OPPOSITION No B 3 055 661

Arquia Bank, S.A., Barquillo, 6, 28004, Madrid, Spain (opponent), represented by Canela Patentes Y Marcas, S.L., Girona, 148 1‑2, 08037, Barcelona, Spain (professional representative)

a g a i n s t

Crypto Investments Ltd., 858 Zenway Blvd., Frigate Bay, Saint Kitts And Nevis (applicant), represented by Taylor Wessing LLP, 5 New Street Square, EC4A 3TW, London, United Kingdom (professional representative).

On 27/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 661 is upheld for all the contested services.

2. European Union trade mark application No 17 805 623 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 17 805 623 for the word mark ‘Q CRYPTO’. The opposition is based on, inter alia, European trade mark registration No 17 129 974 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

During the opposition proceedings there was a change of ownership of earlier EUTM No 17 129 974. The Office was informed that the EUTM had been transferred and a request for registration of the transfer was submitted. Following this request, the transfer was entered in the Register. Therefore, the new owner became the new opponent and substituted the old owner.

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 trade mark registration No 17 129 974, which is not subject to proof of use.

a) The services

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

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; administration of savings accounts; financial services relating to savings; savings scheme services; management of investment funds; financial advice relating to investment; financial investment brokerage; investment fund management; financing services; pension fund administration services; pension consultancy; planning services relating to pensions; provision of information relating to stock broking; consultancy services relating to credit.

Following a limitation, the contested services are the following:

Class 36: Financial services; currency trading and exchange services; securities brokerage and trading services; currency brokerage services; financial analysis; financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network; financial services, namely, electronic transfer of a virtual currency for use by members of an on-line community via a global computer network; cash management, namely, facilitating and tracking transfers of electronic cash equivalents; financial services, in particular trading of virtual and digital currency; crypto currency exchange services; providing financial information; provision of information relating to digital and crypto currencies; provision of financial information relating to stock exchanges; virtual currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value.

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

The term ‘in particular’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

However, 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.

The applicant argues that the activities provided to the applicant’s and opponent’s customers under the respective signs are different. The applicant’s focus is digital services, while the opponent’s is physical and traditional services (credit and bank-teller services). However, it is irrelevant which specific services the marks are used for in the market. What is relevant in the comparison is the specific list of services claimed under the marks. Therefore, the applicant’s argument should be put aside.

The contested financial services; currency trading and exchange services; securities brokerage and trading services; currency brokerage services; financial analysis; financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network; financial services, namely, electronic transfer of a virtual currency for use by members of an on-line community via a global computer network; cash management, namely, facilitating and tracking transfers of electronic cash equivalents; financial services, in particular trading of virtual and digital currency; crypto currency exchange services; providing financial information; provision of information relating to digital and crypto currencies; provision of financial information relating to stock exchanges; virtual currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value are identical to the opponent’s financial affairs, because they are either identically contained in both lists of services (including synonyms) or included in the opponent’s broad category of financial affairs.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

Since the services at issue 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).

c) The signs

	Q CRYPTO
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 is a figurative mark consisting of an orange, slightly stylised, letter ‘Q’ (composed of a circle and a thick line that is slightly inclined to the left, located in its lower part). The Opposition Division consider that the relevant public will perceive the letter ‘Q’ in the earlier mark despite its stylisation, due to the shape of its elements and the fact that consumers will try to read elements that look like letters.

The contested sign is the word mark ‘Q CRYPTO’.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘CRYPTO’ will be understood by at least a part of the relevant public as a reference to crypto currency which is a digital or virtual currency that is secured by cryptography. Therefore, this element is non-distinctive, as it describes the possible purpose of services at issue. For the purpose of this comparison the Opposition Division will assess the signs from this perspective.

The applicant argues in its observations that CRYPTO’ is not descriptive of its services. If it is perceived as alluding to digital and information technology services, only then may it also bring to mind cryptocurrency services. However, an allusion to cryptocurrency does not make the contested application descriptive of cryptocurrency. However, in the same observations, the applicant also admits that the services applied for are in the sector of digital currency or ‘cryptocurrency’.

An element is considered descriptive if it has a meaning that is immediately perceived by the relevant public as providing information about the goods and services applied for.

Bearing in mind that the relevant services are financial services it is considered that the relationship between the term ‘CRYPTO’ and the services at issue is sufficiently direct and specific as well as concrete, direct and understood without further reflection.

The applicant’s argument that ‘CRYPTO’ alludes to a number of meanings should be rejected. Given that the examination must focus on the goods/services covered by the mark, arguments concerning other possible meanings of the word(s) making up the trade mark applied for are irrelevant.

