eTRADER by Goldenburg | Decision 2636424

Date Published: Oct 11, 2017

OPPOSITION No B 2 636 424

E*TRADE Financial Corporation, 1271 Avenue of the Americas, 14th Floor, New York, New York 10020, United States of America (opponent), represented by Beck Greener, Fulwood House, 12 Fulwood Place, London WC1V 6HR, United Kingdom (professional representative)

a g a i n s t

Goldenburg Group Limited, 1 Siafi Street, Porto Bello Bld, 3042 Limassol, Cyprus (applicant), represented by Rastislav Blaško, Hroznová 19, 902 01 Pezinok, Slovakia (professional representative).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 636 424 is partially upheld, namely for the following contested services:

Class 35 (in its entirety): Advertising, marketing and promotional services; Business analysis, research and information services; Business assistance, management and administrative services; Commercial trading and consumer information services; Advertising, marketing and promotional consultancy, advisory and assistance services; Distribution of advertising, marketing and promotional material; Loyalty, incentive and bonus program services; Product demonstrations and product display services; Provision of advertising space, time and media; Public relations services; Trade show and exhibition services; Advertisement and publicity services by television, radio, mail; Advertisement for others on the Internet; Advertisement via mobile phone networks; Advertisements (Placing of -); Advertising; Advertising agencies; Advertising and marketing; Advertising and promotion services and related consulting; Advertising business especially in the field of telematic and telephone networks; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Advertising in periodicals, brochures and newspapers; Advertising in the popular and professional press; Advertising of commercial or residential real estate; Advertising of the goods of other vendors, enabling customers to conveniently view and compare the goods of those vendors; Advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; Advertising, including on-line advertising on a computer network; Advertising, including promotion of products and services of third parties through sponsoring arrangements and licence agreements relating to international sports’ events; Advertising services for the promotion of e-commerce; Advertising services of a radio and television advertising agency; Advertising services provided via a data base; Advertising services provided via the internet; Advertising services relating to data bases; Advertising services relating to financial investment; Advertising services relating to financial services; Advertising services relating to newspapers; Advertising services relating to the provision of business; Advice in the field of business management and marketing; Banner advertising; Cinema advertising; Compilation of advertisements for use as web pages on the Internet; Compilation of advertisements; Compilation of advertisements for use on the internet; Compilation, production and dissemination of advertising matter; Corporate identity services; On-line advertising on a computer network; On-line promotion of computer networks and websites; Online advertisements; Online advertising via a computer communications network; Pay per click advertising; Planning of marketing strategies; Preparation of publicity documents; Production of video recordings for advertising purposes; Production of visual advertising matter; Promotion [advertising] of business; Promotion services; Promotion, advertising and marketing of on-line websites; Promotional advertising for exploration projects; Promotional marketing; Promotional services provided by telephone; Provision of information relating to advertising; Provision of information relating to marketing; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Publication of advertising literature; Publication of publicity materials; Publication of publicity texts; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Publicity and sales promotion services; Publicity columns preparation; Radio advertising; Radio and television advertising; Reproduction of advertising material; Response advertising; Sales promotion; Search engine optimisation; Search engine marketing services; Telemarketing services; Telephone marketing services [not selling]; Television advertising; Trade marketing [other than selling]; Trade promotional services; Updating of advertising information on a computer data base; Updating of advertising material; Web site traffic optimisation; Writing of publicity texts; Distribution of advertising mail and of advertising supplements attached to regular editions; Distribution of advertising material by post; Distribution of promotional matter; Distribution of publicity texts; Handbill distribution; Business merchandising display services; Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; Organization of exhibitions for commercial or advertising purposes; Organization of trade fairs for commercial or advertising purposes; Planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes; Organisation of exhibitions for business or commerce.

