OPPOSITION DIVISION
OPPOSITION No B 2 772 625
Union Investment Privatfonds GmbH, Weiรfrauenstr. 7, 60311 Frankfurt am Main,
Germany (opponent), represented by Rittershaus Rechtsanwรคlte
Partnerschaftsgesellschaft mbB, Harrlachweg 4, 68163 Mannheim, Germany
(professional representative)
a g a i n s t
Global Student Accommodation Group Limited, 94 Solaris Avenue, Camana Bay,
Grand Cayman KY1 1108, Cayman Islands (applicant), represented by Osborne
Clarke LLP, One London Wall, London EC2Y 5EB, United Kingdom (professional
representative).
On 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 772 625 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 15 208 515 for the figurative mark
, namely against all the services in Class 36. The opposition is based
on European Union trade mark registration No 6 650 221 for the word mark
โUniImmoโ and German trade mark registrations No 991 995 for the word mark
โUNIFONDSโ, No 991 996 for the word mark โUNIGLOBALโ, No 991 997 for the word
mark โUNIRAKโ, No 30 118 377 for the word mark โUniSECTORโ and No 39 759 619
for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
PROOF OF USE
Decision on Opposition No B 2 772 625 page: 2 of 10
Proof of use of the earlier mark was requested by the applicant. However, at this
point, the Opposition Division does not consider it appropriate to undertake an
assessment of the evidence of use submitted. The examination of the opposition will
proceed as if genuine use of the earlier marks had been proven for all the services
invoked, which is the best light in which the opponentโs case can be considered.
LIKELIHOOD OF CONFUSION โ 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:
EUTM No 6 650 221
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; capital
investments.
DE No 991 995, DE No 991 996 and DE No 991 997
Class 36: Investment affairs.
DE No 30 118 377 and DE No 39 759 619
Class 36: Investment affairs, insurance, financial affairs, monetary affairs, real
estate affairs.
The contested services are the following:
Class 36: Real estate and property services; real estate and property
management services; accommodation (rental of-) [apartments]; property portfolio
management; property consultancy services; provision, leasing and rental of housing
accommodation; rental or leasing of buildings; leasing and rental of residential and
commercial properties; management of residential and commercial properties;
management of property; provision of information relating to real estate and
accommodation; financial services; financial management in relation to
accommodation services; insurance services; provision of prepaid cards and tokens;
safe deposit services; risk management consultancy; advisory, consultancy and
information services in respect of the aforesaid services.
Some of the contested services are identical or similar to services on which the
opposition is based. For reasons of procedural economy, the Opposition Division will
not undertake a full comparison of the services listed above. The examination of the
Decision on Opposition No B 2 772 625 page: 3 of 10
opposition will proceed as if all the contested services were identical to those of the
earlier mark which, for the opponent, is the best light in which the opposition can be
examined.
b)Relevant public โ 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 consumerโs degree of attention is likely to vary
according to the category of goods or services in question.
The relevant financial and monetary services target business customers with specific
professional knowledge or expertise but also 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, consumersโ level of attention would be quite high when choosing them
(03/02/2011, R 719/2010-1, f@ir Credit (fig.) / FERCREDIT, ยง 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 relevant real estate services are directed at the public at large and at business
customers with specific professional knowledge or expertise. They 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., ยง 21).
c)The signs
(1) EUTM No 6 650 221
UniImmo
(2) DE No 991 995
UNIFONDS
(3) DE No 991 996
UNIGLOBAL
(4) DE No 991 997
UNIRAK
(5) DE No 30 118 377
UniSECTOR
(6) DE No 39 759 619
Decision on Opposition No B 2 772 625 page: 4 of 10
Earlier trade marks Contested sign
The relevant territory is the European Union as regards earlier mark (1) and
Germany as regards the other earlier marks.
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,
Sabรจl, EU:C:1997:528, ยง 23).
The element โImmoโ of earlier mark (1) will be understood by part of the relevant
public as this is a prefix used in several languages of the European Union with the
meaning of โbuildingsโ, โblock of flatsโ or โreal estateโ such as in French, Spanish,
Italian or German with the words โimmobilierโ, โinmobiliarioโ, โimmobiliareโ, or in
โimmobilienโ, respectively. This element is nondistinctive for some services, namely
for real estate affairs and weak for other relevant services, namely insurance;
financial affairs and capital investments as they may be related to the real estate
sector. However, as regards the opponentโs monetary affairs, it is considered that this
element does not describe or evoke any characteristics of the services.
