OPPOSITION No B 3 048 481

Renaud Poulet, 1, Allée des Grillons, Dommartin 69380, France (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative)

a g a i n s t

Jed Grant, 7 Om Bechel, L6833 Biwer, Luxembourg (applicant)

On 28/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 481 is upheld for all the contested services.

2. European Union trade mark application No 17 481 623 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 of European Union trade mark application No 17 481 623 for the word mark ‘Smartcap’. The opposition is based on French trade mark registration No 3 774 108 for the word mark ‘SMARTCAP’. The opponent invoked Article 8(1)(b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

The opponent invoked Article 8(1)(b) EUTMR, which covers situations where there may be a likelihood of confusion due to similarity between the signs and the goods/services, or identity of only one of these two factors. However, Article 8(1)(a) EUTMR covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services.

The specific conditions under these provisions are interconnected. Therefore, an opposition based only on Article 8(1)(b) EUTMR that meets the requirements of Article 8(1)(a) EUTMR will be dealt with under the latter provision, without any examination under Article 8(1)(b) EUTMR.

a) The services

As a preliminary remark, the Opposition Division has found some discrepancies between the various translations into English of the opponent’s services (i.e. in the Notice of Opposition, in the translation provided together with the national certificate and in the observations submitted on 26/07/2018) and the original wording in the official certificate issued in French. In this regard, the present comparison of services will take into account the most accurate translation of the opponent’s services, which is the one provided together with the national certificate.

Accordingly, the services on which the opposition is based are the following:

Class 36: Financial affairs; monetary affairs; real estate affairs; analysis, appraisals, surveying, consultancy and appraisals in tax, finance and insurance matters; financial advice on business reconciliations, mergers and acquisitions; capital procurement and investment of capital, procurement, investment and management of funds; portfolio management; intervention in the financial markets; securities brokerage with stock market and securities houses; organization, administration and supervision of financial markets; research, negotiation and participation in equities; rating agencies; financial management.

The contested services are the following:

Class 36: Fund raising; Fund raising (Charitable -); Raising of capital; Capital (Raising of -); Finance (Raising of -); Raising of finance; Fund raising services; Charitable fund raising; Political fund-raising services; Fund raising for charity; Charitable fund raising services; Raising of financial capital; Fund raising for charitable purposes; Fund raising services via crowdfunding website; Raising of funds for financial purposes; Charitable fund raising in view of disaster precautions and prevention; Financial services related to the sale and purchase of securities; Financial services relating to the issuance and sale of mortgage-backed securities; Financial services relating to the sale of property; Financial services provided via the Internet; Financial services provided over the Internet and telephone; Financial management services provided via the Internet; Financial management via the Internet; Providing information and analysis via the Internet in the field of financial investments; Provision of financial services by means of a global computer network or the internet; Financial services provided over the telephone and by means of a global computer network or the internet; Information services relating to finance, provided on-line from a computer database or the Internet; Fundraising; Charitable fundraising; Fundraising services; Charitable fundraising services; Fundraising and sponsorship; Charitable fundraising services for underprivileged children; Providing information relating to charitable fundraising; Charitable fundraising by means of entertainment events; Charitable fundraising through the sale of charity stamps; Providing fundraising activities to support medical research and procedures for those in need; Provision of charitable fundraising services in relation to carbon offsetting; Issuing tokens of value; Issue of tokens of value; Tokens of value (Issue of -); Issuing of tokens of value; Issuance of tokens of value; Provision of prepaid cards and tokens; Issue and redemption of tokens of value; Issue of tokens, coupons and vouchers of value; Issuing of tokens of value in relation to incentive schemes; Issuing tokens of value as a reward for customer loyalty; Providing information relating to the issue of tokens of value; Issuing tokens of value in the nature of gift vouchers; Issuing of tokens of value in relation to customer loyalty schemes; Issuing tokens of value as part of a customer membership scheme; Currency trading; Currency dealing; Foreign currency services; Brokerage of currency; Exchange services (Currency -); Currency exchange services; Foreign currency exchange; Buying and selling currency; Provision of foreign currency; Foreign currency dealing; Swaps of currency rates; Currency exchange and advice; Trading in foreign currency; Currency exchange rate quotations; Currency trading and exchange services; On-line real-time currency trading; Financial transactions relating to currency swaps; Exchange of currency (Agencies for the -); Issuing of travellers' cheques and currency vouchers; Computerised financial services relating to foreign currency dealings; Brokerage services relating to securities offering; Automated securities brokerage; Brokerage of securities; Securities brokerage; Securities trading services; Trading in securities; Securities and assets brokerage; Securities settlement; Securities underwriting; Financial securities; Financial services relating to securities; Information services relating to securities; Providing stock/securities market information; Investment in securities (Services for -); Comparison of performance of securities; Management of portfolios comprising securities; Valuation of portfolios of securities; Securities and commodities trading services; Trading of overseas market securities futures; Brokerage services relating to the securities markets; Financial investment in the field of securities; Provision of computerised information relating to securities; Brokerage of shares or stocks and other securities; Stock exchanges for dealing in shares and other financial securities; Computerised information services for stocks; Stocks and bonds brokerage services; Stocks and shares information services; Stocks and bonds brokerage; Recording of inter parties transactions in respect of stocks; Organization of stock exchanges for the benefit of the trade of stocks and other financial values; Financial exchange; Financial transactions; Financial clearing; Arranging financial transactions; Financial clearing houses; Financial clearing services; Computerised financial services; Financial spread betting; Financial brokerage services; Financial transaction services; Financial information services relating to financial stock markets; Brokerage of financial derivatives; Brokerage services in financial markets; Financial services relating to investment; Financial and monetary transaction services; Financial sponsorship of sporting activities; Financial sponsorship of entertainment activities; Automatic recording services for financial transactions; Brokerage services relating to financial instruments; Financial sponsorship; Sponsorship (Financial -); Financial sponsorship services; Financial sponsorship and patronage; Financial sponsorship and funding of films; Financial sponsorship of visual arts events; Financial sponsorship and funding of radio programs; Financial sponsorship and funding of television programs; Financial sponsorship of theater events; Financial sponsorship of dance events; Financial sponsorship of cultural events; Crowdfunding.

