CANCELLATION No 19 854 C (INVALIDITY)

Ergo Versicherung AG, Ergo-Platz 1, 40477 Düsseldorf, Germany (applicant), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Victoria Equity Partners S.L., c/ Zurbano, 45, 1º, 28010 Madrid, Spain (EUTM proprietor), represented by Maria Antonia Ezcurra Zufia, Iparraguirre, 15, 2ºA, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 02/12/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 16 933 822 is declared invalid for some of the contested services, namely:

Class 36: Finance services; financial management; investment, fund, portfolio and securities management services; management of venture capital, private equity and entrepreneurship through acquisition, search funds; financial, economic and investment research and analysis services; financial, economic and investment advice and consultancy; administrative and accounting services relating to investments, funds, portfolios and securities; commissioning, financing and raising of investment funds, funds and projects, advice, consultancy and information.

3. European Union trade mark No 16 933 822 remains registered for all the remaining services, namely:

Class 35: Operation, management, organisation and direction of companies and businesses; representation, advice and consultancy for the operation, management, organisation and direction of companies and businesses; assistance and support in the operation, management, organisation and direction of companies and businesses; information and searching of markets, sectors, companies and businesses; conducting of studies, research and analysis of markets, sectors, companies and businesses; surveys and valuation of companies and businesses; economic and financial forecasts, analysis and research; verification and auditing of accounts; accounting and administration; business administration; office functions.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 16 933 822 for the figurative mark . The application is based on, inter alia, international trade mark registration No 890 309 for the figurative mark , designating the European Union. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion since the services were identical and the signs were highly similar on account of the distinctive and dominant coinciding element ‘Victoria’ and the non-distinctive character of the elements ‘Equity Partners’ of the contested sign.

To support its observations, the applicant submitted the following evidence:

• extract from Wikipedia in relation to the term ‘partnership’ defining the term ‘equity partner’ as ‘a part-owner of the business, entitled to a proportion of the distributable profits of the partnership’;

• Google search results for ‘Equity Partner’ in English and German;

• extract from eSearch related to EUTM No 14 780 779 ‘DIRECT EQUITY PARTNERS’, refused for services in Class 36.

The EUTM proprietor requested that the applicant submit proof of use of its earlier trade marks on which the application for a declaration of invalidity is based.

The applicant submitted evidence of use (listed and assessed below) and argued that the earlier trade marks are used in Portugal by one of the leading Portuguese insurance companies.

The EUTM proprietor argued that the evidence submitted by the applicant did not show genuine use for the following reasons:

• the annual reports were internal documents.

• some documents were undated or dated after the relevant period. According to the EUTM proprietor the relevant period was from 30/06/2012 to 30/06/2017 only.

• the invoices were insufficient since there was only one invoice per year. Furthermore, they mentioned ‘Victoria’ as a company name but not in relation to the services.

• there was use in Portugal only for insurance services.

The EUTM proprietor further argued that use was shown only in relation to insurance services and these services were not similar to its own activity of giving advice in relation to financial products. Since use was shown in Portugal, the EUTM proprietor considered that, for the examination of likelihood of confusion, the relevant public to be taken into account was the Portuguese public for whom the term ‘Equity Partners’ is meaningless and therefore distinctive. It also claimed that the earlier mark was distinctive but that there were many trade marks in the EUIPO register and in Spain and Portugal containing the word ‘Victoria’.

In reply, the applicant submitted additional evidence of use (invoices, advertising material and a screenshot from the Victoria Group website) and argued that the relevant periods were from 14/02/2013 to 13/02/2018 (first period) and from 30/06/2012 to 29/06/2017 (second period) and that the EUTM proprietor had misunderstood the EUTMR and the impact of the legal reform dated March 2016. It argued that the annual reports were not internal documents but were available on the Victoria Group website and they referred to every category of insurance. It further pointed out that the invoices were only examples of sales and taken together with the annual reports and the affidavit, they demonstrated that the applicant had acquired a market share in Portugal in relation to insurance services. The applicant also pointed out that most of the evidence fell within the relevant periods and that use in Portugal was sufficient to prove use in the European Union. The applicant finally argued that insurance and financial services were highly similar and quoted relevant case-law.

