OPPOSITION No B 2 606 450

Jorge Martin Balot, Diagonal 441, 5-A, 08036 Barcelona, Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Fimad GmbH, Neuwiesenweg 1b, 35423 Lich, Germany (holder).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 606 450 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the services of international registration designating the European Union No 1 199 106, (figurative mark), namely against all the services in Class 36. The opposition is based on Spanish trade mark registration No 1 111 991, ‘FINAD’ (word mark). 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 services

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

Class 36:        Real estate administration services.

The contested services are the following:

Class 36:        Insurance; financial affairs; monetary affairs.

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.

Contested services in Class 36

The opponent’s real estate administration services comprise real estate property management and evaluation, as well as consultancy and provision of information related thereto. This mainly involves finding a property, making it available to potential buyers and acting as an intermediary.

The mere fact that real estate may have to be financed in order to be purchased is not sufficient to find similarity between real estate administration services and the contested financial affairs. Although financial services can be important for the acquisition of real estate, consumers usually turn first to a real estate agent to search for a property and then to a financial institution to finance the property. Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service. Consumers would not attribute responsibility for both services to the same company, even if financial services are essential or important for the use of real estate (11/07/2013, T-197/12, Metro, EU:T:2013:375, § 47-51). Therefore, the contested financial affairs are dissimilar to the opponent’s real estate administration services.

The same conclusion must be reached as regards the contested monetary affairs. In banking and finance, monetary affairs fall, inter alia, into the category of financial transfers, transactions and payment services. Monetary affairs services serve different purposes from real estate administration services. They are usually rendered by specialised entities that offer and carry out, for example, currency exchange transactions for their customers. Monetary affairs are of a strictly financial nature and monetary service providers are subject to licensing and supervision rules similar to those governing banks and other institutions providing financial services. In addition, it would be unusual for monetary affairs and real estate administration services to be in the same economic group. Therefore, the contested monetary affairs are dissimilar to the opponent’s real estate administration services.

The remaining contested services for which protection is sought in this class (i.e. insurance) consist of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages. Consumers will clearly distinguish real estate administration services from those of an insurer and they would not expect insurance providers (e.g. insurance companies, banks or financial institutions) to find housing or real estate agents to manage their risks and/or insurance. The mere fact that real estate may be covered by several types of insurance, such as insurance against fire or burglary/theft, is not sufficient to find a similarity between the opponent’s real estate administration services and the contested insurance. These services are also dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods and/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, he must bear the costs incurred by the holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the holder did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Jorge ZARAGOZA GÓMEZ

Arkadiusz GORNY

Oana-Alina STURZA

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.