OPPOSITION No B 3 070 106

Jack Aksan, Sonnenbergstraße 37, 8032, Zürich, Switzerland (opponent), represented by Grünecker Patent- Und Rechtsanwälte Partg MBB, Leopoldstr. 4, 80802, München, Germany (professional representative)

a g a i n s t

Cathay Legal Limited, RMS 05-15, 13A/F, South Tower, World Finance Center, Harbour City, 17 Canton Road, TST KLN, Hong Kong Special Administrative Region of the People's Republic of China (applicant), represented by Sbgk Ügyvédi Iroda, Andrássy út 113, 1062, Budapest, Hungary (professional representative)

On 30/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 106 is partially upheld, namely for all the contested services except real estate services; all of the aforesaid through running network that connects clients with lawyers, tax and communications experts from different countries in Class 36.

2. European Union trade mark application No 17 321 308 is rejected for all the services applied for, with the exception of real estate services; all of the aforesaid through running network that connects clients with lawyers, tax and communications experts from different countries in Class 36, in relation to which it may proceed.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 321 308 for the word mark ‘Cathay Associates’. The opposition is based on European Union trade mark registration No 11 148 046 for the word mark ‘CATEY’.

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.

a) The services

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

Class 35: Services relating to marketing, business management advisory services and provision of assistance in the operation of sales.

Class 36: Financial services.

Class 42: Writing, development and updating of computer software; maintenance and support services for computer software; rental, research, design and consultancy services relating to computer software.

The contested services, after a limitation during opposition proceedings, are the following:

Class 35: Advertising, business analysis, research, business assistance, administrative services, foreign trade information, negotiation of contracts relating to purchase and sale of goods, all of the aforesaid through running network that connects clients with lawyers, tax and communications experts from different countries.

Class 36: Fundraising and sponsorship, real estate services; valuation services, investment consultancy, all of the aforesaid through running network that connects clients with lawyers, tax and communications experts from different countries.

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 services in Class 35

The contested advertising (- through running network that connects clients with lawyers, tax and communications experts from different countries) overlaps with and is therefore identical to the opponent´s services relating to marketing in the same class.

The contested business analysis, research, business assistance, administrative services, foreign trade information, negotiation of contracts relating to purchase and sale of goods (- all of the aforesaid through running network that connects clients with lawyers, tax and communications experts from different countries) are identical to the opponent’s services in Class 35: Services relating to business management advisory services and provision of assistance in the operation of sales, because they overlap.

Contested services in Class 36

The contested fundraising and sponsorship; valuation services, investment consultancy all of the aforesaid through running network that connects clients with lawyers, tax and communications experts from different countries fall in the broad category of the opponent’s services in Class 36, and are therefore considered identical.

The contested real estate services (- all of the aforesaid through running network that connects clients with lawyers, tax and communications experts from different countries) are dissimilar to all the services covered by the earlier right because they differ in nature, purpose, method of use, distribution channels/points of sale. They are neither complementary nor in competition, are not directed at the same consumers and are not likely to originate from the same kind of undertakings.

The opponent argues that similarities exist between the contested real estate services and the financial services covered by the earlier right. However, the contested services consist mainly of real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of related information. This mainly involves finding a property, making it available for potential buyers and acting as an intermediary. Therefore, consumers clearly distinguish real estate agents’ services from those of financial institutions, such as the ones in Class 36 of the opponent. They do not expect a bank to find housing or a real estate agent to manage their finances. Financial services do not have the same nature, the same intended purpose or the same method of use as real estate services. Whereas financial services are provided by financial institutions for the purposes of managing their clients’ funds and consist of, inter alia, the holding of deposited funds, the remittance of funds, the granting of loans or the performance of various financial operations, real estate services are services connected with a property, namely, in particular, the lease, the purchase, the sale or the management of such a property. Furthermore, as regards the fact that the services in question might be found in the same distribution channels, it is clear that real estate services are not, in principle, provided on the same premises as financial services (17/09/2015, T-323/14, Bankia / BANKY, EU:T:2015:642, § 34-38). Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service. It must therefore be concluded that these services are dissimilar even if financial services are essential or important for the use of real estate. The consumers would not attribute responsibility for both services to the same company (11/07/2013, T-197/12, Metro, EU:T:2013:375, § 47-51).

b) 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 general public and also professionals. The degree of attention paid during their purchase is likely to be higher than average, since they are not frequently purchased, can be of high prices and can have economic impact for the purchaser. For instance, the finance-related services are specialised, and 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, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

c) The signs

CATEY	Cathay Associates
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As regards the concept of ‘CATEY’, the applicant argues that it is a geographical term, and that it is also part of a name of an airport in Dominican Republic and a village in the peninsula called ‘Cape Samana’. Even if the word ‘Catey’ exists throughout the world, this statement is not accompanied by any evidence that could demonstrate that the relevant public will be aware of such meanings. Therefore, the claim is set aside, and ‘CATEY’ is considered to be perceived by the relevant public as not having any meaning and therefore as of average distinctive character.

