AVILA | Decision 2489311 - MY OFFICE - CONSULTORIA EM PROJECTOS, UNIPESSOAL LDA v. AVILA Management & Consulting AG

Date Published: Sep 25, 2017

OPPOSITION No B 2 489 311

My Office - Consultoria em Projectos, Unipessoal Lda., Avenida João Crisóstomo, nº 30, 5º, 1050-127 Lisbon, Portugal (opponent), represented by Furtado - Marcas e Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisbon, Portugal (professional representative).

a g a i n s t

Avila Management & Consulting AG, Kleinaustraße 10, 14169 Berlin, Germany (applicant), represented by Gulde & Partner Patent- und Rechtsanwaltskanzlei mbB, Wallstr. 58/59, 10179 Berlin, Germany (professional representative).

On 24/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 489 311 is partially upheld, namely for the following contested services:

Class 35: Business consulting services; development of usage concepts for real estate with regard to professional business matters; expert opinion on business efficiency; building promoter services, namely organizational arranging of building projects; business management and organisation consultancy, business management consultancy; operation of businesses [for others]; business management for hospices, clinics, old people’s homes, care homes, homes for the disabled, youth centres and student accommodation, for others.

Class 36: Real estate affairs; apartment house management; real estate management; estate brokerage; real estate agency; property (Real estate -) management; rental, letting and lease of real estate; real-estate valuations.

2.        European Union trade mark application No 13 411 897 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 some of the services of European Union trade mark application No 13 411 897, namely against all the services in Classes 35, 36, 37 and 42. The opposition is based on Portuguese trade mark registration No 500 259 and on Portuguese trade mark registration No 500 136. 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 Portuguese trade mark registration No 500 136.

1. The services

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

Class 35: Office functions services; secretarial services; management and administration of business projects.

Class 36: Real estate administration; leasing of office space; leasing of commercial premises.

Class 41: Rental of audio equipment; organisation of exhibitions, conventions and conferences for cultural or educational purposes; organisation and preparation of courses; arranging and conducting of conferences, congresses, seminars, symposiums, training courses, classes and lectures; arranging and conducting of training courses.

The contested services are the following:

Class 35: Business consulting services; development of usage concepts for real estate with regard to professional business matters; expert opinion on business efficiency; building promoter services, namely organizational arranging of building projects; business management and organisation consultancy, business management consultancy; operation of businesses [for others]; business management for hospices, clinics, old people’s homes, care homes, homes for the disabled, youth centres and student accommodation, for others.

Class 36: Building, namely the financial preparation of building projects; real estate affairs; apartment house management; real estate management; estate brokerage; real estate agency; development of usage concepts for real estate with regard to financial matters; property (Real estate -) management; rental, letting and lease of real estate; real-estate valuations.

Class 37: Building construction; building repair; installation services for buildings; building, namely the implementation of building projects; construction consultation; construction consultation; construction management; structural and civil engineering.

Class 42: Building, namely the technical preparation of building projects; development of usage concepts for real estate, with regard to technical matters; technical project studies; architecture.

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

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested services in Class 35

The contested business consulting services; business management and organisation consultancy; business management consultancy include, as broader categories, the opponent’s management and administration of business projects. 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 development of usage concepts for real estate with regard to professional business matters; expert opinion on business efficiency; building promoter services, namely organizational arranging of building projects; operation of businesses [for others]; business management for hospices, clinics, old people’s homes, care homes, homes for the disabled, youth centres and student accommodation, for others are included in or overlap with the opponent’s management and administration of business projects. Therefore, they are identical.

Contested services in Class 36

The contested real estate affairs; real estate agency include, as a broader category, the opponent’s real estate administration. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested estate brokerage; rental, letting and lease of real estate; real-estate valuations are different aspects of the activities of a real estate agency. Therefore, they are included in, or overlap with, the opponent’s real estate administration. To that extent, they are identical.

The contested apartment house management is included in the opponent’s real estate administration. Therefore, they are identical.

Property (real estate -) management; real estate management in the contested list of services can be considered synonyms of the opponent’s real estate administration. Therefore, these services are also identical.

