OPPOSITION No B 2 968 249

Imfined (S.A.R.L), 123 Rue du Château, 92100, Boulogne-Billancourt, France (opponent), represented by Cabinet Le Guen Maillet, 3 Impasse de la Vigie Cs 71840, 35418, Saint-Malo Cedex, France (professional representative)

a g a i n s t

Banque Duval & Cie Ltd., 122 Leadenhall Street, The Leadenhall Building, London EC3V4AB, United Kingdom (applicant).

On 19/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 968 249 is partially upheld, namely for the following contested services:

Class  36: Financial and monetary services, and banking; money exchange agency services; buying and selling currency; provision of foreign currency; foreign monetary exchange advisory services; currency trading and exchange services; computerised financial services relating to foreign currency dealings; currency exchange rate quotations; conducting foreign exchange transactions for others; financial transactions relating to currency swaps; financial database services relating to foreign exchange; financial information in the nature of rates of exchange; financial information services relating to currencies; foreign currency services; trading in currencies; on-line real-time currency trading; swaps of currency rates; exchange brokerage services; currency trading; currency dealing; financial analysis; financial banking; capital investment; management of financial assets; financial transfers and transactions, and payment services; computerised financial data services; financial and investment consultancy services; financial portfolio management; research services relating to finance; computerised financial analysis; financial management relating to banking; conducting of financial transactions; banking and financing services; financial payment services; financial investment management services; financial information, data, advice and consultancy services; financial transaction services; financial management via the internet; exchange of financial operations (agencies for the -); financial information management and analysis services; computerised information services relating to financial business; electronic wallet services (payment services); financial services provided over the internet and telephone; financial services relating to the withdrawal and depositing of cash; financial services provided over the telephone and by means of a global computer network or the internet; processing of electronic payments; payment administration services; conducting cashless payment transactions; financial consultancy relating to the execution of cashless payment transactions; finance services; monetary affairs; financial analysis and consultancy; processing of payment transactions via the internet; financial trust management; trusteeship representatives; trusteeship; escrow services; trust advice; conducting of financial affairs on-line.

2. European Union trade mark application No 16 886 905 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 some of goods and services of European Union trade mark application No 16 886 905 namely against some of the goods and services in Classes 9 and 38 and all the services in Class 36. The opposition is based on European Union trade mark registrations Nos 16 249 104  , 15 641 004 ‘DUVAL CONSEIL’ and 15 635 501 ‘DUVAL GESTION.

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

By mail of 05/07/2018, the Office notified the applicant that its observations had been sent to the opponent. However, the said mail was returned as ‘unknown’ on 31/10/2018. Therefore, public notification was used and the relevant notice was made available on the Office’s website on 03/12/2018.

In accordance with Articles 56 and 59 EUTMDR and Decision No EX-05-6 of the President of the Office of 27 July 2005, public notifications will be deemed to have been notified one month after the day on which it was posted on the Office’s website. Therefore, the applicant must be considered to have been duly informed.

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 16 249 104.

a) The goods and services

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

Class 36: Real estate affairs and real-estate valuations, financial services and monetary affairs; insurance; rental, administration and management of real estate and business capital; leasing of real estate, rent collecting, rental (tertiary premises), leasing of real estate, real estate agencies; accommodation bureaux [apartments]; rental of offices; rental of apartments; housing agents, mutual funds and capital investments, financial services for the purchasing and financing of real estate, providing financial guarantees for real estate, management services for real estate investments, acquisition of real estate and business premises for others; evaluation (financial -) [insurance, banking, real estate]; financial analysis, hire-purchase financing, surety services, mutual funds and investment of funds, administration of shares, planning and providing of insurance for real estate; financial sponsorship; financing services for sponsoring businesses.

The contested goods and services are the following:

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

Class 36: Financial and monetary services, and banking; money exchange agency services; buying and selling currency; provision of foreign currency; foreign monetary exchange advisory services; currency trading and exchange services; computerised financial services relating to foreign currency dealings; currency exchange rate quotations; conducting foreign exchange transactions for others; financial transactions relating to currency swaps; financial database services relating to foreign exchange; financial information in the nature of rates of exchange; financial information services relating to currencies; foreign currency services; trading in currencies; on-line real-time currency trading; swaps of currency rates; exchange brokerage services; currency trading; currency dealing; financial analysis; financial banking; capital investment; management of financial assets; financial transfers and transactions, and payment services; computerised financial data services; financial and investment consultancy services; financial portfolio management; research services relating to finance; computerised financial analysis; financial management relating to banking; conducting of financial transactions; banking and financing services; financial payment services; financial investment management services; financial information, data, advice and consultancy services; financial transaction services; financial management via the internet; exchange of financial operations (agencies for the -); financial information management and analysis services; computerised information services relating to financial business; electronic wallet services (payment services); financial services provided over the internet and telephone; financial services relating to the withdrawal and depositing of cash; financial services provided over the telephone and by means of a global computer network or the internet; processing of electronic payments; payment administration services; conducting cashless payment transactions; financial consultancy relating to the execution of cashless payment transactions; finance services; monetary affairs; financial analysis and consultancy; processing of payment transactions via the internet; financial trust management; trusteeship representatives; trusteeship; escrow services; trust advice; conducting of financial affairs on-line.

Class 38: Electronic communication services for preparing financial information.

