OPPOSITION No B 2 539 784

Blue Sky Group B.V., Prof. E.M. Meijerslaan 1, 1183 AV Amstelveen, the Netherlands (opponent), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative)

a g a i n s t

The Care Insurance Company Limited, 79 Prince Edward’s Road, Gibraltar, Gibraltar (applicant), represented by Mw Trade Marks Ltd., 88 Kingsway, London WC2B 6AA, United Kingdom (professional representative).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 539 784 is partially upheld, namely for the following contested services:

Class 36:        Financial, insurance, reinsurance and underwriting services; insurance broking; insurance administration; provision of insurance information; advisory and consultancy services relating to all the aforesaid services.

2.        European Union trade mark application No 13 785 671 is rejected for all the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 785 671. The opposition is based on Benelux trade mark registration No 900 057. 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.

1. The goods and services

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

Class 35:        Business administration; office functions; collection of data in a central file; systemization of data; providing trade information for consumers; business information services; business research; business review; business expertise; drawing up statistics; opinion polling; market research; market studies; market analysis.

Class 36:        Compiling, executing and managing of pension plans; pension fund management; fiduciary services; financial analysis; property management; information and consultancy relating to the aforesaid services; the aforesaid services whether or not provided via electronic channels, including the Internet.

Class 42:        Certification of products and services; quality certification services; quality control services; information and consultancy relating to the aforesaid services; the aforesaid services whether or not provided via electronic channels, including the Internet.

The contested goods and services are the following:

Class 16:        Printed matter, brochures, newsletters, leaflets, magazines.

Class 36:        Financial, insurance, reinsurance and underwriting services; insurance broking; insurance administration; provision of insurance information; advisory and consultancy services relating to all the aforesaid services.

Class 45:        Legal services; advisory and consultancy services relating to all the aforesaid services.

An interpretation of the wording of the opponent’s list of services is required to determine the scope of protection of these services. The term ‘including’, used in its list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, the term introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 goods in Class 16

The contested goods are all, by their nature, printed matter with different content, such as entertainment, informational, educational, etc., content. The opponent’s services are a variety of business management, business administration, office function and market research oriented services (Class 35), financial and property management services (Class 42) and quality and certification services and information thereof (Class 36). The opponent’s services are provided by companies specialised in the specific area of the given service, such as business consultants (for business management services), financial institutions (for financial services), etc. The provider of the opponent’s services would not be the manufacturer of the contested goods. Furthermore, even if some of the contested goods are used in the provision of the opponent’s services, this is not enough to find a similarity between them. The goods and services under comparison have different natures and methods of use, they are not necessarily complementary or in competition and they differ in their distribution channels. It follows that the contested printed matter, brochures, newsletters, leaflets, magazines are dissimilar to the opponent’s services in Classes 35, 36 and 42.

Contested services in Class 36

The contested financial services include, as a broader category, the opponent’s financial analysis; the aforesaid services whether or not provided via electronic channels, including the Internet. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested advisory and consultancy services relating to all the aforesaid services (financial services) overlap with the opponent’s consultancy relating to the aforesaid services; the aforesaid services (financial analysis) whether or not provided via electronic channels, including the Internet, as all of these services could cover the provision of advice (which is usually a word used synonymously with consultancy) within the area of financial analysis. It follows that these services are identical.

The contested insurance, reinsurance and underwriting services; insurance broking; insurance administration; provision of insurance information; advisory and consultancy services relating to all the aforesaid services are all, by their nature, insurance services, which consist of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages. Providing insurance services consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages.

The opponent’s financial analysis; the aforesaid services whether or not provided via electronic channels, including the Internet are services provided by financial institutions, including the process of evaluating businesses, projects, budgets and other finance-related entities to determine their performance and stability.

The contested services are of a financial nature and insurance companies are subject to licensing, supervision and solvency rules similar to those governing banks and other institutions providing financial services. Most banks also offer insurance services, including health insurance, or act as agents for insurance companies with whom they are often economically linked. Additionally, it is not unusual to see a financial institution and an insurance company in the same economic group.

Therefore, although the contested services and the opponent’s services have different purposes, they are of a similar nature, may be provided by the same undertaking or related undertakings and have the same distribution channels. Therefore, the contested insurance, reinsurance and underwriting services; insurance broking; insurance administration; provision of insurance information; advisory and consultancy services relating to all the aforesaid services are similar to the opponent’s financial analysis; the aforesaid services whether or not provided via electronic channels, including the Internet.

