OPPOSITION No B 2 588 898

Greyfield Real Estate GmbH, Europaplatz 2, 44269 Dortmund, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Growthpoint Properties Limited, The Place, 1 Sandton Drive, Sandton, Gauteng  2196, South Africa (applicant), represented by Norton Rose Fulbright LLP, 3 More London Riverside, London  SE1 2AQ, United Kingdom (professional representative).

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

DECISION:

1.        Opposition No B 2 588 880 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 874 011. The opposition is based on European Union trade mark registration No 13 143 656. 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 the following:

Class 35:         Advertising services relating to real property.

Class 36:         Estate brokerage; brokerage; financial consultancy; evaluation (financial -) [insurance, banking, real estate]; financing services; apartment house management; real estate management; real estate agency; property (real estate -) management; arranging finance for construction projects; real-estate valuations; warranty services; leasing of office space; renting of flats; arranging letting of real estate; accommodation (leasing of -) [apartments]; real estate consultations; estate planning; real estate procurement for others; property portfolio management; estate management; provision of information relating to property [real estate].

Class 37:        Construction of property.

The contested services are the following:

Class 35:        Advertising and business services; on-line advertising and business services; electronic commerce services, namely, providing information about products and services via telecommunications networks for advertising and sales purposes; accounting; business appraisal services; business advisory, information and consultancy services; business management; economic forecasting; marketing; compilation of information into computer databases; public relations; business administration and management services relating to property rental; tax research and investigation; dissemination of marketing and advertising materials; business merchandising display services.

Class 36:        Insurance, assurance, reinsurance, and consultancy services related thereto; actuary service of all kinds and descriptions; evaluation, assessment, valuation, loss adjusting, agency, brokerage, exchange, savings guarantee, security, swapping, deposit, clearing houses and underwriting services of all kinds and descriptions; provisions of financial reports and analysis all relating to risk management; estimating insurance risks, losses and liabilities; financial planning, auditing and consultancy services; claims settlement, management and control all relating to insurance claims, investment and investment trust services of all kinds and descriptions; asset acquisition and disposal services of all kinds and descriptions; real estate affairs, consultancy, investment procurement and valuation services, assessment and management of real estate, property brokerage services, leasing and renting of real estate, real estate agency and management services and rental collection, rental of office space and mortgage banking; advisory, information and consultancy services relating to all of the aforementioned services.

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 advertising and business services in Class 35 either include or overlap with the opponent’s advertising services relating to real property in Class 35. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested on-line advertising and business services overlap with the opponent’s advertising services relating to real property. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical.

The contested marketing services in Class 35 overlap with the opponent’s advertising services relating to real property in Class 35. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical. 

The contested public relations overlap with the opponent’s advertising services relating to real property in Class 35. Therefore, they are considered identical. 

The contested dissemination of marketing and advertising materials overlap with the opponent’s advertising services relating to real property. Therefore, they are considered identical. 

The contested business advisory, information and consultancy services are at least similar to the opponent’s advertising services relating to real property in Class 35, since said services may relate to advertising and may have the same purpose. They can also coincide in provider, relevant public and distribution channels.

The contested business merchandising display services are at least similar to the opponent’s advertising services relating to real property in that they share the same nature and common purpose of promoting goods or services. They can also coincide in provider, relevant public and distribution channels.

The contested electronic commerce services, namely, providing information about products and services via telecommunications networks for advertising and sales purposes are similar to a low degree to the opponent’s advertising services relating to real property, since they are both aimed at promoting the launch and/or sale of a company’s products/services, and may target the same undertakings seeking help with the promotion of their products/services.

The contested business management services in Class 35 are similar to a low degree to the opponent’s advertising services relating to real property, since they share a similar purpose and may coincide in their providers and their relevant public.

The contested business management services relating to property rental are similar to a low degree to the opponent’s advertising services relating to real property since they share a similar purpose and may coincide in their providers and their relevant public.

By analogy, the contested economic forecasting is also similar to a low degree to the opponent’s advertising services relating to real property in Class 35, since they share a similar purpose and may coincide in their providers and their relevant public.

The remaining contested accounting services; business appraisal services; compilation of information into computer databases; business administration services relating to property rental and tax research and investigation services in Class 35 are dissimilar to the opponent’s advertising services relating to real property. They are of a different nature, have a different purpose and come from a different provider. They are neither complementary nor are they in competition. The same conclusion must be reached when comparing these contested services with the opponent’s services in Classes 36 and 37. Indeed, the earlier services cover various financial, insurance and real estate services and respectively construction services. They differ in nature and purpose. Moreover, these services have different providers and distribution channels and are not usually in competition with or complementary to each other. Therefore, they are dissimilar.  

Contested services in Class 36

The contested insurance, assurance, reinsurance, and consultancy services related thereto; together with the advisory, information and consultancy services relating to all of the aforementioned services are either included in or overlap with the broad category of brokerage of the opponent’s mark. Therefore, they are identical.

The contested actuary service of all kinds and descriptions; evaluation, assessment, valuation, loss adjusting, agency, brokerage, exchange, savings guarantee, security, swapping, deposit, clearing houses and underwriting services of all kinds and descriptions; together with the advisory, information and consultancy services relating to all of the aforementioned services are identical to the opponent’s brokerage, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include or overlap with the contested services.

