OPPOSITION No B 2 706 854

Repsol, S.A., C/ Méndez Álvaro 44, 28045 Madrid, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Resolution Centre Ltd, 101 Rose Street South Lane, Edinburgh EH2 3JG, United Kingdom, and Resolution Center LLC, 412 N, Main Street, STE 100, Buffalo Wyoming 82834, United States of America (applicants).

On 06/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 706 854 is upheld for all the contested services.

2.        European Union trade mark application No 15 112 485 is rejected in its entirety.

3.        The applicants bear the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 112 485. The opposition is based on, inter alia, European Union trade mark registration No 10 858 777. The opponent invoked Article 8(1)(b) and Article 8(5) 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 10 858 777.

1. The services

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

Class 35:        Advertising; business management; business administration; office functions; retailing and selling via global computer networks of foodstuffs, bread, confectionery and chewing gum, beverages and prepared meals; retailing and sale via global computer networks of publications of all kinds, press and magazines, writing materials, school supplies, stationery, games and playthings, gymnastic and sporting articles, computer games and computer goods, recorded and unrecorded compact discs, recorded and unrecorded DVDs, and audio and video tapes; retailing and selling via global computer networks of goods, parts and fittings for automobiles, namely air fresheners, for washing and polishing automobile bodyworks, cleaning cloths, embellishments and stickers, lubricants, distilled water, fuel and carburants for automobiles, bottles and containers of plastic for transporting fuel, batteries; retailing and selling via global computer networks of tobacco, smokers’ articles; retailing and via global computer networks of games and toys; retailing and selling via global computer networks of goods for automobile stores, namely seat covers, mirrors, rearview mirrors, brake pads and pneumatic tyres; and retailing via global computer networks of goods for motorists' stores, namely caps, helmets, balaclavas, jackets, wind jackets, trousers, knee-pads, boots, gloves, goggles, overalls, waterproof clothing and umbrellas; retailing and sale via global computer networks of clothing, footwear, headgear, clothing of leather, neckties, footwear and clothing for sports, gloves, singlets, ascots, gymnastic and sporting clothing, jackets and stuff jackets, headgear of leather or imitations of leather, short jackets, trousers, jackets and outfits of textile, leather and imitations of leather for sports and competitions, in particular for motor sports, caps, visors, and scarves, balaclavas, socks and belts, including money belts, underwear, boots, sports footwear, non-slipping devices for footwear, shoes and boots for driving motorcycles, overboots, gloves and glove liners, mittens, goods of leather, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, bags and handbags, bags and handbags of leather and imitations of leather, bags for travel, wallets, travelling bags and briefcases, school bags.

Class 36:        Insurance; financial affairs; monetary affairs; real estate affairs; credit and debit card payments.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; oilfield exploration and analysis for oil field exploration; technical project studies; geological prospecting and research and oil prospecting; oil-well testing; oil-field surveys; technical and chemical research.

The contested services are the following:

Class 35:        Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services.

Class 36:        Financial and monetary services, and banking; fundraising and sponsorship; insurance services; provision of prepaid cards and tokens; real estate services; valuation services; insurance underwriting.

Class 42:        Design services; IT services; science and technology services; testing, authentication and quality control.

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

The contested advertising; business management and administrative services are identically contained in the opponent’s list of services (including synonyms).

The contested marketing and promotional services are intended to promote other companies’ goods or services and are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

The contested business analysis, research and information services; business assistance are or include services for the analysis and interpretation of economic information, such as income, employment, taxes, and demographics, which are used by entrepreneurs to make business decisions such as establishing marketing strategies. Therefore, these contested services are included in the broad category of, or overlap with, the opponent’s business management, which consists of providing businesses with the necessary support, including tools and expertise, to acquire, develop and expand market share. Therefore, they are identical.

