OPPOSITION No B 2 721 762

Memora Servicios Funerarios, S.L., Camino de las Torres, 51, Zaragoza, Spain (opponent), represented by Consulpi Propiedad Industrial, S.L., Rambla Badal, 137-139-Esc B-Ent.1, 08028 Barcelona, Spain (professional representative).

a g a i n s t

Christof Gasser GmbH, Pfarre 21, 39032 Sand in Taufers, Italy (applicant), represented by Christoph Friedrich Jahn, Rothenburg 41, 48143 Münster, Germany (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 721 762 is upheld for all the contested services, namely 

Class 35:        Provision of advertising space; rental of advertising space; rental of advertising space on the internet; provision of advertising space by electronic means and global information networks; advertising agencies.

Class 45:        Funerary services.

2.        European Union trade mark application No 15 020 787 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 15 020 787, namely against all the services in Classes 35 and 45. The opposition is based on, inter alia, European Union trade mark registration No 5 592 894.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 5 592 894.

1. The services

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

Class 35:        Business management and administration in general.

Class 45:        Morgue and funeral services.

The contested services are the following:

Class 35:        Provision of advertising space; rental of advertising space; rental of advertising space on the internet; provision of advertising space by electronic means and global information networks; advertising agencies.

Class 45:        Funerary services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

All the contested services in Class 35 are different types of advertising services. These services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

The opponent’s business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

When comparing business management with all the contested advertising, advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they are similar to a low degree.

Contested services in Class 35

Funerary services are identically contained in both lists of services (including synonyms).

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 services found to be identical or lowly similar are directed at the public at large (those in Class 45) and at business customers (those in class 35) with specific professional knowledge or expertise.

The degree of attention will be average for those services in Class 35 as they are standard business functions, and higher than average for the services in Class 45 as they are infrequently used and likely to have an emotional interest on the part of the end public.

3. The signs

	MEMORITAS
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 with the verbal element ‘mémora’, in green, which has no specific meaning in the relevant territory. However, the word is very close to other words, for example the English word ‘memory’ and ‘memoria’, the Spanish and Italian word for ‘memory’, and, therefore, may be seen as alluding to this concept by part of the public. For the rest of the public the word has no meaning (e.g. for the Greek-speaking part of the public). Even for the public that associate this word with a concept i.e. that some of the services are done in remembrance of loved ones, it has no direct meaning in relation to any of the relevant services and is, therefore, of normal distinctiveness for the entire public. The figurative element consist of two green arches that, especially considering the verbal element, looks like an ‘m’; this letter is of average distinctiveness in relation to the relevant services. The mark has no element that could be considered dominant (visually more eye-catching) than other elements. It is true that the figurative 'm' is of bigger proportions, however it remains that mémora is not of such diminished dimensions as to be overshadowed by the other element and the whole  of the sign is perceived immediately as such and therefore there are no dominant element.

The contested sign is a word mark consisting of the word ‘MEMORITAS’, which whilst it is not a word per se, could be understood, at least by a part of the public (e.g. the English, Italian and Spanish-speaking parts) as alluding to ‘memory’, because, as seen above, similar words with the same root exist in some of the relevant languages. For the rest of the public the word has no meaning (e.g. for the Greek-speaking part of the public). The word constituting the contested sign is of average distinctiveness in relation to the relevant services for the public as a whole.

Visually, the signs coincide in the first five letters ‘memor’ of the verbal element in both signs (the accent is not reproduced in the contested sign). The earlier mark's verbal element appears almost in its entirety in the contested sign. The signs differ in their respective last letters, ‘a’ in the earlier mark and ‘itas’ in the contested sign.

Furthermore, the earlier sign has a figurative element that will be perceived as the letter ‘m’, especially considering the verbal element of this sign. Therefore, despite it being visually rather noticeable in the overall impression conveyed by the earlier mark, the word ‘mémora’ still has an independent distinctive role as it is not visually overshadowed by the other element of the mark.

The first parts of the conflicting marks are almost identical (the accent in the earlier marks introduces a minor difference). Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛ m-e-m-o-r’, present identically in both signs, although as the earlier mark has an accent on the ‘e’ the intonation might not be the same. The pronunciation differs in the final letters of both signs, ‘a’ in the earlier mark and ‘itas’ in the contested sign. Part of the public might also pronounce the ‘m’ (located above the verbal element of the earlier sign) however it will most probably just be perceived as reinforcing the initial letter of mémora.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs, at least for part of the public, allude to the English word ‘memory’ or to similar equivalents of this word in other languages, the signs are conceptually identical for this part of the public. In regards to the extra element in the earlier mark, the public will see the letter ‘m’ as a reference to the initial letter of ‘mémora’ and as such complementing this verbal element rather than introducing a new or different concept in the mark. For the rest of the public the signs have no meaning and therefore a conceptual comparison is not possible. Even for this part of the public the letter ‘m’ in the earlier mark will be seen as referencing the initial letter of ‘mémora’ and as such complementing this verbal element rather than introducing a new or different concept in the mark. In this case 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eight recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested services are partly identical and partly similar to a low degree. The identical and lowly similar services are directed at the public at large and business customers whose level of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually and aurally similar to an average degree. Conceptually the marks are identical for part of the public who perceives the marks as alluding to the English word ‘memory’ or to similar equivalents of this word in other languages (e.g. Italian and Spanish). The highly similar elements of the marks, ‘MÉMORA’ and ‘MEMORITAS’, will be perceived by another part of the relevant public as meaningless and fanciful terms that play independent and distinctive roles in both signs.

Account must also be 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark. In addition, given the similarity between the signs it must also be rejected for the services found to be similar only to a low degree.

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

Boyana NAYDENOVA

Benjamin Erik WINSNER

Martina GALLE

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.