FlexiPlan | Decision 2720046 - AXA VIDA, S.A. DE SEGUROS Y REASEGUROS v. LeasePlan Corporation N.V.
Date Published: Oct 1, 2017
OPPOSITION No B 2 720 046
AXA Vida, S.A. de Seguros y Reaseguros, Camino Fuente de la Mora, Nº 1, 28050 Madrid, Spain, (opponent), represented by Clarke, Modet y Cia. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
LeasePlan Corporation N.V., P.J. Oudweg 41, 1314 CJ Almere-Stad, The Netherlands, (applicant), represented by Brinkhof, De Lairessestraat 111-115, 1075 Amsterdam, The Netherlands (professional representative).
On 06/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 720 046 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 services of European Union trade mark application No 15 057 912, namely against the services in Class 36. The opposition is based on its earlier Spanish trade mark registration No 1 109 579.
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 agencies services.
The contested services are the following:
Class 36: Financial services in the field of leasing, car sharing and rental of vehicles; issuance of credit cards and other electronic means of payment for the purchase of fuels, lubricants etcetera, or for the payment of vehicle maintenance and repair; vehicle insurance.
The contested vehicle insurance services are included in the broad category of the opponent’s insurance agencies services. Therefore, they are identical.
The contested financial services in the field of leasing, car sharing and rental of vehicles are services used to finance the use or rental of cars. Services of this nature in the car sector may also offer insurance services. Therefore, whilst they may have different purposes, they may have the same end user, distribution channels and there is a limited complementary relationship insofar that if you lease or rent a car then you will also require insurance. They are similar to a low degree.
The contested issuance of credit cards and other electronic means of payment for the purchase of fuels, lubricants etcetera, or for the payment of vehicle maintenance and repair concern a variety of services from the design and promotion of such cards to getting people to sign up for them as well as managing the account including any liabilities surrounding debt payment as well as the capital required to fund loans to cardholders, finance payment terminals and route payments between entities. Since the earlier insurance services are subject to rules similar to those of a financial institution, at least in relation to licensing, supervision and solvency the respective services may well derive from the same undertaking and share the same distribution channels. Therefore, they are considered to be similar to a low degree.
- 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 in question are in the financial and insurance sectors. These services target the general public, who is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010 1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T 220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C 524/12 P, F@ir Credit, EU:C:2013:874, dismissed).
- The signs
FLEXI PLUS | |
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 earlier trade mark is a word mark, ‘FLEXI PLUS’. For the relevant Spanish public the element ‘FLEXI’ will bring to mind the concept of ‘flexible’ and ‘flexibility’ referring to the ability to be modified or altered. Since the subject services are insurance and financial, being flexible can be a desirable quality of such services. Therefore, the degree of distinctiveness of that element in the perception of the relevant public is considered to be low. The element ‘PLUS’ in the earlier trade mark is an understandable Spanish word and will be perceived as being laudatory or augmentative in nature, to the extent that, in general, it indicates increased quality or quantity (26/11/2007, R 435/2007-1, PLUS; 16/11/2015, R 2187/2013-2, FILM PLUS / CINE+ et al., § 50, 07/07/2016, R 1685/2015-1, MobiPlus / Plus, § 41). Therefore, the distinctiveness of this element is also considered to be low.
The contested sign is a figurative mark consisting of the conjoined words ‘FlexiPlan’ underneath a circle which contains a curved car with the depiction of a finger placed at the front and back of the car. All of the contested sign is orange.
Whilst the words are conjoined both words would be recognised and understood separately. The meaning of the word ‘Flexi’ has been outlined above. With regard to ‘Plan”, this would be understood in relation to insurance services as being the details agreed between the insurer and customer. The combination of these elements describes that they offer flexible plans are considered to be low in distinctive character. With respect to the device, the depiction of a car does allude to the goods which the insurance may apply though given the stylisation and prominence of this element it is considered to be the most distinctive.
Visually, the signs coincide in ‘FLEXI’ which is considered to be a weak element. However, they differ in that the earlier mark contains ‘PLUS’ and the contested sign includes ‘PLAN’ and a device. Taking into account the coincidences and the dissimilarities, the marks are considered to be visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the syllables of the initial word of each sign ‘FLEXI’, present identically in both signs. The pronunciation differs in the syllable ‘PLUS’ of the earlier sign, which has no counterpart(s) in the contested mark which does include the syllable ‘PLAN’. The shared element is considered to be low in distinctive character, though it is the first element. Therefore, the marks are considered to be aurally similar to a low degree.
Conceptually, the signs coincide in the lowly distinctive element ‘FLEXI’ but differ in respect of the words (also considered to be low in distinctive character) ‘PLUS’ and ‘PLAN’. Therefore, they are conceptually similar to a low degree.
- 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, namely Class 36 insurance services.
- Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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).
The respective signs coincide with the shared element ‘FLEXI’. However, this element is considered to be weak in distinctive character for the services in conflict. The general low level of similarity is not sufficient to be offset by those services which are identical, particularly since the earlier mark has a low degree of inherent distinctive character and the relevant public’s level of attention is higher than average. Clearly where the services were considered to be similar to a low degree, the opponent is not in a stronger position.
Considering all the above, there is no likelihood of confusion on the part of the relevant public. Therefore, the opposition must be rejected.
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
Ioana MOISESCU | Mark KING | Zuzanna STOJKOWICZ |
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.