OPPOSITION No B 1 786 980
MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by MIP Metro Group Intellectual Property GmbH & Co. KG, Eileen Hudson, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)
a g a i n s t
Real Group, 14 Cours d'Herbouville, 69004 Lyon, France (applicant), represented by Real Group, Jérôme Revy, 14 Cours d'Herbouville, 69004 Lyon, France (employee representative).
On 10/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 786 980 is upheld for all the contested goods and services.
2. European Union trade mark application No 9 502 964 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 350.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 9 502 964. The opposition is based on, inter alia, European Union trade mark registration No 9 512 609 and German trade mark registration No 39 936 980. 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 9 512 609 and German trade mark registration No 39 936 980.
- The goods and services
The goods and services on which the opposition is based are the following:
EUTM N° 9 512 609
Following partial refusal of EUTM N° 9 512 609 for the services in Class 36 on 09/07/2012 in opposition proceedings No B 1 858 615 (confirmed by the Fourth Board of Appeal on 18/09/2013 in R 1282/2012-4), the opposition is only based on the goods and services in Classes 9 and 35, inter alia the following:
Class 9: Computers and computer software.
Class 35: Advertising.
DE No 39 936 980
Class 35: Advertising; business management; business administration; office functions.
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.
The contested goods and services are the following:
Class 9: Software.
Class 35: Advertising.
Class 36: Real estate business.
Contested goods in Class 9
The contested software includes, as a broader category, or overlaps with, the opponent’s computer software. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested services in Class 35
Advertising is identically contained in both lists of services in Class 35.
Contested services in Class 36
The contested real estate business is identical to the opponent’s real estate affairs.
- 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 in Classes 9 and 36 are directed at the public at large and at business customers. The degree of attention may vary from average (in relation to software) to high (in relation to real estate services). The purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010-2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).
The services found identical in Class 35 are directed at business customers with specific professional knowledge or expertise and whose degree of attention is relatively high since advertising is usually a key factor in the companies’ strategy.
- The signs
|
|
REALME |
|
Earlier trade marks |
Contested sign |
The relevant territory is the European Union for EUTM No 9 512 609 and Germany for DE No 39 936 980.
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 economy of proceedings and since earlier trade mark No 2) is protected in Germany, the Opposition Division finds it appropriate to focus the comparison of the earlier European Union trade mark on the German-speaking part of the public.
The earlier marks are figurative marks consisting of the word ‘real’ (in red in earlier EUTM), slightly slanted lowercase letters, followed by a comma and hyphen (in blue in earlier EUTM).
For the German-speaking public, the word ‘real’ means ‘existing or occurring in the physical world, material, factual’ (information extracted from Duden at http://www.duden.de/rechtschreibung/real). As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive to an average degree (30/03/2016, R 1361/2015-4, F’REAL/REAL,-, § 17).
The graphic features of the earlier marks play a secondary role within the overall impression. The addition of the comma and hyphen and the colours will not particularly attract the consumers’ attention as the use of basic graphic elements is commonplace. These elements will be perceived as a mere punctuation of a decorative nature. Taking into account that 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37), the word element ‘real’ must be considered the most distinctive element of the earlier signs (30/03/2016, R 1361/2015-4, F’REAL/REAL,-, § 17). In addition, due to its preponderant size, the element ‘real’ is visually more eye-catching than the following ‘,-‘ element.
The contested sign is the word mark ‘REALME’. It is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is written in upper or lower case letters.
The contested sign, as a whole, has no meaning in German. However, as explained above, the word ‘real’ is meaningful in German. Therefore, considering that consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58), part of the public may perceive the element ‘real’ in the contested sign with the abovementioned meaning. For the remaining part of the public, the sign is meaningless.
Visually, the distinctive and dominant element ‘real’ of the earlier marks is entirely included at the beginning of the contested sign where the attention of the public is usually focussed on. The signs differ in the final letters ‘M-E’ of the contested sign and in the stylisation and figurative elements of the earlier marks. However, as stated above, these figurative elements will have a lesser impact on the consumer’s perception than the verbal element of the signs. Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛R-E-A-L’, present identically in the signs. The pronunciation differs in the sound of the additional letters ‛M-E’ of the contested mark, which have no counterparts in the earlier signs. Taking into account that the public pays more attention to the beginning of a sign than to the subsequent components, the signs are aurally similar to an average degree.
Conceptually, reference is made to the above findings. Given that part of the public will recognize the element ‘real’ in the contested sign as referring to the concept of reality, the signs are conceptually similar to an average degree. For the part of the public that will perceive the contested sign as meaningless, since one of the signs will not be associated with any meaning, the signs are not conceptually 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 marks
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of some decorative and less distinctive elements in the marks as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
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).
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).
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.
The earlier marks are inherently distinctive to an average degree.
The signs are visually, aurally, and for part of public, conceptually similar to an average degree. Taking into account that the goods and services are identical, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance their similarities and therefore, there is a likelihood of confusion on the part of the German-speaking part of the public, including a likelihood of association, even for the public with a high degree of attention. 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.
In the present case, although the public might detect some differences between the signs, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 512 609 and German trade mark registration No 39 936 980. It follows that the contested trade mark must be rejected for all the contested goods and services.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due their extensive use as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.
As the above mentioned earlier rights lead 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 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
|
Anna ZIÓŁKOWSKA |
Frédérique SULPICE |
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.