In its final observations, the EUTM proprietor reiterated its arguments and further argued that the belated evidence submitted by the applicant should not be taken into account and the applicant’s claim of confidentiality was unfounded since some documents were present on the applicant’s webpage.

PROOF OF USE

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s international trade mark registration No 890 309 designating the European Union for which proof of use has been requested.

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of, inter alia, international trade mark registration No 890 309 designating the European Union for the figurative mark .

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 14/02/2018. The date of filing of the contested trade mark is 30/06/2017. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 14/02/2013 to 13/02/2018 inclusive. Since the earlier mark was registered more than five years prior to the date of filing of the contested mark, use of the earlier mark had to be shown also for the period from 30/06/2012 to 29/06/2017 inclusive.

Furthermore, the evidence must show use of the trade mark for the services on which the application is based, namely:

Class 35: Advertising; business management; business administration; office functions.

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

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 04/05/2018, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 09/07/2018 to submit evidence of use of the earlier trade mark. This time limit was extended until 09/09/2018.

On 07/09/2018, within the time limit, the applicant submitted evidence as proof of use.

The applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. The Cancellation Division accepts this request insofar it relates to part of the evidence (that is the commercial information contained in some of the documents). Therefore, it will describe that part of the evidence only in the most general of terms without divulging any such data or specific information which could breach the terms of the confidentiality request made and accepted. However, confidentiality does not apply to evidence which consists of information that is already available to the public, such as extracts from websites or copies of advertising materials.

The evidence to be taken into account is the following:

• affidavit signed by the Deputy CEO of ‘Victoria International de Portugal, S.G.P.S.’ dated 06/09/2018. He explained that the trade mark ‘Victoria’ was licensed in Portugal to ‘Victoria International de Portugal, S.G.P.S.’ which owns ‘Victoria Seguros, S.A.’ and ‘Victoria Seguros de Vida, S.A.’ (the extract from Madrid Monitor mentions the license of IR No 890 309 to the licensee ‘Victoria International de Portugal, S.G.P.S.’). ‘Victoria Insurance Group’ has been operating since 1930 in insurance matters. It is based in Lisbon and has a wide network of agents and brokers located throughout Portugal. Since 2012 it has been an affiliate of the French Insurance Group SMA. The affidavit gives figures in relation to advertising expenditure for 2013-2017 in Portugal (ranging from EUR 19 333 to EUR 147 797).

The following exhibits are annexed to the affidavit.

• Exhibit 1: printout dated 28/08/2018 of an article from Wikipedia in German about ‘Victoria Insurance Group’ (with partial translation in English) and a printout from Ergo Versicherung AG’s corporate website in English.

• Exhibits 2-3: WIPO notices, dated 2012 and 2013, concerning the recording of a license for IR No 890 309 and IR No 575 084 to ‘Victoria International de Portugal, S.G.P.S., S.A.’.

• Exhibit 4: Annual Report and Accounts 2017 of ‘Victoria International de Portugal, S.G.P.S., S.A.’, in Portuguese with partial translation in English. The sign is depicted on the first page of the report and the earlier sign, as registered, appears on the following pages of the report. The different insurance services provided are detailed (Life: insurance and investment contracts; Non-life: work-related accidents, personal accidents, health insurance, fire insurance, car insurance, transport insurance, civil liability).

• Exhibit 5: printout dated 28/08/2018 from Wikipedia, in French with a partial English translation, relating to the turnover of the ‘SMA Group’ (SMA is a French insurance group (property and liability insurance, life insurance, retirement insurance, health insurance) founded in 1859).

