OPPOSITION No B 3 072 013

Ideas Investigación y Desarrollo Actuarial y de Seguros, S.A., Avda. General Perón, 14 - 1º C, 28020 Madrid, Spain (opponent), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative)

a g a i n s t

Openvision Lda., Zona Industrial do Paraíso, Pavilhão 5, 4835-612 Guimarães, Portugal (applicant).

On 23/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 013 is upheld for all the contested services.

2. European Union trade mark application No 17 922 002 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 17 922 002 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 8 737 603 for the figurative sign . The opponent invoked Article 8(1)(a) and (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 8 737 603.

1. The services

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

Class 35: Advertising; business management; business administration; office functions; rental of vending machines; rental of advertising space; rental of photocopying machines; publicity material rental; office machines and equipment rental; office machines and equipment rental; rental of advertising time on communication media; market research; sponsorship search; business research; shop window dressing; marketing studies; consumers (commercial information and advice for -) [consumer advice shop]; business investigation; organization of exhibitions for commercial or advertising purposes; presentation of goods on communication media, for retail purposes; economic forecasting; public relations services; opinion polling; auctioneering services; shop window dressing; organisation of trade fairs for commercial or advertising purposes; procurement services for others [purchasing goods and services for other businesses]; import-export agencies; commercial information agencies, price comparison services, press release services; modelling for advertising or sales promotion; psychometric testing for the selection of personnel.

The contested services are the following:

Class 35: Business analysis, research and information services; business assistance, management and administrative services; advertising, marketing and promotional services.

The contested business analysis, research and information services; business assistance and management services at least overlap with the opponent’s business management. Therefore, they are identical.

The contested business administrative services are included in the broad category of the opponent’s business administration. Therefore, they are identical.

Advertising is identically contained in both lists of services (including synonyms).

The contested advertising, marketing and promotional services are included in the broad category of the opponent’s advertising. Therefore, they are identical.

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 are specialised services directed at business customers with specific professional knowledge or expertise. The degree of attention is higher than average due to the possible implications in the development of the businesses.

3. The signs

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 common element ‘IDEAS’ is meaningful at least in English and Spanish. As the semantic content of this element is relevant to the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- and Spanish-speaking part of the public.

‘IDEAS’ will be perceived as the plural of the English and Spanish word ‘idea’. This element enjoys an average degree of distinctiveness as it has no clear meaning in relation to the services in question (29/08/2019, R 2197/2018-5, I.D.E.A. (fig.) / Idea et al. § 28).

Both signs are figurative. 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).

In the earlier mark, ‘IDEAS’ is depicted in blue upper-case letters with shadows and curved on its top. None of the elements could be considered clearly more dominant than other elements.

In the contested sign, ‘IDEAS’ is depicted in a pink square with the verbal element ‘europe’ underneath it, written in smaller and thinner typography. Below these elements are four labels: a red one containing three pencils, a blue one containing the symbol of a USB port, an orange one containing a cap, and a green one containing the recycling symbol. Considering the services at issue, these labels are distinctive.

As such, the element ‘europe’ will be seen as an indication of the geographical origin of the services, namely the place where the services in question are provided. For this reason, it is descriptive and, therefore, lacks distinctiveness for all the services at issue (19/02/2019, R 910/2018-2, Study MEDICINE EUROPE Actualizing Academic Dreams (fig.) / Study Europe § 38).

The square pink background of the contested sign is a banal element which is not, as such, distinctive.

The contested sign also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

As regards the size of the different elements of the contested sign, ‘IDEAS’ together with the square pink background are the dominant elements as they are the most eye-catching.

Visually, the signs coincide in ‘IDEAS’, the sole element of the earlier mark and the distinctive and dominant element of the contested sign. However, they differ in their stylisation and figurative aspects, of reduced impact, in the additional non-distinctive verbal element ‘europe’, and in the four small labels of the contested sign.

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

Aurally, the pronunciation of the signs coincides in /ideas/, present identically in both signs as the sole word element of the earlier mark and the sole distinctive word element of the contested sign. The signs differ in the pronunciation of the additional verbal element of the contested sign /europe/; however, because of its lack of distinctiveness and small size within the sign, it is more than likely that the consumer will not pronounce this element (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55).

Therefore, the signs are aurally highly similar, if not identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning, and the contested sign conveys additional concepts that are either non-distinctive or of secondary importance, the signs are conceptually highly 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 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the contested services are identical and target the professional public with a degree of attention that is higher than average.

The signs are visually similar to an average degree, aurally highly similar, if not identical, and conceptually highly similar.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested sign denotes a new brand line of services provided under the opponent’s mark.

Moreover, it is consistent case-law that, when the services covered by the marks at issue are identical, the degree of difference between the signs must be high to exclude a likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53).

Considering all the above, there is a likelihood of confusion on the part of the English- and Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 737 603. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 8 737 603 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

In addition, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Eva Inés PÉREZ SANTONJA

Cindy BAREL

Alicia BLAYA ALGARRA

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.