DECISION

of the Fifth Board of Appeal

of 17 November 2020

In case R 290/2020-5

DRAGON CAPITAL (CYPRUS) LIMITED
Poseidonos, 1, Ledra Business Centre, Egkomi 2406 Nicosia Cyprus	Applicant / Appellant

represented by UAB "BRAINERA", Taikos g. 235-17, 05213 Vilnius, Lithuania

v

DRAGO CAPITAL, S.L.
Eduardo Dato, 18 28010 Madrid Spain	Opponent / Defendant

represented by Julio de Pablos Riba, Los Madrazo, 24. Bajo Izqda, 28014 Madrid, Spain

APPEAL relating to Opposition Proceedings No B 3 047 560 (European Union trade mark application No 17 604 604)

The Fifth Board of Appeal

composed of V. Melgar (Chairperson), A. Pohlmann (Rapporteur) and C. Govers (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 15 December 2017, DRAGON CAPITAL LLC sought to register the figurative mark

for the following list of services:

Class 36 ‑ Securities brokerage.

2. The application was published on 22 December 2017.

3. On 27 December 2017, the total transfer of the application from DRAGON CAPITAL LLC to DRAGON CAPITAL (CYPRUS) LIMITED (‘the applicant’) was requested.

4. On 8 March 2018, DRAGO CAPITAL, S.L. (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above services.

5. The grounds of opposition were those laid down in Article 8(1)(b) and 8(5) EUTMR.

6. The opposition was based on EUTM registration No 9 849 035 filed on 29 March 2011 and registered on 30 August 2011 for goods and services in Classes 16, 35, 36 and 45. Reputation under Article 8(5) EUTMR was claimed only for the services in Class 36 and for all of the European Union.

7. On 22 October 2018, within the extension of the time limit to substantiate the opposition granted to the opponent at its request, the opponent submitted the following documents in order to substantiate the opposition, in particular the claim of reputation under Article 8(5) EUTMR:

• 16 newspaper articles and other news items, covering the time period 21 May 2008 (from Cushman & Wake, ‘C&W advises on (illegible) sale and leaseback in Spain’) to 22 March 2018 (from expansion.com, La española Drago Capital compar viviendas de lujo en Miami). The items are either in English, or in Spanish with an English translation provided.

• It follows from those news items, that the opponent is a Spanish company with offices in Lisbon and Miami, created in 2000 (or 2001) and operates as a real estate investment platform. According to an undated article in Eje Prime, since its creation, the opponent launched and managed fourteen investment vehicles that include more than 1 200 properties in Spain and Portugal. Its portfolio comprises assets valued at EUR 3 700 million and its fund has raised more than 655 million euros of capital. It has, however, only 15 employees (from EjePrime: Drago Capital ha escogido Miami para abrir su primera oficina en EEUU). In particular, the opponent partners up with firms investing in real estate projects in Spain. For example, in 2018, it rented a building in Castellana in Madrid with 5 155m² office space. In 2017, it set up the Parque Mellila, the first shopping centre located in Mellila. Together with a partner, 50 million euros were invested in that project. In 2016, the opponent purchased the Bank of Andalusia’s headquarters in Seville in order to convert it into a hotel. In 2014, the opponent, together with Pearl Group and Sun Group was preparing to be listed on the stock exchange through a listed investment company (‘socimi’) Samos Servicios y Gestiones. This company, with a value close to EUR 2 000 million was set to become the largest investment company on the Spanish market. In 2012, the opponent was involved in negotiations on the purchase of Bankia’s KIO tower in Madrid for a price of EUR 180 million.

8. In reply to the opposition, the applicant requested that the opponent provide proof of use of its earlier mark in accordance with Article 47(2) EUTMR. This request was communicated to the opponent on 21 December 2018, who was given a deadline until 26 February 2019 to comply with the request.

9. On 26 April 2019, within the extension of this time limit granted to the opponent at its request, the opponent resubmitted the 16 news items previously filed and added 2 more news articles, as well as printouts from its own website www.dragocapital.com dated 27 March 2019 in Spanish (an English translation was provided). From the newly submitted article in elEconomista.es from 2013 it follows, that the son of the former President of the Generalitat has a 50% capital share in the opponent and that the sale of 428 offices of the Banco Santander was frozen. In the same year, the opponent purchased the shares of the Royal Bank of Scotland for a building in Madrid’s Gran Via. From the website printouts it follows that in 2017 and 2018 the opponent was awarded the distinction ‘1^st real estate and investment manager in Spain’.