However, for another part of the public, it has no meaning and is distinctive. The
Opposition Division will first examine the opposition in relation to the part of the public
for which โImmoโ has a meaning and is non๏ญdistinctive or has a low degree of
distinctiveness. Indeed, for the purposes of this comparison and bearing in mind that
similarities between signs are higher when the differences reside in non๏ญdistinctive or
weak elements, the Opposition Division will assess the signs from this perspective as
this is the most advantageous scenario for the opponent, namely that the above
element โImmoโ is non๏ญdistinctive or weak for the relevant services.
The element โFONDSโ of earlier mark (2) is the German word for โinvestment fundโ.
Bearing in mind that the relevant services are investment affairs, it is considered that
this element is non-distinctive for these services, as it describes them.
The word โGLOBALโ of earlier mark (3) means โworldwideโ in German. Bearing in
mind that the relevant services are investment affairs, it is considered that this
element is weak for these services, as it points to a global investment strategy.
The abbreviation โRAKโ of earlier mark (4) is a technical abbreviation for Renten,
Aktien, Kapital, meaning โstocks and bondsโ. Bearing in mind that the relevant
services are investment affairs, it is considered that this element is non-distinctive for
these services, at least for the professional public, as it points to an investment
strategy in stocks and bonds. For the public at large that likely will not associate any
meaning to it, it has an average degree of distinctiveness.
The element โSECTORโ of earlier mark (5) might be associated to the German word
Sektor. Bearing in mind the relevant services, it is considered that this element is
weak because it refers to a zone of action for the opponent or a part or subdivision of
its activity.
The element โASIAโ of earlier mark (6) indicates the geographical origin of the
relevant services or that they are closely related to Asian investment strategies.
Therefore, this term is considered non-distinctive.
Decision on Opposition No B 2 772 625 page: 5 of 10
The element โUNIโ in the earlier marks will be associated by German consumers and
part of the public in the European Union with โsomething single, unitary, union,
universal (25/11/2014, T 303/06 RENV & T 337/06 RENV, Uniweb, ยง 84-85). This
term has no clear and direct meaning in relation to the services at hand (25/11/2014,
T 303/06 RENV & T 337/06 RENV, Uniweb, ยง 87) and is considered to have an
average degree of distinctiveness. In relation to earlier mark (1), for some consumers
of the European Union, such as Polish, Czech or Swedish consumers, the element
โUNIโ will not be grasped because the element โImmoโ is not understood and the
earlier mark (1) will not be artificially dissected. Therefore, for these consumers, โUNIโ
has also an average degree of distinctiveness.
However, the perception of the element โUNIโ in the contested sign will be different for
the whole public in Germany and, at least, for most of the consumers in the
European Union because the English words โstudentโ (โStudentโ in German,
โstuderendeโ in Danish, โลกtudentโ in Slovak or in Slovenian, โStudente in Italianโ) and
โresidencesโ (โrรฉsidencesโ in French, residencias in Spanish, residรชncias in
Portuguese, โresidenzeโ in Italian, โresidensโ in Danish, โresidentiesโ in Dutch,
โResidenzโ in German, โฆ) will be understood. Therefore, these consumers will rather
associate the element โUNIโ with โuniversityโ. Bearing in mind that most of the
contested services are real estate related or that they may have some connections
with, the public will think that the services in question are related to housing for
university students. Therefore, it is considered that the element โUNIโ of the contested
sign is weak for German and most of the European Union consumers. As regards
some consumers of the European Union, in relation to earlier mark (1), the element
โUNIโ of the contested sign has no meaning and is therefore distinctive.
As the words โstudent residencesโ clearly indicates to most of the relevant consumers
that, at least, some of the contested services are related to housing accommodation
for students, these words are considered non distinctive for all the services related to
real estate affairs and weak for the others such as the contested financial or
insurance services because it indicates that these services are intended for students
and related with housing. For those consumers who do not understand these terms,
they are considered to have a normal degree of distinctiveness.
Contrary to the previous terms, the word โnestโ of the contested sign is understood
only in a few countries of the European Union. However, it exists as such in English,
in Dutch or in German (โNestโ). For those consumers, this term refers to โa person's
snug or secluded retreatโ (Extracted on 16/10/2017 from the online Oxford Living
Dictionaries, https://en.oxforddictionaries.com/definition/nest). Albeit this word refers
to a place to live, it is sufficiently original and imaginative to the extent that it does not
describe in a direct way the nature or the characteristics of the relevant services and
it does not materially affect its distinctiveness. For those who do not understand this
word, a fortiori this term is distinctive as it cannot be related to the services.
Although the signs have no element that could be considered clearly more dominant
than other elements, it must be pointed out that the verbal elements โuniโ and โnestโ of
the contested are nevertheless more eye๏ญcatching than the words โstudent
residencesโ because their size is slightly larger and their colour contrast more acute.
