OPPOSITION No B 3 089 991

ID Finance Investments, S.L., calle Moià, 1, 1ª planta, 08006 Barcelona, Spain (opponent), represented by Durán-Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037, Barcelona Spain (professional representative)

a g a i n s t

MDFIN Corporate Limited, 1 Poseidonos Ledra Business Centre, Egkomi, 2406 Nicosia, Cyprus (applicant), represented by Christodoulos G. Vassiliades & Co LLC, 15 Agiou Pavlou Street, Ledra House, Agios Andreas, 1105 Nicosia, Cyprus (professional representative).

On 05/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 991 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 18 050 003 . The opposition is based on European Union trade mark registration No 15 308 042 . 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.

1. The services

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

Class 36: Credit bureaux; debt collection agencies; real estate agencies; financial analysis; lease-purchase financing; savings bank services; rent collection; issuance of credit cards; issuance of tokens of value; capital investment; insurance information; financial information; clearing, financial; insurance consultancy; financial consultancy; stock exchange quotations; lending against security; business liquidation services, financial; brokerage; financial management; exchanging money; online banking; debit card services; credit card services; factoring; organization of collections; financial evaluation [insurance, banking, real estate]; repair costs evaluation [financial appraisal]; electronic funds transfer; surety services; securities brokerage; real estate brokerage; brokerage of carbon credits; insurance brokerage; loans [financing]; pawnbrokerage; check [cheque] verification; charitable fund raising; financial sponsorship; mortgage banking; instalment loans; insurance underwriting; life insurance underwriting; health insurance underwriting; accident insurance underwriting; marine insurance underwriting; fire insurance underwriting; apartment house management; real estate management; actuarial services; banking; retirement payment services; trusteeship; provident fund services; customs brokerage; mutual funds; financing services; safe deposit services; deposits of valuables; fiscal assessments; investment consultancy; credit consultancy; real estate consultancy; financial loan consultancy; real estate investment consultancy; financial consultancy in relation to the buying and selling of businesses; providing information, consultancy and advice in the field of financial valuation.

The contested services are the following:

Class 36: Financial and monetary services, and banking; currency trading and exchange services; loan and credit, and lease-finance services; debt recovery and factoring services; investment services; financial transfers and transactions, and payment services; financial information, data, advice and consultancy services; financing and funding services.

The contested financial and monetary services, and banking; currency trading and exchange services; loan and credit, and lease-finance services; debt recovery and factoring services; investment services; financial transfers and transactions, and payment services; financial information, data, advice and consultancy services; financing and funding services are identical to the opponent’s credit bureaux; debt collection agencies; financial analysis; lease-purchase financing; savings bank services; capital investment; financial information; clearing, financial; financial consultancy; exchanging money; online banking; factoring; electronic funds transfer; loans [financing]; financial sponsorship; mortgage banking; instalment loans; banking; retirement payment services; financing services; safe deposit services; deposits of valuables; fiscal assessments; investment consultancy; credit consultancy; financial loan consultancy; financial consultancy in relation to the buying and selling of businesses; providing information, consultancy and advice in the field of financial valuation, 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.

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 both the public at large and at business customers with specific professional knowledge or expertise.

The relevant 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). Since the services at issue are specialised in the field of finance or related to payment, and may have important financial consequences for their users, business customers with specific professional knowledge or expertise will also display a high degree of attentiveness when choosing them. Therefore, irrespective of whether the relevant public is the public at large or business customers with specific professional knowledge or expertise, the degree of attention is considered high.

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 earlier mark is a figurative mark composed of the verbal elements ‘ID’ and ‘FINANCE’. The verbal element ‘ID’ is depicted in white upper-case letters, with a stylised letter ‘D’, and is placed against a rectangular blue background. The verbal element ‘FINANCE’ is depicted in standard black upper-case letters.

The contested sign is a figurative mark composed of the verbal element ‘Finance’ depicted in fairly standard blue title-case letters. At the beginning of the sign there is another verbal element, composed of two conjoined letters, the second of which is most likely to be perceived as an upper-case ‘D’. Therefore, this element is likely to be perceived as the combination of letters ‘MD’. This element is depicted in white against a rectangular blue background.

