OPPOSITION Nо B 3 074 910

 

V4 Financial Partners, S.A., C/José Ortega y Gasset, 25-1º, 28006 Madrid, Spain (opponent), represented by Abril Abogados, C/Amador de los Ríos, 1-1°, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

V4 Holding, A.S., Palárikova 76, 022 01 Čadca, Slovakia (applicant), represented by V4 Legal, S.R.O., Tvrdého 4, 010 01 Žilina, Slovakia (professional representative).

On 29/04/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 074 910 is partially upheld, namely for the following contested services: Class 35: Advertising; Business management; Business administration; Clerical services; Advertising services relating to real property. Class 36: Real estate financing.

  2. European Union trade mark application No 17 985 312 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

 

The opponent filed an opposition against all the services of European Union trade mark application No 17 985 312 . The opposition is based on, inter alia, Spanish trade mark registration No 3 645 619 ‘V4 FINANCIAL PARTNERS’. The opponent invoked Article 8(1)(b) EUTMR.

 

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 3 645 619.

a)  The services

 

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

Class 35: Advisory services for business management; Business appraisal; Business brokerage relating to putting potential private investors into contact with businesspersons needing funding; Business management consulting; Negotiation and conclusion of commercial transactions for third parties; Business consultancy (professional -); Acquisitions (Advice relating to -); Business acquisitions consultation; Advice relating to the sale of businesses; Advisory services for business management; Business merger consultation; Business appraisals and evaluations in business matters; Consultancy services regarding business strategies; Business strategic advisory services; Development of marketing strategies and concepts.

Class 36: Debt advisory services; Financial consulting; Financial analysis; Consultancy services relating to corporate finance; Financial investment advisory services; Financial advisory services; Financial appraisal services; Arranging the provision of finance; Business appraisals for financial valuation; Raising of financial capital; Financial investment advisory services; Consultancy relating to corporate finance and financial investments; Financing services for companies; Financial advice and consultancy services; Debt restructuring; Securities services relating to capital restructuring; Financial appraisals and valuations; Providing of information, consultancy and advice in the field of financial securities; Consultancy relating to financial strategy.

The contested services are the following:

 

Class 35: Advertising; Business management; Business administration; Clerical services; Advertising services relating to real property.

Class 36: Real estate consultancy; Real estate financing.

Class 41: Training.

 

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

  

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

 

Contested services in Class 35

The contested advertising and advertising services relating to real property include or overlap with the opponent’s development of marketing strategies and concepts. Therefore, these services are considered identical.

The contested services of business management include, as a broader category, the opponent’s business management consulting. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

With regard to the contested business administration services, the Opposition Division notes that the line between business management and business administration is blurred, and it is sometimes very difficult to clearly distinguish between them. They both fall under the broader category of business services. As a general rule, it can be said that business administration services are performed in order to organise and run a business, whereas business management follows a higher approach aimed at setting the common goals and the strategic plan for a commercial enterprise. The contested services can have the same purpose as the opponent’s business management consulting. Moreover, they are usually offered by the same providers and target the same end users. Therefore, these services are considered similar.

The contested clerical services on the one hand, are intended to provide active help with the internal day-to-day operations of other undertakings that contract such services, including the administration and support services in the ‘back office’. On the other hand, business management services, provided by consultants, involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning, and include assistance in efficient allocation of financial resources and improving productivity to help with the strategy of the commercial undertaking. These services can be offered by the same specialised suppliers and they are aimed at the same consumers, namely, professional business customers. They also contribute to the same purpose, namely, the proper running and success of an undertaking (13/12/2016, T-58/16, APAX, EU:T:2016:724, §§ 47 ff.). It follows that the contested clerical services are similar to a low degree to the opponent’s business management consulting.

Contested services in Class 36

The contested services of real estate financing overlap with the opponent’s financing services for companies. Therefore, these services are considered identical.

The contested real estate consultancy services, on the other hand, consist of the provision of information in relation to real estate property management and evaluation, and real estate agency services. This mainly comprises information with regard to finding a property, making it available for potential buyers and acting as an intermediary. Consumers clearly distinguish real estate agents’ services from those of financial institutions. They do not expect a bank to find housing or a real estate agent to manage their finances.

Financial and banking services do not have the same nature, the same intended purpose or the same method of use as real estate services. Whereas financial services are provided by financial institutions for the purposes of managing their clients’ funds and consist of, inter alia, the holding of deposited funds, the remittance of funds, the granting of loans or the performance of various financial operations, real estate services are services connected with a property, namely, in particular, the lease, the purchase, the sale or the management of such a property. Furthermore, as regards the fact that the services in question might be found in the same distribution channels, it is clear that real estate services are not, in principle, provided on the same premises as financial services (17/09/2015, T-323/14, Bankia / BANKY, EU:T:2015:642, § 34-38).

Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service. It must therefore be concluded that the contested services are dissimilar to the opponent’s services in this class, even if financial services are essential or important for the use of real estate. The consumers would not attribute responsibility for both services to the same company (11/07/2013, T-197/12, Metro, EU:T:2013:375, § 47-51).

The contested real estate consultancy is also dissimilar to the opponent’s services in Class 35, which cover marketing services as well as business management, acquisition, appraisals and evaluation services intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Consequently, they are of a different nature and have a different purpose from the contested services, and are offered by different providers through different distribution channels to different end users.

