OPPOSITION No B 2 758 947

Henning Weise, Tilsiter Straße 8, 26316 Varel, Germany (opponent), represented by Möhrle Happ Luther Rechtsanwaltsgesellschaft MbH, Brandstwiete 3, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Seaserv BV, Cypresbaan 7 – 9, 2908LT Capelle a/d IJssel, The Netherlands (applicant), represented by Blandy And Blandy Solicitors, 1 Friar Street Reading, Reading, Berkshire RG1 1DA, United Kingdom (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 758 947 is upheld for all the contested services.

2.        European Union trade mark application No 14 634 166 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 14 634 166 ‘SeaServ’. The opposition is based on, inter alia,  German trade mark registration No 302 015 206 835 . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 015 206 835.

1. The services

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

Class 39:         Distribution services.

The contested services are the following:

Class 35:         Wholesale services in relation to foodstuffs; Outsourcing services in the nature of arranging procurement of goods for others; Wholesale services in relation to furniture; Wholesale services in relation to toiletries; Wholesale services in relation to saddlery; Wholesale services in relation to meats; Wholesale services in relation to fuels; Wholesale services in relation to lubricants; Wholesale services in relation to beer; Wholesale services in relation to tobacco; Wholesale services in relation to desserts; Wholesale services in relation to seafood; Wholesale services in relation to coffee; Wholesale services in relation to sorbets; Wholesale services in relation to confectionery; Wholesale services in relation to chocolate; Wholesale services in relation to cocoa; Wholesale services in relation to lighting; Wholesale services in relation to teas; Wholesale services in relation to heating equipment; Wholesale services in relation to stationery supplies; Wholesale services in relation to cleaning preparations; Wholesale services in relation to fragrancing preparations; Wholesale services in relation to cleaning articles; Wholesale services in relation to baked goods; Wholesale services in relation to dairy products; Wholesale services in relation to frozen yogurts; Wholesale services in relation to ice creams; Wholesale services in relation to sanitation equipment; Wholesale services in relation to computer software; Wholesale services in relation to computer hardware; Wholesale services in relation to food cooking equipment; Wholesale services in relation to non-alcoholic beverages; Wholesale services in relation to disposable paper products; Wholesale services in relation to food preparation implements; Wholesale services in relation to audio-visual equipment; Wholesale services in relation to water supply equipment; Wholesale services in relation to preparations for making beverages; Wholesale services in relation to alcoholic beverages (except beer); Wholesale services in relation to articles for use with tobacco; Wholesale services in relation to preparations for making alcoholic beverages; Wholesale services in relation to hand-operated tools for construction.

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.

The opponent’s distribution  services are similar  to all the different types of  contested  wholesale services (which is a sale of commodities in quantity) of the contested mark as these services enable a product to be marketed and have an intermediate function between the production and final consumption of a product. Those two categories of services contribute to the attainment of the same ultimate objective which is the provision of the product to the end consumer. There is a close link in particular between the opponent’s  distribution services and contested   wholesale services of various types. Moreover, a wholesaler may offer distribution services, just as wholesale may form part of the services offered by a distributor (see judgment of 26/06/2014, T-372/11, BASIC, EU:T:2014:585, § 47-48; 20/09/2016, R 2260/2015-5, JAROMA ROSES (fig.) / jaroma). The same applies to the Outsourcing services in the nature of arranging procurement of goods for others which are services in the area of commercial trading and consumer information services, have essentially all the same functions and purposes,  users and distribution channels as the wholesale services, are complementary. Therefore these services are considered similar to the earlier services.

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 of the earlier mark target the general and professional public and the contested services target a professional public exclusively. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81). The degree of attention is average.

3. The signs

	SeaServ
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 figurative mark contains word elements ‘SeaServ There is only one service: The Right One.’ written in white letters, placed on three lines. The word elements are placed on a rectangular blue background which furthermore contains two device elements formed of circular and straight lines in faded grey colours.

The word element SeaServ of the earlier trade mark overshadows the other elements of the mark by virtue of its central position, outstanding colour and size. The word element SeaServ is the visually dominant element of the earlier trade mark.

On outset, the word element SeaServ as a whole has no meaning as this word nor parts of it are present in German language. The same applies to the less visible part of the word element -There is only one service: The Right One.-, which is placed on a secondary and not prominent position below the dominant word element SeaServ and is depicted in much smaller letters. There are no elements in the mark that could be considered clearly more distinctive than other elements.

However, when signs consist of both verbal and figurative components, as the earlier mark in the present case, then 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 contested mark is a word mark. The word SEASERV of this mark has no meaning as this word nor parts of it are present in German language, and is, therefore distinctive.

Consumers generally tend to focus on the beginning, and topmost part of a sign when they encounter a trade mark. This is because the public reads from left to right and top to bottom, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the element SeaServ, which forms the entire contested mark and which is the first and dominant element of the earlier mark. However, the marks differ in the remaining, significantly smaller word elements, and device elements of the earlier mark, none of which are present in the contested mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters SEASERV, present identically in both signs. The pronunciation differs in the pronunciation of the remaining, less dominant  word  elements – There is only one service: The Right One.- of the earlier mark, which have no counterpart in the other mark.   However, these elements are not likely to be pronounced, at least by a part of the public, because of their significantly smaller size, secondary position within the sign and the length of the expression.

Therefore, the signs are aurally identical for part of the public, while they are similar to an average degree for the remaining part.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The services are similar. The similarities and dissimilarities between the marks have been established.

The signs have been found to coincide visually and aurally to the extent that they share the elements SeaServ. This element is the only word element of the contested mark and is the dominant and independently distinctive element of the earlier sign.

The remaining elements in the earlier mark, either the less dominant word elements that are meaningless for the relevant public or the non-specific device elements and stylisation tend to be overlooked and do not deflect attention from the coinciding word element.

In addition, account is taken of the fact that 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).

Based on the principle of imperfect recollection, as well as the interdependence principle between the relevant factors, it is considered that the established similarities between the signs are sufficient to cause at least part of the German professional public to believe that the conflicting similar services come from the same undertaking or economically linked undertakings.

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 German trade mark registration No 302 015 206 835. It follows that the contested trade mark must be rejected for all the contested services.

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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Zuzanna STOJKOWICZ

Erkki MÜNTER

Irina SOTIROVA

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.