OPPOSITION No B 2 783 481
Be Wiser Insurance Services Limited, Barrett House Savoy Close, Andover Hampshire SO10 2HZ, United Kingdom, (opponent), represented by Blake Morgan LLP, New Kings Court Tollgate, Chandler's Ford, Eastleigh, Hampshire SO53 3LG, United Kingdom (professional representative)
a g a i n s t
GroupL Financial Investment S.L., Avenida Diagonal 534 Ent. Izq. Oficina 18, 08006 Barcelona, Spain (applicant), represented by Bellavista Legal S.L., Av. Diagonal 463 bis 3r 4ª, 08036 Barcelona, Spain (professional representative).
On 02/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 783 481 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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 goods and services of European Union trade mark application No 15 487 788 for the figurative mark , namely against all the goods in Class 9 and all the services in Class 36. The opposition is based on the following earlier rights:
- United Kingdom trade mark registration No 3 068 422 for the figurative mark
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- United Kingdom trade mark registration No 3 068 436 for the figurative mark ;
- United Kingdom trade mark registration No 3 068 430 for the figurative mark ;
- United Kingdom trade mark registration No 3 068 135 for the word mark
‘BE WISER’; - United Kingdom trade mark registration No 3 009 812 for the word mark
‘BE WISER INSURANCE’; - United Kingdom trade mark registration No 2 629 364 for the figurative mark ;
- United Kingdom trade mark registration No 2 627 961 for the figurative mark ;
- United Kingdom trade mark registration No 2 627 960 for the figurative mark ;
- United Kingdom trade mark registration No 2 627 958 for the figurative mark ;
- United Kingdom trade mark registration No 2 627 957 for the figurative mark ;
- United Kingdom trade mark registration No 2 627 963 for the figurative mark ;
- United Kingdom trade mark registration No 2 545 849 for the figurative mark and;
- United Kingdom trade mark registration No 2 545 853 for the figurative mark .
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.
- The goods and services
The goods and services on which the opposition is based are the following:
Earlier marks No 1 to 3 as listed above:
Class 9: Computer games; computer software; publications in electronic form; downloadable electronic publications;
Class 36: Insurance services; brokerage advisory services relating to insurance for cars, motorcycles, vans, home and contents, motor caravans; insurance brokerage, financial services; financial affairs; travel insurance brokerage; breakdown insurance and membership brokerage.
Earlier marks No 4 to 13 as listed above:
Class 36: Insurance services; brokerage advisory services relating to insurance for cars, motorcycles, vans, home and contents, motor caravans; insurance brokerage, financial services; financial affairs; travel insurance brokerage; breakdown insurance and membership brokerage.
The contested goods and services, after limitation, are the following:
Class 9: Application software for mobile phones; handheld digital electronic devices and software related thereto; computer programs [downloadable software]; computer games programmes for simulating financial securities trading [software]; computer software programs for spreadsheet management; personal computer application software for managing document control systems; computer software designed to estimate costs; computer software for analysing market information; computer software relating to financial history; computer software for creating searchable databases of information and data; tax preparation software; computer software for processing market information; software for debt recovery; credit screening software.
Class 36: Financial affairs; Monetary affairs; None of the aforesaid relating to real estate affairs or insurance 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 goods in Class 9
The contested software related thereto [handheld digital electronic devices]; computer programs [downloadable software]; computer games programmes for simulating financial securities trading [software]; computer software programs for spreadsheet management; personal computer application software for managing document control systems; computer software designed to estimate costs; computer software for analysing market information; computer software relating to financial history; computer software for creating searchable databases of information and data; tax preparation software; computer software for processing market information; software for debt recovery; credit screening software are included in, or overlap with, the broad category of the opponent’s computer software in Class 9 of earlier marks 1-3. Therefore, they are identical.
Regarding the contested application software for mobile phones it is considered that applications are “programs or pieces of software designed to perform a function in order to meet a specific user requirement” (online Oxford English Dictionary). Therefore, these goods have the same nature as the opponent’s computer software. Moreover, they have the same method of use, they can be provided by the same producers, they are sold through the same distribution channels and the relevant public coincides for these goods. Therefore, they are considered highly similar.
Handheld digital electronic devices are considered similar to the opponent’s computer software in Class 9 of earlier marks 1-3 as these goods are complementary and target the same public. They have the same distribution channels and the same commercial origin.
Contested services in Class 36
Financial affairs; monetary affairs; none of the aforesaid relating to real estate affairs or insurance services are included in the broad category of the opponent’s financial services covered by all earlier marks. Therefore, they are identical.