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 services in Class 36

All the contested services in this class, as listed above, are various types of financial services or consultancy and analysis related to such services. Since the opponent’s services in this class include the broad category of financial services and monetary affairs, it must be concluded that all the contested services are identical to the opponent’s services, either because they are contained in these services of opponent or because they are identically listed in both lists of services. It is to be noted here that while the applicant argues that the services are completely different since it mainly operates in the financial consulting sector and claims that opponent is engaged in real estate business in France and, therefore, consumers would not think they come from the same undertakings, the Opposition Division cannot endorse this approach. Comparison of goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison. (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

Contested goods in Class 9 and contested services in Class 38

The contested computer software relating to the handling of financial transactions is dissimilar to the opponent’s services in Class 36. Apart from the fundamental differences between goods and services, these contested goods and the opponent’s services originate from different undertakings (IT company vs financial service provider). Furthermore, they also have different distribution channels and target very different customers, and they are neither complementary nor in competition with one another. All these findings concerning dissimilarity is not changed by the mere fact the contested software is used for financial transactions as today all businesses are operated by using various types of software and customers would not normally presume an economic link between the provider of financial services and the producer of the software used.

The above conclusions also apply to the comparison of the contested electronic communication services for preparing financial information and the opponent’s services in Class 36 taking into account the fundamental differences between the undertakings providing these services and their different customers and distribution channels. Furthermore, they are neither complementary nor in competition with one another. Again, the mere fact that the contested services are used in relation to financial services does not alter the fact that customers would not normally presume an economic link between the provider of financial services and the provider of telecommunications services. These contested services are, therefore, dissimilar to the opponent’s services.

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 services found to be identical are directed both at the public at large and at business customers with specific professional knowledge or expertise.

The services at hand are specialised services that may have important financial consequences for their users, therefore, consumers’ level of attention would be rather 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

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. Both marks contain meaningful French words ‘Banque’ and ‘Groupe’ meaning ‘bank’ and ‘group’ which are non-distinctive in relation to the services since one indicates the most common type of financial institution and the other is a very general term referring to a group of companies. As the signs’ remaining verbal elements are distinctive in French, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public such as France.

Both signs contain the word ‘DUVAL’ which is claimed by the applicant to be a common French surname, frequently used in commerce for business entities. The applicant concludes that the distinctiveness of this element is much below average. However, the applicant did not provide any evidence to demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the name ‘DUVAL’. Under these circumstances, the applicant’s claim must be set aside and the Opposition Division finds that the word ‘DUVAL’ has an average degree of distinctiveness for the services in question as it does not describe or relate to them in any way.

The signs’ remaining verbal elements are non-distinctive as explained above. With regard to their figurative elements, while they are meaningless and have average distinctiveness, they still play a less important role than the signs’ verbal parts because verbal components usually have a stronger impact on the consumer than figurative ones since 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).

In the contested sign there is no element that would be visually more dominant while in the earlier mark it is the word ‘DUVAL’ and the device that have a dominant role overshadowing the word ‘GROUPE’.

Visually, the signs coincide in the word ‘DUVAL’ and differ in the remaining verbal and figurative elements and colours. Reference is made to the previous paragraphs with regard to the distinctiveness and role of the signs’ elements. Accordingly, it is the signs’ coinciding word that will have the most important impact on consumers and, consequently, they will recall the signs by their identical element ‘DUVAL’. Therefore, the signs must be considered to be similar, at least, to an average degree.

Aurally, reference is made to the previous paragraphs with regard to the distinctiveness and role of the signs’ elements. Given that the pronunciation of the signs coincides in a distinctive word and differs in their non-distinctive ones, they must be considered to be aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the French surname ‘DUVAL’, the signs are conceptually highly similar, given that their additional, differing, elements include non-distinctive words and meaningless figurative elements.

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, its distinctiveness must be seen as normal despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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 covered are from the same or economically linked undertakings.

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).

In the present case, the contested goods are dissimilar to the opponent’s services while some of the contested services are identical and some are dissimilar to them. The signs show an, at least, average degree of visual and a high degree of aural and conceptual similarities. The differences between them are limited to secondary or non-distinctive elements which cannot offset the impact of coincidences.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking public even considering the higher degree of attention of the public which is not sufficient to exclude confusion due to the important similarities between the signs. 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.

Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 249 104. It follows that the contested trade mark must be rejected for the services found to be identical 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.

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

- European Union trade mark registration No 15 641 004 ‘DUVAL CONSEIL’ invoked in relation to real estate affairs and real-estate valuations, financial and monetary affairs; insurance; rental, administration and management of real estate and business capital; leasing of real estate, rent collecting, rental (tertiary premises), leasing of real estate, real estate agencies; accommodation bureaux [apartments]; rental of offices; rental of apartments; housing agents, mutual funds and capital investments, financial services for the purchasing and financing of real estate, providing financial guarantees for real estate, management services for real estate investments, acquisition of real estate and business premises for others; evaluation (financial -) [insurance, banking, real estate]; financial analysis, hire-purchase financing, surety services, mutual funds and investment of funds, administration of shares, planning and providing of insurance for real estate; financial sponsorship; financing services for sponsoring businesses in Class 36, and

- European Union trade mark registration No 15 635 501 ‘DUVAL GESTION’ invoked in relation to real estate affairs and real-estate valuations, financial and monetary affairs; insurance; rental, administration and management of real estate and business capital; leasing of real estate, rent collecting, rental (tertiary premises), leasing of real estate, real estate agencies; accommodation bureaux [apartments]; rental of offices; rental of apartments; housing agents, mutual funds and capital investments, financial services for the purchasing and financing of real estate, providing financial guarantees for real estate, management services for real estate investments, acquisition of real estate and business premises for others; evaluation (financial -) [insurance, banking, real estate]; financial analysis, hire-purchase financing, surety services, mutual funds and investment of funds, administration of shares, planning and providing of insurance for real estate; financial sponsorship; financing services for sponsoring businesses in Class 36.

Since these marks essentially cover the same scope of services as the earlier mark taken into account for the assessment, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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

Zuzanna STOJKOWICZ

Ferenc GAZDA

Biruté SATAITE-GONZÁLEZ

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.