EasyShop | Decision 2659061
Date Published: Sep 28, 2017
OPPOSITION No B 2 659 061
S.C. Anchor Grup S.A., Bd. Timișoara nr 26Z, Clădirea Anchor Plaza, etaj 11, corp B, biroul 11B01 și etaj 12, corp A, biroul 12A01, sector 6, 061331 Bucharest, Romania (opponent), represented by Patentmark s.r.l. Bucuresti, str. Dr. N. Turnescu, nr. 2, sector 5, 050467 Bucharest, Romania (professional representative)
a g a i n s t
Korea Information & Communications Co. Ltd., 7th Fl., Korea Chamber of Commerce and Industry, 39, Sejong-daero, Jung-gu, Seoul, Republic of Korea (holder), represented by Schwarz & Partner Patentanwälte OG, Wipplingerstrasse 30, Wien, Austria (professional representative).
On 11/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 659 061 is upheld for all the contested services, namely:
Class 35: Book-keeping; certified public accounting services; licensed tax accounting services; tax auditing; tax preparation; drawing up of statements of accounts; auditing; accounting; economic forecasting; procurement services for others; providing information on jobs and side-jobs; relocation services for businesses; marketing services; marketing studies; photocopying services; payroll preparation; telephone answering for unavailable subscribers; secretarial services; office machines and equipment rental; rental of photocopying machines; demonstration of goods; shorthand; shop window dressing; arranging newspaper subscriptions for others; business management of performing artists; word processing; rental of vending machines; transcription; employment agencies; personnel recruitment; psychological testing for the selection of personnel; typing.
2. International registration No 1 247 380 is refused protection in respect of the European Union for all of the contested services. It may proceed for the remaining services.
3. The holder bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the services of international registration No 1 247 380 designating the European Union, namely against all the services in Class 35. The opposition is based on Romanian trade mark registration No 114 906. 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 35: Advertising; business management; business administration; office functions.
The contested services are the following:
Class 35: Book-keeping; certified public accounting services; licensed tax accounting services; tax auditing; tax preparation; drawing up of statements of accounts; auditing; accounting; economic forecasting; procurement services for others; providing information on jobs and side-jobs; relocation services for businesses; marketing services; marketing studies; photocopying services; payroll preparation; telephone answering for unavailable subscribers; secretarial services; office machines and equipment rental; rental of photocopying machines; demonstration of goods; shorthand; shop window dressing; arranging newspaper subscriptions for others; business management of performing artists; word processing; rental of vending machines; transcription; employment agencies; personnel recruitment; psychological testing for the selection of personnel; typing.
Earlier Romanian trade mark registration No 114 906 is registered for the entire class heading of Class 35 of the Nice Classification. It was filed on 14/01/2011. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9th edition.
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 book-keeping; tax preparation; drawing up of statements of accounts; auditing; accounting; economic forecasting; procurement services for others; relocation services for businesses; marketing studies; photocopying services; payroll preparation; telephone answering for unavailable subscribers; secretarial services; office machines and equipment rental; rental of photocopying machines; demonstration of goods; shorthand; shop window dressing; arranging newspaper subscriptions for others; business management of performing artists; word processing; rental of vending machines; transcription; employment agencies; personnel recruitment; psychological testing for the selection of personnel; typing are identically contained in both lists (including synonyms), since the scope of protection of the earlier mark includes all the terms in the alphabetical list in Class 35 of the 9th edition of the Nice Classification. Therefore, they are identical.
The contested certified public accounting services; licensed tax accounting services; tax auditing overlap with the opponent’s business management in Class 35. It follows that these services are identical.
The contested marketing services include as a broader category the opponent’s advertising in Class 35. It follows that these services are identical.
The contested providing information on jobs and side-jobs overlaps with the opponent’s employment agencies, included in the alphabetical list of the earlier trade mark in Class 35. It follows that these services 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 mainly aimed at supporting or helping other businesses to carry out or improve their business. They are, therefore, in principle, directed at a professional public with specific professional knowledge or expertise (e.g. business management and advertising), although some of them might also be directed at the public at large (e.g. photocopying services and providing information on jobs and side-jobs). Due to the degree of sophistication and cost of some of the services, their infrequent purchase and the serious and long-term impact they might have on the purchaser’s business, they are likely to be the subject of a relatively careful purchasing decision; therefore, the degree of attention will vary from average to high.