- 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 goods and services found to be identical or similar to varying degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. A higher attention is expected with regard to the services in Class 36 as they 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 signs
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Earlier trade marks |
Contested sign |
The relevant territory is the United Kingdom.
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 signs are figurative marks and they are all composed of a fairly big depiction of part of an owl’s head, including its eyes and the orange beak. The depiction is very detailed and although stylised, consists of a rather realistic portrayal in the colours brown, yellow, orange, white and grey. In signs 1 and 2, underneath the figurative element, there is a smaller word element, namely ‘Be Wiser’, in sign No 1 and ‘Be Wiser Insurance’ in sign No 2, depicted in bold black standard capitalised characters. The remaining earlier right, No 3, is purely figurative as it consists solely of the depiction of the owl’s head as described above.
The contested sign is a figurative mark. The upper part of the sign depicts a graphical element in grey-scale that may be perceived as the head of an animal with closed eyes, a nose and ears pointing upwards. The opponent argues that it will be seen as an owl’s head. The Opposition Decision finds it rather unlikely as the depiction is very fanciful and it does not consist of a realistic portrayal of an animal but is rather made up of different geometric shapes that, if perceived as depicting the head of an animal at all, rather resembles a deer’s or fox’s head but in any event not a bird’s head. In the lower part of the sign a verbal element ‘WISE ADVICE’ is placed in large, slightly stylised black lower and upper case characters.
The depiction of an owl of the earlier marks will be seen as such by the relevant public. As it has no direct and clear meaning in relation to the goods and services in question, it is distinctive.
The verbal element ‘BE’ of the earlier sign will be understood by the relevant public as the imperative form of the verb ‘TO BE’, inviting the public to do something. The element ‘WISER’ means ‘'more sensible, more aware, or more informed’. The expression ‘BE WISER’ will be understood as a reference/invitation to ‘being 'more sensible, more aware, or more informed’’. These verbal elements will be perceived as an imperative slogan or encouraging message to make more informed choices and as such their distinctiveness is limited.
The word ‘INSURANCE’ of the earlier sign No 2 will be associated with an arrangement in which one pays money to a company which provides financial protection in relation to property, life, or health. Bearing in mind that the relevant goods and services are or can be (in case of computer software in Class 9) finance-related, this element is non-distinctive for these goods and services as it describes their nature or a characteristic.
In case of the earlier sign No 2, the expression ‘BE WISER INSURANCE’ as a whole, will be perceived as an encouragement to make more informed choices in the field of insurance. As such this expression is also considered to be of limited distinctiveness in relation to the goods and services in question.
The verbal elements of the contested sign, ‘WISE ADVICE’, will be understood as a sensible counsel or counsel prompted by wisdom or discernment. Bearing in mind that the relevant goods and services are IT-related and finance-related, this element is weak for the goods and services concerned, as it will be merely perceived as a laudatory message indicating that the goods and services consist of or relate to advice that is claimed to be well-informed.
The figurative element of the contested sign has no clear and obvious meaning in relation to the goods and services in question and is therefore distinctive.
The earlier purely figurative mark (sign No 3) and the contested sign have no element that could be considered clearly more dominant than other elements.
In the other two earlier trade marks (signs No 1 and 2), the figurative elements overshadow the verbal elements of the marks by virtue of their sizes and positions at the top. The figurative elements are the visually dominant elements of these earlier trade marks.
Visually, as seen above, the figurative element of the earlier signs depicts a rather realistic portrayal of an owl’s head presented in natural colours whereas the figurative element of the contested sign is a highly imaginative drawing of the head of an undefined animal head. As the purely figurative sign No 3 and the contested sign do not overlap in any element, they are considered visually dissimilar.
The remaining earlier signs (No 1 and No 2) and the contested sign coincide in ‘WISE*’ which is of limited distinctiveness. However, they differ in ‘BE’ and the final letter ‘R’ of ‘WISER’ of the earlier signs as well as ‘ADVICE’ of the contested sign. Additionally earlier sign No 2 contains the additional word ‘INSURANCE’, which is not present in the contested sign but is non-distinctive. As is the case in the comparison made above in relation to earlier sign No 3, earlier signs No 1 and No 2 also differ from the contested sign in their graphic representations and very distinct figurative elements which have a significant impact on the perception of the signs in view of their position within the signs and in particular in the earlier mark in which they are dominant.
Therefore, earlier signs No 1 and No 2 are considered similar to a very low degree to the contested sign.
