OPPOSITION Nо B 3 080 411

 

Binance Holdings Limited, Sertus Chambers, Governors Square, Suite # 5-204, 23 Lime Tree Bay Avenue, P.O. Box 2547, 1-1104 Grand Cayman, Cayman Islands (opponent), represented by Metida Law Firm Zaboliene And Partners, Business center Vertas, Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative)

a g a i n s t

UAB New Entertainment Technology, Gurių Sodų 17-oji G. 45,, 11316 Vilnius, Lithuania (applicant), represented by Soula Iacovidou & Associates LLC, Makariou Iii Avenue & Vironos, "p. Lordos Center" Block B. 2nd Floor, Office203, 3105 Limassol, Cyprus (professional representative).

On 01/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 080 411 is upheld for all the contested goods and services, namely

 

Class 9: Computer software for analysing market information; computer software programs for database management; software for facilitating secure credit card transactions; computer e-commerce software; magnetically encoded credit cards; magnetically encoded debit cards; terminals for electronically processing credit card payments. Class 35: Administrative data processing; business consulting services in the field of blockchain; advisory services relating to electronic data processing; arranging of trading transactions and commercial contracts; business advice and analysis of blockchain market; computerized on-line ordering services; electronic order processing; market analysis and research; providing business information via a website; providing business information in the field of blockchain rental of advertising space; advertising by mail order; rental of advertising time on communication media; production of advertising films; auctioneering; advertisement and publicity services by television, radio, mail; advertising; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; layout services for advertising purposes; on-line advertising on a computer network; pay per click advertising; radio advertising; television advertising; updating of advertising material; web indexing for commercial or advertising purposes; dissemination of advertising material; direct mail advertising; design of advertising materials; consultancy regarding advertising communications strategy; compiling indexes of information for commercial or advertising purposes. Class 36: Electronic cash transactions; electronic money transfer services; electronic credit card transactions; advisory services relating to financial investments; brokerage of currency; brokerage services; brokerage services relating to financial instruments; brokerage services relating to the securities markets; currency exchange and advice; currency trading and exchange services; financial advisory and consultancy services; financial analysis and research services; financial information for investors; financial information in the nature of rates of exchange; foreign currency exchange; foreign exchange transaction; provision of financial services by means of a global computer network or the internet; provision of information relating to rates of exchange; provision of stock market information; provision of stock exchange quotations.

 

2.	European Union trade mark application No 18 014 624 is rejected for all the contested goods and services. It may proceed for the remaining services.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 17/04/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 014 624, ‘SAFU’ (word mark), namely against all the goods and services in Classes 9, 35, 36. The opposition is based on European Union trade mark No 18 012 675, ‘SAFU’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

 

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

The opponent invoked Article 8(1)(b) EUTMR, which covers situations where there may be a likelihood of confusion due to similarity between the signs and the goods/services, or identity of only one of these two factors. However, Article 8(1)(a) EUTMR covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services.

The specific conditions under these provisions are interconnected. Therefore, an opposition based only on Article 8(1)(b) EUTMR that meets the requirements of Article 8(1)(a) EUTMR will be dealt with under the latter provision, without any examination under Article 8(1)(b) EUTMR.

 

a) The goods and services

 

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

Class 9: Computer software; computer hardware; computer firmware; computer e-commerce software; software for processing electronic payments to and from others; authentication software; downloadable software applications; computer software packages; computer software for database management; financial management software; computers; computer apparatus; telecommunication devices and apparatus; data processing apparatus and instruments; apparatus for recording sound; apparatus for recording images; apparatus for transmission of images; apparatus for transmission of sound; apparatus for reproduction of sound; apparatus for reproduction of images; cd roms; dvds; monitors; data terminals; data storage apparatus; credit cards; magnetically encoded debit cards; cash cards [magnetic]; cash cards [encoded]; electronic identification cards; electronic chip cards; smart cards; cash dispensers; electronic publications; downloadable software applications for mobile phones; facial recognition apparatus; electronic currency converters; security tokens (encryption devices); chronographs (time recording apparatus).

Class 35: Business management and administration; administration of consumer loyalty programs; business consultancy services; business data analysis; data processing; auctioneering; book-keeping; accounting; financial auditing; business information; business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding; business management and organisation consultancy; business research; commercial information and advice for consumers in the choice of products and services; competitive intelligence services; drawing up of statements of accounts; market intelligence services; collection of information relating to market research; negotiation and conclusion of commercial transactions for third parties; opinion polling; advertising and marketing services; organisation of exhibitions for commercial or advertising purposes; organisation of trade fairs for commercial or advertising purposes; providing business information via a web site; provision of an online marketplace for buyers and sellers of goods and services; retail purposes (presentation of goods on communication media, for -); public relations; tax preparation; publicity; commercial administration of the licensing of the goods and services of others.

