OPPOSITION No B 2 604 331

S.C. Weizmann Ariana & Partners Agentie De Proprietate Intelectuala S.R.L., str. 11 Iunie, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucuresti, Romania (opponent), represented by S.C. Weizmann Ariana & Partners Agentie De Proprietate Intelectuala S.R.L., str. 11 Iunie, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucuresti, Romania (professional representative)

a g a i n s t

Arriaga Asociados Asesoramiento Juridico y Economico S.L., Capitán Haya, 1 – Planta 11, 28020 Madrid, Spain (applicant), represented by Merx Patentes y Marcas S.L.P., Calle de la Ribera del Loira 46, Edificio 2, 28042 Madrid, Spain (professional representative).

On 06/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 604 331 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 458 913, namely against all of the services in Class 35 and most of the services in Class 45. The opposition is based on, inter alia, European Union trade mark registration No 10 783 851. 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.

PRELIMINARY REMARK

The opposition is based on more than one earlier trade mark, namely one earlier European Union trade mark registration and one earlier national Romanian trade mark registration both consisting of the word ‘ARIANA’. The earlier Romanian trade mark registration No 059 086 was registered on 24/06/2004. Therefore, in accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that the earlier mark has been put to genuine use for the relevant time period. On 19/08/2016, the applicant submitted observations in reply to the opposition and, at the same time, requested the opponent to furnish proof of use of Romanian trade mark registration No 059 086. On 07/09/2016, the Office forwarded the observations filed by the applicant to the opponent and set a deadline for the opponent to submit observations in reply by 12/11/2016. The Office did not formally request the opponent to furnish proof of use of its earlier Romanian trade mark registration No 059 086 within this time limit. In view of this, the adversarial part of the proceedings should be re-opened and the opponent should be formally requested, in accordance with Article 42(2) and (3) EUTMR, to furnish proof of use of this earlier mark within a time limit to be set by the Office. However, the Opposition Division notes that the other earlier mark on which the opposition is based, European Union trade mark registration No 10 783 851 (which covers Romania), consists of the same word mark, ‘ARIANA’, and is based on services that are broader than those covered by the earlier Romanian trade mark. The earlier European Union trade mark was registered on 18/09/2012 and is thus not subject to the use requirement.

Therefore, the examination of the opposition will first proceed on the basis of the opponent’s European Union trade mark registration No 10 783 851.

1. The services

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

Class 35: Advertising; Business management; Business administration; Office functions.

Class 45: Legal services; Security services for the protection of property and individuals; Personal and social services rendered by others to meet the needs of individuals.

The contested services are the following:

Class 35: Commercial trading and consumer information services; Business assistance, management and administrative services; Business analysis, research and information services; Advertising, marketing and promotional services; Business management; Business consulting; Personnel consultancy; Consultancy relating to auditing; Acquisition and merger consultation; Business recruitment consultancy; Consultancy and information services relating to accounting; Consultancy services regarding business strategies; Taxation [accountancy] consultation; Business consultancy and advisory services; Business advisory and information services; Advisory services for business management.

Class 45: Safety, rescue, security and enforcement services; Legal services; Legal advice; Legal services relating to company formation and registration; Expert witness services; Information services relating to consumer rights; Information services relating to legal matters; Legal support services; Arbitration, mediation and dispute resolution services; Information, advisory and consultancy services relating to legal matters.

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 business assistance and administrative services overlap with the opponent’s business administration. Therefore, they are identical.

The contested business management; business management services; business analysis, research and information services; business consulting; consultancy relating to auditing; acquisition and merger consultation; consultancy services regarding business strategies; business consultancy and advisory services; business advisory and information services and advisory services for business management are either identically included in both lists or otherwise included in the broad category of the opponent’s business management. Therefore, they are identical.

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 the client’s position in the market and acquiring a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc..

Therefore, the contested advertising, marketing and promotional services are either identically included in both lists or otherwise included in the opponent’s broad category of advertising. Therefore, they are identical.

The contested personnel consultancy and business recruitment consultancy are included in the opponent’s broad category of business administration. Therefore, they are identical.

The contested consultancy and information services relating to accounting and taxation [accountancy] consultation are included in the opponent’s broad category of office functions. Therefore, they are identical.

The broad category of the contested commercial trading and consumer information services is at least similar to the broad categories of the opponent’s business management and business administration as they can coincide in provider, end user and distribution channels.

Contested services in Class 45

The contested safety, rescue, security and enforcement services overlap with the opponent’s broad category of security services for the protection of property and individuals. Therefore, they are identical.

