OPPOSITION No B 3 054 918

Forex Bank AB, Stora Nygatan 27, 111 27 Stockholm, Sweden (opponent), represented by Advokatfirman Marlaw AB, Riddargatan 7A, 5 tr, 114 35 Stockholm, Sweden (professional representative)

a g a i n s t

Hunan Bailun Network Technology Co., Ltd, A1247, HQ of Zhongdian Ruanjianyuan Co., ltd, No.39 Jianshan Rd., Hitech Development Zone, 410205 Changsha, Hu'nan, People’s Republic of China (applicant), represented by Jonathan Hendry, Lower Ground Floor, 26 Finsbury Square, London EC2A 1DS, United Kingdom (professional representative).

On 30/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 918 is partially upheld, namely for the following services:

Class 45: Monitoring of burglar and security alarms; chaperoning.

2. European Union trade mark application No 17 880 309 is rejected for the above listed services. It can proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 880 309 for the word mark ‘Forexchat’, namely against all the goods and services in Classes 9, 36, 38, 42 and 45. The opposition is based on, inter alia, European Union trade mark registration No 7 319 841 . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 7 319 841.

a) The goods and services

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

Class 6: Security equipment in the form of apparatus and instruments for safe-keeping of money, valuable documents and other valuables.

Class 9: Coded and uncoded magnetic cards, in the form of bank- and debit cards; apparatus for cashing money and information about transfer of funds (cash dispensers); computers, computer peripheral devices and registered software for transfer of funds and information about funds; security equipment in the form of alarm devices for transportation and safe-keeping of funds and valuables; apparatus for money exchange and currency exchange.

Class 35: Bill-posting; business information, business investigations, business appraisals; cost price analysis; advertising, rental of advertising space, organization of exhibitions for commercial or advertising purposes; book keeping services; tax preparation; direct mail advertising; economic forecasting; business inquiries; company research; computerized file management; commercial information agencies; personnel management consultancy; marketing studies, marketing research; business organization consultancy; public relations; professional business consultancy; publication of publicity texts, advertising and publicity business, publicity agencies, dissemination of advertising, publicity material rental, dissemination of advertising matters; auditing and accounting; advisory services for business management; updating of advertising material, publicity columns preparation; outdoor advertising; rental of vending machines; none of the aforementioned services with respect to clothing, footwear, shoes, accessories thereto or textiles.

Class 36: Mutual funds; actuarial services; installment loans; financial analysis; hire-purchase financing, banking, debit card services, guarantees, surety services; fire insurance underwriting; stocks and bonds brokerage, stock exchange quotations; check verification; financial clearing, financial clearing houses; safe deposit services; factoring; leasing of real estate; real estate agencies; real estate management, real estate appraisals; financial management, financial information, financial consultancy, financial evaluation (insurance, bank, real estate), financial services, fund investments; stamp appraisal; insurance information; insurance underwriting, insurance consultancy, insurance brokerage; fiduciary; trusteeship; financial management; mortgage banking; lease-purchase financing; insurance information; capital investment; financing loans, credit bureaux, credit card services; life insurance underwriting; securities brokerage; numismatic appraisal; accident insurance underwriting; pawn brokerage; electronic funds transfer; issue of tokens of value; issuing of travellers' cheques; health insurance underwriting, marine insurance underwriting; fiscal assessments; fiscal valuations; bail-bonding; lending against securities; exchanging money; money exchanging office.

Class 41: Education and instruction within banking business; providing of training and instruction within banking business.

Class 42: Computer rental, consultancy in the field of computer hardware, computer programming, updating of computer software, computer software design.

Class 45: Guardianship; copyright management; licensing of intellectual property, intellectual property consultancy; legal research, legal services.

The Opposition Division notes that on 18/07/2019, the applicant withdrew the entire Class 36 of the list of goods and services for which it sought protection. Moreover, as notified to the parties in the communication of 10/07/2019, and in accordance with Article 43(3) EUTMR, the Office re-opened the examination on the absolute grounds for refusal for the contested application. As result of that re-examination (for more information see Refusal of application for an EUTM - Article 7 and Article 42(2) EUTMR, with an effect as from 14/01/2020, at https://euipo.europa.eu/eSearch/#details/trademarks/017880309), the contested goods and services are now the following:

Class 9: Animated cartoons.