• Exhibit 6: printouts dated 28/08/2018 from the website www.victoria-seguros.pt. The website lists the different insurance products (life insurance, health and accident insurance, etc.) and contains the depiction of the signs and . Some pages are dated by the Internet Archive WayBackMachine (16/11/2012, 20/11/2013, 11/06/2014, 09/10/2015, 04/11/2016, 02/12/2017).

• Exhibit 7: printouts dated 28/08/2018 from the website www.victoria-seguros.pt with the list of VICTORIA branch offices in Portugal (Aveiro, Cacém, Faro, Lisbon and Porto) and photographs of two branches (Aveiro and Cacém), showing the sign on the front of the offices.

• Exhibit 8: brochures and standard forms in Portuguese for, inter alia, health insurance, as well as standard envelopes and letters. The exhibit also contains the terms and conditions of an insurance contract for car insurance. They show the sign, as registered.

• Exhibit 9: press articles. For instance, an article from Observador dated 18/03/2015 mentions ‘Victoria Seguros’ as one of the five largest insurance companies in the health insurance sector in Portugal.

• Exhibit 10: samples of invoices in relation to insurance contracts issued by ‘VICTORIA - Seguros, S.A.’ to clients (home insurance, shipment insurance), dated 23/09/2012, 23/11/2013, 18/10/2014, 19/09/2015, 18/09/2016, 16/09/2017 and 11/06/2018. The sign ‘VICTORIA’, as registered, is depicted on the top of the invoices. Confidential data has been removed such as the names of the clients, the amounts, etc.

• Exhibit 11: marketing and advertising material dated 2018 (brochures, press advertising, merchandising articles) with the depiction of the earlier mark.

• Exhibit 12: examples of advertising for insurance services in Aspectos magazine, issued by the French-Portuguese Chamber of Commerce (CCILF) on a bi-monthly basis, dated September/October 2017 and March/April 2018.

• Exhibit 13: excerpt from the Chamber of Commerce’s website (www.ccilf.pt) dated 28/08/2018 indicating that the magazine Aspectos has a circulation of around 40,000 copies and is distributed to member companies and various organisations in Portugal and France.

• Exhibit 14: excerpt from the magazine pais positivo (June 2018) showing examples of advertising of the earlier mark (depicted as registered).

• Exhibit 15: advertising materials (undated, but according to the applicant from 2013-2018). They include flyers, posters, merchandising articles, brochures and examples of sponsoring activities, such as sponsoring an event for the Royal British Club Golfing Society, a prestigious golf club in Lisbon. They show the earlier mark as registered.

• Exhibit 16: annual reports dated 2011-2017 of ‘Victoria International de Portugal, S.G.P.S., S.A.’ with partial English translation. The earlier sign, as registered, appears on the reports. They list the different insurance services provided (Life: insurance and investment contracts; Non-life: work-related accidents, personal accidents, health insurance, fire insurance, car insurance, shipment insurance, civil liability).

On 25/03/2019, after expiry of the time limit, the applicant submitted the following additional evidence:

• printouts from the website www.victoria-seguros.pt indicating the availability of the annual reports.

• advertising material (some are undated and some are dated 2012, 2013, 2014, 2015, 2016 and 2018). They include brochures, flyers, newsletters, posters, merchandising articles, sponsoring events and they reproduce the earlier mark as registered.

• invoices in relation to insurance contracts issued by ‘VICTORIA – Seguros, S.A.’ to clients in Portugal, dated 2012-2017 (work-related accidents insurance, life insurance, home insurance, personal accident insurance). The sign ‘VICTORIA’, as registered, is depicted on the top of the invoices.

The EUTM proprietor argued that the evidence submitted by the applicant on 25/03/2019 was late and, therefore, should not be taken into account.

Even though, according to Article 19(2) EUTMDR, the applicant has to submit proof of use within a time limit set by the Office, Article 10(7) EUTMDR (applicable to cancellation proceeding by virtue of Article 19(2) EUTMDR) expressly invites the Office to exercise its discretionary power if relevant evidence was submitted in time and, after the expiry of the time limit, supplementary evidence was filed.

