AVENTIA | Decision 2457714 - GRUPO AVINTIA, S.L. v. Dymon Asia Capital (Singapore) Pte. Ltd.

Date Published: Oct 1, 2017

OPPOSITION No B 2 457 714

Grupo Avintia, S.L., Carpineros 10, 28670 Villaviciosa de Odón, Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative)

a g a i n s t

Dymon Asia Capital (Singapore) Pte. Ltd., One Temasek Avenue, #11-01 Millenia Tower, Singapore, 039192, Singapore (applicant), represented by Baker & Mckenzie LLP, 100 New Bridge Street, London EC4V 6JA, United Kingdom (professional representative).

On 07/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 457 714 is partially upheld, namely for the following contested services:

Class 36: Real estate affairs also provided on-line from a computer database or via the global communications network; advisory information and consultancy services relating to real estate affairs.

2.        European Union trade mark application No 13 411 921 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 411 921. The opposition is based on, inter alia, Spanish trade mark registration No 2 956 212. The opponent invoked Article 8(1)(b) and Article 8(5) 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 Spanish trade mark registration No 2 956 212.

1. The services

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

Class 36: Real estate businesses.

Class 37: Construction; repair; installation services.

The contested services are the following:

Class 36: Financial affairs; monetary affairs; real estate affairs; investment; administration of capital investment services; administration of investment funds; capital fund investment; financial investment; investment analysis; investment appraisal services; investment asset management; investment brokerage; investment management, research and planning; investment trust services; financial analysis, appraisals, assessments, assistance, evaluations, management and research; financial services; trading in currencies; commodities brokerage; commodities financing; commodity trading (financial services); commodities investment advisory and consultation services; hedge fund investment services; operation, administration, capital raising and management of hedge funds, capital investment funds and collective investment vehicles; hedge fund services relating to foreign exchange, securities, commodities, derivatives, equities, bonds, stocks and futures; trade finance services; securities trading services; corporate trustee services; management of funds; advisory, information and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database or via the global communications network.

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.

Real estate affairs also provided on-line from a computer database or via the global communications network are identically contained in both lists of services (including synonyms).

Advisory and consultancy services refer to providing advice and replies to queries that are tailored to the circumstances or needs of a particular user and that recommend specific courses of action for the user. Information services refer to providing a user with materials (general or specific) about a matter or service but not advising the user on specific courses of action. Advisory, consultancy and information services are, in principle, always similar, or even identical, to the services to which they relate. Therefore, the contested advisory information and consultancy services relating to all the aforesaid [real estate affairs] also provided on-line from a computer database or via the global communications network are similar to the opponent’s real estate businesses, as they have the same usual origin, distribution channels and relevant public. Furthermore, they are complementary.

The contested financial affairs; monetary affairs; investment; administration of capital investment services; administration of investment funds; capital fund investment; financial investment; investment analysis; investment appraisal services; investment asset management; investment brokerage; investment management, research and planning; investment trust services; financial analysis, appraisals, assessments, assistance, evaluations, management and research; financial services; trading in currencies; commodities brokerage; commodities financing; commodity trading (financial services); commodities investment advisory and consultation services; hedge fund investment services; operation, administration, capital raising and management of hedge funds, capital investment funds and collective investment vehicles; hedge fund services relating to foreign exchange, securities, commodities, derivatives, equities, bonds, stocks and futures; trade finance services; securities trading services; corporate trustee services; management of funds; advisory, information and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database or via the global communications network are financial or monetary services provided by banking establishments, credit institutions or exchange brokers. These types of companies provide all the services necessary for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, the issuing of notes and the transacting of other financial business. The opponent’s real estate businesses in Class 36 is a broad category that includes a wide variety of services relating to real estate matters, such as the services provided by real estate agencies and brokers, the leasing and/or rental of real estate, the management of real estate, etc. The opponent’s construction; repair; installation services in Class 37 are rendered by contractors or subcontractors in the construction or making of permanent buildings and are also services rendered by persons or organisations engaged in the restoration of objects to their original condition or in their preservation without altering their physical or chemical properties. These contested services have nothing in common with any of the opponent’s services. Their fields are not directly related, they belong to different areas of activity, they have different purposes and they are provided by different types of companies. Furthermore, these services are neither complementary nor in competition. Consequently, they are dissimilar.

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 the public at large as well as at business customers with specific professional knowledge or expertise.

