OPPOSITION No B 2 878 406

Square, Inc., 1455 Market Street, Suite 600, San Francisco 94103, United States of America (opponent), represented by Mitscherlich, Patent - und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 Munich, Germany (professional representative)

a g a i n s t

Drivensquare, 42 rue Monge, 75005 Paris, France and Charly Gaillard, 192 rue du Faubourg Saint-Antoine, 75012 Paris, France (applicants), represented by Mapa Trademarks, Alameda San Mamés 43 bis, 3ª planta, dpto 1, 48010 Bilbao (Bizkaia), Spain (professional representative).

On 20/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 878 406 is partially upheld, namely for the following contested services:

Class 35: Business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services.

Class 36: Fundraising and sponsorship; provision of prepaid cards and tokens; insurance services; valuation services; real estate services; financial and monetary services, and banking; safe deposit services; insurance underwriting.

Class 38: Telecommunication services.

Class 41: Publishing; education, entertainment.

Class 42: Design services; IT services.

2. European Union trade mark application No 16 225 716 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 225 716 for the figurative mark , 16 225 716namely against all the services in Classes 35, 36, 38, 41 and 42. The opposition is based on, inter alia, European Union trade mark registration No 10 654 176 for the figurative mark , registered during the course of the present proceedings (namely on 25/01/2018), for goods and services in Classes 9, 35, 36 and 38. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 654 176.

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

Class 9: Computer and telecommunications hardware, software and peripherals; hardware and software for making and processing payment transactions with credit cards, debit cards, gift cards, cash, and other payment forms; financial software and accessories for mobile devices, cash registers, and other point of sale systems; e-commerce software to allow users to perform electronic business transactions; hardware and software that provides analytic tools for payment processing, to create, manage and optimize customer relationships and loyalty programs, and for business optimization; mobile communications devices, namely mobile telephones, mobile computers, laptop computers and personal digital assistants; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 35: Business management services and the provision of analytic tools related to credit card, debit card, gift card, cash, and in kind payment processing and tracking; business services, namely the creation and provision of customer relationship and loyalty program services and tools for businesses; business optimization services; advertising, marketing and promotional services, namely promoting the goods and services of others; facilitating the exchange of financial and business information between and among customers and businesses related to e-commerce transactions; cooperative advertising services, namely distribution of advertising materials for others; dissemination of advertising for others via public and private wireless networks for display on mobile devices; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; advertising; business management; business administration; office functions.

Class 36: Services for making and processing payment transactions with credit cards, debit cards, gift cards, cash, and other forms of payments; financial services, namely the provision of analytical tools to facilitate payment processing; electronic credit card transactions; electronic debit transactions; electronic cash transactions; merchant services, namely, payment transaction processing services; payment processing services, namely, credit card, debit card and gift card transaction processing services; financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; insurance; financial affairs; monetary affairs; real estate affairs; services for reconciling, namely processing payment transactions based on credit cards, debit cards, gift cards, and other forms of payment.

Class 38: Providing electronic transmission of credit card, debit card, and gift card transaction data and related information, merchant-customer communications, and advertising and promotional materials; providing electronic transmission of financial and business information between and among customers and businesses; electronic transmission of e-commerce transaction data and information; electronic transmission of advertising programs and media advertising communications via digital communications networks; telecommunications.

The contested services are the following:

Class 35: Business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services.

Class 36: Fundraising and sponsorship; provision of prepaid cards and tokens; insurance services; valuation services; real estate services; financial and monetary services, and banking; safe deposit services; insurance underwriting.

Class 38: Telecommunication services.

Class 41: Publishing and reporting; education, entertainment and sports.

Class 42: Design services; IT services; science and technology services; testing, authentication and quality control.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is also to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested services in Class 35

The contested advertising; business management and administrative services are identically contained in both lists of services (including synonyms).

The contested marketing and promotional services are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested business assistance services; business analysis and research services cannot be clearly separated from the broad categories of the opponent’s business management and business administration services. These categories of services overlap significantly and are, therefore, considered identical.

The contested business information services include, as a broader category, the opponent’s facilitating the exchange of financial and business information between and among customers and businesses related to e-commerce transactions. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 36

The contested financial and monetary services; real estate services; insurance services are identically contained in both lists of services (including synonyms).

The contested banking cannot be clearly separated from the broad categories of the opponent’s financial affairs; monetary affairs. These categories of services overlap significantly and are, therefore, considered identical.

The contested insurance underwriting is included in the broad category of the opponent’s insurance. Therefore, they are identical.

