AGRIS | Decision 2724121
Date Published: Sep 25, 2017
OPPOSITION No B 2 724 121
ARQIS Dietl Panzer-Heemeier Witty Yamaguchi Rechtsanwälte Partnerschaftsgesellschaft, Prinzregentenplatz 7, 81675 Munich, Germany (opponent), represented by ARQIS Rechtsanwälte Partnerschaftsgesellschaft, Prinzregentenplatz 7, 81675 Munich, Germany (professional representative)
a g a i n s t
Finagris, SA, Rue Saint-Mathieu 24, 2138 Luxembourg, Luxembourg (applicant), represented by Joana Dez-Réis Grilo, Rua Rodrigo da Fonseca, 82- 2º Esq., 1250-193 Lisbon, Portugal (professional representative).
On 14/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 724 121 is upheld for all the contested services, namely the following:
Class 36: Insurance; financial affairs; monetary affairs.
2. European Union trade mark application No 15 249 998 is rejected for all the contested services. It may proceed for the remaining 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 15 249 998, namely against all the services in Class 36. The opposition is based on, inter alia, European Union trade mark registration No 5 977 418. 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 European Union trade mark registration No 5 977 418.
- The services
The services on which the opposition is based are the following:
Class 35: Accountancy; business consultancy; tax consultancy, included in Class 35.
Class 36: Tax consultancy, included in Class 36.
Class 45: Legal services; legal consultancy in tax matters.
The contested services are the following:
Class 36: Insurance; financial affairs; monetary affairs.
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 financial affairs; monetary affairs include services of banking establishments, as well as services of credit institutions such as co-operative credit associations, individual financial companies, lenders, etc., services of investment trusts, etc. Such institutions and companies provide as part of their services tax advice and consultancy related to financial investments and safeguarding of money. Consequently, the contested financial affairs; monetary affairs include, as broader categories, the opponent’s tax consultancy, included in Class 36. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested insurance consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages. These services have different purposes from the opponent’s tax consultancy, included in Class 36, which is financial consultancy related to taxation, such as tax planning, income tax advice and tax returns consultancy. Nevertheless, there are also some significant similarities. Insurance services are of a similar financial nature and insurance companies are subject to licensing, supervision and solvency rules similar to those governing banks, credit institutions and other institutions providing financial services. Most such institutions also offer insurance services, including health insurance, or act as agents for insurance companies with whom they are often economically linked. Additionally, it is not unusual to see a financial institution and an insurance company in the same economic group.
Therefore, although insurance services and tax consultancy have different purposes, they are of a similar nature, may be provided by the same undertaking or related undertakings and have the same distribution channels. Therefore, the contested insurance services are at least lowly similar to the opponent’s tax consultancy, included in Class 36.
- 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 lowly similar target business customers and the general public. However, since these services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (in relation to financial services, see 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).
- The signs
ARQIS | |
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 single verbal element ‘ARQIS’ of the earlier word mark, and ‘AGRIS’, contained in the contested figurative sign, do not have any meaning for the public in the relevant territory and are of average distinctiveness. The figurative element in green of the contested sign, which forms part of the letter ‘I’, is an abstract figure which does not convey a particular meaning either.
None of the marks have any element that could be clearly considered more distinctive or more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the sequence of letters ‘A(*)R(*)IS’, present in the same order in both marks. Consequently, the marks coincide in four out of five letters in each mark. They differ in one letter in each sign, ‘Q’ in the third position in the earlier mark and ‘G’ in the second position in the contested sign, and in the positioning of the letter ‘R’ in the marks, which is in second position in the earlier mark and in third position in the contested sign. Moreover, it should be noted that there is some visual similarity between the differing letters ‘Q’ and ‘G’, as both are made up of curved strokes (closed in the case of the letter ‘Q’ and open in the letter ‘G’). The marks also differ in the stylisation of the verbal element of the contested sign, which will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public. Therefore, the marks are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘A(*)R(*)IS’. The pronunciation of the marks differs in the sound of the third letter ‘Q’ in the earlier mark and the second letter ‘G’ in the contested sign (both of which represent stop consonants where the occlusion is made with the tongue body) and in the positioning of the common letter ‘R’. Both marks will be pronounced in two syllables and have, therefore, similar rhythms. Therefore, the marks are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of the 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 marks and between the goods or services identified (recital 8 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 under comparison are partly identical and partly at least lowly similar. The earlier mark enjoys a normal degree of distinctiveness per se in relation to the relevant services.
The signs are visually and aurally similar to an average degree on account of the letters that they have in common, ‘A(*)R(*)IS’, and their similar overall structures. Due to the position of the differing letters in the middle of the signs, these differences are more likely to go unnoticed by consumers, who rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. The marks also differ in the stylisation of the contested sign, which nevertheless will not obscure or camouflage the letters that the marks have in common.
Moreover, the marks under comparison will not be associated with any meaning and will be perceived as fanciful words. Therefore, there is no concept that could render the signs more distinguishable and, thus, avoid the potential for confusion between them that arises from their visual and aural similarities.
Therefore, even considering that the degree of attention that the relevant public will display for the services at issue may be higher than average, the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers. Even consumers with 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).
Consequently, it is considered that the similarities between the signs are sufficient to lead to a likelihood of confusion between the marks.
This finding is true even for the services that are similar to at least low degree, since the impact of the differences between the signs is not sufficient to overcome the similarity between them. The similarity between the signs outweighs the low degree of similarity between some of the services.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 977 418. It follows that the contested trade mark must be rejected for all the contested services.
As the above mentioned earlier right 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).
COSTS
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Alexandra APOSTOLAKIS | Boyana NAYDENOVA | Martina GALLE |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.