The contested legal services; legal advice; legal services relating to company formation and registration; expert witness services; information services relating to consumer rights; information services relating to legal matters; legal support services; arbitration, mediation and dispute resolution services and information, advisory and consultancy services relating to legal matters are either identically included in both lists or otherwise included in the broad category of the opponent’s legal services. Therefore, they are identical.

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 in Class 35 are essentially specialised services directed at business customers with specific professional knowledge or expertise. The cost for such services is normally relatively high, they are not frequently purchased and may have a serious impact on the purchaser’s business and are thus likely to be subject to a relatively careful purchasing decision. Therefore, the degree of attention for the relevant services in Class 35 is considered to be high.

As regards the services found to be identical in Class 45, they consist of specialised services directed at the public at large and at business customers seeking legal advice or safety and security services. Due to the impact on and importance of such services for a private individual or a business requesting them, the degree of attention of the relevant public for the relevant services in Class 45 is also considered to be high.

3. The signs

ARIANA
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 earlier mark is the word mark ‘ARIANA’. For part of the public in the relevant territory, it will be perceived as a female given name but for another part of the public it will have no meaning. Either way, it will be perceived as distinctive in relation to the relevant services.

The applicant argues that the word ‘ARIANA’ is a female name widely used in Spain and Europe. The applicant also submits that Ariana is the Latinized form of (Greek: ἡ 'Αρειανή/Arianē), that it was a general geographical term used by some ancient Greek and Roman authors for a district of wide extent in Central Asia and that the name of Iran (Persia) originates from the Persian word Aryānā (Ariana) meaning "The Land of the Aryans". Further, the applicant also argues that notable people had the name Ariana in the past and lists a number of different artists. In this respect, the average consumer in the European Union is unlikely to be aware of the etymology of the name Ariana or the reference to the Persian word Aryānā (Ariana) meaning "The Land of the Aryans". In addition and although part of the public in the relevant territory may know some of the notable people referred to that had, or have, the name Ariana, the people listed may not be generally well-known to the average consumer throughout the European Union. Therefore, although ‘ARIANA’ will be understood as a female name in parts of the European Union, such as in the Netherlands, Portugal and Italy, the Opposition Division does not consider that ‘ARIANA’ will be perceived as a female name by consumers in the whole of the European Union, in particular in countries where Ariana, or any highly similar names, are uncommon, such as in the Czech Republic and Sweden. In these parts of the European Union, the earlier mark for ‘ARIANA’ will be perceived as a fanciful word without any particular meaning.

The contested sign is a figurative mark consisting of two identical graphical elements in different shades of orange shaped as folded, inverted ‘V’ letters. The first graphical element is almost double the size of the second graphical element and they may be perceived either as two abstract shapes or otherwise as two highly stylised ‘A’ letters. The graphical elements are followed by the two verbal elements ‘ARRIAGA’ and ‘ASOCIADOS’ over two lines in almost the same sized black upper case letters. The font used is rather specific due to the stylisation of the letters ‘A’ and ‘G’, which do not contain any horizontal lines as usual.

Regardless of whether the graphical elements will be perceived as stylised ‘A’ letters or otherwise as abstract shapes, in view of their stylisation, colour and particular design, they will be perceived as distinctive.

The applicant argues that the word ‘ARRIAGA’ is a common surname in Spain, in particular in the Basque Country and in Aragon, and that it also refers to the name of the former Basque city of Arriaga-Lakua, now being the name of the most famous quarters of Vitoria, the capital of the Basque Country. In this respect, although the word ‘ARRIAGA’ in the contested sign is likely to be perceived as referring to a surname by the relevant public in Spain, it is unlikely to be perceived as such by the public in other parts of the European Union as the average consumer in these parts is not likely to be aware of the village previously known as Arriaga-Lakua, the quarter of Vitoria-Gasteiz bearing this name or that Arriaga is a Basque surname. Therefore, the word ‘ARRIAGA’ in the contested sign will also be perceived as a fanciful word without any particular meaning by the relevant public outside Spain. Either way, ‘ARRIAGA’ will be perceived as distinctive in relation to the relevant services.

