(Trade mark without text) | Decision 2600099

Date Published: Sep 24, 2017

OPPOSITION No B 2 600 099

The Capital Group Companies, Inc., 333 South Hope Street, Los Angeles, California 90071-144, United States of America (opponent), represented by Mewburn Ellis LLP, City Tower, 40 Basinghall Street, London EC2V 5DE, United Kingdom (professional representative)

a g a i n s t

Lån & Spar Bank A/S, Højbro Plads 9-11, 1014 Copenhagen K, Denmark (applicant), represented by Gorrissen Federspiel Advokatpartnerselskab, Axeltorv 2, 1609 Copenhagen V, Denmark (professional representative).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 600 099 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 303 085 . The opposition is based on European Union trade mark registration No 2 258 739 . The opponent invoked Article 8(1)(b) EUTMR.

Remark

The opposition was also based on European Union trade mark No 2 999 449. Articles 8(1)(b) and 8(5) EUTMR were invoked in relation to both this earlier trade mark and the abovementioned trade mark. Nevertheless, on 10/05/2016, the opponent withdrew its opposition based on the ground under Article 8(5) and on earlier European Union trade mark No 2 999 449.

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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9: Computer software; electronic publications accessible on and downloadable form the Internet of other databases.

Class 16: Printed publications; magazines; publicity materials; stationery.

Class 36: Financial management services; investment, fund, portfolio and securities management services; venture capital management services; financial, economic and investment research and analysis services; financial, economic and investment advisory services; advisory and consultancy services relating to all the aforesaid.

The contested services are the following:

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; rental of computer hardware, computer software, electronic data processing equipment and computer systems; computer programming; design and development of computer hardware and computer software, including for use in banking, currency, investment, mortgage, insurance, real estate, pension, leasing and financial services; maintenance of computer software for use in banking, currency, investment, mortgage, insurance, real estate, pension, leasing and financial services; architecture; engineering; interior design services; creating, maintaining, supervising and administration of web sites for others; web-hosting for others; advisory and consultancy services relating to all the aforesaid services.

Some of the contested services in Class 36 are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to the goods and services of the earlier mark.

2. 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 assumed to be identical are directed at the public at large and/or at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the relevant goods and services.

3. The signs

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 earlier mark is a figurative mark that, depending on how it is perceived, consists of two basic, square black frames with a white middle or two white squares with thick black outlines. The bottom left corner of the upper frame overlaps with the top right corner of the lower frame, creating a third, smaller, frame in their intersection.

The contested sign is a figurative mark that consists of a light grey square, the lower left corner of which overlaps with the top right corner of a second dark grey square. The intersection of the two squares forms a third, darker grey, square, which is almost black.

As pointed out by the applicant, simple geometric shapes such as circles, squares, lines, rectangles or ordinary pentagons have a rather low capacity to help consumers to distinguish goods and services from one undertaking from those of another precisely because of that simplicity. The Opposition Division disagrees with the opponent’s argument that the trade marks form complex graphic images because, even though the geometric shapes overlap, they will still be perceived as the simple combination of two basic shapes. Therefore, their distinctive character is weak. Reference is made to the judgment of the Court of 17/05/2013, T-502/11, Stripes, EU:T:2013:263, § 56-57, in which the Court considered the trade marks and  distinctive to a low degree because they consisted of two simple geometric shapes.

The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Conceptually, since the public will not make any particular interpretation of signs that are rather abstract, neither of the signs has a meaning for the public in the relevant territory. Therefore, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

The opponent refers to a judgment of the General Court (08/10/2014, T-342/12, Star, EU:T:2014:858) in which the signs  and  were found to be conceptually identical despite their low degree of distinctiveness. However, this argument is irrelevant because those signs clearly conveyed the concept of a star.

Consequently, although visually the signs coincide because they both consist of two basic squares that overlap, as already explained in detail, they differ in the way they are depicted. Depending on the perception of the public, the earlier mark consists of two basic, square black frames with a white middle or two white squares with thick black outlines. The overlap of the squares clearly forms a third smaller square/frame with the same characteristics as the larger ones, namely a thick black frame with a white middle. However, in the contested sign, the squares are depicted in single colours, light grey and dark grey. Furthermore, in contrast to the earlier mark, the third square at the intersection of the two bigger ones does not repeat the same pattern and is darker grey, giving the visual impression that at least one of the squares of the contested sign is slightly transparent.

Therefore, in view of the above and taking into consideration that the elements composing the signs have a low degree of distinctiveness, the signs are visually similar to a low degree.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 its submission of 13/12/2016, the opponent argues that the earlier trade mark has a higher than average degree of inherent distinctiveness. However, 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 the goods and services in question.

5. Global assessment, other arguments and conclusion

The contested services are assumed to be identical to the opponent’s goods and services and they target the public at large and/or a professional public.

The degree of attention of the relevant public in relation to those services will vary from average to high.

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).

In the present case, the signs cannot be compared aurally, since they are purely figurative. It is not possible to make a conceptual comparison, since they do not have any meaning and, visually, they are only similar to a low degree.

Account is to be taken of the fact that the earlier trade mark enjoys a limited scope of protection because of its low degree of distinctiveness. Consequently, the similarities are not enough to counteract the differences resulting from the outlines of the shapes, the fillings and the colours, since they are diluted in the overall impression created by the signs.

All these differences will therefore not go unnoticed by the consumers, especially bearing in mind that, in relation to the relevant services, their attention will vary from average to high.

The opponent claims that it is a common practice of large finance and investment companies to use variations of their logo for their different areas of business. Even if this is true for finance and investment companies and is common practice in general, in the present case the contested sign cannot be seen as a variation of the earlier mark because the differences already outlined mean that the contested sign is too different from the earlier mark.

The opponent also refers to another judgment of the General Court (15/03/2012, T-379/08, Wavy line, EU:T:2012:125) involving the signs  versus . In that case, the signs were found to be similar because the similarities were able to counteract the differences between them. Furthermore, the argument that the consumer would believe that one mark is the negative of the other is clearly not applicable here, since the contested sign does not consist of two white frames with a black middle (the negative version of the earlier mark), but of two basic squares, as already explained in detail in part c) of this decision. This argument must therefore be set aside.

Considering all the above, even assuming that the contested services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

Benoit VLEMINCQ

Sandra IBAÑEZ

Catherine MEDINA

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.