OPPOSITION No B 3 060 795

Allianz SE, Königinstr. 28, 80802 Munich, Germany (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Chaintech Oü, Harjumaa, Tallinn, Pallasti tn 40-3, 11413 Tallinn, Estonia (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas, Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 27/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 795 is upheld for all the contested services.

2. European Union trade mark application No 17 890 820 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 17 890 820 for the word mark ‘ORCA Alliance’. The opposition is based on, inter alia, international trade mark registration No 1 402 877 designating the European Union for the word mark ‘Allianz’. The opponent invoked Article 8(1)(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 international trade mark registration No 1 402 877.

a) The services

The services on which the opposition is based are, inter alia, the following:

Class 36: Insurance underwriting; real estate services; pawnbrokerage; issuing of prepaid cards and tokens; safe deposit services; financial and monetary services, and banking; fundraising and sponsorship; valuation services; rental, hire and leasing in connection with the aforesaid services, included in the class; advice, consultancy and information on the aforesaid services, included in this class; brokerage services.

The contested services are the following:

Class 36: Automated payment services; automated funds transfer services; banking services relating to the transfer of funds from accounts; electronic payment services; financial payment services; financial and monetary transaction services; electronic wallet services (payment services); electronic funds transfer; money exchange and transfer; arranging monetary transfers; monetary transfer; payment processing; processing of payment transactions via the internet; financial information, data, advice and consultancy services; personal financial planning services; financial information; financial information and evaluations; providing financial information; collection of financial information; financial information retrieval services; financial analysis and research services; financial advice relating to investment; financial advice; provision of information relating to financial services; provision of computerised financial information; computerised financial information services; computerised financial data services; computerised financial analysis; advisory services relating to money management; advisory services relating to investments and finance; financial services provided over the internet and telephone; financial services provided by electronic means; providing information and analysis via the internet in the field of financial investments; bank account information services; virtual currency transfer services.

All the contested services are identical to the opponent’s financial and monetary services, and banking, either because the opponent’s services include, are included in, or overlap with, the contested 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.

The services found to be identical target the public at large and the professional public, which is reasonably well informed and reasonably observant and circumspect. Since these services may have important financial consequences for their users, 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).

c) The signs

Allianz	ORCA Alliance
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public (e.g. Portuguese- and Spanish-speaking part of the public) for which the coinciding words ‘Allianz’ (German) and ‘Alliance’ (English or French) will be perceived as foreign words, but conveying the same conceptual meaning (due to their similarity with the equivalent terms in the respective languages, ‘alianza’ and ‘aliança’). See further explanations below.

The earlier mark’s German word ‘Allianz’ does not exist in the relevant languages (Portuguese and Spanish). However, as explained above, it will likely be associated with the concept of the English word ‘Alliance’ (because of its similarity to the respective equivalents in these languages), inter alia, as ‘the act of allying or state of being allied; union; confederation; a formal agreement or pact, especially a military one, between two or more countries to achieve a particular aim; the countries involved in such an agreement’ (information extracted from the Collins Dictionary on 15/01/2020 at https://www.collinsdictionary.com/dictionary/english/alliance). The applicant states that this word ‘is not particularly distinctive’ since it is widely used as a reference to a union or association and nowadays it is usual to provide services such as the ones in question by means of allied legal entities. However, although it could eventually allude to a union or confederation (normally countries, military forces etc. and not companies), the Opposition Division concurs with the findings of the Board of Appeal in case R 1518/2010‑4 – VALLIANCE REAL ESTATE / ALLIANZ § 21, on 17/06/2011 in which it was concluded that the specific meaning of the word ‘Allianz’ per se in relation to the services in Class 36 is unclear (for the German public). Moreover, taking into account the relevant public on which the analysis is focused, although the term ‘Allianz’ conveys a concept, it will be perceived as a foreign word and a multistep thought process is necessary to relate the meaning to the specific services in a descriptive manner. Therefore, it is distinctive to an average degree.

The word ‘ORCA’ of the contested sign, which exists as such in the relevant territories, means ‘killer whale’, that is, a large toothed whale with distinctive black-and-white markings and, therefore, it might be perceived as such. However, taking into account, inter alia, the services in question, the rarity of this animal in relation to them, as well as the characteristics of the verbal element (e.g. rather short, formed by four letters), it also seems plausible that it might be perceived as an abbreviation of an unknown word or words (e.g. acronym) or as simply a combination of letters, without any particular meaning. Either way, since the word ‘ORCA’ is not descriptive, allusive or otherwise weak for the relevant services, it has an average level of distinctiveness. The English/French word ‘Alliance’ will also likely be perceived by the relevant public as a foreign version of the equivalent words in the respective languages and, therefore, with the meaning described above in relation to the earlier mark (i.e. union, confederation). Consequently, as the same considerations apply here, this word is distinctive to an average degree. Contrary to the applicant’s allegations, the relevant public will not perceive that these verbal elements ‘ORCA Alliance’ form together a new meaning or expression different from the sum of their individual meanings.