10. By decision of 5 December 2019 (‘the contested decision’), the Opposition Division upheld the opposition for all of the contested services. It gave, in particular, the following grounds for its decision:

• With regard to the request for proof of use, the date of filing of the contested application is 15 December 2017. Consequently, the relevant period of time in order to provide the requested evidence of use runs from 15 December 2012 to 14 December 2017.

• The evidence filed within the time limit to provide the evidence shows Spain as the main place of use. Most of the evidence falls within the relevant time period. Moreover, the earlier mark has been used in accordance with its function and as registered.

• However, with regard to the extent of use, only the following services in Class 36 can be considered as established: ‘Real estate investment’. Consequently, the assessment of the existence of likelihood of confusion will be limited to these earlier services.

• The services under comparison are found to be similar to at least a low degree.

• They are directed at business customers with specific professional knowledge or expertise. Their degree of attention is high, as the services can have important financial consequences.

• The signs under comparison are found to be visually similar to an average degree and aurally highly similar. At least a part of the relevant public will associate both signs with a dragon. Drago is the Italian term for ‘dragon’, while ‘dragon’ is an English and Spanish term designating the same mythical fire-spitting creature. For those consumers, the signs are conceptually identical. However, for those consumers who do not understand the element ‘DRAGO’ of the earlier mark as a reference to the term ‘dragon’, the signs are conceptually not similar. The coincidence in the non-distinctive word ‘CAPITAL’ has no impact.

• Overall, a likelihood of confusion exists between the signs under comparison.

• As the opposition was already fully successful on the basis of Article 8(1)(b) EUTMR, it was not necessary to further assess the claim based on Article 8(5) EUTMR.

11. On 6 February 2020, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 6 April 2020.

12. In its response received on 3 July 2020, the opponent requested that the appeal be dismissed.

Submissions and arguments of the parties

13. The arguments raised in the statement of grounds may be summarised as follows:

• Proof of use of the earlier right has not been established.

• Some of the articles submitted relate to business activities in the United States of America and therefore cannot establish use of the mark in the European Union.

• The evidence submitted proves that the opponent itself invests in real estate but does not prove the rendering of investment services to others. The opponent’s business activity cannot be qualified as a service, because it is not directed at a consumer. The opponent’s revenues mainly arise from leasing real estate.

• The evidence proves use of a trade name rather than a trade mark. The use of the company name is limited to identifying the company and/or designating the business being run.

• The earlier right in its registered form is not depicted in any of the documents submitted. At the same time, the printouts from the opponent’s website show a different figurative representation of ‘DRAGO’ than the one registered.

• The visual similarity of the signs is low. However, with regard to the specialised public at issue, whose degree of attentiveness is high, the visual aspect is the most important one.

• If accepting that proof of use has been established for ‘real estate investment’ in Class 36, the services under comparison have then to be found dissimilar. The contested ‘securities brokerage’ is a highly regulated, financial activity. EU Directive 2014/65/EU provides an exhaustive list of investment services. According to this Directive, real estate objects are not considered to be financial instruments in the context of ‘securities brokerage’. Consequently, the services under comparison relate to different markets and fall under different legal regulations. In particular, the contested ‘securities brokerage’ services can only be provided by financial institutions included in a specific register and licensed by a regulator. To the contrary, the services as claimed by the opponent do not require any licence. Moreover, the opponent is not included in the list of Spanish investment firms obtained from the Comision Nacional del Mercado de Valores, the Spanish regulator of financial instruments (see Annex 1).

• The applicant holds a licence from the Cyprus Securities and Exchange Commission, licence No 112/10 (Annex 2), which authorises it to: receive and transmit orders in relation to one or more financial instruments; execute orders on behalf of customers, which means acting to conclude agreements to buy or sell one or more financial instruments on behalf of clients and includes the conclusion of agreements to sell financial instruments issued by an investment firm or a credit institution at the moment of their issuance; deal on its own account, which means trading against proprietary capital resulting in the conclusion of transactions in one or more financial instruments; give investment advice, which means to provide personal recommendations to a client in respect of one or more transactions relating to financial instruments; underwrite financial instruments and/or place financial instruments on a firm commitment basis; place financial instruments without a firm commitment basis. None of these services are connected with real estate.

