OPPOSITION No B 2 969 783

Neon Management Services Limited, 20 Gracechurch Street, EC3V 0BG, London, United Kingdom (opponent), represented by Withers & Rogers Llp, 4 More London Riverside, SE1 2AU, London, United Kingdom (professional representative)

a g a i n s t

Stefan Schreiner, Gleiwitzer Straße 4, 41564, Kaarst, Germany (applicant), represented by Kreuzkamp & Partner, Ludenberger Str. 1A, 40629, Düsseldorf, Germany (professional representative).

On 29/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 969 783 is upheld for all the contested services, namely

Class 36: Stock trading; options trading; derivatives trading services; trading in bonds; trading in futures; securities trading services; trading in securities; trading in options; trading in currencies; commodity trading for others; trading of financial derivatives; commodity trading [financial services]; brokerage; brokerage services; credit brokerage; stock brokerage; bonds brokerage; futures brokerage; commodities brokerage; investment brokerage; brokerage (financial -); exchange brokerage; banking; international banking; electronic banking; internet banking; home banking; online banking; private banking; banking services; electronic banking services; online banking services; computerised banking services; information services relating to banking; loan financing; loan services; arranging loans; loans (financing of -); credit and loan services; asset management; management of financial assets; financial advisory services relating to assets management; investment advice; financial advice relating to investment; financial services; financial advisory services; financial intermediary services; financial brokerage services; financial data base services; financial information retrieval services; stock exchange information services; providing stock market information; providing stock/securities market information; provision of information relating to stock broking; computer analyses of stock exchange information; information services relating to stocks; computerised information services for stocks; providing on-line stock exchange information from a computer database or the internet; provision of financial information relating to the stock exchange.

2. European Union trade mark application No 16 936 403 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 936 403 for the word mark ‘Neon’ The opposition is based on, inter alia, United Kingdom trade mark registration No 3 159 350 for the word mark ‘NEON’. The opponent invoked Article 8(1) (a) and (b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

a) The services

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

Class 36: Financial services; insurance and reinsurance underwriting; insurance and underwriting agency services; claims handling services; insurance brokerage.

The contested services are the following:

Class 36: Stock trading; options trading; derivatives trading services; trading in bonds; trading in futures; securities trading services; trading in securities; trading in options; trading in currencies; commodity trading for others; trading of financial derivatives; commodity trading [financial services]; brokerage; brokerage services; credit brokerage; stock brokerage; bonds brokerage; futures brokerage; commodities brokerage; investment brokerage; brokerage (financial -); exchange brokerage; banking; international banking; electronic banking; internet banking; home banking; online banking; private banking; banking services; electronic banking services; online banking services; computerised banking services; information services relating to banking; loan financing; loan services; arranging loans; loans (financing of -); credit and loan services; asset management; management of financial assets; financial advisory services relating to assets management; investment advice; financial advice relating to investment; financial services; financial advisory services; financial intermediary services; financial brokerage services; financial data base services; financial information retrieval services; stock exchange information services; providing stock market information; providing stock/securities market information; provision of information relating to stock broking; computer analyses of stock exchange information; information services relating to stocks; computerised information services for stocks; providing on-line stock exchange information from a computer database or the internet; provision of financial information relating to the stock exchange.

Financial services are identically contained in both lists of services.

The rest of the contested services are included in the opponent’s broader category of financial services, being therefore, identical.

b) The signs

NEON	Neon
Earlier trade mark	Contested sign

Bearing in mind that in word marks is the word as such that is protected and not its written form, being irrelevant whether the signs are depicted in upper or lower case letters, the signs are identical.

c) Conclusion

In the present case, the signs under comparison were found to be identical and the contested services, as established above in section a) of this decision, are also identical to some of the opponent’s services.

Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR.

Consequently, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 159 350. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right United Kingdom trade mark registration No 3 159 350 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, 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(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

Victoria DAFAUCE Alexandra APOSTOLAKIS Richard BIANCHI

MENÉNDEZ

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.