The wording of commercial trading is vague and in very general terms. In view of the specific class in which it is protected, the contested commercial trading and consumer information services are considered business support activities including the processing of orders, advisory services and the arrangement of commercial contracts for example. These services have relevant points of contact with the opponent’s business management services as they are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants who give assistance and information in this regard. Both sets of services may derive from the same undertakings and be aimed at the same consumers, meaning also a match in distribution channels. As such the services under comparison are at least similar. 

Contested services in Class 36

The contested financial and monetary services; insurance services; real estate services are identically contained in the opponent’s list of services (including synonyms).

The contested banking; provision of prepaid cards and tokens; valuation services are or include services of the finance industry. These services are included in the broad categories of, or overlap with, the opponent’s financial affairs; monetary affairs. Therefore, they are identical.

The contested insurance underwriting is included in the broad category of the opponent’s insurance. Therefore, they are identical.

The contested fundraising refers to the seeking of financial support for a charity, cause, or other enterprise. The contested sponsorship refers to the position of being a sponsor, namely to be a person or organisation that pays for or contributes to the costs involved in staging a sporting or artistic event in return for advertising. These contested services consist in searching and obtaining financial means from third parties for specific beneficial purposes and are, consequently, included in the broad term of financial services, which comprises all types of services with a main financial implication. ‘Financial’ refers to finance or money matters and does, therefore, include the finance activity of fundraising and sponsorship (decision of the Boards of Appeal of 20/07/2016, R 2387/2015-2, THREE ARROWS POINTING UP AT VARIOUS ANGLES (fig.)/ SQUARE FRAME CONTAINING FIVE ARROWS POINTING DOWN (fig.), § 55). Consequently, the contested fundraising and sponsorship are included in the broad category of, or overlap with, the opponent’s financial affairs. Therefore, they are identical.

Contested services in Class 42

The contested science and technology services are identically contained in the opponent’s list of services.

The contested design services include, as a broader category, the opponent’s design relating thereto (to scientific and technological services). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested IT services include, as a broader category, the opponent’s design and development of computer hardware and software. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested testing includes, as a broader category, the opponent’s oil-well testing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested authentication and quality control are typical activities that are carried out by specialists and consultants in technical fields. In particular, authentication is the action of establishing something as genuine or valid. Quality control is a procedure or set of procedures intended to ensure that a manufactured product or performed service adheres to a defined set of quality criteria or meets the requirements of the client or customer. These services share certain points of contact with the opponent’s technological services and research and design relating thereto. The services under comparison may be, for example, part of the process by which new products or services are created and checked before being brought to the market. They may be offered by the same specialists and target the same public through the same channels to satisfy similar or complementary needs. Therefore, the services under comparison are highly similar.

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 in Class 35 found to be identical or similar (e.g. advertising; business management) target business customers with specific professional knowledge or expertise, such as companies seeking assistance in how to be successful, take advantage of business opportunities or promote the launch or the sale of their goods and services. Due to the degree of sophistication and cost of some of the services, their infrequent purchase and the serious and long-term impact they may have on the purchaser’s business, the degree of attention is considered to be higher than average.

The degree of attention is elevated also insofar as the relevant services in Class 36 are concerned. In particular, the various financial services in Class 36) target business customers and the general public, who is reasonably well informed and reasonably observant and circumspect. However, 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).

Similar reasoning applies also with regard to real estate services in Class 36, which target the general public. 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’ (decision of 17/02/2011, R 817/2010-2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

The services in Class 42 found to be identical or similar (e.g. science and technology services) are directed at professionals and business customers in, inter alia, the scientific and technological field. The degree of attention will also be higher than average considering the specialised nature of the services in question.

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 earlier mark is a figurative mark, consisting of the verbal element ‘REPSOL’, depicted in black upper case letters, above which is a sphere-like device in orange and red with two rings in orange and white.

The contested sign is a figurative mark, consisting of the slightly stylised verbal element ‘ResolC’, where the letters ‘R’ and ‘C’ are in upper case and relatively big, while the remaining letters are in lower case. Below the element ‘ResolC’ are the noticeably smaller words ‘Resolution Centre’ in title case letters. All elements of the contested sign are depicted in orange.