The applicant also submits that marks containing ‘CRYPTO’ (even plain word marks without any stylisation) are inherently registrable and mentions some trade marks on the EUIPO register incorporating this element in Class 36. When the trade mark applied for is a composite word mark, what matters for examination purposes is the meaning, if any, associated with the sign considered as a whole, and not the possible meanings of its individual elements considered separately. Therefore, the applicant’s argument should be put aside.

The Court held that the distinctiveness of single-letter trade marks must be assessed according to an examination based on the facts, focusing on the goods or services concerned and the same criteria that apply to other word marks (09/09/2010, C‑265/09 P, α, EU:C:2010:508, § 33-39). Although that judgment deals with absolute grounds, the principle established by the Court (i.e. that the application of the criterion of distinctiveness must be the same for all marks) also applies in inter partes cases when it comes to determining the distinctiveness of single-letter components in trade marks.

According to the General Court, a single letter or a single number can be inherently distinctive (08/05/2012, T‑101/11, G, EU:T:2012:223, § 50; 06/10/2011, T‑176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T‑378/12, X, EU:T:2013:574, § 37-51). Distinctiveness has to be appreciated with reference to the products and services in question. The letter ‘Q’ has no meaning in relation to the relevant services. Therefore it is distinctive.

The General Court dismissed the argument that single letters are generally, per se, devoid of distinctive character and that, therefore, only their graphic depiction would be protected (10/05/2011, T‑187/10, G, EU:T:2011:202, § 38-49).

The above considerations apply both to single-letter/numeral trade marks depicted in standard characters (i.e. word marks) and to stylised single-letter/numeral trade marks.

Therefore, the applicant’s argument that the protection of the earlier mark is limited to its specific stylisation should be rejected.

The stylisation of the earlier mark is rather standard and the orange colour has a mainly decorative nature. The combination of the circle and the intersecting element matches the typical size and orientation of a letter ‘Q’ so that the average consumer will see it as such. This is supported by several decisions of the Boards of Appeal (27/04/2020, R 2011/2019‑4, Q contrast elite / Q (fig.) et al., § 25; 27/04/2020, R 2012/2019‑4, Q HDR / Q (fig.) et al., § 24; 27/04/2020, R 2013/2019‑4, Q viewing angle / Q (fig.) et al, § 25; 27/04/2020, R 2014/2019‑4, Q color / Q (fig.) et al., § 25; 27/04/2020, R 2015/2019‑4, Q contrast / Q (fig.) et al., § 24; 27/04/2020, R 2016/2019‑4, Q picture / Q (fig.) et al., § 25; 24/09/2020, R 434/2020‑4, Qstylus / Q (fig.) et al., § 31).

The letter ‘Q’ is the first element of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive letter ‘Q’ which is the only element of the earlier mark and the first element of the contested sign. However, they differ in the stylisation of the earlier mark, which is rather standard, and its colour, which is decorative. They further differ in the contested sign’s verbal element ‘CRYPTO’, which is non-distinctive.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‘Q’, present in both signs. The pronunciation differs in the sound of the element ‘CRYPTO’, which is non-distinctive and therefore more likely to not be pronounced by consumers, who will refer to the contested sign as ‘Q’.

Therefore, the signs are aurally at least similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As mentioned above, the contested sign’s verbal element ‘CRYPTO’ is non-distinctive and cannot indicate a commercial origin. As the signs will be associated with a similar meaning due to the common letter ‘Q’, the signs are at least conceptually highly similar.

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.

e) Global assessment, other arguments and conclusion

The services are identical. They target the public at large and business customers, whose degree of attention would be relatively high. The distinctiveness of the earlier mark is normal.

The marks are visually and aurally similar to at least an average degree, and conceptually highly similar. In particular, both include the distinctive letter ‘Q’, which is the sole element of the earlier mark and the first element of the contested sign. The contested sign’s additional element, ‘CRYPTO’, is non-distinctive and does not enable the commercial origin of the services to be identified. Therefore, it is considered that the earlier mark’s slight stylisation (which is rather standard and not especially imaginative), its colour (which is decorative), and the contested sign’s additional element ‘CRYPTO’, are not sufficient to overrule a likelihood of confusion, as the coinciding element plays an independent distinctive role and the services are identical.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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).

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 goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the letter ‘Q’. In support of its argument the applicant refers to various EU trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘Q’. Under these circumstances, the applicant’s claims must be set aside.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the part of the examined part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 17 129 974. It follows that the contested trade mark must be rejected for all the contested services.

As earlier European trade mark registration No 17 129 974 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 and the proof of used submitted for them (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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

Aldo BLASI

Francesca CANGERI

Andrea VALISA

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.