CANCELLATION No C 43 963 (INVALIDITY) 

 

U.S. Bank N.A., 800 Nicolett Mall, 55402 Minneapolis, Minnesota, United States of America (applicant), represented by Awa Sweden AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative)

 

a g a i n s t

 

Alex Reinhardt, 30th floor, Swiss Tower, Cluster Y, Jumeirah Lakes Tower, Dubai, United Arab Emirates  (EUTM proprietor), represented by Patentanwalt Manfred Kietzmann, Friedrichstr. 95, 10117 Berlin, Germany (professional representative).

On 06/07/2021, the Cancellation Division takes the following

 

 

DECISION

 

1.	The application for a declaration of invalidity is rejected in its entirety.

 

2.	The applicant bears the costs, fixed at EUR 450.

 

REASONS

 

On 14/05/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 17 890 718 ‘ELVN’ (word mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely against all the services in Classes 36, 38 and 42. The application is based on, inter alia, EUTM registration No 4 780 664 ‘ELAVON’. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claims that the contested services are identical or highly similar to those of the earlier marks, or at least they are similar to a certain degree (the contested services in Class 38). As regards the marks, the applicant emphasizes the coincidence in their beginnings and in four of their letters. It claims that the contested mark is the earlier ones without vowels and explains the trend of ‘disemvoweling’. It submits an article entitled ‘The Disemvoweling of Modern Brands’ published at www.cohocreative.com in 2019. It refers to a previous opposition decision B 2 246 141 of 30/04/2015 where the signs URIACH – URAH were found similar. It puts forward that it is impossible to pronounce the contested mark as it is and argues that a vowel has to be introduced between ‘V’ and ‘N’ and the contested mark is most likely to be pronounced as ‘ELVON’. It concludes that consumers will assume that the contested mark is a disemvoweled mark of the applicant and that they both belong to the same entity.

The EUTM proprietor argues that the contested mark is not a word but a randomly selected sequence of letters. He emphasizes the differences between the marks and argues that while disemvoweling may be popular on Twitter and Instagram, it does not reflect consumer perception. He puts forward that the relevant public has higher level of attention. He contends that similarity of the marks cannot be concluded based on their beginnings ‘EL’, as there are many trade marks with this beginning on the register. He concludes that the differences between the marks prevent likelihood of confusion despite a major overlap between the services.

The applicant refutes the EUTM proprietor’s arguments and reiterates its previous ones. It agrees that the relevant public is both public at large and professionals and points out that the perception of the public that is more prone to be confused must be taken into account. It denies that the beginning ‘EL’ is weak and in any event, it will not be dissected from the rest of the words. It maintains that the similarity between the marks and services gives rise to a likelihood of confusion between the marks.

Preliminary remark

In his observations, the EUTM proprietor requests the rejection of the application, alternatively the restriction of the list of services of the contested mark to virtual currency services. The Cancellation Division concurs with the applicant that this cannot be considered to be a partial surrender of the contested mark, as it was not submitted by way of a separate document (as required by Article 17(7) EUTMDR) and it is not unconditional.

For the same reasons, the EUTM proprietor’s statement ‘in this case, the owner disputes the use of the trademarks of the applicant for these services’ cannot be considered to be a valid request for proof of use.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s EUTM registration No 4 780 664.

 

a) The services

  

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. 

 

The services on which the application is based are the following: 

 

Class 36: Issuing consumer and business lines of credit for third party financial institutions' customers as part of a private-label credit card program; collecting, manipulating, and transmitting information related to, and providing authorization, verification, processing and chargeback handling services for credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions; reporting and account reconciliation of credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions; and providing information and data related to credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions via electronic means.

Class 42: Designing, developing and creating computer software related to credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions; providing advisory services in the design, development and implementation of information management systems related to credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions; designing, developing, renting and leasing computer equipment and processing terminals related to credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions.

The contested services are the following: 

Class 36: Financial transactions relating to currency swaps; Electronic wallet services (payment services); Provision of financial services by means of a global computer network or the internet; Virtual currency services; Finance services; Electronic processing of payments via a global computer network; Currency trading; Currency trading; Virtual currency exchange; Money exchange agency services; Currency trading; Virtual currency transfer services; Trading in currencies; Financial information services relating to currencies.

Class 38: Providing user access to global computer networks; Providing access to databases in computer networks; Provision of access to an electronic marketplace [portal] on computer networks.

Class 42: Configuration of computer networks by software; Consultancy services relating to computer networks.

 

Contested services in Class 36 

All the contested services in this class are either broad categories that include the applicant’s services in Class 36 (e.g. the contested finance services) or are categories that overlap with them (e.g. electronic wallet services (payment services) or electronic processing of payments via a global computer network). The applicant’ services are financial services covering all aspects of card transactions, which, in principle, does not exclude transactions with virtual currencies or transactions that involve different currencies. Therefore, the applicant’s services also implicitly involve money exchange and currency trade. Consequently, also the contested categories such as currency trading; virtual currency exchange; money exchange agency services, overlap with the applicant’s collecting, manipulating, and transmitting information related to, and providing authorization, verification, processing and chargeback handling services for credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions; reporting and account reconciliation of credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions. As regards the contested financial information services relating to currencies, these overlap with the earlier mark’s providing information and data related to credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions via electronic means. Consequently, all the contested services in this class are identical to the respective applicant’s services in the same class.