14. In the arguments raised in response, the opponent mainly agrees with the findings in the contested decision.

Reasons

15. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

16. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

17. However, the appeal is not well-founded.

Proof of use in accordance with Article 47(2) EUTMR

18. Pursuant to Article 47(2) EUTMR, if the applicant so requests, the proprietor of an earlier EUTM who has given notice of opposition shall furnish proof that, during the five-year period preceding the date of filing of the EUTM application, the earlier EUTM has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, provided that the earlier EUTM has at that date been registered for not less than five years.

19. Pursuant to Article 10(3) EUTMDR, the indications and evidence of use shall establish the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

20. The ratio legis for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that the Office’s register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, and in accordance with recital 24 EUTMR, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (02/02/2016, T-171/13, MOTOBI B PESARO, EU:T:2016:54, § 67 and the case-law cited).

21. In interpreting the notion of genuine use, account must be taken of the fact that the ratio for the requirement that the earlier mark must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (26/09/2013, C‑609/11 P, Centrotherm, EU:C:2013:1449, § 72, 74; 29/11/2018, C‑340/17 P, ALCOLOCK, EU:C:2018:965, § 90; 02/02/2016, T‑171/13, MOTOBI B PESARO, EU:T:2016:54, § 49).

22. There is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition of genuine use of the mark requires that that mark, as protected in the relevant territory, be used publicly and externally (02/02/2016, T‑171/13, MOTOBI B PESARO, EU:T:2016:54, § 69 and the case-law cited; 11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 36, 37).

23. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 43).

24. Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 47).

25. The earlier right was registered on 30 August 2011, thus more than five years previous to the filing of the contested application on 15 December 2017. The period of time for which the genuine use of the earlier right has to be established was thus correctly indicated by the Opposition Division as running from 15 December 2012 until 14 December 2017 inclusive.

26. Although the earlier mark is registered for a wide range of goods and services in Classes 16, 35, 36 and 45, the evidence of use refers to ‘real estate investment’ in Class 36 only. The opponent has not alleged that the evidence of use would cover any further goods or services other than ‘real estate investment’. The question to be assessed is whether the Opposition Division was correct to confirm that sufficient proof of use had been submitted in relation to ‘real estate investment’ in Class 36.

Place, time and extent of use

27. As correctly held by the Opposition Division, the large majority of the news items submitted relate to the business activity of the opponent in Spain and also in Portugal.

28. Moreover, the vast majority of the evidence submitted falls within the relevant period of time between December 2012 and December 2017.

29. As to the extent of use, it is not necessary to prove commercial success, but account must be taken of the commercial volume of the overall use as well as of the length of the period during which the mark was used and the frequency of use (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 29 - 31).

30. The newspaper articles submitted by the opponent confirm that the opponent has been active in the field of real estate investment since 2000 (see, for example, the article in the Spanish newspaper Expansión of 27 March 2018: ‘The real estate investment platform Drago Capital has decided to be on the US market after almost two decades focused on Spain.’). The news items also show that the real estate investments under the mark ‘Drago Capital’ have been substantial during the last two decades (see, for example, EjePrime of 24 October 2017: ‘Drago and Murias invest 50 million to build the first shopping center in Melilla’; EjePrime (undated): ‘Since its founding in 2001, Drago Capital has acquired and managed a portfolio of assets valued 3,700 million Euros. The fund has raised more than 655 million Euros of capital through close to twenty investment vehicles, which have included more than 1 990 properties’; the Spanish news paper ABC of 30 March 2016: ‘ Drago Capital closes the purchase of the Banco de Andalucía headquarters in Seville…Among other operations carried out in recent years, Drago Capital has led a consortium in charge of the comprehensive rehabilitation of the emblematic GranVia 32 building in Madrid…’; excerpt from the Spanish internet site www.idealista.com of 18 May 2016: ‘Drago Capital, buys the cinemas of the Plaza Norte 2 mall in Madrid’; article from the Spanish newspaper El Mundo of 19 March 2014: ‘The volume and assets under management amount to more than 2 700 million Euros with 156 million annual revenues from leases. Among the assets that make up the portfolio managed by Drago Capital are the buildings of Gran Via 32 and Miguel Yuste 40 in Madrid, as well as 1 152 offices leased to Banco Santander and 105 offices leased to Bankia’; analysis in magazine Europroperty of 2011: ‘ Drago Capital – The Spanish real estate investment manager is selling a portfolio of Santander branches…At the end of 2007, Drago Capital bought a €2bn portfolio of more than 1 550 Santander bank branches across Spain…’.

