farwell | Decision 2703026
Date Published: Sep 28, 2017
OPPOSITION No B 2 703 026
Break a new ground AB, Grubbensringen 19, 112 69 Stockholm, Sweden (opponent), represented by Wistrand Advokatbyrå, Box 7543, 103 93 Stockholm, Sweden (professional representative)
a g a i n s t
Mansutti S.p.A., Via Alberico Albricci 8, 20122 Milano, Italy (applicant), represented by Perani & Partners SPA, Piazza San Babila 5, 20122 Milano, Italy (professional representative).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 703 026 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 953 061 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 953 061. The opposition is based on, inter alia, European Union trade mark registration No 14 016 414. 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 European Union trade mark registration No 14 016 414.
- The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 9: Computer software, in particular but not exclusively in relation to the transport and delivery industry; Computer platforms with computer hardware/built-in programs/computer software relating to the transport and delivery industry, accessible from a global computer network; Communications servers/computer programs for use in relation to the transport and delivery industry, namely servers and programs containing functions for providing current shipping status, packaging data, choice of shipping services and costs, arrival data and delivery notification of the consignment, for providing of automatic downloading of files relating to information for tracking of dispatched goods, including current shipping status, packaging data, arrival data and delivery notification of the consignment, preparation and printing of shipping labels, documents and invoices, for providing of electronic shipping labels, shipping documents and invoices, for providing information about accessible transport and shipping services and for providing proof of delivery documentation, including the digitized signature of the recipient of the consignment, and for providing receipts, transfer and processing of information identifying the customer relating to the shipping account.
Class 36: Customs clearance; Insurance; Shipping insurance; Insurance brokerage, in particular transport insurance brokerage; Electronic payment services; Financial affairs; Monetary affairs; Real estate affairs; Insurance; Financial affairs; Monetary affairs; Credit services; Customs brokerage; Customs clearance; Invoicing in relation to payment of customs duties and taxes; Management services relating to transactions in real property; Real estate brokers; Estate agency; Commercial loans; Customs closure including bonded storage with re-insurance and insurance guarantees; Temporary import bonded storage documents; Processing of visas and tariff quotas; Duty banknotes; Duty drawback; Electronic payment services; Factoring; Administration of warranty claims; Re-insurance and insurance underwriting; Risk management services.
The contested goods and services are the following:
Class 9: Hardware and software for insurance platforms; Software for issuing insurance policies; Operating software for issuing policies; Computer software [programmes]; Software platforms for selling insurance policies; Software platforms for managing insurance schemes; Software platforms for quoting and issuing insurance contracts and insurance policies, All of the aforesaid goods being other than computer software destined for use in the fields of shipping, transport and logistics.
Class 36: Insurance; Financial affairs; Monetary affairs, Namely evaluation, consultancy and supply of flexible incentives, Financial assessments, Consultancy in relation to indemnity schemes for employees, Administration of employee welfare benefit plans, Consultancy in relation to loyalty rewards for employees, identifying funding sources; Real estate affairs; Arranging of insurance; Insurance underwriting, Namely integrated consultancy-based management for diagnostics for insurance cover concerning benefits for employees, Providing online information about insurance from a computer database or the Internet; Guarantee assurance underwriting; Insurance consultancy; Brokerage advisory services relating to insurance; Provision of information relating to insurance and financial services; Consultancy and brokerage relating to insurance; Provision of insurance policies, All of the aforesaid services being other than services relating to the fields of shipping, transport and logistics.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘in particular’, used in the opponent’s list of goods and services in Classes 9 and 36, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the opponent’s list of goods in Class 9 and the applicant’s list of services in Class 36 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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 goods in Class 9
The contested software for insurance platforms; software for issuing insurance policies; operating software for issuing policies; computer software [programmes]; software platforms for selling insurance policies; software platforms for managing insurance schemes; software platforms for quoting and issuing insurance contracts and insurance policies; all of the aforesaid goods being other than computer software destined for use in the fields of shipping, transport and logistics are included or overlap with the broad category of the opponent’s computer software, in particular but not exclusively in relation to the transport and delivery industry. Therefore, they are identical.
The contested hardware for insurance platforms; all of the aforesaid goods being other than computer software destined for use in the fields of shipping, transport and logistics is similar to the opponent’s computer software, in particular but not exclusively in relation to the transport and delivery industry. Hardware devices are the physical components of computers. The hardware is designed to work hand in hand with computer programs, referred to as software. Computer hardware companies also manufacture software, share the same distribution channels and target the professional public (e.g. for use in banking and finance, education, medicine, business and entertainment/recreation) and/or the general public. Moreover, these goods are complementary.