The earlier mark has no element that could be clearly considered more dominant (visually eye-catching) than other elements.

However, the words ‘Resolution Centre’ have less visual impact in the contested sign than the element ‘ResolC’, due to their smaller size and their positioning below the verbal element ‘ResolC’.

The verbal element of the earlier mark, ‘REPSOL’, is meaningless for the relevant public in the European Union. The figurative element does not convey any particular concept either. Both elements are of average distinctiveness.

Nevertheless, it should be noted 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. 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).

The element ‘ResolC’ in the contested sign does not have a meaning in any of the official languages in the European Union and is of average distinctiveness.

As for the additional smaller words in the contested sign, ‘Resolution Centre’, these words are likely to be understood by the majority of the public in the relevant territory with their respective meanings (‘resolution’ – ‘the act or an instance of resolving’, ‘the condition or quality of being resolute; firmness or determination’, and ‘centre’ – inter alia, ‘a place at which some specified activity is concentrated’). This is because the words ‘resolution’ and ‘centre’ exist or have very similar equivalents in the relevant languages (‘resolution’ and ‘centre’ in English, ‘resolución’ and ‘centro’ in Spanish, ‘résolution’ and ‘centre’ in French, ‘die Resolution’ and ‘das Zentrum’ / ‘das Center’ in German, ‘rezoluție’ and ‘centru’ in Romanian, ‘rezolūcija’ and ‘centrs’ in Latvian, ‘rezoliucija’ and ‘centras’ in Lithuanian, ‘rezoluce’ and ‘centrum’ in Czech, ‘rezolucja’ and ‘centrum’ in Polish, ‘резолюция’, transliterated as ‘rezoliutsia’, and ‘център’, transliterated as ‘tsentar’, in Bulgarian, etc.). The word combination ‘Resolution Centre’ will be perceived as a conceptual unit and may be perceived as a weak element, referring to the provider of the relevant services (a specialised centre/company, which resolves issues or problems, for instance). Even for the part of the public that does not perceive the meaning of the element ‘Resolution Centre’ and perceives it as a distinctive element, it has little impact in the sign due to its subordinate position.

Visually, the signs coincide in the sequence of letters ‘RE*SOL’; these letters are included in the element ‘ResolC’ of the contested sign and are placed in the same order in the earlier mark’s only verbal element, ‘REPSOL’. They differ in the additional letter ‘C’ at the end of the element ‘ResolC’ of the contested sign, and the letter ‘P’ in third position in the word ‘REPSOL’ of the earlier mark. However, given that the difference in the letter ‘P’ is in the middle of the word ‘REPSOL’, it is likely to go unnoticed by consumers. It should be noted that the slightly larger size of the letters ‘R’ and ‘C’ than the other letters in the element ‘ResolC’ in the contested sign will facilitate the perception of ‘Resol’ and ‘C’ as distinct elements.

The additional words of the contested sign, ‘Resolution Centre’, which have no counterparts in the earlier mark, will play a less important role in the overall impression conveyed by the mark than the element ‘ResolC’ due to their size, position and, for the majority of the public, limited distinctive character. Consumers will instantly perceive that this expression performs a secondary role within the sign, and will attribute more trade mark significance to the element ‘ResolC’ portrayed above it.

The marks differ also in their particular stylisations and in the figurative element of the earlier mark, which, as seen above, have less impact on the consumers than the verbal elements of the signs. Moreover, the use of the same or very similar colours (shades of orange/red) in the marks contributes to a somewhat similar visual impact.

Therefore, considering all the above, the marks 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 ‘RE*SOL’. The pronunciation differs in the sound of the letter ‘P’ in the middle of the earlier mark, as well as in the sound of the letter ‘C’ in the verbal element ‘ResolC’ in the contested sign, which will be pronounced as a separate letter (with its name in the respective language) due to the depiction of ‘Resol’ and ‘C’ as distinct elements. Consequently, the partition of the syllables in the compared elements of the signs is ‘REP-SOL’ for the earlier mark and ‘RE-SOL-C’ for the contested mark.

