OPPOSITION No B 3 086 776

Peter Kleingarn, 157, rue Helenter, 6987 Rameldange, Luxembourg, and Harald Strelen, 6, rue du Château, Berg, Luxembourg (opponents), represented by Office Freylinger S.A., 234, route d’Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative)

a g a i n s t

ETF Managers Group LLC, 30 Maple Street, Suite 2 Summit, 07901 New Jersey, United States of America (applicant), represented by Withers & Rogers Llp, 4 More London Riverside, SE1 2AU London, United Kingdom (professional representative).

On 08/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 776 is upheld for all the contested services.

2. European Union trade mark application No 18 020 700 is rejected in its entirety.

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

REASONS

The opponents filed an opposition against all the services of European Union trade mark application No 18 020 700 for the word mark ‘AIEQ’. The opposition is based on European Union trade mark registration No 17 584 541 for the word mark ‘AIQU’. The opponents 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.

1. The services

The services on which the opposition is based are, inter alia, the following:

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; providing financial information via a web site; financial information; financial analysis; financial consulting; financing and funding services; financial management; provident fund services; evaluation (financial -) [insurance, banking, real estate]; business liquidation services, financial; drafting and carrying out fiscal assessments; financial advisory services relating to tax; tax planning [not accounting]; provision of tax advice [not accounting]; processing of tax payments and tax refunds; financial advisory services relating to tax; planning of finances relating to taxation; provision of tax advice [not accounting]; preparation of tax payment plans; tax and duty payment services; valuation services of property for fiscal purposes; tax consultancy (other than book-keeping) in connection with the setting up, structuring and management of regulated and unregulated societies, foundations, investment funds and securitisation structures or other structures for gathering capital.

The contested services are the following:

Class 36: Providing exchange-traded fund services; management of exchange-traded funds that track select groups of securities; operation, creation and management of exchange-traded funds; exchange-traded fund consultation services, advisory services, investment services, planning services, development services, research services and analysis services; providing financial information; providing financial information in the field of finance, financial investments and exchange-traded funds; providing information, commentary and advice in the field of finance, financial investments, financial valuations and exchange-traded funds; providing financial information via a website; providing investors with financial information; financial information; providing financial services with respect to securities and other financial instruments and products, namely, exchange-traded funds; providing financial services with respect to securities and other financial instruments and products, namely, providing financial market news and commentary; financial evaluation, tracking, analysis, consultancy, advisory and research services relating to securities and other financial instruments; information, advisory, consultancy and research services relating to finance and investments; management of portfolios of transferable securities; financial planning and investment advisory services; investment management in the fields of exchange-traded funds; issuance and provision of financial products and investment products in the nature of exchange-traded funds; creation, management, issuance and provision of securities portfolios.

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

The term ‘namely’ used in the applicant’s list of 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 services specifically listed.

The contested providing exchange-traded fund services; management of exchange-traded funds that track select groups of securities; operation, creation and management of exchange-traded funds; exchange-traded fund consultation services, advisory services, investment services, planning services, development services, research services and analysis services; providing financial services with respect to securities and other financial instruments and products, namely, exchange-traded funds; providing financial services with respect to securities and other financial instruments and products, namely, providing financial market news and commentary; management of portfolios of transferable securities; financial planning and investment advisory services; investment management in the fields of exchange-traded funds; issuance and provision of financial products and investment products in the nature of exchange-traded funds; creation, management, issuance and provision of securities portfolios are included in the broad categories of the opponents’ financial affairs; financing and funding services. Therefore, they are identical.

The contested providing financial information; providing financial information in the field of finance, financial investments and exchange-traded funds; providing information, commentary and advice in the field of finance, financial investments, financial valuations and exchange-traded funds; providing financial information via a website; providing investors with financial information; financial information; financial evaluation, tracking, analysis, consultancy, advisory and research services relating to securities and other financial instruments; information, advisory, consultancy and research services relating to finance and investments are included in the broad categories of the opponents’ financial information; financial analysis; financial consulting. Therefore, they are identical.

2. 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, the services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

These services target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, 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).

3. The signs

AIQU	AIEQ
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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.

Both signs are meaningless. The Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking part of the public, for which the phonetic similarity of the signs can have an important impact when evaluating the likelihood of confusion.

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).

Both signs are four-letter word marks. They are meaningless and have an average degree of distinctiveness.

Visually, the signs coincide in the letters ‘A’ ‘I’ and ‘Q’, which are three out of the four letters of the signs. ‘A and ‘I’ identically form the initial part of both signs. However, they differ in the third letter ‘E’ of the contested sign and the fourth letter ‘U’ of the earlier mark.

In word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T‑412/08, TRUBION / TriBion Harmonis (fig.), EU:T:2009:507, § 40; 25/03/2009 T‑109/07, Spa Therapy, EU:T:2009:81, § 30)

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters: ‘A’ ‘I’ ‘Q’. The letters ‘A’ and ‘I’ will be pronounced identically in both signs (with their phonetic sounds), whilst the ‘Q’ will be pronounced as ‘KU’ in the term ‘kudos’. For the Italian- and Spanish-speaking public, the letter ‘U’ in the earlier mark will be absorbed by the sound of the consonant ‘Q’ (‘KU’, as above).The only difference in the pronunciation will be in the letter ‘E’ of the contested mark: /e/. Therefore, the signs coincide in the pronunciation of three out of the four letters of the contested sign and in all the letters of the earlier mark

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. 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 opponents did not explicitly claim that their 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The services are identical, the public’s degree of attention is high, and the earlier mark’s distinctiveness is normal.

The signs are visually and aurally highly similar. The differences between the earlier mark and the contested sign, resulting from one different letter and the position of that letter, ‘Q’, are not sufficient to counteract their significant visual and aural similarity. This similarity is in the first part of both signs, where consumers generally pay greater attention than to the remaining parts (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 81; 07/09/2006, T‑133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 51; 16/10/2013, T‑328/12, Maxigesic, EU:T:2013:537, § 51). This leads to the conclusion that consumers will not be able to distinguish between the signs.

For the purposes of the global appreciation, the average consumer of the category of services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should 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). Indeed, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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).

The high degree of attention of the public cannot offset the identity of the services and the similarities between the signs. In light of the above, it is likely that the public when faced with the contested sign would confuse it with the opponents’ mark or at least have some doubts and the concept of doubt reflects the very essence of likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the Italian- 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 opponents’ European Union trade mark registration No 17 584 541. It follows that the contested trade mark must be rejected for all the contested 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 opponents in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponents 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

Andrea VALISA

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.