OPPOSITION No B 3 105 113

Gustavo Adolfo Díaz León, Avd. Isabel de Farnesio 30-A, 28660 Boadilla del Monte (Madrid), Spain (opponent), represented by José Luis Donoso Romero, Avenida Isabel de Farnesio, 30 A, 28660 Boadilla del Monte (Madrid), Spain (professional representative)

a g a i n s t

ERCG, Société par actions simplifiée, 1 rue Georges Stéphenson, 78180 Montigny-le-Bretonneux, France (applicant), represented by Squadra Avocats, 24, Rue de Prony, 75017 Paris, France (professional representative).

On 12/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 113 is partially upheld, namely for the following contested services:

Class 36: Financing services, financial services, insurance services, hire-purchase financing, all the aforesaid services in connection with mobility and transport; financial information, financial advice and financial assistance in the management of mobility and transport policies; reporting and analytical and financial indicators; financial consulting; financial planning services; budgeting services; cost reduction service; all the aforesaid in the fields of mobility, transport and car fleet.

2. European Union trade mark application No 18 140 924 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 140 924 for the word mark ‘Traxall International’. The opposition is based on European Union trade mark registration No 18 024 992 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 services on which the opposition is based are the following:

Class 36: Money exchange agency services; currency exchange and advice; bureau de change services; underwriting in foreign exchange (services for the -); financial and monetary services, and banking; financial data analysis; financial information services relating to currencies; financial transactions relating to currency swaps.

After a limitation filed by the applicant on 22/01/2020, the contested goods and services are the following:

Class 9: Computer software applications, downloadable; data processing equipment; data processing apparatus; sound recording apparatus; apparatus for recording images; sound transmitting apparatus; apparatus for the transmission of images; sound reproduction apparatus; apparatus for the reproduction of images; document reading apparatus; digital recording media; computers; data processing equipment; tablet computers; smartphones; electronic book readers; peripherals adapted for use with computers; electronic publications, downloadable; computer software, recorded; computer software; computer software packages; computer software for account management; financial management software; tax management software; human resources management software; sound recording equipment; equipment for recording images; sound transmitting apparatus; equipment for the transmission of images; sound reproducing equipment; image reproduction devices; all the aforesaid in the fields of mobility, transport and car fleet.

Class 35: Business management; business administration; administrative and commercial management of vehicle fleets for others, including computerised; business research and investigation; writing of business project reports; management of files and information on vehicle fleets for others; business consulting; project management services in connection with business management; business organisation consultancy, management and supply in the fields of mobility, transport and vehicle fleet; computerized file management; access and networking with an administrative, commercial and technical management service of car fleets; management of a database of commercial, administrative and legal documents relating to a vehicle fleet; advertising; dissemination of advertising and promotional materials; on-line advertising on a computer network; collection and uploading of data; compilation and input of information into computer databases; computerized file management; subscriptions to telecommunications database services; office functions; data mining and analysis; advice relating to computer data handling; all the aforesaid in the fields of mobility, transport and car fleet.

Class 36: Financing services, financial services, insurance services, hire-purchase financing, all the aforesaid services in connection with mobility and transport; financial information, financial advice and financial assistance in the management of mobility and transport policies; reporting and analytical and financial indicators; financial consulting; financial planning services; budgeting services; cost reduction service; all the aforesaid in the fields of mobility, transport and car fleet.

Class 38: Transmission of electronic mail; communications by computer terminals; communications by fibre optic networks; telephone communication services provided for hotlines and call centers; provision of on-line forums; providing access to electronically stored data, computer programmes, from the internet or without connection to such a network; transmission of information in particular texts, graphics, images, multimedia, documents; electronic bulletin board services [telecommunications services]; providing telecommunications connections to a global computer network; teleconferencing services; videoconferencing; electronic messaging; all the aforesaid in the fields of mobility, transport and car fleet.

Class 42: Design, development, maintenance and operation of software applications, interfaces, databases, websites accessible by any means and in particular telephones, tablets, connected objects and computers; computer programming; programming for tablets; programming of electronics equipment; computer system analysis; engineering evaluations and appraisals in the fields of science and technology; scientific research; research services; conducting technical project studies; software development; research and consultancy services relating to computer software; software as a service [saas]; providing online non-downloadable computer software for accessing and using a cloud network; server hosting; graphic art design; providing tools for customising software applications; electronic data storage; data migration services; data encryption services; conversion of computer programs and data, other than physical conversion; professional consultancy relating to technology; online assistance relating to computer issues; consultancy in the field of computers; consultation services relating to computer systems; computer diagnostic services; advice on the digital transformation of companies; all the aforesaid in the fields of mobility, transport and car fleet.

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.

Contested goods in Class 9

The contested goods in Class 9 are all dissimilar to the services in Class 36 covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested services in Class 35

The contested services in Class 35 are all dissimilar to the services in Class 36 covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested services in Class 36

The contested financing services, financial services, hire-purchase financing, all the aforesaid services in connection with mobility and transport; financial information, financial advice and financial assistance in the management of mobility and transport policies; reporting and analytical and financial indicators; financial consulting; financial planning services; budgeting services; cost reduction service; all the aforesaid in the fields of mobility, transport and car fleet are included in the opponent's broad category of financial and monetary services, and banking. Therefore, they are identical.

