OPPOSITION No B 3 039 891

FIL Limited, Pembroke Hall, 42 Crow Lane, Pembroke HM 19, P. O. Box HM 670, Hamilton, HMCX, Bermuda (opponent), represented by Maucher Jenkins, 26 Caxton Street, SW1H 0RJ London, United Kingdom (professional representative)

a g a i n s t

Wolf Herwegh Vonk, Atlantic Suites #1202 Europort Road, GX11 1AA Gibraltar, Gibraltar (applicant).

On 19/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 039 891 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 282 823 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 282 823 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 10 956 233 for the figurative mark (hereinafter earlier mark 1) and No 14 939 871 for the figurative mark (hereinafter earlier mark 2). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to these earlier rights. The opponent invoked Article 8(4) in relation to, inter alia, non-registered trade mark ‘ ’ in the EU; United Kingdom, Austria, Croatia, Denmark, Finland, Greece, Italy, Luxembourg, Poland, Slovakia, Sweden, Belgium, Cyprus, France, Hungary, Latvia, Malta, Portugal, Slovenia, Spain, Romania, Netherlands, Lithuania, Ireland, Germany, Estonia, Czech Republic, Bulgaria.

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 goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Earlier mark 1:

Class16: Paper and cardboard and goods made from these materials, not included in other classes; printed matter; photographs; instructional, research and teaching material (except apparatus).

Class 36: Financial affairs; monetary affairs.

Class 41: Education; providing of training.

Class 42: Services in the field of science and technology and research and development related thereto, and development of new products for others, application of research results; scientific and technological services and research and design relating thereto; research and development for others with regard to new products; research.

Earlier mark 2:

Class 35: Advertising; business management; business administration; office functions; business research services; outsourcing services; business assistance; accounting services; call centre services; data processing services; human resources and personnel recruitment and management services; payroll services; compliance services; administration services for businesses; retail administration services; retail services in the fields of computer software, hardware, peripherals, components, electrical and electronic systems, printed circuit boards, integrated circuit components and spare parts for all these goods; provision of business information; professional business consultancy; business research; business investigation; provision of statistical information; economic forecasting; the collection, provision and dissemination of information concerning companies; information and advisory services relating to the aforesaid services.

Class 36: Financial services; insurance services; investment services; international and domestic fund investment; discretionary investment management services; investment advisory services; mutual funds and services related thereto; pensions and services related thereto; securities brokerage and services related thereto; banking and services related thereto; trusteeship and services related thereto; portfolio, mutual fund, pension and trust administration services; financial management and planning; financial advice; credit services; credit management services; investment banking, corporate finance and venture capital services; private equity services; real estate services; real estate investment services; securities underwriting; derivative and currency exchange services; provision of information, advice and consultancy relating to securities, finance and investments; interactive database information services relating to securities, finance and investments; credit and debit card services; money payment services; provision of secured and unsecured loans; exchanging money; antique appraisal; brokerage; surety services; charitable fund raising; lending against security; instalment loans; mortgage banking; business liquidation services; stock exchange quotations; rent collection; financial analysis services for businesses; provision of information, advice and consultancy relating to all the foregoing.

Class 41: Educational services; training services; entertainment; sporting and cultural activities; arranging and conducting of seminars, conferences, symposiums and meetings; publishing services; publication of books, periodicals and other texts, including online; publication of physical and electronic content relating to finance and investments; providing online electronic publications (not downloadable); publication of online journals, blogs and articles featuring content relating to financial services and investments; providing a website featuring online publications in the nature of blogs and articles in the fields of financial services and investments.

Class 42: Scientific and technological services and research and design relating thereto; engineering services; industrial analysis and research services; design, development, manufacture and testing of computer hardware and software; content development and animation; website design, development and maintenance; advisory services relating to computers, computer programs, computer systems, networks and computer equipment; analysis of computer systems and procedures; provision of software as a service in the field of financial services and investments.

The contested goods and services are the following:

Class 9: Electronic currency converters; currency recognition machines; currency authentication apparatus and equipment; counterfeit money detecting apparatus; money sorting apparatus; money counting apparatus; money counting and sorting machines; financial management software; payment terminals, money dispensing and sorting devices.

Class 28: Play money.

