OPPOSITION Nо B 2 656 828

 

Lia Advisory (Malta) Ltd, 26 St. Barbara Bastions, VLT 1961 Valletta, Malta (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative) 

 

a g a i n s t

 

Lia Trade Marks Limited, 1 Finsbury Circus, London EC2M 7SH, United Kingdom (applicant)

 

On 18/11/2020, the Opposition Division takes the following

 

 

DECISION:

1. Opposition No B 2 656 828 is upheld for all the contested services.

2. European Union trade mark application No 14 652 408 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 14 652 408  (figurative mark), namely against all the services in Classes 35, 36, 41. The opposition is based on, inter alia, European Union trade mark registration No 14 187 901 (figurative mark). 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.

 

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 14 187 901.

 

a) The services

 

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

 

Class 35: Business management; business administration; professional business consultancy; business management and organisation consultancy; business management consultancy; advisory services for business management.

Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs; financial services; financial services, namely, financial planning, financial research, financial management, financial consultation; investment services; investment services, namely, those concerning mutual fund investment, hedge fund investment, private equity fund investment, fund of funds and multi-manager investment, direct investment, equity and debt investment, investments through pooled funds, private equity investment, trading in bonds and equities and currency trading; investment services, namely, fixed asset investment in real estate, holding companies, oil and gas; financing and treasury management services; financial consultancy services; financial management services; fund, portfolio, asset and property management services; fund investments; investment advisory services; investment management services; capital investments; mutual funds, namely, mutual fund distribution and establishing mutual funds for others; financial information; stock exchange quotations; insurance information; financial evaluation for insurance purposes; charitable collections in the nature of fundraising; real estate services, including real estate investments; provision of information relating to the real estate property market in the field of real estate values; pricing information services, namely, quotation of stock market prices; investment information services; information about stock broking services; provision of information relating to shares prices, and corporate savings account services; provision of information relating to real estate and real property in the field of evaluation of real property; computerised financial information relating to commodities and securities; computerised financial services for retail businesses; provision of financial information relating to rates of exchange; real estate property appraisal services; real estate property brokerage services; real estate property consultancy services; real estate property evaluation services; real estate property financing services; real estate property investment services; real estate rental property management services; real estate property development services; estate trust management services relating to real estate and property; financial services relating to the acquisition and sale of property; collection of credit sales being credit recovery and collection services; collection of payment being rent; financial administration of stock exchange trading of shares in financial markets; brokerage of shares; computerised information services relating to share prices; financial management of shares; financial information relating to shares; financial services, namely, the trading of shares; automated banking services relating to electronic charge card and credit card transactions; computerised information services relating to banking matters; providing information about banking services; providing financial information, namely the provision of financial news.

Class 41: Education; providing of training; educational services, namely classes and seminars in the field of financial and business matters; training services in the field of financial and business matters; arranging and conducting of educational conferences, congresses, seminars, symposiums and training workshops; news reporting services, namely the provision of financial news.

The contested services are the following:

Class 35: Business management; business administration; business consultancy.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial services; asset allocation among investment classes of equities, fixed income and alternatives including hedge funds, commodities and property; organizing and investing in infrastructure, industrial, housing, hospitality, agricultural and commercial greenfield and brownfield projects and in natural resource development; management of reserves of proprietary and fiduciary funds; provision of financial news.

Class 41: Education; providing of training.

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 applicant’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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

The term ‘namely’ used in the opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

 

Contested services in class 35

Business management; business administration and business consultancy are identically contained in both lists of services.

Contested services in class 36

Insurance; financial affairs; monetary affairs; real estate affairs; financial services and provision of financial news are identically contained in both lists of services (including synonyms).

The contested services, asset allocation among investment classes of equities, fixed income and alternatives including hedge funds, commodities and property; organizing and investing in infrastructure, industrial, housing, hospitality, agricultural and commercial greenfield and brownfield projects and in natural resource development and management of reserves of proprietary and fiduciary funds are included in the broad category of the opponent’s investment services and/or financial management. Therefore, they are identical.

Contested services in class 41

Education and providing of training are identically contained in both lists of services.

b) 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 customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, as the services are specialised services that may have important financial consequences for their users (03/02/2011, R 719/2010-1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

c) The signs

 

Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

The signs are nearly identical and differ only in the black dots separating the upper and lower inscription located inside the ring forming the outer part of the sign, as well as the white line crossing the green field forming the inner circle part of the sign, both present only in the earlier mark. The earlier mark has also more vivid colours, although all colours in the signs come accordingly from the same colour palette. The described features have little impact (if any) on the visual, aural and conceptual comparison of the signs.

 

Therefore, the marks are visually, aurally and conceptually highly similar, if not identical.

d) Global assessment, other arguments and conclusion

As illustrated in the comparison of signs, their near identity implies that consumers will not be able to distinguish between them. This conclusion would hold true even if the distinctiveness of the coinciding element(s) and the earlier mark as a whole was very low and irrespective of the degree of attention and the sophistication of the relevant public.

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the 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.

The services of the contested signs are identical to the services of the earlier sign. As explained above, the services target the public at large and the professional public. The public’s degree of attentiveness is considered to be average and higher than average.

The signs are visually, aurally and conceptually highly similar, if not even identical. The described differences between the signs have little impact (if any) on the visual, aural and conceptual comparison of the signs.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion. Therefore, the contested trade mark must be rejected for all the contested services.

The Opposition Divison also notes that the additional arguments presented by the applicant are irrelevant as they concern other opposition proceedings pending against some of the earlier rights indicated as basis of this opposition but which were not used for the purposes of comparison. The earlier mark used for the purposes of the examination of the opposition, i.e. European Union trade mark registration No 14 187 901, is admissible and valid, and 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. Consequently, 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).

Similarly, the applicant’s further claims regarding the circumstances related to the registration of several trade marks related to the LIA in several jurisdictions, even if interpreted as a claim of the opponent’s bad faith while registering the earlier rights, must be disregarded as irrelevant to these proceedings, given that bad faith can only be invoked in Cancellation proceedings (Article 59 (1)(b) EUTMR).

 

COSTS

 

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

 

 

Vanessa PAGE HOLLAND

Inés GARCIA LLEDO

Claudia SCHLIE

 

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.