OPPOSITION DIVISION
OPPOSITION No B 2 778 580
ARGENTA SPAARBANK ou en abrégé ASPA ou en français ARGENTA BANQUE
D’EPARGNE ou en allemand ARGENTA SPARBANK (société anonyme), Belgiëlei
49-53, 2018, Antwerp, Belgium, (opponent), represented by Baker & McKenzie, Meir
24, 2000, Antwerp, Belgium (professional representative)
a g a i n s t
Argentex LLP, 5 Old Bond Street, Mayfair, London, W1S 4PD, United Kingdom
(applicant), represented by Alpha & Omega, Chine Croft East Hill, Ottery St. Mary
Devon, EX11 1PJ, United Kingdom (professional representative).
On 17/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 778 580 is upheld for all the contested services.
2. European Union trade mark application No 15 788 482 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
PRELIMINARY REMARK:
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 European Union trade
mark application No 15 788 482 ‘ARGENTEX’, namely against all the services in
Class 36. The opposition is based on European Union trade mark registration
No 280 354 ‘ARGENTA’. 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
Decision on Opposition No B 2 778 580 page: 2 of 5
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a) The services
The services on which the opposition is based are the following:
Class 36: Insurance and finance.
The contested services are the following:
Class 36: Financial and monetary services, and banking; Financial information,
data, advice and consultancy services; Currency trading and
exchange services.
Contested services in Class 36
The contested financial and monetary services, and banking; Currency trading and
exchange services are included in the broad category of the opponent’s finance
services. Therefore, they are identical.
There is a link between the contested financial information, data, advice and
consultancy services and the opponent’s finance. It is not uncommon in the relevant
market sector for the provider of finance services to give also information, data,
advice and consultancy in the field of finance. They can coincide in producers, end
users and distribution channels. Furthermore, they are complementary. Therefore,
the services are similar.
The contested finance services include, as a broader category, the opponent’s
services. Since the Opposition Division cannot dissect ex officio the broad category
of the contested services, they are considered identical to the opponent’s 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.
These services found to be identical or similar target the general public and
specialised public, which is reasonably well informed and reasonably observant and
circumspect. However, since such services are specialised services that 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).
Decision on Opposition No B 2 778 580 page: 3 of 5
c) The signs
ARGENTA ARGENTEX
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). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
Since neither mark has any meaning in certain territories, for example in those
countries where English is spoken, the Opposition Division finds it appropriate to
focus the comparison of the signs on the English-speaking part of the public such as
the UK, Ireland and Malta.
Both marks are word marks. Therefore, neither has a dominant element. They are
invented words with no element being allusive or descriptive of the services in
question. Therefore, they are both considered to be distinctive to relevant public for
the services in question.
Visually, the signs coincide in the first six letters being ‘ARGENT’. However, they
differ in the final letter of the earlier trade mark being ‘A’ and the final ‘EX’ in the
contested sign. Since the contested sign comprises of eight letters and the earlier
trade mark comprises of seven letters, the first six are identical. Further, the
coinciding elements are the first six letters and 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 letters at the left of the sign more noticeable
to the reader with less attention paid to the later.
Therefore, they are considered to be visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the first two syllables ‘AR-
GENT-’, present identically in both signs. The pronunciation also coincide in the first
letter of the final syllable but differ in the ‘-EX’ and ‘-A’ sounds at the end of the
respective signs.
In view of the coincidences outlined above, the marks are aurally similar to a high
degree.
Decision on Opposition No B 2 778 580 page: 4 of 5
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.
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. 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. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the
factors relevant to the circumstances of the case; this appreciation depends on
numerous elements and, in particular, on the degree of recognition of the mark on the
market, the association that the public might make between the two marks and the
degree of similarity between the signs and the goods and services (11/11/1997, C-
251/95, Sabèl, EU:C:1997:528, § 22).
In the present case the services are either identical or similar and the degree of
attention is considered to be quite high.
The signs are visually and aurally similar to a high degree, and a conceptual
comparison is not possible.
As previously stated the signs coincide with the first six letters and only differ in the
last letter of the earlier trade mark and the final two of the contested sign. It is borne
in mind that consumers generally tend to focus on the first element of a sign.
Whist the degree of attention paid upon purchasing the services is considered to be
quite high, the coincidences between the signs are too strong for a likelihood of
confusion to be avoided. Therefore, 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 280 354 ‘ARGENTA’. It follows that the contested
trade mark must be rejected for all the contested services.
Decision on Opposition No B 2 778 580 page: 5 of 5
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 extensive use and reputation as claimed by the
opponent. The result would be the same even if the earlier mark enjoyed an
enhanced degree of distinctiveness.
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.
The Opposition Division
Ioana MOISESCU Mark KING Francesca DRAGOSTIN
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.
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
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.