OPPOSITION No B 3 047 079

IMMAC Wohnbau GmbH, Große Theaterstraße 31-35, 20354 Hamburg, Germany (opponent), represented by Rae V. Lindeiner PP., van-der-Smissen-Straße 2, 22767 Hamburg, Germany (professional representative)

a g a i n s t

IMMA Holding, 490 rue du Vouet, 38510 Morestel, France (applicant), represented by Laurent Fournier, 73 Rue de Courcelles, 75008 Paris, France (professional representative).

On 30/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 079 is upheld for all the contested services, namely

Class 37: All services in this Class.

Class 42: Conducting technical project studies for construction projects; development of construction projects; conducting technical project studies; technical project planning; technical project studies in the field of construction; computer aided design services relating to building projects; engineering design; engineering design and consultancy; conducting engineering surveys; engineering surveying.

2. European Union trade mark application No 17 602 509 is rejected for all the contested services. It may proceed for the remaining non-contested goods and services.

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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 602 509 for the figurative mark , namely against all the services in Class 37 and some of the services in Class 42. The opposition is based on German trade mark registration No 302 015 060 406 for the 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.

1. The services

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

Class 37: Construction services, namely carrying out building projects, building construction supervision, technical building construction supervision and supervision for building construction and underground construction.

Class 42: Construction services, namely technical project development.

As a preliminary remark, it is to be noted that the opponent did not file its opposition explicitly against engineering design. However, the opposition is aimed at engineering design and consultancy. As the latter term covers engineering design, the Opposition Division will also include in the following examination the term engineering design.

The contested services are the following:

Class 37: Construction project management services; Construction services; Construction information; Consultancy and information services relating to construction; Consultancy, information and advisory services relating to the construction of public works; Building construction supervision; Construction consultancy; Consultation in building construction supervision.

Class 42: Conducting technical project studies for construction projects; development of construction projects; conducting technical project studies; technical project planning; technical project studies in the field of construction; computer aided design services relating to building projects; engineering design; engineering design and consultancy; conducting engineering surveys; engineering surveying.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘namely’, used in the opponent’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 37

Building construction supervision is identically contained in both lists of services.

The contested construction services includes, as a broader category, the opponent’s construction services, namely carrying out building projects, building construction supervision, technical building construction supervision and supervision for building construction and underground construction. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested construction project management services overlap with the opponent’s construction services, namely carrying out building projects, building construction supervision, technical building construction supervision and supervision for building construction and underground construction. Therefore, they are considered identical.

The contested construction information; consultancy and information services relating to construction; consultancy, information and advisory services relating to the construction of public works; construction consultancy; consultation in building construction supervision are similar to at least an average degree to the opponent’s services in Class 37. They have the same distribution channels, sales outlets and providers. Furthermore, they are complementary.

Contested services in Class 42

The contested conducting technical project studies for construction projects; development of construction projects; conducting technical project studies; technical project planning; technical project studies in the field of construction; computer aided design services relating to building projects; engineering design (listed twice); conducting engineering surveys; engineering surveying are identical to the opponent’s construction services, namely technical project development, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested engineering consultancy is similar to at least an average degree to the opponent’s services in Class 42. They have the same distribution channels, sales outlets and providers. Furthermore, they are complementary.

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.

The services found to be identical or similar to at least an average degree are directed at the professional public with specific professional knowledge or expertise, and also, to some extent, to the general public (e.g. construction services). The public’s degree of attentiveness is rather high due to the price, specialised nature, or terms and conditions of the services purchased.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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 comparison are figurative signs composed of verbal and figurative components. The verbal elements in the earlier mark are: ‘IMMAC’ and ‘Wohnbau’. The contested sign contains the verbal elements ‘IMMA’ and ‘chart’. The words ‘IMMAC’ and ‘IMMA’ appear at the top in both signs and are depicted in bold upper-case font. The words ‘Wohnbau’ and ‘chart’ appear respectively beneath the words ‘IMMAC’ and ‘IMMA’ and are written in lower-case, except for the letter ‘W’ of the earlier mark which is in upper-case. The figurative element of the earlier mark is a slightly stylised square. The figurative component in the contested sign is a three-dimensional structure. The figurative element of the earlier mark is green and white, and the verbal elements are depicted in black. The contested sign’s figurative element and its verbal element ‘chart’ are brown, and the word ‘IMMA’ is willow green.

