OPPOSITION DIVISION

OPPOSITION No B 2 807 058

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 LLC, Saksahanskoho Street, 36D, Kiev 01033, Ukraine (holder),

represented by UAB “BRAINERA”, Savanorių pr. 217, 02300 Vilnius, Lithuania

estate agencies; financial analysis; banking; mortgage brokerage; repair

costs evaluation (financial appraisal); clearing, financial; issuance of credit

cards; investment of funds; funds transfer; leasing of real estate; rental of real

estate; fiscal assessments; electronic funds transfer; apartment house

management; housing agency services; residential property investments;

services for arranging foreign investments; rent collection; deposits of

valuables; deposits of securities; issuance of tokens of value; safe deposit

services; real estate investment; construction investment; financial

information and financial consultancy; providing financial information about

exchange rate changes; insurance information; capital investment; financial

estate, buildings, premises in business centers; rental of commercial space in

marketplaces (real estate); real estate appraisal; art appraisal; antique

appraisal; financial evaluation in the field of insurance, banking, real estate;

bill payment services for exchange transactions; electronic funds transfer;

investment services; lending against security; financial guarantee services;

real estate brokerage; securities brokerage; services of stock exchange

brokers; real estate services relating to the sale, purchase and leasing of real

estate; mutual funds; insurance brokerage; financing; financing of import-

export operations; financial evaluation of material loss; financial consulting.

2. International registration No 1 292 661 is refused protection in respect of the

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 services of international registration

designating the European Union No 1 292 661 , namely

against all the services in Class 36. The opposition is based on European Union

earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade

mark will not be registered where it is identical with, or similar to, an earlier trade

mark, irrespective of whether the goods or services for which it is applied are

identical with, similar to or not similar to those for which the earlier trade mark is

registered, where, in the case of an earlier European Union trade mark, the trade

mark has a reputation in the Union or, in the case of an earlier national trade mark,

the trade mark has a reputation in the Member State concerned and where the use

without due cause of the contested trade mark would take unfair advantage of, or be

detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine

commencement of the adversarial part), the Office will give the opposing party the

opportunity to present the facts, evidence and arguments in support of its opposition

or to complete any facts, evidence or arguments that have already been submitted

together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of

commencement of the adversarial part), when the opposition is based on a mark with

provide evidence showing, inter alia, that the mark has a reputation, as well as

evidence or arguments showing that use without due cause of the contested trade

mark would take unfair advantage of, or be detrimental to, the distinctive character or

the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence

of the alleged reputation of the earlier trade mark.

On 12/01/2017 the opponent was given two months, commencing after the end of the

cooling-off period, to submit the abovementioned material. This time limit expired on

24/05/2017.

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.

For international registrations designating the European Union, the ‘date of filing’ or,

years.

The holder requested that the opponent submit proof of use of the earlier European

Union trade mark No 9 849 035.

In the present case, the relevant date for the contested international registration is

07/10/2015.

Earlier trade mark No 9 849 035 was registered on 30/08/2011. Therefore, the

request for proof of use is inadmissible. The earlier mark was still in the grace period.

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 goods and services

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

publications featuring investments and investment trust information; Investment

Class 35: Advertising services relating to financial and real estate investment and

with investments and investment funds; Electronic data storage relating to

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

monitoring and management of investments and investment funds; Mortgage

investment management; Investment trusteeship; Investment banking; Provision of

management services; Investment research; Nominee company services for

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; debt

brokerage; repair costs evaluation (financial appraisal); clearing, financial; issuance

of credit cards; investment of funds; funds transfer; financial charity; leasing of real

house management; housing agency services; residential property investments;

services for arranging foreign investments; rent collection; deposits of valuables;

investment; construction investment; financial information and financial consultancy;

providing financial information about exchange rate changes; insurance information;

capital investment; financial investment; project financing; fiduciary; investment

services; pawn brokerage; insurance consultancy; real estate consultancy services;

consultancy in the field of investment; customs brokerage; loans (financing);

instalment loans; providing financial assistance; financial sponsorship; charitable

fund raising; providing financial grants; providing scholarship; intermediary services

in the field of purchase and sale of land property and real estate; rental of

apartments, flats, offices, real estate, buildings, premises in business centers; rental

of commercial space in marketplaces (real estate); real estate appraisal; art

appraisal; antique appraisal; financial evaluation in the field of insurance, banking,

real estate; bill payment services for exchange transactions; electronic funds

transfer; fund raising; investment services; lending against security; financial

guarantee services; business liquidation services, financial; real estate brokerage;

securities brokerage; services of stock exchange brokers; real estate services

material loss; financial consulting.

