OPPOSITION No B 2 689 464

Associação Nacional de Farmácias, Rua Marechal Saldanha, 1, 1249-069 Lisboa Codex, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

ANF Immobilier, 32 rue de Monceau, 75008 Paris, France (applicant), represented by Legi-Mark, 102, rue du Faubourg Saint Honoré, 75008 Paris, France (professional representative).

On 13/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 689 464 is partially upheld, namely for the following contested services:

Class 36:        Financial affairs; financial and profitability analysis with a view to the acquisition of holdings in companies of all kinds; mutual funds and capital investment; acquisition of holdings in all companies or firms, created or to be created, financial, commercial, industrial, related to movable or fixed property; financial consultancy; arranging the provision of finance; mutual funds and fund investments; financial investments; management of movable and immovable assets, asset management; management of financial portfolios, movable and immovable properties; financial management of company shares and holdings in other companies; financial appraisal; financial consultancy; financial operations and transactions; financing of property development services; financial management of real estate projects; financial management of new real estate programmes or of real estate restoration programmes; financial management of real estate assets, for others; financial management of maintenance costs; surety services; financial sponsorship and patronage; insurance; insurance of persons; life insurance; life assurance; accident insurance underwriting; re-insurance; insurance consultancy and information; brokerage; savings banks; assistance in the context of insurance contracts.

2.        European Union trade mark application No 15 062 912 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 15 062 912, namely against all the services in Class 36. The opposition is based on the following earlier rights:

• Portuguese trade mark registration No 430 094 for the figurative mark

;

• Portuguese trade mark registration No 430 095 for the figurative mark

.

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 Portuguese trade mark registration No 430 094.

1. The goods and services

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

Class 16:        Publications, periodicals, magazines, prospectuses.

Class 35:        Advertising, sales promotion for third parties.

Class 36:        Credit and debit card services.

Class 41:        Training, organisation of colloquiums, conferences and congresses.

Class 44:        Hygiene and beauty care.

The contested services are the following:

Class 36:        Real estate affairs; financial affairs; financial and profitability analysis with a view to the acquisition of holdings in companies of all kinds; mutual funds and capital investment; acquisition of holdings in all companies or firms, created or to be created, financial, commercial, industrial, related to movable or fixed property; financial consultancy; arranging the provision of finance; mutual funds and fund investments; financial investments; management of movable and immovable assets, asset management; management of financial portfolios, movable and immovable properties; financial management of company shares and holdings in other companies; appraisal (real estate -); real estate and financial appraisal; financial and real estate consultancy; financial and real estate operations and transactions; financing of property development services; financial management of real estate projects; financial management of new real estate programmes or of real estate restoration programmes; property (real estate -) management; apartment house management; financial management of real estate assets, for others; rental of apartments; rental of office space; financial management of maintenance costs; real estate brokerage; accommodation bureaux (apartments); estate agency; arranging letting of real estate; rent collection; surety services; arranging letting of real estate; real estate brokerage and rental; financial sponsorship and patronage; insurance; insurance of persons; life insurance; life assurance; accident insurance underwriting; re-insurance; insurance consultancy and information; brokerage; savings banks; assistance in the context of insurance contracts.

The opponent indicated in the notice of opposition that the opposition is based on all the goods and services of the earlier right; however, only the services in Classes 35, 36 and 41 were explicitly listed. Since the opponent also filed the registration certificates for the earlier marks, from which the goods and services for which the earlier marks are registered are evident, the Opposition Division will take all the goods and services of the earlier marks into account.

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 36

The contested financial affairs; financial operations and transactions; savings banks include as broader categories the opponent’s credit and debit card services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested financial and profitability analysis with a view to the acquisition of holdings in companies of all kinds; mutual funds and capital investment; acquisition of holdings in all companies or firms, created or to be created, financial, commercial, industrial, related to movable or fixed property; financial consultancy; arranging the provision of finance; mutual funds and fund investments; financial investments; management of movable and immovable assets, asset management; management of financial portfolios, movable and immovable properties; financial management of company shares and holdings in other companies; financial appraisal; financial consultancy; financing of property development services; financial management of real estate projects; financial management of new real estate programmes or of real estate restoration programmes; financial management of real estate assets, for others; financial management of maintenance costs; surety services, financial sponsorship and patronage are specific services in the field of finance and banking. These services are similar to the opponent’s credit and debit card services, as they can have the same nature, providers and distribution channels and target the same relevant public.

