CARAM | Decision 2732850
Date Published: Sep 24, 2017
OPPOSITION No B 2 732 850
KanAm Management GmbH, Widenmayerstr. 3, 80538 München, Germany (opponent), represented by Von Boetticher Rechtanswalte Partnerschaftsgesellschaft mbB, Widenmayerstr. 6, 80538 München, Germany (professional representative)
a g a i n s t
C Asset Management Partners AB, Regeringsgatan 56, 111 56 Stockholm, Sweden (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm,
Sweden (professional representative).
On 22/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 732 850 is upheld for all the contested services.
2. European Union trade mark application No 15 500 291 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 15 500 291 (CARAM). The opposition is based on European Union trade mark registration No 1 242 700 (KanAm). 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 services
The services on which the opposition is based are the following:
Class 36: Financial affairs, real estate affairs.
The contested services are the following:
Class 36: Finance services; Monetary services; Financial advice; Financial planning services; Fund management; Capital management; Investment trusteeship and advisory services; Securities exchange services; Portfolio management; Banking.
The contested finance services, monetary services, financial advice, financial planning services, fund management, capital management, investment trusteeship and advisory services, securities exchange services, portfolio management, banking services are all services of a financial nature which are included in the broad category of the opponent’s financial affairs. Therefore, they are identical.
- 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 at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention is considered to be high for professionals with specific knowledge and also for the general public, since such services may have important financial consequences for their users.
- The signs
KanAm | CARAM |
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.
For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the English language-speaking part of the public.
The contested sign is made up of the verbal element ‘CARAM’. It has no meaning for the relevant public and is, therefore, distinctive.
The protection offered by the registration of a word mark applies to the verbal element stated in the application for registration. Therefore, it is irrelevant whether the mark, or any of its elements, is depicted in lower or upper case letters.The earlier mark ‘KanAm’ will be understood as an invented term by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.
There are no dominant elements.
Visually, the signs coincide in the letters ‘_ a _ a m’. However, they differ in their respective first letter being ‘c’ in the case of the contested sign and ‘k’ in respect of the earlier sign, and in their respective middle letter being ‘r’ in the contested sign and ‘n’ in the earlier sign.
The applicant argues that it has to be taken into account that the first letters of the conflicting signs are different, and that consumers tend to focus on the first element of a sign when being confronted with a trade mark, since the public reads from left to right. Therefore, the signs should be considered visually similar to a low degree.
However, the Opposition Division notes that every case has to be assessed on its own merits, and that the degree of similarity of the signs cannot be determined on the basis of their first letters only. In the present case, each mark consists of one word that does not convey any meaning to the English-speaking public. Three out of five letters are in the same order, which leads to the same vowel sequence and a similar overall impression of the signs.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ca’ and ‛ka’ present in the beginning of both signs which will be pronounced identically by the relevant public as a hard consonant followed by an unstressed ‘a’. The applicant submits that the ‛c’ of the contested mark could also be pronounced as a sibilant sound, but this is not the case in English-speaking countries where a ‛c’ followed by a broad vowel has a hard sound.The signs also coincide in the identical sound of their final two letters ‘am’.The same rhythm and intonation of enunciation is further shared. The pronunciation differs solely in the respective middle letter, being ‛r’ of the contested sign and ‛n’ of the earlier mark. Therefore, the signs are highly similar.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The earlier mark will be understood as an invented term by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant financial services, the distinctiveness of the earlier mark must be seen as normal.
- 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).
Further, the 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).. Therefore, 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).
The services are identical.
Considering all the above and due to the average visual similarity, the high aural similarity and the absence of any dominant or non-distinctive elements in the signs, there is a likelihood of confusion on the part of the English-speaking part of the public. Moreover, the signs do not convey any meaning to the English-speaking part of the public that could consumers distinguish between them. 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 1 242 700. It follows that the contested trade mark must be rejected for all the contested 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.
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
Plamen IVANOV | Keeva DOHERTY | Natascha GALPERIN |
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.