The opponent argues that the earlier trade marks, all characterised by the presence
of the same word component, โUNIโ, constitute a โfamily of marksโ or โmarks in a
seriesโ. In its view, such a circumstance is liable to give rise to an objective likelihood
of confusion insofar as the consumer, when confronted with the contested mark,
which contains the same word component as the earlier marks, will be led to believe
that the services identified by that mark may also come from the opponent.
Decision on Opposition No B 2 772 625 page: 6 of 10
In fact, the concept of the family of marks was exhaustively analysed by the General
Court in its judgment of 23/02/2006, T 194/03, Bainbridge, EU:T:2006:65.
When the opposition to a European Union trade mark is based on several earlier
marks and those marks display characteristics that give grounds for regarding them
as forming part of a single โseriesโ or โfamilyโ, a likelihood of confusion may be created
by the possibility of association between the contested trade mark and the earlier
marks forming part of the series. However, the likelihood of association described
above may be invoked only if two conditions are cumulatively satisfied.
Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all
the marks belonging to the series or, at the very least, of a number of marks capable
of constituting a โseriesโ. However, the evidence filed by the opponent to prove use of
all the marks belonging to the series does not have to be assessed in the present
case. For reasons of procedural economy, it is considered that the six earlier trade
marks are sufficient to form a โfamily of marksโ. However, it must be noted that five
out of six earlier marks are registered in Germany and only one earlier mark has the
protection for the whole European Union. Therefore, it is assumed that the six earlier
trade marks form a โfamily of marksโ but only for German consumers.
Secondly, the trade mark applied for must not only be similar to the marks belonging
to the series, but also display characteristics capable of associating it with the series.
This could not be the case where, for example, the element common to the earlier
series of marks is used in the contested trade mark in a different position from that in
which it usually appears in the marks belonging to the series and/or, more
importantly, with a different semantic content.
In this case, it is considered that German consumers will not associate the contested
sign with the opponentโs series of marks mainly for the following reasons:
๏ญAll the earlier marks comprise only one word whereas, in the contested sign, the
elements โUNIโ and โNESTโ are clearly separated as they are written in two
different lines.
๏ญAll the additional verbal elements of the earlier marks are weak or
non๏ญdistinctive whereas, contrary to what the opponent argues, the additional
word โNESTโ of the contested sign, as already explained, may have a
meaning in relation to the services but still has an average degree of
distinctiveness.
๏ญThe word โUNIโ in the earlier marks calls to mind a unified entity whereas, in the
contested sign, it refers to the concept of โuniversityโ, as the descriptive words
โstudent residencesโ make clear. Although this element is common to all the
marks in question, it has a completely different meaning in the earlier marks
and in the contested sign. Moreover, โUNIโ in the contested sign is weak for
the consumers in question. It is clear from case-law that marks may only be
regarded as forming part of the same series or family, inter alia, where they
reproduce in full a single distinctive element with the addition of a graphic or
word element differentiating them one from the other or where they are
characterised by the repetition of a single prefix or suffix taken from an
original mark (BAINBRIDGE, cited in paragraph 17 above, paragraph 123).
Decision on Opposition No B 2 772 625 page: 7 of 10
๏ญThe contested sign has additional figurative elements not present in the earlier
marks.
Accordingly, the contested sign will not be perceived by German consumers to fit into
the opponent's family of marks. It is considered that the signs in question have not
the same structure and that the element in common has not the same semantic
content. Therefore, the opponentโs claim must be set aside and the assessment of
similarity will be conducted to compare the contested sign individually with each of
the earlier marks making up the family.
When assessing the similarity of the signs, an analysis of whether the coinciding
components are descriptive, allusive or otherwise weak is carried out to assess the
extent to which these coinciding components have a lesser or greater capacity to
indicate commercial origin. It may be more difficult to establish that the public may be
confused about origin due to similarities that pertain solely to non-distinctive
elements.
Visually and aurally, the signs coincide in their first three letters โUNIโ. However,
they differ in all the additional elements of the earlier marks, namely โImmoโ in earlier
mark (1), โFONDSโ in earlier mark (2), โGLOBALโ in earlier mark (3), โRAKโ in earlier
mark (4), โSECTORโ in earlier mark (5), โASIAโ in earlier mark (6) and, as regards the
contested sign, the additional verbal elements โnestโ, โstudentโ and โresidencesโ.
Visually, the signs further differ in their figurative elements, namely the typeface
stylisations in earlier mark (6) and in the contested sign as well as the colours, the
circular shape and the positioning of the words in two lines in the contested sign.