The contested provision of prepaid cards and tokens cannot be clearly separated from the broad category of the opponent’s services for making and processing payment transactions with credit cards, debit cards, gift cards, cash, and other forms of payments, as they are all related to financial operations and payments, through different forms, which may include prepaid cards and tokens. These categories of services overlap and are, therefore, considered identical.

The contested fundraising and sponsorship; valuation services are included in, or overlap with, the broad category of the opponent’s financial affairs. Therefore, they are identical.

The contested safe deposit services are not, by definition, financial or monetary affairs. One may store money, documents or other valuables in safe deposit boxes. However, it is usual that safe deposit box services are also provided by financial institutions like banks, which are considered a rather secure place in general and dispose of secure vaults. Therefore, the applicant’s safe deposit services and the opponent’s financial affairs may coincide in distribution channels, provider and relevant public. Therefore, they are considered to be similar.

Contested services in Class 38

The contested telecommunication services are identically contained in both lists of services.

Contested services in Class 41

The contested publishing; education are similar to the opponent’s computer software in Class 9, as the latter also includes recorded software, which may have a variety of contents and be intended for, inter alia, training and educational purposes. Therefore, these goods and services may have the same ultimate purpose. In addition, they often originate from the same undertakings and target the same consumers.

The contested entertainment are lowly similar to the opponent’s computer software in Class 9, as the latter also includes games software. It follows that these goods and services may be complementary. In addition, they often originate from the same undertakings and target the same consumers.

The contested sports services consist of the organization and provision of sporting activities, which in turn consist of activities involving psychical exertion and skills that are often governed by a set of rules or customs and can be undertaken competitively. The contested reporting services consist of the activity of collecting information and transforming it into a format that can then be made available in a variety of ways. These contested services have no relevant point of contact with the opponent’s goods and services in Classes 9, 35, 36 and 38. They differ clearly in their purposes and they do not share the same nature. The providers of the contested services are normally not involved in the production/provision of any of the opponent’s goods and services. It follows that these goods and services are manufactured/provided by different undertakings. In addition, their target publics are also different. Moreover, they are not in competition or complementary. Therefore, they are considered dissimilar.

Contested services in Class 42

The contested IT services are similar to the opponent’s computer software in Class 9. These goods and services usually coincide in producer and relevant public. Furthermore they are complementary.

Likewise, the contested design services are also similar to the opponent’s computer software in Class 9, for the aforementioned reasons, as the broad category of the contested services may logically include design services rendered in the field of IT and computer programs.

The contested science and technology services are various scientific and technology-related activities which are concerned with research and experimental development and contribute to the generation, dissemination and application of scientific and technical knowledge. These services include mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers in the fields of science, technology and industry, etc. Similarly, the contested testing, authentication and quality control services consist of specialised technological services, usually performed by engineers or other experts in the corresponding technical field, and consist of the expert examination, analysis and testing of the correct functioning of different apparatus, machinery, industrial processes, etc. These contested services have no relevant point of contact with the opponent’s goods and services in Classes 9, 35, 36 and 38. They differ clearly in their purposes and they do not share the same nature. The providers of the contested services are, as explained above, experts in technological and industrial fields which are normally not involved in the production/provision of any of the opponent’s goods and services. It follows that these goods and services are manufactured/provided by different undertakings. In addition, their target publics are also different. Moreover, they are not in competition or complementary. Therefore, they are considered dissimilar.

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, the goods and services found to be identical or similar (to different degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness will tend to be high in relation to some services (e.g., the relevant services in Classes 35 and 36), whereas it may vary from average to high in relation to others (e.g., the relevant services in Classes 38, 41 and 42), depending on the price, specialised nature, or terms and conditions of the services purchased.

c) 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 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 of the marks are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, as it finds that the likelihood of confusion for this part of the public is higher.

Both signs are figurative marks. The earlier mark is composed of the word ‘Square’, written in rather standard title case grey letters, placed next to two squares, one inside the other. The contested sign contains the words ‘DRIVEN SQUARE’, written over two lines in upper case letters; the lettering of the contested sign is also manifestly common, with the exception of the letters ‘D’ and ‘Q’, which display a certain degree of stylisation. Nonetheless, it is considered that said degree of stylisation is not of such nature as to obstruct the immediate recognition of these letters, and of the verbal elements as a whole, by the relevant English-speaking public.

The coinciding element ‘Square’ of the marks will be understood by the relevant public as ‘a shape with four sides that are all the same length and four corners that are all right angles’ or ‘a flat open place [in a town or city], often in the shape of a square’ (information extracted from Collins Dictionary on 13/06/2018 at https://www.collinsdictionary.com/dictionary/english/square). The applicant argues that this element has a low degree of distinctiveness, claiming that the opponent himself has held such a position in another opposition proceeding.

