OPPOSITION No B 2 189 002

EFS Euro-Finanz-Service Vermittlungs AG, Isaac-Fulda-Allee 5, 55124 Mainz, Germany (opponent), represented by Viering, Jentschura & Partner mbB, Grillparzerstraße 14, 81675 München, Germany (professional representative)

a g a i n s t

Exus Software Ltd, Tower 42, 25 Old Broad Street, London EC2N 1PB, United Kingdom (applicant), represented by Xenios L. Xenopoulos LLC Law Office, Aluminium Tower 5th Floor 2 Limassol Avenue, 2003 Nicosia, Cyprus (professional representative).

On 30/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 189 002 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 592 607 . The opposition is based on the German trade mark registration No 30 609 775 ‘EFS’. 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 goods and services

The services on which the opposition is based are the following:

Class 35: Corporate management, business consulting.

Class 36: Financial affairs, monetary affairs, in particular arranging financing, financial analysis, financial consulting and valuation for insurance, banking and real estate matters, services related to insurance, in particular services of agents and brokers.

The contested goods and services are the following:

Class 9: Computer software adapted for credit collection and recovery, loan origination, rating, and the Internet and mobile banking.

Class 42: Management of credit cycles, collection and recovery: risk assessment, portfolio segmentation, strategy definition, operational coordination and monitoring, reporting and analysis, management of agents and suppliers, loan origination: proposal preparation, definition and implementation of credit policies, approval of workflows, management of channels, management of documents, loan disbursement, point of sale support, reporting and analysis, rating: Definition, Scorecard, Expression Editor, online batch execution, reporting.

An interpretation of the wording of the list of the goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of services in Class 36, 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Generally speaking, services in Class 35 include, among others, services rendered by persons or organisations principally with the object of: help in the working or management of a commercial undertaking or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise. These services directly assist in the operation or management of the commercial enterprise of another entity.

The earlier services corporate management consist of the process of leading, administrating and directing a company. They might include strategic planning, as well as managing company resources and applying them toward attaining the company's objectives. Business consulting refers to a company or a professional that provides expert advice in a particular area.

The earlier goods in Class 36 are those which consist in activities relating to finance and monetary affairs, real estate transactions and insurance contracts. They are provided by specialised companies or professionals with certain knowledge of expertise in the specific field.

On the other hand, the contested goods computer software adapted for credit collection and recovery, loan origination, rating, and the Internet and mobile banking is the set of programs, routines, and symbolic languages that control the functioning of the hardware. These goods are applied to the banking sector.

In its observations, the opponent argues that the goods and services all relate to finance and they are supplementary or in competition to each other. It adds that the goods and services derive from the same commercial source.

However, it has to be noted that the fact that the contested goods in Class 9 are used and addressed at bankers, traders and users of the Internet banking services, does not render the goods and services similar. It is not common in the market for the manufacturer or creator of software to provide the actual banking and insurance services.

Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). This is not the case here therefore, the opponent´s argument must be put aside.

The contested goods computer software adapted for credit collection and recovery, loan origination, rating, and the Internet and mobile banking in Class 9 are different to the earlier services included in Classes 35 and 36 respectively. Not only they differ in their nature and purpose, but they are also provided or manufactured by different undertakings and are distributed through different channels. Therefore, the goods and services under comparison are dissimilar.

Contested services in Class 42

Services in Class 42, in general, are related to fields of the theoretical and practical aspects of the sciences and computer technology. They include services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities.

The contested services management of credit cycles, collection and recovery: risk assessment, portfolio segmentation, strategy definition, operational coordination and monitoring, reporting and analysis, management of agents and suppliers, loan origination: proposal preparation, definition and implementation of credit policies, approval of workflows, management of channels, management of documents, loan disbursement, point of sale support, reporting and analysis, rating: Definition, Scorecard, Expression Editor, online batch execution, reporting includes a variety of services which, among other activities, analyse and research on how to manage the different phases of a credit, to determine quantitative or qualitative estimate of risks or divide the portfolio into subsets. It also consists of activities related to the definition of new loans, the analysis and the preparation of reports, the definition of the criteria and methodologies applied to credit policies and the management of related documents.

The contested services management of credit cycles, collection and recovery: risk assessment, portfolio segmentation, strategy definition, operational coordination and monitoring, reporting and analysis, management of agents and suppliers, loan origination: proposal preparation, definition and implementation of credit policies, approval of workflows, management of channels, management of documents, loan disbursement, point of sale support, reporting and analysis, rating: Definition, Scorecard, Expression Editor, online batch execution, reporting in Class 42 are different to the earlier services included in Class 36 since the latter mainly relate to money matters whereas services in Class 42 refer to more theoretical and evaluation services.

The contested services are also different to the earlier services in Class 35 which are primarily business related services whereas the contested services in Class 42 are evaluations and reports which do not directly refer to the working or management of affairs.

The services under comparison have a different purpose, are provided by different undertakings and are distributed through different channels. Therefore, the services under comparison are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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.

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

María Belén IBARRA DE DIEGO

Carmen SANCHEZ PALOMARES

Ewelina SLIWINSKA

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.