 

Contested services in Class 38 

The contested services in this class are telecommunication services consisting in providing access to computer networks, databases and marketplace on computer networks. These services have the same purpose as the applicant’s renting and leasing computer equipment and processing terminals related to credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions in Class 42 as all these services aim at enabling communication over a long distance using computers. These services can also be provided by the same entities through the same distribution channels and they are complementary. Therefore, these services are similar.

Contested services in Class 42 

 

The contested configuration of computer networks by software is highly similar to the applicant’s designing, developing and creating computer software related to credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions. Although the earlier mark’s services are limited to software for card transactions, the contested category does not contain any limitation and, therefore, includes computer networks used for the same purpose. Configuration of networks by software is closely related to development of software as such services have the same or very similar nature, are often provided by the same companies through the same distribution channels and may be requested by the same relevant public.

The contested consultancy services relating to computer networks are similar to a high degree to the applicant’s providing advisory services in the design, development and implementation of information management systems related to credit, payment, charge card, debit card, gift card, stored value card, prepaid card, and loyalty card transactions. Similar reasoning as above applies to these services. They have the same nature, are provided by the same companies to the same relevant public and use the same distribution channels.

 

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 or similar to various degrees are directed at professionals and business customers (e.g. many of the services in Classes 36 and 42) as well as at the public at large (e.g. some of the services in Classes 36 and 42).

 

As regards the financial services in Class 36, they 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).

As regards the remaining relevant services, the attention will range from average to high, depending on the complexity, price and the potential impact of those services.

 

c) The signs

 

ELAVON	ELVN
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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

Both marks are word marks consisting of a single word element, which is meaningless for the relevant public. They do not have any elements which could be considered more distinctive or dominant (more visually striking) than other elements.

 

Visually, the signs coincide in the letters ‘EL*V*N’ and they differ in the letters ‘A’ and ‘O’ present additionally in the earlier mark. The earlier mark is considerably longer than the contested one and the two additional letters, which are inserted in between the letters that the marks have in common, are visually very noticeable. The coinciding letters do not form the same sequence in both signs, but the sequence is broken, in two places, by the additional characters in the earlier mark. This obscures the fact that the marks have four letters in common and the consumers may not even notice any coincidence besides the identical beginning ‘EL’. Even though the beginning of a mark is normally the part with most impact on the consumers, two identical letters at the beginning of the signs cannot prevail and cause any considerable degree of similarity when the rests of the marks are considerably different. Considering all this, the marks are visually similar only to a low degree, despite their coinciding initial letters.

 

Aurally, the earlier mark is a standard word, meaningless but easily pronounced according to each relevant language’s grammar rules. On the other hand, the contested mark is a sequence of four letters, starting with a vowel and continuing with three consecutive consonants, which are not easily pronounceable. The applicant argues that for this reason, a vowel will be inserted in the pronunciation of the contested mark between ‘V’ and ‘N’, and that that vowel will, for some unspecified reason, be ‘O’, resulting in the pronunciation of the contested mark as ‘ELVON’. It is absolutely unclear why should any consumer pronounce the contested mark as ‘ELVON’. In fact, there is a standard option for pronouncing sequences of letters that contain groups of sounds difficult to pronounce together. Consumers treat such sequences, in particular when they are not very long, as individual letters and pronounce them as if they were acronyms, spelling the individual letters. This, in the present case, would result in ‘el-vee-en’ or even ‘ee-el-vee-en’ for English-speaking consumers, ‘el-fau-en’ for German speakers, ‘el-uve-ene’ for Spanish-speaking consumers, ‘el-vé-en’ for Czech-speaking consumers, ‘el-ve-n’ or ‘el-v-n’ for Romanian-speaking consumers etc. In none of the relevant languages this would result in inserting ‘O’ in the contested mark. Again, the marks thus have identical beginnings, but the remaining parts will be pronounced differently, the syllable structure will be different and the fact that the consonants are the same is concealed by the different surrounding sounds of letters. Consequently, the marks are aurally similar only to a low degree.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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 applicant 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 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 

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

 

The marks have been found similar only to a low degree both from visual and aural perspectives. Neither of them has any meaning, so that conceptual comparison is irrelevant. In view of normal distinctiveness of the earlier mark and average to high attentiveness of the consumers, even the identity and high similarity of some of the services cannot outweigh the low degree of similarity of the marks. Despite their identical beginnings, the marks contain sufficient differences, in particular their overall length and structure (one is a standard, easily pronounceable word, whereas the other is seemingly a random sequence of letters) that prevail over the fact that they actually coincide in four letters, something that, on account of the differences in structure, will be hardly noticed by the consumers. Overall, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public, as they are outweighed by the differences between the marks.