The element ‘IMMAC’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive. The element ‘Wohnbau’ of the earlier mark is a German word and will be understood by the relevant public as ‘housing construction’. Bearing in mind that the services in question are related to construction projects and construction works, this element is non-distinctive for these services. The figurative element, although it is not particularly fanciful, has an average degree of distinctiveness.

The element ‘IMMA’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. The element ‘chart’ of the contested sign is used in the German language and will be understood as ‘a diagram, picture, or graph which is intended to make information easier to understand’. Bearing in mind that the relevant services are related to construction projects and construction works, this element is weak for these services. The figurative element has no meaning for the services at hand and is, therefore, distinctive.

The marks under comparison have no elements that could be considered clearly more dominant than other elements.

The stylisation of the verbal elements in the signs under comparison are rather decorative and play a secondary role in the comparison. Moreover, when signs consist of both verbal and figurative components, 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; 19/12/2011, R 233/2011‑4 BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5 JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK.), § 59).

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 top to bottom and left to right, which makes the part placed at the top of the sign (the initial part) the one that first catches the attention of the reader. This is even more relevant in the current case as the distinctive verbal elements are depicted in bold and above the non-distinctive/weak verbal elements.

Visually, the signs coincide in the letters ‘IMMA’. They also coincide in how the verbal elements are depicted, that is, the words ‘IMMAC’ and ‘IMMA’ are presented in bold upper-case font and are placed above the non-distinctive/weak verbal elements. However, they differ in the last letter ‘C’ in the distinctive verbal element ‘IMMAC’ of the earlier mark. They also differ in their figurative elements which have a more limited impact than the verbal elements as explained above and additional verbal elements, which are, as stated above, non-distinctive/weak.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛IMMA’, present identically in both signs. The pronunciation differs in the sound of the letter ‘C’ which is the last letter of the distinctive verbal element ‘IMMAC’ of the earlier mark. The signs differ also in their non-distinctive/weak verbal elements, ‘Wohnbau’ and ‘chart’ respectively, which are not likely to be pronounced, or will have a very limited impact, due to their non-distinctive/weak character.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Non-distinctive/weak elements cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The contested services are partly identical and partly similar to at least an average degree. They target professionals, and also, to some extent, the general public, whose degree of attention is rather high. The signs are visually similar to a low degree and aurally similar to a high degree. The conceptual comparison is not possible. Furthermore, the earlier mark has an average degree of inherent distinctiveness.

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 most distinctive and initial verbal elements of the signs in question, namely ‘IMMAC’ and ‘IMMA’, are highly similar as they differ only in one additional letter at the end of the earlier mark. As stated above, beginnings are more memorable to the public. The signs also have similar structures as their distinctive verbal elements are located above their non-distinctive verbal elements. Therefore, the differences between the signs are not sufficient to counterbalance the overall similar impression of the signs.

Consequently, the contested trade mark must be rejected for the services found to be identical or similar to at least an average degree to those of the earlier trade mark. In this regard it should be noted that 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). According to the interdependence principle the low degree of visual similarity is outweighed not only by the high aural similarity, but also by the identity and similarity (to at least an average degree) between the services in question.

In its observations, the applicant argues that it owns several registered marks containing the verbal element ‘IMMA’ in the European Union and in France, some of which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the Office concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Furthermore, the applicant stresses that the opponent is only ‘active in Germany and Ireland’. How and where the services of the opponent are rendered is irrelevant as the Opposition Division focuses on the comparison of the goods/services and the comparison of signs in the opposition proceedings. Therefore, this claim of the applicant must be set aside.

The applicant further argued that its EUTM has a reputation and filed various items of evidence to substantiate this claim.The right to an EUTM begins on the date when the EUTM is filed and not before. From that date the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Therefore, also this argument of the applicant must be set aside.

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 German trade mark registration No 302 015 060 406. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Saida CRABBE

Michal KRUK

Marzena MACIAK

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.