DreamFunding | Decision 2514571 - Dreamfunda LLC v. FINNOVA LIMITED

Date Published: Sep 28, 2017

OPPOSITION No B 2 514 571

Dreamfunda LLC, 2360 Corporate Circle, Suite 400, Henderson 89074-7722 Nevada, United States of America (opponent), represented by Cleveland, 10 Fetter Lane, London  EC4A 1BR, United Kingdom (professional representative)

a g a i n s t

Finnova Limited, Sir William Newton 3rd Floor Labama House, Port Louis, Mauritius (applicant), represented by Arnaud Rougeau-Mauger, 23 rue d'Anjou, 75008 Paris, France (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 514 571 is partially upheld, namely for the following contested services:

Class 36:        Banking; monetary affairs; provident fund services; online banking; issuing of travellers' cheques and letters of credit; financial management; financing and funding services; financial analysis; mutual funds; fund investments; financial consultancy; evaluation (financial -) [insurance, banking, real estate].

Class 42:        Consultancy in the design and development of computer hardware; software design and development; design, maintenance, rental and updating of computer software; computer programming; computer system analysis; computer system design; consultancy in the field of computers; digitization of documents; software as a service [SaaS]; information technology [IT] consultancy; server hosting.

2.        European Union trade mark application No 13 601 125 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 13 601 125, namely against all of the services in Classes 36 and 42. The opposition is based on European Union trade mark registration No 12 567 161. 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:        Crowdfunding services for athletes, sports, sporting events and sports project, namely, connecting donors to individuals, start-ups, existing businesses and non-profits; providing a website at which users can conduct fundraising events to raise money for athletes, sports, sporting events and sports projects and make financial pledges to athletes, sports, sporting events and sports projects; providing fundraising services for others via a global computer network in support of athletes, sports, sporting events and sports projects.

Class 42:        Computer services, namely, creating an on-line community for users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking services in the field of crowdfunding, athletes, sports, sporting events and sports projects; computer services, namely, hosting and maintaining an on-line web site for others for the purpose of facilitating the crowdfunding of athletes to participate in sporting events and sports projects; providing a website that allows users to create customized web pages featuring crowdfunding campaigns for athletes, sports, sporting events and sports projects; computer services, namely, hosting an on-line platform that allows users to publish information about crowdfunding campaigns and to make contributions to such campaigns for athletes, sports, sporting events and sports projects.

The contested services are the following:

Class 36:        Insurance services; banking; monetary affairs; real estate affairs; provident fund services; online banking; issuing of travellers' cheques and letters of credit; valuation of property; financial management; property (real estate -) management; financing and funding services; financial analysis; mutual funds; fund investments; financial consultancy; evaluation (financial -) [insurance, banking, real estate].

Class 42:        Science and technology services; scientific research; technical research; consultancy in the design and development of computer hardware; software design and development; research and development for others; technical project studies; architecture; design of interior decor; design, maintenance, rental and updating of computer software; computer programming; computer system analysis; computer system design; consultancy in the field of computers; digitization of documents; software as a service [SaaS]; information technology [IT] consultancy; server hosting; testing [inspection] of vehicles for roadworthiness; graphic design; styling [industrial design]; authenticating works of art; energy auditing.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services. The term ‘namely’, used in the opponent’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

Contested services in Class 36

Crowdfunding is a financial and monetary service that specifically aims to fund a project or venture by raising monetary contributions from a large number of people. Although the concept can also be executed through mail-order subscriptions, benefit events, and other methods, it is now often performed via Internet-mediated registries. Crowdfunding has been used to fund a wide range of for-profit entrepreneurial ventures such as artistic and creative projects, medical expenses, travel, or community-oriented social entrepreneurship projects.

The contested banking and online banking are banking services which consist of providing all the services necessary for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business. Furthermore, the contested issuing of travellers' cheques and letters of credit is a type of banking service commonly offered by banks and other financial institutions. These services are directed at the public at large and the professional public and may be provided in person and through the Internet.

The contested monetary affairs; provident fund services; financial management; financing and funding services; financial analysis; mutual funds; fund investments; financial consultancy; evaluation (financial -) [insurance, banking, real estate] are all  financial and monetary services which are directed at the public at large and the professional public and may be provided in person and through the Internet.

All these contested services are therefore at least similar to the opponent’s crowdfunding services for athletes, sports, sporting events and sports project, namely, connecting donors to individuals, start-ups, existing businesses and non-profits; providing a website at which users can conduct fundraising events to raise money for athletes, sports, sporting events and sports projects and make financial pledges to athletes, sports, sporting events and sports projects; providing fundraising services for others via a global computer network in support of athletes, sports, sporting events and sports projects, given that they coincide in their nature and methods of use, while targeting the same end users through the same commercial channels. Additionally, they may coincide in service provider, considering that banks, financial agents and consultants may also specialise in the field of crowdfunding. Furthermore, some may be complementary.

The contested insurance services; real estate affairs; property (real estate -) management; valuation of property have different natures and purposes to all the opponent’s Class 36 and Class 42 services. The relevant public will not usually coincide and the services are neither complementary nor are they in competition. Therefore, they are dissimilar.

Contested services in Class 42

The contested software design and development; design, maintenance, rental and updating of computer software; computer programming, are all Information Technology (IT) services aimed at developing, programming, and implementing software. These services are therefore similar to the opponent’s computer services, namely, hosting and maintaining an on-line web site for others for the purpose of facilitating the crowdfunding of athletes to participate in sporting events and sports projects; providing a website that allows users to create customized web pages featuring crowdfunding campaigns for athletes, sports, sporting events and sports projects, as they can coincide in producer/provider, end user and distribution channels.

