OPPOSITION No B 2 928 631

Spirit, 32 boulevard Victor Hugo, 92110 Clichy, France (opponent), represented by Cabinet Flechner, 22 avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Collector Bank AB, Östra Hamngatan 24, 411 09 Göteborg, Sweden (applicant), represented by Ports Group AB, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative).

On 27/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 928 631 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods and services of European Union trade mark application No 16 580 102 for the word mark ‘COLLECTOR SPIRA’, namely against some of the goods in class 9 and all the services in class 36. The opposition is based on French trade mark registration No 4 109 786 for the word mark ‘SPIRAL’. 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 goods and services

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

Class 36: Insurance, financial affairs; monetary affairs; real estate affairs; financial appraisals (insurance, bank, finance), financial management, real estate management, financing services, capital investment, investment of funds.

Class 37: Construction, construction information, supervision (directing) of construction works, demolition of buildings, mounting of frameworks, waterproofing of buildings, building insulation, rental of bulldozers, rental of cranes (constructions equipment), rental of construction equipment, rental of excavators, masonry, plastering, plumbing, papering, chimney sweeping, repair information, roofing services.

Class 42: Architecture, land surveying, construction advisory services, construction drafting, design of interior décor, material testing, technical project studies, expertises (engineers works), land surveying, licensing of intellectual property, energy auditing; urban planning.

The contested goods and services are the following:

Class 9: Computer software relating to the handling of financial transactions.

Class 36: Banking; telebanking; private banking; computerised banking services; electronic banking services; personal financial banking services; banking and financing services; online business banking services; banking services relating to the transfer of funds from accounts; financial services relating to savings; financial portfolio management; securities exchange services; securities investment services; computerised securities brokerage services; information services relating to securities; securities trading services; trading of securities options; valuation of portfolios of securities; management of portfolios comprising securities; advisory services relating to international securities; provision of financial securities; financial services relating to securities; management of transferable securities; recording the transfer of securities; trading of securities and securities index futures in overseas markets; financial investment in the field of securities; providing information on trading in securities; securities brokerage and trading services; securities investment services for personal investors; provision of computerised information relating to securities; automated securities trade execution services; brokerage of shares and other securities; financial services related to the sale and purchase of securities; providing stock market information; organisation of trading markets for financial services; stock exchanges for dealing in shares and other financial securities; organization of stock exchanges for the benefit of the trade of stocks and other financial values; share management; stock market services; personal equity plan investment; mutual funds; mutual fund investment; stock brokerage services; trust investment services; brokerage services for stocks and bonds; share services; share price information services; brokerage services relating to mutual funds; share planning services; stock exchange price quotations; share portfolio management; stock investment management; provision of information relating to stock exchange prices; financial services relating to stocks; financial management of stocks; computerised information services for stocks; financial management of share accounts; personal equity plan management; financial database services relating to stocks; stock trading; stocks and shares information services; financial services related to dealing in shares; provision of financial information relating to shares; bank account services; banking services relating to the deposit of money; financial banking services for the withdrawal of money; financial banking services for the deposit of money; electronic banking via a global computer network [internet banking]; portfolio management; securities lending; financial advisory services relating to securities; management of listed securities; financial underwriting and securities issuance (investment banking); establishment of portfolios of securities (services for the -); organisation of trading markets for derivative instruments; preparation of financial analyses relating to securities; stock exchange services; share exchange schemes; administration of shares; registration of shares; advisory services relating to mutual funds; private equity fund investment services; financial management of shares in other companies.

As a preliminary remark, it is 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.

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 computer software relating to the handling of financial transactions shares some similarities to the opponent’s financial affairs in Class 36. It is common that companies that provide financial services also develop their own computer software for the better use of their services. They can have the same producers and end users. Moreover, they are complementary. Therefore, they are similar.

Contested services in Class 36

All contested services in this Class are ‘financial services’, and thus they are all included in, or at least overlap with, the broader category of the opponent’s financial affairs. Therefore, they are 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 goods and services found to be identical or similar are directed at both, the public at large and 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 and, therefore, 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). The same applies to the goods in Class 9, since they refer to the handling of financial transactions.

