OPPOSITION No B 3 047 560

Drago Capital, S.L., Paseo de la Castellana, 30, 28046, Madrid, Spain (opponent), represented by Julio de Pablos Riba, Los Madrazo, 24. Bajo Izqda, 28014, Madrid, Spain (professional representative)

a g a i n s t

Dragon Capital (Cyprus) Limited, Poseidonos, 1, Ledra Business Centre, Egkomi, 2406, Nicosia, Cyprus (applicant), represented by UAB "Brainera", Savanorių pr. 217,

02300 Vilnius, Lithuania (professional representative).

On 05/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 560 is upheld for all the contested services.

2. European Union trade mark application No 17 604 604 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 604 604 . The opposition is based on European Union trade mark registration No 9 849 035 . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the European Union trade mark registration No 9 849 035 on which the opposition is based.

The date of filing of the contested application is 15/12/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 15/12/2012 to 14/12/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 16: Printed matter relating to investments and to investment trusts; Periodical publications featuring investments and investment trust information; Investment manuals, brochures and survey bulletins concerning investments and investment trusts.

Class 35: Advertising services relating to financial and real estate investment and investment funds; Business management and Business administration concerned with investments and investment funds; Electronic data storage relating to investment matters; Accountancy services relating to investment and investment funds; Auctioneering and holding of auctions in respect of investment assets and real estate; Processing of data appertaining to investment and investment funds; Business information appertaining to investments and investment funds.

Class 36: Insurance; Real estate services; Real estate agency services; Stockbroking; Provision of financial information; Capital investment services; Financing of investments; Asset acquisition for financial investment; Financial services connected with the sale of investment assets; Arrangement, administration, monitoring and management of investments and investment funds; Mortgage investment management; Investment trusteeship; Investment banking; Provision of investment information; Investment performance monitoring; Investment portfolio management services; Investment research; Nominee company services for investment; Recording of inter parties transactions in respect of investments; Real estate investment, management and leasing services, and advice in relation thereto; Investment research and analysis services; Consultancy services, counselling and advice in relation to investments and investment funds.

Class 45: Legal services.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 21/12/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 26/02/2019 to submit evidence of use of the earlier trade mark. This time limit was further extended till 26/04/2019. On 26/04/2019, within the time limit, the opponent submitted evidence of use.

The Opposition Division will also take into account the evidence submitted by the opponent on 22/10/2018 to substantiate its claim of reputation of the earlier mark.

The evidence to be taken into account is the following:

 Various press articles from online magazines and platforms such as Expansión, Interempresas, EjePrime (Diario de Información Económica del Sector Inmobilario), ABCdeSevilla, Idealista, El Mundo, Euro Property, El Economista, Negocios relating to the activities of the opponent mainly in the Spanish market and dated between 21/05/2008 and 22/03/2018.

 Extract from the opponent’s website regarding the ‘Euromoney Awards of Excellence’ of 2017 and 2018.

Place of use

The evidence shows that the place of use is mainly Spain. The articles submitted by the opponent refer mainly to the activities of the opponent in the Spanish market. Even if some evidence refers to the investments in the United States, they also inform about the activities of the opponent in the Spanish market, e.g. article ‘Drago Capital has chosen Miami to open its first office in the US’:

Since its launch, Drago Capital has launched and managed fourteen investments vehicles that include more than 1 200 properties in Spain and Portugal.

Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period. Although some articles do not bear the date or were published outside the relevant period, they refer to activities of the opponent within the relevant period of time, or very close to it. This can be inferred from other pieces of evidence, e.g. article ‘Spanish Drago Capital buys luxury homes in Miami’ dated 02/03/2018:

The real estate investment platform Drago Capital has decided to bet on the US market after almost two decades focused on Spain. After closing the purchases, such as Gran Via 32 or Castellana 200, together with international partners, Drago has signed its first operations in the United States.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

As trade marks have, inter alia, the function of operating as a link between the goods and services and the person responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Article 10(4) EUTMDR, it is not necessary for the mark to be affixed to the goods themselves (judgment of 12/12/2014, T-105/13 TrinkFix, EU:T:2014:1070, § 28-38) A representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

Even if, in principle, the use of the sign as a company name or trade name, is not, of itself, intended to distinguish goods or services, the use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (judgment of 13/04/2011, T-209/09, Alder Capital, EU:T:2011:169, § 55-56).

The use of a business, company or trade name can be regarded as use ‘in relation to goods’ where a party affixes the sign constituting its company name, trade name or shop name to the goods or even though the sign is not affixed, that party uses that sign in such a way that a link is established between the company, trade or shop name and the goods or services (judgment of 11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21-23). Provided that either of these two conditions is met, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (judgment of 30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 38).