The applicant in its observations invokes a previous decision by the Office (08/07/2005, B 616 393), however, the reasoning that led to it will not apply in the case at hand. In the decision invoked, both, the applicant’s and the opponent’s goods in Class 9 were limited by using the terms ‘namely’ and ‘for’ to specific fields, which did not coincide (‘computer software, namely…’ and ‘computer software for…’). As explained above the term ‘in particular’, used in the opponent’s list of goods in Class 9 does not limit the list of these specific goods. Consequently, some of the opponent’s goods (i.e. computer software, in particular but not exclusively in relation to the transport and delivery industry) remain broad categories that include some of the applicant’s more specific goods.
Contested services in Class 36
Insurance, financial affairs, real estate affairs, brokerage relating to insurance are identically contained in both lists of services despite a slight difference in wording (brokerage relating to insurance appears as insurance brokerage in the opponent’s list of services).
The contested arranging of insurance; insurance underwriting, namely integrated consultancy-based management for diagnostics for insurance cover concerning benefits for employees, providing online information about insurance from a computer database or the Internet; guarantee assurance underwriting; insurance consultancy; provision of information relating to insurance; consultancy relating to insurance and provision of insurance policies are included in the broad category of the opponent’s insurance. Therefore, they are identical.
The contested monetary affairs, namely evaluation, consultancy and supply of flexible incentives are included in the broad category of the opponent’s monetary affairs. Therefore, they are identical.
The contested financial assessments, consultancy in relation to indemnity schemes for employees, administration of employee welfare benefit plans, consultancy in relation to loyalty rewards for employees, identifying funding sources; provision of information relating to financial services are included in the broad category of the opponent’s financial affairs. Therefore, they are identical.
The contested brokerage advisory services relating to insurance are included in the broad category of the opponent’s insurance brokerage. Therefore, they are identical.
It is to be noted that the limitation of applicant’s list of services in Class 36 stating ‘all of the aforesaid services being other than services relating to the fields of shipping, transport and logistics’ does not influence the above outcome, since it does not change the nature of the services, which despite their specification still remain insurance, financial and real estate services clearly included in the broader categories of 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 goods and services found to be identical or similar are directed at the public at large and the business customers with specific professional knowledge or expertise.
The degree of attention of the public will vary from average (for example in case of ordinary products, such as computer software in Class 9) to high (for example in case of specialised goods and services which may have important financial consequences for their users such as financial affairs or real estate affairs).
- The signs
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Earlier trade mark | Contested sign |
The relevant territory is 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 non-English speaking part of the public, such as the Spanish-, Romanian- and Hungarian-speaking public, for which neither of the signs have meaning.
The earlier mark is a figurative mark made up of a single word ‘Farewell’, written in an ordinary font and stylised in a way that the letters are dotted. The earlier mark has no meaning for the relevant public and is, therefore, distinctive.
The contested sign is a figurative sign composed of two elements. A cross-like representation is depicted at the beginning of the sign, followed by the verbal element ‘farwell’ written in fairly standard characters. Neither of the elements have a meaning for the relevant public, therefore, they are distinctive. The sign has no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the strings of letters ‘FAR’ and ‘WELL’, which compose the entire contested sign. They differ in the additional letter ‘E’ in the earlier mark, the stylisation of the verbal elements and the additional figurative element in the contested sign. However 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). Account is also taken of the fact that the verbal element of the contested sign is entirely incorporated in the earlier mark, although with a different stylisation which, nevertheless, does not overshadow the fairly standard shape of the letters in both signs.
Therefore, contrary to the applicant’s observations, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs correspond in seven out of eight sounds of letters, composing the signs. The additional vowel ‘E’ in the earlier mark is placed in the middle of the sign and, consequently, this aural difference between the signs may even go unnoticed by the public.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the relevant Spanish-, Romanian- and Hungarian-speaking 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.
- 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 goods and 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.
- Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
In the present case all services are identical and the goods are identical or similar to an average degree. It goes hand in hand with the average visual similarity and high aural similarity of the signs which have no conceptual meaning for the relevant Spanish-, Romanian- and Hungarian-speaking public. The attention of the relevant public varies, depending on the relevant goods and services, between average and high, and the degree of distinctiveness of the earlier mark is normal.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, and 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).
Considering all the above, there is a likelihood of confusion on the part of the Spanish-, Romanian- and Hungarian-speaking public. 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 14 016 414. It follows that the contested trade mark must be rejected for all the contested goods and services.
As the earlier right No 14 016 414 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Zuzanna STOJKOWICZ | José Antonio GARRIDO OTAOLA | Ioana MOISESCU |
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.