OPPOSITION No B 3 001 826

Cofra Holding Ag, Grafenauweg 10, 6300 Zug, Switzerland (opponent), represented by Balder Ip Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Coebax Groep B.V., Hoevensestraat 7, 5262 Ln Vught, Netherlands (applicant), represented by Algemeen Octrooi- En Merkenbureau B.V., Professor Dr. Dorgelolaan 30, 5613 AM Eindhoven, Netherlands (professional representative).

On 20/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 001 826 is partially upheld, namely for the following contested services:

Class 35: Advertising; Business management; Business administration; Office functions; the aforesaid services solely in the field of real estate.

Class 36: Real estate management; Mediation in renting and letting real estate; Mediation in purchase and sale brokerage of real estate; Financing and investment in relation to real estate, and consultancy relating thereto; Mediation in financing and investment in relation to real estate, and consultancy relating thereto.

2. European Union trade mark application No 17 057 415 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 17 057 415 ‘COFFR’. The opposition is based on, inter alia, European Union trade mark registration No 12 666 541 . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 666 541.

1. The services

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

Class 35: Collecting business statistics; Drawing up statements of account; Business inquiries; Business management and organization consultancy; Business consultancy; Consultancy relating to business organisation; Business management consulting; Business strategy advice; Business auditing; Office functions; Company auditing (business affairs); Tax preparation; Business management; Business account management; Consultancy relating to business organisation; Business strategy planning; Business administration.

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

The contested services are the following:

Class 35: Advertising; Business management; Business administration; Office functions; the aforesaid services solely in the field of real estate.

Class 36: Real estate management; Mediation in renting and letting real estate; Mediation in purchase and sale brokerage of real estate; Financing and investment in relation to real estate, and consultancy relating thereto; Mediation in financing and investment in relation to real estate, and consultancy relating thereto.

Class 37: Building construction supervision.

Class 42: Development of plans for building real estate.

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 business management; business administration; office functions; the aforesaid services solely in the field of real estate are included in the respective broad categories of the opponent’s business management; business administration; office functions. Therefore, they are identical.

When comparing the contested advertising; the aforesaid services solely in the field of real estate and the opponent’s business management, it has to be mentioned that advertising is an essential tool in business management because it makes the business itself known in the market. The purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently, may reasonably include advertising strategies in his or her advice, because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, these services are similar to a low degree.

Contested services in Class 36

The contested real estate management; mediation in renting and letting real estate; mediation in purchase and sale brokerage of real estate; financing and investment in relation to real estate, and consultancy relating thereto; mediation in financing and investment in relation to real estate, and consultancy relating thereto are included in or overlap with, the respective broad categories of the opponent’s real estate affairs and financial affairs. Therefore, they are identical.

Contested services in Class 37

The contested building construction supervision is a service, whereby a specialist construction company or a professional with specific technical knowledge oversees building sites and construction processes. The opponent’s services are, however all business, real estate brokerage and finance related services. The opponent’s real estate services entail real estate property management and evaluation, and real estate agency services in buying, selling and letting properties, as well as the consultancy and provision of information related thereto. This mainly involves finding a property, making it available for potential buyers and acting as an intermediary. The contested services have different nature, purpose and methods of use compared to all the services of the opponent, contrary to the latter’s arguments. The services have different origins, distribution channels and users. The services are dissimilar.

Contested services in Class 42

The contested development of plans for building real estate is an architectural service. The opponent’s services are, however all business, real estate and finance related services. The opponent’s real estate services entail real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of information related thereto. This mainly involves finding a property, making it available for potential buyers and acting as an intermediary. The contested services have different nature, purpose and methods of use compared to all the services of the opponent, contrary to its arguments. The services have different origins, distribution channels and users. The services are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of services 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 services in question.

In the present case, the services found to be identical or similar to a low degree are partly directed at the public at large and partly at customers with specific professional knowledge or expertise.

The degree of attention is high, due to the specific nature of the services.

Furthermore, services in Class 36 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).

3. The signs

	COFFR
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements in the marks are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public such as the Polish or Estonian public, where neither of these words has a meaning.

The earlier mark is a figurative mark. It contains a word element COFRA. Above it there is a figurative element formed of three rhombuses and a semi-circle. Under the word COFRA, there are the words UNITED UNIQUE in a very much smaller typeface, in a secondary place, thus having a lesser impact. The element COFRA and the elements UNITED UNIQUE have no meaning for the relevant public and are, therefore, distinctive. The figurative elements are simple geometrical shapes and a semicircle, and are all perceived as such. Furthermore, the element COFRA and the figurative element in the earlier sign are the dominant elements, as they are the most eye-catching. However, it is noted, that 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).

The element COFFR of the contested word mark has no meaning for the relevant public and is, therefore, distinctive.

Visually, the contested sign ‘COFFR’ shows similarities with the distinctive and visually dominant verbal element of the earlier mark ‘COFRA’. These similarities concern the coincidence in the first letters COF and in the letter R (placed after the letter F). However, there are differences in the remaining letters, namely the letter A of the earlier mark and the letter F of the contested sign. The marks also differ in the figurative element, and words UNITED UNIQUE of the earlier sign. The impact of the latter is reduced, as explained above.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the letters ‘COFR’ and differs in the last letter ‘A’ of the earlier mark and, if pronounced, the sound of the additional letter ‘F’ of the contested sign. Taking into account the position and secondary character of the words ‘UNITED UNIQUE’ of the earlier mark, the relevant public will tend not to pronounce these elements (30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370, § 75; 03/07/2013, T-206/12, LIBERTE American blend, EU:T:2013:342, § 44).

Therefore, the signs are aurally highly similar.

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

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

The services have been found partially identical, partially similar to a low degree and partially dissimilar.

The earlier mark and the contested sign have been found to be similar to the extent that they have the letters ‘COF_R’ in common. These common letters are in the beginning of the dominant element of the earlier mark and in the contested mark. The difference lies in the letter ‘A’ at the end of the dominant element of the earlier sign, in addition to the secondary word elements and figurative elements of that mark. The differentiating letters are placed either in the middle, or towards the end, of the signs and can easily be absorbed in sound by the surrounding letters. However, these differences can be easily overlooked, and they cannot outweigh the similarity provided by the coinciding identical letters. The similarities between the signs, and in their beginnings, are thus sufficient to cause at least part of the public to believe that the conflicting services come from the same or economically linked undertakings. Furthermore, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component.

Account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26) and that even who pay a higher 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).

Based on the principle of imperfect recollection, it is considered that the similarities between the signs established above are sufficient to cause at least part of the public to believe that the conflicting services, which are identical and similar to a low degree, come from the same undertaking 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).

Considering all the above, there is a likelihood of confusion on the part of the non-English speaking public such as the Polish and Estonian-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 666 541. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark. The contested mark is also rejected for the services found similar to a low degree, since the similarity of the marks is sufficiently high to outweigh the low degree of similarity between the services.

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.

The opponent has also based its opposition on the earlier European Union trade mark No 5 052 782 ‘COFRA’, registered for class 35 business administration services.

Since this mark contains the identical word element as the one which has been compared and covers a narrower scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Justyna GBYL

Erkki Münter

Ferenc GAZDA

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.