Class 36 (in its entirety): Financial and monetary services, and banking; Currency trading and exchange services; Debt recovery and factoring services; Financial information, data, advice and consultancy services; Financial transfers and transactions, and payment services; Financing and funding services; Investment services; Loan and credit, and lease-finance services; Securities and commodities trading services; Acquisition and transfer of monetary claims; Administration of deposit taking; Administration of employee benefit plans; Administration of financial affairs; Arranging of overdrafts; Asset management services; Bank account and savings account services; Bank account information services; Financial planning services; Venture capital services; Bureau de change services; Buying and selling currency; Cash and foreign exchange transactions; Computerised financial services relating to foreign currency dealings; Currency dealing; Currency exchange and advice; Currency exchange rate quotations; Currency trading; Financial database services relating to foreign exchange; Financial information in the nature of rates of exchange; Financial information services relating to currencies; Financial transactions relating to currency swaps; Forecasting of foreign exchange rates; Foreign currency services; Foreign exchange bureaux; Foreign exchange market; Foreign monetary exchange advisory services; Money exchange agency services; Money exchange and transfer; On-line real-time currency trading; Preparation and quotation of exchange rate information; Provision of exchange rate lists; Provision of foreign currency; Provision of information relating to rates of exchange; Provision of pricing information about foreign exchange rates; Swaps of currency rates; Trading in currencies; Agencies for collecting electric power utility payments; Agencies for collecting gas utility payments; Arranging the sale of loans; Bailiff services (debt collection); Collection of credit sales; Computerised legal debt collection services; Consultancy for clients with regard to the organisation of debt recovery; Credit recovery and collection; Credit risk insurance [factoring]; Debt collection agencies; Debt collection and debt factoring services; Debt counseling services; Debt management services; Debt recovery; Debt recovery and collection agencies; Debt restructuring; Duty drawback services; Export factoring; Factoring; Factoring agencies; Factoring agency services; Factoring of debts; Factoring of financial undertakings; Factoring services for invoices; Financial services, namely, debt settlement; Insolvency services; Invoice discounting services; National debt collection; Organising of debt collections; Provision of information relating to debt factoring; Reclamation of import duties for others; Reclamation of outstanding debts; Repossession services; Bureau de change services; Buying and selling currency; Cash and foreign exchange transactions; Computerised financial services relating to foreign currency dealings; Currency dealing; Currency exchange and advice; Currency exchange rate quotations; Currency trading; Financial database services relating to foreign exchange; Financial information in the nature of rates of exchange; Financial information services relating to currencies; Financial transactions relating to currency swaps; Forecasting of foreign exchange rates; Foreign currency services; Foreign exchange bureaux; Foreign exchange market; Foreign monetary exchange advisory services; Money exchange agency services; Money exchange and transfer; On-line real-time currency trading; Preparation and quotation of exchange rate information; Provision of exchange rate lists; Provision of foreign currency; Provision of information relating to rates of exchange; Provision of pricing information about foreign exchange rates; Financial appraisal services; Financial rating and credit reports; Actuarial services relating to financial transactions; Advice relating to investment during retirement; Advice relating to loan recovery services; Advice relating to mortgages for residential properties; Advisory services relating to money management; Advice services relating to enhancement of mortgages; Advisory services relating to [financial] risk management; Advisory services relating to mortgages; Capital investment consultation; Check [cheque] verification; Clearing of cheques; Collection of financial information; Comparison of performance of portfolios of securities; Comparison of performance of securities; Computer information services relating to financial management; Computerised financial advisory services; Computerised financial analysis; Computerised financial data services; Computerised financial information services; Computerised information services relating to banking matters; Automatic recording services for financial transactions; Estimates for financial purposes; Business appraisals for financial valuation; Asset evaluation [financial]; Financial appraisals and valuations; Financial evaluation; Financial evaluations [banking]; Fiscal assessment; Fiscal assessment and evaluation; Fiscal assessments; Valuation of capital stock; Valuation of farm assets; Valuation of portfolios of securities; Credit assessment services; Credit reporting services; Financial credit scoring services; Preparation of credit reports; Provision of credit information; Preparation of credit rating reports; Provision of credit rating; Financial advice relating to wills; Financial advisory and management services; Financial advisory services for companies; Financial advisory services for individuals; Financial advisory services provided for bankers; Financial advisory services relating to tax; Financial advisory services provided for controllers; Financial advisory services relating to assets management; Financial advisory services relating to securities; Financial analysis; Financial analysis and research services; Financial and investment consultancy services; Financial consultancy; Financial consultancy in relation to the buying and selling of businesses; Financial consultancy in the energy sector; Financial data base services; Financial economic advisory services; Financial economic analysis; Financial forecasting; Financial information; Financial information and advisory services; Financial information and evaluations; Financial information for investors; Financial information management and analysis services; Financial information processing; Financial information provided by electronic means; Financial information retrieval services; Financial information services for banks provided via computer networks and satellite transmissions; Financial information services for financial institutions provided via computer networks and satellite transmissions; Financial information services provided by access to a computer database; Financial information services relating to financial bond markets; Computerised information services relating to investments; Computerised information services relating to financial business; Consultancy services relating to corporate finance; Conducting financial feasibility studies; Consultancy services relating to credit; Consultancy services relating to personal finance; Consultation on the provision of shipping finance (Services for the -); Consultations relating to banking; Credit inquiry and consultation; Debt advisory services; Economic financial research services; Financial advice relating to inheritance; Financial advice relating to investment; Financial advice relating to settlements; Financial information services relating to financial stock markets; Financial information services relating to individuals; Financial investment analysis and stock research; Financial investment research services; Financial market information services; Financial research and information services; Financial strategy consultancy services; Financial valuation relating to heating costs; Fund investment consultation; Income tax advice [financial]; Information services relating to banking; Information services relating to bonds; Information services relating to finance, provided on-line from a computer database or the Internet; Information services relating to financial business appraisals; Information services relating to securities; Information services relating to stocks; Information services relating to the automated payment of accounts; Information services relating to the automated transfer of funds; Investment analysis; Investment consultation; Investment information; Investment performance monitoring; Investment research; Investment risk assessment services; Monitoring of financial portfolios; Planning of finances relating to taxation; Preparation and analysis of financial reports; Preparation of financial analyses relating to bond markets; Preparation of financial analyses relating to commodities; Preparation of financial analyses relating to securities; Preparation of financial reports; Professional consultancy relating to finance; Providing bank account information by telephone; Providing financial information via a web site; Providing information regarding publicly traded investments; Providing information regarding the administration of trust accounts; Providing investors with financial information; Providing on-line news in the field of finance; Provision of advice [financial] to accident investigators; Provision of advice [financial] to loss adjusters; Provision of advice on impaired debt; Provision of computerised financial information; Provision of computerised information relating to securities; Provision of financial information by way of computer terminals; Provision of financial information for professionals in the field of portfolio management, for portfolio management; Provision of financial information relating to fuel expenditure; Provision of financial information relating to shares; Provision of financial information relating to the stock exchange; Provision of information relating to accounts [financial]; Provision of information relating to financial services; Provision of investment information; Provision of investment savings plans; Provision of pricing information about bonds; Provision of pricing information about commodities; Provision of pricing information about equities; Provision of pricing information about futures; Provision of pricing information about indices; Provision of pricing information about money market rates; Provision of pricing information about mutual funds; Provision of tax advice [not accounting]; Recording of inter parties transactions in respect of finance; Recording of inter parties transactions in respect of investments; Recording of inter parties transactions in respect of stocks; Recording the transfer of securities; Recording the transfer of shares; Registration of securities; Registration of shares; Repair costs evaluation [financial appraisal]; Research services relating to banking; Research services relating to finance; Research services relating to investment; Securities advisory services; Share orientation advisory services; Share price information services; Intellectual property valuation services; Valuation services of property for fiscal purposes.

2. European Union trade mark application No 14 427 678 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 427 678. The opposition is based, inter alia, on the following earlier rights: (1) European Union trade mark registration No 604 702 for the word mark ‘E*TRADE’, (2) European Union trade mark registration No 1 724 566 for the figurative mark and (3) European Union trade mark registration No 1 108 034 for the word mark ‘E*TRADE GERMANY’. The opponent invoked Article 8(1)(b) EUTMR for the abovementioned earlier rights and Article 8(5) EUTMR solely for European Union trade mark registration No 604 702 for the word mark ‘E*TRADE’.

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 following earlier rights: (1) European Union trade mark registration No 604 702 for the word mark ‘E*TRADE’, (2) European Union trade mark registration No 1 724 566 for the figurative mark and (3) European Union trade mark registration No 1 108 034 for the word mark ‘E*TRADE GERMANY.

The goods and services

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

(1) European Union trade mark registration No 604 702

Class 36: Stock brokerage services.

(2) European Union trade mark registration No 1 724 566

Class 36: Financial services; stock brokerage services; credit card services; loan financing; mortgage lending and mortgage brokerage services; bill payment services; electronic transfer of funds for others; insurance brokerage services; home banking; Internet banking; employee stock plan administration services; advisory, consultancy and information services relating to the foregoing, and to investment and finance, including the provision of such services online from a computer network or via the Internet or extranets.

Class 38: Provision of access to the Internet; providing on-line electronic bulleting board services and chat rooms; electronic transmission of data and messages; telecommunications gateway services; provision of on-line links to news, financial information, business information, current events and reference materials; telecommunication of information (including web pages), computer software and any other data; electronic mail services; providing telecommunications connections to the Internet or databases; advisory, consultancy and information services relating to the foregoing, including the provision of such services online from a computer network or via the Internet or extranets.

