OPPOSITION No B 3 066 596

Holm Bank AS, Posti 30, 90504 Haapsalu, Estonia (opponent), represented by Patendibüroo Turvaja OÜ, Liivalaia 22, 10118 Tallinn, Estonia (professional representative)

a g a i n s t

Lýsi hf., Fiskislod 5-9, 101 Reykjavik, Iceland (applicant), represented by Arnason Faktor, Gudridarstig 2-4, 113 Reykjavik, Iceland (professional representative).

On 08/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 596 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 goods and services of European Union trade mark application No 17 916 506 for the word mark ‘LÝSI’, namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 13 786 686 and Estonian trade mark registration No 47 531, both for the figurative trade mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier marks 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 marks 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.

1. The services

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

European Union trade mark registration No 13 786 686

Class 35: Arranging of trading transactions and commercial contracts; mediation and conclusion of commercial transactions for others; provision of commercial information; commercial trading and consumer information services; procurement services for others [purchasing goods and services for other businesses]; provision of business and commercial information; organisation of events for commercial and advertising purposes; provision of commercial and business contact information; arranging of commercial and business contacts; trade marketing [other than selling]; loyalty, incentive and bonus program services; customer club services, for commercial, promotional and/or advertising purposes; advisory services for preparing and carrying out commercial transactions; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; advertising and marketing; advertising, marketing and promotional consultancy, advisory and assistance services; distribution of advertising, marketing and promotional material; provision of advertising space, time and media; financial marketing; mediation of advertising; business analysis, research and information services; collection and systematization of business data; business assistance, management and administrative services; business management consultancy services; business organisation; business advisory and information services; organisation of exhibitions and events for commercial or advertising purposes; commercial administration of the licensing of the goods and services of others; clerical services; professional business consultation.

Estonian trade mark registration No 47 531

Class 35: Commerce services, including retail and wholesale services (for others); commercial intermediation services, export-import; procurement services for others [purchasing goods and services for other businesses]; distribution of samples; sales promotion; provision of business and commercial information; business administration, business organisation; rental of advertising space; organization of exhibitions for commercial or advertising purposes; commercial administration of the licensing of the goods and services of others; office functions services; consultancy services in connection with the aforesaid, including professional business consultancy.

The contested services are the following:

Class 35: Wholesale services for dietary supplements, dietetic food and substances for humans and animals; retail services for dietary supplements, dietetic food and substances for humans and animals; import and export services in relation to dietary supplements, dietetic food and substances for humans and animals; marketing services in the field of dietary supplements, dietetic food and substances for humans and animals.

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

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 marketing services in the field of dietary supplements, dietetic food and substances for humans and animals are included in, or at least overlap with, the broad category of the opponent’s advertising, marketing and promotional consultancy of the opponent’s EUTM. Therefore, they are identical.

The contested import and export services in relation to dietary supplements, dietetic food and substances for humans and animals are similar to the opponent’s arranging of commercial and business contacts of the opponent’s EUTM, since these services may be provided by the same undertakings, have the same relevant public and may use the same distribution channels, such as commercial agencies. To a certain extent, they are also complementary, since the opponent’s arranging of commercial and business contacts supports potential import and export services in the future.

The remaining contested services, namely wholesale and retail services for dietary supplements, dietetic food and substances for humans and animals, are dissimilar to any of the services covered by the opponent’s EUTM. This is due to the fact that the contested services are a particular category of trade related to the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods. None of the opponent’s services covered by the earlier EUTM has such a function, including as a method of use or purpose, nor are they offered by the same undertakings as the contested services — namely retailers and wholesalers. These services also have a different relevant public to the opponent’s services, which target business customers. While the retail services target the public at large, the wholesale services target other retailers (wholesalers). Moreover, they have no complementarity, nor are they in competition with each other, due to the essentially different needs they satisfy in commerce and trade.

Some of the earlier Estonian trade mark’s services are identical to those of the contested sign (e.g. export-import). However, the Opposition Division will not undertake a full comparison of the services listed above again, but will proceed on the assumption that all the contested services are identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 of the EUTM found to be identical or similar to those of the contested sign are directed at business customers with specific professional knowledge or expertise. On the other hand, the services of the Estonian trade mark assumed to be identical to the contested services are partly directed at the public at large, as far as retail is concerned, and also at the professional public for all the remaining services in Class 35. The degree of attention will vary between average (for retail), and higher than average or high, whenever higher investment and contractual risks are involved.