- The signs
| |
Earlier trade mark | Contested sign |
The relevant territory is Romania.
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 sign is a figurative mark composed of the words ‘ease of shopping’ depicted against a blue circle. The words ‘ease’ and ‘shopping’ are in standard white lower case letters, whereas the word ‘of’ is depicted within a black circle in blue (the same blue as the background) lower case letters. The contested sign is a figurative mark composed of the words ‘EasyShop’ joined together in a standard black typeface.
None of the verbal elements in the signs in dispute has a meaning per se in Romanian. However, it cannot be excluded that part of the relevant public will associate them with a semantic content, as explained below.
The elements ‘EASE OF’ and ‘EASY’, contained in the earlier and contested marks, respectively, will be associated, by the professional public, with the meaning ‘not requiring much effort; simple’. For this part of the public, these elements are laudatory, as they allude to the quality of the services offered. Therefore, they are considered non-distinctive for the services in question. By contrast, for the public at large, these words have no meaning and are, therefore, distinctive.
The element ‘SHOPPING’, included in the earlier mark, refers to ‘the act or an instance of making purchases’. The element ‘SHOP’, in the contested mark, refers to ‘building or part of a building where things are sold; act or instance of shopping’ (information extracted from Collins English Dictionary online on 03/05/2017 at https://www.collinsdictionary.com/dictionary/english/shop). As basic English words, they may be understood by the professional public, and also by the majority of the public at large. Taking this into account, these words are non-distinctive for some of the relevant services (e.g. shop window dressing) for those who understand their meaning. For the remaining goods and services, these elements are of average distinctiveness. On the other hand, for a small part of the public at large, these words have no meaning and are therefore distinctive.
The earlier sign is composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal elements are more distinctive than the figurative elements.
The contested sign has no elements that could be considered clearly more distinctive than other elements.
Visually, the signs coincide inasmuch as they have the sequences of letters ‘EAS*’ and ‘SHOP’ in common. However, they differ in the fourth letter of their first verbal elements (‘E’ versus ‘Y’) and in the sequence of letters ‘PING’, included at the end of the second coinciding word of the earlier sign. Moreover, they also differ in the word ‘OF’ and in the figurative elements (the circles) of the earlier sign, which have no counterparts in the contested sign.
Furthermore, the earlier sign is written in white lower case letters arranged over three lines, whereas the contested sign is written in black letters on just one line. Although the two words in the contested sign are joined together, the sign will be visually broken down into two words, as they start with upper case letters and are recognisable and familiar words.
As regards the presence of a figurative element in the earlier sign, 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; 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). This principle is fully applicable to the present case, in which the relevant public will clearly read and pronounce the verbal elements ‘EASE OF SHOPPING’ in the earlier sign and will readily use them to refer to the mark.
In the light of the above, even where ‘ease of’ and ‘easy’ are deemed to be non-distinctive elements (i.e. for the professional public), and also where ‘shop’ and ‘shopping’ are non-distinctive for services such as shop window dressing (i.e. for the professional public and the majority of the public at large), the signs are deemed to be visually similar at least to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛EAS*’ and ‘SHOP’, present identically in both signs. The pronunciation differs in the additional sound of the letter ‘Y’ (pronounced as /i/) at the end of the contested sign versus the letter ‛E’ present in the earlier sign (a silent letter). The signs also differ in the sound of the word ‘OF’ and in the sound of the letters ‘ING’ (pronounced as /ɪŋ/) of the contested sign, which have no counterparts in the contested mark.
As regards the rhythm of the signs, ‘ease of shopping’ would be pronounced as a four-syllable sequence, namely ease/of/sho/pping (/i:z/ /əv/ /ʃɒ-pɪŋ/). On the other hand, ‘EasyShop’ would be pronounced as a three-syllable sequence, namely ea/sy/shop (/i:z-i/ /ʃɒp/).
Therefore, and once again taking into account the different possible scenarios and the distinctiveness of the elements, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.
