OPPOSITION No B 3 066 512

Notemachine Limited, Russell House, Elvicta Business Park, Crickhowell, Powys NP8 1DF, United Kingdom (opponent), represented by Taylor Wessing LLP, 5 New Street Square, London EC4A 3TW, United Kingdom (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 26/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 512 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 900 018 for the figurative mark , namely against part of the services in Class 35 and all the services in Classes 36 and 39. Due to a subsequent limitation of the application the opposition is now directed against all of the remaining services in said application, namely against all the services in Classes 36 and 39. The opposition is based on European Union trade mark registration No 13 293 626 and German trade mark registration No 30 2015 031 696, both for the figurative mark , European Union trade mark registration No 13 293 493 and German trade mark registration No 30 2014 062 504, both for the figurative mark , United Kingdom trade mark registration No 3 073 926 for the figurative mark , and United Kingdom non-registered trade mark for the word mark ‘EUROCHANGE’. The opponent invoked Article 8(1)(b), Article 8(4) and (5) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

In the present case, the opponent invoked unregistered trade mark ‘EUROCHANGE’ used in the course of trade in the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested application was filed on 14/05/2018. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for cash dispensing machines; automated cash machines; parts and fittings for all the aforesaid; software for cash dispensing machines and automated cash machines; banking services; lease and rental of cash dispensing machines; information, advisory and consultancy services in relation to all the aforesaid services. Installation, maintenance and repair of cash dispensing machines and automated cash machines; information, advisory and consultancy services in relation to all the aforesaid services; technical advice relating to operation of cash dispensing machines and automated cash machines and software therefor; software design, development, consultancy, installation, updating and maintenance; information, advisory and consultancy services in relation to all the aforesaid services.

On 17/05/2019 the opponent submitted evidence in relation to the claims under Article 8(4) and (5) EUTMR. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 Witness statement dated 06/01/2016 by the Managing Director of the opponent, where he explains that the brand ‘EUROCHANGE’ had acquired a substantial reputation in the UK. In particular, the opponent, Notemachine Limited, is one of UK’s leading financial technology and monetary service providers and operates a large chain of ‘EUROCHANGE’ branded stores throughout the UK, the first retail branch being opened in 1975. It is mentioned that up to July 2007 there were 80 ‘EUROCHANGE’ branches located throughout the UK and that at the date of the statement there were 121 ‘EUROCHANGE’ branches in the UK. The witness statement mentions a marketing and advertising figure for the entire period 2002 to 2007, as well as two tables, one of them showing the total number of UK visitors to ‘EUROCHANGE’ stores in 2005, 2006 and 2007 and the other table showing annual turnover and revenue figures in the years 2002 to 2007. The witness statement refers to, and provides explanation for, the accompanying Exhibits GC1 to Exhibit GC11, in particular:

 Exhibit GC1: (1 page) A table showing a summary of the number of branches in London and in UK regions in the years 2002 up to 2007.

 Exhibit GC2: (20 pages) Screenshots of the website of FX Currency Services Ltd. There are references to as well as the address details of a number of London-based and ‘outside London’ Eurochange branches. The exact date is not indicated but there is a copyright reference on each page dated 2005.

 Exhibit GC3: (5 pages) Printouts from eurochange.gr/branches website created through the Wayback Machine. The printouts show the addresses of a number of Athens-based Eurochange branches on 16 April 2004 and 01 July 2007.

 Exhibit GC4: (4 pages) Printouts from eurochange.it website created through the Wayback Machine. The printouts show the addresses of Eurochange branches in Italy on 13 April 2004, 06 April 2005 and 01 July 2007.

 Exhibit GC5: (2 pages) Printouts from eurochange.in website created through the Wayback Machine. The printouts show the addresses of Eurochange branches in India on 15 July 2006.