‘The purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging’ (decision of 17/02/2011, R 817/2010-2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

3. The signs

	AVENTIA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is figurative and consists of the word ‘Avintia’, written in standard dark-blue italic title case letters, and a depiction of a green triangle to the left of the upper case letter ‘A’.

The contested sign is the single word ‘AVENTIA’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in upper case letters, as is the case with the contested sign.

As regards the earlier mark, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element. The verbal element ‘Avintia’ is meaningless for the relevant public.

The element ‘AVENTIA’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

Neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.

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).

Visually, the signs have in common the letters ‘a-v-*-n-t-i-a’ which are in the same position, notwithstanding the slightly stylised font used in the earlier mark. However, they differ in the third letter, ‘i’, in the earlier mark, which is replaced by the letter ‘e’ in the contested sign, and in the additional figurative element of the earlier mark, which has no counterpart in the contested sign.

Taking into account the limited impact of the earlier mark’s figurative element and the coincidence in six out of seven letters in each sign, they are visually highly similar.

Aurally, the pronunciation of the signs differs in only the sound of the third letter, ‛i’, of the earlier mark, which corresponds to the sound of the letter ‘e’ in the contested sign. The equal length and number of syllables, the almost identical vowel sequence and the same sounds at the beginnings and at the ends of the marks make the pronunciation of the two marks very similar. The signs have the same rhythm and are stressed the same way.

Therefore, the marks are considered aurally similar to a high degree.

Conceptually, the verbal elements of the marks convey no concepts; the figurative element of the green triangle in the earlier mark will be understood by the relevant public as such, but 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.

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.

5. Global assessment, other arguments and conclusion

The contested services are considered partly identical or similar and partly dissimilar to the opponent’s services, and they target the public at large and professionals, whose degree of attention is higher than average. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs under comparison are visually and aurally highly similar. The signs differ in only one letter, which is in a central position and will go almost unnoticed. The signs’ word elements are almost identical and are the most distinctive elements of the signs.

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).

It is further observed that the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

This is particularly relevant when, as in the present case, the signs have no concept that could serve to deflect consumers’ attention from the letters and sounds that the marks have in common.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 956 212.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

Since the opposition is partially 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 reputation 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.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• Spanish trade mark registration No 2 767 943 for the word mark ‘AVINTIA’;
• Spanish trade mark registration No 3 054 928 for the figurative mark .

Since these marks cover a narrower scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

The other earlier rights invoked by the opponent, listed below, are less similar to the contested mark. This is because they contain additional words, such as ‘Building’ or ‘Servicios’, which are not present in the contested trade mark. Moreover, they cover the same services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

Spanish trade mark registration No 2 977 409 for the figurative mark

Spanish trade mark registration No 2 977 410 for the figurative mark

Spanish trade mark registration No 2 977 411 for the figurative mark

Spanish trade mark registration No 2 977 414 for the figurative mark

Spanish trade mark registration No 2 977 417 for the figurative mark

Spanish trade mark registration No 2 977 418 for the figurative mark

Spanish trade mark registration No 2 977 420 for the figurative mark

The opposition will be now examined on the ground of Article 8(5) EUTMR in respect of the services found to be dissimilar.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade marks have a reputation in Spain.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested sign was filed on 29/10/2014. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Trade mark registration No 2 767 943

Class 36: Real estate businesses.

Class 37: Construction.

Trade mark registration No 3 054 928

Class 37: Construction; repair; installation and maintenance services in Class 37.

The remaining trade mark registrations

Class 36: Real estate businesses.

Class 37: Construction; repair; installation services.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 29/11/2016, the opponent submitted three catalogues in English and one in Spanish, undated, but with references to 2007, 2014 and 2015. The documents refer to construction services in different places in Spain and abroad, and some of the trade marks are depicted.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

The evidence shows some use of the trade marks but does not provide any indication of the extent of recognition by the relevant public. Some of the evidence relates to a period after the filing of the contested trade sign. Although such evidence cannot be completely ignored it does not demonstrate that a reputation existed at the time of filing (or on the date of priority) of the contested trade mark. Finally, all the evidence comes from the opponent; it does not show that the trade marks have a reputation for the relevant services.

Despite showing some use of the trade marks, the evidence provides no information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade marks or the extent to which the trade marks have been promoted. As a result, the evidence does not show that the trade marks are known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Fabian GARCIA QUINTO

Loreto URRACA LUQUE

Gueorgui IVANOV

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.