vitvo | Decision 2699455

Date Published: Sep 24, 2017

OPPOSITION No B 2 699 455

Schibsted Classified Media Spain, S.L., Parque de Oficinas Sant Cugat Nord, Pl. Xavier Cugat, s/n, 08174 Sant Cugat del Valles, Spain (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Vita Solvo Limited, A Melcombe Regis Court 59, Weymouth Street, London, City of London W1G 8NS, United Kingdom (applicant).

On 22/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 455 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 064 017 for the figurative mark, namely against all services in Class 36. The opposition is based on European Union trade mark registration No 14 307 185 for the word mark VIBBO. 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.

1. The services

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

Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs, Real estate consultancy, Real estate consultancy.

The contested services are the following:

Class 36: Financial and monetary services, and banking.

The comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

Therefore, the applicant’s argument that there is no similarity of the services due to the different end-users and nature of the actual services provided under the marks at issue, and that the actual services provided would not be in competition, cannot be taken into consideration.

The contested financial and monetary services cover the same services as the opponent’s financial affairs and monetary affairs. These terms refer to the same type of activities, including, among others, material or immaterial money transactions, savings or investments. Therefore, these services are identical.

The contested banking is included in the broad category of the opponent’s financial affairs, as banking consists of providing all the services necessary concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business, etc. These services are, therefore, identical.

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.

The services found to be identical target the public at large, and also professionals in the field of finance. 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).

3. The signs

VIBBO VIBBO
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).

None of the marks has any meaning for the public in the relevant territory and, therefore, they are distinctive.

It should be pointed out that when assessing identity or similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered/applied for. The actual or possible use of the registered marks in another form is irrelevant when comparing signs (judgment of 09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38).

Visually, although the contested sign is figurative, it consists of letters with a minimal stylisation, except for its last letter ‘O’, which is formed in an unusual way, with a small extension added to its top on the left.

Both signs consist of five letters, and they coincide in their first two letters ‘V-I’. Their last letter ‘O’ is similar but differs in its stylisation in the contested sign. The third and fourth letters of the marks are significantly different, namely ‘TV’ in the contested sign, which consists of two different letters written mostly with straight lines, and a double ‘BB’ in the earlier mark, which are two rounded, identical letters.

Therefore, the signs are visually similar to a no more than average degree.

Aurally, the pronunciation of the signs coincides in the sound of their first two letters ‛VI’, present identically in both signs, and also in their last letter ‘O’. The identity of the vowels present in the marks, which are also in the same order in both marks, increases the aural similarity between them.

On the other hand, the pronunciation of the marks differs in their third and fourth letters ‘TV’ in the contested sign and ‘BB’ in the earlier mark. The double consonant ‘BB’ in the earlier mark would be most likely pronounced as a strong ‘B’, as one sound, while the consonants ‘T’ and ‘V’ in the contested mark would be pronounced as two different sounds, one after the other. Although the pronunciation of the letters ‘V’ and ‘B’ is almost the same in the Spanish language, which would make the marks aurally somewhat more similar from the perspective of the Spanish-speaking public, the pronunciation of the marks will differ in the sense that the double ‘BB’ present in the earlier mark, which is very unusual in Spanish, will be pronounced as one sound, while the letters ‘TV’ will be pronounced as two different letters.

Therefore, the signs are aurally similar to a no more than average degree.

Conceptually, neither of the signs has a meaning for the 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.

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 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.

5. Global assessment, other arguments and conclusion

In the present case, the services at issue were found to be identical. The degree of attention relating to these services is quite high, and the earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally similar to a no more than average degree. The marks coincide in their first letters, ‘VI’ and their last letter ‘O’. However, this is not sufficient to find a likelihood of confusion, especially with respect to a highly attentive public. As stated above, the marks differ in the letters ‘TV’ and ‘BB’ in the third and fourth position, which difference has a strong impact on their overall visual and aural perception.

As the opponent has pointed out, the word elements of figurative marks are the most important means of identifying the marks, representing the most immediate way to refer to them. While the Opposition Division does not disagree with this argument, it must be noted that the contested mark consists of one slightly stylised word element only, which, even if regarded as a word element without any stylisation, shows significant differences from the sole word element of the earlier mark, as discussed above.  

It is true 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). This is particularly relevant in the present case considering that there is no conceptual difference between the signs that could facilitate their differentiation on behalf of the consumers. 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).

However, the differences between the marks and the overall impression conveyed by them are sufficiently strong to allow the relevant public to distinguish between them, even taking into account the abovementioned principle of imperfect recollection. Therefore, consumers are unlikely to assume that the services provided under the earlier mark and under the contested sign are provided by the same undertaking or economically-linked undertakings.

Therefore, taking into account all the relevant circumstances of the case, the Opposition Division concludes that the dissimilarities between the marks at issue are sufficient to enable the targeted public to avoid the likelihood of confusion, including the likelihood of association, even taking into account the identity of the conflicting services. 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Alexandra APOSTOLAKIS

Martin EBERL

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.