OPPOSITION No B 2 708 132

Thesee (Société par actions simplifiée), Bureaux de la Colline, 146, 92213 Saint Cloud Cedex, France (opponent), represented by Ixas Conseil, 15, rue Emile Zola, 69002 Lyon, France (professional representative)

a g a i n s t

Dmytro Pichugin, Alt-Pempelfort 2, 40211 Düsseldorf, Germany (applicant)

On 28//03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 132 is upheld for all the contested services.

2.        European Union trade mark application No 15 095 417 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 095 417. The opposition is based on, inter alia, European Union trade mark registration No 8 946 741. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 946 741.

1. The services

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

Class 36:        Tax, financial, insurance and provident consultancy and advice; tax reduction consultancy; financial deals; financial evaluations (insurance, banking, real estate).

The contested services are the following:

Class 36:        Finance services; Financial brokerage services; Administration of capital investment services; Financial payment services; Financial services provided to partnerships; Financial services relating to bonds; Financial services relating to business; Personal finance services; Financial services related to dealing in shares; Establishment of portfolios of securities (Services for the -); Financial services relating to stocks; Financial services relating to securities; Financial services relating to personal equity plans; Financial services relating to investment; Securing of funds; Financial services relating to international securities; Payment and receipt of money as agents; Financial services related to the sale and purchase of securities; Stockbroking agency services; Stock exchanges for dealing in shares and other financial securities; Organization of stock exchanges for the benefit of the trade of stocks and other financial values; Exchange services relating to the trading of options; Exchange market services relating to commodity futures contracts; Electronic stock exchange services.

Financial services are the economic services provided by the finance industry and encompass a broad range of businesses that manage money, including for example banks, accountancy companies, stock brokerages and investment funds. The services are designed to assist people in the management of their finances, for example to make investments or buy a pension or mortgage.

The contested Finance services; Financial brokerage services; Administration of capital investment services; Financial payment services; Financial services provided to partnerships; Financial services relating to bonds; Financial services relating to business; Personal finance services; Financial services related to dealing in shares; Establishment of portfolios of securities (Services for the -); Financial services relating to stocks; Financial services relating to securities; Financial services relating to personal equity plans; Financial services relating to investment; Securing of funds; Financial services relating to international securities; Payment and receipt of money as agents; Financial services related to the sale and purchase of securities; Stockbroking agency services; Stock exchanges for dealing in shares and other financial securities; Organization of stock exchanges for the benefit of the trade of stocks and other financial values; Exchange services relating to the trading of options; Exchange market services relating to commodity futures contracts; Electronic stock exchange services are identical to the opponent’s financial deals, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

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.

The actual services target the general public and business customers with specific professional knowledge or expertise, who are 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).

3. The signs

	Leyton
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). This applies by analogy to international registrations 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 common element ‘Leyton’ is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark is a figurative mark, consisting of the verbal element ‘Leyton’ in slightly stylised, brown-red colour letters in lower case except for the initial letter ‘L’ in upper case. Above this verbal element is a spherical figure with lines in brown-red, yellow and grey.

The contested sign is a word mark, ‘Leyton’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

The element ‘Leyton’ of both marks has no meaning for the relevant public and is, therefore, distinctive.

The figurative element of a spherical figure in the earlier mark will be perceived as such by the relevant public.

As regards the earlier sign, it is composed of the distinctive verbal element and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative elements.

The element ‘Leyton’ in the earlier sign is the dominant element as it is the most eye-catching.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the distinctive verbal element ‘Leyton’, constituting the whole contested mark. However, they differ in the stylisation of the earlier mark, including the spherical figure.

Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, although the public in the relevant territory may perceive the meaning of the spherical figure in the earlier mark, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar (and even identical) 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 opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods and services. Therefore, a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The contested services are identical to the services for which the earlier mark is registered. The marks are visually highly similar and aurally identical.

When signs consist of both verbal and figurative components, in principle, the verbal element of the sign usually has a stronger impact on the consumer than the figurative component, as explained above. The graphic depiction of the earlier mark, including the spherical figure, does not offset the presence of the verbal element. On the other hand, it is highly likely that the consumers will refer to this mark as ‘Leyton’ rather than describing its graphic depiction.

Consequently, the visual differences do not enable average consumers who rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them to safely distinguish the marks, in the context that all the services are identical.

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 8 946 741. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right no 8 946 741 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Janja FELC

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.