Class 42: Computer services; consulting, design, testing, research, analysis, technical support and other technical and advisory services, all relating to computing, computer programming, computer networks and websites; web site design, creation, maintaining and hosting services; website portal services; providing access to, leasing access time to, and providing search, retrieval, indexing, linking and data organization capabilities for the Internet, electronic communications networks and electronic databases; transferring and disseminating information and data via computer networks and the Internet; provision of search engines for searching the Internet; information, consultancy and advisory services, all relating to the foregoing, including such services provided online from a computer network or via the Internet or extranets.

(3) European Union trade mark registration No 1 108 034

Class 35: Advertising and marketing services; promoting the goods and services of others by placing advertisements and promotional displays in an electronic site accessed through computer networks; electronic storage and retrieval of data in the fields of business, finance, and news; online computer services, namely, providing information regarding the goods and services of others in the nature of a buyers’ guide, by means of a global computer network (ie., the Internet).

Class 36: Financial services; stock brokerage services, credit card services, loan, mortgage, and mortgage brokerage services, bill payment services, electronic transfers of funds of behalf of others, insurance services, and providing information in the fields of investment and finance over computer networks and global communications networks.

Class 42: Computer services, namely, creating indexes of information, sites, and other resources available on computer networks; searching and retrieving information, sites, and other resources available on computer networks for others; providing an online link to news, financial information, business information, current events, and reference materials; computer services, namely, providing multiple user access to computer networks and bulletin boards for the transfer and dissemination of a wide range of information; providing a wide range of general interest information via computer networks, computer software design and creation services; computer consultancy services.

The contested goods and services are the following:

Class 16: Adhesives for stationery or household purposes; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Decoration and art materials and media; Disposable paper products; Filtering materials of paper; Money holders; Paper and cardboard; Printed matter; Stationery and educational supplies; Blank paper computer tapes for recording programs; Broadsheets; Business card paper [semi-finished]; Calendered paper; Carbon paper; Carbon paper [finished products]; Billbooks; Banknotes; Bank checks; Atlases; Appointment books; Almanacs; Announcement cards [stationery]; Appliques in the form of decals; Advertising signs of paper; Advertising signs of cardboard; Advertising posters; Advertisement boards of paper; Advertisement boards of card; Advent calendars; Adhesive transfers; Books; Address books; Address lists; Address stamps; Activity books; Manuals [handbooks]; Reference books; Printing blocks; Address labels; Adhesive labels; Adhesive note paper; Agendas; Color pencils; Decorations for pencils; Fountain pens; Marking stamps; Pen sets; Pen stands; Pen cases; Pencil cups; Pencil holders; Pencil sets; Pens; Stamp pads; Rubber stamps; Rollerball pens; Writing sets; Writing instruments; Steel pens; Duplicators; Binding materials for books and papers; Bookbinding material.; Calendars; Cards; Catalogues; Cheque books; Cheques; Gazetteers; Forms, printed; Events programmes; Educational publications; Display banners of paper; Directories; Diagrams; Daily newspaper; Daily planners; Data processing programmes in printed form; Conference folders; Coupon books; Coupons; Credit cards without magnetic coding; Gift certificates; Gift vouchers; Journals; Magazine covers; Magazine supplements for newspapers; Magazines [periodicals]; Newsletters; Newspapers; Newsprint paper; Occasion cards; Paper emblems; Paper patterns; Photographs [printed]; Poster magazines; Posters; Price lists; Pre-paid telephone calling cards, not magnetically encoded; Posters made of paper; Printed advertising boards of cardboard; Printed advertisements; Printed advertising boards of paper; Printed awards; Printed certificates; Printed emblems [decalcomanias]; Printed guides; Score books; Reference cards; Prints [engravings]; Printed periodicals; Printed reports; Printed recipe cards; Printed tickets; Printed timetables; Prints; Stickers [stationery]; Stickers [decalcomanias]; Souvenir programmes; Timetables; Tickets; Thank you cards; Vouchers of value; Wall calendars; Wall charts; Wallcoverings (Books containing samples of -).

Class 35: Advertising, marketing and promotional services; Business analysis, research and information services; Business assistance, management and administrative services; Commercial trading and consumer information services; Advertising, marketing and promotional consultancy, advisory and assistance services; Distribution of advertising, marketing and promotional material; Loyalty, incentive and bonus program services; Product demonstrations and product display services; Provision of advertising space, time and media; Public relations services; Trade show and exhibition services; Advertisement and publicity services by television, radio, mail; Advertisement for others on the Internet; Advertisement via mobile phone networks; Advertisements (Placing of -); Advertising; Advertising agencies; Advertising and marketing; Advertising and promotion services and related consulting; Advertising business especially in the field of telematic and telephone networks; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Advertising in periodicals, brochures and newspapers; Advertising in the popular and professional press; Advertising of commercial or residential real estate; Advertising of the goods of other vendors, enabling customers to conveniently view and compare the goods of those vendors.; Advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; Advertising, including on-line advertising on a computer network; Advertising, including promotion of products and services of third parties through sponsoring arrangements and licence agreements relating to international sports’ events; Advertising services for the promotion of e-commerce; Advertising services of a radio and television advertising agency; Advertising services provided via a data base; Advertising services provided via the internet; Advertising services relating to data bases; Advertising services relating to financial investment; Advertising services relating to financial services; Advertising services relating to newspapers; Advertising services relating to the provision of business; Advice in the field of business management and marketing; Banner advertising; Cinema advertising; Compilation of advertisements for use as web pages on the Internet; Compilation of advertisements; Compilation of advertisements for use on the internet; Compilation, production and dissemination of advertising matter; Corporate identity services; On-line advertising on a computer network; On-line promotion of computer networks and websites; Online advertisements; Online advertising via a computer communications network; Pay per click advertising; Planning of marketing strategies; Preparation of publicity documents; Production of video recordings for advertising purposes; Production of visual advertising matter; Promotion [advertising] of business; Promotion services; Promotion, advertising and marketing of on-line websites; Promotional advertising for exploration projects; Promotional marketing; Promotional services provided by telephone; Provision of information relating to advertising; Provision of information relating to marketing; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Publication of advertising literature; Publication of publicity materials; Publication of publicity texts; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Publicity and sales promotion services; Publicity columns preparation; Radio advertising; Radio and television advertising; Reproduction of advertising material; Response advertising; Sales promotion; Search engine optimisation; Search engine marketing services; Telemarketing services; Telephone marketing services [not selling]; Television advertising; Trade marketing [other than selling]; Trade promotional services; Updating of advertising information on a computer data base; Updating of advertising material; Web site traffic optimisation; Writing of publicity texts; Distribution of advertising mail and of advertising supplements attached to regular editions; Distribution of advertising material by post; Distribution of promotional matter; Distribution of publicity texts; Handbill distribution; Business merchandising display services; Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; Organization of exhibitions for commercial or advertising purposes; Organization of trade fairs for commercial or advertising purposes; Planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes; Organisation of exhibitions for business or commerce.

