AlphaBet Capital Advisors | Decision 2702655
Date Published: Sep 28, 2017
OPPOSITION No B 2 702 655
Geertjan P.T. Groot h.o.d.n. Alphabet Consultancy, Apollostraat 9, 6991 GW Rheden, The Netherlands (opponent), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative)
a g a i n s t
Rebecca Meijlink, PO Box 9603, Dubai, United Arab Emirates, AlphaBet Capital Advisors Ltd, 43 Berkeley Square, Suite 4b, London W1J 5FJ, United Kingdom (applicants).
On 23/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 702 655 is upheld for all the contested services.
2. European Union trade mark application No 15 091 481 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 15 091 481. The opposition is based on Benelux trade mark registration No 700 597. The opponent invoked Article 8(1)(b) EUTMR.
Preliminary remark:
The Opposition Division notes that in its submissions of 15/08/2016, the opponent referred to Article 8(4) EUTMR. In the event that the opponent intended to invoke this provision, this claim has to be set aside anyway, since it was not invoked in the three-month opposition period following the publication of the contested sign on 15/02/2016. According to Rule 15(2)(c) EUTMIR, the notice of opposition must contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), and (5) EUTMR are fulfilled. According to Rule 17(2) EUTMIR, if the notice of opposition does not contain grounds for opposition in accordance with Rule 15(2)(c) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible. As such this claim must be set aside.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant states that the opposition should be rejected because the opponent did not prove that the mark on which it relied was in use. However, the opponent is only under the obligation to prove use if so requested by the applicant and such a statement does not amount to a request.
According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.
Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.
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 services
The services on which the opposition is based are, inter alia, the following:
Class 36: Financial services; financial business analysis; consultancy and advising with regard to financial matters.
The contested services are the following:
Class 36: Corporate financing; financing and funding services; corporate finance services; corporate finance consultancy; advisory services relating to corporate finance; arranging of finance; arranging the provision of finance; financial services; financial consultancy services; financial advisory services; advisory services relating to finance; arranging finance for businesses; consultancy services relating to finance; consultancy services relating to corporate finance; raising of capital; capital (raising of -); raising of financial capital.
Contested services in Class 36
Financial services are identically contained in both lists of services.
The contested corporate finance consultancy; advisory services relating to corporate finance; financial consultancy services; financial advisory services; advisory services relating to finance; consultancy services relating to finance; consultancy services relating to corporate finance are included in the broad category of the opponent’s consultancy and advising with regard to financial matters. Therefore, they are identical.
The contested corporate financing; financing and funding services; corporate finance services; arranging of finance; arranging the provision of finance; arranging finance for businesses; raising of capital; capital (raising of -); raising of financial capital are included in the broad category of the opponent’s financial services. Therefore, they are identical.
- 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 directed at the public at large and at business customers with specific professional knowledge or expertise in the area of finance.
As 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).
Therefore, the level of attention is deemed to be high for both the general and the professional public.
- The signs
ALPHABET | AlphaBet Capital Advisors |
Earlier trade mark | Contested sign |
The relevant territory is the 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).
Both signs are in English, a language which is common in the financial field (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 41). Moreover, English is widely spoken in the Benelux, particularly the Netherlands (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23). In this sense, 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 (09/03/2005, T-33/03, Hai/Shark, EU:T:2005:89, § 39 and 03/03/2004, T-355/02, SIR / ZIHR, EU:T:2004:62 § 36). In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the relevant public of the Netherlands that usually understands English.
As to the applicant’s claims concerning the use of the capital ‘B’ in its sign, the Opposition Division notes that the mark is registered as a word mark and as such the actual typeface or case used is immaterial. According to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T-211/03 ‘Faber’, EU:T:2005:13533, and 13/02/2007, T-353/04,‘Curon’, EU:T:2007:47, § 74). The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06,‘RadioCom’, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is represented in lower or upper case letters. Thus, the applicant’s claims that its mark will be seen as a play on words including ‘Bet’ has to be set aside since the shared element ‘ALPHABET’ will be understood by the relevant public as meaning a ‘set of graphs, or characters, used to represent the phonemic structure of a language’ (See: http://academic.eb.com/levels/collegiate/article/alphabet/110478). As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.
The elements ‘CAPITAL ADVISORS’ of the contested sign will be associated with advisory activities in the field of capital markets by the public in conflict. Bearing in mind that the relevant services are finance-related, these elements are descriptive.
The earlier mark’s sole distinctive element is placed at the beginning of the contested sign which is particularly important since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Moreover, this is the most distinctive element in the contested sign.
Visually and aurally, the signs coincide in ‘ALPHABET’. However, they differ in the additional non-distinctive ‘CAPITAL ADVISORS’ in the contested sign. Since the differing elements are descriptive and in secondary positioning, their impact is greatly reduced.
Therefore, the signs are visually and aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with an identical meaning regarding the distinctive term ‘ALPHABET’, but with a different meaning regarding the descriptive terms ‘CAPITAL ADVISORS’ in the contested sign, which are non-distinctive and, thus, do not help to distinguish the signs conceptually.
Therefore, 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.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The present assessment of likelihood of confusion focuses on the perception of the relevant public of the Netherlands which consists of both the general and the professional public. The degree of attention is high.
As concluded above, the services are identical.
The marks are visually, aurally and conceptually similar to a high degree, as explained in detail above in section c) of this decision.
Due to the visual, aural and conceptual high similarity between the signs combined with the identity of the services, a likelihood of confusion exists even in case of a high level of attention.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
In its observations, the applicant argues that it owns or owned several registrations with the wording ‘ALPHABET CAPITAL ADVISORS’ in the Benelux and the United Kingdom, some of which purportedly coexist or coexisted with the opponent’s earlier mark.
According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).
In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.
In the present case, the applicant states that it has owned identical trade mark registrations in the Benelux and the United Kingdom since 2004 and 2005 respectively and that the opponent never raised any objection as to possible confusion.
In this respect, the applicant also provided information from the Netherlands Authority of Financial Markets, from different websites, namely Acquisition International, Wealth and Finance International and the Bank of England Prudential Regulation Authority which purportedly indicates that the opponent’s field of activity is different.
However the information is of little value when determining whether the marks co-exist and indeed the question of past co-existence is not even demonstrated.
Therefore, in the absence of convincing arguments and evidence thereof, this argument must be rejected as unfounded.
The applicant argues that its EUTM has a certain reputation and filed various pieces of evidence to substantiate this claim. However, the right to an EUTM begins on the date when it is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.
Considering all the above, there is a likelihood of confusion on the part of the public in the Netherlands that speaks English. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the Benelux countries is sufficient to reject the contested application.
Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public of the Benelux countries.
Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 700 597. It follows that the contested trade mark must be rejected for all the contested services.
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
Martin EBERL | Frank MANTEY | Vanessa PAGE |
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.