OPPOSITION No B 2 682 394

Ariana Carmone Trading Limited, 3rd Floor, 207 Regent Street, London W1B 3HH, United Kingdom (opponent)

a g a i n s t

Ariana Exchange Limited, 136 The Broadway, Southall, London UB1 1QN, United Kingdom (applicant).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 682 394 is upheld for all the contested services.

2. European Union trade mark application No 14 897 714 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 897 714. The opposition is based on Benelux trade mark registration No 983 053. 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: Financial services; investment services; fund and asset management; financial management and planning.

The contested services are the following:

Class 36: Money transfer; electronic money transfer services; money exchange and transfer; money transmission services; financial transfers and transactions, and payment services; cash, check (cheque) and money order services; exchange services (currency -); currency trading and exchange services; cashing of cheques.

The contested money transfer; electronic money transfer services; money exchange and transfer; money transmission services; financial transfers and transactions, and payment services; cash, check (cheque) and money order services; exchange services (currency -); currency trading and exchange services; cashing of cheques are services provided by the finance industry. These are all included in the broad category of the opponent’s financial services and are, therefore, identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are directed at the public at large and at a more specialised public, with specific professional knowledge or expertise in the finance industry. Since the relevant services are specialised services that may have important financial consequences for their users, 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).

3. The signs

Ariana
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 the word mark ‘Ariana’, which will be understood throughout the relevant territory as a female first name. This word is distinctive for the relevant services, since it is neither descriptive nor allusive to an extent that would materially affect its degree of distinctiveness.

The contested sign is a figurative mark in colour. It consists of a graphical element composed of juxtaposed thick red and black lines, which may be perceived as a monogram of the letters ‘A’ and ‘E’, the verbal element ‘ARIANAEXCHANGE’ and an arrangement of dots and lines in black and red that resembles some sort of script.

Although the juxtaposed red and black lines are larger than the other elements, in view of the rather central position of ‘ARIANAEXCHANGE’, which albeit in smaller script is still clearly perceptible, it is considered that the contested sign has no element that could be considered clearly more dominant than other elements. Nevertheless, the arrangement of dots and lines that resembles some sort of a script is of less importance as it is smaller and positioned at the bottom of the contested sign. Although it is possible that the public might think that the dots and lines are ‘ARIANAEXCHANGE’ in a foreign script (possibly Arabic), it should be noted that such script is not widely used in the relevant territory and, therefore, these elements will not be understood by the vast majority of the relevant consumers, who will perceive them as merely decorative in nature.

Although written as one element, ‘ARIANAEXCHANGE’ will clearly be perceived as consisting of two words, not only since consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58), but also because ‘ARIANA’ and ‘EXCHANGE’ are visually separated because they are in different colours. The above considerations regarding the meaning and distinctive character of the word ‘ARIANA’ in the earlier mark apply equally to this element of the contested sign. ‘EXCHANGE’ means, in English, inter alia, ‘the changing of money to its equivalent in the currency of another country (information extracted from Oxford Dictionaries on 24/02/2017 at https://en.oxforddictionaries.com/definition/exchange) and will be understood as such on account of its wide use throughout the relevant territory. Bearing in mind that the relevant services are ‘financial services’, this element is not distinctive for the services in question. To conclude, the verbal element ‘ARIANA’ will be attributed the most trade mark significance in the contested sign. This is not only because in signs consisting 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, but also because the remaining verbal and figurative elements have no impact or only a very limited impact, as explained above.

As a rule, there is an indication that two signs are similar when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

Visually, the signs coincide in the verbal element ‘ARIANA’. They differ in the depiction of this element and in the remaining verbal and figurative elements of the contested sign, as described in detail above. Bearing in mind the significance attributed to the differentiating elements in the contested sign, as described above, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in the different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘a/r/i/a/n/a’, present identically in both signs, and differs in the sound of the letters ‘e/x/c/h/a/n/g/e’ of the contested mark, which have no counterparts in the earlier sign. As regards the figurative element of the contested sign, even if perceived as a monogram of the letters ‘A’ and ‘E’, these letters are unlikely to be pronounced by consumers and will, therefore, have no impact on the aural comparison of the signs. The same applies to the arrangement of dots and lines in the contested mark. In view of the foregoing and bearing in mind the significance given to the word ‘exchange’, the signs are aurally similar to a high degree.

Conceptually, bearing in mind the abovementioned considerations on the concepts conveyed by the marks, there is a link in the shared element ‘ARIANA’. Given that, as explained above, the word ‘EXCHANGE’ cannot serve to indicate commercial origin, the overall degree of conceptual similarity is deemed to be high.

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.

5. Global assessment, other arguments and conclusion

In the present case, the contested services are identical to the opponent’s services.

As described in section c) above, the marks are visually similar to an average degree and aurally and conceptually highly similar because of the shared element ‘ARIANA’, which forms the entire earlier mark and occupies a distinctive and independent position in the contested sign.

Account should also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Therefore, even if the relevant public has a high degree of attention in relation to the relevant services, the differences between the signs, which are confined to descriptive or secondary elements of less importance, are not sufficient to outweigh their similarities based on the identical inclusion of the earlier mark in the contested sign so as to exclude a likelihood of confusion in this case.

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand or a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 983 053. It follows that the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Sam GYLLING

Anunciata SEVA MICO

Oana-Alina STURZA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.