OPPOSITION No B 2 787 110

Agrarmarkt Informations-GmbH, Dreizehnmorgenweg 10, 53175 Bonn, Germany (opponent), represented by Ludwig Acker, Adenauerallee 132a, 53113 Bonn, Germany (professional representative)

a g a i n s t

Foshan West Kivv Fashion Co., Ltd., 5/F, Building1, 1506 Creative City, Fenghuang Road, Chancheng Foshan, Guangdong, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 787 110 is upheld for all the contested services.

2.        European Union trade mark application No 15 697 055 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 697 055 for the figurative mark . The opposition is based on European Union trade mark registration No 9 440 348 for the figurative mark . The opponent invoked Articles 8(1)(b) and 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.

1. The services

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

Class 35:        Marketing studies, marketing analysis, economic and consumer consultancy, including on digital media; preparation of market information (analysis of and commenting on market developments) and providing thereof, to others, for technical work and consultancy; pricing for goods and services; price comparison services; calculation, preparation and supply (providing) of market data and economic data on agricultural, raw material and food markets, in particular data on prices and quantities; drawing up statistical and market-specific evaluations of technical information, analysis and other editing of database information, for others, conducting research and other investigations in connection with collated economic and market data; data capture and preparation for market and price reporting; providing information and documents relating to agricultural, raw material and food markets.

Class 38:        Telecommunications, namely customer information by means of fax and e-mail services, by means of voice transmission and telephone services; telecommunications by means of platforms and portals on the internet and mobile terminals; providing access to a computer database for downloading information via electronic media (the internet); providing access to search engines and hyperlinks for accessing data and information via global networks; providing access to networks and databases; data transmission for market and price reporting and for consultancy and information on agricultural products, specific crop types and agricultural energy generation; all of the aforesaid services only being in the field of agribusiness and not in the form of instant messaging.

Class 41:        Online publication of electronic books, periodicals and information services, in particular technical information services for the agricultural and food industries, and other state, public law and industrial subscribers reliant on access to news and information; publication of books, magazines and texts (other than publicity texts); arranging and conducting of seminars, lectures, forums and workshops; providing news, pictures and films relating to agricultural, raw material and food markets; all of the aforesaid services only being in the field of agribusiness and not in the form of instant messaging.

Class 42:        Providing infographics relating to agricultural, raw material and food markets.

 

Class 44:        Services in the field of agriculture, horticulture and forestry, in particular data capture and processing, for consultancy and information relating to agricultural products, specific crop types and agricultural energy generation.

Class 45:        Policy consultancy, including on digital media, with regard to agricultural, raw material and food markets.

The contested services are the following:

Class 35:        Provision of an on-line marketplace for buyers and sellers of goods and services; advertising; marketing; import-export agencies; demonstration of goods; marketing studies; publicity; negotiation and conclusion of commercial transactions for third parties; advertisements (preparing of -); bidding quotation.

Class 38:        Teleconferencing services; radio communications; message sending; communications by telephone; electronic mail; satellite transmission; providing telecommunications connections to a global computer network; transmission of electronic mail; telex services; providing online forums.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s lists of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce non-exhaustive lists of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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

Contested services in Class 35

The contested marketing studies are identically contained in the opponent’s list of services.

The contested marketing is a broad term that refers in the business context to the action, business, or process of promoting and selling a product, etc., including market research, advertising, and distribution. Consequently, the contested marketing includes, as a broader category, the opponent’s marketing studies. 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 advertising; demonstration of goods; publicity; advertisements (preparing of -) are also closely related to the opponent’s marketing studies, since they are all services intended to promote other companies’ goods or services. Therefore, the services under comparison are of a very similar nature and are usually provided by the same companies through the same channels to the same relevant consumers. Consequently, they are at least similar.

The contested provision of an on-line marketplace for buyers and sellers of goods and services is a specialised service essentially concerned with providing a platform allowing for the arrangement of transactions between buyers and sellers. The contested negotiation and conclusion of commercial transactions for third parties are aimed at preparing contracts for the sale and purchase of goods and agreements or communications carried out between buyers and sellers. The contested bidding quotation is a standard business process which purpose is to invite suppliers into a bidding process to bid on specific products or services. All these services share certain connections with the opponent’s pricing for goods and services and economic consultancy, including on digital media, since all these services are commercial trading and advisory services related to the operating of a business for profit. These sets of services may derive from the same undertakings and be aimed at the same customers, meaning also a match in distribution channels. As such the services under comparison are similar.

The contested import-export agencies refer to business administration services that relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. They have some points of contact with the opponent’s economic and consumer consultancy, including on digital media. They are usually rendered by companies specialised in this specific field such as business consultants who give assistance and information in this regard. They may be offered through the same channels and target the same public. Therefore, they are similar.

