OPPOSITION Nо B 2 835 042

 

Apdrošināšanas AS "balta", Raunas Iela 10/12, 1039 Rīga, Latvia (opponent), represented by Patent Agency KDK, Dzerbenes iela 27, 1006 Riga, Latvia (professional representative) 

 

a g a i n s t

 

Balcia Insurance SE, 63 K. Valdemara, 1142 Riga, Latvia (applicant), represented by  Zvērinātu Advokātu Birojs "Vilgerts", Elizabetes iela 33, Rīga, LV-1010, Latvia (professional representative).

On 29/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 2 835 042 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the services (in Class 36) of European Union trade mark application No 15 861 115 ‘Balcia’ (word mark). The opposition is based on European Union trade mark registration No 9 810 268 ‘BALTA’ (word mark) and Latvian trade mark No M 69 618 (figurative mark).

The opponent invoked Article 8(1)(b) in relation to both earlier marks and also Article 8(5) EUTMR for its earlier European Union trade mark registration No 9 810 268 ‘BALTA’ (word mark).

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 earlier European Union trade mark registration No 9 810 268 ‘BALTA’.

PROOF OF USE

Proof of use of the earlier European Union trade mark registration No 9 810 268 ‘BALTA’ was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the services invoked, which is the best light in which the opponent’s case can be considered.

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.

a) The services

 

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

 

Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs.

 

The contested services are the following:

 

Class 36: Insurance underwriting; Financial intermediary services; Financial and monetary services, and banking; Financial management; Banking insurance; Monetary affairs; Financial evaluation; Financial evaluation [insurance, banking, real estate]; Financial consulting; Financial advice relating to investment; Insurance brokerage; Life assurance brokerage; Brokerage of non-life insurance; Life insurance; Insurance actuarial services; Insurance claims adjustment services; Consultancy services relating to insurance; Insurance services relating to life; Consulting and information concerning insurance.

 

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.

Some of the contested services are identical or similar to the services on which the opposition is based (for example, the contested services of insurance underwriting are included and hence identical to the opponent’s insurance services). 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 which, for the opponent, is the best light in which the opposition can be examined.

b) 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 target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, consumers’ level 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).

c) The signs

 

BALTA	Balcia
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).

The marks under examination are both word marks consisting of a single element, that is, ‘BALTA’ for the earlier mark and ‘Balcia’ for the contested sign.

The word ‘Balcia’ has no meaning in any part of the relevant territory and it does not resemble any word known to the public. Therefore, the contested sign ‘Balcia’ will not be associated with any concept and it is distinctive to an average degree.

The word ‘BALTA’, in contrast will most likely be perceived as a meaningful word or as a misspelling of a meaningful word by a substantial part of the consumers in the relevant territory to which different meanings could be attributed depending on the language concerned.

In particular, the Latvian-speaking part of the public will most likely perceive the earlier mark as a misspelling of the word ‘Baltā’, which refers to the color white (definition extracted on 09/10/2020 from https://tezaurs.lv/Balt%C4%81:1). The word ‘BALTA’ will hence be perceived as such by the part of the public that speaks Latvian. Furthermore, the same holds true for the Lithuanian-speaking part of the public (see the definition extracted on 23/10/2020 from http://www.lkz.lt/Visas.asp?zodis=baltas&lns=-1&les=-1&id=03012520003). It could also be perceived by the Spanish-speaking part of the public as an adjective which is said of a person: of an Indo-European people that settled in prehistoric times on the eastern coast of the Baltic Sea or as referring to something/someone belonging to or relating to the Baltics (see the definitions exacted on 23/10/2020 from https://dle.rae.es/balto and its feminine form, namely ‘balta’). The Romanian-speaking part of the public, could see it as a misspelling of the word ‘baltă’ designating a small lake (definitions extracted from https://dexonline.ro/intrare/balt%C4%83/4902 on 23/10/2020). The Swedish-speaking public could see it as a misspelling of the word ‘bälta’, that is, a substantive referring to belts meaning belt-on (definitions extracted on 23/10/2020 from (https://www.ne.se/s%C3%B6k/?t=uppslagsverk&q=b%C3%A4lta) while the Hungarian-speaking part of the public could see it as referring to a one-handed short-hand splitting tool for working wood (see the definitions from http://www.kislexikon.hu/index.php?f=balta&all=1 extracted on 09/10/2020). Finally, it is noted that the word ‘balta’ has also its entries in the Italian dictionary garzanti linguistica as a noun meaning overhang, overturning (definitions exacted on 09/10/2020 from https://www.it/ricerca/?q=balta).