The professional public will understand the earlier mark, ‘ease of shopping’, as referring to the activity of buying goods from shops in an easy way. The contested mark ‘EasyShop’ would be interpreted as referring to a place where one can buy things without difficulty or effort. To that extent, the signs are conceptually similar to a high degree. However, it should be noted that this conclusion is partly due to the presence of non-distinctive elements in the signs (‘ease of’/‘easy’ for all the services and ‘shopping’/‘shop’ for some of the services), and their impact is limited.
The great majority of the public at large will not associate the words ‘ease of’/‘easy’ with any meaning. However, they will associate the words ‘shop’ and ‘shopping’ with similar meanings, namely a store where you can buy things and the activity of buying things. To that extent, the signs are conceptually similar to a high degree. However, for certain services, the elements ‘shopping’/‘shop’ are non-distinctive and their impact is limited.
As explained above, a small part of the public at large will not associate the signs with any meaning. For this part of the public, the marks do not convey any concept. Therefore, they 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.
- 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for some of the services in question, namely shop window dressing, demonstration of goods and rental of vending machines (included in the alphabetical list in Class 35). The mark has a normal degree of distinctiveness for the remaining services, in relation to which it has no meaning from the perspective of the public in the relevant territory.
- Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).
The goods covered by the trade marks are identical and target business customers with specific professional knowledge or expertise, and also the public at large in the case of some of the services. The degree of attention may vary from average to high.
The signs are visually and aurally similar (to a low and an average degree, respectively). Conceptually, depending on the knowledge of English of the relevant public, the signs are either highly similar, as they evoke very similar concepts, or not similar, for the part of the public for which the words are meaningless. They coincide in the letters ‘EAS(*) (**) SHOP(****)’, which, in addition to being included in very similar words with similar semantic content, constitute the beginning and main parts of these words.
As mentioned above in section c) of this decision, account should be taken of the different scenarios that will result depending on the relevant public and its understanding of English.
Firstly, the professional public will understand the meaning of all the elements of the signs. The coinciding elements ‘ease of’/‘easy’ are laudatory and thus non-distinctive for the relevant goods. The coinciding elements ‘shopping’/‘shop’ are distinctive for the majority of the services in question, with the exception of shop window dressing, demonstration of goods and rental of vending machines in Class 35. Consequently, although the similarities between the non-distinctive elements ‘ease of’/‘easy’ have less weight, the similarities between the distinctive elements and the overall impressions conveyed by the marks are sufficient to lead to a finding of similarity.
Secondly, as explained above, the public at large will not associate the words ‘ease of’/‘easy’ with any meaning, whereas the majority of consumers will understand the meaning of ‘shopping’/‘shop’. In this scenario, both coinciding elements are distinctive (except for shop window dressing, demonstration services and rental of vending machines) and, a fortiori, the similarities between the signs are even greater, since the similarities between the elements ‘ease of’/‘easy’ have more impact on the overall impression of the marks. Finally, the same applies to the small part of the public at large that does not associate the words ‘shopping’/‘shop’ with any meaning, inasmuch as the visual and aural similarities between the signs have more weight, even in relation to the services for which those elements are deemed to be weak.
As regards the figurative elements, account must be taken of the fact that when signs consist of both verbal and figurative components, generally, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, since the public will more easily refer to the signs in question by their verbal elements than by describing their figurative elements.
Therefore, the Opposition Division considers that, despite the differing elements (the endings of the coinciding words plus the word ‘OF’, the numbers of syllables and the figurative elements), and even taking into account the low degree of distinctiveness of the earlier mark in relation to some of the services in question (i.e. shop window dressing, demonstration of goods and rental of vending machines), these differences are not sufficient to outweigh the similarities between the signs in any of the possible scenarios examined, and therefore a likelihood of confusion cannot be ruled out.
In addition, it should be borne in mind that, according to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect picture of them. In this respect, it should also be noted that consumers generally tend to remember similarities rather than dissimilarities between signs. 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).
Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 114 906. 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
Andrea VALISA | José Antonio GARRIDO OTAOLA | Michele M. BENEDETTI-ALOISI |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.