31. The opponent’s real estate investment activities have received an award of excellence for the Spanish market from the British magazine Euromoney in 2017 and 2018. Some 2 500 professionals in the sector, in particular promoters, advertisers, financial institutions and investors have voted in this award (see printouts from the opponent’s website).

32. A large part of the information about the opponent’s business activities under the brand ‘Drago Capital’ derives from neutral sources (e.g. the well-known Spanish newspapers ABC, El Mundo, Expansión etc.). The amount of the total activities presented and the consistency of use over two decades demonstrated by the evidence as a whole prove to a sufficient extent the earlier mark’s use in the European Union.

Use as a trade mark

33. The applicant alleges that ‘Drago Capital’ had not been used as a trade mark but exclusively as a company name.

34. The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’ within the meaning of Article 47(2) EUTMR (11/09/2007, C‑17/06, Céline, EU:C:2007:497, § 21; 08/05/2017, T‑680/15, L'ECLAIREUR, EU:T:2017:320, § 34 ; 03/10/2019, T‑668/18, ADPepper, EU:T:2019:719, § 98).

35. Conversely, there is use ‘in relation to goods or services’ where a third party affixes the sign constituting its company name, trade name or shop name to the goods and services which it markets. Furthermore, even where the sign is not affixed, there is use ‘in relation to goods or services’ within the meaning of that provision where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party (11/09/2007, C‑17/06, Céline, EU:C:2007:497, § 22, 23). In addition, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 38; 18/07/2017, T‑110/16, SAVANT, EU:T:2017:521, § 26; 03/10/2019, T‑668/18, ADPepper, EU:T:2019:719, § 99).

36. Finally, genuine use of the mark relates to the market on which the opponent pursues its commercial activities and on which it hopes to put its mark to use (07/07/2016, T‑431/15, FRUIT, EU:T:2016:395, § 49; 03/10/2019, T‑668/18, ADPepper, EU:T:2019:719, § 100). In the case at hand, as the Opposition Division has found and as has been confirmed by both parties, the relevant market is the real estate investment sector directed to business professionals.

37. The relevant specialised public is aware of the peculiarities of real estate investment and management. In simplified terms, the activity of the opponent, respectively of any entity involved in real estate investment and management consists of, first, raising the necessary capital and/or the bringing together of interested parties and, second, investing the funds in either buying land and constructing (the project of the shopping centre in Melilla), or buying existing real estate and renovating it or remodelling it (converting the building of the Banco de Andalucia into a hotel). In a further step, the reformed assets are either sold, ideally at a profit or rented out and further managed, ideally at a profit. Such profit is then shared with the investors or is reinvested in new projects ideally to generate more profit. Both, private investors, as well as institutional investors are targeted and may participate in the investment vehicles as proposed and put in place by the opponent (from EjePrime: Drago Capital ha invertido 50 milliones de euros en la puesta en marcha de este centro comercial). Moreover, asset management, including property management, is also regularly part of real estate investment and management.

38. The financial specialists addressed by the opponent’s business activities are in a position to establish a link between the sign – which is the trade mark used for the opponent’s real estate investments and, at the same time, the opponent’s company name – and the services rendered by the opponent (03/10/2019, T‑668/18, ADPepper, EU:T:2019:719, § 101). It is well known that financial investments like real estate funds often consist of or at least include the name of the company behind the activity (e.g. Allianz, DWS, Fidelity etc.). It is impossible to dissect the name of the financial service itself from the name of the service provider in capital investment. Therefore, from the perspective of the financial experts addressed by the services at issue, it would not be unusual that the brand used for the real estate investment services includes or even is identical to the company’s name. Thus, the name of the investment vehicle may coincide or include the name of the company. In the understanding of the relevant specialised consumer, the use of the term ‘Drago’ or ‘Drago Capital’ as documented in the submitted documents provides a close enough link between these terms and the services provided by the opponent.

39. The applicant also contests that the opponent provides any services at all as its business activity would not be directed to consumers or third parties. However, it is the nature of investment vehicles such as the real estate investment projects run by the opponent that investors contribute money or assets to a project in order to later receive a profit or other benefit from their contribution. The opponent’s services are addressed to these business consumers.

