OPPOSITION No B 3 095 369

Egeria Industrials A.G., Baarerstrasse 14, 6300 Zug, Switzerland (opponent), represented by Arnold & Siedsma, Rembrandt Tower, 28^th Floor, Amstelplein 1, 1096 HA Amsterdam, Netherlands (professional representative)

a g a i n s t

Opensense, 37 Rue Des Mathurins, 75008 Paris, France (applicant).

On 01/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 095 369 is upheld for all the contested services, namely:

Class 36: All the services applied for in this class.

2. European Union trade mark application No 18 085 602 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition initially against all the goods and services of European Union trade mark application No 18 085 602 ‘AGORIA’ (word mark). The scope of the opposition was limited by the opponent in the course of the proceedings to all the services in Class 36. The opposition is based on, inter alia, Benelux trade mark registrations No 1 017 676 and No 786 345, both for the word mark ‘EGERIA’. 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.

The opposition is based on several earlier trade marks. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registrations No 1 017 676 and No 786 345, both for the word mark ‘EGERIA’.

a) The services

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

BX No 1 017 676

Class 36: Arranging of investments; investment custody; investment consultancy; investment analysis; research services relating to investment; investment information; investment account services; capital fund investment; industrial investment; investment business services; fund investment services; investment management; trust management; investment asset management; investment portfolio management services; financial information for investors; financial management relating to investment; investment risk assessment services; financial investment management services; financial analysis services relating to investments; advisory services relating to investments and finance; finance; administration of mutual funds; services of an investment trust; wealth management; real estate investment; estate trust management; real estate financing; real estate investment advice; capital investment in real estate; management services for real estate investment; financial consultancy relating to real estate investment; real estate procurement for others; real estate appraisal; real estate lending services; real estate acquisition services; research services relating to real estate acquisition; leasing of real estate property; real estate management; estate planning [financial]; property portfolio management; management of commercial properties; financial management of real estate projects.

BX No 786 345

Class 36: Insurance; financial matters; monetary affairs; investments, in particular capital investments; investment, finance and financial investment advice; management of special investment funds; investment company services; provision of financial evaluations and provision of financial information; financial participations, business participations; currency trading; placing shares; advising and mediating with regard to lending; asset management.

The contested services are the following (after a limitation of the list of contested services in Class 36 by the applicant on 28/08/2019 and the above-mentioned express limitation of the scope of the opposition by the opponent on 10/02/2020):

Class 36: Provision of prepaid cards and tokens; fundraising and financial sponsorship; valuation services; real estate services; safe deposit services; financial and monetary services, and banking.

The contested financial and monetary services and the opponent’s financial matters; monetary affairs covered by the earlier trade mark No 786 345 are clearly identical.

The contested provision of prepaid cards and tokens; fundraising and financial sponsorship; valuation services; banking are included in the broad category of, or overlap with, the opponent’s financial matters covered by earlier trade mark No 786 345. Therefore, they are identical.

The contested real estate services include, as a broader category, the opponent’s real estate management covered by earlier mark No 1 017 676. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested safe deposit services overlap with the opponent’s monetary affairs covered by earlier trade mark No 786 345. Therefore, they are identical.

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 either at the public at large or at business customers with specific professional knowledge or expertise.

The relevant services fall in the field of financial, monetary and real estate affairs. These are specialised services that may have important financial consequences for their users. Consequently, the degree of attention of the relevant public would be high for both the public at large and specialists (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 and the distinctiveness of the earlier trade mark

EGERIA	AGORIA
Earlier trade marks	Contested sign

Both earlier trade mark registrations protect the same sign, which is the word ‘EGERIA’. Consequently, for reasons of simplification, both marks will be referred to as one mark in the singular.

The relevant territory is composed of the Benelux countries.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The letter ‘G’ in ‘EGERIA’ and ‘AGORIA’ will sound the same in Dutch and German (unlike in French where it sounds different). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch- and German-speaking part of the relevant public.

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 ‘EGERIA’ 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.

The word ‘AGORIA’ of the contested sign has no meaning for the relevant public and is, therefore, also distinctive.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘*G*RIA’. The signs also have the same structure, length and number of syllables, namely four. However, they differ in the letters/sounds ‘E’/‘A’ in the first position and ‘E’/’O’ in the third position.

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

Conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

The marks are visually and aurally similar to an average degree and the conceptual comparison is neutral. The services are identical. The degree of distinctiveness of the earlier mark is average. The level of attention of the relevant public, composed of the public at large and specialists, will be high.

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).

Consequently, it is likely that the relevant public, even if highly attentive, will confuse the commercial origin of the identical services offered under the respective trade marks.

Considering all the above, there is a likelihood of confusion on the part of the Dutch- and German-speaking part of the public in the Benelux countries. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the Benelux countries is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registrations No 1 017 676 and No 786 345. It follows that the contested trade mark must be rejected for all the contested services.

As the above earlier rights lead 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 remaining earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Lucinda CARNEY

Vít MAHELKA

Eva Inés PÉREZ SANTONJA

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.