OPPOSITION No B 3 079 824

Global Dominion Access, S.A., Ibañez de Bilbao nº 28, 8º, 48009 Bilbao, Spain (opponent), 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

Dominium Exchange Limited, 98 New Bond Street, London W1S 1SN, United Kingdom (applicant), represented by Metida, Business Center Vertas Gyneju str. 16, 01109 Vilnius, Lithuania (professional representative).

On 24/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 079 824 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 017 900 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 017 900 for the figurative mark . The opposition is based on European Union trade mark registration No 16 371 866 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, inter alia, the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 42: Scientific and technological services and research and design relating thereto; industry analysis and research services; design and development of computer hardware and software; engineering services; natural science services; IT services; software development, programming and implementation; computer hardware development; hosting services and software as a service and rental of software; rental of computer hardware and facilities; IT consultancy, advisory and information services; IT security, protection and restoration; data duplication and conversion services, data coding services; medical and pharmacological research services; surveying and exploration; architectural and urban planning services; testing, authentication and quality control; design services; design and development of systems for generating renewable energy, compilation of information relating to meteorology.

Following the applicant’s limitation of 04/09/2020, in the sequence of which the opposition was maintained, the contested goods and services are the following:

Class 9: Software for trading financial securities; software for financial services, namely, brokerage and trading services for securities, stocks, bonds, capital investments, commodities and equities; software for financial investment brokerage services; software for providing financial information in the field of finance, securities trading, investments, securities brokerage; software for electronic financial trading services; software for providing electronic financial trading services for others via a global computer network; software for financial services, namely, brokerage and trading services for real estate-backed securities; software platform for trading real estate securities; software for providing a real estate trading marketplace; blockchain and distributed ledger technology software for providing a real estate trading marketplace; software for providing real estate and land investment services; software for real estate and land acquisition; real estate management software; software for providing real estate trading services; software for providing real estate trading services for others via a global computer network; blockchain and distributed ledger technology software for providing real estate trading services for others via a global computer network.

Class 42: Software as a service for trading financial securities; software as a service for providing financial services, namely, brokerage and trading services for securities, stocks, bonds, capital investments, commodities and equities; software as a service for providing financial investment brokerage services; software as a service for providing financial information in the field of finance, securities trading, investments, securities brokerage; software as a service for electronic financial trading services; software as a service for providing electronic financial trading services for others via a global computer network; software as a service for financial services, namely, brokerage and trading services for real estate-backed securities; platform as a service for trading real estate securities; software as a service for providing a real estate trading marketplace; blockchain and distributed ledger technology software as a service for providing a real estate trading marketplace; software as a service for providing real estate and land investment services; software as a service for real estate and land acquisition; real estate management software as a service; software as a service for providing real estate trading services; software as a service for providing real estate trading services for others via a global computer network; blockchain and distributed ledger technology software as a service for providing real estate trading services for others via a global computer network.

An interpretation of the wording of the list of the contested goods and services is required to determine the scope of protection of these goods and services.

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

Contested goods in Class 9

The contested software for trading financial securities; software for financial services, namely, brokerage and trading services for securities, stocks, bonds, capital investments, commodities and equities; software for financial investment brokerage services; software for providing financial information in the field of finance, securities trading, investments, securities brokerage; software for electronic financial trading services; software for providing electronic financial trading services for others via a global computer network; software for financial services, namely, brokerage and trading services for real estate-backed securities; software platform for trading real estate securities; software for providing a real estate trading marketplace; blockchain and distributed ledger technology software for providing a real estate trading marketplace; software for providing real estate and land investment services; software for real estate and land acquisition; real estate management software; software for providing real estate trading services; software for providing real estate trading services for others via a global computer network; blockchain and distributed ledger technology software for providing real estate trading services for others via a global computer network are included in, or in any case cannot be clearly separated from, the broad category of the opponent’s computer software. Therefore, they are identical.