The applicant also argues that the word ‘ASOCIADOS’, present in the contested sign, has no meaning in European languages other than Spanish in which it is the usual word for ‘associates’. The applicant further argues that this element is not less distinctive than the other elements in the contested sign as it does not describe or have any direct link with the services for which registration was sought. In this respect, the Opposition Division notes that the contested services in Class 35 consist of different business-related services and the services in Class 45 consist of different legal services and services concerning safety and security. As correctly pointed out by the opponent, it is very common, not only in Spain, that companies use, as part of their names, the word ‘associates’, in particular in relation to legal services. Therefore, since the word ‘ASOCIADOS’ will simply be perceived as referring to ‘business associates’ or ‘partners’ in relation to the relevant services for the part of the relevant public that perceives its meaning, it will be weak and of little distinctive character for this part of the public. In addition, this weak meaning of the word ‘ASOCIADOS’ will not only be perceived by the relevant public in Spain but also by the public in countries where the local language version is similar to the Spanish word, such as in the Czech Republic, or where the public is likely to understand the English word for ‘ASOCIADOS’ – ‘associates’ – (such as in Sweden) which is also very commonly used in company names and is highly similar to the Spanish word. However, for the part of the public that will not understand the meaning of ‘ASOCIADOS’, it will be perceived as a fanciful word and will, therefore, be distinctive for this part of the public.

The perception of the earlier mark as referring to the female name ‘ARIANA’, the word ‘ARRIAGA’ as a surname and ‘ASOCIADOS’ in the contested sign as having no meaning, and thus being of normal distinctiveness, could help to further differentiate the signs and work against a likelihood of confusion on the part of the relevant public.

Therefore, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the relevant public that is unlikely to perceive the earlier mark as referring to a female name or ‘ARRIAGA’ as a surname but that is likely to perceive the word ‘ASOCIADOS’ as merely referring to ‘business associates’ and therefore as a weak element in the contested sign. This part of the relevant public would be more likely to confuse the signs and will therefore constitute the opponent’s best case scenario. In view of this, the assessment will proceed on the basis of consumers in countries where Ariana or Arriaga are not commonly known names or surnames and will therefore have no meaning but, at the same time, where the word ‘ASOCIADOS’ is likely to be understood as referring to ‘business associates’, such as the relevant public in the Czech Republic (where the local language version of ‘asociados’ is ‘asociace’) and Sweden (where the word ‘asociados’ is likely to be understood in view of its high similarity with the English word ‘associates’, which is a common English word, English being widely understood by the Swedish public).

The relevant territory for the purpose of the further assessment is therefore the Czech Republic and Sweden.

The fact that an element is descriptive or otherwise non-distinctive is not on its own sufficient to conclude that that word is negligible in the overall impression produced by that mark (judgment of 08/02/2011, T-194/09, Líneas aéreas del Mediterráneo, EU:T:2011:34, § 30). Moreover, the assessment of the similarity between two signs means more than taking just one component of a composite sign and comparing it with another sign. On the contrary, the comparison must be made by examining each of the signs in question as a whole.

The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements and, in the light of the above, although the element ‘ASOCIADOS’ will be perceived as a weak element, in view of its size and position within the composition of the contested sign, it is not a negligible element and it is still likely to make an impression on consumers and thus be remembered by them in the overall impression produced by the sign. Therefore, although weak, the element ‘ASOCIADOS’ of the contested sign cannot be disregarded in the comparison of the signs.

Visually, the first verbal element of the contested sign, ‘ARRIAGA’, coincides with the earlier mark, ‘ARIANA’, in the letters ‘AR*-I-A-*-A’. However, they differ in the additional ‘R’ in ‘ARRIAGA’, the different penultimate letters ‘G/N’ respectively and the particular type font used in the contested sign. The signs also differ in the additional verbal element ‘ASOCIADOS’ and the distinctive graphical elements in different shades of orange (whether perceived as abstract shapes or stylised ‘A’ letters) at the beginning of the contested sign. Therefore, the signs are only visually similar to the extent that they coincide in the sequence of the letters ‘AR*-I-A-*-A’ contained in the first verbal element of the contested sign. However, the double ‘RR’ in ‘ARRIAGA’, the stylisation of the letters ‘A’ and ‘G’ and the difference between the endings ‘AGA’ and ‘ANA’, are visually clearly perceptible which reduce the slight visual similarity between the signs based on the mere coincidence in the sequence of the letters ‘AR*-I-A-*-A’. In addition, as mentioned above, the contested sign has no elements that could be considered clearly more visually eye-catching than other elements. Therefore, in the overall visual perception of the signs in question, the differences in the only partly coinciding element as described above together with the additional graphical elements and the word ‘ASOCIADOS’ in the contested sign has the result that the overall impression of each sign is different.

 

Accordingly, the signs, considered as a whole, are, if at all, visually similar to a very low degree.

