OPPOSITION No B 2 261 397

Goodman Limited, Level 17, 60 Castlereagh Street, Sydney, NSW 2000, Australia (opponent), represented by Mishcon De Reya LLP, Africa House 70 Kingsway, London WC2B 6AH, United Kingdom (professional representative)

a g a i n s t

Dundee Corporation, 21st Floor, 1 Adelaide Street East, Toronto, Ontario M5C 2V9, Canada (applicant), represented by Taylor Wessing LLP, 5 New Street Square, London EC4A 3TW, United Kingdom (professional representative)

On 03/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 261 397 is upheld for all the contested services.

2. European Union trade mark application No 11 901 519 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 11 901 519. The opposition is based on, inter alia, European Union trade mark registration No 5 889 464. The opponent invoked Article 8(1)(b) and 8(5) EUTMR and, in relation to earlier non-registered rights, 8(4) 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 5 889 464.

1. The services

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

Class 36: Financial services; financial management services; investment services, including but not limited to investments in direct and indirect commercial/industrial real estate portfolios; capital investment services; property investment services; property investment banking services; wholesale and retail investment management services; capital raising services; debt and transaction restructuring; financing services; financial advisory services; financial management services; compliance and risk management services; valuation services; risk advisory services; funds management services; real estate services; real estate management services; real estate agency services; rental of property; real estate brokers; rent collection services; management of commercial/industrial real estate assets; management of listed and unlisted property trusts or specialised funds.

Class 37: Property development of commercial/industrial real estate assets.

The contested services are the following:

Class 36: Asset, portfolio and investment management services; creating, managing and administering mutual funds, investment funds, third party assets, tax assisted investments, real estate and resource assets and proprietary assets and investments; financial advisory services; financial planning and investment management services; administering life, accidental death and health insurance policies; administering banking, financial and estate planning services; capital markets services; investment banking services and underwriting of the sale of securities to the public, private placements and investment advisory services related to mergers and acquisitions, divestitures, restructurings and stock exchange listings, institutional sales and trading services; the selling, purchasing and trading of equity and equity related securities and fixed income securities; investment research services; the preparation of research reports and opinions to individual investors and institutional clients in connection with investment decision making, investment and exploration services relating to oil, gas and mining resources; private equity and merchant banking services relating to resources and real estate.

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

The term ‘including’ used in the opponent’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 (see the judgment of 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 asset, portfolio and investment management services; creating, managing and administering mutual funds, investment funds, third party assets, tax assisted investments, real estate and resource assets and proprietary assets and investments; financial advisory services; financial planning and investment management services; administering banking and financial planning services; capital markets services; investment banking services and underwriting of the sale of securities to the public, private placements and investment advisory services related to mergers and acquisitions, divestitures, restructurings and stock exchange listings, institutional sales and trading services; the selling, purchasing and trading of equity and equity related securities and fixed income securities; investment research services; the preparation of research reports and opinions to individual investors and institutional clients in connection with investment decision making, investment and exploration services relating to oil, gas and mining resources; private equity and merchant banking services relating to resources and real estate are included in the broad category of the opponent’s financial services. Therefore, they are considered identical.

The contested administering estate planning services are included in the broad category of the opponent’s real estate services. Therefore, they are considered identical.

The contested administering life, accidental death and health insurance policies is similar to the opponent’s financial services, as they have the same nature. They can coincide in their providers, their relevant public and their distribution channels.

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 or similar are directed at the public at large and business customers with specific professional knowledge or expertise. Taking into account that the services at issue may have important financial consequences, the degree of attention of the relevant public is expected to be rather high.

3. The signs

GOODMAN
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a word mark, ‘GOODMAN’.

The contested sign is a figurative mark consisting of the words ‘GOODMAN’, ‘&COMPANY’ and ‘INVESTMENT COUNSEL’. ‘GOODMAN’, which appears above the other words, is in a standard light-grey upper case typeface, whilst the words ‘&COMPANY’ are depicted underneath in a standard black upper case typeface, in a smaller size than the previous word. The words ‘INVESTMENT COUNSEL’ are depicted on the right hand side of ‘&COMPANY’, they are written in two different raws in a standard black upper case typeface and in a much smaller size than the rest of the words. Six quite thick light-grey arrows are depicted on the left-hand side of these words.

A part of the public will perceive the word ‘GOODMAN’ of the earlier mark as a surname, and another part may see it as an archaic Scottish English term meaning ‘husband’ or ‘a master of a household’ (see www.collinsdictionary.com). Another part of the public may split it into the words ‘good’ and ‘man’ and understand it accordingly. The mark has no element that could be considered more distinctive or more dominant (visually eye-catching) than other elements.

The word ‘GOODMAN’ in the contested sign will be perceived as already mentioned above. ‘&’ will be understood as the conjunction standing for ‘and’. The word ‘COMPANY’ has several meanings but in this particular context, it is likely to be understood as business enterprise. Finally, the words ‘INVESTMENT COUNSEL’ will be understood as referring to a body that provides advice and guidance on investments. Given the services in question, the words ‘&COMPANY’ and ‘INVESTMENT COUNSEL’ will be non-distinctive, as they will imply a body/an enterprise giving investment advice. The figurative element and the word ‘GOODMAN’ are therefore more distinctive. This mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they coincide in the distinctive element ‘GOODMAN’. However, they differ in the additional words ‘&COMPANY’ and ‘INVESTMENT COUNSEL’, which are non-distinctive, and in the figurative element of the contested sign. Given that the commonality between the signs lies in an element that has an independent and distinctive role in the contested sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the word ‘GOODMAN’, present identically in both signs and which has a distinctive role in the contested sign. The pronunciation differs in the words ‘&COMPANY’ and ‘INVESTMENT COUNSEL’ of the contested sign, which have no distinctiveness and no counterparts in the earlier mark. Therefore, the signs are aurally highly similar.

Conceptually, the relevant public will perceive in both signs the meaning(s) of ´GOODMAN´, as explained above. The contested sign also contains the figurative device and the English words ‘&COMPANY’ and ‘INVESTMENT COUNSEL’; the words will be understood as such by the public but, since they are non-distinctive, they barely have an impact. Therefore, the signs are conceptually similar to a high degree.

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.

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 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.

5. Global assessment, other arguments and conclusion

The contested services are identical or similar to the opponent’s services.

The signs are visually similar to an average degree and aurally similar to a high degree because they coincide in the word ‘GOODMAN’, which constitutes the earlier mark in its entirety and which plays an independent and distinctive role in the contested sign.

Furthermore, as explained above, the signs are conceptually highly similar.

Moreover, 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 describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). The figurative element in the contested sign will be, therefore, attributed less impact on part of the consumers.

The component that the signs have in common is the first word of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, taking all the above into account, although the degree of attention of the relevant public is high, the additional elements of the contested sign are not sufficient to counteract the commonality of the word ‘GOODMAN’. Therefore, the relevant public, when encountering the contested sign in relation to identical or similar services, is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.

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 5 889 464. It follows that the contested trade mark must be rejected in its entirety.

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 extensive reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Furthermore, as the earlier right No 5 889 464 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 grounds of the opposition, namely Article 8(4) and (5) EUTMR.

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Denitza STOYANOVA-VALCHANOVA

Sandra IBAÑEZ

Begoña URIARTE VALIENTE

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.