The contested provisions of financial reports and analysis all relating to risk management; estimating insurance risks, losses and liabilities; claims settlement, management and control all relating to insurance claims, together with the advisory, information and consultancy services relating to all of the aforementioned services overlap with the brokerage of the opponent’s mark. Therefore, they are identical.

The contested financial planning, auditing and consultancy services; together with the advisory, information and consultancy services relating to all of the aforementioned services are included in the broad category of the financing services of the opponent’s mark. Therefore, they are identical.

The contested investment and investment trust services of all kinds and descriptions; asset acquisition and disposal services of all kinds and descriptions; together with the advisory, information and consultancy services relating to all of the aforementioned services are included in or overlap with the broad category of the opponent’s financing services. Therefore, they are identical.

The contested real estate affairs, consultancy, investment procurement and valuation services, assessment and management of real estate, property brokerage services, leasing and renting of real estate, real estate agency and management services and rental collection, rental of office space; together with the advisory, information and consultancy services relating to all of the aforementioned services either include or overlap with the opponent’s real estate management services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are identical to the opponent’s services.

The contested mortgage banking; together with the advisory, information and consultancy services relating to all of the aforementioned services is either included in or overlaps with the opponent’s financing 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 (to various degrees) are directed at the public at large and also at business customers with specific professional knowledge or expertise. Given the nature of the services (business services in Class 35, financial, insurance and real estate services in Class 36) and the fact that they may have important financial consequences for their users, the relevant consumers are likely to display a relatively high level of attention.

3. The signs

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 a figurative mark. It contains the capital letter ‘G’ in a highly stylised way, depicted in white against a darker, square background. The contested sign is also a figurative mark. It contains the capital letter ‘G’ in a stylised way, depicted in white inside a white trapezoid against a midnight cherry background.

The element ‘G’ contained in both marks has no meaning for the relevant public in relation to the relevant services and is, therefore, distinctive.

As regards both signs, they are composed of a distinctive letter ‘G’ and a less distinctive figurative element. The respective backgrounds are of a rather decorative nature. Therefore, the most distinctive element of both signs is the letter ‘G’.

The marks have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in that they both depict the letter ‘G’ against stylised, geometric backgrounds. However, they differ in all other respects. In the earlier mark the letter ‘G’ is depicted in a thick white font with sharp corners. The mark features a trompe l´oeil effect with the white letter appearing to either emerge in relief from the contrasting darker background, or to be incised into a dark surface.  The white ‘G’ may alternatively be perceived as taking the form of a sharply angled white spiral set against a dark background, or even foreground. The contested mark, on the other hand, features a capital letter ‘G’ which is depicted in a narrower font inside a trapezoid against a contrasting, midnight cherry background. The trapezoid is set perpendicular to the letter ‘G’. The capital ‘G’ is depicted in an orthodox, rounded calligraphy and is striated by one small, oblique, dark line. The trapezoid frame gives some illusion of depth. Its skewed nature has the effect of reinforcing the conventionally flush ‘G’ letter set against it.

Although the letter ‘G’ is the most distinctive element in both signs, and in principle when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, in the present case account needs to be taken of the fact that the conflicting signs are short signs.

Indeed, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Therefore, the differing figurative elements of the signs, even if less distinctive than the letter ‘G’, still have an impact on the overall visual impression the signs create. Bearing in mind the foregoing and particularly the way the letter ‘G’ is portrayed in each sign, as described in detail above, the signs are visually similar to a low degree.

Aurally, the signs are identical because the only pronounceable element is the letter ‘G’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as the letter ‘G’, the signs are conceptually identical.  The figurative backgrounds of both marks do not alter the conceptual perception of the marks.

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 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, despite the presence of a rather decorative element in the mark as stated above in section c) of this decision.

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/or 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 contested services are partly identical, partly similar (to various degrees) and partly dissimilar to the opponent’s services.

The signs coincide to the extent that they feature the letter ‘G’ and geometric backgrounds.

Considering this, the way the letter appears in each sign is determinant. The letter ‘G’ is depicted in a very different manner in the two signs. As mentioned above, the signs are only visually similar to a low degree, and – in spite of the identity or similarity of some of the services – this is not sufficient to find a likelihood of confusion. The relevant consumer will be aware that letters of the alphabet are capable of being represented in very different ways. Furthermore, the length of the signs may affect the influence of their respective differences. The shorter a sign, the more easily the public is able to perceive all of its single elements. As described in the comparison of signs, the representation of the letter ‘G’ is very different in each trade mark thus clearly distancing them. The earlier mark is endowed with an average degree of distinctive character. The overall visual impression is that the signs are stylised in a sufficiently different way, such that the differences in their representation eclipse the common elements.

Given that the actual representations of the signs differ in significant ways, there is no risk that the relevant highly attentive consumers will be misled, despite the lack of direct comparison between the trade marks (22/03/2011, T-486/07, CA, EU:T:2011:104 §95).

Considering all the above, even taking into consideration that some of the services are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Milda CERNIAUSKAITE

Keeva DOHERTY

Oana-Alina STURZA

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.