Aurally, as the double ‛RR’ in ‘ARRIAGA’ will be pronounced as one ‛R’ by consumers in the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛AR-I-A-*-A’, present identically in both signs. The pronunciation differs in the sound of the penultimate letters ‛G/N’ respectively and the additional word ‘ASOCIADOS’ of the contested sign, which has no counterpart in the earlier mark.

The applicant argues that the graphical elements in the contested sign will be pronounced as ‛A-A’ by consumers. In this respect, and even if the graphical elements were perceived as representing the letters ‛A’ by part of the public, the Opposition Division does not find it likely that the graphical elements would be pronounced by consumers when referring to the contested sign. Therefore, regardless of whether the graphical elements are perceived as ‛A’ letters or not, they will not be pronounced and will therefore have no impact on the aural comparison between the signs.

In addition, taking into account that the word ‘ASOCIADOS’ will be perceived as a weak element referring to ‘business associates’, and that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, which in the case of the contested sign, is the word ‘ARRIAGA’, phonetically the signs are similar to an above average degree.

Conceptually, the element ‘ASOCIADOS’, included in the contested sign, will be associated with the meaning explained above. However, in relation to the relevant services it will merely be perceived as referring to ‘business associates of ARRIAGA’. Since ‘ARRIAGA’ and ‘ARIANA’ do not have any meaning for the public in the relevant territory, the signs are not similar conceptually.

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 enjoys a high degree of distinctiveness as result of its intensive use and recognition among the relevant public.

In this respect, the opponent claims that Weizmann Ariana & Partners Intellectual Property Agency (the opponent), is one of the biggest intellectual property consultancy agencies in Romania, having more than 4000 clients from Romania, other EU countries and worldwide. It also puts forward that with more than 12 years of experience in this field, Weizmann Ariana & Partners has been named as one of the top companies submitting applications for registrations of trademarks and other industrial property rights. By way of evidence, the opponent submitted the following documents in support of its claims:

• an extract from the EUIPO’s statistical travel pack by country until receiving date 31/01/2014 showing that the opponent, Weizmann Ariana & Partners, was ranked third by number of EUTMs (258) filed on behalf of owners from Romania;
• an extract from the EUIPO’s statistical travel pack by country until receiving date 31/05/2015 showing that the opponent, Weizmann Ariana & Partners, was ranked first by number of EUTMs (377) filed on behalf of owners from Romania;
• an extract from the World Trademark Review titled “The World’s Leading Trademark Professionals 2016” with information about the top 25 filers gathered by Corsearch for the 12 months preceding 30 June 2015 in the selected jurisdictions. The extract shows that Weizmann Ariana & Partners Agentie De Proprietate Intelectuala is the top filer in Romania;
• an article from www.centruldepresa.ro related to Press Group Finmedia’s Gala Intellectual Property award in April 2012 showing that Weizmann Ariana & Partners was awarded as the Romanian industrial property agent with most marks at OSIM (the Romanian Patent and Trademark Office) in 2011;
• extracts from the opponent’s own website, www.weizmann.eu, with, for example, a statement dated 31/12/2014 that the opponent for the fourth time is the top leading IP agency in Romania according to OHIM statistics and a statement dated 31/12/2013 that according to trade marks OHIM statistics, Weizmann Ariana & Partners is the leading Romanian IP Firm; and
• an extract from www.zf.ro with an article text dated 05/05/2010 indicating that the law firm Weizmann purchased the biggest trade mark registration agency in Romania, Ariana, set up in 2004.

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 earlier trade mark must have acquired enhanced distinctiveness prior to the time of filing of the contested EUTM application (or any priority date). The contested EUTM application was filed on 10/08/2015 and the earlier mark must thus have acquired enhanced distinctiveness prior to this date (and still at the time of the decision).

Enhanced distinctiveness requires recognition of the mark by the relevant public and, in making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

The evidence of enhanced distinctiveness acquired through use must refer to both (i) the relevant geographical area and (ii) the relevant goods and/or services. The nature, factors, evidence and assessment of enhanced distinctiveness are the same as for reputation although the threshold for a finding of enhanced distinctiveness may be lower.

As regards the contents of the evidence, the more indications it gives about the various factors from which enhanced distinctiveness may be inferred, the more relevant and conclusive it will be. In particular, evidence which as a whole gives little or no quantitative data and information will not be appropriate for providing indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, will not be sufficient to support a finding of enhanced distinctiveness.

