr Green states that the opponent is a market leader as a provider of real time data and insight into the commercial industry which has led to industry recognition and awards in 2014 and 2015. He claims that the opponent has accrued extensive goodwill and reputation due to the opponent´s renowned activities in the commercial property industry. Additional information is provided along with the following attachments:
  
  

  • A document originating from the opponent with details of the opponent´s monthly and annual spending on advertising and promotion in the United Kingdom for the period 2010-2015, showing the investments made by the company in advertising and promotional activities.

• Examples of advertisements and promotions of the COSTAR services dated 2014 and 2015, in the form of emails or reports which set the review of the company with Marketing and PR projects in which the mark ‘COSTAR’ can be seen related to commercial investments activities. These documents also show awards that the company received in 2014 as ‘one of the top 5 single branch investment agencies’ for acquisition agents, ‘winner investment agency’ for vendor agents and ‘recognised investment agency’ for acquisition agent.

• Press clips dated 2011, 2014 and 2015 in which the COSTAR group is mentioned in the local and national press in the United Kingdom among other countries as can be seen in the ‘Washington business journal’, the ‘Herald Scotland’, ‘Birmingham Post’, ‘Irish Independent’, ‘Manchester Evening News’, ‘Built Environment News’, ‘Property Investor Europe’ among others, referring to commercial retail estate services.

• Excerpts from the opponent’s websites www.costar.co.uk and www.costargroup.com demonstrating the activities carried out under the brand ‘COSTAR’ in relation to commercial retail estate services.

• Excerpts dated 2015, from different social media websites such as Facebook, Youtube and Twitter in which the opponent promotes its mark ‘COSTAR’ as having its own page on these medias.

• In a non-dated document and without any source of origin the opponent provides its company´s net revenue for the last 5 years in the United Kingdom and Europe.

• Samples of invoices dated from 2010 to 2015 which provide evidence of some of the services which have been offered in the United Kingdom by the opponent´s company.

On 11/03/2016, the opponent submitted evidence to demonstrate that its earlier relied upon trade mark has enhanced distinctiveness in the United Kingdom. This evidence is exactly the same as what was sent to show proof of use, and therefore no additional evidence has to be taken into consideration.

The applicant argues that most of the evidence originates from the opponent.

In this regards, as far as the witness statement is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The invoices, press articles show that the place of use is the United Kingdom. This can be inferred from the language of the documents (‘English’), the currency mentioned (‘pounds’) and some addresses in ‘Leeds, Manchester, etc…’. Therefore, the evidence relates to the relevant territory, and respectively in the EU.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

Most of the evidence is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely ‘invoices, advertisements’, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Use of the mark need not be quantitatively significant for it to be deemed genuine.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for commercial real estate consultation services. These services can be considered to form an objective subcategory of real estate consultation services. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for the following services:

Class 36: Commercial real estate consultation services.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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.

1. The services

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

Class 36: Commercial real estate consultation services.

The contested services are the following:

Class 36: Real estate affairs; purchase and sale of real estate; property administration services, namely, rental services, appraisal of real estate or financing.

Class 37: Building construction; repair in the field of buildings; masonry repair, plumbing, heating, electrical installation services and roofing; services relating to technical installations for buildings; masonry installation services, plumbing, electricity and heating.

Some of the contested services are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.

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 services assumed to be identical are directed at the general public and at business customers with specific professional knowledge or expertise. Even when the services target also the average consumer, who is reasonably well informed and reasonably observant and circumspect, as these services may have important financial consequences for their users, the consumers’ degree of attention would be quite high when choosing them (03/02/2011, R 719/2010-1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

3. The signs

COSTAR
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The element ‘PROPERTY’ of the contested sign is understood in part of the EU, such as the English speaking part of the public, as indicating ‘something of value, either tangible, such as land, or intangible, such as patents, copyrights, etc’ (information extracted from Collins Dictionaries at https://www.collinsdictionary.com/dictionary/english/property), and therefore bearing in mind that the relevant services in Class 36 are real estate related services and part of the services in Class 37 are building services, this element is weak for these services. However, for the other part of the public, it has no meaning and is distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘PROPERTY’ has a meaning, and is therefore weak.

The earlier mark is a word mark composed of the word element ‘COSTAR’.

The contested mark is a figurative mark representing the word ‘Starcoproperty’, with the letters ‘STARCO’ depicted in clear blue colour and the remaining letters in grey.

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, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-221/06, ‘RESPICUR’, para. 57).

