OPPOSITION No B 3 048 106

Universidad de Malaga, Plaza del Ejido, s/n., 29071 Malaga, Spain (opponent), represented by Iberpatent, Félix Boix, 9-1° Derecha, 28036 Madrid, Spain (professional representative)

a g a i n s t

Technopolis Holding Oyj, Elektroniikkatie 8, 90590 Oulu, Finland (applicant), represented by Papula Oy, Mechelininkatu 1 a, 00180 Helsinki, Finland (professional representative).

On 21/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 106 is upheld for all the contested services.

2. European Union trade mark application No 17 581 117 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 581 117 ‘UMA’ (word mark). The opposition is based on, inter alia, Spanish trade mark registration No 3 641 562 (figurative mark). 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 Spanish trade mark registration No 3 641 562, for which proof of use was not requested.

a) The services

Preliminary remark on the basis of the opposition

In the notice of opposition of 15/03/2018 the opponent accepted that the necessary information for the earlier trade mark be imported from the relevant online official database, accessible through TMview, and that this source is used for substantiation purposes, without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR.

According to the notice of opposition form of 15/03/2018, the services used as a basis for the present opposition include part of the goods and services for which the earlier Spanish trade mark No 3 641 562 has been registered, and are, inter alia, the following:

Class 36: Insurance; financial operations; monetary operations; real estate business.

Class 43: Restauration services (food); temporary accomodation.

However, the Opposition Division became aware that, according to the TMview database and the official Spanish database, the earlier Spanish trade mark on which the present opposition is based has actually been registered for the following services in Classes 36 and 43:

Class 36: Seguros; Operaciones Financieras; Operaciones Monetarias; Negocios Inmobiliarios.

Class 43: Servicios de Restauracion (Alimentacion); Hospedaje Temporal.

The correct English version of the list of services of the earlier trade mark according to the official Spanish database and its translation in TMview is as follows:

Class 36: Insurance services; Banking; Banking; Real estate affairs.

Class 43: Restaurant services; Temporary accommodation.

Considering all the above, the Opposition Division will take into account this wording of the list of earlier Spanish trade mark No 3 641 562.

Therefore, the services on which the opposition is based are, inter alia, the following:

Class 36: Insurance services; Banking; Banking; Real estate affairs.

Class 43: Restaurant services; Temporary accommodation.

The contested services are, after a limitation, the following:

Class 36: Real estate affairs; Deposits of valuables; Rental of office space; Assessment and management of real estate; Real estate agency services; Rent collection; Rental of offices [real estate].

Class 43: Rental of meeting rooms; Event facilities and temporary office and meeting facilities; Hire of temporary office space.

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 36

Real estate affairs is identically contained in both lists of services.

The contested rental of office space; assessment and management of real estate; real estate agency services; rent collection; rental of offices [real estate] are included in the broad category of the opponent’s real estate affairs. Therefore, they are identical.

The contested deposits of valuables are at least similar to the opponent’s banking. It is usual that safe deposit box services are also provided by financial institutions like banks, which are considered a rather secure place in general and dispose of secure vaults. Therefore, the services may coincide in distribution channels, producers and relevant public. In addition they also coincide in their financial nature.

Contested services in Class 43

The contested rental of meeting rooms; event facilities and temporary office and meeting facilities; hire of temporary office space all belong to a category of temporary accommodation services and are therefore included in, or overlap with, the broad category of the opponent’s temporary accommodation. Therefore, they are identical.

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 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to higher than average, depending on the price, sophistication, or terms and conditions of the services purchased.

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 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 (17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

Likewise, the degree of attention is rather high in relation to the other relevant services in Class 36 (banking and deposits of valuables), since such services may have important financial consequences for their users (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

	UMA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is figurative, consisting of the verbal element ‘uma.es’ in black (‘uma.’) and blue (‘es’) lower case letters. The earlier sign’s element ‘.es’ is widely known and used throughout the relevant territory as the top-level domain originally corresponding to commercial sites on the internet. It will therefore not be perceived as an indicator of the commercial origin of the services at issue. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue (21/11/2012, T-338/11, Photos.com, EU:T:2012:614, § 22; 12/12/2007, T-117/06, Suchen.de, EU:T:2007:385, § 29).

Below is the additional element ‘UNIVERSIDAD DE MÁLAGA’, meaning ‘University of Malaga’, in standard upper case black letters. This element is descriptive of the fact that the services originate from or are provided at/by the University of Malaga. Therefore, it is also non-distinctive.

The contested sign is a word mark, ‘UMA’.

The element ‘UMA’, in both marks, has no meaning for the relevant public and is, therefore, distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

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).

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 the distinctive verbal element ‘UMA’, constituting the entire contested sign. It is distinctive. However, they differ in the earlier mark’s verbal elements ‘.es’ and ‘Universidad de Málaga’, which are however both non-distinctive as described above, and in the stylisation of the earlier mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛UMA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛.es’ and ‘Universidad de Málaga’ of the earlier mark, which have no counterparts in the contested sign and form non-distinctive elements.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meanings of the elements ‘.es’ and ‘Universidad de Málaga’ of the earlier sign as explained above, the other sign has no meaning in that territory. 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.

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, despite the presence of some non‑distinctive elements in the mark, as stated above in section c) of this decision.

e) 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.

In the present case, the services are partly identical and partly similar. The earlier mark has a normal degree of distinctiveness and the degree of attention varies from average to higher than average.

The signs are visually similar to an average degree and aurally similar to a high degree. Conceptually, the signs are not similar.

The signs coincide in the verbal element ‘UMA’, which is fully distinctive in both signs. Moreover, the verbal element ‘UMA’ is placed in the first/top position in the earlier sign, where consumers tend to focus their attention as described above, and is the single verbal element in the contested sign.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 641 562. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier Spanish trade mark registration No 3 641 562 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin MITURA

Lena FRANKENBERG GLANTZ

Katarzyna ZANIECKA

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.