OPPOSITION No B 2 610 148

Royal Financials SAL, 1145 Marfa'a, Cristal Blgd, Floor 1, Beirut Central District, Lebanon (opponent), represented by Modiano Josif Pisanty & Staub Ltd, Thierschstr. 11, 80538 München, Germany (professional representative)

a g a i n s t

Royal Forex Limited, Office no. 41, 224 Arch. Makarios III, 3030 Limassol, Cyprus (applicant), represented by Mapa Trademarks, Henao 7 - 5ª planta, 48009 Bilbao (Bizkaia), Spain (professional representative).

On 15/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 610 148 is partially upheld, namely for the following contested services:

Class 36: Financial and monetary services, and banking; real estate services; provision of prepaid cards and tokens.

2. European Union trade mark application No 14 460 208 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 460 208. The opposition is based on European Union trade mark registration No 14 587 935. 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 services

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

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

The contested goods services are the following:

Class 35: Business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services; advertising, marketing and promotional services.

Class 36: Financial and monetary services, and banking; real estate services; provision of prepaid cards and tokens.

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 35

The contested business assistance and business management services; commercial trading and consumer information services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The contested business administrative services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by inter alia employment agencies, auditors and outsourcing companies.

The contested business analysis, research and information services involve the analysis and interpretation of economic information, such as income, employment, taxes, and demographics. This research information is used by entrepreneurs to make business decisions such as establishing marketing strategies.

The contested advertising, marketing and promotional services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

On the other hand, the opponent’s insurance services consist of accepting liability for certain risks and respective losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingency occurs, such as death, accident, sickness, breaking of a contract and, in general, any event capable of causing damages. Financial and monetary services are offered by institutions like banks for the facilitation of various financial transactions and other related activities in the world of finance and currencies. Real estate affairs comprise real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of information related thereto. This mainly involves finding a property, making it available for potential buyers and acting as an intermediary.

In view of the foregoing, it is clear that the contested services in Class 35 are services of a different nature and purpose than the above services covered by the earlier mark. The services at issue are neither complementary nor in competition and they are not generally provided by the same companies or through the same trade channels. Therefore, they are dissimilar.

Contested services in Class 36

The contested financial and monetary services, real estate services are identically contained in both lists of services (including synonyms).

The contested banking; provision of prepaid cards and tokens are included in the broad category of the opponent’s financial affairs. Therefore, they are identical.

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 as well as at business customers with specific professional knowledge or expertise. The degree of attention is deemed higher than average. Indeed, financial services, target the general public, which is reasonably well-informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, the consumers’ level of attention would be rather high when choosing them (03/02/2011, R 0719/2010-1, f@ir Credit, § 15 - appeals T-220/11 and C-524/12 P, both dismissed). In addition, the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010-2, FIRST THE REAL ESTATE, § 21).

3. The signs

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 non-French- and non-English-speaking part of the relevant public that does not possess specific professional knowledge or expertise in the fields of the services found to be identical.

The earlier mark is a figurative mark consisting of the word ‘ROYAL’ written in big slightly stylised grey uppercase with the exception of the letter ‘A’ that is portrayed in white against a triangular grey background. Below this element is portrayed the word element ‘FOREX TRADING’ in small standard grey capitals.

The contested sign is a figurative mark consisting of the words ‘ROYAL FOREX’ written in standard dark blue uppercase preceded by a small figurative element in dark and light blue in which one may perceive a letter ‘F’.

The triangle in the earlier mark and the device on the left of the contested sign will merely be perceived as decorative elements and the fact that part of the public may actually perceive a letter ‘F’ in the latter doesn’t alter this perception in the least. Therefore, these decorative elements are less distinctive than the remaining elements of the signs at issue, in particular the word elements

In the professional banking industry, the term ‘FOREX’, included in both signs, is used as a contraction of the English expression ‘foreign exchange’, referring to the market in which currencies are traded. The English word ‘TRADING’ in the earlier mark is also used in the same professional environment to indicate the act of buying and selling goods and services either on the domestic (wholesale and retail) markets or on the international (import, export, and entrepôt) markets (see Collins Dictionary Online). In previous decisions of the Office, it was considered that the non-professional public was not likely to be acquainted with this abbreviation and that, therefore, consumers would not understand it (15/03/2016, R 1533/2015-4 FIREX/FOREX BANK (fig.) et al.). Nevertheless, the applicant considers that the public under analysis is acquainted with basic English financial terminology and that, therefore, the terms ‘FOREX’ and ´TRADING’ will be understood. For reasons of economy of procedure, the Opposition Division will assume that the public under analysis will understand these terms in view of their knowledge of basic English financial terminology as this is the best option for the applicant. As a consequence ‘FOREX’ is descriptive of some of the services found to be identical (eg. Financial, monetary and banking services) and weakly distinctive of others (real estate services) whereas the word ‘TRADING’ is descriptive of all these services. Therefore, these elements carry less weight in the comparison of the signs at issue.