3. The signs and distinctiveness of the earlier marks

	LÝSI
Earlier trade marks	Contested sign

The relevant territories are the European Union and Estonia.

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).

Despite the high degree of stylisation, the earlier marks will be read by a part of the public as ‘liisi’. This is primarily due to the fact that ‘Liisi’, spelled in this manner, is a common Estonian and Finnish female first name that will generally be recognised among consumers there. Moreover, in principle, consumers are accustomed to seeing fanciful stylisations and creative depictions of verbal elements in signs and will tend to look for the easiest possible way to refer to them, This practice will usually be enabled by their past experience of perceiving signs from the market environment. Consequently, in addition to the Estonian and Finnish consumers, some other EU consumers will also be able to read the sign as ‘liisi’ or ‘liizi’, as the highly stylised fourth letter may be associated with a calligraphic depiction of the letters ‘s’ or ‘z’. Even so, none of these depictions is a usual way of spelling the aforementioned female name for the remaining EU consumers. Taking this into account, and given that the sign is entirely represented in lower-case letters, without hinting at a possible name, the earlier mark will most likely be perceived as meaningless by these consumers.

For the remainder of the EU consumers, the earlier EUTM’s spelling may be open to interpretation, depending on the background of consumers. By way of example, the double ‘ii’ may be seen as an umlaut ‘ü’ from German, producing the word ‘lüsi’ or ‘lüzi’, whereas another part of the consumers may not be able to read the sign and will simply perceive it as an image of a highly stylised verbal element.

In any event, to the extent that the earlier marks (whether perceived as meaningful or not), neither describe nor allude to the nature or characteristics of the services in question, they are considered distinctive.

Given that the opponent made no claims with regard to enhanced distinctiveness, the two earlier marks enjoy a normal degree of distinctiveness.

From the perspective of the Estonian consumers, the letter ‘Ý’ of the contested sign appears quite striking, since it does not form part of their alphabet. Given their unfamiliarity with this letter, Estonian consumers will most probably read the letter as ‘Ü’, and the contested sign as a whole will convey no meaning to them. As to other EU consumers, some may associate the letter ‘Ý’ with the sound [i]. To that extent, it cannot be excluded that for some of the public, the contested sign may evoke a derivative name or a variation of the popular female name ‘Lyza’. Again, regardless of whether or not the sign will be perceived as having a meaning or conveying no concept at all, it has a normal degree of distinctiveness.

Visually, given what has been discussed above, it cannot be ruled out that at least for a part of the public, the signs may coincide in the visual perception of the letters ‘L*SI’. However, while the earlier marks bear the middle letters ‘ii’ or ‘ü’, the contested sign’s second letter is the, quite striking, letter ‘Ý’. Moreover, as explained above, this visual coincidence will most likely occur for only a certain part of the public, in particular the public already familiar with the spelling and concept behind the stylised element — namely the Finnish and Estonian consumers — whereas the remainder of the consumers may not perceive the abovementioned similarities.

It is important to highlight that the contested sign is a word mark and therefore protection is sought for the word as such and not for the particular way in which it is graphically represented. Consequently, it is irrelevant whether it is depicted in lower-, upper- or title-case letters. Notwithstanding, the fact remains that the high degree of stylisation in the earlier marks may prevent many consumers from reading the sign as described above, or reading it at all. Additionally, some weight has to be given to the fact that the signs in question are relatively short. While differences in longer signs are difficult to remember, striking letters and stylisation in shorter verbal elements may be easier to grasp and notice (13/02/2007, T‑353/04, CURON, EU:T:2007:47, § 70).

Given all the above considerations, the signs will be at most visually similar to a low degree, to the extent that the earlier marks will be read as ‘liisi’ by some of the EU consumers as commented above.

Aurally, the pronunciation of the signs may coincide in the sound of the letters ‛L*SI’ for some part of the consumers. Moreover, at least some of the EU consumers may pronounce both signs as [lisi], to the extent that they pronounce the letters ‘I’ and ‘Ý’ identically. For that part of the public, the signs are aurally identical.

However, the pronunciation differs in the sound of their middle letters, [liisi] versus [lyusi], for the Estonian public, as well as for some other parts of the EU public that have a different pronunciation of the letter ‘Ý’. For that part of the public, the signs are aurally similar to a low degree.