3. The signs

SPIRAL	COLLECTOR SPIRA
Earlier trade mark	Contested sign

The relevant territory is France.

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 ‘SPIRAL’ will be understood by the relevant public, as it is as an adjective meaning ‘that has the form of a spiral’ - ‘spirale’ in French- (information extracted from Larousse on 10/08/2018 at www.larousse.fr). This element has no clear meaning in relation to the services in question in Class 36 and is, therefore, distinctive.

The element ‘COLLECTOR’ of the contested sign is meaningless according to the official French dictionary (see Académie française at www.academie.atilf.fr). However, as the opponent claims, this word appears in some dictionaries as a noun taken from English (meaning ‘collector’s item’, being in French ‘pièce de collection’) with the meaning ‘object sought by collectors (‘collectionneurs’ in French) for its originality or rarity' (information extracted from Larousse on 10/08/2018 at www.larousse.fr). The opponent claims that this element would convey a laudatory meaning because it will be perceived as an indication that the goods and services are of a high quality. However, bearing in mind that the relevant goods in Class 9 refer to computer software and the relevant services in Class 36 refer to financial, investment or baking services in general, this element has no direct relation to them and, therefore, it is distinctive in any case.

The element ‘SPIRA’ of the contested sign is meaningless and, therefore, distinctive.

Contrary to the opponent’s opinion, as it is a word mark, the contested sign has no elements that could be considered more dominant (visually eye-catching) than others.

Visually, the signs coincide in the sequence of letters ‘SPIRA*’, which constitutes almost the entire earlier mark, but it is the second element of the contested sign. However, they differ in the additional letter ‘L’, placed at the end of the earlier mark, and in the first element of the contested sign, ‘COLLECTOR’. Furthermore, the signs have different structures and lengths, namely one word of six letters the earlier mark versus two elements of a total of 14 letters the contested sign.

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 the present case, due to its length (nine letters) and position (the first element), the element ‘COLLECTOR’ plays an important role in the contested sign and its presence cannot be overlooked.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /SPIRA/, present identically in both signs, although in different positions, as explained above. Contrary to the opponent’s argument, the letter ‘L’ placed at the end of the earlier mark will be pronounced by the public in the relevant territory according to the phonetic rules of the language in question. Therefore, the pronunciation of the sings differs in the sound of the letter ‘L’ at the end of the earlier mark, which has no counterpart in the contested sign. The signs also differ in the pronunciation of the first element ‘COLLECTOR’ of the contested sign, which has no counterpart in the earlier sign and whose position and length make a notable difference in the overall pronunciation of the contested sign.

To that extent, the signs are phonetically similar to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

It cannot be excluded that a part of the public will understand the word ‘COLLECTOR’ of the contested sign with the meaning explained above. In this scenario, the signs have different concepts (i.e. the semantic content conveyed by the earlier mark ‘SPIRAL’ and the element ‘COLLECTOR’ of the contested sign) and are, therefore, conceptually dissimilar.

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 has no clear 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

The goods and services have been found partly identical and partly similar. They are directed at the public at large and at business customers with a high degree of attention. The earlier sign has a normal degree of distinctiveness.

The signs are visually and phonetically similar to a low degree. As explained above, the signs differ in their structures and lengths. Moreover, the presence of the first element, ‘COLLECTOR’, has a significant impact within the contested sign. From a conceptual perspective, the signs are either dissimilar or not conceptually similar.

According to case‑law, the conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs concerned (12/01/2006, C‑361/04 P, Picaro, EU:C:2006:25, § 20). For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (14/10/2003, T 292/01, Bass, EU:T:2003:264, § 54). This is particularly true in the present case, as the earlier mark has a clear and specific semantic content for the relevant public.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). However, in the present case, the identity or similarity found for the goods and services in conflict cannot compensate the low degree of similarity between the signs.

It must also be taken into account the fact that the relevant public will pay a high degree of attention for the purchase/provision of the goods and services in question and thus, the likelihood of confusion will be reduced due to this fact. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vita VORONECKAITE

Nieves GONZALEZ VALLES

Benoît VLEMINCQ

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.