OPPOSITION No B 3 034 686

DekaBank Deutsche Girozentrale, Mainzer Landstr. 16, 60325 Frankfurt am Main, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

Decta Limited, Suite 3 third floor, 62 Baywater road, London W2 3PH, United Kingdom (applicant).

On 25/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 034 686 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 411 018 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 17 411 018 ‘Decta Expert’. The opposition is based on, inter alia, European Union trade mark registration No 1 555 705 ‘Deka’ in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR, and on European Union trade mark registration No 3 772 051 ‘ ’ in relation to which 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 1 555 705 and No 3 772 051.

1. The goods and services

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

1. European Union trade mark registration No 3 772 051:

Class 9: Computer programs.

2. European Union trade mark registration No 1 555 705:

Class 35: Business management, business administration, advertising, with regard to banking services, monetary affairs, financial affairs, real estate affairs and investment business.

Class 36: Financial affairs, monetary affairs, real estate management.

Class 42: Computer programming, temporary accommodation.

The contested goods and services are the following:

Class 9: Information technology and audiovisual equipment.

Class 35: Business assistance, management and administrative services; business analysis, research and information services.

Class 36: Financial and monetary services, and banking.

Class 42: IT services; testing, authentication and quality control; science and technology services.

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 information technology and audiovisual equipment includes goods such as computers. To that extent, these goods are similar to the opponent’s computer programs of earlier trade mark (1) as they have the same producers, end users and distribution channels. Furthermore, they are complementary.

Contested services in Class 35

The contested business management and administrative services include respectively, as broader categories, the opponent’s business management, business administration, with regard to banking services, monetary affairs, financial affairs, real estate affairs and investment business of earlier trade mark (2). Therefore, they are identical.

The opponent’s business management with regard to banking services, monetary affairs, financial affairs, real estate affairs and investment business of earlier trade mark (2) are services usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

Consequently, the contested business assistance; business analysis, research and information services overlap with the opponent’s business management with regard to banking services, monetary affairs, financial affairs, real estate affairs and investment business and are, therefore, identical.

Contested services in Class 36

The contested financial and monetary services are identically contained in the list of services of earlier trade mark (2), (including synonyms).

The contested banking is included in the broad category of the opponent’s financial affairs. Therefore, they are identical.

Contested services in Class 42

The contested IT services include, as a broader category, the opponent’s computer programming of earlier trade mark (2). Therefore, they are identical.

The contested testing, authentication and quality control are broad categories of services that may be applied to different technical and scientific areas, as well as in the IT field as part of the quality assurance process. Testing refers to the process of verifying that a product works as expected. Authentication is the action of establishing that something is genuine or valid. Quality control is a procedure or set of procedures intended to ensure that a manufactured product or performed service adheres to a defined set of quality criteria or meets the requirements of the client or customer. These contested services can have a close connection to the opponent’s services of computer programming of earlier trade mark (2). The services under comparison may, for example, be part of the same process by which computer programs are created and checked before being brought to the market. They may be offered by the same specialists and may target the same public through the same channels to satisfy the same or complementary needs. Therefore, these services are highly similar.

The contested science and technology services are various scientific and technology-related activities that are concerned with research and experimental development and contribute to the generation, dissemination and application of scientific and technical knowledge. These services include mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activity; such services are provided by members of professions such as chemists, physicists, engineers or computer programmers. In light of the above, the contested services are similar to the opponent's computer programming of earlier trade mark (2) as they can have the same nature. In addition, they can be directed at the same relevant public and may have the same providers.

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 to varying degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise, such as in the case of information technology and audiovisual equipment.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

(1) European Union trade mark registration No 3772 051 Deka (2) European Union trade mark registration No 1 555 705	Decta Expert
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).

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.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). In the present case, a significant part of the public in the European Union will perceive the English word ‘Bank’ in earlier trade mark (1) as standing for an institution where people or businesses can keep their money, either because it is a basic English word or because the equivalent word in the corresponding official language is the same (e.g. in German, Polish and Swedish) or because it is very close (e.g. ‘banque’ in French, ‘banco’ in Spanish and Portuguese, ‘banca’ in Italian, ‘banka’ in Czech, Slovenian and Latvian, etc.). Therefore, for a significant part of the public in the relevant territory that will understand the meaning of this word, it is weak in relation to computer programs since they could be programs adapted to the financial sector.