The word ‘FINANCE’, present in both signs, is an English word that means, inter alia, ‘commercial or government activity of managing money, debt, credit and investment’ (information extracted from Collins Dictionary on 18/05/2020 at https://www.collinsdictionary.com/dictionary/english/finance). The opponent argued that it was meaningless for part of the relevant public, such as the Estonian-, Finnish- or Hungarian-speaking part of the public. However, in Estonian, finance is ‘finantseerima’ (http://www.eki.ee/dict/ekss/index.cgi?Q=finantseerima&F=M); in Finnish, it is ‘finansioida’ (https://www.sanakirja.fi/english-finnish/finance); and in Hungarian, it is ‘finanszíroz’(http://szotar.sztaki.hu/search?fromlang=eng&tolang=fre&searchWord=finansziroz&langcode=hu&u=0&langprefix=&searchMode=WORD_PREFIX&viewMode=full&ignoreAccents=0). Therefore, as these words all have the same root as their English equivalent, the latter will be understood by the relevant public in these territories as relating to financial services. Furthermore, the use of English is common in the financial sector to which the relevant services belong (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 41). Moreover, the Boards of Appeal have held that within the sector of the Class 36 services there is prolific use of a very wide variety of English terms, and as such, those consumers, throughout the European Union, are likely to have a fair understanding of English, such as the English word ‘FINANCE’ contained in the contested sign (06/06/2017, R 2262/2016‑2, IOS FINANCE (fig.) / EOS (fig.), § 46). Therefore, contrary to the opponent’s argument, the word ‘FINANCE’, present in both signs, will be understood by the relevant public throughout the European Union. As the relevant services belong to the financial sector, this word is descriptive and therefore non-distinctive (06/06/2017, R 2262/2016‑2, IOS FINANCE (fig.) / EOS (fig.), § 47).

The verbal element ‘ID’ in the earlier mark is a standard English abbreviation of the noun ‘identification/identity’ (information extracted from Oxford Dictionaries on 18/05/2020 at https://www.lexico.com/en/definition/id). The meaning of the abbreviation ‘ID’ is generally known as referring to ‘identity document’, ‘user ID’ or ‘user name’ and therefore will be understood by the relevant public as referring to identification/identity (30/08/2019, R 141/2019‑5, GoodID (fig.) / Goid et al. § 31). The verbal element ‘ID’ is not related in any way to the relevant services and is therefore distinctive.

The verbal element ‘MD’ in the contested sign may be perceived as, inter alia, ‘an indication that someone has been awarded a degree in medicine and is qualified to practise as a doctor’ and/or as ‘an abbreviation for managing director’ (information extracted from Collins Dictionary on 18/05/2020 at https://www.collinsdictionary.com/dictionary/english/md). Therefore, part of the relevant public will perceive the verbal element ‘MD’ in the contested sign as having one of the aforementioned meanings. However, the other part of the relevant public will not attribute any meaning to this verbal element. In any event, the verbal element ‘MD’ is not related in any way to the relevant services and has a normal degree of distinctiveness.

The rectangular blue backgrounds in both signs are basic geometrical shapes. Furthermore, they have a merely decorative function and are non-distinctive.

Both the earlier mark and the contested sign have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘FINANCE’, which is non-distinctive in relation to the relevant services, and in the letter ‘D’ of the verbal elements ‘ID’ and ‘MD’. The signs have a similar structure, namely their verbal elements are in the same position and they both have two white upper-case letters on rectangular blue backgrounds. However, they differ in the first letter of their distinctive two-letter verbal element, namely ‘I’ in the earlier mark versus ‘M’ in the contested sign. They also differ in the stylisation of their second letters: in the earlier mark the letter ‘D’ is clearly perceived as such, while in the contested sign it is stylised and conjoined with the letter ‘M’.

The coinciding verbal element ‘FINANCE’ is non-distinctive, whilst the differing distinctive elements ‘ID’ and ‘MD’, as only two letters each, are considered to be short elements. The length of these verbal elements has an influence on the effect of the differences between them and consequently between the signs at issue. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. As the verbal elements ‘ID’ and ‘MD’ are short elements, the public will perceive each of their individual letters and will perceive the difference in one of the two letters, particularly since the different letter is the first one in each case.

The Opposition Division concurs with the opponent that the structure of the signs is similar. However, the coinciding verbal element ‘FINANCE’ is non-distinctive, and the elements that will be seen as identifying commercial origin are the verbal elements ‘ID’ and ‘MD’, which are short and each have a different first letter. Furthermore, the combination of letters ‘MD’ is rather stylised so that it might be even debatable whether there is a letter ‘D’ at all. Therefore, the signs are visually similar to only a low degree.

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 letter ‘D’, if perceived as such in the contested sign, and in the non-distinctive word ‘FINANCE’. The pronunciation differs in the sound of the letter ‘I’ in the earlier mark versus the sound of the letter ‘M’ in the contested sign.

Taking into account that the word that will be pronounced identically is non-distinctive, and that the first letters ‘I’ and ‘M’ are completely different, one being a vowel and the other a consonant, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the coinciding word ‘FINANCE’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate commercial origin. The attention of the relevant public will be attracted by the first verbal elements in the signs, namely ‘ID’ and ‘MD’.

For the part of the relevant public that perceives the concept evoked by the letters ‘MD’ in the contested sign as described above, the signs will be associated with different meanings on account of the verbal elements ‘ID’ and ‘MD’. Therefore, for this part of the public the signs are conceptually dissimilar.