 Exhibit GC6: (52 pages) Photographs of Eurochange branches in the UK (London and regional). Some of the photographs are not dated and others bear dates referring to 2002 and 2006. The shop sign that can be seen on most photographs is or . The opponent’s Management Director explained in the witness statement that: I cannot be sure that all those photos in this Exhibit GC6 were taken before the relevant date. However, I can confirm that the pictures are an accurate representation of what our branches would have looked like at and prior to the relevant date. According to the witness statement the ‘Relevant Date’ is 10 July 2007.

 Exhibit GC7: (7 pages) Photographs of Eurochange branches in Greece and Italy, in particular in Athens Airport and Malpensa Airport. Only two of the photos show dates (one in 2004 and another one in 2014). The remaining photographs are not dated and the opponent’s MD explains that, although he cannot be sure that they were taken prior to the Relevant Date, they represent what the branches would have looked like at and prior to the Relevant Date.

 Exhibit GC8: (60 pages) Three Financial Statements of the company FX Currency Services Ltd. for the years ended on 31/12/2006, 31/12/2007 and 31/12/2008. There is no clear reference to use of the trade mark/brand Eurochange.

 Exhibit GC9: (3 pages) Printouts from www.fasttrack.co.uk showing extracts from the Sunday Times Profit Track 100 Index. In particular, the extracts show the Eurochange ranks for the years 2000, 2001 and 2002.

 Exhibit GC10: (20 pages) Promotional booklet of the company FX Currency Services Ltd. from 2003.

 Exhibit GC11: (11 pages) A chart titled ‘NoteMachine Group Structure Chart’ dated 03/03/2015 showing the names and company registration numbers of more than ten companies related to Eurochange Limited and Notemachine Limited, as well as extracts from the UK Companies House showing the change of company names from FX Currency Services PLC to Eurochange PLC in 2011, from FX Investments Ltd. to FX Currency Services Ltd. in 2000, from Eurochange Group Ltd. to FX Investments Ltd. in 2000 and from Law 261 Ltd. to Eurochange Group Limited in 1990.

As mentioned above, the condition requiring use of the sign in the course of trade is fundamental in order to enjoy any protection against the registration of a European Union trade mark.

The Court of Justice ruled that the ‘use of the sign in the course of trade’ within the meaning of Article 8(4) EUTMR refers to the use of the sign ‘in the course of a commercial activity with a view to economic advantage and not as a private matter’ (12/11/2002, C-206/01, Arsenal, EU:C:2002:651, § 40; 25/01/2007, C-48/05, Opel, EU:C:2007:55, § 18; 11/09/2007, C-17/06, Céline, EU:C:2007:497, § 17).

The criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to these elements: the intensity of use (sales made under the sign); the length of use; the spread of the goods or services (location of the customers) and the advertising under the sign and the media used for that advertising, including the distribution of the advertising.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

As already mentioned, the opponent is required to prove, inter alia, that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to the date of filing of the contested application, i.e. prior to 14/05/2018.

Having examined the abovementioned evidence in detail, the Opposition Division notes that the opponent failed to submit any evidence referring to the relevant territory dated after the year 2008. The opponent argues that it demonstrated that the mark EUROCHANGE was used in the course of trade in the UK prior to the date of filing of the contested mark and, indeed, all the evidence filed is dated or refers to from around 2002 to 2008 at the latest. The only exceptions are: one photograph dated in 2014 enclosed as part of Exhibit GC7, which however does not refer to the UK, and part of Exhibit GC11 showing a company chart and the names and company registrations of several companies (i.e. documents obviously not referring to use of the sign on the respective market).

In the present case, the opponent failed to provide any evidence referring to use of the mark from 2008 up to the time of filing of the contested mark. The time gap between the year 2008 and 14/05/2018 is considerable.

Consequently, since no relevant evidence of use was brought forward for the period between the year 2008 and the contested sign’s filing date of 14/05/2018, it is considered that the opponent has failed to show that the unregistered sign is still used prior to the date of filing of the contested application.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in the UK up to the date of filing of the contested application.

