OPPOSITION No B 2 825 878

Luigi Nicosia, Via Luca Landucci 10, 50136 Firenze, Italy (opponent), represented by Praxi Intellectual Property S.p.A., Via Baracca 1r 4 piano, 17100 Savona, Italy (professional representative)

a g a i n s t

emovis SA SU, 86, rue Henry Farman, 92130 Issy les Moulineaux, France (applicant), represented by Disain IP, Avda. La Goleta 17 Esc. 2 2ºC, 03540 Alicante, Spain (professional representative).

On 04/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 825 878 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 327 406. The opposition is based on European Union trade mark registration No 4 815 891 for the figurative mark , European Union trade mark registration No 11 112 729 for the word mark ‘EMO EUROPEAN MUNICIPALITY OUTSOURCING’ and the Austrian, French, German, Italian and Spanish non-registered trade mark ‘EMO’ (word mark). The opponent invoked Article 8(1)(b) EUTMR inasmuch as the opposition is based on the aforementioned earlier European Union trade mark registrations. As regards the non-registered trade mark, the opponent invoked Article 8(4) 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 services on which the opposition is based are the following as regards EUTM No 11 112 729:

Class 35: Procurement and management of information and statistical data connected with credit recovery and with collection and recovery of fines and penalties; providing business information relating to computer databases for credit management and recovery; commercial information provided by access to a computerised database; invoicing and billing; acquisition, retrieval and gathering of commercial, business and economic information; computerised business information storage; compilation and systemisation of information into computer databases; business research; business investigations and investigations relating to credit management and recovery; data searches in computerised files for others; managing telephone call centres, including for others; computerised file and database management.

Class 36: Debt recovery and collection agencies; debt recovery and collection; administration and payment collection services; administration and collection of payments connected to fines, penalties and sums that have not been paid; credit card payment processing; processing electronic payments through pre-paid cards; home collection of financial payments; processing of tax payments; computerised legal debt collection services; automated payment services; automated payment of bills, fines and penalties; electronic payment services; remote payment; provision of financial information by way of computer terminals; electronic commerce, namely providing information relating to credit management and online collection.

Class 42: Notification of fines and penalties, all provided by outsourcing; creation and design of websites and internet portals and extranets for management of commercial information, credit appraisal, credit collection and recovery, telematic management of documentation, computerised management of payments, including in public administration.

Class 45: Legal services connected with collection and recovery of credit, fines and penalties.

As regards EUTM No 4 815 891, the opposition is based on the following services:

Class 35: Computer management of data relating to credit recovery.

Class 36: Management of procedures relating to credit recovery; outsourced management and collection of credit by means of a global computer network.

Class 42: Services relating to the notification of administrative penalties, all outsourced.

The contested goods and services are the following:

Class 9: Apparatus and instruments for the supply, distribution, transformation, accumulation, regulation or control of electric current; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission and reproduction of sound or images; magnetic data carriers, recording discs; autocalculating machines, data-processing equipment and computers; computer memories, modems, interfaces; data carriers, in particular optical or magnetic data carriers; intercommunication apparatus, software, software packages, telecommunications apparatus and telecommunications peripheral apparatus; software products; smart cards, electronic circuit boards, electronic identification cards; telecommunications control equipment, apparatus for storage, conversion, processing and transmission of data, information and signals; optical reading apparatus and instruments for encoded data; multimedia servers; control and steering software; scientific and technical software; sensors, detectors, electronic alarm systems; access identification systems; video systems; electromagnetic information systems, information and command systems (security), electronic pricing systems; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; telecommunications equipment and installations, in particular for telephone, mobile radio, mobile telephone, data and computer networks; mechanisms for coin-operated apparatus, in particular automatic toll, parking and fee payment and checking machines; cash registers; computer programs and software; terrestrial or satellite-supported position-locating and navigation apparatus; electronic traffic telematics and traffic-control systems; electronically controlled access barriers; electronic video systems for object and symbol recognition and object tracking; transceivers, transponders, identification apparatus and cards for object identification and data documentation with transponders, transmitters, receivers, aerials, central processor units and communications units; electronic toll and fee systems and installations; electronic communication and charging apparatus for on-board vehicle operation (on-board units) for communication with electronic toll and fee systems and installations; components and combinations of all the aforesaid goods