The conflicting signs are word marks (‘Allianz’ and ‘ORCA Alliance’), therefore the words as such are protected. They have, by definition, no dominant components. Therefore, the fact that ‘ORCA’ is registered in upper-case letters does not make it more important or dominant in the contested sign as the applicant claims.

However, it is true that the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign. In any event, this consideration cannot undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a trade mark as a whole and does not analyse its various details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52).

Visually, the signs coincide in the string of letters ‘Allian’ and differ in the last letter, ‘z’, of the earlier mark’s only word versus the letters ‘ce’ of the contested sign’s second word (both are distinctive). They differ in the additional word of the contested sign, ‘ORCA’, which is also distinctive, and has a stronger impact due to its initial position.

Therefore, the signs are visually similar to a below-average degree.

Aurally, the earlier mark is pronounced as /ALIANZ/ and the contested sign as /ORCA ALIANZE/. Therefore, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of /ALIANZ/ (differing in the sound of the last letter ‘e’ of the word ‘Alliance’ of the contested sign). It differs in the sound /ORCA/ of the contested sign, which constitutes its first word and has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the public perceiving the meaning of the additional word ‘ORCA’ of the contested sign, the signs are similar to an average degree inasmuch as they partially coincide in the concept of the coinciding distinctive words ‘Allianz/Alliance’, seen as foreign words. For the part of the public only attributing a meaning to these coinciding words, the signs are conceptually similar to a high degree.

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 in the field of insurance, financial and real estate services in Class 36. 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 as explained above. Therefore, the distinctiveness of the earlier mark must be seen at least as normal.

e) Global assessment, other arguments and conclusion

The services are identical and they target the public at large and the professional public, whose degree of attention is quite high. However, even consumers who pay a higher 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). The distinctiveness of the earlier marks is at least normal.

The signs are visually similar to a below-average degree, aurally similar to an average degree and conceptually either similar to an average degree or high degree (depending on whether the additional element ‘ORCA’ conveys a meaning or not). The similarity results from the coincidences in the second word of the contested sign, ‘Alliance’, which reproduces in large part the earlier mark, ‘Allianz’ (both elements are distinctive). The differences in these words, namely their endings ‘z’ v ‘ce’, as well as the additional word ‘ORCA’ of the contested sign, despite constituting its first element (on which consumers normally tend to focus), are not sufficient to safely exclude a likelihood of confusion between the signs. Furthermore, for part of the public the word ‘ORCA’ might not convey any specific meaning and, therefore, there is not a differentiating concept that sets the marks apart.

Consequently, taking into account that the average consumer only rarely has the chance to make a direct comparison between the marks, it must be concluded that the differences between the signs are not sufficient to offset the similarity between them, even with an increased level of attention. For instance, given that the words ‘Allianz’ and ‘Alliance’ (German and English/French, respectively) are understood, but perceived as foreign words, it is very likely that in the imperfect recollection of the consumers the differences in their endings can go unnoticed (since the specific spelling of these words is not necessarily known) and/or they might believe that both signs are composed of the same term.

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/services covered are from the same undertaking or economically linked undertakings. In the present case, although the relevant public may detect the additional element of the contested sign, the likelihood that the public may associate the signs with each other is very likely.

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). In the present case, the identity between the services is sufficient to outweigh the lesser overall impression created by the signs.

In its observations, the applicant argues that the earlier trade mark is not particularly distinctive given that it designates the characteristics of the services and that many trade marks include the word ‘Alliance’. In support of its argument the applicant refers to several trade mark registrations in the European Union territory and mentions two previous decisions of the Office stating that the word ‘Alliance’ is not particularly distinctive.

Firstly, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. To prove use or these trade mark registrations, in its observations dated 08/07/2019, the applicant only indicated links to different websites. In accordance with Article 95(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. That provision relates, inter alia, to the factual basis of decisions by EUIPO, that is, the facts and evidence on which those decisions can be based. It is not for the EUIPO decision-taking bodies to search the website for the relevant data to prove the alleged use of the trade mark registrations (04/10/2018, T‑820/17, Alfrisa (fig.) / Frinsa F (fig.), EU:T:2018:647, § 61-63). It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘Alliance’. Under these circumstances, the applicant’s claims must be set aside.

As regards the previous cases referred to, it must be taken into account that 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the two previous decisions submitted are to some extent factually similar to the present case (they refer to the word ‘Alliance’ and state that it is ‘not particularly distinctive’), the Opposition Division considers, as explained above, that the specific meaning of the word ‘Allianz’ per se is unclear in relation to the relevant services, as concluded by the Board of Appeal (17/06/2011, R 1518/2010‑4, VALLIANCE REAL ESTATE / ALLIANZ § 21). Therefore, the meaning of this word is not perceived in a manner that might affect its distinctiveness in a material way.

Considering all the above, there is a likelihood of confusion on the part of the Portuguese- and Spanish-speaking part of the public. 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 well founded on the basis of the opponent’s international trade mark registration No 1 402 877 designating the European Union. 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier international trade mark registration No 1 402 877 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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

Irena LYUDMILOVA LECHEVA

Birgit FILTENBORG

Francesca CANGERI

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.