Given that at least one of the necessary requirements of Article 8(4) EUTMR is not met, the application must be rejected as unfounded, as far as it is based on this ground.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent has based its claim on this ground on the following earlier marks:

(1) European Union trade mark registration No 13 293 626, 

(2) European Union trade mark registration No 13 293 493, and

(3) United Kingdom trade mark registration No 3 073 926.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union or the United Kingdom.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 14/05/2018.Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union or the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9: Cash dispensing machines; automated cash machines; parts and fittings for all the aforesaid; software for cash dispensing machines and automated cash machines.

Class 36: Banking services; lease and rental of cash dispensing machines; information, advisory and consultancy services in relation to all the aforesaid services.

Class 37: Installation, maintenance and repair of cash dispensing machines and automated cash machines; information, advisory and consultancy services in relation to all the aforesaid services.

Class 42: Technical advice relating to operation of cash dispensing machines and automated cash machines and software therefor; software design, development, consultancy, installation, updating and maintenance; information, advisory and consultancy services in relation to all the aforesaid services.

The opposition is directed against the following services:

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

Class 39: Transport of money.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(4) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

As noted above, although the evidence provided does show some use of the earlier trade marks, it only refers to use up until the year 2008. Even for this period, the evidence provides no information on the extent of such use aside from assertions made by the opponent itself. The evidence does not provide any indication of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade marks or the extent to which the trade marks have been promoted. As a result, the evidence does not show any use in the last decade and so it is clear that it does not show that the trade marks were known by a significant part of the relevant public at the time of filing of the contested trade mark. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on this ground.

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 13 293 493 for the figurative mark , as it is one of the earlier trade mark registrations that is most similar to the contested sign.

a) The goods and services

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

Class 9: Cash dispensing machines; automated cash machines; parts and fittings for all the aforesaid; software for cash dispensing machines and automated cash machines.

Class 36: Banking services; lease and rental of cash dispensing machines; information, advisory and consultancy services in relation to all the aforesaid services.

Class 37: Installation, maintenance and repair of cash dispensing machines and automated cash machines; information, advisory and consultancy services in relation to all the aforesaid services.

Class 42: Technical advice relating to operation of cash dispensing machines and automated cash machines and software therefor; software design, development, consultancy, installation, updating and maintenance; information, advisory and consultancy services in relation to all the aforesaid services.

The contested services, following the limitation of 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.

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 or dissimilar to 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 services in Class 36

Banking services consist of providing all the services necessary for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business.

The contested financial affairs, expressly not including leasing and rental of cash dispensing machines at least overlaps with the opponent’s banking services. Therefore, they are considered identical.

Providing insurance services consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages.

Insurance services serve different purposes from banking services such as providing credit or asset management, credit card services, financial evaluation or stocks and bonds brokerage. Nevertheless, there are also some significant similarities.

Insurance services are of a financial nature and insurance companies are subject to licensing, supervision and solvency rules similar to those governing banks and other institutions providing financial services. Most banks also offer insurance services, including health insurance, or act as agents for insurance companies with whom they are often economically linked. Additionally, it is not unusual to see a financial institution and an insurance company in the same economic group.

Therefore, although insurance services and banking services have different purposes, they are of a similar nature, may be provided by the same undertaking or related undertakings and have the same distribution channels. Therefore, the contested insurance services are similar to the opponent´s banking services.

Contested services in Class 39

The contested transport of money is a specific transport service that is usually provided by companies specialised in security for banks, retailers or other commercial and governmental customers.

The opponent´s services in Class 36 are offered by professionals in the economic and financial sector or financial entities such as banks to the general public (individuals and companies). Even though money and valuables are the object of all these services, the business object of the services, their purpose and method of use is different as well as the professionals that offer them. Consumers expect banks to use guarded transport when money and valuables are transported. However, they do not expect that banks offer them these services in parallel to their financial services. Consequently, these services are dissimilar.

The contested transport of money is also dissimilar to the rest of the opponent´s goods and services, namely those in Classes 9, 37 and 42, all of which are directly related to cash machines, their provision and operation, and are provided by specialised companies to financial entities. They are very specialised goods and services that do not have anything in common with the contested transport of money, other than the fact that they have a more or less direct relationship with liquid money. Consequently, these goods and services are also 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 services found to be identical or similar are directed at the public at large, as well as at business customers with specific professional knowledge or expertise.