Class 36: Analysis (financial -); arranging financial transactions; banking services relating to the deposit of money; brokerage (financial -); brokerage of currency; currency dealing; currency trading; foreign currency services; foreign currency dealing; exchange services (currency -); currency exchange services; foreign currency exchange; provision of foreign currency; swaps of currency rates; buying and selling currency; currency exchange rate quotations; trading in foreign currency; currency exchange and advice; currency trading and exchange services; on-line real-time currency trading; exchange of currency (agencies for the -); financial transactions relating to currency swaps; issuing of travellers' cheques and currency vouchers; computerised financial services relating to foreign currency dealings; cash, check (cheque) and money order services; clearing-houses, financial; financial clearing houses; computerised financial analysis; computerised financial services; conducting of financial transactions; consultancy (financial -); consultations [financial]; moneylending; money transfer; money (exchanging -); exchanging money; money brokerage; money lending services; money deposit services; money order services; money ordering services; trusteeship of money; money wiring services; money transmission services; money transfer services; exchange services (money -); money exchange services; money exchange agency services; electronic transfer of money; electronic transfers of money; exchange of money (agencies for the -); electronic money transfer services; money exchange and transfer; national money transfer services; financial advice; financial advisory services; financial affairs; financial affairs services; financial analyses; financial analysis; financial analysis services; financial analyses (preparation of -); financial appraisal services; financial asset management; financial banking services for the withdrawal of money; financial banking services for the deposit of money; financial banking; financial brokerage; financial brokerage services; financial clearing services; financial consulting; financial consultancy; financial consultation; financial consulting services; financial consultancy services; financial consultation services; financial credit services; financial data base services; financial economic advisory services; financial economic analysis; financial evaluation; financial evaluations [banking]; financial exchange services; financial forecasting; financial fund management; financial grant services; financial guarantees (provision of -); financial information processing; financial information services; financial information services relating to financial bond markets; financial information; financial intermediary services; financial nominee services; financial research services; financial investigation services; financial loan services; financial services; financial management services; financial valuation services; financial savings services; financial payment services; insolvency services [financial]; financial investment; financial investments; financial investment brokerage; financial lending; financial lending against security; financial loans to commerce; financial loss management; financial management advisory services; financial management and planning; financial planning and management; financial management for businesses; financial management of pensions; financial management; management (financial -); financial portfolio management; financial risk management; financial trust management; financial securities; financial services in the field of money lending; financial sponsorship services; financial spread betting; financial transaction services; financial transactions; financial trust planning; financial trust administration; financial trust operations; financial valuations; financially-guaranteed financing; information (financial -); investment of money (services for -); issuing of vouchers for use as money; online financial transactions; payment and receipt of money as agents; personal financial planning; personal financial banking services; personal financial planning services; preparation of financial analyses; preparation of financial analysis; provision of cash dispenser facilities for money withdrawal; provision of cash dispenser facilities for money deposit; provision of prepaid cards and tokens; financial planning; financial planning services; financial risk management services; providing financial information.

Class 41: Audio and video production, and photography; education and instruction; education, entertainment and sports; gambling.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’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).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 9

The contested financial management software and the opponent’s provision of software as a service in the field of financial services and investments in Class 42 of earlier mark 2 are similar. Although they differ in nature (goods are tangible, while services are intangible), they have the same providers and distribution channels, they are addressed to the same public and furthermore are in competition.

The contested payment terminals and the opponent’s money payment services in Class 36 of earlier mark 2 have obvious complementarity and, although their nature may differ, they have the same purpose, namely the facilitation of various financial transactions and other related activities in the world of finance and payments. They can be found in the same places, they may have the same distribution channels and obviously they are complementary. Given their close connectivity, these contested goods and the opponent’s above mentioned services are similar.

The rest of the contested goods are electronic currency converters; currency recognition machines; currency authentication apparatus and equipment; counterfeit money detecting apparatus; money sorting apparatus; money counting apparatus; money counting and sorting machines; money dispensing and sorting devices, which are different from the opponent’s goods and services. They do not have the same providers and do not target the same public. The fact that some of the opponent’s services are complementary with these contested products because may be used for the performance of the opponent’s services in Class 36, this is not enough to find similarity between them, as consumers will rarely expect these goods and services to originate from the same place.

Contested goods in Class 28

Play money is noticeably fake bills or coins intended to be used in play by children or adults and also in events decoration and can be even printed with the kid picture on it as a birthday card, or be a postcard. It can be supplied by birthday party stores, stationary shops, etc. The opponent’s goods of earlier mark 1 include printed matter in Class 16. All these goods can be found in the same shops, can have the same providers and distribution channels and furthermore, may coincide in the relevant public. Therefore, they are considered similar.

Contested services in Class 36

These contested services are financial, banking, investment and monetary services, identically contained or included in the opponent’s financial services in Class 36 of earlier mark 2. Therefore, they are identical.