Contested services in Class 42

The contested software as a service for trading financial securities; software as a service for providing financial services, namely, brokerage and trading services for securities, stocks, bonds, capital investments, commodities and equities; software as a service for providing financial investment brokerage services; software as a service for providing financial information in the field of finance, securities trading, investments, securities brokerage; software as a service for electronic financial trading services; software as a service for providing electronic financial trading services for others via a global computer network; software as a service for financial services, namely, brokerage and trading services for real estate-backed securities; software as a service for providing a real estate trading marketplace; blockchain and distributed ledger technology software as a service for providing a real estate trading marketplace; software as a service for providing real estate and land investment services; software as a service for real estate and land acquisition; real estate management software as a service; software as a service for providing real estate trading services; software as a service for providing real estate trading services for others via a global computer network; blockchain and distributed ledger technology software as a service for providing real estate trading services for others via a global computer network consist of the provision of software as a service in different forms and with different specific contents. Software as a service is a software licensing and delivery model in which software is licensed on a subscription basis and is centrally hosted. Therefore, the contested services are included in, or in any case cannot be clearly separated from, the broad category of the opponent’s hosting services and software as a service. Therefore, they are identical.

The contested platform as a service for trading real estate securities may include platforms which consist of, provide or contain software as a service, such as software platforms for trading real estate securities. Therefore, these services overlap with the opponent’s hosting services and software as a service. As these broad categories of services cannot be clearly separated, they are considered identical.

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.

Software tools and solutions for trading a variety of assets (financial trading, trading in stocks, bonds, real estate, managing investments, brokerage, securities, etc.) are no longer available solely to professionals from the financial and real estate sector. Nowadays, such specialised software tools and solutions (including in the form of software as a service) are also available to the general public. Therefore, in the present case, the goods and services found to be identical are directed at both the public at large and business customers with specific professional knowledge or expertise.

The degree of attention will vary from higher than average to high, due to the potential serious consequences of the use the relevant goods and services as regards the consumers’ financial situation.

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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements ‘DOMINION’ and ‘DOMINIUM’ allude to the same semantic content, from the perspective of the Portuguese- and Spanish-speaking public in the European Union. Therefore, as this finding influences the conceptual comparison of the signs and increases the similarity between them, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese- and Spanish-speaking part of the public in the EU.

Both signs are figurative marks. The earlier mark is depicted in dark blue and consists of the verbal element ‘DOMINION’ and an abstract ornamental shape above it (composed of a curved line and a square). The contested sign is depicted in black and consists of the verbal element ‘DOMINIUM’ and an abstract ornamental shape portrayed to its left (composed of several curved black lines). Due to the shape of the two figurative elements (rounded to the right and with a straight left side), they are likely to be perceived as fanciful representations of the initial letters (‘D’) of the two elements in question, ‘DOMINION’ and ‘DOMINIUM’. Therefore, despite displaying some level of fancifulness, these figurative elements will be perceived by the consumers essentially as an ornamental element in the signs, i.e., as graphic stylisation resources, meant to embellish the commercial signs under analysis. Indeed, it is a common market practice for brands to include a fashionable and stylised depiction of their initial letter, accompanying the respective trade mark and, thus, embellishing the sign and drawing the attention of consumers to the brand at issue. Therefore, these figurative elements will have less impact on the public as indicators of commercial origin than the verbal elements ‘DOMINION’ and ‘DOMINIUM’. In other words, the verbal elements ‘DOMINION’ and ‘DOMINIUM’ will be the ones to which consumers will refer to, in order to designate the relevant goods and services, and, consequently, will be the elements to which they will attribute more trade mark significance.

As regards the minimal stylisation of the typeface used to depict ‘DOMINION’ and ‘DOMINIUM’ in the signs, it is considered that it is inherently non-distinctive, as it consists of the use of a rather standard and banal upper case lettering.

The signs have no element that could be considered clearly more dominant than other elements.