Whatever the meaning this word would be attributed by the abovementioned public, the concepts conveyed do not have any relation whatsoever with the services in question and they are not otherwise weak. Therefore, the word ‘BALTA’ is distinctive to an average degree irrespective of the meaning that it will be attributed, which of course, also holds true for the public that will perceive it as meaningless.

Visually, the signs coincide in their first letters ‘BAL’ as well as in their final letter ‘A’. However, they differ insofar the middle letter is ‘T’ in the earlier mark versus ‘CI’ in the contested sign. As the contested sign includes one additional letter in comparison to the earlier mark and considering that the confronted signs are relatively short, the signs also differ in length and this will hardly go unnoticed.

Moreover, if as emphasized by the opponent, consumers generally pay more attention to the beginning of marks, it must also be borne in mind that, according to well established case-law, such a fact that the average consumer focuses more on the beginning of the marks cannot apply in all cases and call into question the principle that the examination of whether trade marks are similar must take into account the overall impression produced by those trade marks (07/10/2010, acsensa, T-244/09, EU:T:2010:430, § 23; 15/02/2017, T-568/15, 2 STAR, EU:T:2017:78, § 64).

In the present case, as already pointed out, the signs are relatively short and they will not be dissected. Therefore, said signs will be perceived as a whole and consumers will not concentrate their attention on their beginning only. Moreover, as also stated above, in view of the relatively short length of these signs, it is considered improbable that the difference lying in their respective length, although limited to one letter will be overlooked.

Overall the signs are hence considered visually similar to a lower than average degree.

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 ‘BAL’, present identically in the beginning and ‘A’ in the ending of each sign.

The pronunciation differs in the sound of the letter(s) ‘T’ of the earlier mark versus ‘CI’ of the contested sign. According to certain rules of pronunciation, for example, that of the Spanish language, the signs will have a different number of syllables (BAL/TA versus BAL/CI/A), and therefore, they will be perceived as having a different rhythm and intonation.

 

Even for those consumers that will pronounce both signs in two syllables, if not stressed in all languages concerned, it remains that this difference will most probably not be overheard and therefore, the signs are aurally similar to a lower than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For a part of the public (for example, the French-, English-, and German-speaking public), both words ‘BALTA’ or ‘BALCIA’ will be perceived as meaningless and therefore, a conceptual comparison cannot be carried out and the conceptual aspect does not have any influence on the comparison of the signs.

For the remaining part of the public, (for example, the Latvian-, the Italian- or the Spanish-speaking public) although one of the signs would be perceived as meaningful, the other sign has no meaning in that territory. In the perception of that part of the public, since one of the signs will not be associated with any meaning, 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.

 

d) 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 a reputation in Latvia in connection with part of the services for which it is registered, namely insurance in Class 36. 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 evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept 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 consists of the following documents:

 

 EXHIBIT 1: GENERAL INFORMATION regarding the opponent AAS BALTA and the earlier mark BALTA obtained from the website www.balta.lv and Facebook account @baltaapdrosinasana dated 06/09/2019 displaying the following sign: . It is stated inter alia, that the opponent has ‘more than 580 employees in 42 branches across Latvia’, that it was founded in January 1992 and that it has ‘27 years of experience’.