As regards the word element ‘Cathay’ in the contested sign, the applicant has correctly argued that this word is an archaic name for China in English. Although it is not excluded that a part of the relevant public could have the required cultural level to grasp this meaning, in the absence of evidence ex contrario, the Opposition Division considers that a substantial part of the relevant public will not recognise this meaning and will perceive ‘Cathay’ as a fanciful word (18/09/2012, R 2351/2011-2, CATHAY / TATAY (fig.) et al., § 50).

The word ‘Associates’ is the English term to refer to two or more persons or entities that are somehow linked in relation to businesses and that can share certain characteristics, such as their goals or contributions to a common project. This term will be understood by, inter alia, the English-speaking consumers in the relevant territory. For this part of the public, the word ‘Associates’ is non-distinctive, for being a clear reference to the type of entity offering/rendering the services.

Taking the above into account, the Opposition Division will focus on the English-speaking part of the public, for whom ‘CATAY’ and ‘Cathey’ are meaningless, and ’Associates’ is non-distinctive, since from this perspective at least part of the differences between the marks are of reduced impact.

As claimed by the opponent, 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. It is therefore relevant to note that the coincidences between the marks, described in more detail below, are found at the beginning of the contested mark.

It has to be noted that the signs are word marks. Therefore, the words as such are protected and not their written form. It is therefore irrelevant if they are depicted in upper or low case letters.

Visually, the signs coincide in ‘CAT-Y‘, found in the only element forming the earlier mark and in the element of greater weight in the contested sign, for the reasons explained above (i.e. degree of distinctiveness and position within the mark).

The marks differ in the middle letters of that coinciding sequence of letters, namely ‘E‘ of the earlier mark and ‘HA‘ of the contested sign, whose impact is nevertheless diluted as they are preceded and followed by the same letters, and in the term ‘Associates‘, which has very reduced impact for the reasons explained above (i.e. lack of distinctiveness and position within the mark).

It is therefore considered that the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs differ only in the sounds of their letters (‘E’ versus ‘A’) referred to above, given that, for the relevant public, the differing letter ‘h’ of the contested sign will not be pronounced. They also differ in the sound of ‘Associates‘.

Taking into account the greater or lesser impact of each of the elements forming the marks, for the reasons explained above, they are considered to be aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of ‘Associates‘ in the contested sign, as explained above, this term is void of distinctive character and cannot serve to indicate the commercial origin. Therefore, the earlier mark has no meaning in that 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.

d) 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.

e) Global assessment, other arguments and conclusion

The applicant claims that there are European Union trade marks validly registered and beginning with the word “Cathay” in Classes 35 and 36. It argues that the refusal of the contested sign would be contrary to the decisions that led to the registration of the other EUTMs referred to.

In this regard, the Opposition Division notes that the existence of previous trade mark registrations presenting a similar pattern or some coincidences with the contested sign has no impact on the present decision. Article 8 EUTMR only concerns the conflict between the EUTM applied for and the opponent’s earlier right. Therefore, the proceedings that led to the registration of the EUTMs referred to by the applicant are irrelevant and cannot be taken into consideration. This argument is therefore set aside.

The services compared are partly identical and partly dissimilar. They are directed at the general public and also at professionals. The degree of attention paid during their purchase is likely to be higher than average.

The signs are visually similar to an average degree and aurally similar to a high degree, and do not have any concept in common. The earlier mark is of average distinctive character.

The coincidences are found in the only element of the earlier mark and in the element of greater weight in the contested sign, for the reasons explained above (i.e. degree of distinctiveness and position within the mark). The differences are of reduced impact for the reasons explained above (i.e. lack of distinctiveness and position of the differing word within the contested mark)

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).

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).

In this case, it is considered that the commonalities between the marks, together with the identity between some of the services, are enough to counteract the dissimilarities between the marks at least in relation to those services.

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. Indeed, it is highly conceivable that in this case the relevant consumers will spot at least part of the differences between the marks, and perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the relevant territory, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

It is therefore not necessary to enter into the examination of the perception of the signs by the part of the public not taken into account above, since their perception of will not alter the dissimilarity found between the remaining services, and therefore the same outcome will be reached in relation to them.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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 Opposition Division

Inés GARCÍA LLEDÓ

María del Carmen SUCH SANCHEZ

Helen Louise MOSBACK

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.