The applicant argues that consumers will assume that the contested mark is a disemvoweled version of the earlier one and that both marks are controlled by the same entity. It submitted an article which explains the practice of disemvoweling of words, including trade marks. According to Collins online English dictionary, ‘disemvowel’ is an informal verb with the meaning of ‘to remove the vowels from (a word in a text message, email, etc.) in order to abbreviate it’. It would appear, from this definition, that this practice is used in informal communication to shorten existing words. The article submitted by the applicant speaks also about the practice of disemvoweling in some brands. The Cancellation Division studied this evidence; however, it considers that the situation in the present case is not likely to be perceived by the consumers as a case of a disemvoweled version of a previous trade mark, for the following reasons. First, there are no indications that this practice is common in any other language than English, so that the situation must be assessed in view of the perception of English-speaking public. Second, this practice still remains in the informal sphere, as it is also mentioned in the article, according to which the disemvoweling strategy is adopted by companies that aim at young public that desire to appear culturally relevant. Consumer will hardly expect a serious financial institution to start disemvoweling its name. Even if such practice could be expected from a hip IT or telecommunication company (considering there are certain telecommunication and IT services among the relevant ones), the contested mark would not be a good example of this practice. The words that are normally disemvoweled are commonly used words that will be recognized even without the vowels. If a less common word is treated in this way, only one vowel will normally be omitted in order for the word to remain recognizable. The golden rule is, also according to the article submitted, if the word cannot be pronounced intuitively also without vowels, or if there are more than one way to pronounce it, it will not be done. The examples given therein are either of disemvoweled meaningful words or of renown trade marks. It is also shown that omitting too many vowels will lead to the word not being recognized any more. In the present case, the earlier mark is not a meaningful word, nor is it a famous trade mark (at least this was not claimed or demonstrated). There is absolutely no reason why the relevant consumers should assume that ‘ELVN’ is a disemvoweled ‘ELAVON’. According to the rules of this practice, even if consumers assumed that ‘ELVN’ is not a random group of letters but a disemvoweled word, they would look for the closest, or most commonly used, word that they know that would correspond to this sequence of letters. Such words could be ‘ELEVEN’ or ‘ELVEN’ but there is absolutely no reason for them to assume that the word is a meaningless ‘ELAVON’. For these reasons, reasonable trade mark owners would not disemvowel their mark in this manner and reasonably circumspect consumers would not assume that this is the case. Therefore, this argument of the applicant is rejected.

The applicant refers to a previous Office decision to support its arguments, namely to the opposition decision B 2 246 141 of 30/04/2015 where the signs URIACH – URAH were compared. 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 Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

  

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the case referred to by the applicant, the marks ‘URIACH’ and ‘URAH’ were found to be similar. However, these signs present more similarities than the marks compared in the present case, in particular both are normally pronounceable words, they do not only contain the same consonants but also the same main vowels. The additional vowel in the word ‘URIACH’ is ‘I’ which is visually much less significant than the additional letters in the earlier mark in the present case. Therefore, this case cannot be considered to be analogous to the present one.

 

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the cancellation application must be rejected.

 

The applicant has also based its cancellation application on the following earlier trade marks: 

 

 

 EUTM registration No 4 780 649,  ; the application is based, regarding this trade mark, on a narrower scope of services than the trade mark compared above.

 EUTM registration No 15 774 995, ‘SECURED BY ELAVON’; registered for financial transaction services, namely, providing secure commercial transactions and payment options in Class 36.

 EUTM registration No 15 775 018, ‘ELAVON CONVERGE’; registered for financial transaction services, namely, providing secure commercial transactions and payment options; merchant services, namely, payment transaction processing services; online banking services accessible by means of downloadable mobile applications; payment processing services, namely, credit card and debit card transaction processing services; providing an internet website portal in the field of financial transaction and payment processing services in Class 36.

 

The other earlier rights invoked by the applicant are even less similar to the contested mark than the one compared above. This is because they contain either further figurative elements or additional words which are not present in the contested trade mark. Moreover, their respective lists of services are either narrower than the one of the mark compared above (as regards the trade mark No 4 780 649), or they contain broader services in Class 36.

As far as earlier mark No 4 780 649 is concerned, it is less similar to the contested mark than the earlier mark compared above and it contains a narrower scope of services. Therefore, a fortiori, no likelihood of confusion exists with respect to this earlier right.

As regards the two remaining earlier rights No 15 774 995 and No 15 775 018, they contain broader scope of the services in Class 36 than the mark compared above. However, the contested services are not more similar to these broader services in Class 36 of the abovementioned two earlier marks, as the contested services in Class 36 were already found to be identical to the services of the mark compared above. As regards the contested services in Classes 38 and 42, the services of the two above earlier mark in Class 36, being all financial services, are dissimilar to them or in any event a higher degree of similarity than that found above with the services of the earlier mark compared, cannot be found. Since these other marks are less similar to the contested mark than the earlier mark compared above and they do not contain services more similar to the contested ones than the mark compared above, a fortiori, no likelihood of confusion exists with respect to those earlier rights.

 

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

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

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. 

 

 

The Cancellation Division

 

Oana – Alina STURZA

Michaela SIMANDLOVA

Martin LENZ

 

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.