Class 36: Financial and monetary services, and banking; Currency trading and exchange services; Debt recovery and factoring services; Financial information, data, advice and consultancy services; Financial transfers and transactions, and payment services; Financing and funding services; Investment services; Loan and credit, and lease-finance services; Securities and commodities trading services; Acquisition and transfer of monetary claims; Administration of deposit taking; Administration of employee benefit plans; Administration of financial affairs; Arranging of overdrafts; Asset management services; Bank account and savings account services; Bank account information services; Financial planning services; Venture capital services; Bureau de change services; Buying and selling currency; Cash and foreign exchange transactions; Computerised financial services relating to foreign currency dealings; Currency dealing; Currency exchange and advice; Currency exchange rate quotations; Currency trading; Financial database services relating to foreign exchange; Financial information in the nature of rates of exchange; Financial information services relating to currencies; Financial transactions relating to currency swaps; Forecasting of foreign exchange rates; Foreign currency services; Foreign exchange bureaux; Foreign exchange market; Foreign monetary exchange advisory services; Money exchange agency services; Money exchange and transfer; On-line real-time currency trading; Preparation and quotation of exchange rate information; Provision of exchange rate lists; Provision of foreign currency; Provision of information relating to rates of exchange; Provision of pricing information about foreign exchange rates; Swaps of currency rates; Trading in currencies; Agencies for collecting electric power utility payments; Agencies for collecting gas utility payments; Arranging the sale of loans; Bailiff services (debt collection); Collection of credit sales; Computerised legal debt collection services; Consultancy for clients with regard to the organisation of debt recovery; Credit recovery and collection; Credit risk insurance [factoring]; Debt collection agencies; Debt collection and debt factoring services; Debt counseling services; Debt management services; Debt recovery; Debt recovery and collection agencies; Debt restructuring; Duty drawback services; Export factoring; Factoring; Factoring agencies; Factoring agency services; Factoring of debts; Factoring of financial undertakings; Factoring services for invoices; Financial services, namely, debt settlement; Insolvency services; Invoice discounting services; National debt collection; Organising of debt collections; Provision of information relating to debt factoring; Reclamation of import duties for others; Reclamation of outstanding debts; Repossession services; Bureau de change services; Buying and selling currency; Cash and foreign exchange transactions; Computerised financial services relating to foreign currency dealings; Currency dealing; Currency exchange and advice; Currency exchange rate quotations; Currency trading; Financial database services relating to foreign exchange; Financial information in the nature of rates of exchange; Financial information services relating to currencies; Financial transactions relating to currency swaps; Forecasting of foreign exchange rates; Foreign currency services; Foreign exchange bureaux; Foreign exchange market; Foreign monetary exchange advisory services; Money exchange agency services; Money exchange and transfer; On-line real-time currency trading; Preparation and quotation of exchange rate information; Provision of exchange rate lists; Provision of foreign currency; Provision of information relating to rates of exchange; Provision of pricing information about foreign exchange rates; Financial appraisal services; Financial rating and credit reports; Actuarial services relating to financial transactions; Advice relating to investment during retirement; Advice relating to loan recovery services; Advice relating to mortgages for residential properties; Advisory services relating to money management; Advice services relating to enhancement of mortgages; Advisory services relating to [financial] risk management; Advisory services relating to mortgages; Capital investment consultation; Check [cheque] verification; Clearing of cheques; Collection of financial information; Comparison of performance of portfolios of securities; Comparison of performance of securities; Computer information services relating to financial management; Computerised financial advisory services; Computerised financial analysis; Computerised financial data services; Computerised financial information services; Computerised information services relating to banking matters; Automatic recording services for financial transactions; Estimates for financial purposes; Business appraisals for financial valuation; Asset evaluation [financial]; Financial appraisals and valuations; Financial evaluation; Financial evaluations [banking]; Fiscal assessment; Fiscal assessment and evaluation; Fiscal assessments; Valuation of capital stock; Valuation of farm assets; Valuation of portfolios of securities; Credit assessment services; Credit reporting services; Financial credit scoring services; Preparation of credit reports; Provision of credit information; Preparation of credit rating reports; Provision of credit rating; Financial advice relating to wills; Financial advisory and management services; Financial advisory services for companies; Financial advisory services for individuals; Financial advisory services provided for bankers; Financial advisory services relating to tax; Financial advisory services provided for controllers; Financial advisory services relating to assets management; Financial advisory services relating to securities; Financial analysis; Financial analysis and research services; Financial and investment consultancy services; Financial consultancy; Financial consultancy in relation to the buying and selling of businesses; Financial consultancy in the energy sector; Financial data base services; Financial economic advisory services; Financial economic analysis; Financial forecasting; Financial information; Financial information and advisory services; Financial information and evaluations; Financial information for investors; Financial information management and analysis services; Financial information processing; Financial information provided by electronic means; Financial information retrieval services; Financial information services for banks provided via computer networks and satellite transmissions; Financial information services for financial institutions provided via computer networks and satellite transmissions; Financial information services provided by access to a computer database; Financial information services relating to financial bond markets; Computerised information services relating to investments; Computerised information services relating to financial business; Consultancy services relating to corporate finance; Conducting financial feasibility studies; Consultancy services relating to credit; Consultancy services relating to personal finance; Consultation on the provision of shipping finance (Services for the -); Consultations relating to banking; Credit inquiry and consultation; Debt advisory services; Economic financial research services; Financial advice relating to inheritance; Financial advice relating to investment; Financial advice relating to settlements; Financial information services relating to financial stock markets; Financial information services relating to individuals; Financial investment analysis and stock research; Financial investment research services; Financial market information services; Financial research and information services; Financial strategy consultancy services; Financial valuation relating to heating costs; Fund investment consultation; Income tax advice [financial]; Information services relating to banking; Information services relating to bonds; Information services relating to finance, provided on-line from a computer database or the Internet; Information services relating to financial business appraisals; Information services relating to securities; Information services relating to stocks; Information services relating to the automated payment of accounts; Information services relating to the automated transfer of funds; Investment analysis; Investment consultation; Investment information; Investment performance monitoring; Investment research; Investment risk assessment services; Monitoring of financial portfolios; Planning of finances relating to taxation; Preparation and analysis of financial reports; Preparation of financial analyses relating to bond markets; Preparation of financial analyses relating to commodities; Preparation of financial analyses relating to securities; Preparation of financial reports; Professional consultancy relating to finance; Providing bank account information by telephone; Providing financial information via a web site; Providing information regarding publicly traded investments; Providing information regarding the administration of trust accounts; Providing investors with financial information; Providing on-line news in the field of finance; Provision of advice [financial] to accident investigators; Provision of advice [financial] to loss adjusters; Provision of advice on impaired debt; Provision of computerised financial information; Provision of computerised information relating to securities; Provision of financial information by way of computer terminals; Provision of financial information for professionals in the field of portfolio management, for portfolio management; Provision of financial information relating to fuel expenditure; Provision of financial information relating to shares; Provision of financial information relating to the stock exchange; Provision of information relating to accounts [financial]; Provision of information relating to financial services; Provision of investment information; Provision of investment savings plans; Provision of pricing information about bonds; Provision of pricing information about commodities; Provision of pricing information about equities; Provision of pricing information about futures; Provision of pricing information about indices; Provision of pricing information about money market rates; Provision of pricing information about mutual funds; Provision of tax advice [not accounting]; Recording of inter parties transactions in respect of finance; Recording of inter parties transactions in respect of investments; Recording of inter parties transactions in respect of stocks; Recording the transfer of securities; Recording the transfer of shares; Registration of securities; Registration of shares; Repair costs evaluation [financial appraisal]; Research services relating to banking; Research services relating to finance; Research services relating to investment; Securities advisory services; Share orientation advisory services; Share price information services; Intellectual property valuation services; Valuation services of property for fiscal purposes.