Aurally, the pronunciation of earlier signs No 1 and No 2 and the contested sign coincides in the sound of the letters ‛WISE’, present identically in all signs. The pronunciation also differs in the sound of the letters ‛BE’ and ‘ER’ of earlier signs No 1 and No 2 and also in the sound of the word ‘INSURANCE’ of earlier sign No 2 and of the word ‘ADVICE’ of the contested mark.
Therefore, the signs are similar to a low degree.
With regard to the earlier sign No 3, it needs to be noted that purely figurative signs are not subject to a phonetic assessment. As this sign is purely figurative, the aural comparison with the contested sign cannot be performed.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Even if earlier marks No 1 and No 2 and the contested sign refer in some way to the concept of wisdom, the signs will be perceived as conceptual units where the coinciding word ‘WISE/R’ is used in different senses. Indeed, in the earlier signs, ‘BE WISER’ will be perceived as an instruction to consumers to be more sensible, to be more aware or more informed (in their choice of the goods or services concerned) whereas in the contested sign it defines the subsequent word, ‘ADVICE’, as being sensible counsel or counsel that is prompted by wisdom or discernment. Moreover, the figurative elements add to the conceptual differences between the signs as the earlier signs will be associated with the concept of an owl and the contested sign with the concept of a deer or fox or with no concept at all.
The opponent claims that the signs are conceptually similar or even identical as they contain the depiction of owls or at least animals. As explained above, it is rather unlikely that the relevant public should perceive a depiction of the head of an owl in the contested sign. It needs to be noted that, the mere fact that the two figurative elements can be grouped under a common generic term such as 'animals' by no means constitutes a case of conceptual similarity.
As the signs will be associated with different meaning, irrespective of the shared element 'WISE(R)', the signs are conceptually not similar.
BE WISER
BE WISER INSURANCE |
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Earlier trade marks |
Contested sign |
The relevant territory is the United Kingdom.
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 marks are the word marks ‘BE WISER’ and ‘BE WISER INSURANCE’ respectively.
Reference is made to the previous assertions concerning the semantic content conveyed by the marks compared above as these signs contain identical verbal elements as the previously compared signs No 1 and No 2.
Visually, the signs coincide in ‘WISE*’ which is of limited distinctiveness. However, they differ in ‘BE’ and final letter ‘R’ of the earlier signs as well as ‘ADVICE’ of the contested sign. Additionally, earlier sign No 5 and the contested sign also differ in the word ‘INSURANCE’ of the former, which is non-distinctive.
Therefore, the signs are similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛WISE’, present identically in all signs. The pronunciation differs in the sound of the letters ‛BE’ and ‘ER’ of earlier sign No 4 and in the sound of the non-distinctive word ‘INSURANCE’ of earlier mark No 5 as well as in the sound of the word ‘ADVICE’ of the contested mark.
Therefore, considering the weak distinctiveness of the coinciding word, the signs are similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks as outlined in the conceptual comparison made above.
As the signs will be associated with different meanings, the signs are conceptually not similar.
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Earlier trade marks |
Contested sign |
The relevant territory is the United Kingdom.
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).
All the earlier rights depict a standing owl in grey and white. On the right hand side of the owl depiction there are different verbal elements placed in the respective signs, namely ‘WORLD WISER’, ‘QUOTE WISER’, ‘INSURE WISER’, ‘BUY WISER’, ‘CALL WISER’, ‘WISER INSURANCE’ and ‘BE WISER INSURANCE’ (in two of the signs). These verbal elements are depicted in bold, black capitalised standard characters. Additionally, in earlier mark No 6, another figurative element on the right is placed above the word ‘WISER’, namely a circle.
The expression ‘WORLD WISER’ can be understood as having more experience and knowledge about the world.
The expression ‘QUOTE WISER’ will be understood by the relevant public as an indication that they will obtain a more informed quotation or estimate thanks to the services offered.
The expressions ‘INSURE WISER’ and ‘WISER INSURANCE’ will be seen as a promotional slogans indicating that thanks to the services offered by the opponent, one will be able to be insured in a more informed way.
The phrase ‘BUY WISER’ means to purchase in a more informed way and as such it serves merely as an instruction to use the opponent’s services to achieve this aim.
Lastly, the phrase ‘CALL WISER’ will be perceived as an instruction or encouragement to make a more informed call.
As already mentioned further above, the expression ‘BE WISER INSURANCE’ will be perceived as an imperative slogan or encouraging message to make more informed choices in relation to insurance.
As seen above, all the expressions included in the earlier marks have laudatory character as they will be perceived merely as promotional slogans and as such they are weak.