The French and English word ‘ROYAL’, included in both signs, does not exist as such in the languages spoken by the public under analysis and similar terms in other languages have a different meaning, For instance ‘royaal’ in Dutch means abundant, copious, lavish, etc. As a consequence, ‘ROYAL’ is distinctive of the services at issue for the public under analysis which, although acquainted with basic English financial terminology in view of its experience in corresponding field, is not expected to have a more extended knowledge of this language or of French.

The element ‘ROYAL’ in the earlier sign is the dominant element as it is more eye-catching whereas the contested sign has no element that could be considered dominant (more eye-catching) than other elements.

Visually, the signs coincide in the letters ‘R-O-Y-A-L’ of the initial distinctive words of the signs at issue, which is dominant in the earlier mark. The signs coincide further in the letters ‘F-O-R-E-X’ of their second words. Therefore, the first two words of the earlier mark form the verbal element 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. In the present case, it must be borne in mind that apart from their respective stylisations not only the first but also the second words of the signs are identical.

The signs differ in the descriptive word element ‘TRADING of the earlier mark, in their respective stylisations as well as in their respective figurative elements described above which are merely decorative even if one could perceive an additional letter ‘F’ in the device placed on the left of the contested sign. In this respect, it should be noted in any event that 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).

In view of the foregoing, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the territory under analysis, the pronunciation of the signs coincides in the sound of the letters ‛R-O-Y-A-L’ and ‘F-O-R-E-X’, present identically in both signs. The pronunciation of the signs differs in the sound of the letters ‘T-R-A-D-I-N-G’ of the earlier mark which have no counterparts in the contested sign. Finally, it must be noted that, even if perceived at all, the additional letter ‘F’ of the contested sign, will not be pronounced in view of its decorative character.

In view of the foregoing, the signs are similar to a high degree.

Conceptually, as mentioned above, the triangle in the earlier mark and the device that could be perceived as containing a letter ‘F’ in the contested sign will both merely be perceived as decorative elements and therefore, the concepts they convey or may convey are of no importance to the public under analysis. As indicated above, the common element ‘ROYAL’ has no meaning for this public whereas the common element ‘FOREX’ and the word ‘TRADING ‘ of the earlier mark will be understood with the above meanings but in view of their lesser or non-distinctiveness they carry little weight in the comparison of the signs. In view of the foregoing, despite the coincidence in the weak or non-distinctive word ‘FOREX’ and the concepts conveyed by the triangle in the earlier mark and the device in the contested sign, the conceptual aspect bears no influence on 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 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, despite the presence of weak or non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, ‘Lloyd’, paragraph 26).

In the present case, the contested services are in part identical and in part dissimilar to the opponent’s services. The degree of attention of the relevant public is deemed higher than average and it is assumed that this public is acquainted with the basic English financial terminology. Not only do the signs coincide in an element with low or no distinctiveness, namely ‘FOREX’, they also coincide in their initial distinctive element ‘ROYAL’. This coincidence and the ensuing average visual and aural similarity between the signs clearly offset the differences between the signs which lay in descriptive and otherwise non-distinctive elements or elements with a lesser impact on the public under analysis. In view of the principle of interdependence and taking into account that even the public with a higher level of attention only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind, the Opposition Division finds that there is a likelihood of confusion on the part of the non-French- and non-English-speaking non-professional part of the public with a higher level of attention that is acquainted with the basic English financial terminology.

The applicant refers to case-law of the Court to support its arguments. However, the case referred to by the applicant (22/06/2010, T-490/08, Carbon Capital Markets, EU:T:2010:250) is not relevant to the present proceedings. Indeed, in that case, the coinciding weak or even non-distinctive elements were not accompanied by a common distinctive word element, let alone that they were preceded by such.

Considering all the above, the opposition is partly wellfounded on the basis of the opponent’s European Union trade mark registration. A fortiori there is a likelihood of confusion for the same part of the public in case this public were not to understand the financial terms employed in both signs as in such case these are distinctive of the services found to be identical. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sandra IBAÑEZ

Martina GALLE

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.