Class 41: Entertainment, education and instruction services; Electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information; Fan clubs; Organising of meetings in the field of entertainment; Organising of competitions [entertainment] by telephone; Organisation of Webinars; Film demonstrations for instructional purposes; Production of live television programmes for education; Tutoring; Arrangement of conferences for educational purposes; Arrangement of conventions for educational purposes; Arrangement of seminars for educational purposes; Arranging and conducting award ceremonies; Arranging and conducting competitions; Arranging and conducting conferences and seminars; Arranging and conducting educational conferences; Arranging and conducting of commercial, trade and business conferences; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging of award ceremonies; Arranging of competitions for educational purposes; Arranging of competitions for training purposes; Arranging of conferences; Arranging of conferences relating to business; Arranging of conferences relating to trade; Arranging of conventions for business purposes; Arranging of conventions for training purposes; Arranging of demonstrations for educational purposes; Arranging of displays for training purposes; Arranging of exhibitions for training purposes; Arranging of lectures; Arranging of seminars relating to business; Arranging of seminars relating to trade; Conducting of instructional seminars; Conducting of phone-in competitions; Conducting of seminars and congresses; Conducting workshops and seminars in self awareness; Conferences, exhibitions and seminars; Congresses; Organisation of meetings and conferences; Organisation of seminars; Organisation of seminars and conferences; Organisation of seminars relating to education; Organisation of seminars relating to training; Seminars; Academies [education]; Adult education services relating to banking; Adult education services relating to commerce; Adult education services relating to finance; Adult education services relating to law; Adult education services relating to management; Adult training; Arranging of workshops; Arranging professional workshop and training courses; Coaching relating to finance; Coaching in economic and management matters; Computer based educational services in the field of business management; Computer education training; Conducting of correspondence courses; Conducting training seminars for clients; Conducting workshops [training]; Correspondence courses relating to investment; Correspondence courses relating to personal investment; Courses (Training -) relating to banking; Courses (Training -) relating to finance; Educational courses relating to finance; Educational instruction; Production of course material distributed at professional courses; Production of course material distributed at professional lectures; Production of course material distributed at professional seminars; Training; Training services relating to finance; Tuition in banking; Tuition in business.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in both the applicant’s and the opponent’s lists of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in both the applicant’s and the opponent’s lists of goods and 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 goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

Contested goods in Class 16

There is a certain relationship between the contested advertising signs of paper; advertising signs of cardboard; advertising posters; advertisement boards of paper and advertisement boards of card and the advertising services of earlier right (3), insofar as the contested goods are intended to be used for advertising. However, this is not sufficient to conclude that these goods and services are similar. Furthermore, the goods and services are of different natures and fulfil different purposes. They target different parts of the public, have different distribution channels and have different producers/providers. The contested goods and the advertising services of earlier right (3) are dissimilar. Moreover, the contested goods are obviously dissimilar to all the remaining services for which the earlier rights are registered in Classes 35, 36, 38 and 42, since they have nothing relevant in common under the abovementioned criteria.

There is a certain relationship between the contested money holders; billbooks; banknotes; bank checks; cheque books; cheques; credit cards without magnetic coding and financial services; credit card services of earlier right (3), insofar as the contested goods are needed to effectively carry out the opponent’s services. However, this is not sufficient to conclude that these goods and services are similar. Furthermore, the goods and services are of different natures, since goods are tangible and services are intangible, and fulfil different purposes. They target different parts of the public, have different distribution channels and have different producers/providers. The contested goods and the opponent’s services are dissimilar. Moreover, the goods are clearly dissimilar to all the remaining services for which the earlier rights are registered in Classes 35, 36, 38 and 42, since they have nothing relevant in common under the abovementioned criteria.

The contested journals, magazine covers, magazine supplements for newspapers, magazines [periodicals], newsletters, newspapers have the purpose of providing entertainment or transferring knowledge and may potentially cover topics that relate to all of the services for which the earlier rights are registered in Classes 35, 36, 38 and 42. However, the contested goods have a different nature from the opponent’s services, since goods are tangible and services are intangible; the goods and services also have different purposes and usual origins. Moreover, they differ in their distribution channels and are neither in competition with nor complementary to each other. Therefore, they are dissimilar.

The remaining contested goods are clearly dissimilar to all of the services for which the earlier rights are registered in Classes 35, 36, 38 and 42. They have nothing relevant in common under the abovementioned criteria.

Contested services in Class 35

The contested business administrative services overlap with online computer services, namely, providing information regarding the goods and services of others in the nature of a buyers’ guide, by means of a global computer network (ie., the Internet) of earlier mark (3). Therefore, these services are considered identical.

The contested commercial trading and consumer information services overlap with marketing services; online computer services, namely, providing information regarding the goods and services of others in the nature of a buyers’ guide, by means of a global computer network (ie., the Internet) of earlier mark (3). Therefore, these services are considered identical.

The contested advice in the field of business management, business analysis, research and information services; business management services, business assistance overlap with the marketing services of earlier mark (3). Therefore, they are considered identical.

Advertising, marketing and promotional services are identically contained in both lists of services (including synonyms).

