OPPOSITION Nо B 3 105 044

Nortia SAS, 215 Avenue Le Nôtre, 59100 Roubaix, France (opponent), represented by Hirsch & Associés, 154 Boulevard Haussmann, 75008 Paris, France (professional representative)

a g a i n s t

Nortia Capital Investment Holding, S.L., Cm De Can N’Ametller Num. 16 P. 5 Ed.Ca n’Ametller, 08195 Sant Cugat del Vallés, Barcelona, Spain (applicant), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 Bis, 2° Piso, 08036 Barcelona, Spain (professional representative).

On 11/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 044 is partially upheld, namely for the following contested services:

Class 36: All the services applied for in this class except for real estate affairs; apartment house management; rental of flats, studios and rooms; arranging letting of real estate.

2. European Union trade mark application No 18 088 918 is rejected for the services as reflected under 1. of this dictum. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

On 05/12/2019, the opponent filed an opposition against some of the services of European Union trade mark application No 18 088 918 ‘NORTIA CAPITAL INVESTMENT HOLDING’ (word mark), namely against all the services in Class 36. The opposition is based on signs used in the course of trade of more than mere local significance, namely the company name ‘NORTIA’ used in France and the domain name ‘nortia.fr’ used in France. The opponent invoked Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 28/06/2019. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in France prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for the following services/activities:

 company name ‘NORTIA’: Financial analysis and conceptualization of financial products as well as their distribution, financial intermediation, advice on the structuring of financial transactions and insurance brokerage. brokerage activity in banking operations and payment services;

 domain name ‘nortia.fr’: Insurance and financial services.

On 05/12/2019 and 22/06/2020 the opponent filed the following evidence.

 Enclosures 1–3: copies of Article L 210‑6 of the French Commercial Code, and Articles L 711‑4 and L 714‑3 of the French Intellectual Property Code, with partial translations into English provided in the observations.

 Enclosures 4–6, 11: case-law from:

o The Cour de Cassation, Commercial Chamber (22/02/2005), including a partial translation into English, about the notion of likelihood of confusion between a company name and a later trade mark, implying the examination of the goods and services;

o The Court of Appeal of Paris, Pôle 5, Chamber 2 No 16/25737 (30/06/2017) and No 17/10833 (29/06/2018), with partial English translations, in relation to the likelihood of confusion and global assessment in conflicts between company names and trade marks;

o The Court of Appeal of Paris, Pôle 5, Chamber 1, No 15/01332 (16/05/2017) in relation to the likelihood of confusion between a domain name and a later trade mark.

 Enclosures 7–9: extracts from the company register for the company name ‘NORTIA’, with date of registration (03/11/1994) and address in La Madeleine (France). Copies of the minutes of the deliberations of the Extraordinary General Meeting of 06/07/2005 for the change of address, and an extract from the company register for the registration of the company name ‘NORTIA’ on 02/09/2005 with address in Roubaix (France). The activities of the company are included and translated by the opponent in its observations as: financial analysis and conceptualization of financial products as well as their distribution, financial intermediation, advice on the structuring of financial transactions and insurance brokerage. brokerage activity in banking operations and payment services.

 Enclosure 10: extract from the opponent’s website www.nortia.fr with information about the opponent’s company, services offered and contact details. The information is in French.

 Enclosure 12: extract from the website Whois, showing the domain name ‘nortia.fr’ created on 02/12/1999 under the opponent’s name, ‘Nortia’.

 Enclosure 13: extracts from Wayback Machine (web.archive.org) showing the activity of the opponent’s website www.nortia.fr in 2002, 2004, 2010, 2013, 2015, 2017, including the opponent’s company information, the number of clients or financial figures of the company in euros.

 Enclosure 14: extracts showing information from the Articles of Association of the opponent’s company Nortia, S.A. in October 1994, containing the denomination ‘Nortia’. The document is in French, but its content can be inferred from the opponent’s explanation in its observations.