In the case at hand, the word element of the earlier mark will be split into two words, ‘CO’, globally used as an abbreviation for company and ‘STAR’ which will be associated by the relevant public with ‘a large ball of burning gas in space. Stars appear to us as small points of light in the sky on clear nights’ (information extracted from Collins Dictionaries at https://www.collinsdictionary.com/dictionary/english/star) or with ‘a Famous actors, musicians, and sports players are often referred to as stars’ (information extracted from Collins Dictionaries at https://www.collinsdictionary.com/dictionary/english/star ). The earlier mark has no elements that could be considered clearly more distinctive than other elements.

As regards the contested mark, the sign as a whole has no meaning. However, the relevant public will recognise the element ‘PROPERTY’ not only due to the different colours used for ‘STARCO’ and then for the remaining element, but because it will be understood as referred to above. Bearing in mind that the relevant services in Class 36 are real estate related services and part of the services in Class 37 are building services, this element is weak for these services. Consequently, the element ‘STARCO’ can be considered as the more distinctive element of the contested mark.

The signs have no elements that could be considered clearly more dominant than other elements.

Visually, the six letters of the earlier mark are also present in the contested mark, but in different positions. The marks differ also in the remaining letters ‘PROPERTY’ of the contested mark which have no counterpart in the earlier mark, and in the figurative aspects of the contested mark.

Therefore, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘S-T-A-R-C-O’ present in both signs but in different order. The pronunciation differs in the sound of the remaining letters ‘PROPERTY’ of the contested mark, which have no counterpart in the earlier mark.

Therefore, the signs are similar to a low degree

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings, the signs are not conceptually similar.

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 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.

According to the opponent the earlier trade mark has enhanced distinctiveness in the United Kingdom in connection with all the services for which it is registered.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent aimed at demonstrating the reputation of the earlier mark in the United Kingdom has already been assessed when assessing the request of proof of use. This evidence is exactly the same, and therefore no additional evidence has to be taken into consideration.

Taking into consideration the evidence submitted, the Opposition Division concludes that the opponent has not demonstrated that the earlier trade mark acquired a high degree of distinctiveness through its use.

The evidence filed by the opponent is good at showing the presence of the COSTAR mark on the market in connection with commercial real estate. Furthermore, some of the evidence indicates that the opponent is ‘one of the top 5 single branch investment agencies’ for acquisition agents, the ‘winner investment agency’ for vendor agents and ‘recognized investment agency’ for acquisition agent’. However, whilst they refer to the position of the opponent’s company within the market place, they do not assist in demonstrating that the brand has achieved such a level of recognition on the market as to conclude that it has an enhanced distinctiveness. This must be shown or supported by other evidence, and it is here that the opponent’s evidence is lacking in depth and breadth. The evidence shows little or no information regarding the degree of the relevant public’s recognition of the trade marks for the actual services. There are no documents such as opinion polls or market surveys, and no indication of the market share attained by the trade mark in the relevant territory.

The evidence, therefore, as a whole does not provide sufficient indication of the degree of recognition of the trade mark by the relevant public. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public.

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.

5. Global assessment, other arguments and conclusion

The services assumed to be identical. The degree of attention of the relevant public in relation to those services is higher than average.

As detailed above the signs share six letters but are presented in different positions. Consequently even though they share the same letters, they are in a different order and the contested mark contains the weak element ‘PROPERTY’, which has no counterpart in the earlier mark. Further, the colours used in the contested mark render the signs further visually different. Consumers generally tend to focus on the beginnings of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the different beginnings of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Furthermore, signs are seen as a whole. The signs are conceptually dissimilar and whilst they share the same six letters there is nothing to suggest that consumers will switch the starting and ending sounds from one sign to the other to form a particular link between them. All of this leads the Opposition Division to the conclusion that there is no association that the public might make between the two signs. This is all the more true when taking into account that the level of attention of the relevant public is high.

Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The Opposition Division has concentrated on the part of the public for which the element ‘PROPERTY’ has a meaning and is weak in relation to part of the services, which represents the best-case scenario for the opponent. This absence of a likelihood of confusion equally applies to the part of the public for which this element does not have a meaning. This is because, as a result of the non-weak character of this element, that part of the public will perceive the signs as being even less similar.

COSTS

According to Article 85(1) EUTMR, 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 Rule 94(7)(d)(ii) EUTMIR, 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

Ferenc GAZDA

Cristina CRESPO MOLTO

Irina SOTIROVA

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 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 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 720 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) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.