OPPOSITION DIVISION
OPPOSITION No B 2 381 732
Tecnocasa Holding S.P.A., Via Monte Bianco 61/A, 20089 Rozzano, Italy
(opponent), represented by Loredana Gagliasso, Via Maria Vittoria N.6, 10123
Torino, Italy (professional representative)
a g a i n s t
FRW Bach GmbH, Am Sandtorkai 71-72, 20457 Hamburg, Germany (applicant),
represented by Wienke & Becker – Köln, Sachsenring 6, 50677 Köln, Germany
(professional representative).
On 06/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 381 732 is upheld for all the contested services, namely
Class 36 Real estate services, in particular consultancy and brokerage;
brokerage; research in connection with the selection of real
estate; financial appraisal and evaluation of real estate;
financial data base services; financial information, data, advice
and consultancy services; credit agencies; consultancy in
connection with real estate financing.
2. European Union trade mark application No 12 661 096 is rejected for all the
contested services. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 650.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the services of European Union
trade mark application No 12 661 096 for the word mark ‘TALOCASA’, namely
against all the services in Class 36. The opposition is based on European Union
trade mark registration No 9 968 652 . The opponent invoked
Articles 8(1)(b), 8(5) EUTMR.
Decision on Opposition No B 2 381 732 page: 2 of 7
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
the date of publication of the contested trade mark, the earlier trade mark has been
put to genuine use in the territories in which it is protected in connection with the
goods or services for which it is registered and which the opponent cites as
justification for its opposition, or that there are proper reasons for non-use. The
earlier mark is subject to the use obligation if, at that date, it has been registered for
at least five years.
The same provision states that, in the absence of such proof, the opposition will be
rejected.
The applicant requested that the opponent submit proof of use of the trade mark on
which the opposition is based, namely European Union trade mark No 9 968 652.
In the present case, the contested trade mark was published on 10/04/2014.
Earlier European Union trade mark No 9 968 652 was registered on 18/10/2011,
hence less than five years before the publication of the contested mark.
Therefore, the request for proof of use is inadmissible.
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.
a) The services
The services on which the opposition is based are the following:
Class 36 Assurance services; insurance; monetary affairs; real estate affairs,
trading, rental, rental-purchase financing and real estate procurement,
franchising in the field of real estate.
The contested services are the following:
Class 36 Real estate services, in particular consultancy and brokerage;
brokerage; research in connection with the selection of real estate;
financial appraisal and evaluation of real estate; financial data base
services; financial information, data, advice and consultancy services;
credit agencies; consultancy in connection with real estate financing.
Decision on Opposition No B 2 381 732 page: 3 of 7
An interpretation of the wording of the list of services is required to determine the
scope of protection of these services.
The term ‘in particular’ used in the applicant’s 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, it 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.
The contested real estate services, in particular consultancy and brokerage;
brokerage; research in connection with the selection of real estate are included in the
broader category of the opponent’s real estate affairs. Therefore, they are identical.
The contested financial appraisal and evaluation of real estate; consultancy in
connection with real estate financing; financial data base services; financial
information, data, advice and consultancy services; credit agencies are at least
similar, if not identical (due to an overlap, e.g. in case of financial information, data,
advice and consultancy services), to the opponent’s monetary affairs. As far as they
are not identical they are similar in nature and can coincide in provider, relevant
public, and distribution channels. Furthermore, they can be complementary.
b) 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 as well as at business customers with specific professional knowledge
or expertise.
Financial services target the general public, which is reasonably well informed and
reasonably observant and circumspect. However, since such 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).
The purchase and sale of property are business transactions that involve both risk
and the transfer of large sums of money. For these reasons, the relevant consumer is
deemed to possess a higher-than-average degree of attention, since the
consequences of making a poor choice through lack of attentiveness might be highly
damaging (decision of 17/02/2011, R 817/2010-2, FIRST THE REAL ESTATE (fig.) /
FIRST MALLORCA (fig.) et al., § 21).
Accordingly, the level of attention will be higher than average.
Decision on Opposition No B 2 381 732 page: 4 of 7
c) The signs
TALOCASA
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 unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The common sequence of letters CASA is meaningful in Spanish (meaning ‘house’).
