OPPOSITION No B 2 989 427

Bittrex, Inc., 6077 S. Ft. Apache Road, Ste. 100, 89148 Las Vegas, United States of America (opponent), represented by Wilson Gunn, Charles House 148/9 Great Charles Street, B3 3HT Birmingham, United Kingdom (professional representative)

a g a i n s t

Brian Litman, Friedrichstr. 123, 10117 Berlin, Germany (applicant).

On 26/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 989 427 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 059 619 for the word mark ‘Bittickets’, namely against all the services in Class 36. The opposition is based on European Union trade mark registration No 16 727 109 for the word mark ‘BITTREX’. 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, inter alia, the following:

Class 36: Financial services; financial services, namely, electronic funds transfer via electronic communications networks; clearing and reconciling financial transactions via electronic communications networks; financial exchange services; monetary exchange services; financial information services; providing exchange markets for trading, clearing, confirmation and financial trading risk management in the field of digitized assets such as bitcoins, cryptocurrency, digital tokens, collateral for derivatives, derivative contracts, virtual currency, and digital currency; electronic financial trading services; electronic financial trading, namely, trading of the field of digitized assets such as bitcoins, cryptocurrency, collateral for derivatives, derivative contracts, virtual currency, and digital currency; financial information provided by electronic means; providing on-demand and real-time financial information; currency exchange services; crowdfunding services in the nature of providing financing from money collected from individuals; savings account services; securities trading and investing services for others via the internet; financial intermediary services, namely, facilitating the channelling of funds between lenders and borrowers by connecting those with a financial surplus with those having a financial deficit.

The contested services are the following:

Class 36: Financial transactions; financial exchange.

The contested financial transactions; financial exchange are included in the broad category of the opponent’s financial services. 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 and at a professional public with specific professional knowledge or expertise in the financial sector.

Since the relevant services are specialised services that may have important financial consequences for their users, consumers’ (both general and professional public) 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, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

3. The signs

BITTREX	Bittickets
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).

Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper- or lower-case letters, or in a combination thereof.

Although the signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

Therefore, taking into account that the relevant services are financial services, the first element ‘BIT’ will be dissected and associated with the cryptocurrency ‘bitcoin’, therefore this element has a low degree of distinctiveness.

The element ‘TREX’ in the earlier mark will be perceived as meaningless by the majority of the relevant public and therefore has a normal degree of distinctiveness.

The element ‘tickets’ in the contested sign will be perceived by part of the relevant public as referring to, inter alia, ‘a piece of paper or card that gives the holder a certain right, especially to enter a place, travel by public transport, or participate in an event’. Another part of the relevant public will perceive it as meaningless. As this element is not descriptive, or otherwise weak, in relation to the relevant financial services in Class 36, it has a normal degree of distinctiveness.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the letters/syllable ‘BITT’, of which the first three letters ‘BIT’ have a low degree of distinctiveness. However, they differ in their additional distinctive letters ‘REX’ in the earlier mark and ‘ickets’ in the contested sign. As the earlier mark is pronounced in two syllables ‘BIT-TREX’, while the contested sign is pronounced in three syllables, ‘BIT-TI-CKETS’, the signs also have a different rhythm and intonation.

Therefore, taking into account that the coincidences are mainly in elements of low distinctive character, the signs are visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of the element ‘BIT’, which has a low degree of distinctiveness, the signs are conceptually similar to a low degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The relevant public is the public at large and a professional public, the degree of attention is considered quite high.

The conflicting services are identical.

The signs are visually, aurally and conceptually similar to a low degree.

The Opposition Division has assumed in section d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

However, the low degree of similarity between the signs and the quite high degree of attention of the relevant public will avoid any likelihood of confusion, this even with an enhanced distinctiveness of the earlier mark. The additional differing elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, this especially bearing in mind that the common elements ‘BIT’ have a low degree of distinctiveness for the relevant public.

Considering all the above, even taking into account that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Carlos MATEO PÉREZ

Saida CRABBE

Marzena MACIAK

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.