Class 35: Commercial or industrial management assistance, consultancy relating to business information or enquiries, compilation of information, administrative consultancy in relation to the selection and use of computer and telecommunications and security equipment; advertising; business management services; business consultancy and advisory services; business administration; office functions; rental of office machines; subscription services (for third parties) for tolling, electronic tolling on road or highways that allow access to the transportation infrastructures; tolling subscription services; assistance to the management of tolling and electronic tolling accounts (office work), creation of detailed statements of tolling transactions, assistance for the creation of conformity application filings; subscription to rental services and tracking of floats (means of transport), through electronic, it and satellite means; business consultancy services in relation with production and implementation work in the fields of industry, telecommunications, analysis, programming, computer operation.

Class 36: Insurance; financial affairs, monetary affairs and clearing (financial clearing), in particular for levying road tolls; road toll settlement, for others; real estate affairs.

Class 37: Installation services in relation with tolling equipment and system; repair services of tolling equipment and system; installation and maintenance of optical, electric and electronic apparatus and devices, telecommunications, computers.

Class 38: Telecommunications services provided by multi-service business networks; secure messaging systems; data transmission services accessible by access code or by terminals; interconnection of networks for businesses; consultancy and advisory services in the field of telecommunications for tolling infrastructure and services.

Class 39: Transport; transportation information; transport brokerage; freight forwarding; freighting; storage; storage information; rental of warehouses; vehicle towing; professional consultancy (non-business) relating to transport and traffic conditions on road and motorway networks, management of stations and tolls.

Class 42: Design and development of computer systems; design and development of high speed equipment for public network operators and companies; engineering relating to applications on large and medium-sized computer systems, software engineering, engineering in the field of computer management and information management, assistance with operating and supervising computer networks; consultancy and technical advice in the field of computing; development of communications systems for air traffic control, network engineering; design or implementation in the field of telecommunications and computer analysis, programming and operation, interconnected information systems (the internet, extranets, intranets); installation and maintenance of computer programs; installation services in relation with tolling software; repair services of tolling software; computer infrastructure management, it infrastructure business security consultancy, payment card information (pci) and information security, it infrastructure organization consultancy.

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 goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical and all the contested goods at least similar to the services of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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, some of the goods and services assumed to be identical or at least similar are directed at both, the public at large and professionals (e.g. photographic apparatus; magnetic data carriers; installation and maintenance of computers; transport; consultancy and technical advice in the field of computing; etc.). The remaining goods and services at issue, such as e.g. cash registers; road toll settlement, for others; repair services of tolling equipment and system; development of communications systems for air traffic control, network engineering; etc. are specialised goods and services directed exclusively at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

For instance, financial services that target the general public are specialised services that may have important financial consequences for their users. Therefore, consumers’ level of attention would be quite high when choosing these kind of services (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).

Likewise, the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer of real estate services is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (decision of 17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

3. The signs

EMO EUROPEAN MUNICIPALITY OUTSOURCING	EMOVIS
Earlier trade marks	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).

The contested sign is the word mark ‘EMOVIS’. The relevant public is unlikely to artificially dissect the verbal element ‘EMOVIS’ into various components. ‘EMOVIS’ will be perceived as a whole, i.e. as a fanciful word that has no meaning and is, therefore, distinctive for the relevant public.

Earlier mark No 11 112 729 is a word mark consisting of the elements ‘EMO EUROPEAN MUNICIPALITY OUTSOURCING’.

The elements ‘EUROPEAN MUNICIPALITY OUTSOURCING’ of the earlier mark are meaningful in English. The English-speaking part of the relevant public will perceive them as alluding to a characteristic of the services rendered, namely that these are outsourcing services for municipalities in Europe. For this part of the relevant public, these elements are less distinctive for the relevant goods and services. For the remaining part of the public, the elements ‘EUROPEAN MUNICIPALITY OUTSOURCING’ have no meaning and therefore normal distinctive character.