However, as this meaning could be considered lowly or even non-distinctive for some
of the services in question, the Opposition Division considers it appropriate to focus
the comparison on the part of the public that does not understand Spanish and for
whom CASA will be meaningless and distinctive, such as English-speaking
consumers in the United Kingdom.
Part of the relevant public might perceive the letters TECNO as allusive of
‘technology’ or associate it with the English expression ‘techno’, a form of modern
electronic music with a very fast beat (see collinsdictionary.com). However, not all of
the public will perceive these meanings, given that the further letters CASA are
meaningless for them; hence, they will not necessarily split up the earlier mark but
may as well perceive it as a single, meaningless word. In any case, neither TECNO
nor CASA have any meaning in relation to the relevant services from the point of
view of the relevant public and are, therefore, distinctive.
The verbal element GROUP of the earlier mark is a common indicator of a group of
commercial undertakings and as such non-distinctive.
The contested mark TALOCASA will be perceived as a single meaningless word and
is, therefore, distinctive.
The stylisation of the word elements of the earlier mark is merely decorative and
therefore not distinctive. Furthermore, it includes a figurative device, consisting of a
circle and an angled device on top of it, which is rather simple but still distinctive.
However, when signs consist 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
Decision on Opposition No B 2 381 732 page: 5 of 7
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37). Therefore, the verbal element TECNOCASA is more
distinctive than the aforesaid figurative elements.
The co-dominant elements of the earlier mark are the word TECNOCASA in
conjunction with the figurative device preceding it. The non-distinctive word GROUP
is visually clearly inferior.
Visually, the signs coincide in the initial letter T and the sequence of letters OCASA
at the end of the word elements TECNOCASA and TALOCASA, hence in six out of
eight or nine letters respectively of those word elements.
They differ in the middle part, namely the letters ECN versus the letters AL.
Furthermore, they differ in the non-distinctive stylisation of the earlier mark and its
figurative device, which however, for the reasons set out above, will have less impact
on the consumer than the word element TECNOCASA.
The visually clearly inferior and non-distinctive word GROUP of the earlier mark has
only very little visual impact.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letter T and the
sequence of letters OCASA, present identically in both signs. The pronunciation
differs in the sound of the letters ECN versus the letters AL. The number of syllables
is the same and the overall intonation and rhythm of pronunciation is similar
(TEC/NO/CA/SA, TA/LO/CA/SA), also due to the aurally very similar sequence of
vowels (E-O-A-A versus A-O-A-A).
Given that it is non-distinctive, the word GROUP is not likely to be pronounced by the
relevant public when referring to the earlier mark. Also the figurative aspects of the
earlier mark have no impact on the aural comparison.
Therefore, the signs are aurally similar to an above-average degree.
Conceptually, for the part of the public that will perceive both signs as single,
meaningless words, a conceptual comparison is not possible and the conceptual
aspect does not influence the assessment of the similarity of the signs.
For the part of the public that might associate the letters TECNO of the earlier mark
with one of the meanings explained above, the signs are not conceptually similar as
the contested sign has no meaning for them.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
Decision on Opposition No B 2 381 732 page: 6 of 7
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
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 some non-distinctive elements in the mark, as stated
above in section c) of this decision.
e) 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 services are identical and similar and the signs are visually similar to an average
degree and aurally similar to an above-average degree. For part of the public they
are not conceptually similar. For another part of the public however, the conceptual
aspect does not influence the assessment of the similarity of the signs. The level of
attention will be higher than average and the distinctiveness of the earlier mark is
normal.
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).
Based on the fact that part of the public will perceive the signs as single words
without any meaning that might help them to differentiate between them, as set out
above under section c) of this decision, whilst there exist considerable visual and, in
particular, aural coincidences, a likelihood of confusion cannot be safely excluded.
That is because 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).
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public. As stated above in section c) of this decision, a
likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 9 968 652. It follows that the contested trade mark
must be rejected for all the contested services.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier mark, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its reputation, as claimed by the opponent. The result
would be the same even if the earlier mark enjoyed an enhanced degree of
distinctiveness.
Decision on Opposition No B 2 381 732 page: 7 of 7
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b)
EUTMR, there is no need to further examine the other ground of the opposition,
namely Article 8(5) EUTMR.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Swetlana BRAUN Tobias KLEE Sigrid DICKMANNS
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.