Since a service is not a tangible entity, no sign can be physically affixed to it. The Opposition Division is mindful of the difficulty that a mark, which is also a business name, has in showing use as a mark rather than as a name. This is particularly problematic in the present case where the press often refers to ‘Drago Capital’ as a company. However, the articles make also reference to ‘Drago Capital’ as ‘the real estate investment platform’ (article ‘Spanish Drago buys luxury homes in Miami’), or the fund (article ‘Drago Capital has chosen Miami to open its first office in the US’ and ‘Three funds launch the largest Socimi with 1 150 Santander offices’),

Moreover, it has to be remembered that investments such as those described in the articles, as well as creation of Socimi, i.e. real estate investment trust, involve complex financial instruments and legal vehicles to minimize tax liability and maximize profit for partners. The partners are sophisticated institutional investors. The deals brokered are for millions of euros and involve specialist lawyers, accountants and bankers. All these people will obviously know in what areas of business the Drago Capital is engaged and will undoubtedly see the name ‘Drago Capital’ as both a service identifier and a business identifier, especially as the opponent has been awarded by the British magazine Euromoney with the ‘Euromoney Awards of Excellence’ as the mayor real estate investment and management company in Spain for two consecutive years 2017 and 2018.

Further, as regards the requirement of the use of the mark as registered, Article 18 EUTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, and regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. Strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

The Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (26/02/2006, T-194/03, Bainbridge, ECLI:EU:T:2006:65, § 50).

In the present case, the trade mark is referred to in the articles submitted by the opponent as ‘Drago Capital’ or ‘Drago’, and not as registered.

Even though ‘Drago’ or ‘Drago Capital’ are not exact reproductions of the registered mark, the nature of the evidence (i.e. press articles) justifies use of the verbal element of the trade mark only. Moreover, omitting the non-distinctive word ‘CAPITAL’ and the figurative element as in the registered trade mark cannot be considered to alter the distinctiveness of the mark. The mark as registered would anyhow be referred to as ‘DRAGO’ or ‘DRAGO CAPITAL’. This is because 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 and the public will more easily refer to the sign in question by their its verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

As regards the argument of the applicant that there is no evidence demonstrating that the opponent’s services were actually rendered to customers or end users, it is noted that the level of reported transactions in Spain and the volume of business they involve show that opponent’s partners are sophisticated investors. Examination of the evidence has revealed that the investors are not in the main individuals, but rather large entities. The term ‘private’ therefore refers to entities created by private capital as opposed to state or government owned entities:

… Drago Capital has been a partner of firms such as the Canadian PSP fund in its investments in Spain (‘Spanish Drago Capital buys luxury homes in Miami’)

(Drago Capital) … has joined forces with Murias Group for construction. (‘Drago and Murias invest 50 million to build the first shopping centre in Melilla’)

The group also currently manages several investment vehicles in the Iberian Peninsula. Drago mainly manages two types of vehicles, those of private capital and managed accounts and joint ventures, which are specific vehicles aimed at meeting the specific real estate investment needs of institutional investors. (‘Drago and Murias invest 50 million to build the first shopping centre in Melilla’)

Drago Capital and a Spanish private investor today signed the acquisition of the former headquarter of the Bank of Andalusia…. (‘Drago Capital closes the purchase of the Banco de Andalucía headquarters in Seville’)

Drago Capital, together with a Spanish private investor, has bought the Plaza Norte 2 cinemas….. (‘Drago Capital buys the cinemas of the Plaza Norte 2 mall in Madrid’).

Bearing the aforementioned in mind, the Opposition Division notes that, contrary to what the applicant claims, the evidence shows that the mark has been used in accordance with its function and as registered.

Extent of use

There is thus evidence of real estate investment, as well as the evidence of investors and financial resources for the opponent’s operations involving the name ‘Drago’ or ‘Drago Capital’ in Spain at various points in time during the relevant period. The figures referred to are very large and it is clear that wide press coverage of this name would undoubtedly assist in enabling the relevant public (institutional investors) in, at least, Spain to identify ‘Drago’ or ‘Drago Capital’ in connection with at least real estate investments.

The documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark at least for real estate investment in Class 36. As regards the remaining services in Class 36 on which the opposition is based, there is no need, at this point, to enter into a detailed analysis of whether the use has been proven or not.