The Opposition Division notes that, in its examination, it is not bound by the claims of the parties made in other proceedings. As regards the reasons invoked for the alleged weakness of the term ‘square’ (‘the shape of credit/debit cards which would be square’), they are immaterial in the present proceeding, inter alia, because the only relevant goods are computer software of the earlier mark, in relation to which the work ‘square’ is normally distinctive, as it conveys no relevant information about any of their essential characteristics. Therefore, as the word ‘Square’ is not descriptive, allusive or otherwise weak for the relevant goods and services, it is considered to enjoy an average degree of inherent distinctiveness in relation to all goods and services.

The word ‘DRIVEN’ of the contested sign will be perceived as the past participle of the verb ‘to drive’ or as an adjective: ‘determined, energetic’ (information extracted from Collins Dictionary on 13/06/2018 at https://www.collinsdictionary.com/dictionary/english/driven_1). Whichever the interpretation made by the public, the term is normally distinctive in relation to all the relevant goods and services, as it does not describe or even allude to their essential characteristics. It must also be noted that this term is placed in front of the noun ‘Square’; hence, considering the grammatical rules of the English language, the word ‘DRIVEN’ is somehow qualifying the noun it precedes and, consequently, will be perceived as an element which is characterising the noun ‘Square’.

The marks have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the word ‘Square’, which constitutes the only verbal element of the earlier mark, is reproduced and plays an independent and distinctive role in the contested sign. The signs differ in their figurative components and overall stylisation, and in the additional verbal element present in the contested sign, ‘DRIVEN’.

It must be noted that 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Consequently, the public will pay less attention to the stylisation and the figurative elements of the signs and will focus more on their verbal elements, as it will instantly perceive them as the badge of origin of the respective goods and services.

Furthermore, the coinciding word ‘Square’ is inherently distinctive in relation to the relevant goods and services, as explained above.

Therefore, considering all the above and the coincidence in the normally distinctive and independent element ‘Square’, the marks are visually similar to an average degree.

Aurally, the second word of the contested sign, ‘Square’, is aurally identical to the earlier mark as a whole. The signs differ in the sound of the additional word contained in the contested sign, ‘Driven’. Nonetheless, as referred above, the word ‘Driven’ is, due to its grammatical function, somehow characterising the noun it precedes.

Therefore, considering the above-mentioned principles and the normal distinctive capacity of the word ‘Square’ in relation to all the goods and services at issue, it is concluded that there is an average degree of aural similarity between the marks.

Conceptually, the public in the relevant territory will perceive the word ‘Square’ contained in both signs, and the word ‘Driven’ of the contested sign, in accordance with the meanings referred to above. The figurative elements of the contested sign consist solely of the stylisation of its verbal elements which, as explained above, has less impact as an indicator of commercial origin then the verbal elements of marks. The same conclusion is valid in relation to the earlier mark, where the figurative device to the left of the verbal element will be perceived as an essentially ornamental feature of the sign. Furthermore, owing to their square shape, this device and the letter ‘Q’ of the contested sign, both contribute to reinforce the semantic content of the word ‘Square’, present in both signs.

Therefore, the marks are conceptually similar to an average degree, as they share the concept of ‘Square’, which is inherently distinctive in relation to all the goods and services at issue and plays an independent role in both signs.

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.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 Enclosure A2: A three-page extract from the website of the opponent (www.squareup.com) containing information about the opponent’s business (dated from 12/12/2017).

 Enclosure A3: Company information overview about the company Square, Inc., including information about board changes, results of the company in 2016 and first quarter of 2017, obtained from the website www.bloomberg.com (dated from 31/03/2017).

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness and recognition on the market, as a result of its use.

Indeed, the evidence shows some use of the trade mark on websites but does not provide any indication of the extent of recognition by the relevant public. Both documents are dated (extracted) after the filing of the contested trade mark. Although such evidence cannot be completely ignored, because they refers to past events, it does not demonstrate that a reputation existed at the time of filing (or on the date of priority) of the contested trade mark.

Furthermore, and more importantly, despite showing some use of the earlier trade mark, the evidence provides no or little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade marks or the extent to which the trade marks have been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent has failed to demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

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 goods and 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 contested services are partly identical or similar and partly dissimilar to the opponent’s goods and services, and they target the public at large and business consumers with an average to higher than average degree of attention.

The earlier mark has an average distinctive character.

The signs under comparison are visually, aurally and conceptually similar to an average degree on account of their common element ‘Square’, which constitutes the only verbal element of the earlier mark and is fully included and clearly perceptible as an independent element in the contested sign. The signs differ essentially in the additional word ‘DRIVEN’ of the contested sign, as well as in their stylisation and figurative components.