Contested services in Class 45

The contested services cover services rendered by lawyers, legal assistants and personal advocates to individuals, groups of individuals, organisations and enterprises. They require specialised knowledge and the providers of these services, due to the highly profiled expertise required (and some national restrictions in certain Member States for not exercising other commercial activities), would not be offering any of the opponent’s services in Classes 35, 36 or 42. Therefore, the relevant consumer would not expect the provider of the contested services to be the same as the provider of the opponent’s services. Furthermore, these services differ in their purpose and distribution channels. They are neither complementary nor necessarily in competition. It follows that these services are dissimilar.

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 are directed at the public at large and also at some business customers, such as those searching for specific financial plans for their business. However, since the relevant financial 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). As far as the relevant insurance services are concerned, the degree of attention is likely to vary from average to higher than average, depending on the subject matter/value of the insured goods/property/assets.

3. The signs

C.A.R.E.
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).

In the present case, the Opposition Division finds it appropriate, for reasons of procedural economy and to avoid examination of the meaning (or the lack of a meaning) of the verbal elements of the marks for different parts of the relevant public, to focus the comparison of the signs on the French-speaking part of the relevant public, for which the verbal elements ‘C.A.R.E.’ and ‘Care’ of the signs will have no meaning.

The earlier sign is a word mark consisting of the single element ‘C.A.R.E.’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial. The element ‘C.A.R.E.’ has no meaning for the relevant part of the public. It is, therefore, distinctive.

The element ‘C.A.R.E.’ of the earlier mark, even though its letters are separated by dots, is likely to be seen as a whole word and not as an abbreviation. Such a perception is easier for the consumer, who is prone to reading sequences of letters as words rather than as abbreviations, especially when the word is easier to pronounce than the abbreviation. The sequence at issue is most likely to be pronounced as a word, as it is not a combination of sequential consonants but a sequence that is easily pronounced.

The contested sign is a figurative mark consisting of the element ‘Care’ in dark-blue title case letters, written at an angle in a rather standard typeface. This element is placed against a background of four human silhouettes, namely of a man, a woman and two children, in white against a light-blue circle with a dark-blue border. The element ‘Care’ has no meaning for the relevant part of the public. It is, therefore, distinctive.

The figurative element in the contested sign is likely to be perceived by the relevant public as a depiction of a family. Bearing in mind that the relevant services are financial and insurance services, this element alludes to the purpose of the services, namely for family financial or insurance planning. It is, therefore, considered that this element is weak for all the relevant services.

The element ‘C.A.R.E.’ in the contested sign is the dominant element, as it is the most eye-catching, due to its central position within the sign and its dark-blue colour.

It is also noted that, when signs consist of both verbal and figurative components (which is true of the contested sign), 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).

Visually, the signs coincide in the sequence of letters ‘CARE’, albeit separated by dots in the earlier mark, forming the element ‘C.A.R.E.’ in the earlier mark and ‘Care’ in the contested sign. The signs differ in the dots in the earlier mark and the figurative element in the contested sign; however, this figurative element has a limited degree of distinctiveness for the relevant services.

Bearing in mind what has been stated above regarding the coincidences between the signs and the distinctiveness of their elements, the signs are considered visually similar to at least an average degree.

Aurally, reference is made to what has been stated above regarding the sequence of letters ‘CARE’ in the earlier sign, namely that, although the letters are separated by dots, it is likely to be pronounced as one word. It follows that the pronunciation of the signs coincides in the sequence of letters ‘CARE’. Therefore, the signs are considered aurally identical.

Conceptually, neither of the signs has a meaning for the relevant part of 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 (and even identical) 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 relevant part of the public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are dissimilar to the opponent’s services and the contested services are partly identical, partly similar and partly dissimilar to those of the earlier mark. The degree of attention will vary from average to high when choosing the relevant services.

It must be taken into account that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The signs are visually similar to at least an average degree and aurally identical due to the coinciding sequence of letters ‘CARE’, despite the fact that these letters are separated by dots in the earlier mark, while they constitute an undivided word in the contested sign. It is also noted that the differing figurative element of the contested sign is weak for the relevant services.

Moreover, as explained above, when signs consist of both verbal and figurative components (which is true of the contested sign), in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. Therefore, it is likely that the public, when encountering the contested sign, will focus on the sequence of letters ‘Care’. The figurative element of the contested sign, depicting a family, only highlights the purpose of the services in question. Therefore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It follows that the relevant public is likely to perceive the contested sign as a new line of services, such as a line related to family financial and insurance planning, covered by the earlier sign, even when the degree of attention is high.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘CARE’. In support of its argument, the applicant refers to several EU trade mark applications and registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘CARE’. Under these circumstances, the applicant’s claim must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the Benelux is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services cannot be successful.

COSTS

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

André Gerd Günther BOSSE

Irina SOTIROVA

Erkki MÜNTER

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.