OPPOSITION No B 3 078 555

Aragon Industrieelektronik GmbH, Dieselstraße 1, 70736 Fellbach, Germany (opponent), represented by Stumpf Patentanwälte PartGmbB, Alte Weinsteige 73, 70597 Stuttgart, Germany (professional representative)

a g a i n s t

Aragon Global Holdings LLC, 40 E. Chicago Avenue, Suite 134, 60614 Chicago, United States of America (applicant), represented by CMS Francis Lefebvre Avocats, 2 rue Ancelle, 92522 Neuilly-sur-Seine cedex, France (professional representative).

On 22/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 555 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 17 993 516 for the figurative mark , namely against all the services in Class 36. The opposition is based on European Union trade mark registration No 16 392 094 for the figurative mark . 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.

a) The goods and services

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

Class 7: Industrial robots, and parts therefor; Motors and engines, drives and general machine parts; Driving devices for machines; Electric motors, generators and transformers, electric frequency converters and electric drives therefor; Electronic controllers for operating machines, motors and engines.

Class  9: Scientific, surveying, photographic, optical, weighing, measuring, signalling and checking apparatus and instruments; Robotic electrical control apparatus; Sensors and detectors; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Electric regulating apparatus; Programmable controllers; Integrated circuit modules; Data processing equipment, computers; Computer components and parts; Computer software being exclusively in relation to industrial electronics and industrial robots; Light emitting diode displays.

Class 37: Installation, maintenance and repair of electric apparatus, electronic installations, robots, motors and engines, and electric drive units.

Class  42: Development, programming and implementation of software; Maintenance and updating of computer software; Product development; Engineering services; Engineering project management services; Product testing; Product quality testing; Product safety testing; Industrial and technical design, all of the aforesaid services being exclusively in relation to industrial electronics and industrial robots.

The contested services are the following:

Class 36: Technical studies, forecasting and analysis of financial investments; Consultancy and support for the definition of financial investment strategies; financial investment portfolio management.

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. Other factors may also be taken into account such as, for example, the distribution channels of the goods and services concerned.

The reference point is whether the relevant public will perceive the goods or services concerned as having a common commercial origin and whether consumers consider it normal that the goods or services are marketed under the same trade mark, which normally implies that a large number of producers or providers are the same.

The contested services in Class 36 include a variety of services relating to financial investment, they are normally provided by specific companies and professionals in the finance industry, such as investment banks, brokers, investment intermediaries, etc.

In its observations the opponent claims that part of the opposing goods in Class 9 and part of the opposing services in Class 42 are similar to the contested services.

In particular, the opponent submits that “financial services in Class 36 are considered as similar with data storage equipment in Class 9, because they might have the same purpose” and “might coincide in the producers, the relevant public and the distribution channels”. The opponent provides an undated printout from the “Similarity database” of EUIPO in German language and claims that “the prior trademark is registered for data processing equipment, computers in Class 9 which might be identical with data storage equipment”.

While it is true that according to the current practice as reflected in the Guidelines for examination in the Office, Part C, Opposition, Section 2, Chapter 2, Comparison of goods and services, financial services are considered to be similar to credit cards (the latter falling in the category of devices for data storage), the applicant is correct in noting that such goods are not included in the specification of the earlier mark. The Opposition Division concurs with the applicant that the conclusion for similarity between credit cards (or the broader category of data storage equipment) and financial services cannot be automatically applied to the opponent’s data processing equipment goods in Class 9 and services relating to financial investment in Class 36, which are clearly dissimilar for the reasons explained below.

The opponent also claims that the contested services are “closely related with computer hardware and software, because the advisors might have recourse to appropriate information systems, like those offered by the opponent”. Admittedly, nowadays the financial services sector has become increasingly digitalised and data driven. Nonetheless, in today’s high-tech society, this finding holds true for the vast majority of electronic or digital goods and for a wide range of services of a different nature, purpose, in a different sphere, etc. This is not, however, sufficient to justify the conclusion that the opponent’s Class 9 goods computers, computer software, the latter being exclusively in relation to industrial electronics and industrial robots, are similar to the contested services in the field of financial investment.

Therefore, all the above referenced Class 9 goods and the contested Class 36 services are dissimilar. They have different purpose, producers, relevant public and distribution channels.

The opponent also submits that some of the opposing services in Class 42, namely, engineering services, engineering project management services and development, programming and implementation of software, maintenance and updating of computer software, are similar to the contested services in Class 36. In particular, the opponent argues that there is a “close link between technical engineering services and financial services”, that they “might be offered by the same companies and directed at the same consumers” and that “development, programming and implementation of software; maintenance and updating of computer software might be rendered by the same professionals in the financial field”. In support of its arguments for a similarity of the contested services with the above cited opponent´s services in Class 42, the opponent submits an excerpt of an article referring to the term “Financial Engineering” which states that “Bringing technical tools, mathematical practices and engineering methods into the realm of finance is called financial engineering”, an excerpt of an article referring to the importance of programming skills for finance professionals as the industry becomes more automated and technology driven and a printout of an article entitled “Digital Engineering: Top three Imperatives for Banks and Financial Services Companies” which states that “Banks and financial services companies are morphing in material ways into technology companies. These companies are investing heavily in software development to improve service delivery, back-office operations and decision-making and to personalize and modernize the experience they deliver to customers”.

The Opposition Division cannot agree with these arguments of the opponent. The providers of the contested services in Class 36 do not normally engage in the development, programming and implementation of highly specialised software nor in engineering services. Instead, if needed, they outsource these activities to IT companies or other specialists.

The cited services in Class 42 and the contested services in Class 36 are provided by different companies or professionals with expertise in different areas, target different users and satisfy different needs, which rules out a complementary relationship. Services (or goods) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other so that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). However, this is clearly not the case for the contested services and the above cited opposing services. Consequently, the contested services in Class 36 are dissimilar to the cited opponent’s services in Class 42.

Finally, the opponent did not provide any arguments and/or evidence concerning the similarity between the contested services in Class 36 and the remaining opposing goods and services in Classes 7, 9, 37 and 42. Those goods and services have different natures and purposes and are neither complementary, nor in competition. Furthermore, they are normally offered through different distribution channels, target different publics and originate from different undertakings. Therefore, they are also dissimilar.

b) Conclusions

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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, 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

Denitza STOYANOVA-VALCHANOVA

María Helena GRANADO CARPENTER

Martin EBERL

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.