OPPOSITION No B 2 691 601

The Addax and Oryx Group plc, Level 13, Portomaso Business Tower, Portomaso, St Julians STJ 4011, Malta (opponent), represented by Novagraaf UK, 2nd Floor, Renown House, 33-34 Bury Street, London EC3A 5AR, United Kingdom (professional representative)

a g a i n s t

Origin Equity LLP, 25 North Row, London W1K 6DJ, United Kingdom (applicant), represented by Briffa, Business Design Centre, 52 Upper Street, Islington, London N1 0QH, United Kingdom (professional representative).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 691 601 is upheld for all the contested services, namely:

Class 36:        Asset management; advisory services in relation to financial affairs; banking; capital investments; brokerage of financial investments; buying and selling private equity; direct investment services; equity finance services; financial affairs and financial services; financial analysis; financial consultancy; financial evaluation of individuals and organisations; financial fund administration; financial information; financial management; financial restructuring services; hedge fund services; insurance; monetary affairs; investment advisory services; investment fund administration; investment portfolio management; management and evaluation of investment funds; mutual fund investments services; venture capital services; wealth management; information, management and advisory services related to the aforesaid services.

2.        European Union trade mark application No 14 959 696 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 959 696, namely against all the services in Class 36. The opposition is based on, inter alia, Benelux trade mark registration No 913 765. 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 Benelux trade mark registration No 913 765.

1. The services

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

Class 36:        Financial investments.

After the limitation that took place within the course of the opposition proceedings, the contested services are the following:

Class 36:        Asset management; advisory services in relation to financial affairs; banking; capital investments; brokerage of financial investments; buying and selling private equity; direct investment services; equity finance services; financial affairs and financial services; financial analysis; financial consultancy; financial evaluation of individuals and organisations; financial fund administration; financial information; financial management; financial restructuring services; hedge fund services; insurance; monetary affairs; investment advisory services; investment fund administration; investment portfolio management; management and evaluation of investment funds; mutual fund investments services; venture capital services; wealth management; information, management and advisory services related to the aforesaid services.

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.

Although the applicant argues that the parties use their marks in different sectors of the market and therefore their natures, intended purposes, distribution channels and relevant publics are dissimilar, it should be noted that the comparison of the services must be based on the wording indicated in the respective lists of services. Any actual or intended use not stipulated in the list of services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

The contested asset management; advisory services in relation to financial affairs; banking; capital investments; brokerage of financial investments; buying and selling private equity; direct investment services; equity finance services; financial affairs and financial services; financial analysis; financial consultancy; financial fund administration; financial information; financial management; hedge fund services; monetary affairs; investment advisory services; investment fund administration; investment portfolio management; management and evaluation of investment funds; mutual fund investments services; venture capital services; wealth management; information, management and advisory services related to the aforesaid services are identical to the opponent’s financial investments, because the opponent’s services include, are included in, or overlap with these contested services.

The contested financial evaluation of individuals and organisations; financial restructuring services; information, management and advisory services related to the aforesaid services are at least similar to the opponent’s financial investments, as these services have the same nature, providers and purpose, of helping the customers to manage and improve the state of their finances. They target the same public and can be complementary.

The contested insurance; information, management and advisory services related to the aforesaid services are similar to the opponent’s financial investments, as these services have the same natures, distribution channels and providers and target the same public. Insurance services are of a financial nature, and insurance companies are subject to similar rules of licensing, supervision and solvency as institutions providing financial services. In addition, it is not unusual to see financial institutions and an insurance company in the same economic group.

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 or similar are directed at both business clients and the public at large.

The degree of attention is high, since such services are specialised services that may have important financial consequences for their users.

3. The signs

ORYGIN
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (07/09/2006, C-108/05, Europolis, EU:C:2006:530).

The earlier trade mark is a word mark, ‘ORYGIN’; therefore, it is the word as such that is protected and not its written form.

The contested sign is figurative, containing three elements: a turquoise figurative element depicting an open-ended rectangular shape that looks as if it is in three dimensions and, to the right, the verbal element ‘ORIGIN’, depicted in dark turquoise upper case letters, with the verbal element ‘EQUITY’ below, depicted in slightly smaller light turquoise upper case letters. Within the overall composition of the mark, the figurative element is rather decorative. 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). None of the elements is clearly dominant.

The verbal elements of the two signs are meaningful in certain parts of the relevant territory where the public generally has good knowledge of English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as, for example, the public in the Netherlands.

The earlier mark ‘ORYGIN’ is likely to be perceived, at least by a part of the public, as a misspelling of the word ‘ORIGIN’, which is also present in the contested sign and means ‘the point or place where something begins, arises, or is derived’. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The contested sign’s verbal element ‘EQUITY’ means ‘the value of shares or mortgaged property’. Bearing in mind that the relevant services are of financial nature, this element is non-distinctive.

Visually, the signs coincide in the letters ‘OR-GIN’ in their distinctive elements. The third letters are ‘Y’ in the earlier mark and ‘I’ in the contested sign, which are nevertheless relatively similar letters. However, the signs differ in their stylisation and in that the contested sign additionally contains a non-distinctive verbal element and a decorative figurative element. Therefore, the signs are visually highly similar.

Aurally, at least a part of the relevant public will pronounce the distinctive verbal elements of the two signs, namely ‘ORYGIN’ and ‘ORIGIN’, in exactly the same way. The contested sign also contains a non-distinctive verbal element that may be pronounced. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The distinctive elements of the two marks, at least for a part of the relevant public, convey the same meaning, although they are spelled slightly differently, as explained above. The additional verbal element of the contested sign, ‘EQUITY’, is meaningful; however, it has no trade mark significance. The figurative element is meaningless. Taking into account all the above, 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 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. In response to the applicant’s arguments in this regard, it should be noted that the opponent was under no obligation to submit proof of use of its earlier right(s).

5. Global assessment, other arguments and conclusion

The signs are highly similar overall. Since the services are partly identical and partly similar, it is highly conceivable that the relevant consumer would perceive the contested sign as a variation of the earlier mark. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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).

The applicant argues that the word ‘ORIGIN’ is used relatively frequently as a mark in trade in the financial services sector. In support of its argument, it refers to several trade mark registrations in the European Union and the United Kingdom.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘ORIGIN’. This argument does not call into question the finding of a high degree of overall similarity between the signs in question, either. Under these circumstances, the applicant’s claims must be set aside.

The applicant refers to the Office’s previous decision B 2 460 080 to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be considered when deciding upon a particular case.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings because the signs referred to are not comparable to the signs under comparison in the present case. Therefore, the applicant’s arguments in that regard are set aside.

Considering all the above, 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 Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 913 765. It follows that the contested trade mark must be rejected for all the contested services.

As earlier Benelux trade mark registration No 913 765 ‘ORYGIN’ 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 rights 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

Solveiga BIEZA

Milda CERNIAUSKAITE

Denitza STOYANOVA-VALCHANOVA

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.