OPPOSITION No B 2 601 568

QBE Insurance Group Limited, Level 27, 8-12 Chifley Square, Sydney, New South Wales 2000, Australia (opponent), represented by Marks & Clerk LLP, Fletcher House Heatley Road The Oxford Science Park, Oxford  OX4 4GE, United Kingdom (professional representative)

a g a i n s t

Allied Finance Corporation, Kirchstr. 12, 9490 Vaduz, Liechtenstein (holder), represented by Erich Hasler, Kappelestrasse 15, 9492 Eschen, Liechtenstein (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 601 568 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of international registration designating the European Union No 1 232 577. The opposition is based on United Kingdom trade mark registration No 2 030 336 and the non-registered figurative trade mark  used in Belgium, Italy, Germany, Czech Republic, Denmark, Hungary, Spain, United Kingdom, Slovenia and France. The opponent invoked Articles 8(1)(b), 8(5) and 8(4) 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 services

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

Class 36:        Insurance services; insurance consultancy; insurance evaluations; insurance underwriting; insurance information; insurance brokerage; financial management services; banking services; news, information and consultancy services, all relating to finance; risk management, assessment, control and consultancy; actuarial services; reinsurance; financial planning, management, research and report services; financial appraisals and valuations; debt collection services; credit services.

The contested services are the following:

Class 35:        Advertising and business management; business organisation and management consulting, accountancy services for third parties, auditing, efficiency experts, office work for third parties; founding and management of companies.

Class 36:        Insurance underwriting and financial services; financial and fiscal consultancy; fiduciary services; financial management; financing services; real estate agencies, real estate management, real estate appraisal.

Class 45:        Legal counseling; intellectual property rights exploitation.  

As a preliminary remark, it has to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 and business management; business organisation and management consulting, accountancy services for third parties, auditing, efficiency experts, office work for third parties; founding and management of companies are all advertising and business management services.

Advertising 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.

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.

The opponent’s services, on the other hand, are all either insurance or banking and financial services or services closely related to them such as news, information and consultancy services, all relating to finance.  

Banking and financial services consists of providing all the services necessary for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business, providing credit or asset management, credit card services, financial evaluation or stocks and bonds brokerage, etc. Financial services are usually offered by institutions like e.g. banks for the facilitation of various financial transactions and other related activities in the world of finance.

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.

It follows from the above that, contrary to the opponent’s opinion, advertising and business management services serve different purposes from insurance, banking and financial services. The services are usually not provided by the same undertakings or related undertakings and they do not have the same distribution channels. The public does not expect e.g. a bank or an insurance company to offer advertisement or business management services. The services in question are neither complementary. Therefore, the services are dissimilar.

Contested services in Class 36

Insurance underwriting services; financial consultancy; financial management are identically contained in both lists of services (including synonyms).

The contested financial services include, as a broader category the opponent’s financial management 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 financing services are included in, or overlap with the opponent’s the broad category of banking services. Therefore, they are identical.

The contested fiscal consultancy is included in the broad category of the opponent’s consultancy services, all relating to finance. Therefore, they are identical.

The contested fiduciary services are included in the broad category of the opponent’s financial management services. Therefore, they are identical.

Finally, the remaining contested real estate agencies, real estate management, real estate appraisal are all real estate affairs.

The term ‘real estate affairs’ comprises real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of information related thereto. This mainly involves finding a property, making it available for potential buyers and acting as an intermediary. Consumers clearly distinguish real estate agents’ services from those of financial institutions. They do not expect a bank to find housing or a real estate agent to manage their finances.

The mere fact that real estate may have to be financed in order to be purchased is not sufficient to find similarity between real estate affairs and financial services. Even if financial 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 secondly 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. It must therefore be concluded that these services are dissimilar even if financial services are essential or important for the use of real estate. The consumers would not attribute responsibility for both services to the same company. (judgment of 11/07/2013, T-197/12, Metro, EU:T:2013:375, § 47-51). Therefore, the contested services are dissimilar to the opponent’s services; not only the ones related to finance and banking, but, for the same reasons explained above, also to the ones related to insurance.

Contested services in Class 45

The contested legal counseling; intellectual property rights exploitation are legal services usually offered by lawyers and/or trade mark and patent attorneys. They serve different purposes from the opponent’s insurance, banking and financial services in class 36. Although insurance and financial companies usually employ legal specialist and may consult their clients as regards some legal aspects of the financial services offered, the market reality shows that this is not part of the main activity and that the services are usually not provided by the same undertakings or related undertakings and they do not have the same distribution channels. The public does not expect e.g. a bank or an insurance company to offer legal counselling or to manage and exploit IP rights. Furthermore, the services in question are not necessarily  complementary. Therefore, the services are dissimilar.

The opponent refers to previous decisions of the Office to support a similarity of the aforementioned services. 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. 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. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services. As stated above these services target also 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).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

Both signs are purely figurative marks consisting of a black device made up by interlocked elements.