As the applicant alleges in English the word “emo” refers (a) to “a style of popular music originating in the United States in the mid 1980s, derived from hardcore punk music” and (b) to “the subculture or style associated with this music” (extracted from www.oed.com/view/Entry/260376?redirectedFrom=emo#eid on 23/05/2018). It is also used with that meaning in other languages such as German, Spanish or French. This meaning could be allusive if not descriptive, at least for some of the goods in Class 9 as e.g. data carriers, in particular optical or magnetic data carriers; software, software packages; software products which could bear such music or game software concerning such music. However, the Opposition Division considers that in combination with the elements ‘EUROPEAN MUMICIPALITY OUTSOURCING’ the relevant public will clearly perceive ‘EMO’ as abbreviation of these elements. The English-speaking part of the public will therefore associate ‘EMO’ with the same concept that these elements evoke. For this part of the public ‘EMO’ would be less distinctive. For the non-English-speaking part of the public, however, the element ‘EMO’ is meaningless and, therefore, normally distinctive.

Earlier mark No 4 815 891 is a figurative mark composed of a figurative element that consists of a stylized representation of the letters EMO in a squared frame with the words ‘European Municipality Outsourcing’ written in standard title case letters below. The verbal elements are the same as in the word mark, namely ‘EMO European Municipality Outsourcing’. As such, the above assertions apply in relation to the verbal elements. They are normally distinctive for the non-English speaking public and less distinctive for the English-speaking public. As regards the figurative elements of the earlier mark, the typeface used for the elements ‘European Municipality Outsourcing’ is standard and therefore non-distinctive. As regards the figurative representation of the acronym ‘EMO’, the typeface and square background is relatively banal, but the specific arrangement of the letters has some distinctive character. Due to its size and position, that figurative representation of the acronym is considered to be the dominant element of this earlier mark.

Nevertheless, 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).

Furthermore, 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.

Visually, the signs coincide in their first three letters ‘EMO’ which make up the first element of the earlier marks which, in case of EUTM No 4 815 891, is also the dominant element. However, they differ in the additional verbal elements ‘EUROPEAN MUNICIPALITY OUTSOURCING’ of the earlier signs and the ending ‘VIS’ of the contested sign. The part of the public that perceives these additional elements as less distinctive, will perceive ‘EMO’ in the earlier marks as equally weak. Therefore, irrespective of whether the verbal elements are perceived as normally or less distinctive, the relevant public will perceive visual differences between the signs as the contested sign will be perceived as a whole and doubles the length of the element ‘EMO’ in the earlier signs. Visually, the relevant public is unlikely to perceive the verbal element ‘EMO’ of the earlier marks as independent element within the contested sign. In case of earlier EUTM No 4 815 891, the signs differ further due to the figurative elements of this mark.

Therefore, the signs are only similar to a low degree as far as earlier European Union trade mark No 11 112 729 is concerned and to a very low degree as regards earlier European Union trade mark No 4 815 891.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘EMO’, present identically at the beginning of all signs. The pronunciation differs in the sound of the letters ‛VIS’ of the contested sign and the letters ‘EUROPEAN MUNICIPALITY OUTSOURCING’ of the earlier signs, none of which has a counterpart in the respective other sign. Even assuming that the relevant public may refer to the earlier marks as ‘EMO’ only, there are still clear differences between the signs as the contested sign is twice as long and the ending ‘VIS’ will be clearly pronounced and perceived.

Therefore, the signs are aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Although the English-speaking public in the relevant territory will perceive the meaning of the earlier signs as explained above, the contested sign has no meaning for that part of the public. Since one of the signs will not be associated with any meaning, for the English-speaking public the signs are not conceptually similar.

For the remaining part of the public in the relevant territory neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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 marks enjoy an enhanced degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with part of the services for which they are registered, namely those relating to debt collection. 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 opponent submitted the following evidence:

• Two brochures in English dating from 2014 and issued by Nivi Credit S.r.l. with an address in Florence, Italy. They contain information on the business of the Nivi Group, in general and, in particular, the outsourcing services offered by the EMO DIVISION and the successful development of this division since its foundation in 2005 (services provided to 500 public administrations in Europe, € 75 million collected for European Public Administrations with a success rate of 55%-65%). Among others, the brochures make reference to EMO (DIVISION) EUROPEAN MUNICIPALITY OUTSOURCING, in particular in the stylized forms shown below:

.