The contested advertising, marketing and promotional consultancy, advisory and assistance services; distribution of advertising, marketing and promotional material; loyalty, incentive and bonus program services; provision of advertising space, time and media, advertisement and publicity services by television, radio, mail; advertisement for others on the internet; advertisement via mobile phone networks; advertisements (placing of -); advertising agencies; advertising and marketing; advertising and promotion services and related consulting; advertising business especially in the field of telematic and telephone networks; advertising by transmission of on-line publicity for third parties through electronic communications networks; advertising in periodicals, brochures and newspapers; advertising in the popular and professional press; advertising of commercial or residential real estate; advertising of the goods of other vendors, enabling customers to conveniently view and compare the goods of those vendors.; advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; advertising, including on-line advertising on a computer network; advertising, including promotion of products and services of third parties through sponsoring arrangements and licence agreements relating to international sports’ events; advertising services for the promotion of e-commerce; advertising services of a radio and television advertising agency; advertising services provided via a data base; advertising services provided via the internet; advertising services relating to data bases; advertising services relating to financial investment; advertising services relating to financial services; advertising services relating to newspapers; advertising services relating to the provision of business; banner advertising; cinema advertising; compilation of advertisements for use as web pages on the internet; compilation of advertisements; compilation of advertisements for use on the internet; compilation, production and dissemination of advertising matter; on-line advertising on a computer network; on-line promotion of computer networks and websites; online advertisements; online advertising via a computer communications network; pay per click advertising; production of video recordings for advertising purposes; production of visual advertising matter; promotion [advertising] of business; promotion services; promotion, advertising and marketing of on-line websites; promotional advertising for exploration projects; promotional marketing; promotional services provided by telephone; radio advertising; radio and television advertising; reproduction of advertising material; response advertising; sales promotion; television advertising; publicity and sales promotion services; provision of information relating to advertising; publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; search engine optimisation; search engine marketing services; telemarketing services; telephone marketing services [not selling]; trade marketing [other than selling]; trade promotional services; updating of advertising information on a computer data base; updating of advertising material; web site traffic optimisation; writing of publicity texts; distribution of advertising mail and of advertising supplements attached to regular editions; distribution of advertising material by post; Publicity columns preparation, distribution of promotional matter; distribution of publicity texts; planning of marketing strategies; preparation of publicity documents; provision of information relating to marketing; publication of advertising literature; publication of publicity materials; publication of publicity texts; product demonstrations and product display services; public relations services; corporate identity services; handbill distribution; business merchandising display services and advice in the field of marketing are included in or overlap with the opponent’s advertising and marketing services. Therefore, they are identical.

The contested trade show and exhibition services; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes; organisation of exhibitions for business or commerce and the opponent’s advertising services usually have different providers. However, they have the same intended purpose and target the same relevant public. Therefore, they are considered similar to a low degree.

Contested services in Class 36

The contested financial services are identically included in the lists of services of earlier marks (2) and (3).

The contested monetary services, and banking; currency trading and exchange services; debt recovery and factoring services; financial information, data, advice and consultancy services; financial transfers and transactions, and payment services; financing and funding services; investment services; loan and credit, and lease-finance services; securities and commodities trading services; acquisition and transfer of monetary claims; administration of deposit taking; administration of employee benefit plans; administration of financial affairs; arranging of overdrafts; asset management services; bank account and savings account services; bank account information services; financial planning services; venture capital services; bureau de change services; buying and selling currency; cash and foreign exchange transactions; computerised financial services relating to foreign currency dealings; currency dealing; currency exchange and advice; currency exchange rate quotations; currency trading; financial database services relating to foreign exchange; financial information in the nature of rates of exchange; financial information services relating to currencies; financial transactions relating to currency swaps; forecasting of foreign exchange rates; foreign currency services; foreign exchange bureaux; foreign exchange market; foreign monetary exchange advisory services; money exchange agency services; money exchange and transfer; on-line real-time currency trading; preparation and quotation of exchange rate information; provision of exchange rate lists; provision of foreign currency; provision of information relating to rates of exchange; provision of pricing information about foreign exchange rates; swaps of currency rates; trading in currencies; agencies for collecting electric power utility payments; agencies for collecting gas utility payments; arranging the sale of loans; bailiff services (debt collection); collection of credit sales; computerised legal debt collection services; consultancy for clients with regard to the organisation of debt recovery; credit recovery and collection; debt collection agencies; debt collection and debt factoring services; debt counseling services; debt management services; debt recovery; debt recovery and collection agencies; debt restructuring; duty drawback services; export factoring; factoring; factoring agencies; factoring agency services; factoring of debts; factoring of financial undertakings; factoring services for invoices; financial services, namely, debt settlement; insolvency services; invoice discounting services; national debt collection; organising of debt collections; provision of information relating to debt factoring; reclamation of import duties for others; reclamation of outstanding debts; repossession services; bureau de change services; buying and selling currency; cash and foreign exchange transactions; computerised financial services relating to foreign currency dealings; currency dealing; currency exchange and advice; currency exchange rate quotations; currency trading; financial database services relating to foreign exchange; financial information in the nature of rates of exchange; financial information services relating to currencies; financial transactions relating to currency swaps; forecasting of foreign exchange rates; foreign currency services; foreign exchange bureaux; foreign exchange market; foreign monetary exchange advisory services; money exchange agency services; money exchange and transfer; on-line real-time currency trading; preparation and quotation of exchange rate information; provision of exchange rate lists; provision of foreign currency; provision of information relating to rates of exchange; provision of pricing information about foreign exchange rates; financial appraisal services; financial rating and credit reports; actuarial services relating to financial transactions; advice relating to investment during retirement; advice relating to loan recovery services; advice relating to mortgages for residential properties; advisory services relating to money management; advice services relating to enhancement of mortgages; advisory services relating to [financial] risk management; advisory services relating to mortgages; capital investment consultation; check [cheque] verification; clearing of cheques; collection of financial information; comparison of performance of portfolios of securities; comparison of performance of securities; computer information services relating to financial management; computerised financial advisory services; computerised financial analysis; computerised financial data services; computerised financial information services; computerised information services relating to banking matters; automatic recording services for financial transactions; estimates for financial purposes; business appraisals for financial valuation; asset evaluation [financial]; financial appraisals and valuations; financial evaluation; financial evaluations [banking]; fiscal assessment; fiscal assessment and evaluation; fiscal assessments; valuation of capital stock; valuation of farm assets; valuation of portfolios of securities; credit assessment services; credit reporting services; financial credit scoring services; preparation of credit reports; provision of credit information; preparation of credit rating reports; provision of credit rating; financial advice relating to wills; financial advisory and management services; financial advisory services for companies; financial advisory services for individuals; financial advisory services provided for bankers; financial advisory services relating to tax; financial advisory services provided for controllers; financial advisory services relating to assets management; financial advisory services relating to securities; financial analysis; financial analysis and research services; financial and investment consultancy services; financial consultancy; financial consultancy in relation to the buying and selling of businesses; financial consultancy in the energy sector; financial data base services; financial economic advisory services; financial economic analysis; financial forecasting; financial information; financial information and advisory services; financial information and evaluations; financial information for investors; financial information management and analysis services; financial information processing; financial information provided by electronic means; financial information retrieval services; financial information services for banks provided via computer networks and satellite transmissions; financial information services for financial institutions provided via computer networks and satellite transmissions; financial information services provided by access to a computer database; financial information services relating to financial bond markets; computerised information services relating to investments; computerised information services relating to financial business; consultancy services relating to corporate finance; conducting financial feasibility studies; consultancy services relating to credit; consultancy services relating to personal finance; consultation on the provision of shipping finance (services for the -); consultations relating to banking; credit inquiry and consultation; debt advisory services; economic financial research services; financial advice relating to inheritance; financial advice relating to investment; financial advice relating to settlements; financial information services relating to financial stock markets; financial information services relating to individuals; financial investment analysis and stock research; financial investment research services; financial market information services; financial research and information services; financial strategy consultancy services; financial valuation relating to heating costs; fund investment consultation; income tax advice [financial]; information services relating to banking; information services relating to bonds; information services relating to finance, provided on-line from a computer database or the internet; information services relating to financial business appraisals; information services relating to securities; information services relating to stocks; information services relating to the automated payment of accounts; information services relating to the automated transfer of funds; investment analysis; investment consultation; investment information; investment performance monitoring; investment research; investment risk assessment services; monitoring of financial portfolios; planning of finances relating to taxation; preparation and analysis of financial reports; preparation of financial analyses relating to bond markets; preparation of financial analyses relating to commodities; preparation of financial analyses relating to securities; preparation of financial reports; professional consultancy relating to finance; providing bank account information by telephone; providing financial information via a web site; providing information regarding publicly traded investments; providing information regarding the administration of trust accounts; providing investors with financial information; providing on-line news in the field of finance; provision of advice [financial] to accident investigators; provision of advice [financial] to loss adjusters; provision of advice on impaired debt; provision of computerised financial information; provision of computerised information relating to securities; provision of financial information by way of computer terminals; provision of financial information for professionals in the field of portfolio management, for portfolio management; provision of financial information relating to fuel expenditure; provision of financial information relating to shares; provision of financial information relating to the stock exchange; provision of information relating to accounts [financial]; provision of information relating to financial services; provision of investment information; provision of investment savings plans; provision of pricing information about bonds; provision of pricing information about commodities; provision of pricing information about equities; provision of pricing information about futures; provision of pricing information about indices; provision of pricing information about money market rates; provision of pricing information about mutual funds; provision of tax advice [not accounting]; recording of inter parties transactions in respect of finance; recording of inter parties transactions in respect of investments; recording of inter parties transactions in respect of stocks; recording the transfer of securities; recording the transfer of shares; registration of securities; registration of shares; repair costs evaluation [financial appraisal]; research services relating to banking; research services relating to finance; research services relating to investment; securities advisory services; share orientation advisory services; share price information services; intellectual property valuation services; valuation services of property for fiscal purposes are included in the broader category of financial services of earlier marks (2) and (3). Therefore, they are identical.