Visually, the signs coincide in the raw appearance of their figurative element, made up in both by interlocked elements. Yet, the visual impression created by them is quite different even without a closer look, since they differ in the graphical stylization; in particular, the earlier mark reminds more of a hexagonal form (although there are no corners), whereas the contested sign is more ‘roundish’. Moreover, the earlier mark consists of six black elements and the contested sign only of three; therefore, the middle part of the earlier mark can be perceived as a knot, in contrast to the contested sign.

Therefore, the signs are similar to a low degree.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

According to the opponent the earlier trade mark has a reputation in the United Kingdom in connection with all the services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Screenshots from the ‘Wayback Machine’ on the opponent’s website from 2010-2014 (Exhibit A). 
• Marketing materials (brochures, newsletters, customer factsheets, etc.) issued by the opponent concerning its activities, dated from 2012-2013 and referring to offices in the United Kingdom and activities in Spain. However, a great part is not in the language of the proceedings, but in Spanish. (Exhibit B). 
• Screenshots from the opponent’s website listing its offices in the UK and in some EU countries (Exhibit C).
• Extracts from the opponent’s Annual reports from 2011 to 2014 (Exhibit D)
• Articles and Newsletters concerning the operations of the opponent’s EU offices (Exhibit E)
• Screenshots from the opponent’s website listing awards won by it (Exhibit F).
• Information and evidence relating to the opponent’s sponsorship of the England Rugby Team from 2011 onwards (Exhibit G).

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

First of all, it has to be noticed that almost the entire material comes from the opponent itself and has therefore less probative value. Furthermore, a great part of this material refers to activities outside the relevant territory which is the United Kingdom and is, therefore, irrelevant. This is in particular the case with a great part of Exhibits B) which refer to Spain (however, not translated) and Exhibit C) which merely indicates that the opponents has offices in Belgium, Denmark, France, Germany, Ireland, Italy, Spain and Sweden.

Finally, the sign either does not appear at all in the majority of the material, since the material refers either to ‘QBE’, or it appears in a far different form on the provided materials, that is, in combination with the word ‘QBE’ (or ).

Despite showing some use of the relevant trade mark, the evidence provides no information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, apart from some reference in the annual reports, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by and/or that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation or an enhanced distinctive character.

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 neither it is a common shape Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested services are partly identical and partly dissimilar. The signs are visually similar to a low degree.

The signs coincide in the presence of interlocking elements, but the graphical stylization of these elements is sufficiently different. As stated above, the level of attention of the relevant public (event the public at large) will be quite high, given the financial implications of the services in question. Therefore, the similarity, based simply on the presence of interlocked elements, is not sufficient to lead to a likelihood of confusion on the part of the public. Furthermore, the opponent failed to prove that its mark enjoys an enhanced degree of distinctiveness which indeed could be a relevant factor in the present case.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected, as far it is based on Article 8(1)(b) EUTMR.

The Opposition Division will continue the examination of the remaining grounds.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the holder establishes due cause for the use of the contested trade mark.

In the present case, the holder did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected, as far as it is based on this ground.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent has based its opposition also on the non-registered figurative trade mark  used in Belgium, Italy, Germany, Czech Republic, Denmark, Hungary, Spain, United Kingdom, Slovenia and France.

For the sake of completeness the Opposition Division notes in this regard that the opponent in its observations submitted on 22/06/2016 refers to the same non-registered figurative trade mark with use in Slovakia. However, since the Slovakian right was not invoked within the opposition period, it cannot be taken into account.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

Therefore, the fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) EUTMR. The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 156).

In the present case, the EU was designated in the contested international registration on 25/11/2014. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Belgium, Italy, Germany, Czech Republic, Denmark, Hungary, Spain, United Kingdom, Slovenia and France prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for insurance and reinsurance services.

On 22/06/2016 the opponent filed evidence which has already been examined above (part d) of this decision) under the grounds of Article 8(1)(b) EUTMR.

While the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 43).

The documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use for each territory claimed.

First of all, it has to be noticed that the entire material relating to the activities outside the United Kingdom comes from the opponent itself and has therefore less probative value. In particular, the opponent has only submitted screenshots from its own website with addresses of its EU branches, some brochures (partly not even translated), press releases, etc. Some material refers to activities in Spain, but has not been translated into the language of proceedings. Furthermore, the Czech Republic, Hungary and Slovenia do not even appear in this material.

Second, apart from the sponsorship agreement and some articles, nothing originates from independent sources or third parties, no market surveys have been filed, not even a single invoice. For the sake of completeness it has to be noted that the sign either does not appear on the provided documents or if it does, it is in a far different form, that is, in combination with the word ‘QBE’ (or ).

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the business activities on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Renata COTTRELL

Konstantinos MITROU

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.

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.