OPPOSITION No B 3 062 958

Euronext Amsterdam N.V., Beursplein 5, 1012 JW Amsterdam, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage Anna van Buerenplein 21A, 2595 DA The Hague, Netherlands (professional representative)

a g a i n s t

Euro Exchange Securities UK Limited,107 Great Portland Street, London W1W 6QG, United Kingdom (applicant), represented by Bermejo & Jacobsen Patentes-Marcas S.L., Av. de Europa 14 28108 Alcobendas (Madrid), Spain (professional representative).

On 15/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 958 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 17 900 018 for the figurative mark . The opposition is based on Benelux trade mark registration No 948 407 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In its notice of opposition, the opponent also based its opposition on Benelux trade mark No 626 555. However, in its observations and further submissions, it clearly restricted the basis of the opposition to Benelux trade mark registration No 948 407. Therefore, the Opposition Division will only consider Benelux trade mark registration No 948 407 in its further examination of the opposition.

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 goods and services

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

Class 36: Insurance and finance; securities exchange services; ensuring stock securities exchange quotations; compiling, calculating, updating and managing indices in connection with officially quoted securities; trading in securities; financial and monetary services for the execution of transactions in securities; mediation in respect of trading in shares and other financial securities; organizing a market for the trading of stocks and other financial securities; financial information and information about securities; provide and disseminate information exchange trading.

The contested services, following a limitation made by the applicant on 19/10/2018, are the following:

Class 36: Insurance; financial affairs, expressly not including leasing and rental of cash dispensing machines.

Class 39: Transport of money.

Some of the contested services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to goods and services of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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

These services target business customers and 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, the 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).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 composed of the words ‘AMSTERDAM EXCHANGE EXPERIENCE’ in grey standard capital letters, except for the first letters of the first and second word and the second letter of the word ‘experience’, which are in bold black standard capital letters. The word ‘AMSTERDAM’ will be associated with the well-known city in the Netherlands, and as it has no meaning in relation to the relevant goods and services, it has an average degree of distinctiveness. The word ‘EXCHANGE’ means, in English, inter alia, ‘the changing of money to its equivalent in the currency of another country’ (information extracted from Lexico Dictionary on 18/12/2019 at https://www.lexico.com/definition/exchange) and will be understood as such on account of its wide use throughout the relevant territory in the financial sector. Bearing in mind that the relevant services are related to ‘financial services’, this element is non-distinctive for the services in question, contrary to the opponent’s arguments.

The word ‘experience’ is an English word that will be understood by the relevant public as ‘an event or occurrence which leaves an impression on someone’ (information extracted from Lexico Dictionary on 18/12/2019 at https://www.lexico.com/definition/experience) because the relevant public is familiar with English and because its equivalent word in French — expérience — is almost identical. As it has no meaning in relation to the relevant services, it has an average degree of distinctiveness. The words ‘AMSTERDAM EXPERIENCE’ are the most distinctive elements of the earlier mark.

The contested sign is figurative. It is composed of two intertwining rectangles with their upper half in red/purple and their bottom half in purple/black and the word element ‘euroExchange’ in grey and blue standard script. Although written as one element, ‘euroExchange’ will clearly be perceived as consisting of two words, not only because 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), but also because ‘euro’ and ‘Exchange’ are visually separated by the capital ‘E’ and the different colours of ‘Ex’. The word ‘Exchange’ has the meaning explained above, and the word ‘euro’ will be associated with the European currency. Bearing in mind that the relevant services are related to ‘financial services’, this element is non-distinctive for the services in question.

The signs have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their word ‘Exchange’, which is non-distinctive and will have less impact, and in the signs’ grey colour. However, they differ in the earlier mark’s words ‘Amsterdam’ and ‘Experience’ and its fairly stylised typescript and different structure. They also differ in the contested sign’s figurative elements, the element ‘euro’ and the blue colour of the letters ‘Ex’.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛Exchange’, present identically in both signs, but which are non-distinctive as explained above. The pronunciation differs in the sound of the words ‘Amsterdam’ and ‘Experience’ of the earlier sign and in the element ‘euro’ of the contested mark. 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. These signs coincide in a non-distinctive element and have clearly different beginnings.

Consequently, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are not similar. Although the coinciding word ‘Exchange’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional, distinctive verbal elements, which have clear meanings. Therefore, the signs are not similar conceptually.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking all the factors relevant to the circumstances of the case into account (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The services were assumed to be identical.

The signs are aurally and visually similar to a low degree and conceptually not similar. The similarities between the signs are confined to the non-distinctive element that they have in common. However, they differ in the first word (‘AMSTERDAM’) of the earlier mark and the first part (euro) of the contested sign, and as this difference lies at the beginning of the marks, it has a stronger impact on consumers. Moreover, the different structure, additional figurative elements and word ‘EXPERIENCE’ of the earlier mark produce sufficient visual and aural differences to result in different overall visual impressions between the signs.

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 general rule should be to compare these signs in their entirety, taking into account, primarily, the overall impression conveyed. 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).

Considering all the above, and the relevant public’s high degree of attention, and even assuming that the services are identical, 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Andrea VALISA

Aurelia PEREZ BARBER

Arkadiusz GÓRNY

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.