 EXHIBIT 2: AFFIDAVIT from the director of the opponent’s Legal Department dated 07/06/2019 which includes inter alia:

- Data regarding Gross Written Premium (GWP) by BALTA on the Latvian market;

- BALTA market share in 2016 in Latvia;

- Raw data and graphs regarding non-life and life (health and accident) insurance in market shares Q4 2015 -2018.

 EXHIBIT 3: GWP BY LATVIAN INSURERS ASSOCIATION

Document recompiling data from the Latvian Financial and Capital Market Commission regarding Written Premium (GWP) and claims paid by insurance companies on the Latvian market in the four quarters of 2015, 2016, 2017 and 2018. The opponent - referred to as ‘BALTA’ - is included under the section ‘Non-life insurers’.

 EXHIBIT 4: BALTA’S presentations regarding Latvian insurance market actors and their respective MARKET SHARE

The document shows details regarding the share of ‘BALTA’ on the Latvian insurance market during the period 2014-2018 and is referred to as being ‘in accordance with the data provided by the Latvian Financial and Capital Market Commission (FCMC)’ in the affidavit (exhibit 2). It is noted that it is explained in the affidavit as regards ‘Non-life and life (health and accident) insurance market shares Q4 2015-2018 excludes ‘Coface and Balcia’).

 EXHIBIT 5: BALTA AWARENESS AND IMAGE STUDIES in Latvia

- EXHIBIT 5.1: Survey Report ‘Balta Image Study 2017’ conducted by RAIT10;

- EXHIBIT 5.2: Survey Report ‘Balta Image Study 2016’ prepared by GfK.

 EXHIBIT 6: CUSTOMER SERVICE QUALITY STUDY on the Latvian insurance sector – benchmark research mystery shopping report performed by the DIVE Group.

 EXHIBIT 7: REPUTATION research conducted by PORTER NOVELLI showing that BALTA indices are above the average in the industry by all criteria (products and services, reputation, connection with society, good employer etc.), except for the criterion ‘high export potential’. It is noted that according to the study, as from 2006, BALTA has been the leader in TOP of reputation among Latvian insurance companies (except for two years, when it held the second place) – both by means of place and index.

 EXHIBIT 8: Study regarding PROMOTION INVESTMENTS in insurance industry 2014-2018

Presentation from the opponent including graphs of net investments in media (e.g. internet, video, radio, TV) by the insurance industry, including BALTA. It is stated in a foot note that the data shown are based on media rate cards calculated by TNS and Creative Media Baltic.

 EXHIBIT 9: BALTA PRESENTATION

Presentation from the opponent displaying a ‘BALTA’ header as follows compiling data, from the insurance market overviews filed under exhibit 10:

- The most honest insurance company (data referring to the period between 2003 and 2016 (EXHIBIT 10.1);

- The Best Employer in Baltic States;

- The most Sustainable insurance company–Gold category in CSR index – in 2016;

- Family Friendly company for year 2018 (EXHIBIT 10.2);

- The most loved insurance brand in 2018 (see EXHIBIT 10.2).

 EXHIBIT 10: INSURANCE MARKET OVERVIEWS

These overviews include data regarding the position of the opponent in the insurance market. The documents re in Latvian and have been partially translated.

- EXHIBIT 10.1: Report for FEBRUARY 2016 issued by the national information agency in Latvia (LETA) where it is stated inter alia that ‘for the thirteenth year, thus reaching the “devil’s dozen”, BALTA has received the highest rating among Latvian insurance companies in the sociological survey held by LETA News Agency and SKDS Public Opinion Research Centre at the end of 2015, and was recognized as the fairest insurer in Latvia’.

- EXIBIT 10.2: Report for FEBRUARY 2018 issued by the national information agency in Latvia (LETA) where it is stated e.g. that ‘the brand and lifestyle survey Brand Capital (largest in the Baltics) has recognized insurance company BALTA as the most beloved insurance brand in the Baltics’ and that in nine months of 2017, BALTA earned a profit of several million euros.