The contested consultancy in the design and development of computer hardware; computer system analysis; computer system design; consultancy in the field of computers; digitization of documents; software as a service [SaaS]; information technology [IT] consultancy; server hosting, despite their different purposes, have a somewhat similar nature to the opponent’s computer services, namely, hosting and maintaining an on-line web site for others for the purpose of facilitating the crowdfunding of athletes to participate in sporting events and sports projects; providing a website that allows users to create customized web pages featuring crowdfunding campaigns for athletes, sports, sporting events and sports projects, given that they are IT and computer system design services. The relevant public may coincide, as may the provider. They are thus considered similar to a low degree.

The contested science and technology services; scientific research; technical research; research and development for others; technical project studies; architecture; design of interior decor; testing [inspection] of vehicles for roadworthiness; graphic design; styling [industrial design]; authenticating works of art; energy auditing have different natures and purposes to all the opponent’s Class 42 and Class 36 services. The relevant public will not usually coincide and the services are neither complementary nor are they in competition. Consequently, they are dissimilar.

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, most of the services found to be at least similar (to different degrees) are directed at the public at large, and. some may also be directed at business customers with specific professional knowledge or expertise, for example, computer system analysis or computer system design.

The degree of attention may vary from average to high, depending on the cost of the services and given that some of the IT services in question may have a considerable impact on the success of a business and so they will be chosen with special care.

3. The signs

	DreamFunding
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 verbal elements composing the signs are meaningful for the part of the relevant public with knowledge of English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public in the EU.

Although they are respectively composed of the word elements ‘dreamfunda’ and ‘DreamFunding’, the relevant consumers, when perceiving the verbal elements of signs, will break them down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Thus, the Opposition Division considers that the relevant public will perceive the common verbal element ‘DREAM’ and the verbal element ‘fund’ in the earlier mark as well as the analogous verbal element ‘Funding’ in the contested sign.

The common verbal element ‘DREAM’ means, inter alia, 'a series of thoughts, images, and sensations occurring in a person’s mind during sleep’ (information extracted from Oxford Dictionaries on 10/05/2017 at https://en.oxforddictionaries.com/definition/dream). As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

As was stated above, the relevant public will perceive the verbal element ‘fund’ in the earlier mark and the analogous verbal element ‘Funding’ in the contested sign. These elements will be associated by the relevant consumers as alluding to the financial nature of the contested services in Class 36. To that extent, they are considered to be of a weaker than average distinctiveness.

Although the combination of these elements may be perceived by the relevant public as being an allusion to the concept of ‘funding dreams’, the Opposition Division considers this allusion to be sufficiently imaginative in the context of the services in question so as to not materially affect the overall distinctiveness of the signs in contention, which are deemed to have an average degree of distinctiveness.

The contested sign is the word mark ‘DreamFunding’ and therefore it is immaterial whether the element is written in upper or lower-case letters, given that in the case of word marks, it is the word as such that is protected, regardless of its written form.

The earlier mark is a figurative mark containing the word element ‘dreamfunda’, written in black slightly stylized print. A device depicting a partial star is located to the right of the mark’s word element. It should be noted that this figurative element is mostly ornamental and the public will perceive it as a graphic element used to embellish the sign as an allusion to the superior quality of the services in question. For this reason, the element is considered to be weak. Furthermore, the earlier mark has no elements that could clearly be considered more dominant than other elements.

Visually and aurally, the signs coincide in the sequence of letters ‘DREAMFUND-’, which are the first nine (out of ten) letters of the earlier mark’s verbal element and the first nine (out of twelve) letters of the contested sign. The verbal elements differ due in their respective final letters (‘-A’ in the earlier mark vs ‘-ING’ in the contested sign). The signs further differ due to the earlier mark’s previously described weak stylization

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).

Therefore, considering the coincidence in the majority of the letters of the verbal elements of the marks and the weak nature of the earlier mark’s stylization, the signs are visually and aurally highly similar.

Conceptually, as was referred above, the relevant public will perceive the distinctive word element ‘DREAM’ in both the earlier mark and the contested sign. The relevant public will also perceive the word element ‘fund’ in the earlier mark and the analogous word element ‘Funding’ in the contested sign, which are deemed to be of a weaker than average distinctiveness for the contested services in Class 36. Additionally, the combination of these elements may be perceived by the relevant public as being an allusion to the concept of ‘funding dreams’.

Furthermore, the weak stylization of the earlier right, including the device depicting a partial star, does not create any strong conceptual differences between the signs. To that 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 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, despite the presence of weak elements in the mark, as was stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between 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).

As has been concluded above, some of the contested services are at least similar (to different degrees) and the signs are visually, aurally and conceptually similar to a high degree.

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 to the products in question, as is generally the case with some of the IT services in question, need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In the present case, the earlier mark has no elements that could clearly be considered more dominant than other elements, although the verbal components of the sign have a stronger impact on the consumer than the weak figurative components, which do not create clear conceptual differences between the signs.

The signs coincide in the sequence of letters ‘DREAMFUND-’, which are the first nine (out of ten) letters of the earlier mark’s verbal element and the first nine (out of twelve) letters of the contested sign. This is particularly important given that 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.

Furthermore, as was concluded above, the relevant public will perceive the distinctive word element ‘DREAM’ in both the earlier mark and the contested sign, while also perceiving the word element ‘fund’ in the earlier mark and the analogous word element ‘Funding’ in the contested sign. Although the latter word elements are weak with regard to the contested services in Class 36, they nonetheless serve to create a greater overall proximity between the marks in contention. Additionally, the combination of these elements may be perceived by the relevant public as being an allusion to the concept of ‘funding dreams’.

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 goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public in the relevant territory and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 567 161. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be similar (to different degrees) to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

José Alexandre DE PAIVA ANDRADE TEIXEIRA

Ewelina SLIWINSKA

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.