The earlier signs have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the weak element ‘WISE*’. However, they differ in the letter ‘R’ of the earlier signs and the respective additional verbal elements of all signs used in their respective promotional slogans (‘WORLD’, ‘QUOTE’, ‘INSURE’, BUY’, CALL’, ’BE’ and non-distinctive ‘INSURANCE’) and the word ‘ADVICE’ of the contested sign. The signs also differ in their distinct figurative elements which occupy substantial parts of all the signs. Additionally, the figurative elements are placed in different positions in the signs (to the left in the earlier signs and at the top in the contested sign). The owl in the earlier signs consists of a depiction of the whole owl and not only its head and is very different to the figurative element of the contested sign as already described above.
Therefore, the signs are visually similar to a very low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛WISE’, present identically in both signs. The pronunciation differs in the sound of the letters ‘ER’ of the earlier signs, the sound of the words ‘WORLD’, ‘QUOTE’, ‘INSURE’, BUY’, CALL’, ‘INSURANCE’, BE’ and ‘INSURANCE’ also included in the earlier rights respectively as well as ‘ADVICE’ of the contested mark.
Therefore, taking into account the weak distinctiveness of the coinciding word all the signs are aurally similar to a low degree in case of all earlier signs except sign No 11 which is aurally similar to a below average degree as the coincidence are placed in the first verbal elements of both signs.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As all the earlier signs will be associated with conceptual units that have different meanings to that of the contested sign, the signs are conceptually not similar.
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the earlier sign No 3 and the contested sign are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on this earlier right.
However, as all the other earlier signs have been found similar to the contested sign in at least one aspect of the comparison, the examination of likelihood of confusion will proceed on the basis of all other earlier rights invoked.
- Distinctiveness of the remaining earlier marks
The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se.
In the present case, all the remaining earlier figurative trade marks, each as a whole, have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of these figurative earlier marks must be seen as normal, despite the presence of some weak or non-distinctive elements in the marks, as stated above in section c) of this decision.
With regard to the earlier word marks No 4 and No 5, considering what has been stated above in section c) of this decision, the distinctiveness of these earlier marks must be seen as low for the services in question, namely financial services.
- Global assessment, other arguments and conclusion
In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison „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, § 22 et seq.).
In the present case, the goods and services have been found partly identical and partly similar to varying degrees and they target the public at large and business customers. The degree of attention will vary from average to high.
The signs have been found conceptually dissimilar. Indeed, irrespective of the shared element ‘WISE/R’, all the signs, each taken as a whole, evoke different concepts as explained above.
All the signs have been found to be visually similar to either a low degree (earlier word marks No 4 and No 5) or to a very low degree (earlier figurative signs). Aurally, the signs are similar to a low degree with the exception of earlier sign 11 which is, at best, similar to a degree that is below average for the reasons explained above in section c) of this decision.
The opponent further refers to the principle of imperfect recollection, according to which the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. The Opposition Division notes, however, that in the present case, an imperfect recollection of the signs can only bring the signs further apart in the consumers’ minds since they will keep in mind an overall impression of the signs in which the very visible and distinctive figurative element of the contested sign and, where applicable, the respective figurative elements of the earlier marks, will prime over the respective remaining elements of all signs at issue, more precisely over their non-distinctive or weak secondary elements, including the only coinciding verbal element, ‘WISE/R’, which is also of limited distinctiveness as such and is conceptually used in a different way.
Indeed, according to the established case-law, less attention will be paid to the elements that are weak or devoid of distinctive character and the existing differences between the signs have to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001-3, “ALLDAY AQUA/Krüger All Days” and 14/05/2001, R 0257/2000-4, “e plus/PLUS”). Therefore, in the present case, it is considered that the different distinctive figurative element included in the contested sign, and where applicable, in the earlier marks, are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the common elements are of limited distinctiveness for the relevant public and are not the dominant elements of the signs.
Therefore, no likelihood of confusion exists in relation to the earlier figurative marks with a normal degree of distinctiveness, since the signs merely coincide in the weak verbal element ‘WISE/R’ and its impact on consumers is limited even in relation to identical goods and services. The likelihood of confusion is even less likely in relation to the services in Class 36 for which the relevant public will display a higher degree of attention.
Likewise, there is no likelihood of confusion in relation to the earlier word marks, which have a low degree of distinctiveness, since the visual similarities are counterbalanced by the fact that the earlier word marks have been found overall weak and consequently, the scope of protection afforded by these earlier trade marks is limited.
Considering all the above, there is no likelihood of confusion on the part of the public in relation to any of the signs in dispute and the goods and services in conflict. Therefore, the opposition must be rejected.
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
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Sam GYLLING
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Katarzyna ZANIECKA |
Martina GALLE
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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.