Aurally, it is likely that, at least, part of the relevant publics will not pronounce the
words โstudent residencesโ but it must be taken into account that the additional and
distinctive element โNESTโ of the contested sign has four letters and the element
โUNIโ, in common, has only three.
Therefore, the signs are visually similar to a low degree and aurally similar to a below
average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. For the consumers in question, the signs will be
associated with different meanings or some semantic content will be grasped only in
one sign. Therefore, the signs are conceptually not similar.
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 marks
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 marks have been extensively used and enjoys
an enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in โGlobal assessmentโ). The examination will proceed
on the assumption that the earlier mark has enhanced distinctiveness.
Decision on Opposition No B 2 772 625 page: 8 of 10
e)Global assessment, other arguments and conclusion
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 11
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik,
EU:C:1999:323, ยง 18; 11/11/1997, C251/95, Sabรจl, EU:C:1997:528, ยง 22).
The services, assumed to be identical, are directed at the public at large and/or
business customers with specific professional knowledge or expertise. It is assumed
that the opponent proves the highest degree of distinctiveness of its family of marks.
However, other factors weigh against a finding of a likelihood of confusion: the
degree of attention of the relevant public is considered high and, as already
assessed in the comparison of the signs, consumers will not associate the contested
sign with the opponentโs series of marks to the extent that they do not present
sufficient characteristics in common and the element โUNIโ calls to mind different
concepts in the earlier marks and in the contested sign.
It has been found that the signs are visually similar to a low degree and aurally
similar to a degree that is below average. Furthermore, from the conceptual point of
view, the signs are not conceptually similar for the public taken into account.
In the present case, the best scenario for the opponent is when, as explained, the
additional and different elements of the earlier marks are understood because, in
such a case, they are devoid of distinctive character or weak and their impact is
limited. However, as regards German consumers, the element โUNIโ has a different
meaning and degree of distinctiveness in the earlier marks and in the contested sign.
Furthermore, contrary to the earlier marks, the additional element โNESTโ in the
contested sign has an average degree of distinctiveness. Therefore, the differences
between the signs are clearly perceivable and, taking into account the high degree of
attention of the consumers, sufficient to exclude any likelihood of confusion between
the marks.
As regards earlier mark (4) โUNIRAKโ, it must be pointed out that this absence of a
likelihood of confusion equally applies to the public at large for which the element
โRAKโ is distinctive. This is because, as a result of the distinctive character of that
additional element, that part of the public will perceive the signs as being even less
similar. The same occurs as regards earlier mark (1) โUniImmoโ. When taking into
account the part of the relevant public that will not grasp the meaning of the
additional element โImmoโ, the risk of confusion is even less likely because that
element would have an average degree of distinctiveness. Part of the relevant public,
such as Polish or Bulgarian consumers, may not associate the element โUNIโ with any
clear meaning in relation to the services. Therefore, this element may have an
average degree of distinctiveness in the contested sign. However, bearing in mind all
the differences between the earlier mark (1) and the contested sign and the fact that
all the components of earlier mark (1) are distinctive and that the additional element
โNESTโ of the contested sign also has a normal degree of distinctiveness, the visual
and aural coincidences in only three letters are not sufficient to create confusion on
the part of the public.
The Opposition Division has assumed in section d) of this decision that the earlier
marks have been extensively used and enjoy an enhanced scope of protection. The
examination of likelihood of confusion, therefore, is based on the premise that the
Decision on Opposition No B 2 772 625 page: 9 of 10
earlier marks have an enhanced degree of distinctiveness. Indeed, the more
distinctive the earlier marks, the greater will be the likelihood of confusion, and
therefore, marks with a highly distinctive character because of the recognition they
possess on the market, enjoy broader protection than marks with a less distinctive
character (29/09/1998, C-39/97, Canon, EU:C:1998:442, ยง 18). Nevertheless, in the
present case, the strong differences between the signs and the high attentiveness on
the part of the relevant public dispel confusion.
Considering all the above, even assuming that the services are identical and that the
earlier marks enjoy enhanced scope of protection, there is no likelihood of confusion
on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR, it is
unnecessary to examine the evidence of use filed by the opponent. Likewise, even
assuming that the earlier marks enjoy an enhanced distinctiveness due to extensive
use and reputation, the outcome of no likelihood of confusion remains the same.
Therefore, it is not necessary to examine the evidence of extensive use and
reputation.
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 opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Martina GALLE Benoit VLEMINCQ Boyana NAYDENOVA
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.
Decision on Opposition No B 2 772 625 page: 10 of 10
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.