 Enclosure 15: copies of several press releases and information from the opponent’s website, in French with partial translations into English, including the company name ‘Nortia’ in relation to the following information and news:

o ‘Ranking of the largest companies in the field of services auxiliary to the financial and insurance sectors’ (document undated);

o participation in the Anacofi and CNCGP exhibitions in March 2017, elected the most innovative company in 2017 by CGPI;

o partnership with the insurance company ‘CNP assurances’ in January 2015; awarded the 31st life insurance and personal risk benefit schemes Oscar (2016);

o awarded in the 2014 multi-fund category by Les Pyramides de la gestion de patrimoine as the Editor’s choice;

o ‘for more than 20 years, Nortia creates and distributes innovative and top-of-the-range life insurance and capitalization policies as well as stocks and shares accounts’ (2014).

 Enclosures 16–55: extracts from different articles mentioning the company ‘NORTIA’ and its achievements in the French national press, for 2005, 2009 and from 2012 to 2019:

o specialised press, such as the Gestion de Fortune, L’Argus de l’Assurance, Agefi actifs, Money vox, Profession CGP (Conseils en Gestion de Patrimoine), Boursorama;

o other national newspapers, such as The Figaro;

o the opponent’s internal communications, such as E-News Nortia, Finance & Communication, La Revue Nortia, Road Show Nortia.

These press releases cover some partnerships, acquisitions, capital increase, celebration of 20 years of existence (2014), innovation efforts and other operations of ‘Nortia’.

 Enclosures 56–59: several articles from the specialised press Gestion de Fortune and H24 finance covering the awards obtained by the company ‘Nortia’, in particular the Oscar for the best life insurance policy (2013), Oscar for the most innovative company (2015), best company of the year (2019) and Finance Great Price (2019) in the category of ‘Best life insurance platform’.

 Extracts from Wayback Machine (www.archive.org), included in the opponent’s observations, showing the use of the domain name ‘nortia.fr’ in the website www.nortia.fr in 2002, 2003, 2004, 2006, 2008, 2011, 2014, 2016 and 2018.

On 18/01/2020, the opponent, following the Office’s request, filed a partial English translation of all the evidence.

The several press releases and opponent’s website extracts (enclosures 10, 15–55) show that the place of use is France. This can be inferred from the language of the documents (French), the currency mentioned (Euro) and some addresses in France.

Regarding the time of use, the evidence is mainly dated before the relevant date.

As regards the extracts from the opponent’s website and the information contained in them, since they come from the interested party, they have generally less probative weight than independent evidence. However, this does not mean that such evidence and information do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. Therefore, the additional evidence has to support or complement the content of these evidence.

‘More than mere local significance’ means that the sign must have a real presence on its relevant market, must actually be used in a sufficiently significant manner in the course of trade, and must be used in a substantial part of that territory (more than in one town or province) (29/03/2011, C‑96/09 P, Bud, EU:T:2011:189, § 158; 24/03/2009, T‑318/06 – T‑321/06, General Optica, EU:T:2009:77, § 34).

The geographical significance of the use of an establishment name mainly depends on the number of establishments operating under the name in question and whether they cover a more than local area. Additionally, under certain circumstances, one sole establishment may be of more than local significance because of its geographically widespread clientele and/or because of the reputation it enjoys among the public at a national or even international level.

The evidence on file suggests that this is the case for the opponent’s sign. In particular, the opponent’s company, ‘NORTIA’, has obtained several awards from independent sources in the financial sector, such as the Conseils en Gestion de Patrimoine (enclosures 15 and 56–59), has participated in several transactions and operations with other economic actors in at least the financial panorama of France, as shown in some of the press releases covered by specialised websites, magazines and national newspapers (enclosures 16–55).

This all denotes a relevant presence in the financial sector of France and a degree of recognition on the part of the public. These items of evidence together with the information contained on the opponent’s website and some of the internal documents of the company about the number of clients, figures and extent of the business provide the Opposition Division with sufficient valid information. It is considered that at least the company name ‘Nortia’ has been used as a sign in the course of trade according to Article 8(4) EUTMR to a satisfactory economic extent surpassing the threshold of use in a sufficiently significant manner in the course of trade and to a geographical extent that is more than merely local.