Use differing from the registered form

40. The applicant further insists, that the earlier mark has not been used in its registered form. The purpose of Article 18(1)(a) EUTMR is to avoid imposing strict conformity between the form of the trade mark used and the form in which the mark was registered. The proprietor of the mark is allowed to use variations of the sign in its commercial exploitation which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, such that the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50; 10/06/2010, T‑482/08, Atlas Transport, EU:T:2010:229, § 30; 12/03/2014, T‑381/12, Palma Mulata, EU:T:2014:119, § 26; 10/12/2015, T‑690/14, Vieta, EU:T:2015:950, § 31).

41. A finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the added elements based on the intrinsic qualities of each of those elements and the relative position of the different elements within the arrangement of the trade mark (24/11/2005, T‑135/04, Online Bus, EU:T:2005:419, § 36, 40; 10/06/2010, T‑482/08, Atlas Transport, EU:T:2010:229, § 31; 12/03/2014, T‑381/12, Palma Mulata, EU:T:2014:119, § 30; 10/12/2015, T‑690/14, Vieta, EU:T:2015:950, § 32).

42. According to the case-law, where a mark is constituted or composed of a number of elements and one or more of them is not distinctive, the alteration of those elements or their omission is not capable of altering the distinctive character of that trade mark as a whole (24/11/2005, T‑135/04, Online Bus, EU:T:2005:419, § 35‑41; 29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 61; 10/12/2015, T‑690/14, Vieta, EU:T:2015:950, § 45).

43. The trade mark that appears on the evidence is ‘Drago’ (word), ‘Drago Capital’ (word) and . The registered mark is .

44. The earlier right in its registered form is composed of a word element, namely the terms ‘DRAGO CAPITAL’ and a figurative component, namely a square that contains two half circles making up a circle interrupted at its top and bottom. Moreover, two shades of green are used in the sign. In the documents submitted, namely the news items, only the word element in plain letters is depicted; in the printouts of the website the following stylisation can be seen: .

45. However, the distinctive character of the earlier right follows from its word element ‘DRAGO’. The omission of the word ‘CAPITAL’ does not alter the distinctiveness of the mark given that ‘CAPITAL’ is non-distinctive (and understood throughout the EU by financial specialists) for financial capital services. Moreover, the use of a colour or a font normally does not add to the distinctiveness of a term. Furthermore, basic geometric shapes are normally devoid of distinctiveness (12/09/2007, T‑304/05, Pentagon, EU:T:2007:271, § 22; 06/11/2014, T‑53/13, Line which slants and curves, EU:T:2014:932, § 70). Therefore, the omission of the colour and the square element do not alter the distinctive character of the earlier right. To sum up, the variations of use as attested by the evidence are covered by the registered form, according to Article 18(1)(a) EUTMR.

Conclusion

46. The Board of Appeal shares the conclusion of the Opposition Division that the proof of use submitted by the opponent shows genuine use of the earlier mark for ‘real estate investment’ in Class 36.

Article 8(1)(b) EUTMR

47. Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

48. The risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case (09/07/2003, T‑162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30‑33).

49. For the purposes of applying Article 8(1)(b) EUTMR, a likelihood of confusion presupposes both that the two marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (22/01/2009, T‑316/07, easyHotel, EU:T:2009:14, § 42 and the case-law cited).

Relevant public

50. The perception of the marks in the mind of the relevant public for the goods in question plays a decisive role in the global assessment of the likelihood of confusion.

51. Account should be taken of the average consumer of the goods at issue, who is reasonably well-informed and reasonably observant and circumspect. The consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

52. Both, the contested ‘securities brokerage’ as well as the earlier ‘real estate investment’ are rather specific services in Class 36. As has been correctly found by the Opposition Division and further confirmed by the parties, it is the business public, namely specialists in financial matters and activities, who are addressed by the services under comparison. These services regularly involve substantial or higher amounts of money and presuppose a certain understanding of financial transactions. Therefore, the degree of attentiveness towards the services is high.

Comparison of the services

53. In assessing the similarity between the goods and services, all the relevant factors relating to those goods and services should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account, such as the distribution channels of the goods concerned (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 37), the usual origin and the relevant public of the goods or services.

54. The reference point is whether the relevant public would perceive the relevant products or services as having a common commercial origin (04/11/2003, T‑85/02, Castillo, EU:T:2003:288, § 38).

55. The services to be compared are the following:

    Earlier mark	Contested sign
    Class 36 – Real estate investment.	Class 36 ‑ Securities brokerage.

