OPPOSITION No B 3 046 982

CashEuroNet UK, LLC, Suite 1000, 175 W. Jackson Blvd, 60604 Chicago, United States of America (opponent), represented by Squire Patton Boggs (UK) LLP, 7 Devonshire Square, EC2M 4YH London, United Kingdom (professional representative)

a g a i n s t

Q2Q Capital (UK) Advisors Ltd., 11-12 St. Jame's Square Mayfair, SW1Y 4LB London, United Kingdom (applicant).

On 26/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 982 is upheld for all the contested services.

2. European Union trade mark application No 17 511 312 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 17 511 312 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 14 253 066 for the figurative mark . The opponent invoked Article 8(1)(a) and (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 registration No 14 253 066, as is the sign with the broadest protection and the one that shows more commonalities with the contested sign, as it will be explained hereunder.

a) The services

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

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; money lending; short term consumer loan services; short term loans; installment loans; payday advances; payday loan services; lending on mortgages; providing deferred deposits and money orders; electronic funds transfer; financial overdraft protection; financial investigation services; financial analysis and financial consulting services; financial research; financial management; financial valuations; credit card and debit card services; charge card services; money exchange services; cheque verification; financial clearing; home banking; internet banking; information and advisory services relating to all of the aforementioned services, including the provision of such information and advisory services on-line or via mobile communications devices.

The contested services are the following:

Class 36: Financial and monetary services, and banking; Fundraising and sponsorship; Insurance services;  Real estate services; Safe deposit services; Valuation services; Insurance underwriting; none of the aforesaid in relation to credit cards, debit cards, charge cards, electronic funding, currency transfer services, electronic payment services, travel insurance services, or cheque verification services or ATMs.

The limitation at the end of the applicant’s list of services ‘none of the aforesaid in relation to credit cards, debit cards, charge cards, electronic funding, currency transfer services, electronic payment services, travel insurance services, or cheque verification services or ATMs’ is a restriction to the purpose of the services. The below comparison is carried out taking into account this premise.

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.

Financial and monetary services; insurance services; real estate services are identically contained in both lists of services (including synonyms).

The contested banking includes, as a broader category, the opponent’s home banking. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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

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

The contested safe deposit services are not, by definition, financial or monetary affairs. One may store money, documents or other valuables in safe deposit boxes. However, it is usual that safe deposit box services are also provided by financial institutions like banks, which are considered a rather secure place in general and dispose of secure vaults. Therefore, the applicant's safe deposit services and the opponent's financial affairs may coincide in distribution channels, provider and relevant public. Therefore, they are considered to be similar.

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.

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).

The remaining services are specialised services that may have important financial consequences for their users and, therefore, 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

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 earlier mark consists of two upper case letters ‘Q’, which are interconnected. The letters are depicted in white inside a black label. The letter ‘Q’ and the combination ‘QQ’ do not have any meaning in relation to the relevant services and are, therefore, distinctive.

The contested sign may be perceived as the combination of two upper case letters depicted in grey, namely a letter ‘O’ and a letter ‘Q’ or even two letters ‘Q’, which are interconnected. In any case, these letters do not have any meaning in relation to the relevant services and are, therefore, distinctive. The Opposition Division will focus the present comparison in the part of the public that will perceive the contested sign as the combination of letters ‘QQ’, since this is the scenario in which the signs show more similarities and is thus where a likelihood of confusion would be most likely to arise.

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). In the present case, the verbal elements of the earlier mark will have more impact than the black label, since the latter is likely to be perceived by consumers essentially as a mere decorative element and not as an element indicating the commercial origin of the services.

Visually, the signs coincide in the combination of two upper case letters ‘Q’, which are interconnected. However, they differ in the black label included in the earlier mark, which has a purely decorative nature, as well as in the colours of the signs, as explained above.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛QQ’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The services are partly identical and partly similar. They target the public at large and business customers with higher than average degree of attention. The earlier mark has a normal distinctiveness.

The signs have significant visual similarities and are aurally identical. Moreover, the commonalities stem from the verbal element ‘QQ’, which is distinctive. The differences are confined to a figurative element of the earlier mark, which is non‑distinctive, and the colours of the respective signs, as described above. The conceptual comparison is not possible.

With this in mind, and taking into account the interdependence principle, according to which a lesser degree of similarity between the goods or services can be offset by a greater degree of similarity between the signs (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17), the Opposition Division finds that the similarities between the signs are sufficiently strong to justify a finding of a likelihood of confusion on the part of the public for the identical or similar 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 the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The contested sign reproduces the same combination of letters found in the earlier mark, and they are, furthermore, also interconnected. Therefore, it is very probable that the relevant public, even with a higher than average degree of attention, may think, for instance, that the applicant’s trade mark refers to a new line of services from the opponent.

Considering all the above, there is a likelihood of confusion because the differences between the signs are confined to non‑distinctive or secondary aspects.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 253 066. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 14 253 066 leads to the success of the opposition and to the rejection of the contested trade mark for all the 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 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(1)(a) EUTMR, as the signs are obviously not identical.

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

Monika CISZEWSKA

Marta GARCÍA COLLADO

Stanislava STOYANOVA

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.