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).

c) The signs

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

Neither sign has any element that is more dominant than the rest.

Although the verbal elements of both signs are composed of a single 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).

The word ‘EURO’ refers to the single European currency and will be understood as such throughout the relevant territory.

The word ‘CHANGE’ means, in English, inter alia, ‘exchange (a sum of money) for the same sum in a different currency or denomination’ (information extracted from Lexico Dictionary on 19/02/2020 at https://www.lexico.com/definition/change) 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 banking services, which inter alia include currency exchange services, this element is non-distinctive for the services in question.

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 19/02/2020 at https://www.lexico.com/definition/exchange) and will also be understood as such and be non-distinctive for the services in question, for the same reasons as explained above. For the sake of completeness, since the contested services include also insurance services, it is expressly noted that insurance services include inter alia insurance exchange rate services and to that extent the term will also have descriptive connotations also for these services.

Thus, the verbal element of the earlier mark ‘eurochange’ will be perceived as consisting of two words, ‘euro’ and ‘change’, and the verbal element of the contested sign ‘euroExchange’ will be perceived as consisting of two words, ‘euro’ and ‘Exchange’ (in this last case not only because of the meanings of the words but also because they are visually separated by the capital ‘E’ and the different colours of ‘Ex’). It is feasible that consumers may also see the words ‘euro’ and ‘change’ in the contested sign, due to the fact that they are recognisable words and that the ‘Ex’ part is in a different colour. In this scenario, ‘Ex’ (which will be understood throughout the European Union as a prefix denoting removal, release or a former state) does not have a meaning in relation to the services and would therefore be normally distinctive. In this latter scenario, what has been said above on the connotations of ‘change’ will also be applicable regarding the contested sign.

The figurative devices of the signs have no meaning and are therefore normally distinctive. The turquoise background of the earlier mark will be seen as a merely decorative element of limited impact.

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). However, this principle does not always apply (03/06/2015, T-559/13, Giovanni Galli, EU:T:2015:353, § 61). In the present case, the figurative elements of the signs are distinctive, while the verbal elements are non-distinctive. Even though the figurative devices occupy smaller portion of the signs, when compared to their verbal parts, they are positioned before the verbal components and it is unlikely that they remain unnoticed. In this context, even though it is not likely that the consumers will disregard the verbal elements of the signs, due to their descriptive connotations consumers will rather focus on the figurative parts of the signs, in particular their figurative devices and the overall getup of the signs, which they will see as the actual origin identifiers..

Visually, the signs are similar to the extent that they both include the sequence of letters ‘euro*change’ in a similar typeface, which are however depicted in different colours (contrary to the opponent´s assertion to the contrary, since the letters of one sign are grey and in the other they are white) and they are non-distinctive as such. Furthermore, the signs differ in all other aspects as described above and the sequence of letters ‘euro*change’ is separated by the additional letters ‘Ex’ in the contested sign. Contrary to the opponent´s claim, the letters ‘Ex’ won´t be overlooked by consumers, especially since they are depicted in a rather striking blue colour.

The opponent also argues that the first four letters ‘euro’ are identical, and it is true that normally this would be a relevant circumstance as the first part of a sign is generally the one that primarily catches the consumer’s attention and therefore will be remembered more clearly than the rest of the sign.

However, the assessment of the similarity between the marks must take into account the overall impression created by those marks (16/05/2007, T-158/05, Alltrek, EU:T:2007:143, § 70; 08/09/2010, T-369/09, Porto Alegre, EU:T:2010:362, § 29; 06/07/2004, T-117/02, Chufafit, EU:T:2004:208, § 54) and bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 23). It is settled case-law that a descriptive component of a composite mark cannot dominate the overall impression of the mark, and thus on its own cannot establish a likelihood of confusion (07/07/2005, T-385/03, Biker Miles, EU:T:2005:276, § 44; 03/07/2003, T-129/01, Budmen, EU:T:2003:184, § 53).

