OPPOSITION No B 2 511 908
Axia Real Estate Socimi, S.A., Calle José Ortega y Gasset 29 6ª Planta, 28006 Madrid, Spain (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)
a g a i n s t
Axiory Global Ltd., No. 5 Cork Street, Belize City, Belize (applicant), represented by Simona Hejdová, Koliště 13a, 602 00 Brno, Czech Republic (professional representative).
On 27/06/2017, the Opposition Division takes the following
1. Opposition No B 2 511 908 is partially upheld, namely for the following contested services:
Class 42: IT consultancy, advisory and information services; Software development, programming and implementation; Computer hardware development; Analytical services relating to computers; Computer system analysis; Design services for data processing systems; Design services relating to the creation of networks; Design services relating to the development of computerised information processing systems; Customization of computer hardware and software.
2. European Union trade mark application No 13 444 419 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
The opponent filed an opposition against all the services of European Union trade mark application No 13 444 419. The opposition is based on European Union trade mark registration No 13 110 441. 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 36: Real estate services.
Class 37: Building construction, Refurbishment, Cleaning and Maintenance of real estate and Building construction; Advisory services relating to the maintenance of buildings.
Class 42: Design of buildings; Inspection of buildings [surveying]; Planning [design] of building extensions; Advisory services relating to building design; Architecture; Construction drafting; Consultancy in the field of energy-saving; Architectural consultation; Design of interior decor; Material testing; Technical project studies; Surveying; Urban planning.
The contested services are the following:
Class 36: Fund investments; Fund investments; Mutual fund investment; Capital fund investment; Fund investments; Investment consultation; Mutual funds; Provident fund investment; Investment consultation; Brokerage services for capital investments; Maintaining escrow accounts for investments; Financial investment in the field of securities; Financial services relating to investment; Private placement and venture capital investment services; Financial and monetary services, and banking; Financial investment analysis and stock research; Computerised information services relating to financial business; Computerised information services relating to investments; Computerised information services relating to banking matters; Computerised financial information services; Financial and investment consultancy services; Financial information for investors; Financial information services relating to individuals; Financial information services relating to financial stock markets; Financial information services relating to financial bond markets; Financial advice relating to investment; Financial advisory services relating to securities; Financial advisory services for individuals; Financial advisory services for companies; Professional consultancy relating to finance; Capital investment consultation; Fund investment consultation; Investment consultation; Investment analysis; Information services relating to bonds; Information services relating to securities; Information services relating to stocks; Information services relating to the automated transfer of funds; Information services relating to banking; Information services relating to finance, provided on-line from a computer database or the Internet; Information services relating to the automated payment of accounts; Financial market information services; Computerised financial advisory services; Computerised financial analysis; Securities advisory services; Provision of information relating to accounts [financial]; Provision of information relating to financial services; Providing investors with financial information; Provision of computerised information relating to securities; Computerised financial data services; Preparation of financial analyses relating to bond markets; Preparation of financial analyses relating to securities; Provision of investment information; Provision of investment savings plans; Recording the transfer of securities; Recording of inter parties transactions in respect of finance; Issuing of statements of accounts; Recording of inter parties transactions in respect of investments; Recording of inter parties transactions in respect of stocks; Financial information processing; Comparison of performance of securities; Research services relating to investment; Research services relating to finance; Financial investment analysis and stock research; Financial economic analysis; Banking; International banking; Private banking; Financial banking; On-line banking services; Banking; Banking; Banking; Banking and financing services.
Class 42: IT consultancy, advisory and information services; Rental of computer hardware and facilities; Software development, programming and implementation; Computer hardware development; Hosting services and software as a service and rental of software; Updating of memory banks of computer systems; Updating websites for others; Analytical services relating to computers; Computer system analysis; Design services for data processing systems; Design services relating to the creation of networks; Design services relating to the development of computerised information processing systems; Data migration services; Customization of computer hardware and software.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 36
The contested services are finance-related, while the opponent’s services in Class 36 are real estate-related. Notwithstanding the opponent’s arguments that these are relatively common sectors and that consumers are used to seeing combinations of investment and real estate services, in fact consumers clearly distinguish real estate agents’ services from those of financial institutions. They do not expect a bank to find housing or a real estate agent to manage their finances. The mere fact that real estate may have to be financed in order to be purchased is not sufficient to find similarity between real estate affairs and financial services. Even though financial services can be important for the acquisition of real estate, consumers usually turn first to a real estate agent to search for a property and second to a financial institution to finance the property. Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service. It must therefore be concluded that these services are dissimilar even though financial services are essential or important for the use of real estate. Consumers would not attribute responsibility for both services to the same company (11/07/2013, T-197/12, Metro, EU:T:2013:375, § 47-51).