 EXHIBIT 11: Reports - QUALITY ANALYSIS OF PUBLICITY in media published or broadcasted in Latvia issued by ‘LETA’ along with their translation.

- EXHIBIT 11.1: BALTA AND COMPETITORS: Quality Analysis of Publicity for January-June, 2016.

- EXHIBIT 11.2: INFORMATION ON MEDIA IN LATVIA: Mail exchanges regarding newspapers and magazines market composition in Latvia.

 EXHIBIT 12: PRESENTATIONS REGARDING BALTA’S MARKETING ACTIVITIES

- EXHIBIT 12.1: BALTA marketing activities in first half of 2016;

- EXHIBIT 12.2: BALTA marketing activities Q4 2016 –Q1 2017;

- EXHIBIT 12.3: Partially translated contracts concluded between the opponent and a media company between 2015 and 2017 regarding promotion of the brand ‘BALTA’;

- EXHIBIT 12.4: Debit notes issued by the media company above mentioned addressed to the opponent in 2015 and 2016;

- EXHIBIT 12.5-12.9: Detailed data (including expenses’ figures) as regards promotional campaigns carried out by the media company above mentioned in 2016.

 EXHIBIT 13: SAMPLES OF ADVERTISING materials used in BALTA’s advertising campaigns of 2016 showing the sign .

 EXHIBIT 14: AAS BALTA INTERNAL REPORT ON SOCIAL ACTIVITIES (donations, scholarships, sponsorships…etc.) for 2016. The report is in Latvian and it has been partially translated.

 EXHIBIT 15: PRINTOUTS from ‘news.lv’, which according to the opponent concerns articles dealing with Balta’s social activities published between 2015 and 2017. The documents do mention the earlier mark ‘BALTA’ but as these are in Latvian and they have not been translated, the exact content of the documents remains unknown.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness and reputation through its use on the Latvian market.

The abovementioned evidence indicates that the trade mark ‘BALTA’ (as registered, that is, the word as such and also in the graphical representation shown above) has been used for a substantial period of time in Latvia in relation to (non-life) insurance services. The share held by the earlier mark on the insurance market and its GWP figures (EXHIBITS 3, 4, 10), the investments in the promotion of the earlier mark (EXHIBITS 8, 11, 12, 14 and 15) and the awareness and image studies in particular (EXHIBITS 5, 6 and 7), establish that the sign ‘BALTA’ (or ) has acquired a consolidated leading position on the insurance market in Latvia and is known to a significant part of the public in that territory. For example, it is noted that according to reliable studies carried out by independent market research institutes, the top of mind awareness of the earlier mark varied among 36 and 34% in 2016 and 2017 respectively (EXHIBIT 5).

Some of the documents containing, inter alia, statistical information (EXHBIT 9) and indications regarding the extent of use of the earlier mark (EXHIBIT 2) apparently originate from the opponent itself.

In that respect it has to be borne in mind that Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use and that Article 97(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. 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.

In the present case, the documents originating from the opponent or its employees are sufficiently supported by the data provided by the documents coming from independent sources, and furthermore, these are said to be based on data provided by official authorities, such as the Latvian Financial and Capital Market Commission. Therefore, these documents are fully relevant for the purposes of the assessment of the earlier mark’s reputation.

Overall, it is apparent from the content of the extracts from the opponent’s website (EXHIBIT 1), the affidavit from the Director of the opponent’s Legal Department (EXHIBIT 2), and the insurance market overview report for February 2016 (EXHIBIT 10.1) that ‘BALTA’ was established in January 1992, that it has gained a leading position on the insurance market between its creation and the date of filing of the contested application and that it has reached a significant awareness among the Latvian public at the time of the filing of the contested application.