The contested credit risk insurance [factoring] is of a financial nature, and insurance companies are subject to similar rules of licensing, supervision and solvency as institutions providing financial services. Furthermore, the contested service and the financial services of earlier marks (2) and (3) may be provided by the same undertaking or related undertakings and have the same distribution channels. Therefore, the contested service is similar to financial services.

Contested services in Class 41

All the contested educational, training and entertainment services are intended to develop the user’s mental faculties and to entertain or amuse people, whereas the opponent’s services in Classes 35, 36, 38 and 42 are offered to promote the launch and/or sale of a client’s goods or services, to provide services of a financial nature, to enable others to communicate with one another by remote means and to retrieve and collect data with the help of computers. Therefore, the services have different purposes. Furthermore, they are not usually provided by the same undertaking, they do not have the same distribution channels and they are neither in competition nor complementary. Therefore, they are dissimilar.

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, all of the advertising services, business management, assistance and administration services and exhibition services in Class 35 that were found to be identical or similar to a low degree are directed at business customers. The degree of attention may vary from average to high depending on the extent and price of the services and their potential impact on the consumer’s business.

The services in Class 36 that were found to be identical are all financial services. These services target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have significant financial consequences for their users, the consumers’ level of attention would be rather high when choosing them (03/02/2011, R 0719/2010-1, f@ir Credit (FIG. MARK) / FERCREDIT, § 15; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444; 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874).

The signs

E*TRADE

(Earlier mark (1): EUTM No 604 702)

(Earlier mark (2): EUTM No 1 724 566)

E*TRADE GERMANY

(Earlier mark (3): EUTM No 1 108 034)

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

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).

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.

Earlier mark (1) is the word mark ‘E*TRADE’. Earlier mark (2) is a figurative mark consisting of the verbal elements ‘E’ and ‘TRADE’ in a fairly standard black font, with a black arrow and a green arrow forming an asterisk between these verbal elements. Earlier mark (3) is the word mark ‘E*TRADE GERMANY’.

The contested sign is a figurative mark consisting of the verbal elements ‘eTRADER’ and ‘by Goldenburg’ against a red rectangular background. The former verbal element is depicted in a large white stylised yet easily legible font and the latter verbal element is in a much smaller fairly standard white font.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign containing a verbal element, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). The placement of asterisks in the earlier marks and the fact that, in the contested sign, the first letter is in lower case and the remaining verbal elements are in upper case separate the first letter of each sign somewhat from the verbal elements ‘TRADE’ and ‘TRADE GERMANY’ (in the earlier marks) and ‘TRADER by Goldenburg’ (in the contested sign). Consequently, it is reasonable to assume that the relevant public will perceive the element ‘E’ or ‘e’ in all signs as a prefix denoting something in electronic form or indicating the involvement of the internet. The remaining verbal elements, ‘TRADE’, ‘TRADER’, ‘GERMANY’ and ‘by Goldenburg’, have no meaning from the perspective of the Spanish-speaking public and are therefore more distinctive than the signs’ first letter, ‘E’/‘e’.

Bearing in mind the relevant services, it is considered that the element ‘E’ or ‘e’ is weak for these services, as it will be perceived as a mere indicator of the way in which they are provided (by electronic means/online). The public understands the meaning of the element and will not pay as much attention to this weak element as to the other, more distinctive, elements of the signs.

None of the earlier marks has any element that could be considered more dominant (visually eye-catching) than other elements. As a consequence of the different font sizes of the contested sign, the verbal element ‘by Goldenburg’ is less dominant (visually eye-catching) than the element ‘eTRADER’.