The opponent’s real estate services in Class 36 mainly involve finding a property, making it available for potential buyers and acting as an intermediary. They are provided by real estate agencies. The contested services of building, namely the financial preparation of building projects; development of usage concepts for real estate with regard to financial matters are related to the financing of building and real estate projects. They are provided by financial establishments such as banks. Consumers clearly distinguish real estate agents’ services from those of financial institutions. They do not expect a financial establishment such as a bank to find housing or a real estate agent to manage their finances or make a financial study of their building or real estate projects.

The mere fact that real estate may have to be financed to be purchased is not sufficient to find similarity between real estate affairs and financial services. Even though financial services can be important for the acquisition of real estate, the consumers usually turn first to a real estate agent to search for a property, and then to a financial institution to finance the property.

Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service. It must therefore be concluded that the contested services of development of usage concepts for real estate with regard to financial matters, and of course those of building, namely the financial preparation of building projects, which do not even relate to real estate, are dissimilar to the opponent’s services in Class 36.

The abovementioned services also differ from the opponent’s management and administration of business projects in Class 35. Such services are provided by consultants, not banks, and may involve financial issues, but consultants do not provide financial services independently from the consulting service itself. The services at issue differ in their purposes, providers, distribution channels and natures. They are neither in competition nor complementary.

The opponent’s remaining services are no more similar to the contested services as regards any aspects of the comparison.

Contested services in Class 37

The contested building construction; building repair; installation services for buildings; building, namely the implementation of building projects; construction consultation; construction consultation; construction management; structural and civil engineering are dissimilar to the opponent’s services, as the contested services are, for example, involved in the physical construction/maintenance of a building or its equipment whereas the opponent’s services related to real estate in Class 36 are administrative. The services under comparison are offered by different companies and have different natures and purposes. In addition, these services are not complementary to or in competition with each other. These contested services are also no more similar to the opponent’s services in Classes 35 and 41.

Contested services in Class 42

The contested building, namely the technical preparation of building projects; development of usage concepts for real estate, with regard to technical matters; technical project studies are dissimilar to the opponent’s services. As explained above, the opponent’s services are more administrative, whereas these contested services are operational. The services under comparison are offered by different companies and have different purposes and natures. They are neither complementary nor in competition.

The remaining contested service, architecture, is intended, for example, to facilitate the construction of new buildings and restoration of existing edifices. In contrast, the services for which the earlier mark is protected refer, inter alia, to the administration of existing real estate property and to the ongoing use of buildings. They have nothing to do with building new complexes of properties or with the ability of an architect to design a house. These services differ in nature and purpose and do not have the same providers or distribution channels. Furthermore, they are not complementary or in competition with each other. Therefore, they are dissimilar.

The contested architecture is no more similar to the opponent’s services in Classes 36 and 41. Therefore, it is dissimilar to all the opponent’s services.

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 directed either at the general public (e.g. services related to real estate) or at business customers with specific professional knowledge (e.g. business consultancy services).

The level of attention of the relevant public is relatively high for the business services in Class 35 because of their impact on a business’s strategy or commercial success.

Consequently, as regards the services related to real estate , for example, it should be recalled that ‘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

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

Both trade marks are figurative signs containing verbal and figurative elements. In such cases, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The contested mark contains the word ‘AVILA’ on the right, in upper case letters. On the left, there is a figurative device consisting of an orange square with in its centre a grey triangle and a grey Christian cross superimposed on it. There are also three black crosses.

As correctly pointed out by the applicant, the word ‘AVILA’ could be perceived, by part of the public, as referring to the city of Avila in Spain. The Opposition Division also considers that part of the public might perceive Avila as a Portuguese surname. Moreover, part of the public will consider ‘AVILA’ meaningless. In any case, it is distinctive to an average degree for all the relevant services.

There is no dominant element in the contested sign.

The earlier mark depicts a green device in the top right corner. On the left, there is the verbal element ‘AVILA’, in a bold typeface. Below, the word ‘Coworking’ is written in green. Finally, at the bottom of the sign, the words ‘sharing space, growing business’ are written in much smaller letters. The element ‘Coworking’ will be understood by part of the relevant public, because it is settled case-law that a significant part of the Portuguese public has, at the very least, a basic knowledge of English (16/01/2014, T-528/11, Forever, EU:T:2014:10, § 68). The element ‘sharing space, growing business’ cannot be considered a basic English sentence; therefore, it is meaningless for the relevant public.