Both ‘DOMINION’ and ‘DOMINIUM’ are meaningless, as such, for the relevant public taken into consideration. Nonetheless, due to their proximity to, respectively, the Portuguese word ‘domínio’ and the Spanish word ‘dominio’, they will both be associated with this term, which means essentially ‘authority, control, power and/or a territory controlled by a ruler’. As this semantic content does not describe any essential characteristic of the relevant goods and services, both ‘DOMINION’ and ‘DOMINIUM’ are considered normally distinctive. It is true that both signs allude to ‘control’, which may be perceived as suggesting that some of the software or IT services at issue concern tools and solutions which may be used to somehow ‘control or direct’ others. Nonetheless, this is done in a rather vague way, through the use of terms which convey the impression of being old Latin words and which, in any case, are very unusual, exaggerated and are not commonly used to refer to the technical characteristics of the relevant goods and services. It follows that the referred allusion does not affect the inherent distinctive capacity of these terms, in relation to the goods and services in question.

Visually and aurally, the signs coincide in six out of the eight letters (and in the sound of their pronunciation), respectively, that compose their main verbal elements: ‘DOMINION’ and ‘DOMINIUM’; these coinciding letters occupy the same position in the signs: the initial six letters, which also correspond to their initial three syllables (do-mi-ni).

They differ in their final two letters, ‘-ON’ versus ‘-UM’, respectively, which correspond to their final syllables. They also differ (only visually) in their figurative elements, consisting of the stylised depictions of their initial letter ‘D’. The Opposition Division notes that due to their ornamental role, these letters ‘D’ are not likely to be pronounced by the public. Nonetheless, if they are, they would only reinforce the aural similarity of the marks, which would be referred as ‘D DOMINION’ and ‘D DOMINIUM’ respectively.

Furthermore, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the figurative component and overall stylisation of the signs will be perceived by the public as an essentially ornamental feature. Consequently, as explained above, the verbal elements ‘DOMINION’ and ‘DOMINIUM’ will attract the public’s attention to a greater extent, as an indicator of the commercial origin of the relevant goods and services.

It follows that the coincidence in their initial letters ‘DOMINI-’ will have a considerable impact for the public, also bearing in mind that consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Moreover, the signs have an identical length (eight letters), and they coincide in the majority of those letters, displayed in identical positions; their most relevant difference occurs in two letters in their least conspicuous, final parts, where it may go unnoticed by consumers. Aurally, they have a highly similar structure and rhythm, resulting from their syllabic division and from their highly similar vowel sequences (‘O-I-I-O’ vs ‘O-I-I-U’).

Therefore, bearing all the above in mind, the marks are considered visually similar to a higher than average degree and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs allude to the same concept (‘authority, control, power and/or a territory controlled by a ruler’) and this is their sole semantic content. It follows that the signs are conceptually identical.

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 goods and 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.

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 (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods and services are identical to the goods and services covered by earlier European Union trade mark registration No 16 371 866. The earlier mark has an average degree of inherent distinctive character.

The signs under comparison are visually similar to a higher than average degree and aurally similar to a high degree, on account of the coinciding initial letters in their distinctive verbal elements: ‘DO-MI-NI-’. As previously explained, the coincidence in these letters/sounds is a relevant one, because the signs have an identical length and, phonetically, a highly similar structure and rhythm. Their differing letters appear in their final sections, where they are more likely to go unnoticed by consumers.

In this regard, although the signs differ in their last two letters, account must be 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). Even consumers who pay a high degree of attention, like in the present case, need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

The signs also differ in their figurative components. However, as mentioned above, where a trade mark is composed of verbal and figurative elements, the verbal elements usually have a stronger impact on the consumer than the figurative component. Therefore, the referred figurative components (consisting of the banal script of the verbal elements ‘DOMINION’ and ‘DOMINIUM’ and the stylised depiction of a letter ‘D’) will be perceived as standard graphic means of making the brands ‘DOMINION’ and ‘DOMINIUM’ visually more appealing. Therefore, the relevant public will not pay significant attention to the figurative features of the marks and will focus more on the referred verbal elements, as the main badge of origin of the goods and services at issue.

Furthermore, since both marks will be associated with the same semantic content (that of the Portuguese and Spanish word ‘domínio/dominio’, respectively), they are conceptually identical.

Considering all the above and even bearing in mind the high attentiveness of the relevant public, it is concluded that there is a likelihood of confusion on the part of the Portuguese- and Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 371 866. It follows that the contested trade mark must be rejected for all the contested 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

Liliya YORDANOVA

Gueorgui IVANOV

Jiří JIRSA

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.