According to Article 10(7) EUTMDR, where, after the expiry of the time limit set by the Office, indications or evidence is filed that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of exercise of the discretion conferred on it by Article 95(2) EUTMR. When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.

In this regard, the Cancellation Division considers that the applicant did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

The additional evidence is likely to be relevant to the outcome of the proceedings and the stage at which it was submitted does not preclude the evidence from being taken into account.

The fact that the EUTM proprietor disputed the initial evidence submitted by the applicant justifies the submission of additional evidence in reply to the objection (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 30, 33; 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

Moreover, the additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit.

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Cancellation Division therefore decides to take into account the additional evidence submitted on 25/03/2019.

Assessment of genuine use for IR registration No 890 309 designating the EU

Use for the relevant services

The earlier mark is registered for the abovementioned services in Classes 35, 36, 42 and 44. However, the evidence does not show use of the trade mark for all the services covered by the earlier trade mark.

According to Article 64(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

In the present case, the evidence clearly proves use only for insurance services in Class 36.

The evidence does not show that the mark was used in relation to the remaining services in Classes 35, 36 , 42 and 44.

Therefore, the assessment of use of the earlier mark will continue only for insurance services in Class 36.

Time of use

Although some documents are undated or dated before or after the relevant periods, most of the invoices, annual reports, press articles and advertising material are dated within the relevant periods. Therefore, they contain sufficient indications concerning the time of use.

Place of use

The evidence must show that the earlier mark has been genuinely used in the European Union.

The documents demonstrate that the services are provided throughout the territory of Portugal. This can be inferred for instance from the language of the documents, the addresses in Portugal mentioned in the invoices, the Office branches in Portugal, etc.

As established by the Court of Justice, it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not. All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (19/12/2012, C‑149/11, Onel / Omel, ECLI:EU:C:2012:816, § 55, 58).

Moreover, for use of an EU trade mark to be deemed genuine, it is not required that that mark be used in a substantial part of the European Union. Furthermore, the possibility that the mark in question may have been used in the territory of a single Member State must not be ruled out, since the borders of the Member States must be disregarded and the characteristics of the goods or services concerned must be taken into account (07/11/2019, T‑380/18, INTAS, ECLI:EU:T:2019:782, § 80).

Use in Portugal for insurance services is considered sufficient to constitute genuine use in the European Union.

Therefore, the evidence relates to the relevant territory.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T‑209/09, Alder Capital, EU:T:2011:169, § 55-56).

The fact that a word is used as a company’s trade name does not preclude its use as a mark to designate goods and services (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 38).

Marks cannot be directly used ‘on’ services. Therefore, as regards marks registered for services, their use will generally be on business papers, in advertising, or in some other way directly or indirectly related to the services.

In the present case, although ‘VICTORIA’ is part of the licensee’s company name, the evidence and in particular the invoices and the advertising material show that it is also used as a trade mark to identify the services.

Furthermore, the evidence shows that the mark has been used as registered or in a form essentially the same as that registered. Indeed, the use of different colours (white/blue instead of black/blue) does not alter the distinctive character of the earlier mark.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The items supporting the extent of use consist, in particular, of the many invoices sent to clients in Portugal over several years of the relevant periods (2012-2017). Therefore, they provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Conclusion

Taking into account the evidence in its entirety, the Cancellation Division finds that the evidence establishes genuine use of the earlier mark as registered, in relation to insurance services in Class 36, during the relevant periods and in the relevant territory.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION 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.

The examination of the application for invalidity continues on the basis of international trade mark registration No 890 309 designating the European Union.

1. The 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.

The services on which the application is based and for which use has been proved are the following:

Class 36: Insurance services.