Contested services in Class 41

The contested training services generally serve to impart knowledge and skills needed for a particular job or activity. Unless further specified, they consist of instructing people in any given field, including mental as well as physical activities.

As such, they do not show any points of contact under the abovementioned criteria with any of the opponent’s services in Classes 35 or 36, which encompass marketing, business management, acquisition, appraisals and evaluation services, as well as financial services. Consequently, no similarity can be found between those services.

 

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, although some of the services found to be identical or similar (to various degrees) may be directed at the general public (such as real estate financing in Class 36), they are all also directed at business customers, who have specific professional knowledge or expertise.

The applicant argued that the knowledge of English of the Spanish-speaking public is generally held to be low. As some of the marks’ verbal elements form part of an advanced English vocabulary, the public might not understand these elements. Therefore, the Opposition Division will focus the comparison on the professional public, which is composed of businesspersons, who generally have a good command of English.

 

The degree of attention is considered to vary from average to high, as some of the relevant services, such as those in Class 36, are rather specialised services that may have important financial consequences for their users. Consequently, the 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

 

V4 FINANCIAL PARTNERS
Earlier trade mark	Contested sign

 

 

The relevant territory is Spain.

 

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 combination of elements ‘V4’ included in both signs has no meaning for the relevant public and is, therefore, distinctive.

 

The elements ‘FINANCIAL PARTNERS’ of the earlier mark will be understood as ‘allies who manage money, capital, or credit’ by the relevant public (https://www.collinsdictionary.com/dictionary/english/partner; https://www.collinsdictionary.com/dictionary/english/financial, all information retrieved on 19/04/2021). As these elements merely refer to the providers of the relevant services, they are non-distinctive.

 

The element ‘Group’ of the contested sign, in the present context, will be associated with ‘an association of companies under a single ownership and control, consisting of a holding company, subsidiary companies, and sometimes associated companies’ (https://www.collinsdictionary.com/dictionary/english/group). It is merely descriptive of the service provider’s form of business and is, therefore, non-distinctive. Similarly, the elements ‘LEGAL, TAX AND AUDIT ADVISORY GROUP’ in the contested sign identify the applicant’s fields of business, and are thus non-distinctive. Moreover, they are depicted in such small font that they are overshadowed by the remaining elements of the mark.

 

The rectangular devices framing the letter ‘V’ and the figure ‘4’ of the contested sign are of a rather decorative nature and of limited distinctiveness. They mainly serve to accentuate those verbal and numerical elements which are, consequently, the dominant elements of that 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 and top to bottom, which makes the part placed at the left or top of the sign (the initial part) the one that first catches the attention of the reader.

  

Visually, the signs coincide in ‘V4’. They differ in their remaining components, ‘FINANCIAL PARTNERS’ of the earlier mark and ‘Group’, ‘LEGAL, TAX AND AUDIT ADVISORY GROUP’ and the figurative elements of the contested sign.

 

Considering what has been stated above with regard to the distinctiveness of the signs’ individual elements, and taking into account that the coinciding elements are included at the beginning of both marks and constitute the dominant element of the contested sign, it is concluded that the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the phonemes ‛V4’, present identically in both signs. The pronunciation differs in the phonemes ‛FINANCIAL PARTNERS’ of the earlier sign and ‘Group’ and ‘LEGAL, TAX AND AUDIT ADVISORY GROUP’ of the contested mark, insofar as these elements are pronounced, considering, in particular, the size and position of the elements ‘LEGAL, TAX AND AUDIT ADVISORY GROUP’.

 

Taking account of the fact that the differing elements are, in any case, non-distinctive, the signs are aurally highly similar.

Conceptually, the signs coincide in a meaningless combination, whereas all the meaningful elements differ. Therefore, the signs are conceptually not 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.

 

The opponent 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 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 non-distinctive elements in the mark, as stated above in section c) of this decision.

e)  Global assessment, other arguments and conclusion

 

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The distinctiveness of the earlier mark is considered normal. The coinciding elements will be given more weight by consumers than the other elements of the marks. This results in the signs being visually and aurally highly similar. Moreover, they do not convey a meaning which could help consumers to safely distinguish between them, as all their meaningful elements are descriptive and, therefore, non-distinctive.

Indeed, it is highly conceivable that the relevant consumers will perceive the marks as variations of the same sign, merely referring to slightly different product ranges, but indicating the same commercial origin (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, consumers may be mistaken about the origin of the services found to be identical or similar, notwithstanding the fact that the degree of attention may be rather high.

 

Considering all the above, there is a likelihood of confusion on the part of the professional public. Given that a likelihood of confusion for only part of the relevant public is sufficient to (partly) reject the contested application, there is no need to analyse the remaining part of the public.

 

Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 645 619. It follows that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark, including those found similar to a low degree only as following the interdependence principle established above, the high similarity between the signs offsets the low degree of similarity between the services

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

The opponent has also based its opposition on the following earlier trade marks:

 EUTM No 16 221 285 covering services in Classes 35 and 36.

 EUTM No 16 221 293  covering services in Classes 35 and 36.

Owing to their extensive graphical stylisation, these other earlier rights invoked by the opponent are less similar to the contested mark than the earlier Spanish mark assessed above. Moreover, they cover the same scope of services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

COSTS

 

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

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

 

 

 

The Opposition Division

 

Carmen SÁNCHEZ PALOMARES

Natascha GALPERIN

María Belén IBARRA DE DIEGO

 

 

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.