Bearing in mind that the coinciding word ‘euro’ will be perceived as non-distinctive by the public throughout the relevant territory, even if ‘euro’ is the first word in both signs, it will not dominate the overall impression produced by the signs or be remembered more clearly than the rest of the sign. As said above, in view of the distinctiveness factor, it is the figurative elements of the signs, namely their figurative devices and the signs overall graphical representation, that will focus consumer’s attention and will be seen as an origin identifier.

Therefore, the signs are visually similar to, at most, a very low degree overall.

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 words ‘euro’ and ‘change’, present in both signs but which are however non-distinctive. The pronunciation differs in the sound of the letters ‛Ex’ present in the middle of contested sign, which have no counterpart in the earlier mark but which will either be perceived as part of the non-distinctive word ‘Exchange’ by part of the public or as distinctive to a normal degree by another part of the public.

Therefore, the signs are aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As explained above, both signs will be associated with the same concept of changing euros into another currency, whether the contested sign is seen as composed of the concepts ‘euro’ and ‘change’ or ‘euro’ and ‘exchange’. However, the differing figurative elements, and the verbal element ‘Ex’ for those who see it as a separate component, will also have impact on the perception of the signs. Given the non-distinctive character of these concepts, such an overlap can lead to at most a below average degree of conceptual similarity overall.

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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(4) and 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, bearing in mind the abstract nature of the distinctive figurative element, and the descriptive meaning of the verbal elements in relation to the goods and services in question from the perspective of the public in the relevant territory, the distinctiveness of the earlier mark must be seen as low.

e) Global assessment, other arguments and conclusion

As already mentioned above, 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, Sabel, EU:C:1997:528, § 23).

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).

In the present case, the goods and services at issue have been found partly identical, partly similar and partly dissimilar, and the degree of attention of the relevant public is quite high.

The signs have been found to be visually similar to, at most, a very low degree, and aurally and conceptually similar to a below average degree on account of their coincidence in the non-distinctive words ‘euro’ and ‘change’ or ‘exchange’. The earlier mark has a low degree of inherent distinctiveness.

Whereas a company is certainly free to choose a trade mark with descriptive and non-distinctive words, and use it on the market, it must also accept, however, in so doing that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011-5, 4REFUEL (fig. mark)/REFUEL, § 15).

Where the similarities arise in relation to non-distinctive elements of a mark, the importance of differences must increase proportionately to the degree that a mark or its constituent elements may be considered to be non-distinctive (14/05/2001, R 257/2000-4, e plus (fig. mark)/PLUS, § 22).

Where a mark is largely descriptive, small differences may suffice to avoid confusion since the average consumer, when perceiving something largely descriptive, will recognise that to be so and expect others to use similar descriptive marks and thus be alert for detail which would differentiate one producer or provider from another. In such cases, the general public will be more likely to recall the totality of the sign and rely on that as a distinguisher of the commercial origin of the goods or services concerned.

Therefore, a later encounter with trade marks that individually contain any of the non-distinctive components are not likely to create circumstances that lead to a risk of confusion.

Taking all the above into account, and bearing in mind the lack of distinctiveness of the coinciding words ‘euro’ and ‘change’ within the respective signs, the overall impression they produce is not sufficiently similar to lead to a likelihood of confusion on the part of the public, especially since the public will pay a high degree of attention at the time of purchase of the services found to be identical or similar. As said, it is the figurative elements of the signs, namely their figurative devices and the signs’ overall graphical representation, that will focus consumer’s attention and will be seen as an origin identifier. These elements of the signs do not bear even a very remote similarity. Therefore, there is no likelihood of confusion on the part of the public and the opposition must be rejected.

The other earlier marks invoked by the opponent are identical or less similar to the contested mark, since they contain further figurative elements and words such as ‘from NOTEMACHINE’, which are not present in the contested trade mark. Moreover, they cover the same scope of goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; 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.

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

Teodora TSENOVA-PETROVA

Helen Louise MOSBACK

Alicia BLAYA ALGARRA

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.