CANCELLATION No C 45 429 (INVALIDITY) 

 

Bolsas y Mercados Españoles Market Data, S.A., Plaza de la Lealtad 1, 28014 Madrid, Spain (applicant), represented by Clarke, Modet y Cía., S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

 

a g a i n s t

 

"българска Независима Енергийна Борса" Еад, Район "Оборище", бул. "Княз Александър Дондуков" № 19, ет. 7, 1000 София, Bulgaria  (EUTM proprietor), represented by Bureau Ignatov & Son, 53, "Schipchenski prohod" blvd., 1111 Sofia, Bulgaria (professional representative).

On 28/05/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is upheld.

 

2.	European Union trade mark No 17 931 316 is declared invalid in its entirety.

  3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

 

On 11/08/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 17 931 316 (figurative mark) (the EUTM). The request is directed against all the services covered by the EUTM. The application is based on, inter alia, EUTM registration No 3 809 498 ‘IBEX’ (word mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the trade marks on the part of the public, and the use without due cause of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks. The applicant filed evidence of reputation of the earlier trade marks within the European Union for services in Class 36, as follows:

 exhibit 1: extracts from Wikipedia and www.tradingeconomics.com, an online platform that explains what the ‘IBEX’ stock market is, and its relevance, dated 31/07/2018;

 exhibit 2: newspapers, online magazines and blog articles in Spanish about ‘IBEX’ and , dated between 2012 and 2019;

 exhibit 3: real time stock market indicators, dated 2019, where ‘IBEX’ and other stock markets can be followed in real time;

 exhibit 4: Spanish stock market (IBEX 35) survey, providing a forecast of the IBEX stock market in comparison with other top stock markets, analysing several indicators, dated 31/08/2018;

 exhibit 5: analysis of ‘IBEX-35 BOLSA ESPAÑA’ twitter profile, dated 31/07/2018, in Spanish.

The applicant argued that it is clear from the evidence– which refers to an intensive and geographically extensive use of the earlier trade mark ‘IBEX’, and indicates an enormous investment on the part of the applicant in promoting its mark and the services covered by it – that the earlier mark is highly reputed throughout the European Union. The extent of the applicant’s commitment to the promotion of its reputation under the ‘IBEX’ mark is easy to see. Therefore, there is no reasonable justification for the proprietor of the EUTM registration to use the ‘IBEX’ concept, other than to capitalise (free ride) on the reputation that the applicant enjoys in the economy and the tax sector, and the applicant’s investment in promoting the earlier marks and the ‘IBEX’ concept.

The EUTM proprietor argues that the application must be rejected. It bases its arguments on the earlier figurative trade mark EUTM No 2 840 . It considers that the signs differ significantly in their figurative elements: the earlier mark’s upside-down triangle versus three overlapping coloured circles in the contested mark. It argues that the figurative element of the contested trade mark is dominant and eye-catching. It adds that the contested sign’s verbal element ‘IBEX’ is the acronym of the Independent Bulgarian Energy Exchange, which is well known by the relevant consumers in all Member States, and in other European and non-European countries with which the Bulgarian government has a traditional relationship with regards to energy transfer. The services in question are virtually unrelated. They have been further differentiated by a limitation of the list of services, therefore, an average consumer with an average degree of attention, can distinguish the business origin of the services without any confusion. The nature and purpose of the services, the distribution channels, the producers and the method of use are completely different. The services do not target the public at large, but specialists with specific professional knowledge or expertise.

The degree of attention can be expected to be very high. The figurative element of the contested trade mark is clearly more distinctive and dominant (eye-catching) than other elements. The earlier trade marks, as a whole, have no meaning in relation to any of the goods and services from the perspective of the public in the relevant territory.

Therefore, the distinctiveness of the earlier marks must be seen as normal. The EUTM proprietor argued that there is no likelihood of confusion between the marks and that the application for invalidity must, therefore, be rejected. As regards the reputation of the earlier marks, the evidence presented mainly concerns the use of the verbal element ‘IBEX’.

The evaluation of the detriment or the unfair advantage must be based on an overall assessment of all the factors relevant to the case (including, in particular, the similarity of the signs, the reputation of the earlier marks, and the respective consumer groups and market sectors), with a view to determining whether the marks may be associated in a way that may adversely affect the earlier trade marks.

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 3 809 498 ‘IBEX’ (word mark).

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 35: Services relating to the compilation of mathematical and statistical data and to the recording, transcribing, composing, compiling, transmission and systematisation of written and recorded communications; business and commercial information for commercial and industrial management assistance.