As to the image conveyed by the earlier mark, it is apparent from the evidence that the earlier mark was considered the most loved insurance brand among the Latvian public in 2018, that the opponent was considered the most sustainable company in CRS index in 2016 (EXHIBIT 10.2), and the ‘best employer in the Baltic States’ from 2003 to 2016 (EXHIBIT 10.1).

Even if these documents do not only refer to the earlier mark as registered but also a variation thereof namely, as and also to the opponent ‘AAS BALTA’ all these references are suitable to show reputation of the earlier word mark ‘BALTA’.

In particular, the purely decorative features of the figurative sign shown above do not affect the distinctiveness of the earlier mark as registered and it is crystal clear from the evidence assessed as a whole that the brand under which the opponent offers all of its insurance services on the market is ‘BALTA’, therefore, it has to be considered that the data concerning ‘BALTA’, and ‘BALTA AAS’ are all suitable to show reputation of the earlier word mark ‘BALTA’.

Finally, it is worth noting that the studies concerning awareness and image of the earlier mark (EXHIBIT 5) have been carried out in 2016 and 2017, that is, the year of the filing and the year immediately following the filing of the contested sign with the result that they are fully relevant in order to establish reputation of the earlier mark at the time of the filing of the contested sign on 23/09/2016.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier European Union trade mark enjoys a certain degree of recognition among the relevant public in Latvia for insurance services, which leads to the conclusion that this earlier trade mark enjoys some degree of reputation for all the services for which reputation is claimed, (insurance in Class 36). Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

e) 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, 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, as stated above under section d) of the present decision, the distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion since, 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).

 

In the present case, the earlier mark was considered to enjoy a reputation in Latvia for insurance services and the services have been assumed to be identical to all the contested services.

As to the signs, they coincide in some letters, namely the initial letters ‘BAL’ and the last letter ‘A’.

However, the relevance of said coincidence is limited as, first of all, the signs being relatively short and second of all, the level of attention displayed by the relevant consumer being higher than average, the difference lying in the middle of the signs - that is to say, ‘T’ in the earlier mark versus ‘CI’ in the contested sign - is not likely to go overlooked or overheard.

Moreover, the signs share no conceptual similarities and for part of the public - which includes the public in the territory of which the earlier mark has a reputation, namely Latvia, the signs are not similar since only the earlier mark will be seen as conveying a clear meaning.

In that connection, it has to be borne in mind that conceptual differences may, to a large degree, counteract phonetic and visual similarities between the marks at issue, provided that at least one of those marks has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (see, 18/12/2008, C-16/06 P, Les Éditions Albert René SARL v European Union Intellectual Property Office EU:C:2008:73998, § 98; 11/11/2009, T-277/08, CITRACAL, § 53; 12/07/2006, T-277/04, VITACOAT, EU:T:2006:202, § 56 to 62).

Having regard to the above and also considering that it is established, in fact, that the objective characteristics of the services in question require the average consumer to choose these only after a particularly careful examination, it is important, in right, to take into account that such a circumstance may be of such a nature as to reduce the likelihood of confusion between the marks relating to such services at the crucial moment when the choice is made between those services and those marks (see in that line, 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 112), the Opposition Division considers that there is no risk for the marks in conflict to be confused.

Therefore, even assuming that the services are identical, there is no likelihood of confusion on the part of the public.

It follows that the opposition, in so far it is based on Article 8(1)(b) EURMR and European Union trade mark registration No 9 810 268 ‘BALTA’ (word mark), must be rejected. Furthermore, as the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent for this earlier mark.

The opponent has also based its opposition on Article 8(1)(b) EUTMR founded on the earlier Latvian trade mark No M 69 618 (figurative mark).

However, this other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains figurative elements which are not present in the contested trade mark. Finally, it is noted that the opponent did not explicitly claim that this mark is particularly distinctive.