Class 45: Monitoring of burglar and security alarms; chaperoning; clothing rental; dating services; funerary undertaking.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested animated cartoons are in their nature media content products, that is to say, they may take form of electronic publications, downloadable or recorded. The opponent’s goods and services essentially comprise security equipment in the form of apparatus and instruments, coded and un-coded magnetics cards, computers or peripheral devices, as well as software and other apparatus related to financial operations (money exchange and transactions), various business management, administration, advertising or clerical services, financial services, including such related to investments and valuations, insurances and real estate, education and training in the banking business, computer rental and other IT-related services, as well as legal services and guardianship.

It is evident that the contested goods are different in their nature, purpose and method of use from any of the goods and services covered by the opponent’s mark since the Opposition Division does not find any relevant points in common when assessing these criteria. Moreover, they will completely differ in their target public and distribution channels, as well as in their usual origin. By way of example, the contested goods may be found in various entertainment centres, bookstores and cartoon-specialised departments and will generally target the public at large, especially cartoon enthusiasts and children. By contrast, the opponent’s goods and services are mostly related to the financial sector and will to a larger extent aim at professionals only. Even though some of the goods and services may be offered to the general public, e.g. computers, the latter still display a significant gap as to their manufacturers and global purpose, as well as with regard to their sales spots. Therefore, the contested goods in Class 9 are considered dissimilar to all the opponent’s goods and services.

Contested services in Class 45

The contested chaperoning will be seen nowadays as a service consisting of accompanying/escorting of persons in society and providing supervision, especially of young people, but not excluded also in clinical context. On the other side, the opponent’s guardianship of Class 45 has the essential purpose of staying in charge of a person and representing its legal interests, including in the case of minor children. As may be seen, these two services have a certain overlap in their nature and purpose of social services and to that extent they may be offered by the same undertakings and to the same consumers in need of professionals in the respective fields. In general, these services are found at least similar to a low degree, to the extent that they may share some common features when it comes to the care, both legal and social, of young children and adolescents.

The contested monitoring of burglar and security alarms are found at least similar to a low degree to the opponent’s security equipment in the form of alarm devices for transportation and safe-keeping of funds and valuables of Class 9, to the extent that these services may be provided via the same distribution channels where the specialised equipment for, inter alia, surveillance, monitoring and security may be found; in addition, they will target the same public interested in the particular protection and safety matters. Moreover, these goods and services may be in competition with each other to the extent that they serve the same security needs of the client. Finally, it cannot be excluded that in particular cases where the security installations will be of such a high technical character, their manufacturers may independently employ specialists with a know-how in operating these installations and systems and offer it as a service to the same business consumers (e.g. financial institutions keeping on their premises valuables).

By contrast, the remaining contested services, namely clothing rental; dating services; funerary undertaking, are different from any of the opponent‘s goods or services.

The dating and funeral services belong to the category of personal or social services and are usually provided by highly specialised undertakings with focus on these particular matters (i.e. they are offered by dating or funeral agencies, respectively) and no further fields of expansion that may have crossing points with the opponent’s goods or services. The rental of clothing will be available by establishments involved commercially in lending clothing articles against a financial compensation (e.g. for important occasions such as weddings or evening galas, etc.), usually provided by specialised clothing stores or boutiques.

All these contested services have nothing to do with the opponent’s goods and services that have been summarised and referred to in a previous part of the comparison. Indeed, the goods and services above have different natures and purposes, target different consumers using distinct commercial channels and, finally, originate from different undertakings. There is no obvious complementarity relationship that can be established between any of the goods and services and no facts or evidence have been introduced by the opponent to prove otherwise. Consequently, they are dissimilar.

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 goods and services found to be at least similar to a low degree are directed at the public at large, as well as at business customers with specific professional knowledge or expertise, in particular with regard to the goods and services meant for security purposes.

The public’s degree of attentiveness is considered to be relatively high. For instance, the relevant public will be very attentive by its choice of guardians or monitoring services against burglars, where the overall wellbeing of people is involved and considering that their security may be set at risk.

c) The signs

	Forexchat
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark consists of, inter alia, the verbal element ‘FOREX’ that may evoke some connotations for part of the public throughout the EU. In particular, in the professional banking industry, the term ‘FOREX’ is used as a contraction of the English expression ‘foreign exchange’, referring to the market on which currencies are traded. However, in previous decisions of the Office, it was considered that the non-professional public was not likely to be acquainted with this abbreviation and that, therefore, consumers would not understand it (15/03/2016, R 1533/2015-4 FIREX/FOREX BANK (fig.) et al.). The Opposition Division supports this opinion, especially taking into account that none of the goods and services in question directly or indirectly concerns financial markets or currency exchange. Consequently, the assessment will proceed based on this assumption, namely that the word ‘FOREX’ is entirely meaningless and distinctive for the goods and services at hand.

