OPPOSITION No B 2 710 575

Crowdchecking, S.L., Avd. de Torrelodones, 15-3º, 28250 Torrelodones, Spain (opponent), represented by GT. de Propiedad Industrial, S.L., c/ Capitán Haya, núm. 38-7º-izda., 28020 Madrid, Spain (professional representative)

a g a i n s t

Crowdcheck, Inc., 721 North Overlook Drive, Alexandria, Virginia 22305, United States of America (applicant), represented by Marks & Clerk LLP, Atholl Exchange 6 Canning Street, Edinburgh, Scotland EH3 8EG, United Kingdom (professional representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 710 575 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 127 905. The opposition is based on Spanish trade mark registration No 3 545 429. The opponent invoked Article 8(1)(b) EUTMR.

	CROWDCHECK
Earlier trade mark	Contested sign

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 services

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

Class 35:        Advertising; Business Management; Commercial administration; Office work; Service market research analysis.

The contested services are, after a limitation requested by the applicant on 21/10/2016 and accepted by the Office, the following:

Class 36:        Investment advice for investors and for companies seeking funding and/or capital; due diligence, compliance and verification services for investors and for companies seeking funding and/or capital.

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 opponent’s services in Class 35 include advertising, business management, office function services and market research analysis.

‘Advertising services’ consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.

‘Business management services’ are services usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand market share. They involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business, such as how to efficiently allocate financial and human resources; how to improve productivity; how to increase market share; how to deal with competitors; how to reduce tax bills; how to develop new products; how to communicate with the public; how to do marketing; how to research consumer trends; how to launch new products; how to create a corporate identity; etc.

‘Office function services’ are aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical to secretarial services, such as shorthand and typing, as well as support services, such as the rental of office machines and equipment.

‘Service market research analysis’ involve activities to gather information about target markets or customers. It is an essential tool which assists in making strategic decisions. These services are usually rendered by business experts or organizations who have dedicated and trained resources to perform this.  

The contested investment advice for investors and for companies seeking funding and/or capital; due diligence, compliance and verification services for investors and for companies seeking funding and/or capital are financial services rendered by specialised companies in this specific field.

‘Financial services’ refer to services provided by the finance industry. The finance industry encompasses a broad range of organisations that deal with the management, investment, transfer, and lending of money. Among these organisations are, for example, banks, credit card companies, insurance companies, consumer finance companies, stock brokerages and investment funds. Although the financial companies often provide advice relating to financial services to make investment decisions, they do not provide business management advice. Companies who handle investments (e.g. a bank, or investment fund or crowdfunding companies) operate on a different field of business than business management companies, advertising companies or companies aimed at performing day-to-day operations of a business.

Therefore, and contrary to the opponent’s arguments, the Opposition Division finds that the contested investment advice for investors and for companies seeking funding and/or capital; due diligence, compliance and verification services for investors and for companies seeking funding and/or capital are considered to be dissimilar to the opponent’s services in Class 35. None of these services coincide in any relevant points of contact with those of the earlier right in Class 35. These services have a different nature and purpose, and they are usually provided by different service providers. They do not target the same relevant public, neither use the same distribution channels. Furthermore they do not share a complementary nature nor are they in competition with one another.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled and the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta GARCÍA COLLADO

Jorge ZARAGOZA GOMEZ

Richard BIANCHI

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.