Therefore and bearing in mind that the services in question were assumed to be identical, the outcome cannot be different; no likelihood of confusion exists with this earlier mark.

It remains that the opponent also invoked the grounds laid down in Article 8(5) EUTMR in relation to its earlier European Union trade mark registration No 9 810 268 ‘BALTA’ (word mark), therefore, the examination of the merits of the opposition in relation to this ground still have to be assessed.

 

 

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 will 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 for 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: 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 abovementioned 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.

 

a) Reputation of the earlier trade mark

 

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined 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.

As stated above, taken as a whole, the evidence indicates that the earlier European Union trade mark ‘BALTA’ enjoys a certain degree of recognition among the relevant public in Latvia for insurance services, which leads to the conclusion that this earlier trade mark enjoys some degree of reputation for all the services for which reputation is claimed, (insurance in Class 36).

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

 

 

b) 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.

 

c) The ‘link’ between the signs

 

As seen above, the earlier European Union trade mark registration is reputed and the signs are similar to some extent.  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 by several judgments (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 31; 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.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

 

According to the Court of Justice of the European Union,

 

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

 

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

 

The Court of Justice has also noted,

 

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

 

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51-52.)

 

In the present case, the signs are similar to some extent and they both relate to the financial sector. However this does not automatically mean that the relevant public is likely to establish a link between them. As stated above, the signs share no conceptual similarity as the contested sign will be perceived as meaningless by the whole of the relevant public and a substantial part of the public, including the public in Latvia, will perceive the earlier mark as conveying a distinctive concept. Therefore, it has been concluded that the signs are either not comparable from the conceptual perspective or not similar since only the earlier mark would be associated with a meaning.

In that respect, it should be borne in mind as stated above, that according to well-established case-law, conceptual differences may, to a large degree, counteract phonetic and visual similarities between the marks at issue, provided that at least one of those marks has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (see, 18/12/2008, C-16/06 P, Les Éditions Albert René SARL v European Union Intellectual Property Office EU:C:2008:73998, § 98; 11/11/2009, T-277/08, CITRACAL, § 53; 12/07/2006, T-277/04, VITACOAT, EU:T:2006:202, § 56 to 62).

Yet in the present case, the visual and aural similarity between the signs is lower than average.

Bearing in mind also that the services covered by the confronted signs are of a financial nature, so that the relevant public is expected to be particularly attentive and circumspect in its selection, it seems very unlikely that the consumers in the European Union, in particular the public in Latvia where the earlier mark is reputed for insurance services associate the contested sign ‘BALCIA’ with the earlier mark ‘BALTA’. It is even less likely having regard to the fact that the earlier mark ‘BALTA’ will be perceived by the Latvian public as evoking the colour white, whereas the contested sign ‘BALCIA’ will be perceived as meaningless.

 

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.

Furthermore, even assuming a link with the earlier mark would be established by the relevant public confronted by the contested sign, the opponent has not succeeded in establishing any risk of injury as will be explained below.

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

Indeed, Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent merely stated the following as regards the opposition based on Article 8(5):

‘Use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark ‘BALTA’ and be detrimental to the distinctive character and repute of the earlier trade mark. Therefore, the third condition set out by Article 8(5) EUTMR, namely the existence of a certain degree of similarity between the signs, is met.’

The circumstances described as being ‘detrimental to the repute’, ‘detrimental to the distinctive character’, or taking ‘unfair advantage of the distinctive character or repute of the earlier trade mark’, are in fact very different from each other. In its submissions, the opponent refers to them without any distinction, treating the whole as an unavoidable effect of the similarity of the signs and the reputation of the earlier trade mark. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Article 7(2)(f) EUTMDR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Therefore, the opposition is not well founded under Article 8(5) EUTMR either and must be rejected.

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, it 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, 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

 

 

Loreto URRACA LUQUE

Marine DARTEYRE

Julie, Marie-Charlotte HAMEL

 

 

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.