OPPOSITION No B 3 089 713

cryptix AG, Gotthardstrasse 26, 6300 Zug, Switzerland (opponent), represented by Held Berdnik Astner & Partner Rechtsanwälte GmbH, Karmeliterplatz 4, 8010 Graz, Austria (professional representative)

a g a i n s t

Parcial Gest - Mediação Imobiliária, Lda., Rua do Xabregas, n°2, loja 21, 1900-440 Lisboa, Portugal (applicant), represented by João Travassos, Rua Joaquim António de Aguiar, n.º 43, 1º esq., 1070-150 Lisboa, Portugal (professional representative).

On 15/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 713 is upheld for all the contested services.

2. European Union trade mark application No 18 043 316 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 043 316 for the figurative mark , namely against all the services in Classes 35, 36 and 42. The opposition is based on European Union trade mark registration No 18 020 655 for the figurative mark . The opponent invoked Article 8(1)(a) and (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 goods and services

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

Class 9: Computers; software; data processing equipment.

Class 35: Advertising; business management; business administration; clerical services.

Class 36: Financial transfers and transactions, and payment services; financial and monetary services, and banking; electronic commerce payment services; virtual currency exchange; virtual currency transfer services; virtual currency services; financial services in relation to digital currencies; currency trading; trading in currencies; finance services; monetary affairs.

Class 42: Software development, programming and implementation; computer hardware development; illustration services (design); science and technology services; research and development of computer software.

The contested services are the following:

Class 35: Commercial information and advice for consumers in the choice of products and services; analysis of business trends; compilation and provision of trade and business price and statistical information; business consultancy and advisory services; administration of business affairs; administration relating to business planning.

Class 36: Providing information, consultancy and advice in the field of financial valuation; valuation services; financial information, data, advice and consultancy services; financial planning and management.

Class 42: IT services; science and technology services; scientific technological services.

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.

The contested services in Class 35

The contested analysis of business trends; compilation and provision of trade and business price and statistical information are included in the opponent’s business management. Therefore, they are identical.

The contested business consultancy and advisory services; administration of business affairs; administration relating to business planning are included in, or overlap with, the opponent’s business administration. Therefore, they are identical.

The contested commercial information and advice for consumers in the choice of products and services are similar to a low degree to the opponent’s advertising as they have the same purpose, target the same public and usually coincide in providers.

The contested services in Class 36

The contested providing information, consultancy and advice in the field of financial valuation; valuation services; financial information, data, advice and consultancy services; financial planning and management are included in the opponent’s finance services. Therefore, they are identical.

The contested services in Class 42

Science and technology services are identically included in both lists.

The contested scientific technological services are included in the opponent’s science and technology services. Therefore, they are identical.

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

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 or lowly similar are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. as regards the business to business services in Class 35).

The degree of attention is considered to be higher than average due to specialised nature, terms and conditions or potential impact of the services purchased.

For example, financial 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

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 letter ‘e’ in both signs is used throughout the relevant territory to form words that indicate that something happens on or uses the internet; an abbreviation for ‘electronic’ (information extracted from Collins English Dictionary on 14/05/2020 at https://www.collinsdictionary.com/dictionary/english/e).

The elements ‘credits’ of the earlier mark and ‘credit’ of the contested sign are, respectively, the plural and the singular form of the English word ‘credit’, which means, inter alia, ‘the sum of money that a bank makes available to a client in excess of any deposit’ (information extracted from Collins English Dictionary on 14/05/2020 at https://www.collinsdictionary.com/dictionary/english/credit). Bearing in mind the relevant services, the elements ‘credits’ / ‘credit’ will be instantly recognised and understood by the relevant public, particularly because the use of English is common in these sectors and because these terms, as such or with a slightly different spelling, exist in all languages of the Union (19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, § 36).

The verbal elements of both sign provide information about the kind and purpose of services in question, namely that they concern online credit financing, or that the services relate to such financing. However, these elements are on an equal footing in both signs regarding their distinctiveness.

The signs are visually divided into two verbal elements, which clearly enable the relevant public to recognise them, without any mental effort, namely the elements ‘e’ and ‘Credit(s)’. Even though the signs contain additional elements (the duplicate letter ‘e’ of the earlier mark and the wavy line/hyphen of the contested sign which is basic and will rather be perceived as decorative than as an indicator of commercial origin), the relevant public will rather focus on the verbal elements, which, despite being not particularly distinctive, are recognisable and understandable and clearly have the biggest impact in the overall impression of the signs.

Although the signs are composed of several identifiable components, none of them can be clearly considered dominant.

Visually, the signs coincide in the sequence of letters ‘eCredit’. Moreover, there is similarity within the colour of these letters and their rather simple font. However, they differ in the earlier mark’s additional letters, namely ‘s’ at the end of the common string and ‘e’ positioned before the elements ‘eCredits’. Furthermore, the contested sign differs in the figurative element, which has less impact, because 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).

It follows that the signs are visually similar to at least an average degree because the verbal elements of the contested sign are almost identical to the verbal elements of the earlier mark, their depiction is similar and the contested sign’s figurative element is not outstanding enough that it could outweigh the coincidence in the marks’ verbal elements.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘eCredit’, present identically in both signs. The pronunciation differs in the sound of the last letter ‘s’ of the earlier sign and in its additional letter ‘e’, positioned before the element ‘eCredits’. However, the pronunciation of this additional letter ‘e’, being a duplicate of the first letter of the element ‘eCredits’, may be omitted.

In any event, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the verbal elements ‘e’ and ‘Credit(s)’ will be associated with the same concepts in both marks (despite the plural form of the element ‘Credit’ in the earlier mark), and there are no further meaningful elements in the signs, the signs are conceptually highly similar, almost identical.

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 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the services in question.

5. Global assessment, other arguments and conclusion

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.

Account is 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 need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the services found to be identical or lowly similar are directed at the general and professional public, whose degree of attention is higher than average.

The Opposition Division finds it useful to recall that the EUIPO and a number of trade mark offices of the European Union have agreed on a Common Practice under the European Trade Mark and Designs Network with regard to the impact on likelihood of confusion of components that are non-distinctive or distinctive only to a low degree. According to the Common Practice, when the marks share an element with no or with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. In the present case, as established above, the signs are visually similar to at least an average degree and aurally and conceptually highly similar as they include almost identical verbal elements ‘e’ and ‘Credit(s)’, which have the biggest impact in the overall impression created by the signs.

Furthermore, the signs do not have any further verbal and figurative elements, that would make it possible to differentiate between them. In addition, despite the figurative nature of the signs at issue, the fonts used for the word elements of those signs are very common and do not make it possible to detect any relevant difference between them (20/07/2016, T-745/14, easy Credit (fig.), EU:T:2016:423, § 28).

Therefore, it is highly conceivable that the relevant public, who, even if having a high degree of attention, will also have to rely on its imperfect recollection of the signs, could confuse the signs or believe that the identical or similar services originate from the same or economically linked undertakings.

This finding is not called into question by the weak distinctive character of the earlier trade mark. Indeed, according to established case-law, the finding of a low degree of distinctiveness for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in this case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor, inter alia, involved in that assessment. In the present case, despite the weak distinctive character of the earlier mark, there is a likelihood of confusion on account, in particular, the similarity between the signs, as well as the identity or similarity (be it to a low degree only) of the services.

Considering all the above, there is a likelihood of confusion on the part of the public.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Denitza STOYANOVA-VALCHANOVA

Lidiya NIKOLOVA

Marta Maria CHYLIŃSKA

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.