Class 36: Financial information services; information services on stock markets; information services on stock market indices; consultancy and appraisals relating to financial matters and stock markets; operation of computer databases providing on-line financial information; information about telecommunication; news agencies; rental of facsimile apparatus; rental of message sending apparatus; rental of modems; rental of telecommunication equipment; rental of telephones; wire service.

The contested services are the following:

Class 35: Commercial intermediation services namely organizing and operating an organized power market for buying and selling electricity with physical delivery (e.g. power exchange for electricity), including collecting, recording, systematizing, continuously updating and maintaining of data deriving from the physical trade with the commodity electrical energy.

Class 36: Finance services namely financial services exclusively related to the settlement and clearing of the transactions occurred as a result of trading with electricity on the organized market for electricity with physical delivery (e.g. power exchange for electricity), including quotation of market transaction prices, clearing prices, averages of prices and volumes, as well as determining, calculating, administering and publishing of price indexes based on the concluded on the market place trades.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services. The term ‘including’ used in the EUTM proprietor’s list of services indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’ see reference in 09/04/2003, T 224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the EUTM proprietor’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a result, the contested services are, essentially, organisational and operational services for buying and selling electricity with physical delivery in the organised power market, in Class 35, and financial services exclusively related to the settlement and clearance of the transactions that result from trading with electricity on the organised market for electricity with physical delivery (e.g. power exchange for electricity), in Class 36.

Contrary to the EUTM proprietor’s argument, the partial surrender and limitation of the contested services to a specific field of industry, such as the electricity market, is not enough to render the services dissimilar if they remain included in the broader categories of the services covered by the earlier trade mark.

Contested services in Class 35

The contested organizing and operating an organized power market for buying and selling electricity with physical delivery (e.g. power exchange for electricity), including collecting, recording, systematizing, continuously updating and maintaining of data deriving from the physical trade with the commodity electrical energy are business services in the specific field of electricity. They are similar to the applicant’s business and commercial information for commercial and industrial management assistance, as they have the same nature (business services), they can have the same origin and be complementary.

Contested services in Class 36

The contested financial services exclusively related to the settlement and clearing of the transactions occurred as a result of trading with electricity on the organized market for electricity with physical delivery (e.g. power exchange for electricity) including quotation of market transaction prices, clearing prices, averages of prices and volumes, as well as determining, calculating, administering and publishing of price indexes based on the concluded on the market place trades are similar to the applicant’s information services on stock markets, as they have the same nature (financial services related to markets), target the same consumers (investors) and may be provided by the same undertakings specialising in financial affairs.

b) Relevant public – degree of attention

The average consumer of the category of the services 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 services in question.

In the present case, the services found to be similar are directed at business and finance professionals.

Since the relevant services in Classes 35 and 36 are specialised services that may have important business and financial consequences for their users, consumers’ level of attention would be higher than average 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

IBEX
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).

The earlier mark comprises the single verbal element ‘IBEX’. The applicant mentions that the earlier sign is included in the expression ‘IBEX 35’, which is known as the name of the Spanish benchmark stock market index.

In this respect, from the content of the evidence on file it appears that indeed ‘IBEX 35’ is the benchmark stock market index of the Bolsa de Madrid, which is operated by the applicant itself. However, the fact that the public may be aware that the sign ‘IBEX’ is used in relation to a benchmark stock market index, it would be as a consequence of the use of the sign in the relevant market that is not a factor to take into account in the context of the comparison of signs. In fact, the examination of the similarity of the signs consists of a visual, phonetic and conceptual comparison based on their overall impression, having regard to their intrinsic qualities, on the memory of the relevant public (11/06/2020, C 115/19 P, CCB (fig.) / CB (fig.) et al., EU:T:2020:469, § 56). In this sense, intrinsically the term ‘IBEX’ has per se no meaning that can be linked to the relevant services in Classes 35 and 36 and, therefore it is considered to be distinctive to an average degree (see, for analogy, 10/05/2007, T 47/06, Nasdaq, EU:T:2007:131, § 58).

For the sake of completeness, it is noted the only dictionary definition that can be found for ‘IBEX’ comes from the English vocabulary according to which ‘ibex’ is an English term referring to a kind of wild goat (Oxford English Dictionaries). Nevertheless, such meaning is so far apart from the relevant services that the Cancellation Division is of the opinion that the professional pubic of the financial field will hardly think of a wild goat when dealing with the services at stake. In any event, even considering such meaning, the term ‘IBEX’ would still be inherently distinctive.

