OPPOSITION No B 2 703 927

Inga NV, Stationsstraat 233, 8540 Deerlijk, Belgium (opponent), represented by Pronovem Marks Société Anonyme, avenue Josse Goffin, 158, 1082 Bruxelles, Belgium (professional representative)

a g a i n s t

Nutrigenis Corporation S.L., C/ Los Rosales 36, 29730 Rincon de la Victoria (Malaga), Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via, 69 -5° Of. 510, 28013 Madrid, Spain (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 703 927 is upheld for all the contested services, namely:

Class 35:        Assistance and consultancy in the operation and management of commercial companies, assistance in the operation or management of companies as franchises, direct mail advertising.

2.        European Union trade mark application No 15 012 057 is rejected for all the contested services. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 012 057, namely against some of the services in Class 35. The opposition is based on European Union trade mark registration No 13 741 103. 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 goods and services

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

Class 35:        Advertising and promotional services; Business management; Business mediation in the sale of apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, furniture and furnishings, in particular kitchen furniture and furnishings and of parts thereof, arranging and conducting publicity events and compiling and providing advertising campaigns; Arranging and conducting promotional events and activities (sales promotion); Wholesaling and retailing in the field of kitchens and interior goods; Import and export in the field of kitchens and interior goods.

The contested services are the following:

Class 35:        Assistance and consultancy in the operation and management of commercial companies, assistance in the operation or management of companies as franchises, direct mail advertising.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The contested assistance and consultancy in the operation and management of commercial companies, assistance in the operation or management of companies as franchises are included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested direct mail advertising is included in the broad category of the opponent’s advertising services. Therefore, they are 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.

In the present case, the services found to be identical are aimed at supporting or helping other businesses to carry out or improve their business. They are, therefore, in principle, directed at a professional public with specific professional knowledge or expertise. As the services are contracted infrequently, can be expensive and can have long-term consequences for one’s business affairs, the relevant public’s degree of attention is considered high.

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 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. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is composed of the verbal element ‘OKAY’, depicted in upper case letters and in a stylised manner, with a circle replacing the horizontal line of the letter ‘A’. The first letter, ‘O’, features a black band across the middle, in which the word ‘BE’ is written in white upper case letters.

The element ‘OKAY’ in the earlier mark is the dominant element as it is the most eye-catching due to its size and colour.

The contested sign is a figurative mark that consists of two verbal elements, namely ‘BE’, depicted in black, and ‘OK’, depicted in light green. There is a curved line under the verbal element ‘OK’ in the same light green colour. The contested sign has no elements that could be considered clearly more dominant than other elements.

The verbal element ‘BE’, present in both signs, will be understood by the relevant public as the imperative form of the verb ‘TO BE’, inviting the public to do something. The word ‘OK’ of the contested mark and the word ‘OKAY’ of the earlier mark, by themselves, will both be perceived as a universally known, informal way of voicing agreement with something or somebody. However, the words ‘OKAY’ and ‘OK’ are both used as adverbs, since they follow the verb ‘BE’, and mean that something is found to be ‘satisfactory or acceptable’ (information extracted from Collins English Dictionary on 10/04/2017 at www.collinsdictionary.com). These verbal elements will be perceived as laudatory, since they refer to the satisfactory or acceptable quality of the services, and are, therefore, weak.

As regards the contested sign, it is composed of verbal elements of low distinctive character and a figurative element that is even less distinctive, as it is of a purely decorative nature. Therefore, the verbal elements are more distinctive than the figurative elements.

Visually, the signs coincide in ‘BE-OK**’. However, they differ in the additional letters, ‘AY’, of the second verbal element of the earlier mark. They also differ in the curved line in the contested sign and in their stylisation.

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. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs is identical, /bi-oʊkeɪ/, since the public will perceive the element ‘BE’ in the earlier mark, although it is not dominant, and they will also perceive ‘OK’ as an abbreviated form of the word ‘OKAY’.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as conveying the same concept, they signs are conceptually identical.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low.

5. Global assessment, other arguments and conclusion

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 services covered are from the same or economically linked undertakings.

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).

Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, the earlier mark is weak but the signs are aurally and conceptually identical and visually similar to a low degree. The services are identical. They target the business customers with specific professional knowledge or expertise, and the public’s degree of attention is high.

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 with 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).

Considering all the above, there is a likelihood of confusion for part of the public, namely the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 741 103. It follows that the contested trade mark must be rejected for all the contested 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.

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

Katarzyna ZANIECKA

Alexandra APOSTOLAKIS

Pedro JURADO MONTEJANO

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.