OPPOSITION No B 2 955 253

Credit Agricole SA, 12 Place des Etats-Unis, 92127 Montrouge Cedex, France (opponent), represented by Sodema Conseils S.A., 16 rue du Général Foy, 75008 Paris, France (professional representative)

a g a i n s t

Peter E. Rasenberger, Avenue de Gratta Paille 6, 1018 Lausanne, Switzerland (applicant), represented by Ruggenthaler Rest & Borsky Rechtsanwälte OG, Biberstr. 22, 1010 Wien, Austria (professional representative).

On 21/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 955 253 is upheld for all the contested services, namely

Class 36: Financial advice; financial advisory services; arranging the provision of finance; financial advice and consultancy services.

2. European Union trade mark application No 16 960 106 is rejected for all the contested services. It may proceed for the remaining services.

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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 16 960 106 ‘GRANTIRO’ (word mark), namely against all the services in Class 36. The opposition is based on French trade mark registration No 3 454 467 ‘GRANDITO’ (word 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.

1. The services

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

Class 36: Banking matters; management and funds investment services; saving services.

The contested services are the following:

Class 36: Financial advice; financial advisory services; arranging the provision of finance; financial advice and consultancy services.

The contested financial advice; financial advisory services; arranging the provision of finance; financial advice and consultancy services include, as a broader category the opponent’s management and funds investment services. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

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.

These 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, consumers’ level of attention would be quite high when choosing them (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; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874).

3. The signs

GRANDITO	GRANTIRO
Earlier trade mark	Contested sign

The relevant territory is France.

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).

Both signs are word marks, the earlier mark being ‘GRANDITO’ and the contested sign ‘GRANTIRO’. None of these verbal elements have any meaning for the pertinent public in relation to the relevant services, consequently they will be perceived as fanciful elements with an average degree of distinctiveness.

Visually and aurally, the signs coincide in the sequence ‘GRAN*I*O’ and they differ in their fifth and seventh letters, which in the earlier mark are the letters ‘D’ and ‘T’ respectively and in the contested sign the letters ‘T’ and ‘R’. Therefore, the signs are visually and aurally highly similar.

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.

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.

5. Global assessment, other arguments and conclusion

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.

In the present case, the services are identical and target the public at large, whose degree of attention is high due to their specialised nature. Furthermore, the earlier mark has an average degree of distinctiveness. The signs are visually and aurally highly similar and conceptually not comparable.

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 on the part of the public because the signs coincide in seven out of eight letters, being different in one letter and in the position of the letter ‘T’ in the middle of the signs. Moreover, they start with the same four letters and consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 454 467. It follows that the contested trade mark must be rejected for all the contested services.

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

Ioana MOISESCU

Paloma PERTUSA MARTÍNEZ

Birgit FILTENBORG

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.