Contested services in Class 38

The contested teleconferencing services refer to services for the provision of conditions for a teleconference, namely a meeting or conference at which people in different locations participate by means of telecommunications technology, such as telephones or (in later use usually) videoconferencing equipment or software. These contested services are telecommunication services which may be provided using different equipment, such as platforms and portals on the internet or mobile terminals. The contested providing online forums are telecommunication services for the provision of online discussion sites on the internet where people can hold conversations in the form of posted messages. The abovementioned contested teleconferencing services; providing online forums include, as broader categories, or overlap with, the opponent’s telecommunications by means of platforms and portals on the internet and mobile terminals; all of the aforesaid services only being in the field of agribusiness and not in the form of instant messaging. It should be noted that online chat and instant messaging differ from other technologies such as email and internet forums due to the perceived quasi-synchrony of the communications by the users. Consequently, although the opponent’s services exclude instant messaging services, they do not expressly exclude other forms of electronic messaging. Since the Opposition Division cannot dissect ex officio the broader categories of the contested services, they are considered identical to the opponent’s services.

The contested satellite transmission includes telecommunication services consisting of transmission of data, sounds and images by satellite. For example, satellite communication technology is used as a means to connect to the internet via broadband data connections. The contested providing telecommunications connections to a global computer network refer to the provision of services for accessing and using the internet. The contested message sending; electronic mail; transmission of electronic mail are telecommunication services consisting of the transmission and distribution of messages, information, facsimiles of documents, etc., from one computer terminal to another. The contested radio communications; communications by telephone are or include the provision of telecommunication services of converted sound waves into electrical signals transmitted along a telephone wire or by radio to one or more distant sets, the receivers of which reconvert the incoming signal into the original sound. The contested telex services are telegraph services in which teleprinters are rented out to subscribers for the purpose of direct communication. All of the aforementioned contested services are different forms of telecommunication services using different means. They are related to the opponent’s telecommunications by means of platforms and portals on the internet and mobile terminals; all of the aforesaid services only being in the field of agribusiness and not in the form of instant messaging, as all these are data transmission services of the same or very similar nature. They may be provided by the same companies operating in the field of telecommunications through the same distribution channels and target the same relevant public. Indeed, nowadays communications service providers offer various types of telecommunications services such as telephony and data communications access. Consequently, the services under comparison are at least 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 found to be identical or similar are directed partly at the public at large (e.g. telecommunication services in Class 38), whose degree of attention will be average, and partly at 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 (e.g. advertising services in Class 35). Due to the degree of sophistication and the cost of some of the business-related services, their infrequent purchase and the serious and long-term impact they may have on the purchaser’s business, the relevant public’s degree of attention in relation to them is considered higher than average.

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.

The verbal element ‘AMI’ in the earlier mark is meaningful in some languages, for example for the French-speaking part of the public, which will perceive it as ‘friend’,  or the Hungarian-speaking part of the public, which may perceive it as a pronoun meaning ‘what, which, that’.

Nevertheless, the verbal elements of the marks under comparison are not meaningful in other territories, for example, in those countries where French and Hungarian are not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-French and non-Hungarian-speaking parts of the public such as the English, German and Spanish-speaking parts.

Neither of the marks has any elements that could be considered clearly more distinctive or visually dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘AMI(*)’, constituting the only verbal element of the earlier mark and present identically at the beginning of the contested sign. The representation of the letter ‘A’ in the contested sign in a stylised form does not alter the public’s perception of this element as a letter. Consumers are accustomed to encountering trade marks in which one or more letters are depicted in a fanciful way, as in the present case.

The marks differ in the repeated last letter, ‘I’, of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The marks also differ in the figurative element of the earlier mark and the stylisation of the verbal elements in both marks, which is not particularly striking and will be perceived as a graphical means of bringing the verbal elements to the attention of the public.

Moreover, as regards the figurative element of the earlier mark, 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). Consequently, the orange ellipse, which serves as a background to the verbal element of the earlier mark, will have less importance in the visual impact of the mark for the relevant consumers.

Considering all the above, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is identical or almost identical, since the additional letter ‘I’ at the end of the contested sign is not likely to give rise to a perceptible aural difference.

Conceptually, neither of the signs has a meaning for the public in the relevant territory taken into consideration. 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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in the language of the proceedings or a translation of the documents submitted in order to prove such a claim.

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, 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 services under comparison are identical or similar. The earlier mark enjoys a normal degree of distinctiveness per se in relation to the relevant services.

Despite the differences in the letter ‘I’ at the end of the contested sign and the marks’ overall graphical depictions, the signs are visually similar to an average degree on account of the letters that they have in common, ‘AMI(*)’.

From an aural point of view, the verbal element of the earlier mark, ‘AMI’, is reproduced identically by the verbal element of the contested sign, ‘AMII’, as the difference in the additional letter ‘I’ in the contested sign will not result in different aural perceptions.

Regarding the conceptual comparison, the marks will not be associated with any meaning by the relevant public taken into account and will be perceived as fanciful words. Therefore, there is no concept that could render the signs more distinguishable and, thus, avoid the potential for confusion between them that arises from their visual and aural similarities.

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 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.

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 some of 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).

Considering all the above, there is a likelihood of confusion for the non-French and non-Hungarian-speaking parts of the public such as the English, German and Spanish-speaking parts 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 9 440 348. It follows that the contested trade mark must be rejected for all the contested services.

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 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

Adriana VAN ROODEN

Boyana NAYDENOVA

Frédérique SULPICE

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.