OPPOSITION Nо B 3 108 040

Valeur Et Capital, 94 Quai Charles de Gaulle, 69006 Lyon, France (opponent), represented by Bird & Bird Lyon, Le Bonnel 20 rue de la Villette, 69328 Lyon Cedex 03, France (professional representative)

a g a i n s t

Valor Capital Kockázati Tőkealap-Kezelő Zártkörűen Működő Részvénytársaság, Széchenyi István Tér 7‑8., 1051 Budapest, Hungary (applicant), represented by Judit Varga, Magyar Jakobinusok Tere 2‑3. 4. em. 18., 1122 Budapest, Hungary (professional representative).

On 14/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 108 040 is upheld for all the contested services.

2. European Union trade mark application No 17 481 102 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services (Class 36) of European Union trade mark application No 17 481 102 for the word mark ‘Valor Capital’. The opposition is based on French trade mark registration No 4 207 325 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The services

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

Class 36: Finance services; monetary affairs; real estate affairs; promotion (financing) of real estate projects and real estate brokerage; asset management and administration of real estate assets; tax exemption services, insurance brokerage and services, in particular life insurance; mutual funds and fund investments; management of financial portfolios, movable and immovable properties; activities relating to investment in equity, information and consultancy services relating to real estate; consultancy relating to real estate affairs, financial affairs, taxation and insurance; consultancy and information relating to real estate affairs, financial affairs, taxation and insurance; consultancy relating to amortisation of real estate investments; real estate rental consultancy; consultancy relating to asset management; financial profitability studies relating to real estate projects; arranging the provision of finance; arranging of credit; mortgages; credit simulations; collection of rent and charges; surety services; insurance for unpaid rent, deterioration of real estate and vacant real estate; accommodation bureaux (apartments); estate agency; financial and real estate operations and transactions; appraisal (real estate -); real estate and financial appraisal; fiscal assessments; real estate prospecting, namely searches for land and real estate for sale; arranging of real estate leases and undertakings to sell real estate; real estate management; real estate rental management; apartment house management; management of real estate complexes, buildings and residences for use as dwellings, housing developments, accommodation, premises and buildings for commercial use, shopping centres, office premises and buildings, warehouses, production facilities (factories, workshops, laboratories), logistical buildings, car parks; co-ownership associations, namely building management; arranging letting of real estate; real estate brokerage; insurance brokerage; mortgage brokerage; brokerage and leasing of land, buildings, accommodation, apartments, studios, studio flats, detached houses, villas, bungalows, business premises, offices, warehouses, production facilities (factories, workshops, laboratories), logistical buildings; car park brokerage; financial management of real estate projects; financial management of new real estate programmes or of real estate restoration programmes; financial management of sports centres and complexes, sports residences, fitness centres, leisure centres and complexes, leisure residences, hotel centres and complexes, holiday residences and holiday camps, holiday villages, hotels, hotel residences, hotel chains, student residences, temporary accommodation; financial management of real estate assets, for others; financial management of maintenance costs; financial management of exhibition facilities and halls; financial sponsorship and patronage; negotiation and conclusion of real estate transactions.

The contested services are the following:

Class 36: Insurance underwriting; provision of prepaid cards and tokens; real estate services; fundraising and sponsorship; valuation services; financial and monetary services, and banking; safe deposit services.

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

The term ‘in particular’, 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).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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.

Real estate services; financial and monetary services are identically included in both lists of services (including synonyms).

The contested insurance underwriting is included in the broad category of the opponent’s insurance services, in particular life insurance. Therefore, they are identical.

The contested provision of prepaid cards and tokens; fundraising and sponsorship; valuation services; banking are included in the broad category of, or overlap with, the opponent’s financial services. Therefore, they are identical.

The contested safe deposit services are similar to the opponent’s financial services as they have the same financial nature. They usually coincide in provider, relevant public and distribution channels. It is usual that safe deposit services are also provided by financial institutions like banks, which are considered a rather secure place in general and have secure vaults.

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 or similar are directed at the public at large and business customers with specific professional knowledge or expertise.

Since financial services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

The purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

c) The signs

	Valor Capital
Earlier trade mark	Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The verbal element ‘VALEUR’ of the earlier mark means ‘value; worth’ (information extracted from Larousse on 14/12/2020 at https://www.larousse.fr/dictionnaires/francais/valeur/80972?q=valeur#80026). Bearing in mind that the relevant services are in the field of finance, real estate and insurance, this element is non-distinctive as it refers to the relevant services or to their characteristics.