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

Insurance; real estate affairs; real estate agencies; leasing of real estate; real estate

investment; financial information and financial consultancy; insurance information;

capital investment; financial investment; investment management; real estate

management; insurance consultancy; real estate consultancy services; consultancy

in the field of investment; real estate brokerage; real estate services relating to the

sale, purchase and leasing of real estate; insurance brokerage are identically

The contested financial affairs include, as a broader category the opponent’s capital

category of the contested services, they are considered identical to the opponent’s

(real estate); real estate appraisal; financial evaluation in the field of real estate are

services; real estate agency services. Therefore, they are identical.

field of insurance; art appraisal; antique appraisal; financial guarantee services;

financial evaluation of material loss are included in the broad category of, or overlap

The contested investment services include, as a broader category the opponent’s

the broad category of the contested services, they are considered identical to the

opponent’s services.

The contested investment of funds; residential property investments; services for

arranging foreign investments; construction investment; fiduciary; financial

management; securities brokerage; services of stock exchange brokers; mutual

funds; financial consulting are provided by financial institutions, banks and

investment funds and overlap with the opponent’s investment banking. Therefore,

they are identical.

The contested project financing; loans (financing); instalment loans overlap with the

opponent’s financing of investments. These services are identical.

The contested financing includes, as a broader category the opponent’s financing of

investments. Since the Opposition Division cannot dissect ex officio the broad

services are identical.

issues and profitability are important criteria for choosing the type of investment

contested fiscal assessments overlap with the opponent’s financial services

connected with the sale of investment assets, which include information about taxes

for the investment assets. These goods are identical.

The services that fall within the field of ordinary banking services, i.e. monetary

affairs; banking; mortgage brokerage; clearing, financial; issuance of credit cards;

funds transfer; electronic funds transfer; bill payment services for exchange

securities; safe deposit services; providing financial information about exchange rate

changes; providing financial assistance; providing financial grants; financial clearing

export operations are similar to the opponent’s investment services. Although they

debts owned by individuals or businesses for a fee or percentage of the total amount

services whose purpose is to collect money for charity reasons. The contested

customs brokerage consists in clearing imported or exported goods and dealing with

high interest rate and holding some of the borrower’s personal goods as collateral, to

be sold to the public in a pawn shop in the event of default. The contested financial

partner in order to support some activities and generate consumer preference. The

contested providing scholarship consists in the financial support of a student’s

business liquidation services, financial are provided by liquidators and consist in

liquidating the assets and closing the (insolvent) company.

These services are dissimilar to the opponent’s services, which are mainly

investment services. They have a different nature and purpose from the opponent’s

goods and services in Classes 16, 35 and 36. Moreover, they are neither

complementary nor in competition, and do not have the same distribution channels,

end users or usual origin.

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

In the present case, the services found to be identical or similar are directed at the

The degree of attention is high, as the services can have important financial

financial services are specialised services that may have important financial

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

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

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,

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 word ‘DRAGO’ is meaningful in Italian. Consequently, the Opposition Division

finds it appropriate to focus the comparison of the signs on the Italian-speaking part

of the public.

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 mark will be understood with the same meaning. The device of a

dragon in the contested sign will be perceived as such. The whole figurative element

descriptive, allusive or otherwise weak for the relevant services and have a normal

The element ‘CAPITAL’, contained in both signs, is very similar to the Italian word

‘capitale’ and will be perceived as such. This element will be associated with (a large

sum of) money. Bearing in mind that the relevant services are investment, financial,

monetary and related services, this element is non-distinctive for these services.

The figurative element of the earlier mark is bigger and more eye-catching than its

more dominant than other elements.

second word, namely in ‘DRAGO* CAPITAL’. Therefore, both of them have a

both word and figurative components, the principle has been established that the

word component usually has a stronger impact on the consumer than the figurative

readily refer to a sign by its verbal component.

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

number of syllables (five), sequence of vocals (A-O-A-I-A), rhythm and intonation.

The pronunciation differs in the sound of the letter ‛N’ at the end of the first word, as

this letter is not present in the earlier mark. The figurative representation of the signs,

the common word ‘CAPITAL’ is non-distinctive, the signs are similar in the distinctive

letters ‘DRA-GO*’.

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,

namely a fire-spitting fantasy creature, which is represented in one sign in the

figurative element and in the other in a verbal element. The overlap in the non-

distinctive word ‘CAPITAL’ has no impact. Overall, the signs are conceptually

identical.

The distinctiveness of the earlier mark is one of the factors to be taken into account

but did not file any evidence in order to prove such a claim.

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 the non-distinctive word ‘CAPITAL’ in the mark, as

than its figurative component. This is because the public will more readily refer to a

sign by its verbal component than by describing its figurative or stylistic elements.

stylisation is not striking or fanciful enough for the relevant consumer to detract from

the verbal elements of the signs.

Overall, the differences between the signs (colour, typeface, figurative element of the

earlier sign) are not sufficient to outweigh their similarities (in particular the reference