OPPOSITION DIVISION

OPPOSITION No B 2 823 857

DekaBank Deutsche Girozentrale, Mainzer Landstr. 16, 60325 Frankfurt am Main,

Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte

PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

Decta Limited, Suite 3, Third floor, 62 Bayswater Road, London W2 3PH, United

Kingdom (applicant).

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European

Union trade mark application No 15 850 688 ‘DECTA’. The opposition is based on,

inter alia, European Union trade mark registration No 1 555 705 ‘Deka’, in relation to

which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR, and on European

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.

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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 registrations No 1 555 705 and

(2) European Union trade mark registration No 1 555 705

Class 35: Business management, business administration, advertising, with

regard to banking services, monetary affairs, financial affairs, real estate affairs

and investment business.

Class 36: Financial affairs, monetary affairs, real estate management.

The contested goods and services are the following:

Class 9: Information technology and audiovisual equipment.

Class 35: Business assistance, management and administrative services; business

analysis, research and information services.

Class 36: Financial and monetary services, and banking.

processing apparatus and devices such as televisions and DVD players that

nowadays often have embedded computer programs for the functioning of some of

their features. To that extent, these goods are similar to the opponent’s computer

programs in earlier trade mark (1), as they can have the same producers, end users

and distribution channels. Furthermore, they are complementary.

Contested goods in Class 35

The contested business management and administrative services include, as a

broader category, the opponent’s business management, business administration,

with regard to banking services, monetary affairs, financial affairs, real estate affairs

and investment business of earlier trade mark (2). Therefore, they are identical.

Decision on Opposition No B 2 823 857 page: 3 of 8

mark (2) are usually rendered by specialist companies such as business consultants.

These companies gather information and provide tools and expertise to enable their

customers to carry out their business or provide businesses with the necessary

corporate identity, etc.

Consequently, the contested business analysis, research and information services

regard to banking services, monetary affairs, financial affairs, real estate affairs and

investment business and are identical.

Finally, the contested business assistance will help to provide the information or the

support needed for the abovementioned activities. Consequently, these services are

considered similar to the opponent’s business management with regard to banking

services, monetary affairs, financial affairs, real estate affairs and investment

business, since they have similar natures and have the same broad purpose of

getting the best out of a business. Furthermore, they may be offered by the same

service providers and they target the same public.

Contested goods in Class 36

The contested financial and monetary services are identically contained in the list of

services of earlier trade mark (2) (including synonyms).

The contested banking is included in the broad category of the opponent’s financial

affairs. Therefore, they are identical.

The average consumer of the category of products concerned is deemed to be

be borne in mind that the average consumer’s degree of attention is likely to vary

In the present case, the goods and services found to be identical or similar are

directed at the public at large, such as audiovisual equipment, and at business

customers with specific professional knowledge or expertise, such as business

analysis.

The public’s degree of attentiveness may vary from average to high, depending on

the price, specialised nature, or terms and conditions of the goods and services

purchased.

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c) The signs

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

(13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In the present case, in those

countries where English is understood, the average consumer will clearly perceive

the element ‘Bank’ in earlier trade mark (1) as meaning an institution where people or

businesses can keep their money.

Consequently, the Opposition Division finds it appropriate to focus the comparison of

the signs on the English-speaking part of the public, for which ‘Bank’, in earlier trade

mark (1), is weak for services related to computer programs, since such services can

target or be adapted to the financial sector.

The elements ‘DECTA’ in the contested sign and ‘Deka’ in earlier marks (1) and (2)

have no meaning for the relevant public and are, therefore, distinctive.

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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,

have no counterparts in the contested mark.

Therefore, the contested sign is visually similar to an average degree to earlier

Aurally, the pronunciation of the signs coincides in the sound of the letters

‛DEC/K*A*’, which constitute earlier mark (2) and the most distinctive part of earlier

mark (1). The pronunciation of the letters ‘C’ and ‘K’ is identical in English. The

pronunciation of the signs differs in the additional letter ‘T’ in the fourth position of the

contested sign and in the less distinctive word ‘Bank’ at the end of earlier mark (1).

Therefore, the contested sign is aurally highly similar to earlier mark (2) and similar to

an average degree to earlier mark (1).

Conceptually, although the public in the relevant territory will perceive the meaning

of the word ‘Bank’ of earlier mark (1) as explained above, the contested sign has no

meaning in that territory. Since one of the signs will not be associated with any

meaning, the signs are not conceptually similar.

Neither earlier mark (2) nor the contested sign 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.

in the global assessment of likelihood of confusion.

According to the opponent, earlier European Union trade mark registration

No 1 555 705 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 marks will rest on

their distinctiveness per se. In the present case, the earlier trade marks as a whole

have no meaning for any of the goods and services in question from the perspective

of the public in the relevant territory. Therefore, the distinctiveness of the earlier

marks must be seen as normal, despite the presence of a weak element in earlier

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e) Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public

contested sign and earlier mark (1) are visually similar to a lower than average

contested sign and earlier mark (2) are visually similar to an average degree and

aurally similar to a high degree, and the assessment is not influenced by the

conceptual aspect, since neither of the signs has a meaning for the public in the

relevant territory. The similarity is due to the overwhelming commonalities in the

signs, in particular in relation to earlier mark (2). As regards earlier mark (1), even if

the commonalities might appear less obvious than the differences at first, the

analysis in part c) of this decision shows that the differentiating elements have a low

degree of distinctiveness or fulfil only a purely decorative role. Their impact on

consumers is consequently reduced, since the public will focus on the most

distinctive part of earlier mark (1), which, moreover, is at the beginning of the sign.

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, which makes the part

placed at the left of the sign (the initial part) the one that first catches the attention of

the reader.

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

between the relevant factors and, in particular, a similarity between the marks and

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).

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 or

economically linked undertakings.

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

English-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.

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Therefore, the opposition is well founded on the basis of the opponent’s European

Union trade mark registrations No 1 555 705 and No 3 772 051. It follows that the

contested trade mark must be rejected for all the contested goods and services.

earlier marks, there is no need to assess the enhanced degree of distinctiveness of

opponent. The result would be the same even if the earlier marks enjoyed an

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.

According to Article 67 EUTMR, any party adversely affected by this decision has a

Decision on Opposition No B 2 823 857 page: 8 of 8

The amount determined in the fixation of the costs may only be reviewed by a

decision of the Opposition Division on request. According to Article 109(8) EUTMR

(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be