OPPOSITION No B 2 398 470
Teixeira Duarte-Engenharia e Construções, SA, Lagoas Park, Edificio 2, 740-265 Porto Salvo, Portugal (opponent), represented by Joaquim Calado Marques, Av. Álvares Cabral no. 47 – r/c, 1250-015 Lisbon, Portugal (professional representative)
a g a i n s t
GlaxoSmithKline Consumer Healthcare (UK) IP Limited, 980 Great West Road, Brentford, Middlesex TW8 9GS, United Kingdom (applicant), represented by Emma Sophia Stopford, GlaxoSmithKline Services Unlimited, 980 Great West Road, Brentford, Middlesex TW8 9GS, United Kingdom (employee representative).
On 05/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 398 470 is upheld for all the contested services.
2. European Union trade mark application No 12 795 795 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 12 795 795. The opposition is based on Portuguese trade mark registration No 490 126. 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 services
The services on which the opposition is based are the following:
Class 35: Retail sale and wholesale in supermarkets, including the sale of food and non-food products, hygiene articles, cosmetic products, dietetic products, workshop equipment, do-it-yourself articles, decorative articles, stationery and school articles, furniture, household and kitchen products, household and kitchen appliances and utensils, bags and travelling articles, food and accessories for animals, beverages, clothing articles and fashion accessories; advertising and informative advertising , also via the internet, production and design of advertising matter of all kinds; business management and business administration; sales promotion for others, including via internet.
The contested services are the following:
Class 35: Organisation, operation and supervision of customer loyalty schemes and customer incentive schemes.
Class 36: Issuing of tokens and vouchers of value in relation to customer loyalty schemes and customer incentive schemes.
Contested services in Class 35
The contested organisation, operation and supervision of customer loyalty schemes and customer incentive schemes are a sort of business analysis and research services and therefore, by definition, are included in the broad category of the earlier mark’s business management in Class 35, which also includes the planning of marketing for a company, which is more than advertising, but an entire process to adapt the company to the consumer’s needs and to develop and expand market share. These services are therefore identical.
Contested services in Class 36
The contested issuing of tokens and vouchers of value in relation to customer loyalty schemes and customer incentive schemes is similar to a high degree to the opponent’s sales promotion for others in Class 35, as both have the same purpose, namely the promotion of goods. The opponent’s services are more related to creating a marketing scheme, whereby the applicant’s services in Class 36 provide campaigns offering deals and discounts when buying articles. The latter services are not, strictly speaking, financial services (which are expected to be found in Class 36) and have a close connection with those rendered by the earlier mark, as they both aim to create a form of marketing for promoting goods and services, they reach the same users and they may be offered by the same companies.
- 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 founded to be identical or similar to a high degree are mainly directed at business customers with specific professional knowledge or expertise. The degree of attention is rather high, since the relevant services could have consequences for the functioning of a business and their price could also be relatively high.
- The signs
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Earlier trade mark |
Contested sign |
The relevant territory is Portugal.
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 element ‘MAXI’, present in both signs, written in bold black, slightly stylised lower case letters, will be associated by the relevant public with something that is very large/long. Bearing in mind that the relevant services are related to marketing campaigns, this word is not descriptive or weak and it is considered that this element has, consequently, an average degree of distinctiveness.
Regarding the contested sign, the word ‘REWARDS’, depicted in red upper case letters that are much smaller than the main verbal element of the sign, ‘MAXI’, will be distinctive in the Portuguese context, as it will not be understood and no conceptual association will be made with the services at issue.
Both signs have the figurative element of a star. The earlier sign contains an incomplete black and white star above the letter ‘a’, whereas in the contested sign the dot of the letter ‘i’ consists of a red circle containing a five-point white star in the middle. In marks that combine word and figurative elements, 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).
In the earlier mark, the word ‘MAXI’ and the figurative element in the form of a star are equally dominant, while, in the contested sign, the word ‘MAXI’ and the star on the letter ‘i’ are more dominant, since the word ‘REWARDS’ appears in a much smaller typeface and in a secondary position at the bottom of the sign.
Visually, the signs are similar to the extent that they both contain the distinctive word ‘maxi’, reproduced in an almost identical typeface in bold black lower case letters. They differ in all the other elements and colours. However, the word ‘rewards’, even though it is distinctive, is visually less dominant.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the word /ma-xi/, present identically in both signs. The pronunciation differs only in the additional verbal element included in the contested sign, /RE-WARDS/. Therefore, the signs are aurally highly similar for part of the public.
Conceptually, similar to the previous assertions concerning the semantic content conveyed by the marks, the signs are linked through the element ‘maxi’ and the concept of the star, and to that extent the signs are conceptually highly similar.
Moreover, the word ‘REWARDS’ lacks any meaning for the Portuguese public and does not change the conceptual identity 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.
- 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 average.
- Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
The contested services have been found to be either identical or highly similar to the opponent’s services and the degree of attention is rather high. The earlier mark as a whole has a normal degree of distinctiveness.
The marks have been found to be visually similar to an average degree, and aurally, for at least part of the public, and conceptually they are similar to a high degree.
In addition, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, even taking into account the rather high degree of attention on the part of the public.
Therefore, the opposition is well-founded on the basis of the opponent’s Portuguese trade mark registration No 490 126. It follows from the above that the contested trade mark must be rejected for all the services found to be identical or highly similar to those of the earlier mark.
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
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Chantal VAN RIEL |
Alexandra APOSTOLAKIS | Richard BIANCHI |
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.