OPPOSITION No B 2 799 883

UK Fuels Limited, Eurocard Centre, Herald Park, Crewe CW1 6EG, the United Kingdom (opponent), represented by Laytons LLP, 2 More London Riverside, London  SE1 2AP, the United Kingdom (professional representative)

a g a i n s t

Einkaufsbüro Deutscher Eisenhändler GmbH, EDE-Platz 1, 42389 Wuppertal, Germany (applicant), represented by Mütze Korsch Rechtsanwaltsgesellschaft mbH, Trinkausstr. 7, 40213 Düsseldorf, Germany (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 799 883 is upheld for all the contested services.

2.        European Union trade mark application No 13 775 713 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 775 713 ‘’. The opposition is based on European Union trade mark registration No 12 741 757 ‘EDC’. 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 services

The services on which the opposition is based are, inter alia, the following:

Class 35:        Advertising; organisation, operation and supervision of sales and promotional incentive schemes; promotional services; business consultancy; business information; management of computer databases; compilation of information onto computer databases; organisation of exhibitions or trade fairs for commercial or advertising purposes; all the aforesaid connected with the sale of fuels, propellants, petrol, diesel, and associated services; retail services connected with the sale of fuels; consultation and advisory services relating to the aforesaid services; loyalty scheme services; loyalty card services; management of customer loyalty, incentive or promotional schemes; organisation and management of business incentive and loyalty schemes; organisation, operation and supervision of loyalty schemes and incentive schemes; organisation, operation and supervision of customer loyalty schemes; customer loyalty services for commercial, promotional and/or advertising purposes; market reporting services; all of the aforesaid services relating to the obtaining, purchase, sale and/or provision of fuel.

The contested services are the following:

Class 35: Advertising; business management.

Contested services in Class 35

Advertising includes, as a broader category, the opponent’s advertising; all the aforesaid connected with the sale of fuels, propellants, petrol, diesel, and associated services. 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 services business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

Therefore, the contested business management overlap with the opponent’s business consultancy; all the aforesaid connected with the sale of fuels, propellants, petrol, diesel, and associated services; since these categories overlap insofar as they both include consulting services provided to other businesses in relation to the sale of fuels etc. 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 relevant services in Class 35 found to be identical are directed at business customers with specific professional knowledge or expertise.

In these circumstances, the degree of attentiveness of the professionals may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services.

3. The signs

EDC
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 coinciding verbal element ‘EDC’ of the earlier mark and the contested sign has no clear meaning for the relevant public in relation to the services in question and is, therefore, distinctive.

The earlier mark ‘EDC’ is a word mark consisting of three letters. In the case of word marks, it is the verbal element as such which is protected, and not its written form. Therefore, it is irrelevant whether these letters are presented in upper or lower case letters.

In case of the contested sign, apart from the identical coinciding letters ‘eDC’ written in bold light blue standard typeface, of which the letter ‘e’ is in lower case and the letters ‘DC’ in upper case, this sign contains a curved figurative element (swoosh) in a lighter shade of blue in the top-left side above the letters ‘eD’. The lower case letter ‘e’ in the contested sign could possibly be seen as referring, inter alia, to something ‘electronic’, however taking into consideration that the remaining letters ‘DC’ would not bring to the mind of the consumers any specific connotations, the fact alone that the letter ‘e’ is written in lower case, is insufficient to make any assumptions as such. Therefore, the verbal element ‘eDC’ is fanciful as a whole.

As regards the contested sign which is figurative, it is clear that the letters ‘eDC’ will be the element noted by the consumers and attracting the most of their attention as the figurative element is of a purely decorative nature and lacks any distinctiveness on its own. Moreover, the figurative element occupies a marginal position and is depicted in a smaller size than the verbal component which can be considered the sign’s dominant element.

Visually, the signs coincide in the distinctive letters ‘EDC’ and differ in the slight stylisation of the letters in the contested sign and in the figurative element of the contested sign which has a secondary role for reasons given above.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛EDC’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a clear 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.

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 clear 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

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). In the present case due to the professional nature of all of the contested services in Class 35 found to be identical to the opponent’s services, the business public’s degree of attention may vary from average to high depending on specific circumstances guiding the purchase of these services. It should be noted that 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).

The distinctiveness of the earlier mark is normal. As showed above in the section a) all the contested services are found identical to the opponent’s services. The signs are visually similar to a high degree and aurally identical which is clear due to the coincidence of the three letters ‘EDC’ in both signs, that can be differentiated in the contested sign only by its additional embellishing element (a swoosh) of a purely decorative nature. The conceptual comparison cannot be executed since the verbal element ‘EDC’ is meaningless. Therefore, this aspect of the comparison will not influence on the assessment of the conflicting signs.

Consequently, in the circumstances of the case in question it is considered that there is a likelihood of confusion on the part of the relevant public because the differences between the signs are confined only to secondary elements.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 741 757. It follows that the contested trade mark must be rejected for all the contested services.

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

Solveiga BIEZA

Birgit FILTENBORG

Michele M. BENEDETTI-ALOISI

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.