56. The contested ‘securities brokerage’ consists of providing investment services to clients. These investment services comprise stocks and bonds, and by law exclude real estate (see the applicant’s explanations in the statement of grounds, point 4).

57. Therefore, the services under comparison are both investment services. While the earlier services are limited to real estate, the contested services exclude real estate. However, the services coincide in their nature and purpose, namely to help investors or clients to make a profit through investing money in an investment vehicle, might this be real estate or stocks, and gaining a financial benefit from either selling their shares in this vehicle with a profit, or by receiving regular returns in rent or dividend, for example.

58. The services often coincide in their provider or sales outlet. While it appears to be necessary to hold a special licence in order to be eligible to provide the contested ‘securities brokerage’, it has not been claimed or established, that companies that hold such a licence might not at the same time offer ‘real estate investment’, or that an entity specialised in ‘real estate investment’ is prohibited from additionally acquiring a licence for ‘securities brokerage’. It is common knowledge that large banks, respectively financial institutes like Allianz, Santander or Société Générale offer both real estate investment and securities brokerage under the same trade mark.

59. Finally, the services are also in competition with each other, as both are investment vehicles and thus one can substitute the other. The services are thus found to be interchangeable (04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 42).

60. Overall, the Board of Appeal shares the view of the Opposition Division that the services under comparison are similar to a low degree.

Comparison of the marks

61. The marks in conflict have to be compared visually, phonetically and conceptually. Such a comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 28; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

62. Furthermore, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, phonetic or conceptual aspects (02/12/2009, T‑434/07, Solvo, EU:T:2009:480, § 31; 13/09/2010, T‑149/08, Sorvir, EU:T:2010:398, § 29; 14/04/2011, T‑466/08, Acno focus, EU:T:2011:182, § 52).

63. The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333).

64. The signs to be compared are:

    Earlier mark	Contested sign

65. The earlier EUTM is a figurative mark depicting a square in two shades of green. The upper half is a lighter shade of green, while the bottom half is a darker shade. In its centre, two white semi circles are facing each other, making up a white circle, which is interrupted in the middle upper and bottom part. Below the figurative element, the term ‘DRAGO’ is written in regular capital letters and the same shade of dark green used in the bottom half of the square. Below this term, the word ‘CAPITAL’ is written in a slightly smaller font, in order to match the dimensions of ‘DRAGO’, and in the same lighter shade of green as used in the upper part of the square.

66. The contested sign is also a figurative mark. It consists of the word element ‘Dragon’ followed by the depiction of a dragon breathing fire. Thereafter, the term ‘Capital’ is written. Both word elements as well as the dragon are portrayed in the same dark shade of green. The fire breathed by the dragon is depicted in a red colour.

67. Visually, the signs virtually coincide in their sequence of letters. Both signs contain the sequence ‘Drago-‘ and the sequence ‘Capital’, which are depicted in both signs in/as two distinct word elements. While the separation is made in the earlier right by the use of different shades of green and by writing the terms one below the other, the separation is made in the contested sign by placing the depiction of a dragon between the two word elements and also by the use of capital letters for the first letter of each term. The fact that the first word element of the contested sign in fact reads ‘Dragon’, while the earlier mark’s first word is ‘DRAGO’, does not catch the consumers’ attention and can certainly not outbalance the coincidence in all the remaining letters, in the overall length of the word elements and in the grouping of two terms. Also, the use of different fonts is negligible in this context, as neither font is eye‑catching or of any individual distinctiveness. Moreover, the shade of green used in the contested sign is identical or very similar to the darker shade of green used in the earlier mark.

68. It is true, that the signs under comparison make use of entirely different figurative elements. While the earlier right uses a combination of two geometric basic shapes, the contested sign depicts a fire‑breathing dragon.

69. However, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 18/02/2016, T‑364/14, B!O / BO, EU:T:2016:84, § 24).

70. Moreover, basic geometric shapes, such as the ones used in the earlier right, are in principle of no or very low distinctiveness (see paragraph 45). Furthermore, the dragon as depicted in the contested sign merely underlines and emphasises the meaning of the term ‘Dragon’, for those consumers who understand that term.

71. Overall, the quasi-identity in the sequence of letters used in both signs is not outbalanced by the respective figurative elements. Therefore, the signs are held to be visually similar to an average degree.