Аlthough the contested sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Consequently, consumers will most probably split up the contested sign into the elements ‘forex’ and ‘chat’, where the latter will be immediately associated with ‘1. informal conversation or talk conducted in an easy familiar manner; 2. the exchange of messages in an internet or other network chatroom’ (https://www.collinsdictionary.com/dictionary/english/chat, available online on 23/09/2020). This word will be known by its second meaning throughout the EU due to its widespread use in the field of social networks. Given that the relevant services are by nature social services (chaperoning) or sort of surveillance services, this word will be of a weaker distinctiveness in relation to them since it indicates possible means of communication by providing the services (via chat).

The earlier mark further contains a figurative component displaying a note of 100 (unclear currency), as well as smaller coins of 5, 10 and 1 surrounding it. This device is certainly indicative of the purposes of the earlier mark’s goods in Class 9, namely it refers indirectly to their nature of security equipment for valuables; hence, it is of somewhat lesser distinctiveness for these goods. In any event, it is also noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, following the above and bearing in mind its secondary position, the figurative element will most likely be paid less attention to than the verbal element ‘FOREX’ preceding it.

In addition, the earlier mark has no more striking or, so to say, dominant elements and the slight stylisation used for its letters is of a less impact on the overall perception of the sign.

Account is also taken of the fact that the contested sign is a word mark and as such its verbal element is protected regardless of whether it is represented in lower or upper case letters.

Visually and aurally, the signs coincide in the letters ‘FOREX’, and the sounds thereof. However, they differ in the letters ‘chat’, and the sounds thereof, as well as in the stylisation and the figurative element of the earlier mark. These elements were in any event considered of less impact within the mark, for the reasons provided above.

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. In the present case, it is important to note that the coinciding element, being the sole verbal element of the earlier mark, is placed at the beginning of the contested sign where the focus of consumers will be drawn to.

Following the coincidence in a distinctive element under the above circumstances, the signs are visually and aurally similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by some elements contained in the marks. As each of the signs will be associated with different meanings, the signs are conceptually not similar. However, as explained above, the concepts introduced by the meaningful elements (word or figurative) are only of limited distinctiveness, or at least of a less impact in the overall perception.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 goods and 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 goods and services are partly at least similar to a low degree and partly dissimilar. The degree of attention of the relevant public will be relatively high for the abovementioned reasons. The earlier mark as a whole enjoys a normal degree of distinctiveness.

The signs have been established as visually and aurally similar to above an average degree, whereas from a conceptual point of view, the signs will be not similar. As mentioned above, the differences between the signs are confined to components of a lesser importance, namely the additional verbal element in a secondary position and reduced distinctiveness, ‘chat’, and the figurative aspects of the earlier mark that, however, cannot divert the attention of the consumers from the word ‘FOREX’. Even if the differing word ‘chat’ in the contested sign may convey an informative message regarding the services in question, it cannot be considered as a sufficient difference to change the overall impression that both signs convey on account of their coinciding and distinctive verbal element ‘FOREX’.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In the present case, consumers may easily attribute the same commercial origin of the goods and services at hand, given the rather informative character of the word ‘chat’ and the message it adds to the contested sign (in relation to the services).

Finally, 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). Consequently, in the present case, the greater similarity between the signs will suffice to compensate the lower degree of similarity between the goods and services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 7 319 841.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to at least a low degree to the goods and services of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

For the sake of completeness, it is noted that the opposition is based on three more earlier rights, namely:

o European Union trade mark registration No 4 871 836 for the word mark ‘FOREX’ for goods and services in Classes 6, 9 and 36;

o European Union trade mark registration No 7 322 068 for goods and services in Classes 6, 9, 35, 36, 41, 42 and 45 and

o European Union trade mark registration No 7 321 466 for goods and services in Classes 6, 9, 35, 36, 41, 42 and 45.

These earlier marks contain the same or narrower lists of good and services than the one assessed in the section Comparison of goods and services above. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. As result, no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Manuela RUSEVA

Vít MAHELKA

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.