OPPOSITION No B 2 649 674

if5 GmbH & Co. KG Beratungs- und Planungsunternehmen für neue Arbeitswelten, Major-Hirst-Straße 11, 38442 Wolfsburg, Germany (opponent), represented by Zenk Rechtsanwälte Partnerschaft mbB, Hartwicusstraße 5, 22087 Hamburg, Germany (professional representative)

a g a i n s t

OFX Group Limited, Level 19, 60 Margaret Street, Sydney, New South Wales 2000, Australia (applicant), represented by Addleshaw Goddard Llp, 1 St Peter’s Square, Manchester M2 3DE, United Kingdom (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 649 674 is partially upheld, namely for the following contested services:

Class 35: Business consulting services in the field of online payments; managing and tracking credit card, debit card, automated clearing house (ACH), prepaid cards, payment cards, and other forms of payment transactions via electronic communications networks for business purposes; business information management, including electronic reporting of business analytics relating to payment processing, authentication, tracking, and invoicing; business management, including optimisation of payments for businesses.

2.        European Union trade mark application No 14 759 104 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 all the goods and services of European Union trade mark application No 14 759 104. The opposition is based on European Union trade mark registration No 13 387 031. 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 35: Office machines and equipment rental; office management services; management of serviced and managed offices; business office support services; secretarial services; photocopying services, telephone answering, office functions; document reproduction; recruitment and personnel placement services.

Class 36: Management in the field of real estate affairs; letting services, namely rental of real estate; provision of serviced and managed offices.

Class 42: Rental of office infrastructure, namely rental of computers and data processing apparatus.

Class 43: Providing of facilities for meetings, conferences, seminars and exhibitions, rental of office furniture; advice, information and consultancy relating to these services.

The contested goods and services are the following:

Class 9: Computer software; computer software for processing electronic payments and transferring funds to and from others; authentication software for controlling access and communications with computers and computer networks; magnetically encoded cards, including travel cards; computer programs relating to financial matters.

Class 35: Business consulting services in the field of online payments; managing and tracking credit card, debit card, automated clearing house (ACH), prepaid cards, payment cards, and other forms of payment transactions via electronic communications networks for business purposes; business information management, including electronic reporting of business analytics relating to payment processing, authentication, tracking, and invoicing; business management, including optimisation of payments for businesses.

Class 36: Financial services; monetary services; buying and selling currency; foreign monetary exchange; money exchanging services; brokerage services; currency exchange services; foreign exchange services; financial transactions relating to currency swaps; electronic funds transfer; domestic and international transfer of funds; clearing and reconciling financial transactions; payment and financial services, all conducted via a global communications network; bill payment services; providing electronic mobile payment services for others; credit card and payment processing services; electronic foreign exchange payment processing; payment processing services, including providing virtual currency transaction processing services for others; provision of foreign currency; provision of online currency exchange calculators; currency exchange rate quotations; forecasting of foreign exchange rates; provision of financial protection against foreign exchange risks; financial risk management; advisory, consultancy and information services relating to all the aforesaid services; none of the aforesaid services relating to real estate affairs, letting services, rental of real estate or provision of serviced and managed offices.

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.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 9

The contested computer software; computer software for processing electronic payments and transferring funds to and from others; authentication software for controlling access and communications with computers and computer networks; magnetically encoded cards, including travel cards; computer programs relating to financial matters are dissimilar to all the opponent’s services. The contested goods are computer software programs mainly related to financial matters.

The opponent’s services (services related to rental of offices and equipment, services related to real estate affairs management, rental of office infrastructure and provision of facilities for meetings) have different purposes and providers and target a different public.

The opponent’s rental of computers has different providers (office equipment rental services versus software companies) and is distributed through different channels. Moreover, the contested goods do not have the same nature as the services of the earlier mark.

Contested services in Class 35

The contested business consulting services in the field of online payments; managing and tracking credit card, debit card, automated clearing house (ACH), prepaid cards, payment cards, and other forms of payment transactions via electronic communications networks for business purposes; business information management, including electronic reporting of business analytics relating to payment processing, authentication, tracking, and invoicing; business management, including optimisation of payments for businesses are similar to a low degree to the opponent’s office management services. Office management services are intended to help companies with the performance of business operations by organising people and resources efficiently to direct activities towards common goals and objectives. The contested services coincide with the opponent’s in their purpose, they are services to help companies achieve their objectives, they target the same public and they might be provided by the same companies.

Contested services in Class 36

The contested financial services; monetary services; buying and selling currency; foreign monetary exchange; money exchanging services; brokerage services; currency exchange services; foreign exchange services; financial transactions relating to currency swaps; electronic funds transfer; domestic and international transfer of funds; clearing and reconciling financial transactions; payment and financial services, all conducted via a global communications network; bill payment services; providing electronic mobile payment services for others; credit card and payment processing services; electronic foreign exchange payment processing; payment processing services, including providing virtual currency transaction processing services for others; provision of foreign currency; provision of online currency exchange calculators; currency exchange rate quotations; forecasting of foreign exchange rates; provision of financial protection against foreign exchange risks; financial risk management; advisory, consultancy and information services relating to all the aforesaid services; none of the aforesaid services relating to real estate affairs, letting services, rental of real estate or provision of serviced and managed offices are dissimilar to all the opponent’s services. The contested services are all related to finance, mainly monetary and payment services by various means. The opponent’s services (services related to rental of offices and equipment, services related to real estate affairs management, rental of office infrastructure and provision of facilities for meetings) do not have the same nature or producers as the services of the contested mark, which are finance-related services provided by different companies. They address different needs and target different publics (customers who rent equipment or meeting facilities or real estate customers versus customers dealing with financial affairs).

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 services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the services and their price.

3. The signs

Offx
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 mark is a word mark, ‘Offx’, which has no meaning for the relevant services and is distinctive.

The contested mark is a figurative mark composed of an orange circle, with a white triangular device inside, and the letters ‘OFX’. The contested sign has no meaning for the relevant public.

The contested sign has no elements that could be considered clearly more distinctive than other elements. 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).

Visually, the signs coincide in the letters ‘OF*X’, which form the verbal element in the contested sign and three of the four letters of the earlier mark’s sole verbal element. However, they differ in the figurative element, orange colour and stylisation of the letters of the contested sign and the additional letter ‘f’ of the earlier mark.

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

Aurally, even though it cannot be excluded that part of the public will pronounce the contested sign letter by letter, ‘O-F-X’, whereas they will read the earlier mark as a unique word, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛ofx’, present identically in both signs. The additional letter ‘f’ will make the sound of the ‘f’ in the earlier mark slightly longer, but the pronunciation will be very similar.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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 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.

5. Global assessment, other arguments and conclusion

The contested goods are dissimilar and the services are partly dissimilar and partly similar to a low degree to those covered by the earlier mark.

The signs are visually similar and aurally highly similar. The earlier mark is a single word that coincides in all its letters with the verbal element of the contested sign, written in the same sequence, with the only differences being the double letter ‘f’ and the figurative element described above.

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).

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).

Bearing in mind that 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, in the present case, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 387 031.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to a low degree 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.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Begoña URIARTE VALIENTE

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Dorothee SCHLIEPHAKE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.