OPPOSITION No B 2 639 154

Jacobus Galama, Wakkerendijk 32 b, 3755 ZG Eemnes, the Netherlands (opponent), represented by Landmark B.V., Drentsestraat 4, 3812 EH Amersfoort, the Netherlands (professional representative)

a g a i n s t

Fàbregas Advocats Associats, SLP, Passeig de Gràcia 112, 08008 Barcelona, Spain (applicant), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008 Barcelona, Spain (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 639 154 is partially upheld, namely for the following contested services:

Class 36: Tax advice services; Tax consultancy.

Class 45: Legal services; Legal and tax consultancy; Legal advice (guardianship); Litigation services; Legal research; Legal, judicial and extrajudicial defence in the field of law; Security services for the protection of property and persons; Personal and social services rendered by others to meet the needs of individuals, in the legal field.

2. European Union trade mark application No 14 283 907 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 283 907. The opposition is based on Benelux trade mark registration No 936 384. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 9: Application software for mobile phones.

Class 38: Communication by mobile phones; communication by fixed and mobile phones.

Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

The contested services are the following:

Class 35: Advertising; Business management; Business administration; Office functions; Business consultancy and advisory services; Business management and organisation consultancy for commercial and industrial companies; Services of commercial representations.

Class 36: Tax advice services; Insurance; Finance services; Banking, monetary and financial services; Real estate services; Management, leasing, promotion and rental of real estate and real estate brokers and appraisal; Surveys; Tax consultancy.

Class 45: Legal services; Legal and tax consultancy; Legal advice (guardianship); Litigation services; Legal research; Legal, judicial and extrajudicial defence in the field of law; Security services for the protection of property and persons; Personal and social services rendered by others to meet the needs of individuals, in the legal field.

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 advertising; business management; business administration; office functions; business consultancy and advisory services; business management and organisation consultancy for commercial and industrial companies; services of commercial representations are aimed at supporting or helping other businesses to carry out or improve their business. They are dissimilar to opponent’s goods and services. Apart from being different in natures, they have different purposes, distribution channels and origins. Furthermore, they are not in competition.

Contested services in Class 36

As far as the contested tax advice services; tax consultancy are concerned, it is not uncommon that they are provided together with the opponent’s legal services by the same or linked undertakings and to the same customers. Consequently, they are similar.

However, the contested Insurance; Finance services; Banking, monetary and financial services; Real estate services; Management, leasing, promotion and rental of real estate and real estate brokers and appraisal; Surveys are dissimilar to all the opponent’s goods and services. Consumers do not expect an insurance agency, financial or finances related institution to offer legal advice or any other goods and services of the opponent. The goods and services under comparison differ in their natures, purposes, channels of trade and are neither in competition nor complementary.

Contested services in Class 45

Legal services and security services for the protection of property and persons are identically contained in both lists of services in Class 45.

The contested legal and tax consultancy; legal advice (guardianship); litigation services; legal research; legal, judicial and extrajudicial defence in the field of law; personal and social services rendered by others to meet the needs of individuals, in the legal field are included in the broad category of the opponent’s legal services. Therefore, they are identical.

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 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. Since these services are specialised and may have important financial consequences for their users, consumers’ level of attention would be higher than average when choosing them.

3. The signs

appvocaat	APPVOCATUS
Earlier trade mark	Contested sign

The relevant territory is Benelux.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C‑108/05, Europolis, EU:C:2006:530).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on Dutch-speaking part of the relevant public since in this language the marks will evoke clear concepts.

Given that the signs are word marks, which are protected for the words themselves and not their specific depiction, the difference in the case used is irrelevant to the comparison.

Conceptually, the words ‘APPVOCAAT’ and ‘APPVOCATUS’ as such have no meaning in Dutch. However, the public is likely to perceive the earlier mark as a word play on the Dutch word ‘advocaat’ (lawyer) and ‘APP’ which is an abbreviation of ‘application’. This also applies to the contested sign since the ending -US will be perceived as a Latinized word, a language that is also associated with the legal profession.

However, despite this association the signs are distinctive, since the beginning ‘APP’ adds enough fancifulness to the signs. Therefore, the signs are conceptually highly similar.

Visually, the signs coincide in the string of six letters ‘APPVOCA’. They also share the letter ‘T’. This letter appears as the ninth letter in the earlier mark and as the eight letter of the contested sign since there is a double letter ‘A’ preceding it in the earlier mark while there is only one letter ‘A’ preceding it in the contested sign. This difference is attenuated by the fact that in both signs the sequence ‘AT’ appears in a similar position. The signs differ further in the letters ‘US’ ending the contested sign.

However, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the string of six letters ‘APPVOC’, present in the beginning of both signs. The sound of the following letters ‘AAT’ versus ‘AT’ is the same. Nevertheless, there are some differences in the rhythm and intonation as the earlier mark is composed of three syllables (‘APP-VO-CAAT’) while the contested sign is composed of four syllables (‘APP-VO-CA-TUS’). Furthermore, the pronunciation differs in the sound of the ending letters ‛US’ of the contested sign.

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

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.

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.

5. Global assessment, other arguments and conclusion

As follows from the analysis carried out above, the contested sign has a high degree of visual and conceptual similarity and an average degree of aural similarity with the earlier distinctive mark.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

The Opposition Division is of the opinion that the differences placed in the endings of the signs are not sufficient to counteract their similarities. Consequently, the relevant consumers - even if their degree of attention is higher than average - may believe that the identical and similar services come from the same undertaking or from economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Dutch-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 936 384.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

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 will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Katarzyna ZANIECKA

Justyna GBYL

Adriana VAN ROODEN

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.