Therefore, the evidence clearly indicates that as a result of the use that has been made of the sign, it has an economic impact that clearly goes beyond the local area where the opponent’s business is located (Roubaix).

Consequently, the Opposition Division concludes that the opponent’s company name ‘Nortia’ was used in the course of trade of more than local significance in France for financial analysis before the filing date of the contested trade mark.

However, the evidence does not succeed in establishing that the sign has been used in the course of trade of more than local significance for all the services on which the opposition is based. The evidence mainly relates to financial analysis (with references to life insurance, which is not included in the services invoked by the opponent), whereas there is no or little reference to the remaining business activities (e.g. advice on the structuring of financial transactions and insurance brokerage; brokerage activity in banking operations and payment services). This is clear, for example, from the press clippings and awards received in which only the former is mentioned.

Therefore, the examination of the opposition will proceed as far as the earlier right is claimed to be used in the course of trade in France in connection with financial analysis.

However, the Opposition Division considers that the evidence for proving the use of mere than local significance of the domain name ‘nortia.fr’ is insufficient. The documents filed, namely the extracts from the website in different years, do not provide the Opposition Division with sufficient information concerning the actual use of the sign in the relevant territory, for example, whether the website was actually accessed and visited by the relevant public. Useful evidence in this regard could be records that are generally kept when operating a business website, for example records relating to the number of hits attained over a certain period of time or, in some cases, the countries from which the website has been accessed.

Therefore, the requirement regarding prior use in the course of trade of more than mere local significance is only fulfilled in regard to the company name ‘Nortia’ in France. The assessment will continue on the basis of the French company name ‘Nortia’ as protected by French law.

b) The right under the applicable law

A company name is the official designation of an incorporated undertaking, in most cases registered in the respective national commercial register. If, under national law, registration is a prerequisite for protection, registration must be proven. Company names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

The opponent provided certificates showing the registration of the company with the name as indicated by the opponent. Both certificates attest that this company name was registered before the filing date of the contested application.

As outlined by the opponent, the law governing the signs in question is the French Commercial Code and the French Intellectual Property Code.

According to Article L 210‑6 of the French Commercial Code, ‘trading companies shall have legal personality with effect from their registration in the commercial and companies register’.

Moreover, according to Article L 711‑4 of the French Intellectual Property Code: ‘signs may not be adopted as marks where they infringe earlier rights, particularly: (b) a company name, where there is a risk of confusion in the public’s mind’. In the same Code, the Article L 714‑3 establishes that ‘registration of a mark which is not in conformity with the provision of Articles L 711‑1 and L 711‑4 is declared void’.

Therefore, according to the law governing the sign in question, the opponent has proved to be entitled to invoke the company name ‘Nortia’ under French law. Consequently, the criteria with regard to Article 8(1)(b) EUTMR can be applied when examining whether the invoked earlier right confers on the opponent company name ‘NORTIA’ the right to prohibit the registration of the contested sign.

c) The earlier right vis-à-vis the contested trade mark

Likelihood of confusion

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.

Therefore, a comparison of the signs is required.

The contested services must also be compared with the services invoked by the opponent.

1. The services

The opponent’s company name has been used in the course of the trade with a view of reaching the threshold of ‘more than mere local significance’ (as required by Article 8(4) EUTMR) for:

 Financial analysis.

The opposition is directed against the following services of the contested trade mark:

 Insurance; finance services; finance services; monetary affairs; real estate affairs; apartment house management; rental of flats, studios and rooms; arranging letting of real estate; arranging of financial investments; financial evaluation and analysis; financial analysis services relating to investments; research services relating to finance; asset evaluation [financial]; administration of fund investment; investment fund management; fund investment consultation; mutual funds; fund investments; capital fund investment; wealth management; financial services relating to wealth management; financial services relating to investment; financial services relating to business; management of corporate finances; administration of financial affairs; financial sponsorship and patronage; monitoring of financial portfolios; monitoring of investment funds.