72. Phonetically, the only difference in the signs under comparison is that the first term in the earlier right finishes on the letter ‘-o’, while the first term of the contested sign contains an additional letter ‘n’ so that it ends on ‘-on’. However, while that difference in one single letter, which, depending on the language of the relevant consumers and their pronunciation of the term ‘DRAGO’, might at best slightly influence the pronunciation of the second syllable of the element ‘DRAGO(n)’, it cannot distract from or outbalance the identity in the pronunciation of all the other word elements and syllables. Thus, the signs under comparison are found to be phonetically similar to a very high degree.

73. Conceptually, the common word element ‘CAPITAL’ will be understood by all relevant consumers, who are financial business professionals, as referring to money or assets.

74. The term ‘DRAGO’ in the earlier right is the Italian word for ‘dragon’, as correctly established by the Opposition Division. It is linguistically highly similar to the term ‘dragon’ used in the contested mark. Due to this similarity, and even more based on the figurative element of the contested sign which depicts a dragon, it is highly likely that a non-negligible part of the Italian relevant consumers will also understand the element ‘Dragon’ in the contested sign to mean drago. Thus, for this part of the Italian consumers, the signs under comparison convey the same concepts, that of a dragon and that of financial assets.

75. Amongst the remaining consumers, such as, e.g. the English‑, Spanish‑ or French‑speaking consumers, who understand the term ‘Dragon’ in the contested sign in its inherent meaning, another non-negligible part might attribute the same meaning to the term ‘DRAGO’ in the contested sign, based on the high linguistic similarities.

76. Consumers in whose language neither ‘DRAGO’ nor ‘Dragon’ have a meaning might still understand both terms as a reference to the mythical creature, based on linguistically close terms used in their own language, for example in Portuguese: dragão, in German Drache, in Czech drak, in Dutch Draak or in Estonian Draakon.

77. Overall, the signs under comparison are conceptually identical for a part of the Italian consumers, highly similar for another part of the relevant consumers, namely those who interpret both ‘DRAGO’ and ‘Dragon’ to mean the mythical creature, and similar to the extent that both signs make reference to financial assets for the remaining consumers.

Overall assessment of the likelihood of confusion

78. The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarities of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

79. Moreover, the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods covered. Accordingly, a low degree of similarity between those goods may be offset by a high degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

80. The earlier right enjoys an average degree of inherent distinctiveness, as, taken as a whole, it is not descriptive of the services at issue. The signs under comparison are visually similar to an average degree, phonetically very highly similar and conceptually even identical for a part of the Italian public. They are conceptually highly similar for another part of the relevant consumers. Consequently, the overall high degree of similarity between the signs, and in particular as regards their distinctive words ‘Dragon’ and ‘DRAGO’, outweighs the low degree of similarity between the conflicting services in Class 36, according to the principle of interdependence.

81. Even though the relevant public consists of specialists with a high degree of attentiveness, it should be borne in mind that the fact that that public will pay more attention to the identity of the service provider which it wishes to contract does not, however, mean that it will examine the mark before it down to the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a higher level of attention, the fact remains that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on his/her imperfect recollection of them (16/07/2014, T 324/13, Femivia, EU:T:2014:672, § 48; 03/06/2015, T 544/12, PENSA PHARMA, EU:T:2015:355, § 152).

82. As a result of the unitary character of the EUTM according to Article 1(2) EUTMR, if a relative ground for refusal of the application, such as a likelihood of confusion with an earlier right pursuant to Article 8(1)(b) EUTMR, applies only in one Member State, the application as such will be refused (13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 85; 13/12/2011, T‑61/09, Schinken King, EU:T:2011:733, § 32; 03/06/2015, T‑544/12, PENSA PHARMA, EU:T:2015:355, § 42).

83. Thus, the existence of likelihood even only for those consumers for whom conceptual identity or similarity has been found, is sufficient for the opposition to be fully successful.

84. The contested decision is upheld, and the appeal is rejected.

Costs

85. Pursuant to Article 109(1) EUTMR, the applicant, as the losing party, must bear the opponent’s costs of the opposition and appeal proceedings.

86. As to the appeal proceedings, these consist of the opponent’s costs of professional representation of EUR 550.

87. As to the opposition proceedings, the Opposition Division ordered the applicant to bear the opposition fee of EUR 320 and the opponent’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 1 170.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the opponent’s costs in the appeal proceedings, which are fixed at EUR 550. The total amount to be paid by the applicant in the opposition and appeal proceedings is EUR 1 170.

Signed V. Melgar

Signed A. Pohlmann

Signed C. Govers

Registrar: Signed H.Dijkema