Contested services in Class 41

Audio and video production, and photography; education and instruction; education, entertainment and sports; gambling are identical to the opponent’s educational services; entertainment services; sporting activities, either because they are identically contained in both lists such as sports (including synonyms or despite their slightly different wording), or because the contested services, such as gambling, are included in, or overlap with, the opponent’s entertainment 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 goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise, in particular in the financial sector. The degree of attention may vary from average to higher than average depending on the specialised nature of the goods/services. For example, as regards financial services, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be higher 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

Earlier mark 1:

Earlier mark 2:
Earlier trade marks	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).

All the signs consist of one letter, a stylised ‘F’, depicted with a double crossbar.

The Court made it clear that the fact that two trade marks consisting of the same letter are found to be identical from an aural and a conceptual point of view is relevant when it comes to assessing the existence of a likelihood of confusion. In such cases, it is only when the later trade mark causes a sufficiently different visual impression that a likelihood of confusion can be safely ruled out (judgment of T-187/10, G, EU:T:2011:202, § 60).

In the present case, the signs are similar to the extent that they coincide in the same letter, ‘F’ and in their graphical particularities in which is based the distinctiveness of the signs. The degree of distinctiveness is the same in all the signs. The fact that all signs are depicted including a double crossbar increases their visual similarities. Their differences, based on the intersection of the upper bar and the vertical bar in the earlier mark 1, the colour and black back ground of earlier mark 2 and the longer crossed bar in the contested sign, even perceived will not be sufficient to produce a different overall impression between the signs.

Therefore, visually, the marks are similar to an average degree since they are perceived as formed by the unique letter ‘F’, of different colour in case of earlier mark 2, but similar stylisation contrary to the applicant’s opinion. Aurally and conceptually, the marks are identical. As the signs have been found identical in two aspects of the comparison and similar in the other one, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

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 trade marks No 10 956 233 and No 14 939 871 have a reputation in the European Union and the United Kingdom in respect of part of the goods and services for which it is registered, namely for financial services, in Class  36.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. 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).

The opponent submitted the following evidence:

• Annex 1: print-outs from the opponent’s website www.fidelity.co.uk and copies of sample business papers and promotional and marketing materials dating up to 2017-2018, showing the earlier mark together with the expression Fidelity Worldwide Investment and the range of services provided, such as financial services, among others.

• Annex 2: examples of client communications in which appears the earlier mark together with the expression Fidelity Worldwide Investment related to pension plans, transactions or potential transactions buying and selling of equities and other investments, dated 2014-2016.

• Annex 3: opponent’s annual advertising expenditure in pounds, broken down by account line and category in the United Kingdom and the European Union between 2010 and 2017.

• Annex 4: electronic copies of outdoor advertising examples 2013-2015 of the advertisements of the opponent’s services under the earlier mark in news, including pictures of banners in airports with the earlier mark regarding financial services.

• Annex 5: a list of advertisements (2013-2017) including the earlier mark in relation to financial matters published in several magazines circulated throughout the United Kingdom addressed to trade professionals and consumers, such as Money Observer and Investors Chronicle.

• Annex 6: digital examples of online advertising including catalogues and additional digital content related to financial services published between 2012 and 2017. The earlier mark is depicted in all of them. In its arguments the opponent mentions that these contents are published in different third-party financial and corporate websites. In the evidence appear only the companies Massius and Grey.

• Annex 7: copies of Internet print-outs in French and English on the history of the Opponent’s successful investments business in the United Kingdom including the earlier mark. They show that in the past eight years, the Opponent has won the awards set out below in the United Kingdom and Europe and give a long list awards including copies of related information published at the Italian website www.fianzaoperativa.com in relation to the Awards Italy 2014, in www. Boursedirect.fr in relation to Awards France 2017 and LeRevenue (2013), among others, namely:

• Winner of the Overall Group Award at the Lipper Awards 2017;

• Best Investment ISA at the Moneywise 2017 Awards;

• Winner of Best Global Equity Income Fund at the Money Observer Awards 2016;

• Winner of the Overall – Large Award for France at the Lipper Awards 2016;

• Winner of At-Retirement Solution Provider Award at the Pensions Insight Awards 2015;

• Winner of Fund House of the Year for the UK, Norway, Netherlands, Luxembourg, Austria, Switzerland, Germany, Italy and Finland at Money Management awards 2015;

• Winner of Best Equity Fund House in the UK, France, Finland, Norway, Switzerland, Netherlands and Finland at the Morningstar 2014 Fund Awards;

• Winner of Best International Fund Group at the Professional Adviser Awards 2014; Winner of Best Fund Manager at the What Investment: Unit Trust Awards 2013;