Visually, the signs differ in the figurative element, in the form of a simple red rectangle, and the less dominant (visually eye-catching) element ‘by Goldenburg’ of the contested sign, which have no counterparts in the earlier marks. Moreover, the figurative element of earlier mark (2) (in the form of a black and green asterisk) and the verbal element ‘GERMANY’ in earlier mark (3) have no counterparts in the contested sign. However, all of the signs have almost identical beginnings, namely ‘E*TRADE’ (earlier marks) and ‘eTRADER’ (contested sign). As described above, the element ‘E’ (earlier marks) or ‘e’ (contested sign) is somewhat separated from ‘TRADE’ (earlier marks) or ‘TRADER’ (contested sign). The letter sequences ‘TRADE’ (earlier marks) and ‘TRADER’ (contested sign) are therefore visually perceptible as separate elements. Considering all the above, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛E-TRADE’, present identically in all of the signs. The asterisk (*) in the earlier marks will not be pronounced. The coinciding component ‘E’/‘e’ is weak in relation to the relevant services. The coinciding component ‘TRADE’ is distinctive. The pronunciation differs in the sound of the additional letter ‘R’ in the verbal element ‘TRADER’ in the contested sign. Moreover, the element ‘GERMANY’ of earlier mark (3) and the contested sign’s element ‘by Goldenburg’, if pronounced at all, have no counterparts in the opposing sign(s). The almost identical elements ‘TRADE’/‘TRADER’, which are aurally perceptible as separate elements, form, in combination with the weak components ‘E’/‘e’, the first part of each sign. Therefore, the signs are considered aurally highly similar.

Conceptually, the earlier marks and the contested sign do not have, as a whole, any meaning for the Spanish-speaking public. However, in all of the signs, the first letter – ‘E’ (earlier marks) and a stylised yet easily legible ‘e’ (contested sign) – will be perceived as a mere indicator of the way in which the services are provided (by electronic means/online). Therefore, the signs are conceptually similar to a low degree.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, earlier mark (1) has a reputation and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of this earlier mark will rest on its distinctiveness per se. In the present case, this earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the Spanish-speaking part of the public in the relevant territory.

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 and services covered are from the same or economically linked undertakings.

Moreover, account is taken of the fact that consumers, even when paying a high degree of attention, 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).

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).

In the present case, the marks are similar to the extent that earlier marks (1) and (2) consist of, and earlier mark (3) and the contested sign begin with, the element ‘E’ (earlier marks) or ‘e’ (contested sign), which are weak in relation to the relevant services. ‘E’ or ‘e’ is followed by the element ‘TRADE’ (earlier marks) or ‘TRADER’ (contested sign), which are distinctive for the Spanish-speaking part of the public. The first part is the part of a sign that consumers tend to focus on. Regardless of the differences between the marks in terms of the figurative elements and the other verbal elements, it is likely that consumers will make a connection between the conflicting signs and assume that the signs’ services, which were found to be identical and similar to a low degree, come from the same undertaking or at least from economically linked undertakings.

In view of all the relevant factors in the present case and also the principle of interdependence (i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, and vice versa), the relevant public could be mistaken about the origin of the services in question, even those that are similar to only a low degree. The high degree of similarity between the signs outweighs the low degree of similarity between those services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public in relation to the contested services in Classes 35 and 36. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations. 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 identical and similar to a low degree to those of the earlier trade marks.

The contested goods in Class 16 and the contested services in Class 41 are dissimilar to all of the services covered by the opponent’s marks. 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 goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of earlier mark (1) due to its reputation, as claimed by the opponent, and in relation to identical services and services similar to a low degree. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of earlier mark (1) in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks: European Union trade mark registrations No 1 107 937 for the word mark ‘E*TRADE NETHERLANDS’, No 1 107 952 for the word mark ‘E*TRADE FINLAND’, No 1 107 960 for the word mark ‘E*TRADE UNITED KINGDOM’, No 1 108 075 for the word mark ‘E*TRADE DENMARK’ and No 1 108 158 for the word mark ‘E*TRADE SWEDEN’.

Since these marks cover the same services as the ones which have been compared, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR and claimed reputation for earlier mark (1) ‘E*TRADE’ for stock brokerage services in Class 36.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

RISK OF INJURY

For reasons of procedural economy, the Opposition Division will assume that earlier mark (1) is reputed for stock brokerage services and will first examine whether the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of this earlier trade mark.

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙ it is detrimental to the repute of the earlier mark;

∙ it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the consumers will establish a link between the trade marks because of the similarities between them, the opponent did not submit any facts, meaningful arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 71).

As mentioned above, the opponent should have filed submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier trade mark, if the services provided under the contested sign were of a lower quality than the ones offered under the opponent’s earlier mark. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

The opponent argues that the applicant’s goods and services are possibly of inferior quality. Such an argument is not valid as a means of demonstrating detriment.

There is no room in the present proceedings for an appraisal and comparison of the quality of goods and services currently marketed by each party under the signs in question.

Firstly, such an exercise, apart from being highly subjective, would not be feasible where the goods and services are not identical or where the contested trade mark has not yet been put to use.

Secondly, and more importantly, it would be erroneous to assess Article 8(5) EUTMR on the basis of the quality of the goods and services offered under the subsequent trade mark. Otherwise, the applicant could claim as a valid defence that its goods and services are of equal, or even superior, quality to the opponent’s, where it is clear from the wording of Article 8(5) EUTMR that it is mere use of the contested trade mark which must be detrimental to the repute of the earlier trade mark.

Therefore, in assessing whether use of the contested trade mark is likely to damage the reputation of the earlier trade mark, the Opposition Division can only consider the goods and services as indicated in the list for each trade mark. The harmful effects of use of the contested sign for the goods and services applied for must derive from the nature and usual characteristics of the relevant goods in general.

Moreover, under Article 8(5) EUTMR, the proprietor of a reputed trade mark is protected against the use of a similar trade mark for goods and services of a comparable nature but obviously inferior quality. The erosion of the high esteem and reputation enjoyed by the earlier trade mark among the relevant public in such a case would mean that the public would associate the goods and services of inferior quality covered by the subsequent trade mark with the earlier trade mark, thus inferring a connection as regards commercial origin. Without such a connection, the inferior quality of the subsequent goods and services would not harm the high esteem enjoyed by the earlier trade mark among its clientele. Therefore, without such a connection, detriment to the repute of the earlier trade mark is not likely to occur. If, however, such a connection were to exist, it would inevitably mean that use of the contested trade mark would take advantage of the reputation of the earlier trade mark. Such advantage would necessarily be unfair because it is for the proprietor of the trade mark with a reputation to exploit and benefit from such reputation. As a matter of principle, unauthorised parties may not exploit an earlier trade mark’s reputation, regardless of whether or not the goods and services marketed under the subsequent mark are of inferior quality. In such a case, Article 8(5) EUTMR would apply, not because the inferior quality of the contested goods and services would be detrimental to the reputation of the earlier trade mark, but because unfair advantage would be taken of the distinctive character or repute of the earlier trade mark.

The opponent’s argument must, therefore, be set aside.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR.

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 shall decide a different apportionment of costs.

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

The Opposition Division

Judit NÉMETH

André Gerd Günther BOSSE

Natascha GALPERIN

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.

eTRADER by Goldenburg | Decision 2636424

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