Conceptually, while a part of the public will understand the earlier marks as a female name (in particular the Finnish and Estonian consumers), the contested sign conveys no meaning for them. To that extent, the signs are conceptually not similar.

For another part of the public, however, the earlier marks may remain meaningless and unusual, while the contested sign may evoke an association with a variation of the spelling or derivative version of the name ‘Liza’. Again, the signs will be conceptually not similar in that case.

Finally, where neither of the signs conveys a concept for consumers, a conceptual comparison will not be possible and the conceptual comparison will remain neutral and with no effect.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 signs and between the goods or services identified. 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).

Findings and conclusion in relation to the earlier EUTM

The contested services are partly identical, partly similar and partly dissimilar to the services of the earlier EUTM. Unlike the aforementioned retail services, these services in Class 35 are meant exclusively for business consumers and the degree of attention will be rather above the average or even high. The earlier mark enjoys a normal degree of distinctiveness

As has been established above, the signs are visually at most similar to a low degree. Aurally, the degree of similarity may vary from low to identical for some consumers. Conceptually, to the extent that a comparison is possible, the signs are not similar, since one of them conveys a meaning for the public, whereas the other does not. In this case, it is important to note that it is rather unlikely that both signs will be simultaneously perceived as a female first name or as the same name. This perception can be safely excluded in the present case, since consumers of the same territory and background will tend to associate only one of the above spellings with a name (if related to a name at all).

Finally, it must be recalled that the visual, aural and conceptual aspects of the comparison between signs do not always carry the same weight. The Court has stated that, when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods or services in question and the way they are marketed (22/09/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27). In particular, the category of goods and services involved may increase the importance of one of the different aspects of similarity between signs (visual, aural and conceptual), because of how these goods and services are ordered and/or purchased. Therefore, the similarities established have to be viewed in the context of the market environment in which the two parties operate, while also taking into consideration the functional needs that the products satisfy and the specific conditions under which the services are offered and/or distributed (for instance whether they are offered over the phone, via direct marketing, using catalogues for visual guidance, or with a strong presence of merchandising strategies).

Some special relevance has to be given to the services in question, which consist of professional business services purchased only after a thorough consultation and most likely upon a visual inspection of the signs. Despite the fact that a certain number of consumers may refer to the signs identically, taken out of its context, this is not considered a sufficient factor to prevail over the visual differences between the two signs in question. Indeed, the certainty of this finding cannot be guaranteed, since it relies on a high degree of speculation concerning the perception of the earlier mark itself. Consequently, the visual factor is considered to have a stronger impact and prevail on the conclusion of whether or not a likelihood of confusion may occur.

Emphasis is again placed on the fact that the length of the signs may have a decisive role in the evaluation of likelihood of confusion. In particular, the shorter the sign, the easier it is for consumers to remember its particularities. The earlier mark’s letters are highly stylised, to the extent that they may not be easily recognised by all consumers, as explained in detail above. On the other hand, the contested sign’s second letter is ‘Ý’, and the beginning of the sign ‘LÝ-’ is considered visually striking and different from the beginning ‘lii’ or ‘lü’ of the earlier mark, especially when featured in relatively short signs. Consequently, despite the coinciding letters in the signs, the differing letters, and particularly the high stylisation and unusual depiction of some of the letters, are sufficiently different from a visual point of view. In addition, as stated above, the signs have no concepts that could lead consumers to link them or, if any concept is attributed to them, it will convey a different meaning.

Therefore, even taking into account the identity and similarity of some of the services, there is no likelihood of confusion on the part of the public, and the opposition must be rejected.

Findings and conclusion in relation to the earlier Estonian trade mark

As far as the Estonian earlier mark is concerned, the conflicting services are assumed to be identical and to target both the public at large and professional consumers. The degree of attention is considered to vary from average to high and the earlier mark enjoys a normal degree of distinctiveness.

For the Estonian consumers, the signs are visually and aurally similar at most to a low degree, and conceptually not similar. Despite the occasional coincidence between the signs, the clear perception of the earlier mark as a popular female name will be capable of overcoming its similarities with the contested sign and lead to a different overall perception of the signs. Consequently, for this part of the public, even assuming that the services in question are identical, there is no likelihood of confusion.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent in relation to this earlier right.

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

Meglena BENOVA

Manuela RUSEVA

Sofía SACRISTÁN MARTÍNEZ

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.