The contested services are the following:

Class 35: Operation, management, organisation and direction of companies and businesses; representation, advice and consultancy for the operation, management, organisation and direction of companies and businesses; assistance and support in the operation, management, organisation and direction of companies and businesses; information and searching of markets, sectors, companies and businesses; conducting of studies, research and analysis of markets, sectors, companies and businesses; surveys and valuation of companies and businesses; economic and financial forecasts, analysis and research; verification and auditing of accounts; accounting and administration; business administration; office functions.

Class 36: Finance services; financial management; investment, fund, portfolio and securities management services; management of venture capital, private equity and entrepreneurship through acquisition, search funds; financial, economic and investment research and analysis services; financial, economic and investment advice and consultancy; administrative and accounting services relating to investments, funds, portfolios and securities; commissioning, financing and raising of investment funds, funds and projects, advice, consultancy and information.

The EUTM proprietor’s argument that the companies operate in different sectors, since the EUTM proprietor’s activities consist in giving advice in relation to financial products, does not set aside the likelihood of confusion. It is only on the basis of the specifications of the services that it can be determined whether they belong to the same or other fields of businesses; the business strategy of the parties concerned is hereby irrelevant (07/02/2012, T‑305/10, Dynique, EU:T:2012:57, § 26; 10/11/2011, T‑22/10, e (fig.) / e (fig.), EU:T:2011:651, § 39). Indeed, the two lists of services must be compared as they appear in the register, respectively, and not with regard to actual commercial activities or interests of the parties (16/6/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

Contested services in Class 35

The contested services essentially consist of business services (business management, business administration, business consultancy, auditing) and office functions. They support or help other businesses to do or improve business. They target the professional public and are provided by business consultants, auditors, etc.

These services are not similar to the applicant’s insurance services which are defined as a means of protection from financial loss. 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 or, in general, any event capable of causing damages.

These services do not have the same natures or purposes and they are not generally provided by the same entities. Furthermore, they are neither in competition nor are complementary.

Contested services in Class 36

The contested services are financial services. They encompass a broad range of businesses that manage money, including banks, credit-card companies, accounting companies, stock brokerages, investment funds, etc.

As explained above, the applicant’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 or, in general, any event capable of causing damages.

Insurance services have different purposes from the services usually provided by financial entities, such as providing credit or asset management, credit card services, financial evaluation or stocks and bonds brokerage. Nevertheless, they have some significant aspects in common.

Insurance services are of a financial nature, and insurance companies are subject to licensing, supervision and solvency rules similarly to banks and other institutions providing financial services. Furthermore, the undertakings offering financial services can also offer insurance services, including health insurance, home insurance, life insurance, or act as agents for insurance companies, with which they are often economically linked. Additionally, it is not unusual to see financial institutions and an insurance company in the same economic group (13/12/2016, T‑58/16, APAX / APAX et al., ECLI:EU:T:2016:724, § 55, 56).

Therefore, although insurance services and financial services have different purposes, they are of a similar nature, may be provided by the same undertaking or related undertakings and share the same distribution channels. They are also addressed to the same relevant public. Therefore, they are similar.

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 similar are directed at the public at large, which is reasonably well informed and reasonably observant and circumspect. However, since such services may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them.

3. The signs

Earlier trade mark	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark consists of the word ‘VICTORIA’ written in bold black upper-case letters and two large blue horizontal lines placed before and after this word.

The figurative elements of the earlier mark are purely decorative and not distinctive on their own. Furthermore, 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).

The contested mark consists of the word ‘Victoria’ written in blue title case, and beneath this, in smaller letters, the verbal element ‘Equity Partners’. Due to its size and position, the word ‘Victoria’ is the dominant element of the sign.

Both signs contain the verbal element ‘Victoria’ which the relevant public will perceive as a female given name. This name, or close variations thereof (e.g. ‘Vittoria’, ‘Viktorija’), exist in many of the languages at issue, or is generally recognised as the name of historical persons and celebrities (e.g. Queen Victoria). Furthermore, a substantial part of the public is aware that this name originates from Latin and means ‘victory, success, triumph’, as, for instance, in Spanish. Since this element has no meaning in relation to the services, it is distinctive to an average degree.

