MUNDILAB | Decision 2776303
Date Published: Sep 22, 2017
OPPOSITION No B 2 776 303
Amundi Asset Management, 90, Boulevard Pasteur, 75015 Paris, France (opponent), represented by Legi-Mark, 102, rue du Faubourg Saint Honoré, 75008 Paris, France (professional representative)
a g a i n s t
Mundi Ventures, S.L., Calle de la Dalia, 263, 28109 Alcobendas – Madrid, Spain (applicant), represented by Cuatrecasas Gonçalves Pereira Propiedad Industrial, S.R.L., C/ Almagro, 9, 28010 Madrid, Spain (professional representative).
On 18/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 776 303 is upheld for all the contested services, namely:
Class 36: Financial consulting.
2. European Union trade mark application No 15 522 337 is rejected for all the contested services. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the services of European Union trade mark application No 15 522 337 , namely against the services in Class 36. The opposition is based on, inter alia, international trade mark registration No 1 024 160 designating the European Union, namely for the word mark ‘AMUNDI’. 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 international trade mark registration No 1 024 160 designating the European Union.
- The services
The services on which the opposition is based are the following:
Class 36: Financial affairs, banking operations, monetary affairs; financial consultancy, financial information, analyses and evaluations, financing services; raising and investing capital, savings; asset management companies; management of personal or real estate holdings, fortunes, financial portfolios, financial products, open-end investment companies, mutual funds, real estate investment trusts, collective investment schemes, collective investment schemes (transferable securities), collective real-estate investment schemes; real estate affairs.
The contested services are the following:
Class 36: Financial consulting.
The contested financial consulting is contained in the list of the opponent’s services, albeit using a slightly different wording, namely financial consultancy. These services are considered 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 directed at business customers, most likely professionals with expertise in the financial sector. Nevertheless, as these services concern consultancy on financial matters, it cannot be excluded that they also target members of the general public seeking professional advice in this area.
In any event, the degree of attention will be high, since the services concerned may involve substantial investments. Such services are specialised services that may have important financial consequences for their users; consequently, the consumers’ degree of attention would be rather high when choosing them (03/02/2011, R 0719/2010-1, f@ir Credit, § 15; appeal, 19/09/2012, T-220/11, dismissed; appeal, 14/11/2013, C-524/12 P, dismissed).
- The signs
AMUNDI | |
Earlier trade mark | Contested sign |
The relevant territory is the 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division finds it appropriate to focus the assessment of the signs on the English-speaking part of the public.
The earlier mark is a word mark consisting of the single word ‘AMUNDI’ and the contested sign is a figurative mark consisting of the verbal element ‘MundiLab’ written in standard title case letters, with the first part, ‘Mundi’, in bold. The verbal element is preceded by a fanciful red stylised polyhedron.
The earlier mark, ‘AMUNDI’, has no meaning for the relevant English-speaking part of the public; consequently, it has no element that could be considered clearly more distinctive than any other.
The element ‘Lab’ of the contested sign, due to its different graphical depiction, will be perceived as a separate verbal element, namely as the short form for ‘laboratory’ (information extracted from Collins Dictionary on 05/09/2017 at https://www.collinsdictionary.com/dictionary/english/lab). Furthermore, the short word ‘lab’ is nowadays often used in the sense of an ‘innovation lab’, a collaborative open space for the purpose of creating, elaborating and prototyping radical solutions to pre-identified systemic problems. Although this term is usually encountered in relation to innovation and entrepreneurship, it cannot be excluded that it will evoke such associations also in the financial sector in relation to the contested consultancy services. To that extent, contrary to what the applicant argues, the relevant consumer is likely to see the word ‘lab’ as slightly weaker than average, since it may convey the concept of a space or an open community where or by which the contested services are provided or delivered. On the other hand, the other verbal element, ‘Mundi’, has no meaning for the relevant public and is considered distinctive in relation to the services.
In addition, the figurative element in the contested sign may be perceived as a particular geometrical figure, namely a polyhedron, which, due to its fanciful depiction, is considered to have a normal degree of distinctiveness in relation to the services.
None of the marks has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letter sequence ‘MUNDI’, which constitutes almost the entire earlier mark and the first part of the contested sign. They differ in the first letter, ‘A’, of the earlier mark, preceding the abovementioned coinciding element, and in the verbal element ‘Lab’, which follows it in the contested sign. Furthermore, they differ in the stylisation of the contested sign, as well as in its additional figurative element. 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). Therefore, taking into account the limited distinctiveness of the additional verbal element of the contested sign, ‘LAB’, the signs are considered visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘*MUNDI*’, present identically in both signs. The pronunciation differs in the sound of the first letter, ‘A’, of the earlier sign, as well in the additional verbal element, ‘LAB’, of the contested sign, which has no counterpart in the earlier mark. Therefore, bearing in mind the degree of distinctiveness of the additional word, as noted above, the signs are aurally similar to an average degree.
Conceptually, although the public in the relevant territory will perceive the meaning of the elements of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are conceptually not 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. 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.
- Global assessment, other arguments and conclusion
The services are identical and the degree of attention is high, as financial consultancy may involve decisions about substantial capital investments.
The signs are visually and aurally similar to an average degree to the extent that the first, more distinctive, verbal element of the contested sign, namely ‘MUNDI’, is entirely reproduced in the earlier mark (with the addition of only one letter). As explained above, the relevant public will be aware of the meaning of the additional word, ‘LAB’, in the contested sign and will most probably pay less attention to it than to the other, more distinctive, verbal element, ‘MUNDI’. Therefore, the most significant difference between the marks for the public will be the presence of the additional vowel, ‘A’, at the beginning of the earlier sign.
Nevertheless, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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). Consequently, bearing in mind the limited distinctive character of the word ‘Lab’ and the impact of the figurative element in the contested sign, the difference in one letter between the distinctive elements, ‘AMUNDI’ and ‘MUNDI’ (despite the prominent position of that letter in the earlier mark), is not considered sufficient to counteract the overall visual and aural similarities between the signs.
In addition, 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). In the present case, the identity between the conflicting services offsets the differences between the signs, including the most significant difference, which is created by the additional letter, ‘A’, of the earlier mark, as well as the presence of the weak element ‘Lab’ and of the figurative element in the contested sign. As stated above, the impact of these elements will be limited and they are not considered sufficient to prevent the likelihood of confusion.
In its observations, the applicant argues that the word ‘MUNDI’ has a low degree of distinctive character given that there are many trade marks that include this verbal element. In support of its argument, the applicant refers to several trade mark registrations in the European Union.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘MUNDI’. Under these circumstances, the applicant’s claims must be set aside. For the sake of completeness, the Opposition Division notes that, in its observations, the opponent has already dealt with this claim of the applicant, providing some relevant facts about the registration status of the cited EUTMs, which have been challenged.
Furthermore, the applicant refers to previous decisions of the Office to support its arguments. 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.
As the opponent correctly notes, the previous cases referred to by the applicant, ‘MEGARID v MEGAKID’ and ‘MAXDATA v TRAXDATA’, are not relevant to the present proceedings. The elements that the signs had in common in these cases were different from that in the present case, and they were devoid of distinctiveness; therefore, different factors apply to the overall assessment of the marks.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the 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 international trade mark registration No 1 024 160 designating the European Union. It follows that the contested trade mark must be rejected for all the contested services.
As the earlier right examined above leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights 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
Benoit VLEMINCQ | Manuela RUSEVA | Ewelina SLIWINSKA |
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.