One of these brochures also includes so called recommendation letters from Spanish and Italian authorities which are, however, in Italian and Spanish. No translation of these letters or information on the circulation of the brochures is provided (Annexes 1, 2).

• Several brochures in Italian and French, dating between 11/01/2010 and 07/2015 displaying the signs and in different colours and otherwise referring to ‘DIVISIONE E.M.O. European Municipality Outsourcing’, ‘EMO – European Municipality Outsourcing’, Divisione E.M.O. or ‘EMO’/’E.M.O.’ as such. The latter sometimes appear in close connection to the words EUROPEAN MUNICIPALITY OUTSOURCING and sometimes with an explanation of EMO/E.M.O. being the acronym of these words. No translation or information on the circulation of these brochures is provided (Annexes 3-6).

• Certificates form different municipalities of Italy (notarized in Italy in the 2011) in Italian and some translation into Spanish, allegedly confirming that the EMO Division has been in charge of collecting traffic fines for infractions committed by cars with foreign license plates since 2007 (Annex 16)

• 19 examples of requests for payment of fines due to traffic infractions in Italy dating from 29/05/2013 to 10/06/2015 sent to Austria, Estonia Faroe Islands, Finland, Germany, Lithuania, the Netherlands, Poland, Romania, Russia, Switzerland and the United States of America. All these documents indicate that Nivi Credit Sr.l. Division European Municipality Outsourcing is in charge of collecting the debt on behalf of the relevant Italian authority. However, the earlier marks do not appear on these letters. Only the elements ‘EMO’ and ‘EUROPEAN MUNICIPALITY OUTSOURCING appear separately, the first as part of the internet or email addresses mentioned and the second as ‘Nivi Credit S.r.l., Div. European Municipality Outsourcing’. Most of these communications are in English, some in German, Dutch, Spanish or Italian (Annex 17).

• A substantial number of delivery notes and envelopes with postal messages concerning the dispatch or return of certified mail from European Municipality Outsourcing or Nivi Credit S.r.l. – Divisione E.M.O to addresses in Australia, Austria, Brazil, Bulgaria, Canada, Denmark, France, Germany, Ireland, Italy, Japan, Lebanon, Mexico, Netherlands, Norway, Poland, Romania, Saudi Arabia, South Korea, Spain, Sweden, Switzerland, Turkey, UK and US, most of them dated between 2007 to 2016 (Annex 18).

• Several envelopes dating from 2006 to 2009 and addressed to EMO or (E.M.O./EMO) European Municipality Outsourcing and sent from Austria, France, Germany, Italy, the Netherlands, the UK or the US (Annex18).

• Letters in Italian from Italian police authorities copying ‘EMO Divisione Nivi Credit Srl’ for information purposes (Annex 18).

• An internal table with the alleged amount of letters sent from 2012 to 2016. The number of letters sent varies from 226 thousand to 432 thousand per year (Annex 22).

• An article in French extracted from the French newspaper Le Monde dating 09/08/2008 mentioning ‘European municipality outsourcing (EMO)’ and the company ‘Nivi Credit et sa division ·EMO’. The word “EMO” appears another four times in the text (Annex 14).

• Extract from a forum on the website www.tio.ch with an article in Italian dating from 09/08/2011 in which the word “Emo” is highlighted. It is followed by the words ‘(European Municipality Outsourcing), divisione di Nivi Credit’.

• Extract from the web page of the Italian newspaper republica with an article in Italian dated 09/08/2011 in which the word “(Emo)” is highlighted and preceded by the words European Municipality Outsourcing (Annex 8).

• Extracts from various online forums at www.lonelyplanet.com, www.slowtalk.com, www.tripadvisor.com, www.telegraph.co.uk and www.moneysavingexpert.com with posts in English, dating 2007 to 2010 concerning payment requests received from EMO (European Municipality Outsourcing) due to traffic infractions in Florence or Arezzo. One of them mentions that ‘European Municipality Outsourcing is in charge of the foreigners’ traffic tickets’ and refers to the website www.emo.nivi.it in that context. (Annexes 9, 10, 11, 12 and 15).