• Winner of the Best Domiciled Fund – Equity European Award at the French Lipper Awards 2013;

• Winner of the Overall Group Award and Bond Award at the Lipper Awards 2012;

• Annexes 8 and 9: printout of www.google.co.uk that shows that the entire first page relates to the Fidelity business opponent’s earlier mark and copies of print-outs of searches made on 19 May 2016, and further searches made on 15 August 2018 for “investment providers”, “investment funds” and “investment funds providers”. Such searches produce results identifying the Opponent in the first page and second hit.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does demonstrate that the earlier trade marks have acquired enhanced distinctiveness (and a certain degree of reputation) through its use with regards to financial services, in Class 36 in a substantial part of the European Union.

The opponent argued that it is one of the largest and best-known investment and asset management companies in the world. It has offices, sales or other functions in 25 countries, including in the United Kingdom, Ireland, Germany, France, the Netherlands, Belgium, Luxembourg, Denmark, Sweden, Austria, Italy, Austria, Poland, Switzerland and Bermuda. It has some 7,000 employees, 400 investment professionals and 16 investment offices worldwide. Although there is no direct information showing the level of brand awareness or recognition of the earlier marks, the opponent has provided sufficient data relating to the intensity, geographical extent and market share to ascertain some reputation of its earlier marks. The opponent’s advertising materials and documents related to its annual figures included in its arguments, documents downloaded from its website, together with the various articles published by independent and impartial sources (Annexes 5-6) including pictures in the airports (Annex 4) and internet extracts (Annexes 8-9) and the long list of awards and its publications (Annex 7) an demonstrate that services bearing the earlier mark thereof have been offered for financial services within the relevant period and territory.

Therefore, all the evidence evaluated together enables reaching the conclusion that the opponent enjoys enhanced distinctiveness and a certain degree of reputation in at least, a substantial part of the European Union, for the relevant services by the relevant point in time, independently of the use of the mark with different colours and red or back backgrounds as these aspects are purely decorative and do not alter the distinctiveness of the earlier marks.

For the rest of goods and services, for which reputation is not claimed, the degree of distinctiveness of the earlier marks is average.

5. Global assessment, other arguments and conclusion

The distinctive character of the earlier mark is one of the factors taken into account in assessing the likelihood of confusion.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical, partly similar and partly dissimilar. They are directed at the public at large and professionals, whose degree of attention may vary from average from average to higher than average for the reasons explained above. The earlier marks enjoy an enhanceddegree of distinctiveness and a certain reputation in relation to financial services and a normal degree of distinctiveness in relation to the rest of goods and services.

All signs consist of one? letter; they are, consequently, very short marks and any difference between the signs may be a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

However, the stylisation of the signs under comparison is perceived as (quasi-)identical, with minimum differences that although they may be perceived by consumers, do, in any event, not cause a sufficiently different visual impression that a likelihood of confusion can be safely ruled out. Furthermore, 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).

In its observations, the applicant argues that there is a number of registered marks of that consist of the letter ‘F’ belongs. In support of its argument the applicant refers to a few signs, some of which are well-known, such as the mark of Facebook. The Opposition Division notes that the existence of several trade mark registrations, such as the Fashion TV logo is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the letter ‘F’. Under these circumstances, the applicant’s claims must be set aside.

Furthermore, regarding the cases quoted by the applicant, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

Considering all the above, there is a likelihood of confusion on the part of the public. It follows from the above that the contested sign must be rejected for the goods and services found to be identical or similar to those of the earlier marks.

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

Therefore, the Opposition Division continues with the examination of the opposition under Article 8(5) EUTMR in relation to the goods considered dissimilar, namely:

Class 9: Electronic currency converters; currency recognition machines; currency authentication apparatus and equipment; counterfeit money detecting apparatus; money sorting apparatus; money counting apparatus; money counting and sorting machines; money dispensing and sorting devices.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

The opponent claimed reputation in Europe, for financial services in relation to, inter alia, the above earlier marks.

The evidence submitted by the opponent to prove the reputation and enhanced distinctive character of the earlier trade mark has already been examined above under the ground of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As established above, the opponent’s earlier marks have a certain degree of reputation in a substantial part of the European Union with regard to financial services in Class 36.

2. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are aurally identical and visually and conceptually similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the earlier mark is inherently distinctive and the signs are visually similar to an average degree while aurally and conceptually identical as concluded above. The earlier mark enjoys a certain degree of reputation with regards to financial services in a substantial part of the relevant territory (the European Union).