The evidence submitted by the opponent and summarised above essentially shows that the opponent, Weizmann Ariana & Partners, had filed 377 EUTM applications on behalf of Romanian owners by 31/05/2015, that it was the top filing firm of Romanian trade marks in 2014/2015 and that in 2012 it won an award as the industrial property agent with most marks at the Romanian Patent and Trademark Office in 2011. However, the evidence submitted does not give any information about the recognition of the earlier mark by the relevant public (which in any event is not ‘Weizmann Ariana & Partners’ but ‘ARIANA’) or the amount invested by the opponent in promoting the mark. In addition, the documents submitted also suggest that the opponent has been called Weizmann Ariana & Partners since sometime in 2010 and the evidence relates to the time period between 2011 and 2015. Although acquisition of enhanced distinctive character by a mark may be a result of its use as part of another registered trade mark (07/07/2005, C-353/03, Have a break, EU:C:2005:432, § 30-32), the opponent did not file any evidence to support that the earlier mark, ‘ARIANA’, might have acquired an enhanced distinctive character as a result of its use as part of ‘Weizmann Ariana & Partners’ (whether or not this is also registered as a trade mark) and none of the documents submitted refer to any apparent use of ‘ARIANA’ on its own.

In view of all the above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark has acquired an enhanced degree of distinctiveness through use for any services covered by the earlier mark.

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 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the services at issue are identical or similar and, for the reasons set out in section b) of this decision, the degree of attention of the relevant public when purchasing the relevant services will be high.

The earlier mark, ‘ARIANA’, has a normal distinctiveness and the signs have been found to be visually similar to a very low degree, if at all, aurally similar to an above average degree and conceptually not similar. Although the signs coincide in the letters ‘AR*-I-A-*-A’ in the first verbal element of the contested sign, consumers normally perceive a sign as a whole and do not proceed to analyse its various details. In this respect, the differences between the signs as a whole are rather striking, in particular in view of the distinctive graphical elements at the beginning of the contested sign, the double ‘RR’ in ‘ARRIAGA’, the stylisation of the letters ‘A’ and ‘G’, the difference between the endings ‘AGA’ and ‘ANA’ and, although weak, the additional word ‘ASOCIADOS’ in the same stylised type font and almost the same size as ‘ARRIAGA’. Moreover, for the reasons outlined in section b) of this decision, the services in question will be the subject of a more careful purchasing decision. Therefore, in the present case and even in relation to the services that are identical, the above average degree of aural similarity is insufficient to outweigh the substantial visual differences between the signs as a whole and the lack of conceptual similarity, in particular when taking into account that the level of attention displayed by the relevant public when it is looking to acquire the services concerned, will be high.

Taking all the above factors into account, the Opposition Division considers that the relevant public will be able to clearly distinguish the marks in dispute and will perceive them as coming from different undertakings.

Consequently, in spite of the coincidence of some of the letters in both signs, there is no likelihood of confusion in relation to any of the contested services on the part of the public in countries where the earlier mark, ‘ARIANA’, and the word ‘ARRIAGA’, will have no meaning but where the word ‘ASOCIADOS’ in the contested sign is likely to be understood as referring to ‘business associates’ and thus being of only weak distinctive character.  

As mentioned above, this would be the opponent’s best case scenario as the signs would be even less similar for consumers that perceive ‘ARIANA’ as referring to a female name (in view of the immediate concept it would evoke which is not present in the contested sign) and/or ‘ARRIAGA’ as a surname (which would also evoke a concept that is not present in the earlier mark) and/or the word ‘ASOCIADOS’ as a distinctive, fanciful word without any particular meaning which would also even further differentiate the signs. Therefore, consumers in such territories would be even less likely to confuse the signs in dispute. As a result, there is no likelihood of confusion for this part of the public either.

As there is no likelihood of confusion in any part of the territory covered by the earlier European Union trade mark, which includes Romania, the opposition must be rejected.

As indicated in the preliminary remark, the opponent has also based its opposition on the Romanian trade mark registration No 059 086 for the word mark ‘ARIANA’, registered for services in Classes 35 and 45 (with a narrower scope of services than the earlier European Union trade mark registration No 10 783 851 that was compared above).

Bearing in mind that the opponent’s evidence of enhanced distinctiveness was found to be insufficient as a whole, including in Romania, the distinctiveness of the earlier Romanian trade mark registration would also be seen as normal. As a result, even presuming that the earlier Romanian trade mark registration was proven to be used for all the services for which it is registered and on which the opposition is based, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services. Consequently, there is no need to re-open the adversarial part of the proceedings and request the opponent to furnish proof of use of the earlier Romanian trade mark registration No 059 086.

 

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anunciata SEVA MICO

Sam GYLLING

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.