Based on the natural meaning of the services in comparison, also supported by the classification Harmonised Database (HDB¹), all the contested services fall under at least one of the following broad categories or subcategories:

(1) ‘Fundraising and financial sponsorship’ (e.g. charitable fund raising; financial sponsorship of dance events).

(2) ‘Financial and monetary services, and banking’ (e.g. raising of financial capital; financial services provided via the Internet) and the subcategories:

a. ‘securities and commodities trading services’ (e.g. brokerage of securities; trading in securities);

b. ‘financial information, data, advice and consultancy services’ (e.g. information services relating to securities; recording of inter partes transactions in respect of stocks);

c. ‘currency trading and exchange services’ (e.g. foreign currency services; trading in foreign currency);

d. ‘investment services’ (e.g. securities underwriting; financial spread betting);

e. ‘financial transfers and transactions, and payments services’ (e.g. financial transaction services);

f. ‘financing and funding services’ (e.g. crowdfunding).

(3) ‘Provision of prepaid cards and tokens’ (e.g. issuing of tokens of value).

Accordingly, the contested services that fall under the above mentioned categories (1) and (2) are identical to the opponent’s services because they are included in the broad categories of the opponent’s financial affairs; monetary affairs; financial management (e.g. the contested fund raising, raising of capital; financial services relating to the sale of property; financial management via de Internet; financial exchange; trading in securities; providing stocks/securities market information; currency trading; financial services relating to investment; crowdfunding).

As regards the contested services falling under the above mentioned category (3), the ‘provision of prepaid cards and tokens’ includes the services of providing cards, which could be used as, inter alia, debit/credit cards, loaded up with cash before their use; and providing tokens, which are objects (such as of metal) endowed with certain value and could be used as substitute for money (e.g. payment of goods). These services could be, furthermore, provided by financial institutions. Therefore, it is considered that the contested services that belong to this category (e.g. issuing tokens of value; issue of tokens, coupons and vouchers of value) overlap with the opponent’s financial affairs and they are considered identical.

b) The signs

SMARTCAP	Smartcap
Earlier trade mark	Contested sign

As the opponent correctly points out, the signs in conflict are word marks. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case or in a combination of the two.

Therefore, the signs are identical.

c) Conclusion

The services and the signs have been found identical.

Where double identity is established, the opponent is not required to demonstrate likelihood of confusion in order to prevail; the protection conferred by Article 8(1)(a) EUTMR is absolute. In the present case, since there is double identity, there is no need to carry out an evaluation of likelihood of confusion, and the opposition must be automatically upheld (Guidelines of the Office, Part C, Opposition, Section 2, Double identity and likelihood of confusion, Chapter 1, General Principles, Point 2.1).

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

Vita VORONECKAITE

Marta GARCÍA COLLADO

Monika CISZEWSKA

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.