The similarity between the signs arises essentially from the coincidence in the same letter and their similar stylisation. The small differences based on the colour and the stylisation of the letter ‘F’ will have no impact on the overall impression created by the signs. As has been shown above, their common letter ‘F’ depicted with a double crossed line will be easily associated with the same company or economically linked-undertakings, and this despite the higher degree of attention of the relevant consumers. Furthermore, the evidence of reputation submitted by the opponent has shown that earlier mark enjoys a certain degree of reputation in relation to financial services a substantial part of the EU market.

In relation to the contested goods electronic currency converters; currency recognition machines; currency authentication apparatus and equipment; counterfeit money detecting apparatus; money sorting apparatus; money counting apparatus; money counting and sorting machines; money dispensing and sorting devices in Class 9 and opponent’s financial services in Class 36 for which certain reputation was found, it is likely that the relationship between the opponent’s earlier mark and its activities originates a reputation that is associated not only with the services of the mark, but beyond them. Although there is no overlap between the targeted public, there is a close connection derived from the complementarity of such products and services and their identical purpose, the facilitation of various financial transactions and other related activities in the world of finance and currencies. Therefore, the Opposition Division concludes that, considering all the relevant factors, consumers probably, when encountering the contested sign, will establish a mental 'association' between the signs in conflict even in relation to those products that have been considered different and for which there is no risk of confusion.

Taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that the relevant public will make a mental connection between the signs in dispute, that is to say establish a ‘link’ between them. Therefore, the opposition is well founded under Article 8(5) EUTMR.

4. Risk of injury

Use of the contested sign will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent claims that as a result of substantial investments in advertising and promotion, the above mentioned earlier mark has a strong reputation in Europe. The use of the contested sign will cause the weakening of the distinctiveness of its earlier mark, due to its use in various markets and association with a potentially inferior product. Moreover, the applicant will take advantage of the reputation of the ‘ ’ trade mark in Europe.

In other words, the opponent claims that its earlier marks have a significantly strong distinctive character and reputation and that, therefore, the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

• The Applicant is likely to derive an unfair benefit from the association of the Applicant’s Mark with the F Device Marks by reaping public recognition, acceptance and trust which the Applicant has not itself earned. The Applicant will benefit unfairly from long years of investment by the Opponent in building up, protecting and promoting the F Device Marks as denoting services associated with, emanating from or authorised by the Opponent. As is apparent from the above, the Opponent has worked hard to create and maintain a high-profile brand. In using a mark that is closely similar to the F Device Marks such as to give rise to a link in the public mind with those F Device Marks, the Applicant would benefit from that image, despite not having done anything itself to cultivate it. That is manifestly an unfair advantage.

• There is also a significant risk that, while unfairly benefiting from the image and reputation of the F Device Marks, the Applicant will also damage the Opponent’s reputation in the F Device Marks. The Opponent has no control over how the Applicant uses the Applicant’s Mark, nor over the quality of the goods and services provided under it, nor the nature of the advertising used to promote them. Given the close similarity of the marks and the very high likelihood (not to say, inevitability) that they will be associated with one another, it is easy to see how the Applicant’s actions could negatively impact the F Device Marks, through for example the provision of poor quality services, or through advertising that is inconsistent with the image associated with the Earlier Marks.

Referring to the findings set out in section c) of this decision, the Opposition Division considers that the contested sign, when used on the same or a neighbouring market sector as the earlier reputed mark, will give the applicant an unfair advantage vis-à-vis its competitors. By affixing on its goods a sign which is similar to the earlier reputed mark, the applicant will benefit from the attractiveness of it. Through that, a misappropriation of the reputed mark’s attractive powers and advertising value will occur. This may lead to a situation of commercial parasitism where the applicant takes a ‘free-ride’ on the investment of the opponent in promoting and building-up repute for its mark, as it may stimulate the sales of the applicant’s goods to an extent which is disproportionately high in comparison with the size of its promotional investment.

Given the similarity between the signs which, results from the coincidences as set out above, and the certain degree of reputation that the earlier mark enjoys for the relevant public, the Opposition Division concludes that the contested sign is likely to take unfair advantage of the distinctive character or the repute of its earlier marks.

In other words, the opponent claims that use of the contested sign would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark, also referred as ‘dilution’ ‘whittling away’ or ‘blurring’ , since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark.

However, as seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as mentioned above, the Opposition Division has already concluded that the contested sign would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types of injury also apply.

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested sign must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based, namely Article 8(1)(b) and 8(4).

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, he 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

Manuela RUSEVA

Maria Clara IBAÑEZ FIORILLO

Edith Elisabeth VAN DEN EEDE

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.