For the English-speaking part of the public, the element ‘Equity Partners’ of the contested sign refers to persons who are part-owners of a business in the form of a partnership and are entitled to a proportion of the distributable profits of the partnership. In relation to the relevant financial services in Class 36, this element is weak since it refers to investments in companies with equity partners. For another part of the public, it is meaningless and, therefore, distinctive to an average degree.

Visually, the signs coincide in the verbal element ‘VICTORIA’, although with different graphical depictions. They differ in the figurative elements of the earlier mark, as described above, which have a very low impact on the overall impression of the sign and in the additional verbal element ‘Equity Partners’ of the contested sign which is visually secondary and weak for part of the public. Therefore, the signs are visually similar to an average degree.

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 coinciding element ‘Victoria’ which is the sole verbal element of the earlier mark and the dominant element in the contested sign. The pronunciation differs in the sounds of the element ‘Equity Partners’ of the contested sign which has no counterpart in the earlier sign. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the female given name ‘Victoria’ and/or to the concept of ‘victory’, they are highly similar.

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.

The EUTM proprietor argued that many trade marks include the element ‘Victoria’. In support of its argument it refers to several trade mark registrations in the European Union, Spain, Portugal, etc.

The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Consequently, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the element ‘Victoria’.

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 services are partly similar and partly dissimilar. They target the public at large that displays a high degree of attention.

The distinctiveness of the earlier trade mark is normal.

The signs are visually and aurally similar to an average degree and conceptually similar to a high degree on account of the distinctive coinciding element ‘Victoria’ which constitutes the sole verbal element of the earlier mark and the dominant element of the contested sign.

The Cancellation Division considers that the differences lying in figurative elements and in the additional verbal element ‘Equity Partners’ of the contested sign, which is secondary and weak for part of the public, are insufficient to safely differentiate the signs.

Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Given the fact that the earlier mark’s verbal element is entirely contained in the contested sign as its dominant element, it is likely that the public will perceive the contested sign as a variation of the earlier mark.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the public, even when it displays a high degree of attention. Therefore, the application is partly well founded on the basis of the applicant’s international trade mark registration No 890 309, designating the European Union.

Pursuant to the above, the contested trade mark must be declared invalid for the services found to be similar to those of the earlier trade mark.

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

The applicant has also based its cancellation application on the following earlier trade marks:

• international trade mark registration No 575 084 for the word mark ‘VICTORIA’ designating Portugal for insurance services in Class 36, for which proof of use has been requested.

• German trade mark registration No 302 012 031 428 for the word mark ‘Victoria’ for insurance services, finance services, monetary affairs in Class 36, (not required to prove use since the trade mark was not registered for at least five years at the date of the application for a declaration of invalidity of the contested trade mark).

Since IR No 575 084 covers the same scope of services, the outcome cannot be different for services for which the cancellation application has already been rejected.

Apart from insurance services already compared above in the decision, German trade mark registration No 302 012 031 428 covers finance services, monetary affairs in Class 36 which are not similar to the contested services in Class 35 for which the cancellation application has already been rejected. As explained above, the contested services essentially consist of business services (business management, business administration, business consultancy, auditing) and office functions. They support or help other businesses to do or improve business. They are provided by business consultants, auditors, etc. They are not similar to the applicant’s finance services, monetary affairs to the extent that they differ as regards their nature, purpose and providers. For instance, companies who handle investments for others (e.g. a bank, investment fund or pension fund), operate in a different field of business than business management consultants. Furthermore, they are neither in competition nor complementary. Therefore, the outcome cannot be different for services for which the cancellation application has already been rejected and there is no likelihood of confusion for those services.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation 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 Cancellation Division

Julie, Marie-Charlotte HAMEL

Frédérique SULPICE

Richard BIANCHI

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 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.