OPPOSITION No B 3 048 497

Drake Aurora Fund, Av. del Parque nº 4161, Of. 602-A, Santiago, Huechuraba, Chile (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Dragon Capital (Cyprus) Limited, Poseidonos 1, Ledra Business Centre, Egkomi 2406, Nicosia, Cyprus (applicant), represented by UAB "brainera" Savanorių pr. 217, 02300 Vilnius, Lithuania (professional representative).

On 19/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 497 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 604 604 for the figurative mark . The opposition is based on European Union trade mark registration No 15 690 878 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.

1. The services

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

Class 36: Financial services in general;

The contested services are the following:

Class 36: Securities brokerage.

The contested securities brokerage services, which pertain to the buying and selling of securities for clients for financial gain, are a financial service. They are, therefore, identical to the opponent’s financial services in general which include them.

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 services found to be identical are specialised services directed at the general public.

These services target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such 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).

3. 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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The common element ‘CAPITAL’ is widely understood as an English word denoting a large sum of money, which you invest to make more money (information extracted from Collins Dictionary on 18/03/2019 at www. collinsdictionary.com), as correctly pointed out by the applicant, and will be perceived as non-distinctive in relation to financial services for that part of the EU which perceives this meaning.

However, for the other part of the public, such as Hungary, it has no meaning and no resemblance to the Hungarian equivalent and is distinctive. Therefore, for the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from this perspective, as this is the most advantageous scenario for the opponent, namely that the common element ‘CAPITAL’ is distinctive for all the relevant services.

Both signs are figurative marks. The earlier mark features the word ‘DRAKE’ in enlarged, dark grey letters preceded by a red male figure in period costume. The word ‘CAPITAL’, also in red, is set below the last two letters of ‘DRAKE’ in a secondary position and in a relatively small script, and all of the elements are set against a pale grey background though this background is non-distinctive. The male figure in period costume has no discernible meaning in relation to the services and is distinctive. The verbal element ‘DRAKE’ of the earlier mark has no meaning for the relevant public and is, therefore, also distinctive though it cannot be ruled out that a small part of the public will recognise ‘DRAKE’ as referring to the 16th century English buccaneer of the same name. This part of the public will see the male figure as a graphic depiction of same. As this historical figure also has no discernible relationship to the services, these elements are distinctive in this scenario too.

The contested sign is made up of the words ‘Dragon’ and ‘Capital’, which are depicted in green. As neither of them have a meaning for the relevant public, they will both be perceived as distinctive elements. The silhouette of a green dragon (emitting a red flame from its mouth and complete with wings and a tail) is set between these verbal elements. It is also a distinctive element with no discernible relationship to the services.

Visually, the signs coincide in ‘CAPITAL’ which is distinctive, though set in a different position in the signs i.e in a secondary position in the case of the earlier mark, and in the letters ‘DRA’ of their remaining verbal element. However, they differ in the remaining letters of the remaining verbal element, ‘KE’ and ‘GON’ respectively, and in the size, position, case, colour scheme and font of said verbal elements. They further differ in their respective distinctive mascots, a red figure in period costume (perceived as the buccaneer Francis Drake by a small part of the public) in the case of the earlier mark, and a green fire-breathing dragon in the case of the contested sign. In addition, the light, grey background of the earlier mark has no counterpart, but this difference is non-distinctive.

Therefore, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛capital’, though this element is in a secondary position in the earlier mark and therefore unlikely to be pronounced at all, and in the sound of the letters ‘DRA’, present identically in both. The pronunciation differs in the sound of the remaining letters ‘KE’ and ‘GON’ respectively.

Therefore, the signs are similar to a low degree.

Conceptually, neither of the signs’ verbal elements have a meaning for the public in the relevant territory. A conceptual comparison is not possible in their regard. However, the marks´ respective mascots, which are distinctive, will be associated with a dissimilar meaning i.e a man in period costume (possibly the historical figure Francis Drake) in the case of the earlier mark, and a mythical creature i.e a dragon, in the case of the contested sign. To this extent, the signs are conceptually dissimilar.

4. 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.

5. Global assessment, other arguments and conclusion

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).

The signs coincide aurally and visually to a low degree, however there is no likelihood of confusion as additional differentiating, distinctive elements are present and conceptually the signs are dissimilar to the extent that the mascots convey different distinctive concepts. These differentiating elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks for the relevant, attentive public here, notwithstanding the identity of the services, bearing in mind also that the common verbal element is in a secondary position in the earlier mark. The overall impression given by the signs is of a different character.

It bears noting, at this point, that the etymological arguments of the applicant fall to be disregarded in the main. The applicant was unable to demonstrate that the word ’drake‘ could be seen as the equivalent of the word ’dragon‘ in any modern European language other than Swedish. In particular, the public in those countries where English is an official language will not be aware that 'drake' once meant ‘dragon’ as the word is obsolete in that context. (“drake in British 2 dreɪk 3 an obsolete word for dragon”, see https://www.collinsdictionary.com/dictionary/english/drake). Juxtaposed with the figurative element of a male at its fore, said public will clearly perceive this verbal element as a reference to the surname Drake, specifically Sir Francis Drake, a known navigator to that part of the public. The Swedish public may or not be aware of the actual historical figure, however, said public will be informed by the English spelling of the word ‘Capital’ (as opposed to ‘kapital’), that the word ’drake‘ is to be pronounced and perceived as an English word, more specifically as a name when juxtaposed with a male figure in period costume, familiarity with English being a known fact in relation to the Scandinavian public, and again bearing in mind that the relevant public here is attentive. This public, as with the rest of the EU public that perceives the meaning of the common element ‘CAPITAL’, will perceive it as a non-distinctive element in relation to financial services.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Riccardo RAPONI

Keeva DOHERTY

Edith Elisabeth VAN DEN EEDE

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.