The contested real estate affairs; apartment house management; rental of flats, studios and rooms; arranging letting of real estate do not have anything relevant in common with the opponent’s financial analysis. The contested services comprise the managing of real estate properties, real estate agency and the evaluation of real estate properties, as well as consultancy and provision of related information . This mainly implies the finding of property, making it available for potential buyers and acting as an intermediary, or directly renting them. Consumers will clearly distinguish real estate services from those of financial institutions. They do not expect a bank or a financial institution to find housing or expect real estate agents to manage their finances. The mere fact that real estate may have to be financed in order to be purchased is not enough to find similarity between real estate affairs and financial services. Therefore, they are dissimilar.

The remaining contested services are financial services including insurance, monetary affairs, financial investments, evaluation, analysis and monitoring; wealth management and financial sponsorship. These coincide in nature with the opponent’s financial analysis and are generally rendered by the same companies, which use the same distribution channels and coincide in the relevant public. Therefore, all the remaining contested services are at least similar to the opponent’s financial analysis.

2. The signs

NORTIA	NORTIA CAPITAL INVESTMENT HOLDING
Earlier trade mark	Contested sign

The relevant territory is France.

The signs coincide fully in the verbal element ‘NORTIA’. As it has no meaning as a whole, which the parties have not disputed, it is distinctive.

The contested sign consists of an additional expression in English, ‘CAPITAL INVESTMENT HOLDING’. The verbal elements CAPITAL’ and ‘HOLDING’ will be understood respectively as the total amount of money and property that an individual or company owns and as a company with controlling shares in other companies because they exist as such in the relevant language, French. The English word ‘INVESTMENT’ will also be understood by the relevant public as the act of investing money in order to make a profit because it is very close to the equivalent word in French, investissement. As a whole, this expression can be understood as a company dedicated to investing money. Bearing in mind the relevant services, this element is non-distinctive because it describes their nature.

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. In this case, the coincidences between the signs are found in the first element read and pronounced in the contested sign, ‘NORTIA’, which, in addition, constitutes the entire earlier right.

Visually and aurally, the signs coincide in the word/sound ‘NORTIA’, which constitutes the entire earlier right and the first and only distinctive verbal element of the contested sign. They differ in the additional expression/sound ‘CAPITAL INVESTMENT HOLDING’ of the contested sign.

Therefore, and taking into account the conclusions regarding the distinctiveness and the impact of the elements, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning as a whole. Although the public in the relevant territory will perceive the meaning of the expression ‘CAPITAL INVESTMENT HOLDING’ in the contested sign as explained above, it is not sufficient to establish any conceptual difference, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination will proceed.

3. Global assessment of the conditions under the applicable law

It has been shown that French national law would prevent the use of the applicant’s trade mark in France in the event that it is liable to cause confusion with the opponent’s company name ‘NORTIA’, which has been used in the course of trade and has been acquired before the filing date of the contested application.

In the present case, the contested services are partly at least similar and partly dissimilar to the services constituting the subject of the opponent’s activity.

The signs are visually and aurally highly similar and the conceptual aspect has no impact on the comparison. Their similarity lies in the coincidence of the verbal element ‘NORTIA’, which constitutes the entirety of the earlier right and the first and only distinctive element of the contested sign. The differences between the signs are confined to the non-distinctive expression ‘CAPITAL INVESTMENT HOLDING’ in the contested sign, which will not produce any significant difference between the signs.

d) Conclusion

Considering all the above, the Opposition Division finds the opposition is well founded on the basis of the opponent’s earlier right insofar as it is directed against the following services:

Class 36: Insurance; finance services; finance services; monetary affairs; arranging of financial investments; financial evaluation and analysis; financial analysis services relating to investments; research services relating to finance; asset evaluation [financial]; administration of fund investment; investment fund management; fund investment consultation; mutual funds; fund investments; capital fund investment; wealth management; financial services relating to wealth management; financial services relating to investment; financial services relating to business; management of corporate finances; administration of financial affairs; financial sponsorship and patronage; monitoring of financial portfolios; monitoring of investment funds.

The opposition is not successful insofar as the remaining services are concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Rosario GURRIERI

Sofía SACRISTÁN MARTÍNEZ

Carlos MATEO PÉREZ

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.