As mentioned above in section c), where a trade mark is composed of verbal and figurative elements, the verbal elements usually have a stronger impact on the consumer than the figurative components. This is justified by the fact that consumers will more easily retain in their memory and refer to the sign in question by its name, rather than by describing the figurative elements of the trade mark in question.

Therefore, the overall arrangement and figurative components of the marks at issue will be perceived by the public as graphic means which perform an essentially ornamental function vis-à-vis their verbal elements. In addition, the square devices present in both signs further reinforce the semantic connection to the word ‘Square’, also present in both of them. Consequently, consumers will pay more attention to the verbal elements of the marks, as they will attach more trade mark significance to them.

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 v Puma, EU:C:1997:528, § 22 et seq.).

The signs differ essentially in the initial word of the contested sign, ‘DRIVEN’. As the applicant correctly points out, consumers normally focus more on the beginnings of trade marks. Nonetheless, regarding the importance of the beginning of the signs, it must be recalled that that argument cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the case must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details.

Therefore, in present case it is decisive that the coinciding element ‘Square’ is a separate and clearly identifiable element in both signs, and plays an independent distinctive role therein (06/10/2005, C‑120/04, Medion, EU:C:2005:594, § 30), since it is fully distinctive in relation to all the relevant goods and services. Furthermore, as previously explained, due to its grammatical function, the word ‘DRIVEN’ of the contested sign is somehow characterising the noun ‘SQUARE’ which follows it and, consequently, it is semantically subordinate to it.

Consequently, given the reproduction of the verbal element ‘Square’ in the contested sign, it is likely that the relevant public will, at least, associate the contested sign with the earlier mark in relation to the identical and similar services at issue.

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Indeed, in the present case, consumers may believe that the contested trade mark is a new brand line or a recent development under the opponent’s mark, because it is a common market practice to identify a new version of brands through the addition of a new element, used in combination with the main, ‘house’ mark.

In other words, consumers may confuse the origins of the services at issue by assuming that they come from the same undertaking or from economically‑linked undertakings.

Although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that they have kept in mind. 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In the present case, the relevant services will often imply a high degree of attention on the part of the relevant public. However, even consumers with 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).

Therefore, on an overall assessment, based on the average degree of inherent distinctiveness of the earlier mark, in the absence of any additional components that would remove the overall impressions produced by the signs, it is concluded that the differences between the signs are not capable of enabling the relevant consumers, be it the general public or business customers, to safely distinguish between the signs. When encountering the conflicting signs in the context of identical or similar services, consumers can confuse the signs, even where their degree of attention is high.

The Opposition Division has also taken into account the principle that a likelihood of confusion implies some interdependence among the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, it is considered that the similarity between the signs is sufficiently high to lead to a likelihood of confusion between them, even for the services which were found to be similar only to a low degree.

The applicant refers to previous decisions of the Office to support its arguments. 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 case referred to by the applicant is not relevant to the present proceedings. Indeed, the applicant refers to the Judgment of the General Court of 22/06/2010 in Case nº T-490/08, where the object of the comparison were marks which contained common descriptive elements (the verbal elements ‘Capital Markets’). This is evidently not comparable to the present case, where the common element ‘Square’ has been found normally distinctive in relation to all the relevant goods and services, as explained above. Therefore, the corresponding conclusions cannot be transposed to the present case and this claim of the applicant must be dismissed as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 No 10 654 176. 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 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

1. European Union trade mark registration No 8 970 584 for the word mark ‘SQUARE’, designating goods and services in Classes 9, 36 and 38, and

2. International trade mark No 1 032 395 designating Benelux, Germany, Spain, Finland, United Kingdom and Italy for the word mark ‘SQUARE’, designating goods and services in Classes 9, 35 and 38.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the services are obviously not identical.

Given that the opposition is only partially successful as far it is based on Article 8(1) EUTMR, it is now necessary to examine the remaining ground, namely Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent has invoked this ground in relation to the following earlier marks:

- EUTM No 8 970 584 for the word mark ‘SQUARE’

- EUTM No 10 654 176 for the figurative mark and

- International trade mark No 1 032 395 designating Benelux, Germany, Spain, Finland, United Kingdom and Italy, for the word mark ‘SQUARE’.

The opponent is claiming reputation of the mentioned marks in the European Union.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Indeed, despite showing some minimal use of the earlier trade marks, the evidence submitted provides no or little information on the extent of such use and on the degree of recognition of the marks on the market.

Therefore, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks have acquired a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence that could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

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

Ewelina SLIWINSKA

Gueorgui IVANOV

Monika CISZEWSKA

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.