The element ‘Coworking’ describes any situation in which two or more people are working in the same place. Therefore, it will be perceived as indicating a characteristic of the services, namely that the company that provides the services in question operates in a co-working mode. To that extent, this element is non-distinctive.

The elements ‘AVILA’ and ‘Coworking’ as well as the green figurative element are co-dominant over the much smaller element ‘sharing space, growing business’.

Visually, the signs coincide in the essential element, ‘AVILA’. They differ in the additional, less significant, elements, namely their figurative elements, the non-distinctive verbal element ‘Coworking’ and the small ‘sharing space, growing business’ in the earlier trade mark. They also differ in the typefaces of the coinciding element, ‘AVILA’. The applicant argues that figurative devices can rule out visual similarity. Nevertheless, in the present case, given the distinctive character and the clear visual impact of the word element ‘AVILA’ in both signs, this is not the case.

Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. In the present case, the fact that ‘AVILA’ is the sole verbal element of the contested sign and the first verbal element of the earlier mark enhances the similarity.

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

Aurally, the pronunciation of the signs coincides in the sound of the word ‘AVILA’.

The applicant points out that the earlier trade mark is composed of 13 syllables and 41 letters while the contested sign has three syllables and only five letters. Nevertheless, according to settled case-law, the relevant consumer will tend to shorten long signs (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). Moreover, the General Court has already assessed that, only the dominant part of the mark would normally be pronounced when enunciated by consumers. (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). Finally, consumers do not tend to pronounce non-distinctive verbal elements (04/02/2013, T-159/11, Walichnowy Marko, EU:T:2013:56, § 44).

Therefore, given the above, elements such as ‘Coworking’ and even more ‘sharing space, growing business’, in the earlier mark, are likely not to be pronounced by the vast majority of the relevant public. Taking into account the fact that ‘AVILA’ is the only verbal element in the contested mark, the signs are identical for a part of the relevant public and in any case highly similar for the remaining public.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the element ‘AVILA’, identically present in both signs, could be perceived as referring to a Spanish city or to a surname, it is nevertheless meaningless for part of the public. Moreover, the element ‘sharing space, growing business’ is meaningless for the relevant public. The earlier mark also conveys the meaning of ‘Coworking’. In these circumstances, account is taken of the fact that non-distinctive elements have no influence in the conceptual comparison (see in that regard 04/02/2013, T-159/11, Walichnowy Marko, EU:T:2013:56, § 45).

The figurative element in the earlier mark is fanciful and does not convey a concept, while the figurative device in the contested sign evokes the concept of a cross.

For the part of the public for which ‘AVILA’ refers to the city or the surname, the signs are conceptually highly similar. For the other part of the public, the signs are not conceptually similar given that the earlier mark conveys no relevant meaning whereas the contested sign evokes a cross.

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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

In the present case, the conflicting signs are visually similar to an average degree, aurally at least highly similar, and conceptually highly similar, at least for a part of the relevant public at issue. The contested services are partly identical and partly dissimilar.

Moreover, 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). Even consumers who pay 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).

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.

It follows from the above that the contested trade mark must be rejected for the services found to be identical 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.

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

• Portuguese trade mark registration No 500 259 .

In addition to those for which Portuguese trade mark registration No 500 136 is registered, this mark is registered for the following services:

Class 35: Customer relationship management.

Class 36: Real estate management; estate management services relating to office premises.

Class 41: Coaching (training); arranging of workshops [training]; arranging and conducting of conferences, conventions, exhibitions, courses, dissertations, seminars and workshops [training].

The contested services found to be dissimilar to the opponent’s services are financial services in Class 36, construction, repair and installation services in Class 37, and technical preparation of building projects and architecture in Class 42. The services for which only Portuguese trade mark registration No 500 259 is registered are also dissimilar to these remaining services. They have different natures and purposes, they are neither complementary nor in competition, and they are not rendered by the same providers.

Therefore, no likelihood of confusion exists with respect to those services.

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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Catherine MEDINA

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.