The contested services are also dissimilar to the opponent’s technical, building-related and consultancy services in Classes 37 and 42, which are provided by specialised contractors or undertakings with specific know-how, as they do not have the same nature, purpose, usual origin or distribution channels, and they are neither complementary nor in competition. The mere fact that they can target the same public does not in itself lead to a finding of similarity.
Contested services in Class 42
The contested IT consultancy, advisory and information services; software development, programming and implementation; computer hardware development; analytical services relating to computers; computer system analysis; design services for data processing systems; design services relating to the creation of networks; design services relating to the development of computerised information processing systems and customization of computer hardware and software services have some relevant commonalities with the opponent’s technical project studies. The latter essentially refer to the assessment of the technical resources available for any given project. This service helps customers to asses if the technical resources available are sufficient and whether the technical team is capable of converting the ideas into working systems. As assessing technical feasibility involves an evaluation of the hardware and software requirements of the proposed system, there is a close connection with the contested computer services. This is even more obvious in IT projects, the purpose of which is to design IT tools that are customised to the needs of a particular organisation/undertaking. Generally, feasibility studies precede technical development and project implementation stages, such as the programming, analysis and design of computer systems, and consulting related thereto. The circles of public that the services at issue target (e.g. business customers, organisations that look for project management support and execution) will expect such services to be offered under the control of the same undertaking. They are offered through the same dedicated channels. Therefore, these services are considered similar.
The remaining contested services in this class are dissimilar to any of the opponent’s services, which are related to real estate, construction, building advisory services and design. They have different natures, purposes and distribution channels, and they are not in competition with or complementary to each other. The mere fact that they can target the same public does not in itself lead to a finding of similarity.
- 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 similar are specialised services directed at business customers with specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication or terms and conditions of the purchased services.
- The signs
Earlier trade mark
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 a figurative mark containing a figurative element, which depicts a grey rectangle containing three white horizontal lines extending beyond the rectangle on its left-hand side, and, to the right of the figurative element, a verbal element, ‘AXIARE’, depicted in an ordinary bold upper case script, in grey. Neither of the two elements is dominant. Neither of the elements has a meaning, so they are distinctive. However, when a sign consists 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).
The contested sign is a figurative mark containing a single verbal element, ‘AXIORY’, in violet. The letter ‘X’ is fancifully stylised while the rest of the letters are depicted in an ordinary bold upper case script. The spaces between the letters are expansive. The word has no meaning for the relevant public and is distinctive.
Visually, the signs coincide in their first three letters, ‘AXI’, and in their penultimate letters, ‘R’, forming the sequence ‘AXI-R-’, present in the verbal elements of both signs. The signs also coincide in the number of letters of their verbal elements. The commonality in the first three letters is of particular importance, since consumers generally tend to focus on the beginning of a word 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 word (the initial part) the one that first catches the attention of the reader. However, the signs differ in their antepenultimate and last letters: the letters ‘A’ and ‘E’ in the earlier trade mark and the letters ‘O’ and ‘Y’ in the contested sign. Although the stylisations of the verbal elements are slightly different, as described above, there is no major point of visual difference on that account. However, the earlier mark also contains a figurative element. Therefore, the signs are visually similar to at least an average degree.
Aurally, at least in part of the relevant territory, for example in Lithuania, Latvia and Poland, the pronunciation of the verbal elements would coincide in the first three letters, ‘AXI’, and the penultimate letter, ‘R’, that is, in ‘AXI-R-’. The pronunciation differs in the signs’ antepenultimate and last vowels: ‘A’ and ‘E’ in the earlier trade mark and ‘O’ and ‘Y’ in the contested sign. Given that the signs have the same phonetic structure on account of the same consonant sequence, and bearing in mind that the figurative element of the earlier sign will not be pronounced, the signs are aurally highly similar.
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.
- 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 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
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).
The signs are visually similar to at least an average degree and aurally highly similar for at least a part of the relevant public; the conceptual aspect does not influence the assessment of the similarity of the signs. Since the services that are relevant for the assessment of likelihood of confusion are similar, it is highly conceivable that the relevant consumer would perceive the contested sign as a variation of the earlier mark. 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).
In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks for services in Classes 36 and 42 that include the letters ‘AXIA’ at their beginnings, without, however, supporting this assertion with any facts or evidence. The Opposition Division notes that the existence of several trade marks is not per se conclusive, as it does not necessarily reflect the situation in the market. In the absence of any further arguments, it cannot be assumed that such trade marks have been effectively used, or that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the string of letters ‘AXIA’. Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, and based on the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the public, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 110 441.
It follows from the above that the contested trade mark must be rejected for the services found to be similar to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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.