OPPOSITION No B 3 062 646

Franmax, UAB, Savanorių pr. 247, 02300 Vilnius, Lithuania (opponent), represented by Metida Law Firm Zaboliene and Partners, Business center VERTAS Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative)

a g a i n s t

Hangzhou HuiHui Technology Co. Ltd., Room 427 No. 1 , Xixi Runjing Building Wuchang Street, Yuhang District, 310000 Hangzhou Zhejiang, People’s Republic of China (applicant), represented by Daniel Smart, 30 River View Drive M7 1BG Salford, United Kingdom (professional representative).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 646 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 895 613 , namely against all the services in Class 35. The opposition is based on Lithuanian trade mark registration No 53 119 and European Union trade mark registration No 12 087 251 . 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:

Lithuanian trade mark registration No 53 119

Class 35: Advertising; business management; business administration; clerical services.

European Union trade mark registration No 12 087 251

Class 35: Advertising; dissemination of advertising matter; presentation of goods; updating of advertising material; distribution of samples; outdoor advertising; radio and television advertising; import-export agency services; market research; marketing and sales promotion for others; creation, implementation, administration and supervision of customer attraction and customer loyalty schemes; business management; business administration; office functions; commercial administration of the goods and services of others; providing of information relating to goods via the internet; market research; exhibitions for commercial or advertising purposes; business information; on-line advertising on a computer network; marketing services.

The contested services are the following:

Class 35: On-line advertising on a computer network; shop window dressing; business research; business management assistance; business information; import-export agency services; marketing; business project management services for construction projects; sponsorship search; providing business information via a web site.

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.

The contested on-line advertising on a computer network; shop window dressing; marketing; sponsorship search are included in the broad categories of the opponent’s marketing and sales promotion for others. Therefore, they are identical.

The contested business research; business management assistance; business information; business project management services for construction projects; providing business information via a web site are included in the broad category of the opponent’s business management present in both lists of the earlier marks. Therefore, they are identical.

The contested import-export agency services are similar to business management present in both lists of the earlier marks. They coincide in their purpose, target the same relevant public and are provided by the same firms.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high depending on the price and specialisation of the services.

3. The signs

Lithuanian trade mark registration No 53 119 European Union trade mark registration No 12 087 251
Earlier trade mark	Contested sign

The relevant territories are Lithuania and 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 signs are figurative. They consist of two bold semi-curved thick lines crossing in the middle. The earlier marks, one in red and one in black, can be understood as an ‘X’, whereas the lines of the contested sign are in a different position and the contested sign will not be associated with any meaning. The signs are not descriptive, allusive or otherwise weak or non-distinctive in relation to the relevant services, and therefore have an average degree of distinctiveness.

Visually, the signs coincide in the depiction of two thick lines, as explained above, but they are drawn in different positions and they are depicted differently: the earlier signs are black and red and their depiction is freehand, whereas the contested is in black and its sides and terminations are controlled.

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

Aurally, purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark 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.

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. 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, and the degree of similarity between the marks and between the goods or services identified (recital 11 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).

The services are partly identical and partly similar. The public’s attention may vary from average to high and the earlier marks have an average degree of distinctiveness.

The signs are visually similar to a low degree and conceptually not similar. They only coincide in that they consist of a graphic design of two lines that intersect. However, their depiction and positions are different and, moreover, the earlier marks are associated with the letter ‘X’, whereas the contested sign has no meaning.

The fact that the earlier EUTM is depicted in red is an additional difference and separates the overall impressions formed by the signs in the consumer’s minds even more.

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 no likelihood of confusion on the part of the public. Therefore, the opposition 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.