The pronunciation also differs in the sound of the contested sign’s additional words, ‘Resolution Centre’, which have no counterparts in the earlier mark.

However, given the smaller size of these words, their position at the bottom of the mark and their relatively weak distinctive character for the majority of the public, it is likely that a significant part of the relevant public will not pronounce them when referring to the contested sign aurally. Therefore, for this part of the public, the signs are aurally similar to an average degree.

For the part of the public that will pronounce all verbal elements of the marks, the signs are aurally similar to a low degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the words ‘Resolution Centre’ in the contested sign, as explained above, the earlier mark has no meaning for the public in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. It should be noted that the meaningful words ‘Resolution Centre’ in the contested sign are of limited distinctiveness for the majority of the public and will not likely be perceived as indications of the commercial origin of the services at issue. Therefore, the impact of the concept, introduced in the contested sign by these words, is limited, since the attention of the relevant public will be attracted by the additional fanciful verbal element of the mark that dominates over the verbal element ‘Resolution Centre’.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection for part of the goods and services for which it is registered. 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 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 (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).

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).

The services are partly identical and partly similar to different degrees. The earlier mark enjoys an average degree of distinctiveness per se in relation to the relevant services.

The signs are visually and aurally similar to an average degree for a significant part of the public on account of the coinciding letters ‘RE*SOL’, present in the same order in the earlier mark’s only verbal element, ‘REPSOL’, and in the first verbal element of the contested sign, ‘ResolC’. These verbal elements will not be associated with any meanings and will be perceived as distinctive words, while the additional words, ‘Resolution Centre’, of the contested sign have a relatively lower degree of distinctiveness for the majority of the relevant public and have a limited impact in the sign due to their subordinate position, and so the relevant public will not pay much attention to them.

All the aforementioned findings lead to the conclusion that the coincidences outweigh the differences in the overall impressions produced by the marks for services that are identical, highly similar or at least similar.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).

Consequently, in relation to identical or at least similar services consumers may legitimately believe that the contested trade mark, which they will most likely identify by the verbal element ‘ResolC’, is a new version or a brand variation of the earlier figurative mark, ‘REPSOL’, originating from the same undertaking as the earlier mark or from an economically linked undertaking. In other words, consumers may confuse the origins of the conflicting services.

Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, even considering that the degree of attention with regard to the relevant services may be higher than average. Even consumers with a higher 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).

The applicants refer to previous decisions of the Office to support their arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicants are not particularly relevant to the present proceedings, as each of these cases involves different marks, where different factors weighted in favour of the perception of no likelihood of confusion, such as different structures and different meaningful elements in the compared signs.

For example, in the decisions of the Opposition Division in B 2 522 095 (for the marks ‘AK-PRES’ (figurative) and ‘APRÈS’) and B 2 541 301 (for the marks ‘BIBA’ and ‘BY-BAR’) the identical letters of the signs are visually separated in different elements in one of the marks, while contained in a single verbal element in the other mark, which leads to a different visual structure of the marks in these cases. Moreover, the decision of the Opposition Division in B 2 541 301 was annulled by the Boards of Appeal, which found that there is a likelihood of confusion on the part of the public. One of the factors for a finding of no likelihood of confusion in Case R 1415/2015-2 MOOCH / SMOOCH was the fact that each of the marks would have been associated with different meanings by the public in the relevant territory (i.e. Ireland). In the judgment of 16/12/2015, T-356/14, Kerashot / K KERASOL, EU:T:2015:978 cited by the applicant, the Court in fact found that there is a likelihood of confusion on the part of the relevant Spanish public. In the judgment of 12/04/2016, T-8/15, Mr Jones / JONES et al., EU:T:2016:213, the Court also confirmed the findings of the Boards of Appeal that there is similarity between the marks and dismissed the action.

Furthermore, it must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division may be to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 858 777. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the 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).

Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicants are 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

Adriana VAN ROODEN

Boyana NAYDENOVA

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.