The opponent did not submit any evidence that would demonstrate genuine use of the trade mark in relation to the goods and services in Classes 16, 35 and 45 on which the opposition is based.

Therefore, the Opposition Division will only consider the following services in its further examination of the opposition:

Class 36: Real estate investment.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The services

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

Class 36: Real estate investment.

The contested services are the following:

Class 36: Securities brokerage.

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

A brokerage firm, or simply brokerage, is a financial institution that facilitates the buying and selling of financial securities between a buyer and a seller. Brokerage firms serve a clientele of investors who trade public stocks and other securities, usually through the firm's agent stockbrokers.

Thus, the nature and purpose of the contested services is broadly speaking the same as that of the opponent’s real estate investment, namely– investing to gain profit. The services may be directed at the same customers, investors, and are to some extent in competition, since consumers may choose to place their investments either in securities or in real estate. Therefore, they are considered similar to at least a low degree.

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 similar are directed at business customers with specific professional knowledge or expertise.

The degree of attention is high, as the services can have important financial consequences and risks and might involve large sums of money.

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 earlier sign is a figurative mark in white and green colours. On the top is a figurative rectangular element of two shades of green with a white circle. Below, in two lines, are the words ‘DRAGO’ and ‘CAPITAL’ in upper case letters.

The contested sign is a figurative mark in green colours composed of the words ‘Dragon’ and ‘Capital’ in title case letters. In between is the figurative element of a dragon.

In Italian, the word ‘DRAGO’ of the earlier mark refers to a dragon, a mythical fire-spitting creature. Due to its similarity to this Italian word, also the word ‘DRAGON’ of the contested mark will be understood with the same meaning by the Italian part of the relevant public. The word ‘DRAGON’ will be also understood as having the same meaning by for example Spanish-, or English-speaking consumers. The device of a dragon in the contested sign will be perceived as such. The whole figurative element of the earlier mark is of undefined character. All these elements are not descriptive, allusive or otherwise weak for the relevant services and have a normal degree of distinctiveness. However, the element ‘CAPITAL’ contained in both signs is meaningful in some languages, such as English-speaking part of the relevant public, or very close to the equivalent words in other languages such as, is the Italian word ‘capitale’. Therefore, it will be understood by the relevant public as referring to (a large sum of) money. Bearing in mind that the relevant services are investment and financial services, this element is non-distinctive for these services.

The figurative element of the earlier mark is bigger and more eye-catching than its verbal elements. The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the first five letters of the first word and the whole second word, namely in ‘DRAGO* CAPITAL’. Therefore, they coincide in their distinctive first verbal element, which is highly similar (‘DRAGO’/’Dragon’) since in both marks it is depicted in rather standard typeface. 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 (or top down), which makes the part placed at the left of the sign (or on the top) (the initial part) the one that first catches the attention of the reader. Both signs use also similar colours. The signs differ in the last letter of the first word of the contested sign, namely a ‘N’. Furthermore, they differ in some secondary elements, such as the typeface of the letters and the arrangement of the elements.

They also differ in their distinctive figurative elements. However, 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).

Overall, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules on the different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛DRA-GO*-CA-PI-TAL’, present identically in both signs. The signs have the same number of syllables (five), sequence of vocals (A-O-A-I-A), rhythm and intonation. The pronunciation only differs in the sound of the letter ‛N’ at the end of the first word of the contested sign

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning of a dragon, at least by part of the public, and this is reinforced by the figurative element in the contested mark. Overall, the signs are conceptually identical for this part of the public.

For another part of the relevant public, the signs are conceptually not similar, since only the contested sign will be associated with the meaning of a dragon represented in the figurative element and the overlap in the non-distinctive word ‘CAPITAL’ has no impact.

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, 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

The services are similar to a low degree at least. The level of attention of the relevant public is high. The inherent distinctiveness of the earlier mark as a whole is average.

The signs are visually similar to an average degree and aurally highly similar due to the coincidence in ‘DRAGO* CAPITAL’. They are also conceptually identical for part of the relevant public because they both refer to the distinctive concept of a dragon. Moreover, the coinciding and first verbal element ‘DRAGO’ of the earlier mark has a stronger impact on consumers than its figurative component. Overall, the differences between the signs (typeface, figurative elements) are not sufficient to outweigh their similarities.

The relevant consumer who does not have both marks in front of him or her at the same time will be induced to believe that the services similar at least to a low degree come from the same or economically linked undertakings, due to the overall similarity between the signs.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 849 035. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.

The Opposition Division

Katarzyna ZANIECKA

Anna BAKALARZ

Begoña URIARTE VALIENTE

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.