The contested insurance; insurance of persons; life insurance; life assurance; accident insurance underwriting; re-insurance; insurance consultancy and information; brokerage; assistance in the context of insurance contracts are considered insurance services.

Providing insurance services consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages.

Insurance services serve different purposes from credit and debit card services. Nevertheless, there are also some significant similarities.

Insurance services are of a financial nature and insurance companies are subject to licensing, supervision and solvency rules similar to those governing banks and other institutions providing financial services. Most institutions providing financial services also offer insurance services, including health insurance, or act as agents for insurance companies with whom they are often economically linked. Additionally, it is not unusual to see a financial institution and an insurance company in the same economic group.

Therefore, although insurance services and credit and debit card services have different purposes, they are of a similar nature, may be provided by the same undertaking or related undertakings and have the same distribution channels. Therefore, these contested services are similar to credit and debit card services.

The contested real estate affairs; appraisal (real estate -); real estate appraisal; real estate consultancy; real estate operations and transactions; property (real estate -) management; apartment house management; rental of apartments; rental of office space; real estate brokerage; accommodation bureaux (apartments); estate agency; arranging letting of real estate; rent collection; arranging letting of real estate; real estate brokerage and rental comprise real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of information related thereto.

The mere fact that real estate may have to be financed in order to be purchased is not sufficient to find similarity between the above contested services and the opponent’s credit and debit card services. Even though such services can be important for the acquisition of real estate, the consumers usually turn first to a real estate agent to search for a property, and second to a financial institution to finance the property. Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service. The consumers would not attribute responsibility for both services to the same company, even if financial services are essential or important for the use of real estate (11/07/2013, T-197/12, Metro, EU:T:2013:375, § 47-51).

Bearing that in mind, the abovementioned services are dissimilar to the opponent’s credit and debit card services.

The opponent’s publications, periodicals, magazines, prospectuses in Class 16, advertising, sales promotion for third parties in Class 35, training, organisation of colloquiums, conferences and congresses in Class 41 and hygiene and beauty care in Class 44 are also considered dissimilar to these contested services in Class 36. They serve different purposes and their methods of use are different. Moreover, they have different distribution channels and the goods and services are not usually offered by the same undertakings.

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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise. Even when the services target the average consumer, who is reasonably well informed and reasonably observant and circumspect, as these services may have important financial consequences for their users, the consumers’ degree 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

	ANF
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 sign is a figurative mark composed of the three letters ‘ANF’ written in a slightly stylised black typeface. The only element that is not a letter is a small dark grey cross that is a component of the letter ‘F’. This element is, however, hardly noticeable due to the indistinct shading. The cross has no meaning for the services in question and is considered distinctive.

The contested sign is a word mark composed of the three letters ‘ANF’. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters or in a combination of the two.

The three-letter combination ‘ANF’ of the earlier mark and the contested sign will be understood by part of the public in the relevant territory as an acronym standing for ‘Associação Nacional das Farmácias’, which means ‘National Pharmacies Association’. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive. For the part of the public that will not associate it with any meaning, it will also be distinctive.

Visually, the signs coincide in the three letters ‘ANF’. However, they differ in the stylisation and the minor figurative element of a cross, which is not in the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ANF’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that will associate both signs with ‘Associação Nacional das Farmácias’ as explained above, and considering the concept of the cross in the earlier mark, the signs are conceptually similar to an above average degree. For the part of the public that will not perceive a meaning in the three-letter combination ‘ANF’, 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.

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 marks on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 8 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).

As seen above, the goods and services under comparison are partly identical, partly similar and partly dissimilar. The distinctiveness of the earlier mark is normal.

The signs were found to be visually and conceptually (for a part of the public) similar to a higher than average degree and aurally identical, as they coincide in the three letters ‘ANF’. The differences in the signs lie in the minor figurative elements, namely the slightly stylised typeface and the cross, present in the earlier mark. These differences are not sufficient to counteract the similarity between the signs, even taking into account the high degree of attention of the relevant public.

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 partly well founded on the basis of the opponent’s Portuguese trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to the services of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

As mentioned above, the opponent has also based its opposition on Portuguese trade mark registration No 430 095.

Since this mark covers the same goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Arkadiusz GORNY

Jorge ZARAGOZA GOMEZ

Denitza STOYANOVA-VALCHANOVA

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.