• Extracts from http://forum.enti.it with posts in Italian dating 23/03/2009 referring to ‘EMO® divisione di Nivi Credit per servizi in outsourcing per le pubbliche amministrazioni’ (Annex 13).

• Two EUIPO power of attorneys forms in Italian dating 2017 signed by the opponent as individual or in representation of Nivi Group S.p.A. (Annex 19).

• Internal table which is said to reflect the number of accesses to “the web site NIVI” broken down by month (10/2009 to 01/2017) and country (Annex 20).

• Internal overview of web sites which are said to mention the services rendered under the sign EMO. One of the links includes the words European Municipality Outsourcing. No printouts from the relevant websites are provided except those already contained in previous annexes (Annex 21).

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use.

Part of the submitted evidence is not self-explanatory and has not been provided in the language of proceedings. For instance, the certificates from municipalities in Italy which are said to confirm that the opponent has been offering debt collection services to these authorities since 2007 have only been provided in Italian with a translation into Spanish. From the submitted evidence that is either in the language of proceedings or self-explanatory it can be seen that there has been some use of the earlier marks. The brochures show how they were advertised in relation to debt collection as an outsourcing service for municipalities, but no information is provided on the distribution of these brochures. The sample requests, delivery notes, envelopes and forum discussions corroborate to a certain extent that the opponent actually engaged in debt collection operating from Italy and apparently in collaboration with the Italian authorities, in particular, the municipality of Florence. However, from the submitted evidence it is not possible for the Opposition Division to deduce the exact extent of the opponent’s use. Among the above listed evidence, there is only internal, not very detailed information originating from the opponent on the volume of use, in particular, the list with numbers of letters sent. The latter also contradicts the information in one of the brochures indicating that on average 450 thousand letters were sent per year. The geographical scope of use has also not been sufficiently demonstrated as the evidence only relates to services being rendered to the municipalities of Florence and Arezzo. The certificates and news articles cannot corroborate a sufficient extent of use as they were not translated into the language of proceedings and are not self-explanatory either. The opponent did not provide any objective evidence relating to the volume of use in the language of proceedings. Apart from the missing translations, the opponent could have submitted information on the distribution of the provided brochures, the relevant market share, advertising expenses or similar information. If the earlier sign has a leading position on the European Market as he claims it should have been easy for the opponent to provide more conclusive evidence, even showing recognition on the market. While the latter is not required for a finding of enhanced distinctiveness, the opponent did not provide any evidence in the language of proceedings that would enable the Opposition Division to determine that the earlier marks have been used to a substantial extent so as to justify a finding of enhanced distinctiveness.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as below average for all services in question and for a part of the relevant public, namely the English-speaking public in the relevant territory as they explicitly relate or at least can relate to debt collection. For the remaining part of the public in the relevant territory the marks have a normal degree of distinctiveness for all services in relation to which they have no meaning from the perspective of that part of the public.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (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). 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 services are assumed to be identical and the goods at least similar. Part of them target a professional public and part of them the public at large. In any event, the degree of attention can vary depending on the specific goods and services concerned as set out in section b) above. The signs are visually similar to a low degree as far as earlier EUTM No 11 112 729 is concerned and to a very low degree as regards earlier mark No 4 815 891. Aurally, the signs are similar to a below average degree. For the English-speaking public the signs are conceptually not similar. From the perspective of the English-speaking public the distinctiveness of the earlier marks must be regarded as below average. For the remaining part of the relevant public, conceptual aspects have no impact on this assessment and the distinctiveness of the earlier mark is normal.

The relevant public will perceive the contested sign as a whole and is not likely to artificially dissect it into various components as it does not contain any elements that are meaningful or commonly used as pre- or suffixes. As the relevant public will therefore not perceive the element ‘EMO’ as independent component of the contested sign, the differences arising from the additional elements in the marks are sufficient to exclude any likelihood of confusion between them.