Although ‘DEKA’ in the earlier marks comes from the Greek and stands for ‘ten’, a significant part of the non-Greek-speaking part of the public in the relevant territory, such as the English-, French- and Spanish-speaking parts of the public, will not associate the term ‘DEKA’ as such with any meaning since its use is not usual. Therefore, the Opposition Division considers that this element has no meaning for this part of the public and that it is, therefore, distinctive.

Likewise, the verbal element ‘DECTA’ in the contested sign is meaningless and is equally distinctive at least for the English-, French- and Spanish-speaking part of the public. However, the word ‘EXPERT’, which is identical in English and in French and very close in Spanish, ‘experto’, has a laudatory character and is only weak since it will be associated by this part of the public with a person who is very knowledgeable or skilful in a particular area and therefore informs the public about the exceptional quality of the goods and services provided.

Consequently, for the reasons set out above, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-, French- and Spanish-speaking parts of the public.

Furthermore, earlier mark (1) has no element that could be considered clearly more dominant than other elements and contains a less distinctive figurative element of a purely decorative nature to the left of the verbal element.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letters ‘DE**A****’ that almost constitute earlier mark (2) and the most distinctive part of earlier mark (1) in their entirety. However, they differ in the letter ‘K’ placed in the third position of both earlier marks and in the letters ‘CT’ in the third and fourth positions of the contested sign. They also differ in the weak word ‘BANK’ of earlier mark (1), in the less distinctive decorative element placed to its left, which have no counterparts in the contested mark and in the additional word ‘Expert’ of the contested sign which is also weak.

Therefore, the contested sign is visually similar to an average degree to earlier mark (2) and similar to a lower than average degree to earlier mark (1).

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DEC/K*A****’, which constitute earlier mark (2) and the most distinctive part of earlier mark (1) in their entirety, since the pronunciation of the letters ‘C’ and ‘K’ is identical in English, French and Spanish. The pronunciation of the signs differs in the additional letter ‘T’ in the fourth position of the contested sign and in the additional word ‘Expert’ of the contested sign and in the word ‘BANK’ at the end of earlier mark (1), both of which are however weak.

Therefore, the contested sign is aurally similar to an above average degree to earlier mark (2) and similar to an average degree to earlier mark (1).

Conceptually, neither of the signs have a meaning as a whole for the parts of the public under analysis. Although the words ‘Bank’ in earlier mark (1) and ‘Expert’ in the contested sign will evoke a concept as explained above, since these concepts are only weak in relation to the goods and services concerned, they will not create a relevant conceptual difference between them and the relevant public will rather be attracted by the additional fanciful verbal elements of these signs, or by the only distinctive verbal element of earlier mark (2), none of which has any meaning. Since a conceptual comparison is not possible on the basis of the fanciful verbal elements of the signs to which the relevant public’s attention will be attracted, the conceptual aspect does not influence the assessment of the similarity of the signs.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, earlier European Union trade mark registration No 1 555 705 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 opponent did not explicitly claim that its earlier European Union trade mark registration No 3772 051 is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods or services in question from the perspective of the parts of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak element in earlier mark (1), as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

Furthermore, 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).

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 the present case, the goods and services are partly identical and partly similar to varying degrees and the degree of attention of the public may vary from average to high. The contested sign and earlier mark (1) are visually similar to a lower than average degree, aurally similar to an average degree and no conceptual comparison is possible for the reasons set out above in section c) of this decision. The contested sign and earlier mark (2) are visually similar to an average degree, aurally similar to an above average degree and the assessment is not influenced by the conceptual aspect. The similarity is due to the overwhelming commonalities in the signs, in particular because the main differentiating elements have only a weak degree of distinctiveness or only fulfil a purely decorative role. Their impact on consumers is consequently reduced since the public will rather focus on the most distinctive part of earlier mark (1) and of the contested sign, which, moreover, are at the beginning of the signs and constitutes the only element of earlier mark (2).

Indeed, 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.

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). This is also true for business customers with specific professional knowledge.

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.

Considering all the above, even if some of the goods and services are similar and even if the degree of attention of the public may be high, considering the overall similarities between the signs on account of the considerable visual and aural coincidences in their most distinctive element, there is a likelihood of confusion on the part of the English-, French- and Spanish-speaking parts of the public in the relevant territory. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 1 555 705 and No 3 772 051. It follows that the contested trade mark must be rejected for all the contested goods and services.

As these earlier rights lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and 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 successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of European Union trade mark registration No 1 555 705 due to its extensive use and reputation as claimed by the opponent. The result would be the same even if this earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) 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

Pedro JURADO MONTEJANO

Sandra IBAÑEZ

Sam GYLLING

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.