CANCELLATION No 10 706 C (INVALIDITY)

Compass S.P.A., Via Caldera, 21, 20153 Milan, Italy (applicant), represented by Barzanò & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milan, Italy (professional representative)

a g a i n s t

Equilor Investment Company Limited by shares, Montevideo street 2/C, 1037 Budapest, Hungary (EUTM proprietor), represented by Nagy Ajtony Csaba, Montevideo utca 2/C, 1037 Budapest, Hungary (professional representative).

On 19/09/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 12 500 419 is declared invalid for all the contested services, namely:

Class 36: Capital investments, securities brokerage, stocks and bonds brokerage, analysis (financial), financial consultancy, financial information, information (financial -), deposits of valuables.

3. The European Union trade mark remains registered for all the uncontested services, namely:

Class 35: Business research, business inquiries, business management and organization consultancy, business management consultancy, marketing studies, business organization consultancy, management (advisory services for business -), business information.

4. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against some of the services of European Union trade mark No 12 500 419, namely against all the services in Class 36. The application is based on Italian trade mark registration No 1 101 356. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the services of the marks are identical and that the marks under comparison are visually and aurally highly similar. Therefore, the applicant considers that there exists a likelihood of confusion on the part of the public.

The EUTM proprietor argues that the applicant’s website shows that it uses its earlier trade mark only in relation to specific services in Class 36, which are not similar to the services provided by the proprietor. In support of its observations, the EUTM proprietor submitted a page containing information about the applicant’s brand and an annual report for 2014 in relation to the EUTM proprietor’s brand to demonstrate its activities. Therefore, it considers that there is no likelihood of confusion between the marks.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH 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 services

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

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

The contested services are the following:

Class 36: Capital investments, securities brokerage, stocks and bonds brokerage, analysis (financial), financial consultancy, financial information, information (financial -), deposits of valuables.

The contested capital investments, securities brokerage, stocks and bonds brokerage, analysis (financial), financial consultancy, financial information, information (financial -), deposits of valuables are included in the broad category of, or overlap with, the applicant’s financial affairs, which consist in providing various services necessary for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business. Therefore, they are identical.

In relation to the EUTM proprietor’s arguments about the actual use in the market of the trade marks in conflict for different services, it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58). Moreover, it must be noted that, according to Article 42(2) EUTMR, actual use of the earlier mark needs be shown — and only be shown — if the EUTM proprietor requests proof of use. As long as the EUTM proprietor does not request proof of use, the issue of genuine use will not be addressed by the Office ex officio. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, it is the applicant’s rights and their scope of protection as registered that are relevant.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The relevant public’s degree of attention will be relatively high, considering that the services are specialised services that may have important financial consequences for their users (03/02/2011, R 0719/2010-1, f@ir Credit, § 15; 22/06/2010, T‑563/08, Carbon Capital Markets, EU:T:2010:251, § 33 and 61).

3. The signs

EQUILON	EQUILOR
Earlier trade mark	Contested trade mark

The relevant territory is Italy.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Neither of the marks under comparison will be associated with any meaning by the relevant public. Both marks have a normal degree of distinctiveness, as they are not descriptive, or are of limited distinctiveness for the relevant services for the public in the relevant territory.

Neither of the marks has any elements which could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘EQUILO’, present in both marks. It should be noted that the letters the marks have in common are at the beginning of the signs, which is the part that consumers generally tend to focus on when they encounter 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. The marks differ in their final letters, ‘N’ in the earlier mark and ‘R’ in the contested sign. Therefore, the marks are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘EQUILO’, present identically in both signs, and differs in the sound of their final letters, ‘N’ in the earlier mark and ‘R’ in the contested sign. The marks are composed of the same number of syllables and, therefore, they have the same rhythm and length. Therefore, the signs are aurally similar to a high degree.

Conceptually, as seen above, neither of the marks will be associated with any meaning by the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 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 appreciation of the 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 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The services under comparison are identical. The signs are visually and aurally similar to a high degree on account of the letters that the signs have common, ‘EQUILO’, and their similar overall structure and aural rhythm. The marks differ in only one letter, namely in their final letters, ‘N’ and ‘R’, which, due to their position at the end of the signs, are more likely to go unnoticed by consumers, who rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

All the aforementioned findings lead to the conclusion that the marks convey a highly similar overall impression.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is well founded on the basis of the applicant’s Italian trade mark registration No 1 101 356. It follows that the contested trade mark must be declared invalid for all the contested services.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Martina GALLE

Alexandra APOSTOLAKIS

Solveiga BIEZA

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 Cancellation 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.