From the perspective of the non-English-speaking public, the additional elements in the earlier word mark are clearly perceivable and distinctive and, as such, sufficient to exclude any likelihood of confusion between the marks. While the English-speaking consumer would give less weight to these additional elements, from their perspective the only common element of the marks would also be weak and would therefore not suffice to give rise to confusion.

Even if the English-speaking consumer would focus on the element ‘EMO’ in the earlier marks because it is either dominant or at the beginning of the sign and the further verbal elements are clearly perceived as mere explanation of that acronym, the general public would be able to safely distinguish between the signs. Even the professional public will perceive the contested sign as a whole and, as such, as a fanciful word in which the element ‘EMO’ of the earlier marks is not perceived. The lack of likelihood of confusion is even more pronounced for that part of the public for which the signs are conceptually not similar.

Considering all the above, regardless of the level of attention and even assuming that the services are identical and the goods at least similar, there is no likelihood of confusion on the part of the professional public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the general public which is more prone to confusion.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent had also based its opposition on a non-registered trade mark ‘EMO’ Austria, France, Germany, Italy and Spain. In this regard, the opponent had invoked Article 8(4) EUTMR.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 12/04/2016. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Austria, France, Germany, Italy and Spain prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for commercial/financial information and debt collection; several projects and long-term contracts, debt collection; outsourcing service on behalf of Municipalities for the notification of administrative sanctions all over the world; overseeing financial credits that banks, private companies and car rental companies claim from citizens residing abroad.

On 13/07/2017 the opponent filed the evidence that has already been listed and analysed with a view to the opponent’s claim of enhanced distinctiveness in section d) under the ground of Article 8(1)(b) EUTMR. Reference is made to the above listing and assertions.

As set out above, part of the evidence has not been provided in the language of proceedings and is not self-explanatory. According to Article 7(5) EUTMDR, the Office will not take into account written submissions, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

As regards the alleged non-registered trade marks in Austria, France, Germany and Spain, there are some pieces of evidence that relate to these territories or are in the relevant language, such as one brochure, some sample requests, delivery notes and envelopes. However, according to the opponent the sign ‘EMO’ is used for outsourcing services in the field of debt collection rendered to municipalities. No evidence has been submitted of the earlier sign being used for such services being provided to customers in Austria, France, Germany or Spain.

While the remaining evidence suggests that some use of the sign has been made in relation to debt collection operating from Italy and on behalf of Italian authorities, in particular the municipality of Florence, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T 318/06 - T 321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C 96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business or press cuttings showing the degree of recognition on the part of the public of the sign relied on, or by establishing that there are references to the business establishment in travel guides (24/03/2009, T 318/06 - T 321/06, General Optica, EU:T:2009:77, § 43).

The relevant documents filed, namely the brochures, sample requests, forum discussions, envelopes and internal overviews regarding the number of letters sent from 2012 to 2016, do not provide the Opposition Division with sufficient information concerning the commercial volume and the frequency of use. The submitted evidence that shows some use of the earlier sign ‘EMO’ basically relates to the municipality of Florence, where the opponent also has his residence and the company Nivi Credit S.r.l., that uses the earlier sign, has its principal place of business. The only exceptions are two mentions in the forums relating to Arezzo which is, however, also located in Tuscany and relatively close to Florence (~80km distance). The evidence regarding to other localities such as San Gimignano, Alghero, etc. does not show use of the sign ‘EMO’. .Apart from the fact that the opponent has not demonstrated sufficient geographical significance of the use of the earlier sign, no invoices to the municipalities on the actual services rendered nor other objective information has been provided that could corroborate the alleged information on the amount of letters sent during the relevant period of time and would enable the Opposition Division to determine the volume of use.

2. Conclusion

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the services on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

For the sake of completeness, the Opposition Division notes that the opponent has also not proven the content of the applicable law which has only been alleged (not proven) together with a reference to the relevant legal provisions as part of his submission in relation to the non-registered Italian mark.

COSTS

According to Article 109(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, he must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Jose Antonio GARRIDO OTAOLA

Elena NICOLÁS GÓMEZ

Natascha GALPERIN

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.