The verbal element ‘Valor’ of the contested sign alludes to the French word ‘valeur’ with the abovementioned meaning. Therefore, it is weak in relation to the relevant services.

The common element ‘CAPITAL’ means ‘sum of money, asset’ (information extracted from Larousse on 14/12/2020 at https://www.larousse.fr/dictionnaires/francais/capital/12900?q=capital#12745). Bearing in mind that the relevant services are finance related, this element is non-distinctive.

Although the signs’ elements ‘VALEUR’/‘Valor’ and ‘CAPITAL’ are non-distinctive and weak, they are on an equal footing in both signs regarding their distinctiveness.

The earlier mark’s verbal element ‘ET’ is the conjunction ‘and’, which will be perceived as a simple connector.

The earlier mark’s figurative element is a small abstract figure in dark grey and beige. Due to its small size and position (at the end of the sign), it will rather be perceived as a decorative element.

The earlier mark has no element that could be considered clearly more dominant than other elements. Its verbal elements are depicted in a rather standard typeface; the first verbal element is in beige, whereas the remaining verbal elements are in dark grey.

Visually, the signs coincide in the sequence of letters ‘VAL**R’ of their first verbal elements and in the common element ‘CAPITAL’. However, the signs differ in the middle letters of their first elements, ‘EU’ of the earlier mark and ‘O’ in the contested sign. Furthermore, the earlier mark differs in its additional element ‘ET’, which a simple connector.

In addition, the signs differ in the earlier mark’s fairly standard typeface, colours and figurative element. However, 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).

It follows that the signs are visually similar to at least an average degree because their verbal elements are almost identical and are positioned in the same order, their depiction is similar and the earlier mark’s figurative element is not outstanding enough that it could outweigh the similarities in the marks’ verbal elements.

Aurally, the earlier mark will be pronounced as [va-lœʁ-e-ka-pi-tal], whereas the contested sign will be pronounced as [va-lɚ-ka-pi-tal]. The pronunciation of the signs coincides in the sound of their first and last three syllables and differs slightly in the end of the second syllable and in the earlier mark’s conjunction ‘ET’, which produces just one sound [e] and is in the middle of the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as containing conceptually identical verbal elements ‘VALEUR’/‘Valor’ and ‘CAPITAL’, and this concept will not be significantly altered in the earlier mark by the presence of the connector ‘ET’. There are no further meaningful elements in the signs. Therefore, the signs are conceptually similar at least to an average degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the services in question.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

The services are identical or similar and target the general and professional public, whose degree of attention is high.

The Opposition Division finds it useful to recall that the EUIPO and a number of trade mark offices of the European Union have agreed on a Common Practice under the European Trade Mark and Designs Network with regard to the impact on likelihood of confusion of components that are non-distinctive or distinctive only to a low degree. According to the Common Practice, when the marks share an element with no or with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks.

In the present case, as established above, the signs are visually and conceptually similar at least to an average degree and aurally highly similar, as they share the common verbal element ‘CAPITAL’ and due to the similarities in their verbal elements ‘VALEUR’ and ‘Valor’. Although these elements are non-distinctive and weak, they have the biggest impact in the overall impression created by the signs. The differences between the signs are confined to the earlier mark’s simple connector ‘ET’ and figurative aspects, which have less impact.

Furthermore, the signs do not have any further verbal and figurative elements, that would make it possible to differentiate between them. Therefore, in an overall assessment of the marks, the differences do not have sufficient impact to counteract the similarities and enable the relevant public to safely distinguish between them.

Therefore, it is highly conceivable that the relevant public, who will have to rely on its imperfect recollection of the signs, could confuse the signs or believe that the identical or similar services originate from the same or economically linked undertakings.

This finding is not called into question by the weak distinctive character of the earlier trade mark. Indeed, according to established case-law, the finding of a low degree of distinctiveness for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in this case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor, inter alia, involved in that assessment. In the present case, despite the weak distinctive character of the earlier mark, there is a likelihood of confusion, in particular on account of the similarity between the signs as well as the identity or similarity of the services.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded and the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, 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

Beatrix STELTER

Lidiya NIKOLOVA

Karin KLÜPFEL

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.