CANCELLATION No 8343 C (INVALIDITY)

Goodman Limited, Level 17, 60 Castlereagh Street, Sydney, NSW 20000, Australia (applicant), represented by Mishcon de Reya LLP, Africa House, 70 Kingsway, London, WC2B 6AH United Kingdom (professional representative)

a g a i n s t

Dundee Corporation, 21st Floor 1 Adelaide Street East, Toronto Ontario M5C 2V9, Canada (EUTM proprietor), represented by Taylor Wessing LLP, 5 New Street Square, London EC4A 3TW, United Kingdom (professional representative).

On 14/09/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 11 206 513 is declared invalid in its entirety.

3.        The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the services of EUTM No 11 206 513 ‘GOODMAN PARTNERS’. The application is based on EUTM No 5 889 464 ‘GOODMAN’. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the services are identical and the contested sign wholly includes the earlier sign ‘GOODMAN’. Moreover, the diverging element ‘PARTNERS’ is weak in relation to the relevant services. Therefore, there is likelihood of confusion between the trade marks under comparison.

The EUTM proprietor did not submit observations in reply.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 application is based are the following:

Class 36: Financial services; financial management services; investment services, including but not limited to investments in direct and indirect commercial/industrial real estate portfolios; capital investment services; property investment services; property investment banking services; wholesale and retail investment management services; capital raising services; debt and transaction restructuring; financing services; financial advisory services; financial management services; compliance and risk management services; valuation services; risk advisory services; funds management services; real estate services; real estate management services; real estate agency services; rental of property; real estate brokers; rent collection services; management of commercial/industrial real estate assets; management of listed and unlisted property trusts or specialised funds.

The contested services are the following:

Class 36: Asset management services; third party and proprietary asset management focusing on real estate, infrastructure, energy, resources and agriculture sectors; investment services; direct and indirect investment in, and ownership of, real estate, infrastructure, energy, resources, agriculture and financial services assets and companies; investment advisory services; full-service securities brokering, financial planning and investment management services; capital markets services; investment banking services and the sale of securities through the public and private offerings and financial advisory services relating to mergers and acquisitions, divestitures, restructurings and stock exchange listings; sales and trading services, namely, the selling, purchasing and trading of equity, equity-related and fixed income securities on a proprietary basis and on behalf of retail and institutional clients; investment research services; the preparation of research reports and opinions for investors and institutional clients; investment product development, promotion, sale and distribution services; investment fund development, promotion, sale and distribution services.        

The term namely used in the wording of the EUTM proprietor’s list to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

All the contested services are included in the applicant’s broader category financial services and therefore they are identical.

2. 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.

In the present case, the services found to be identical are specialised investment services, directed at business customers with specific professional knowledge or expertise. Owing to the nature of the services and the high financial risk related to them, the level of attention of the relevant public is deemed to be high.

3. The signs

GOODMAN	GOODMAN PARTNERS
Earlier trade mark	Contested trade mark

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, bearing in mind 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 proceedings for a declaration of invalidity against any 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, by analogy). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid. In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public for the reasons that will be explained below.

The element ‘GOODMAN’ which composes the totality of the earlier mark and the first element of the contested sign will be perceived as a surname. Since it has no relation to the relevant services, it is distinctive.

The word ‘PARTNERS’ in the contested sign will be understood as a person with a joint share in or use of something^[1], and therefore it describes the legal form of the company proving the financial services. Consequently, this element is non-distinctive in relation to all the relevant services.

As word marks, none of the signs has element that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in ‘GOODMAN’ and differ in the non-distinctive word ‘PARTNERS’. Therefore, the signs are visually and aurally highly similar.

Conceptually, the public in the relevant territory will perceive both signs as including the same surname. The only difference between the signs lays in the meaning of the non- distinctive term ‘PARTNERS’ of the contested sign which has a very limited impact in the comparison of the signs due to its descriptive character. To this extent, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

In the present case, the earlier trade mark has no meaning for any of the services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The services are identical and directed at a professional public with a high degree of attention. The signs are visually, aurally and conceptually highly similar as the earlier sign is totally reproduced at the beginning of the contested sign as a distinctive and independent element. Moreover, the only differences between the signs are confined to the non-distinctive element ‘PARTNERS’ of the contested sign.

Considering all the above, and despite its high degree of attention, 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 declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s EUTM No 5 889 464. It follows that the contested trade mark must be declared invalid for all the contested services.

COSTS

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

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Jose GARRIDO OTAOLA

Ana MUÑIZ RODRÍGUEZ

Michaela SIMANDLOVA

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 Cancellation 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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