Class 36: Financial services; banking; brokerage; brokerage of currency; buying and selling currency; exchange brokerage; capital investments; financial investments; fund investments; financial clearing; financial clearing houses; deposits of valuables; electronic funds transfer; exchanging money; financial analysis; financial consultancy; financial advisory services; financial information; financing services; issuance of tokens of value; online banking; conducting of financial transactions; processing of credit card payments; processing of debit card payments; providing financial information via a web site; providing rebates at participating establishments of others through use of a membership card; safe deposit services; securities brokerage; stock brokerage services; stock exchange quotations; loans [financing]; monitoring of pension funds; monitoring of investment funds; investment research; economic financial research services; business appraisals for financial valuation; virtual currency exchange; virtual currency services; currency trading and exchange services; trading of securities options; financial services in relation to digital currencies; on-line real-time currency trading.

The contested goods and services are the following:

 

Class 9: Computer software for analysing market information; computer software programs for database management; software for facilitating secure credit card transactions; computer e-commerce software; magnetically encoded credit cards; magnetically encoded debit cards; terminals for electronically processing credit card payments.

Class 35: Administrative data processing; business consulting services in the field of blockchain; advisory services relating to electronic data processing; arranging of trading transactions and commercial contracts; business advice and analysis of blockchain market; computerized on-line ordering services; electronic order processing; market analysis and research; providing business information via a website; providing business information in the field of blockchain rental of advertising space; advertising by mail order; rental of advertising time on communication media; production of advertising films; auctioneering; advertisement and publicity services by television, radio, mail; advertising; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; layout services for advertising purposes; on-line advertising on a computer network; pay per click advertising; radio advertising; television advertising; updating of advertising material; web indexing for commercial or advertising purposes; dissemination of advertising material; direct mail advertising; design of advertising materials; consultancy regarding advertising communications strategy; compiling indexes of information for commercial or advertising purposes.

Class 36: Electronic cash transactions; electronic money transfer services; electronic credit card transactions; advisory services relating to financial investments; brokerage of currency; brokerage services; brokerage services relating to financial instruments; brokerage services relating to the securities markets; currency exchange and advice; currency trading and exchange services; financial advisory and consultancy services; financial analysis and research services; financial information for investors; financial information in the nature of rates of exchange; foreign currency exchange; foreign exchange transaction; provision of financial services by means of a global computer network or the internet; provision of information relating to rates of exchange; provision of stock market information; provision of stock exchange quotations.

Contested goods in Class 9

 

Computer e-commerce software; computer software programs for database management; magnetically encoded debit cards; magnetically encoded credit cards are identically contained in both lists of goods (including synonyms).

The contested computer software for analysing market information; software for facilitating secure credit card transactions are included in the broad category of the opponent’s computer software. Therefore, they are identical.

 

The contested terminals for electronically processing credit card payments are included in the broad category of, or overlap with, the opponent’s data processing apparatus and instruments. Therefore, they are identical.

Contested services in class 35

Auctioneering; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes;; are identically contained in both lists of services (including synonyms).

The contested advisory services relating to electronic data processing; business consulting services in the field of blockchain are included in the broad category of, or overlap with, the opponent’s business management and administration. Therefore, they are identical.

The contested arranging of trading transactions and commercial contracts; computerized on-line ordering services; electronic order processing; administrative data processing are included in the respective broad categories of, or overlap with, the opponent’s respective negotiation and conclusion of commercial transactions for third parties and data processing. Therefore, they are identical.

The contested market analysis and research; business advice and analysis of blockchain market; compiling indexes of information for commercial or advertising purposes; providing business information via a website; providing business information in the field of blockchain; overlaps with the opponent’s collection of information relating to market research; business information. Therefore, they are identical.

The contested advertisement and publicity services by television, radio, mail; advertising; production of advertising films; rental of advertising space; advertising by mail order; rental of advertising time on communication media; on-line advertising on a computer network; pay per click advertising; layout services for advertising purposes; consultancy regarding advertising communications strategy; radio advertising; television advertising; updating of advertising material; web indexing for commercial or advertising purposes; dissemination of advertising material; direct mail advertising; design of advertising materials; are included in the broad categories of, or overlap with, the opponent’s advertising and marketing services; business research. Therefore, they are identical.

Contested services in class 36

Brokerage of currency; currency trading and exchange services; electronic money transfer services; brokerage services; currency exchange; financial advisory and consultancy services; are identically contained in both lists of services (including synonyms).

The contested electronic cash transactions; electronic credit card transactions; advisory services relating to financial investments; brokerage services relating to financial instruments; brokerage services relating to the securities markets; currency advice financial analysis and research services; financial information for investors; financial information in the nature of rates of exchange; foreign currency exchange; foreign exchange transaction; provision of financial services by means of a global computer network or the internet; provision of information relating to rates of exchange; provision of stock market information; provision of stock exchange quotations are identical to the opponent’s financial services either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

c) The signs

 

SAFU	SAFU
Earlier trade mark	Contested sign

 

 

The signs are identical.

 

 

e) Global assessment, other arguments and conclusion

 

The signs were found to be identical and all of the contested goods and services, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these 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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Martina GALLE

Erkki MÜNTER

Gonzalo BILBAO TEJADA

 

 

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.