OPPOSITION No B 3 043 455

Arriaga Asociados Asesoramiento Juridico Y Economico, S.L., Calle del Poeta Joan Maragall, 1, Planta 11, 28020 Madrid, Spain (opponent), represented by Merx Patentes y Marcas, S.L.P., Calle Pinar, 5, 28006, Madrid, Spain (professional representative)

a g a i n s t

Varagon Capital Management MGP LLC, 301 Commerce Street, Suite 2040, 76102 Fort Worth, United States (applicant), represented by HGF BV, Gedempt Hamerkanaal 147, 1021 KP, Amsterdam, Netherlands (professional representative).

On 27/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 043 455 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 17 630 708 for the figurative mark . The opposition is based on the European Union trade mark registration No 14 894 133 for the figurative mark and the Spanish trade mark application No 3 682 993 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:

European Union trade mark registration No 14 894 133

Class 36: Financial and monetary services, and banking; Real estate services; Financial information, data, advice and consultancy services; Financial planning services; Financial assistance; Tax services [not accounting]; Asset management for third parties; Financial management; Financial brokerage services.

Spanish trade mark application No 3 682 993

Class 36: Financial and monetary services, and banking; Real estate services; Financial consultancy, advice, and information services; Financial planning services; Financial assistance; Tax advice services [not accounting]; Asset management for third parties; Financial management; Financial brokerage services.

The contested services are the following:

Class 36: Financial services; financial asset management; commercial lending services; investment services, namely, asset acquisition, consultation, development and management services.

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

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

Financial services are identically contained in all lists of services (including synonyms).

The remaining contested services are included in the broad categories of, or overlap with, the opponent’s financial and monetary services, and banking; financial consultancy, advice, and information services; financial planning services; financial assistance; asset management for third parties; financial management. Therefore, they are also identical.

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 directed at business customers with specific professional knowledge or expertise.

These services also 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). This applies to both, the general and the professional public.

3. The signs

a) European Union trade mark registration No 14 894 133 b) Spanish trade mark application No 3 682 993 .
Earlier trade mark	Contested sign

The relevant territory is the European Union and Spain.

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).

All signs in dispute are purely figurative signs and will be perceived as stylised figurative depictions. Still, as the public always tries to find/read verbal elements or letters in such depictions, it cannot be excluded that they will be seen as highly stylised acronyms. In such a case, despite the opponent’s statements in their observations, claiming that the marks are shaped as “folded/inverted” letters of “V” or the highly stylised letter “M”, the Opposition Division considers that the only reasonable possibility, due to the position and inclination of the elements portrayed, would be that the public reads ‘AA’ in the earlier marks and ‘VA’ in the contested mark. All marks are coloured, the earlier signs mainly in yellow and orange, whereas the contested sign is blue and dark blue. Neither of the signs has any meaning in relation to the services in question; therefore, they are all considered distinctive.

The contested sign and the earlier marks have no dominant elements.

Visually, taking into account the above explanation, the signs coincide in the part of the figures that resembles a letter ‘A’, towards the end of the signs. However, they differ in the first part of the signs as in the contested it resembles the letter ‘V’, whereas for the earlier marks it is ‘A’ again; the first ‘A’ in the earlier marks is considerably larger than the following element, whereas in the contested sign both elements are of equal size.

Considering that the signs under comparison are rather short signs, the difference of one letter out of two in total would be a very noticeable feature. Also, even though they correspond to the same letter, the stylisation of the letters ‘A’ in the marks is noticeably different (thicker lines and orange colour in the earlier marks and slightly thinner lines and different colours in the contested sign). Therefore, the signs are considered visually similar to a low degree.

Aurally, for the reasons explained above, the pronunciation of the signs will coincide in the sound of the letter ‛A’, present identically in all of the signs towards their ending. The pronunciation will differ in the sound of the letter ‛V’ as the initial element of the contested mark versus the initial letter ‘A’ in the earlier marks. Comparing the pronunciation of the short signs ‘AA’ versus ‘VA’, the Opposition Division considers that the signs are aurally similar to a rather low degree, since consumers can clearly note the difference in such short abbreviations.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Both will be considered as meaningless acronyms by the relevant public. 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) Global assessment

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, §22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The contested services are identical to the opponent’s services.

As detailed in section c) above, the similarity between the signs is considered visually and aurally rather low, whereas the conceptual aspect is not possible for the relevant public, for which the signs are meaningless.

Contrary to the opponent’s arguments, the differences between the signs are not regarded as minor. The figurative signs in dispute are considered as having two stylised letters each; all are, consequently, short marks and it is considered that the fact that they differ in one of those letters is quite a significant factor to take into account when evaluating the likelihood of confusion between the conflicting signs. Especially because of the first part of the earlier signs being considerably larger than the following element as detailed above in the section c), the Opposition Division respectfully disagrees with the opponent’s claim that the signs resemble the letter ‘M’. Furthermore, as regards the contested sign, even if it were to be considered as a stylised letter ‘M’, as the opponent states, this would only increase the differences between the signs as the depicted letters ‘AA’ and the letter ‘M’ would have been considered entirely dissimilar.

Therefore, the scenario in which the signs are perceived as stylised abbreviations ‘AA’ and ‘VA’ respectively is in fact the most favourable scenario for the opponent since, for the public which will not perceive any verbal elements in the marks, the purely figurative depictions are not similar, due to their obvious differences in stylisation, positions, sizes, colours, etc.

Overall, given the heightened attention of the public, the rather low similarities of the signs are not sufficient to lead to likelihood of confusion, even for the identical services in question.

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, 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

Gueorgui IVANOV

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Ewelina ŚLIWIŃSKA

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.