CB | Decision 2417056 - FINCAS CB S.L. v. Coldwell Banker LLC

Date Published: Sep 28, 2017

OPPOSITION No B 2 417 056

Fincas CB S.L., Gran Vía, 756, pral. 1ª, 08013 Barcelona, Spain (opponent), represented by Asociados Pymark S.L., Londres, 67, 2º, 3º, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Coldwell Banker LLC, 175 Park Avenue, Madison, New Jersey 07940, United States of America (applicant), represented by Lexdellmeier Intellectual Property Law Firm, Nymphenburger Str. 23, 80335 München, Germany (professional representative).

On 26/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 417 056 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 943 643, namely against some of the services in Class 35 and all the services in Class 36. During the proceedings, in a letter of 21/03/2015, the opponent limited the scope of the opposition by declaring that it only wished to proceed against (and obtain the refusal of) the services in Class 36. The opposition is based on Spanish trade mark registration No 2 459 675. 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.

1. The services

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

Class 36: Real estate services.

The contested services are the following:

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; real estate brokerage services; franchising services, namely, providing financial information and advice regarding the establishment and/or operation of real estate brokerage business.

Some of the contested services are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of real estate affairs, financial affairs and insurances.

It must be noted 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). The same logic is clearly applicable in relation to insurance, financial and monetary affairs, as all these services have a direct impact on the consumers’ financial position and health care.

Therefore, the degree of attention of the public is considered to be higher than average.

3. The signs

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).

Both signs are figurative marks and have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

The earlier mark consists of a rectangular grey label. In its top half appear the upper case letters ‘GB’, portrayed in white inside of a simple schematic representation of a dark grey house; the words ‘GRUPO BELVIS’ are portrayed to the right of the house, in standard bold black upper case letters. All these elements are underlined with a thick grey line. In the lower half of the sign appear the verbal elements ‘EN VENDA COM UN LLOGUER A PREU DE LLOGUER’, written over two lines, in standard black upper case lettering.

The contested sign consists of a black square, which contains a simple schematic representation of a white house. Inside of it, two characters appear intertwined; the first letter will be clearly perceived as an upper case ‘C’, but the perception of the second one is far from being obvious (it may be perceived as a numeral (3), a letter ‘B’ or simply a fanciful shape). The Opposition Division will consider only the interpretation which constitutes the best case scenario for the opponent and will analyse the contested sign as containing the upper case letters ‘CB’.

In both marks, the simple schematic representation of a house is a weak element, considering that the relevant services consist of or are closely related to real estate affairs. Therefore, this element alludes to their nature and is inherently weak. Furthermore, in both marks, the rectangular labels in which the remaining elements are portrayed are mere ornamental elements to which the public will not attribute trade mark significance; therefore, they are also weak elements in the marks. The same conclusion is applicable to the horizontal line portrayed in the earlier mark.

As regards the earlier mark and contrary to the claim put forward by the opponent (which claims that the letters are ‘CB’), the Opposition Division considers that letters portrayed inside the house are ‘GB’. Indeed, it is clear that there is a bow in the right bottom corner of the first letters ‘G’, which is obviously not present in its upper corner, thus suggesting clearly that this is a ‘G’ (and not a ‘C); furthermore, if there were any doubts in the minds of the consumers, they would be instantly clarified by the presence of the words ‘GRUPO BELVIS’ written in bold black letters precisely after the house – this creates the clear impression that the letters inside the house stand for a ‘GB’, which constitutes an abbreviation of ‘GRUPO BELVIS’ (which will be perceived as the name of the company providing the services). The elements ‘GB’ and ‘GRUPO BELVIS’ (as a whole) have no descriptive or allusive meaning for the relevant services and are of normal distinctiveness.

The elements in the lower half of the sign will be understood as some sort of additional or promotional information and, for that reason, have a lower than average distinctiveness as an indicator of commercial origin. Furthermore, the elements ‘FINCAS’ and ‘VENDA’ will be understood by the public, respectively, as a ‘type of real estate property’ and as ‘sale, the act of selling goods for money’. Considering that the relevant services are real estate services, these elements are non-distinctive as they simply indicate their nature, object and purpose. The element ‘LLOGUER’ could be perceived as a misspelling of ‘loguer’ (which means ‘rent’) by a part of the public and is also, consequently, rather weak for the services at issue. Nonetheless, it is stressed that the entire lower half of the sign is considered to have a lower than average distinctiveness as an indicator of commercial origin because, due to the position it has in the sign and the information it contains, it will be viewed as additional or promotional information and not as the part of the sign that indicates the origin of the services at issue.

