OPPOSITION No B 2 451 550

Tradimo Limited, 57/63 Line Wall Road, Gibraltar (opponent), represented by Taylor Wessing LLP, 5 New Street Square, London EC4A 3TW, United Kingdom (professional representative)

a g a i n s t

TradoLogic Solutions, 95 Arch Makarios Avenue, Charitni Building, 2nd Floor, 1071 Nicosia, Cyprus (applicant).

On 08/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 451 550 is upheld for all the contested services.

2. Community trade mark application No 12 612 909 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 Community trade mark application No 12 612 909. The opposition is based on Community trade mark registration No 10 163 947. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 goods and services on which the opposition is based are, inter alia, the following:

Class 36: Financial services; financial services relating to betting and spread betting, including such services provided via the Internet; financial services relating to betting and spread betting on stock indices, shares, currencies, commodities, financial derivatives, investment fund units, interest rates and bonds, including such services provided via the Internet; financial services relating to dealing in stock indices, shares, currencies, commodities, financial derivatives, investment fund units, interest rates and bonds, including such services provided via the Internet; financial advisory, consultancy and information services relating to betting and spread betting, including such services provided via the Internet; financial advisory, consultancy and information services relating to betting and spread betting on stock indices, shares, currencies, commodities, financial derivatives, investment fund units, interest rates and bonds, including such services provided via the Internet; financial advisory, consultancy and information services relating to dealing in stock indices, shares, currencies, commodities, financial derivatives, investment fund units, interest rates and bonds, including such services provided via the Internet; financial advisory, consultancy and information services relating to stock indices, shares, currencies, commodities, financial derivatives, investment fund units, interest rates and bonds, including such services provided via the Internet; bank card, credit card, debit card, prepaid card and electronic payment card services; credit card payment processing; electronic payment services; payment services over the Internet and other communications networks; electronic wallet services; financial payment services; payment administration services; payment processing; payment transaction card services; processing electronic payments made through prepaid cards; remote payment services; telegraphic payment services; issuing of tokens of value in relation to customer loyalty schemes.

Class 41: Betting and spread betting services, including such services provided via the Internet; betting and spread betting services relating to stock indices, shares, currencies, commodities, financial derivatives, investment fund units, interest rates and bonds, including such services provided via the Internet; advisory, consultancy and information services relating to betting and spread betting, including such services provided via the Internet; education and training services; education and training services relating to betting and spread betting, including such services provided via the Internet; education and training services relating to betting and spread betting on stock indices, shares, currencies, commodities, financial derivatives, investment fund units, interest rates and bonds, including such services provided via the Internet; education and training services relating to dealing in stock indices, shares, currencies, commodities, financial derivatives, investment fund units, interest rates and bonds, including such services provided via the Internet; education and training services relating to stock indices, shares, currencies, commodities, financial derivatives, investment fund units, interest rates and bonds, including such services provided via the Internet.

The contested services are the following:

Class 36: Financial services relating to buying and trading of commodities.

Class 41: Gaming services; On-line gaming 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 services in Class 36

The contested financial services relating to buying and trading of commodities are included in the broad category of the opponent’s financial services. Therefore, they are considered identical.

Contested services in Class 41

The contested gaming services; on-line gaming services include, as a broader category, the opponent’s betting and spread betting services, including such services provided via the Internet. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the holder’s services, they are considered identical to the opponent’s services.

2. The signs

TRADIMO	TRADINO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in their first five letters, ‘TRADI’, and in their last letter, ‘O’. However, they differ in their penultimate letters, namely ‘M’ in the earlier mark and ‘N’ in the contested sign. Therefore, the two signs are visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘TRADI’ and ‘O’, present identically in both signs, and to that extent the signs are aurally similar. In addition, the length and the number of syllables in each sign are identical, which results in similar rhythms and intonations. The pronunciation differs only in the sound of the penultimate letter, that is, ‘M’ in the earlier sign and ‘N’ in the contested mark. However, this is not a very considerable difference, since both phonemes are nasal consonants.

Conceptually, neither of the signs has a meaning for 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.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive or dominant (visually eye‑catching) than other elements.

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

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. 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.

The degree of attention of the public for services in Class 41 is average. For services in Class 36, the degree of attention will be high considering that the services may have important financial consequences for consumers (decision of 03/02/2011, R 719/2010-1 – ‘f@ir Credit’, paragraph 15. Appeals before GC, T‑220/11, and before CJUE, C‑524/12 P, dismissed).

6. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C‑39/97, ‘Canon’, paragraph 17 et seq.).

The services at issue are identical, which brings into consideration the abovementioned principle of interdependence, whereby a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and services. The signs are visually and aurally similar because they have in common six letters of the seven that constitute each of the two marks.

Most of the letters that the signs have in common are placed at the beginning of the signs. 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. Consequently, the identical first letters of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks. The differing letters are placed almost at the end of the signs, where it is more likely that they will go unnoticed by consumers.

Taking into account the above, and in particular the facts that the marks differ only in their penultimate letters and that the services are identical, it is considered that the relevant public, including consumers with a higher degree of attention, might be led to believe that the relevant services come from the same undertaking or from economically linked undertakings.

The applicant argues that its CTM has reputation and filed various pieces of evidence to substantiate this claim.

The right to a CTM begins on the date when the CTM is filed and not before, and from that date on the CTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the CTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the CTM are irrelevant because the rights of the opponent, insofar as they predate the CTM, are earlier than the applicant’s CTM.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration. It follows that the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Frédérique SULPICE

Begoña URIARTE VALIENTE

Pedro JURADO MONTEJANO

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.