The contested sign comprises several verbal elements, ‘IBEX’ in a clearly dominant position and size, depicted over the red and pink overlapping circles, and the words INDEPENDENT BULGARIAN ENERGY EXCHANGE in bold characters and below YOUR MOST RELIABLE PARTNER all depicted in fairly standard typeface. A vertical line separate IBEX’ form the rest of the verbal elements. The letters ‘IB’ of the ‘IBEX’ are depicted over the red and pink overlapping circles and are written in white characters whereas the letters ‘EX’ of the same element are depicted in black. The figurative elements in the background are merely decorative. Therefore, the verbal elements are more distinctive than the figurative elements.

The expressions INDEPENDENT BULGARIAN ENERGY EXCHANGE and in YOUR MOST RELIABLE PARTNER are considered basic English terms easily understandable by the relevant public composed of business and finance professionals. It is not likely that IBEX as the name of wild goat would come into mind.

As regards the figurative elements of the contested sign, it must be 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; 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011 5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The EUTM proprietor argues that ‘IBEX’ would be understood as the acronym of the Independent Bulgarian Energy Exchange as in it is displayed in the mark together with IBEX. The Cancellation division considers on the contrary that element ‘IBEX’ must be considered inherently distinctive for the relevant public as an acronym as at least a significant part of the relevant public will not immediately perceive it as an abbreviation of the descriptive word combination in relation to the relevant services, but rather as a distinctive element that will make the sign as a whole more than the sum of its individual parts. The remaining verbal elements lack any distinctive character as it consists of a laudatory slogan YOUR MOST RELIABLE PARTNER in relation to business and financial services for which English is widely understood. In addition, they are much smaller that the common element IBEX clearly in a dominant size and position.

Therefore, since it is not likely that IBEX would come into mind as the name of wild goat, the common element is meaningless at least for part of the relevant public that do not associate it with Independent Bulgarian Energy Exchange in the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the identical beginnings in these signs will have an impact on the assessment of likelihood of confusion.

Visually and aurally, the earlier word sign ‘IBEX’ is reproduced in the contested sign in fairly standard typeface, in first position, on the left hand side of the sign as the clear dominant element. The contested sign’s additional elements, and its graphical depiction (circles, colours and general structure) create some visual and aural differences. However, since this differences lie in non-dominant/non-distinctive elements, therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The common element ‘IBEX’ would be perceived as a meaningless term at least by part of the public in the contested mark. The contested mark will also be perceived as including INDEPENDENT BULGARIAN ENERGY EXCHANGE and YOUR MOST RELIABLE PARTNER by all the relevant specialised public and at least part of the public will not relate IBEX to the first expression and will see it as meaningless as in the earlier sign. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection for services in Class 36. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 has no meaning the services at issue. Therefore, its inherent distinctiveness is average.

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).

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 services covered are from the same or economically linked undertakings.

It is frequent practice nowadays for companies to make variations of their trade marks, for example adding terms or elements to them, in order to denote new lines of services, or to re-create a classic version of a mark, or modernise it.

The services are similar and the earlier mark’s only verbal element is entirely contained in the contested sign, as an initial, distinctive (at least for part of the public), clearly dominant and independent element. Therefore, it is likely that consumers will perceive the contested sign as a sub-brand to denote a new line of the earlier mark, or a modernisation of the sign. This finding is not called into question by the fact that the relevant public displays a higher degree of attention in relation to purchases of the relevant services.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). The differences between the marks are in the contested sign’s graphic depiction and additional descriptive and non-dominant verbal elements. Its typeface is fairly standard and its figurative elements are of merely of a decorative nature. These differences cannot dispel the likelihood of confusion, including a likelihood of association. The differences between the marks cannot counterbalance the visual and aural average similarities between the signs.

Considering all the above, there is a likelihood of confusion. Therefore, the application is well founded on the basis of the applicant’s EUTM registration No 3 809 498. It follows that the contested trade mark must be declared invalid for all the contested services.

Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its reputation as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier EUTM registration No 3 809 498 leads to the success of the application and the cancellation of the contested trade mark for all the services against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(5) EUTMR in conjunction with Article 60(1)(a) EUTMR.

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 EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant 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 applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Cancellation Division

 

Carmen SÁNCHEZ PALOMARES		Jessica LEWIS		Frédérique SULPICE

 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.