It follows that the most distinctive elements in the earlier mark are the abbreviation ‘GB’ and ‘GRUPO BELVIS’.

The most distinctive element in the contested sign is the abbreviation ‘CB’, portrayed in its centre, which is meaningless for the relevant public. As explained above, the rectangular label and the representation of a house are elements of weak distinctiveness.

Visually, the signs coincide to the extent that they both contain a two letter abbreviation (ending with a ‘B’) portrayed inside a simple representation of a house. Nonetheless, they differ significantly in their length, overall structure and global layout. The shape of the houses and the stylisation of the letters portrayed within them is quite different; the letters in the earlier mark are separate, whereas in the contested sign they are intertwined. Furthermore, and more importantly, as explained above, the letters in the earlier sign are ‘GB’, whereas in the contested sign they are ‘CB’.

It is also highlighted that the figurative element of the house is weakly distinctive in both marks, as previously referred. The signs also differ in the normally distinctive element ‘GRUPO BELVIS’ of the earlier mark, which has no counterpart in the contested sign. They also differ in all the additional verbal elements in the earlier mark, albeit the fact that they constitute weak or non-distinctive elements within the sign.

Considering all the above, the signs are visually similar only to a very low degree.

Aurally, the contested sign will be pronounced as ‘CB’. As for the earlier mark, given its structure and layout, the public will most likely not pronounce the verbal elements portrayed in its lower part; therefore, it will be pronounced as ‘GB GRUPO BELVIS’.

Therefore, the aural difference between the marks is quite significant and evident. The earlier sign contains two additional words and starts with a different letter, ‘G’. Aurally, the coincidence in the second letter ‘B’ of the abbreviations ‘GB’ and ‘CB’ will go unnoticed by the public, as the pronunciation differs considerably in length, rhythm and structure.

Therefore, it is concluded that the signs are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs share the concepts conveyed by the schematic representations of a house containing a two letter abbreviation in it. They differ in all the remaining concepts contained in the earlier mark. Considering the weakness of the house figure in relation to the services, this semantic coincidence will not have a significant impact for the public, as this image is quite common in the marketplace.

Therefore, in view of all the above findings, it is concluded that the signs are conceptually similar only to a low degree.

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 some weak and non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested services are assumed to be identical to the opponent’s services and they are directed both at the public at large and at a professional public.

The degree of attention of the relevant public in relation to those services is higher than average.

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).

In the present case, the signs are aurally not similar. They are visually and conceptually similar only to a limited degree. However, this limited similarity is not sufficient to conclude that the signs are likely to lead to a likelihood of confusion or association.

This is because the contested sign is sufficiently removed from the earlier mark and any existing similarity is diluted in the overall impression created by the signs. The previously described differences in the layout, structure, length and stylisation of the marks create a considerable distance between them.

All these differences will not go unnoticed to the consumers, bearing in mind that in relation to the relevant services, their attention is higher than average.

Furthermore, it must also be highlighted that the limited visual and conceptual similarity between the marks results from an element which is weak in relation to the services at issue; as the public will attribute more trade mark significance to the elements ‘GB GRUPO BELVIS’ in the earlier mark and ‘CB’ in the contested sign, the differences existing between these elements are sufficient to exclude any likelihood of confusion, even in relation to identical services.

The opponent refers to previous decisions of the Office to support its arguments, namely to the decision in Opposition No 1 485 632 ‘ZIP’ vs ‘ZIP DELUXE’. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the opponent is not relevant to the present proceedings, because the respective signs are not comparable to the marks under examination. Indeed, the marks ‘ZIP’ vs ‘ZIP DELUXE’ have a common element, which performs an independent distinctive role within the signs, a circumstance which does not occur in the present case, where there is no coincidence in an entire verbal element, whereas the common figurative element is not identically portrayed and, more importantly, is a weak element in the marks.

Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Monika CISZEWSKA	Gueorgui IVANOV	Liliya YORDANOVA

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.