EUROSIA | Decision 2495482
Date Published: Oct 1, 2017
OPPOSITION No B 2 495 482
Vip Vip Channel, S.L., Avda. Diagonal 433, 2º, 08008 Barcelona, Spain (opponent), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative)
a g a i n s t
Lu Rui & Co Private Limited, Equity Plaza, 20 Cecil Street 14-01, Singapore 049705, Singapore (holder), represented by Gevers, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative).
On 03/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 495 482 is partially upheld, namely for the following contested services:
Class 36: Financial affairs; real estate affairs; financial analysis; financing services; financial management; mutual funds; raising capital; fund investment; capital investment.
2. International registration No 1 176 915 is refused protection in respect of the European Union for all of 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 international registration designating the European Union No 1 176 915, namely against all the services in Classes 35 and 36. The opposition is based on Spanish trade mark registration No 3 521 218. 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: Insurance; financial operations; currency transactions; business real estate.
Class 41: Education; training; entertainment services; sports and cultural activities.
The contested services are the following:
Class 35: Advertising; business management; business administration; office functions; business management and organization consultancy; procurement services for others; business management assistance; projects (business management assistance); marketing studies; employment agencies; relocation services for businesses; outsourcing services (business assistance).
Class 36: Financial affairs; real estate affairs; financial analysis; financing services; financial management; mutual funds; raising capital; fund investment; capital investment.
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 services in this class cover a range of advertising and business-related activities. The opponent’s list of services covers financial, insurance and real estate activities (Class 36) and education, training, entertainment, sports and cultural activities (Class 41).
All the contested services in Class 35 are dissimilar to all the opponent’s services in Classes 36 and 41. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the services and their distribution channels are normally different.
The opponent argues that the contested services in Class 35 and the opponent’s services in Class 36 coincide in purpose of use because they are aimed at assistance and support in economic matters. Furthermore, the opponent claims that the services target the same consumers and are provided by the same providers.
The Opposition Division cannot agree with these assertions. The purpose of the opponent’s services in Class 36 is to provide financial services, insurance or agency services in the area of real estate. The purpose of the contested services in Class 35 is, for example, to promote goods/services, help with the running of a business or find employment or employees. It follows that the services do not coincide in purpose.
Furthermore, the opponent’s services are provided for example by banks, investment funds, insurance companies of real estate agencies. On the other hand, the contested services are provided for example by advertising agencies, business consultants or employment agencies. Consequently, the providers of the services compared are not usually the same.
The fact that the services can have the same consumers is not a reason for finding a similarity between them because a business company can hire a range of various independent services that are different from each other.
Contested services in Class 36
The contested financial affairs, financial analysis, financing services, financial management, mutual funds, raising capital, fund investment, capital investment overlap with the opponent’s financial operations. Therefore, they are identical.
The contested real estate affairs include, as a broader category, or overlap with, the opponent’s business real estate. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
- 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 both the public at large and business customers with specific professional knowledge or expertise.
The degree of attention will be high because the services are not purchased very often and the choice of these services often has important financial consequences.
- The signs
EUROASIA | EUROSIA |
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 elements ‘EUROASIA’ and ‘EUROSIA’ will be associated with ‘Eurasia’ which is a geographical term designating Europe and Asia together. Bearing in mind that the relevant services are financial and real estate services with a potentially continental or global reach, these elements are considered weak for all the relevant services.
Visually, the signs coincide in ‘EURO(*)SIA’ and differ only in the additional letter ‘-A-’ in the middle of the earlier mark.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘EURO(*)SIA’, present identically in both signs. The pronunciation differs in the sound of the additional letter ‛A’ in the middle of the earlier sign.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning, the signs are conceptually identical.
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 all of the services in question.
- Global assessment, other arguments and conclusion
The services are partially identical and partially dissimilar. The earlier trade mark’s degree of distinctiveness is low and the degree of attention of the relevant public will be high.
The overall impressions created by the marks are highly similar because they are visually and aurally highly similar and conceptually identical.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public. The low degree of distinctiveness of the earlier trade mark and the high degree of attention of the relevant public are outweighed by the identity of the services and the high degree of similarity between the marks. Therefore, the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.
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 identity/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.
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
Richard BIANCHI | Vít MAHELKA | Lucinda CARNEY |
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.