For the part of the relevant public that does not attribute any particular meaning to the letters ‘MD’, the verbal element ‘ID’ in the earlier mark will still evoke a concept. Therefore, for this part of the public the signs are conceptually not similar.

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. 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, despite the presence of non‑distinctive elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The services are identical. They target both the public at large and business customers with specific professional knowledge or expertise. The degree of attention of the relevant public is high. The signs are visually similar to a low degree, aurally similar to a low degree and conceptually dissimilar or not similar.

Although the signs coincide in the word ‘FINANCE’, this word is non-distinctive in relation to the relevant services, and the elements that can identify the commercial origin are the verbal elements ‘ID’ of the earlier mark and ‘MD’ of the contested sign. However, each of these elements is composed of only two letters, meaning that they are short. Furthermore, their first letters are completely different. In short signs, consumers are easily able to perceive every single element, so the fact that the most distinctive elements ‘ID’ and ‘MD’ differ in one letter is of particular importance. Furthermore, when considering the likelihood of confusion, if either element evokes a concept, or if both do (depending on whether the public perceives the concept of the element ‘MD’) then the signs are conceptually not similar, or even dissimilar. Moreover, the fact that the relevant consumers display a high degree of attentiveness in the present case is also of particular importance.

The opponent referred to the imperfect recollection principle, that is to say that consumers, even if they are professionals with a higher degree of attentiveness, will rarely compare the marks side by side and will rely on their imperfect recollection of them. Given the concept evoked by the verbal element ‘ID’ and, for part of the relevant public, also by the verbal element ‘MD’, and taking into account that consumers will be able to immediately grasp all the letters in these elements, it is unlikely that consumers could confuse the signs because of their imperfect recollection of them, especially when the degree of attentiveness of the relevant public is high. Consequently, although the structure and graphical elements (colour, rectangular background) in the signs are similar and the signs coincide in the non-distinctive word ‘FINANCE’, these are not sufficient to lead to a finding of likelihood of confusion. The Opposition Division concludes that consumers will be able to safely distinguish between the signs.

Nor is there any reason to conclude that consumers, despite not confusing the signs directly, would still assume that the services under the marks in question originate from the same undertaking. This is true even though the services are identical. As the verbal element ‘ID’ in the earlier mark evokes a concept, whilst the verbal element ‘MD’ in the contested sign is either meaningless or evokes different concepts, consumers have no reason to assume that the signs are variants of each other designating different lines of services.

The opponent referred to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that the services are identical cannot, in this case, compensate for the impact of the differences between the signs described above.

The opponent refers to previous decisions of the Office to support its arguments (16/04/2019, B 3 054 519; 01/10/2015, B 2 421 488). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. This is because the signs, the perception of the verbal elements, and/or their distinctiveness are not comparable. In opposition No 3 054 519 the coinciding verbal element ‘security’ was found meaningless and distinctive for part of the relevant public, whilst the differing verbal elements ‘SERIS’ and ‘SINIS’ were meaningless and thus did not lead to a lack of conceptual similarity as in the present case. Moreover, the latter were not short verbal elements as in the case of the letters ‘ID’ and ‘MD’ in the signs at issue. Furthermore, in opposition No 2 421 488 the verbal element ‘system’ was found to be weak whilst the verbal element ‘FINANCE’ was non-distinctive and thus could not serve to indicate the commercial origin. Furthermore, the verbal elements ‘NRG’ and ‘NBG’ in the case referred to by the opponent were meaningless, whilst in the present case the verbal element ‘ID’ is meaningful for the relevant public and the verbal element ‘MD’ is also meaningful for part of the relevant public. Therefore, the opponent’s references to those cases have to be disregarded.

The opponent also referred to the ‘COFFEE ROCKS’ judgment (16/01/2018, T‑398/16, COFFEE ROCKS (fig.) / STARBUCKS COFFEE (fig.) et al., EU:T:2018:4, § 46, 51-52, 55, 57 and 59-64). In view of the different factual circumstances, this particular example quoted by the opponent is not comparable to the present case. The Court had held that there was a certain degree of similarity between the signs, as in the present case; however, in the proceedings referred to by the opponent, the Board of Appeal had found that the earlier marks had acquired a high degree of distinctiveness through their widespread use on the market and that the earlier marks enjoyed an extensive reputation in the European Union (27/09/2018, R 1325/2018‑5, COFFEE ROCKS (fig.) / STARBUCKS COFFEE (fig.) et al., § 50-53, ), whilst in the present case the opposition is based on the inherent distinctiveness of the earlier mark. Therefore, the opponent’s arguments must be set aside.

Considering all the above, there is no likelihood of confusion on the part of the public even for identical services. Therefore, 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

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.