OPPOSITION No B 2 754 011

Petr Hrubý, Plzeňská cesta 38, 32600  Plzeň, Czech Republic (opponent), represented by Irena Langrová, Skrétova 48, 301 00  Plzeň, Czech Republic (professional representative)

a g a i n s t

Innovazione e tecnologia, Centro direzionale is f12 int. 22,   80143 Napoli, Italy (applicant).

On 06/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 754 011 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 15 029 812, namely against all the services in Class 36. The opposition is based on Czech trade mark registration No 299 981. 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 36:        Insurance services, financial services.

The contested services are the following:

Class 36:        Provision of prepaid cards and tokens; Fundraising and sponsorship; Insurance underwriting; Valuation services; Financial and monetary services, and banking.        

The contested insurance underwriting services are included in the opponent´s insurance services.  They are identical.

The contested provision of prepaid cards and tokens; Fundraising and sponsorship; valuation services; financial and monetary services, and banking are included in or overlap with the opponent´s financial services.  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 are directed at the public at large, and at business customers with specific professional knowledge or expertise.

Given the nature of the services found to be identical 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 Czech Republic.

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 consists of the white letters ‘ok’ against a square background which is red in colour and placed in front of the word ’KARTA’, which is depicted in grey.

The contested sign is also a figurative mark. It is made up of a red sphere containing a slender white circle which is pierced by the glyphs of a grey device which represents the letter ’K’. Two words ‘ok’ and ‘card’ are depicted in a grey colour in characters of a smaller size below these elements.

The figurative element ‘KARTA’ of the earlier mark means card in Czech. It is of limited distinctiveness in relation to the relevant services, which are related to financial decisions and consequences, as financial information and funds can be accessed with cards. The figurative element depicting the word ‘OK’ of the earlier sign will be perceived by the Czech public as meaning satisfactory. Therefore, it is non-distinctive because it is merely a laudatory term ascribing the quality of being satisfactory to the relevant services. It assures the targeted consumer that the funds or information relating to the services involved may be accessed in an efficient or convenient way. 

As regards the  smaller words below the figurative device in the contested mark, the first element ‘Ok’ will convey the same non-distinctive meaning as described above, while the latter element ‘card’ will be understood by a significant proportion of the attentive Czech public as meaning card, which is of limited distinctive character for the reasons mentioned above.

Part of the public may perceive the word ‘OK’ in the figurative element, which is a non-distinctive word depicted in a very stylised manner. The stylisation confers some distinctiveness on this element. The distinctiveness of this element is lower than average.

Therefore, the contested mark´s circular device and its contents are clearly more distinctive than other elements. It is also the dominant element as it is the most eye-catching.

Visually, the signs coincide in the non-distinctive word ‘OK’ and in the letters ‘AR’, which are both placed in a secondary position in the contested sign. They differ in the remaining elements of each sign, namely the figurative element reproducing the stylised letters ‘O’ and ‘K’ superimposed on a red sphere in the contested sign, the letters ‘K–TA’ of the earlier sign (in grey), and the letters  ’c—d’ of the contested sign which are in a secondary position.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OK’, present identically in both signs, which will be pronounced phonetically as the English word ‛okay’ by the Czech public. The figurative element ‘OK’ of the contested sign, if perceived, will not be pronounced as it will be perceived as a repetition of the word element ‘OK’. In addition to coinciding in the sound of the non-distinctive word ‘OK’, the signs also coincide in the sound of the letters ‘KAR’ and ‘CAR’. They differ in the pronunciation of the endings of these words i.e. ‘TA’ of the earlier mark which has no counterpart in the contested sign, and ‘d’ of the contested sign which has no counterpart in the earlier sign. These similarities lie in components which are either non-distinctive or of limited distinctiveness.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with identical meanings, the signs are conceptually identical. However, their meanings render these elements either non-distinctive, or of limited distinctiveness, as described above.

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 mark must be seen as having limited distinctiveness for the reasons set out above, being made up of the non-distinctive, laudatory word ‘OK’ and the word ‘KARTA’, which is of limited distinctive character in relation to financial and insurance services, as it alludes to their accessibility with a card device. The colours and font deployed do not add any distinctive character to the sign overall. They are purely decorative.

5. Global assessment, other arguments and conclusion

The services are identical, and directed at both the public at large, and at business customers with specific professional knowledge or expertise

The signs coincide in the element ‘OK’. The signs are conceptually identical, but there is no likelihood of confusion because the coincidences are confined to elements which are either non-distinctive or of limited distinctive character, the aural and visual similarities are low and because the diverging elements suffice to distinguish the signs. The earlier mark is of limited distinctiveness as a whole. The visual impression of the signs perceived as a whole is very different. Moreover, the level of attention of the public will be high.

Considering all the above, even for identical services, 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Ana MUÑIZ RODRÍGUEZ

Keeva DOHERTY

Natascha GALPERIN

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.