OPPOSITION No B 2 777 467
Apax Partners MidMarket, 45 avenue Kléber, 75016 Paris, France (opponent), represented by ipSO, 5 rue Murillo, 75008 Paris, France (professional representative)
a g a i n s t
APEX Insurance, Reinsurance Brokerage and Consultancy, 21 Barakat Al Zoubi Street, Bayader Wadi Al Seer, Amman, Jordan (applicant), represented by Praxi Intellectual Property S.p.A., Piazza Brà 28, 37121 Verona, Italy (professional representative).
On 13/10/2017, the Opposition Division takes the following
1. Opposition No B 2 777 467 is upheld for all the contested services.
2. European Union trade mark application No 15 570 799 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the services of European Union trade mark application No 15 570 799 for the figurative mark ‘’, namely against all the services in Class 36. The opposition is based on French trade mark registration No 1 596 850 for the word mark ‘APAX’. The opponent invoked Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
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 36: Financing services; financial and loaning operations; financial transactions; investment activities of all kinds and especially as regards equity capital; financial engineering; financial, fiscal and real estate appraisals; financial analysis; financial and monetary affairs; creation, investment and management of funds; capital constitution and capital investment.
The contested services are the following:
Class 36: Insurance consultancy; insurance brokerage; re-insurance services; insurance.
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 contested insurance is similar to the opponent’s financial affairs. Insurance services are of a financial nature. In that regard, firstly, insurance companies are subject to, in relation to licensing, supervision and solvency, rules similar to those of financial institutions and secondly, the undertakings offering financial services can also offer insurance services, either directly, or by acting as agents for insurance companies to which they are, in some cases, economically linked. It follows that these services have the same nature, they may coincide in distribution channels, target the same consumers and are likely to be offered by the same kinds of specialised companies.
The contested insurance consultancy; insurance brokerage and re-insurance services are all insurance services included in the broader category of the contested insurance. Therefore, these services are considered similar to the opponent’s financial affairs, for the same reasons explained above.
- 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.
The services found to be similar target the public at large, and also professionals in the field of finance. 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).
- The signs
Earlier trade mark
The relevant territory is France.
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 word ‘APAX’ constituting the earlier mark has no meaning for the public in the relevant territory and, therefore, it is distinctive to at least an average degree.
The contested sign is a figurative mark, consisting of the verbal element ‘APEX’ written in regular upper case letters in a basic font style, except for the letter ‘E’, which is depicted as three short grey horizontal lines. The word ‘APEX’ will be understood as the ‘highest part of something; the tip, top, or peak (sommet, pointe)’ and also as ‘the highest point or culmination; the acme, the climax (point culminant, apogée)’ by the relevant public (information extracted from Linguee French- English Dictionary on 10/10/2017 at http://www.linguee.com/english-french/translation/apex.html). As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.
The figurative elements of the contested sign are confined to the three horizontal lines representing the letter ‘E’, which will have only a very limited impact on the consumers. Therefore, the contested sign will most likely be perceived as the single and distinctive word ‘APEX’.
Visually, the signs coincide in the letters ‘AP*X’. However, they differ in the third letter ‘A’ of the earlier mark and the third letter of the contested sign, a stylised ‘E’.
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.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘AP*X’. The pronunciation differs in the sound of the letters ‛A’ and ‘E’.
Since the signs equally contain two syllables, the rhythm of their pronunciation will be the same. Further, their identical last letter ‘X’ provides the marks with a very similar characteristic sounding.
Therefore, the signs are highly similar from an aural point of view.
Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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.
- Global assessment, other arguments and conclusion
The services at issue are similar to an average degree.
Based on its inherent distinctiveness, the distinctiveness of the earlier mark is normal. The relevant public is the public at large as well as professionals in the field of finance, and the degree of attention is high.
The signs are visually and aurally similar to a high degree. The signs are of the same length, having three common letters out of four, which are in the same positions and order. In addition, the initial part, namely the first two letters of the signs are identical. The figurative elements of the contested mark have only a very limited impact on the relevant consumers.
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). Even consumers who pay 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, 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 French trade mark registration No 1 596 850. 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, as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.