The contested insurance services, all the aforesaid services in connection with mobility and transport are similar to financial and monetary services, and banking in Class 36 covered by the earlier trade mark as they have the same nature. In fact, insurance services are of a financial nature. In that regard, clearly, first, insurance companies are subject to, in relation to licensing, supervision and solvency, rules similar to those of financial institutions and, second, the undertakings offering financial services can also offer insurance services, either directly, or by acting as agents for insurance companies to which they are, in some cases, economically linked. Furthermore, they usually coincide in producer, relevant public and distribution channels.

Contested services in Class 38 

The contested services in Class 38 are all dissimilar to the services in Class 36 covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested services in Class 42

The contested services in Class 42 are all dissimilar to the services in Class 36 covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

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.

In the present case, as pointed out by the applicant in its observations of 15/09/2020, the services found to be identical or similar are directed at business customers with specific professional knowledge or expertise.

The services in Class 36 are specialised services that may have important financial consequences for their users. Therefore, it must be kept in mind that the 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).

c) The signs

	Traxall International
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. It consists of the verbal element ‘TRAXALT’ depicted using fanciful red letters, the main particularity of which is the fact that the letters ‘A’ are missing the horizontal lines that normally characterise them. However, this circumstance does not alter the perception of said letters, also in view of the fact that it is not so uncommon to see ‘A’ letters altered in that manner. Above the element ‘TRAXALT’ a highly stylised letter ‘T’ is placed. This letter is made of several vertical and horizontal lines of different lengths.

The contested mark is a word mark, ‘Traxall International’.

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 ‘TRAXALT’ and ‘Traxall’ are not meaningful in certain territories, and they are, therefore, distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom the signs are meaningless, such as the Spanish-speaking part of the public.

The element ‘T’ of the earlier mark will be perceived as a letter of the alphabet and possibly as the first letter of the element ‘TRAXALT’. This simple meaning will not be associated with any service in Class 36. This element is, consequently, distinctive.

The second element ‘International’ of the contested sign is a basic English word, very similar to its Spanish equivalent ‘internacional’, that would be understood as a company or organization that exists, works, or has members in more than one country (source: https://www.macmillandictionary.com). Therefore, the relevant public will perceive this term as non-distinctive for the relevant services as it indicates that these are provided by an international company.

The earlier mark has no element that could be considered clearly more dominant than other elements. It is true that the letter ‘T’ is larger than the second element of the earlier mark. However, it does not overshadows the verbal element ‘TRAXALT’.

Also, account must be taken of the fact that 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.

Visually, the signs coincide in the beginning of their verbal elements ‘TRAXALT’ on one hand and ‘Traxall’ on the other, namely in their first six letters. However, they differ in the way these letters are stylised in the earlier mark, and in particular the letter ‘A’, in their last letters, that are, respectively ‘L’ in the contested sign and ‘T’ in the earlier mark and in the additional ‘T’ letter of the earlier mark. Also, they differ to the extent that the contested sign contains the non-distinctive element ‘International’.

Therefore, the signs are, at most, visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TRAXAL’, present identically in both signs. The pronunciation only differs in the sound of the last letter ‘T’ of the earlier mark, considering that the last letter ‘L’ will be unnoticed when pronounced after the identical ‘L’ that precedes it. In fact, these two letters will be, pronounced as a single ‘L’ by at least a part of the Spanish-speaking consumers.

As regards the fanciful letter ‘T’ of the earlier mark, it is likely to expect that it will not be pronounced, since it will be considered as the initial letter of the element ‘TRAXALT’. The aural relevance of the second element ‘International’ of the contested sign is also close to none since this element is non-distinctive.

Therefore, the signs are aurally similar to a high degree.

Conceptually, the public in the relevant territory will perceive the meaning of the earlier mark’s ‘T’ as explained above, also in the sense of first letter of the element ‘TRAXALT’, and the meaning of the non-distinctive element ‘International’ of the contested sign. To this extent the signs are not conceptually similar.

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 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 appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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 goods and services covered by the trade mark application in Classes 9, 35, 36, 38, and 42 and the opponent’s services in Class 36 have been found partly identical, partly similar and partly dissimilar.

The services in Class 36 target the public at large and also business customers with specific professional knowledge or expertise. They are specialised services that may have important financial consequences for their users. Therefore, it must be kept in mind that the consumers’ level of attention would be quite high when choosing them. The earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually similar to, at most, an average degree and aurally similar to a high degree by virtue of the fact that their verbal elements ‘Traxall’ and ‘TRAXALT’ share the vast majority of their letters. Moreover, the letters these elements share are placed at the beginning, that is the part of the signs on which consumers will focus when they will encounter the trade marks.

The differences between the sign are mostly relegated to their last letters and to the graphic arrangement of the earlier mark. Also, it is true that the earlier mark possesses an additional element, namely the stylised letter ‘T’, but the Opposition Division considers that it will not play a particularly significant role in the appreciation of the mark, since it will be perceived as the initial letter of the word ‘TRAXALT’, that is the element that consumer will pick when referring to the mark. The same is valid for the additional element ‘International’ of the contested sign, that is a non-distinctive element.

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).

It must be also kept in mind that 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.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, at least but not necessarily only, on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

For the sake of completeness, the Opposition Division acknowledges that in its observations, the applicant argues that its EUTM has been widely used and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Consequently, the applicant’s claims in this regard must be set aside.

Finally, in its observations, the applicant also argues that the ‘applicant’s network partners’ own it owns several registrations with the word ‘TRAXALL’SPECIFY’ in, inter alia, Austria, Germany and, some of which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must also be rejected as unfounded.

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Victoria DAFAUCE MENÉNDEZ

Andrea VALISA

Marine DARTEYRE

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.