EXIN | Decision 2569179 - EXANE v. Sascha Salomonowitz
Date Published: Sep 28, 2017
OPPOSITION No B 2 569 179
Exane S. A, 16, avenue Matignon, 75008 Paris, France (opponent), represented by Cabinet @Mark, 16, rue Milton, 75009 Paris, France (professional representative)
a g a i n s t
Sascha Salomonowitz, Tuchlauben 18/9, 1010 Wien, Austria (applicant), represented by Salomonowitz Horak Rechtsanwälte, Tuchlauben 18/9, 1010 Vienna, Austria (professional representative).
On 09/12/2016, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 569 179 is upheld for all the contested services.
2. European Union trade mark application No 14 011 506 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 14 011 506. The opposition is based on, inter alia, French trade mark registration No 92 428 464. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 92 428 464.
- The services
The services on which the opposition is based are the following:
Class 36: Insurance underwriting; financial operations; monetary operations, especially stock exchange quotations, mutual funds; currency exchange business; fiscal valuations; fiscal assessments; services relating to trusts; financing services; financial management; debt collection agencies; financial loans; financial transactions; real estate operations; savings banks, operating of lotteries; issuing of travelers’ checks and letters of credit; real estate appraisal; apartment house management.
The contested services are the following:
Class 36: Insurance services and services in connection with insurance, in particular insurance brokerage, insurance administration, financial consultancy with regard to risk management, brokerage, actuarial services, insurance actuarial services, financial evaluation (insurance, banking, real estate); real estate affairs, in particular management services for real estate investment; finance services, in particular mutual funds, financial information retrieval services, valuation of capital stock, monetary transfer, investment of funds for others, investment consultancy, fund investments, mutual funds, retirement payment services, investment management, financial advice, investment fund management; financial services, in particular financial management of pensions, financial management, financial transactions, financial analysis, pension funds, monetary affairs, financial consultancy with regard to pensions, investment fund management, arranging investments, in particular capital investments, financing services and insurance.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The term ‘in particular’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the categories and that protection is not restricted to them. In other words, it introduces non-exhaustive lists of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The contested insurance services and services in connection with insurance, in particular insurance brokerage, insurance administration, financial consultancy with regard to risk management, brokerage, actuarial services, insurance actuarial services, financial evaluation (insurance, banking, real estate) include, as broader categories, the opponent’s insurance underwriting. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested real estate affairs, in particular management services for real estate investment are, in essence, the same services as the opponent’s real estate operations. Therefore, they are identical.
The contested finance services, in particular mutual funds, financial information retrieval services, valuation of capital stock, monetary transfer, investment of funds for others, investment consultancy, fund investments, mutual funds, retirement payment services, investment management, financial advice, investment fund management include, as a broader category, the opponent’s financing services, which are specific finance services entailing the provision of funds for an operation, project, etc., or involving money received or provided to finance something. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
The contested financial services, in particular financial management of pensions, financial management, financial transactions, financial analysis, pension funds, monetary affairs, financial consultancy with regard to pensions, investment fund management, arranging investments, in particular capital investments, financing services and insurance are, in essence, the same services as the opponent’s financial operations. Therefore, these services are identical.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the services found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise in the fields of insurance, finance and real estate. The degree of attention is considered higher than average, since these services may have important financial consequences for their users, as they entail a risk of loss of capital.
- The signs
EXANE | EXIN |
Earlier trade mark | Contested sign |
The relevant territory is France.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
Both signs are word marks: the earlier mark is ‘EXANE’ and the contested sign is ‘EXIN’. Neither of these words has any meaning for the relevant public. In the context of the relevant services, they have an average degree of distinctive character.
Since each of the signs consists of a single word, neither has any identifiable components. Consequently, neither of the signs has any elements that could be considered more dominant (visually eye-catching) than other elements.
Contrary to the applicant’s argument, the Opposition Division finds that neither of the signs is a compound sign comprising separate components. According to settled case law, word marks should not be artificially dissected. The dissection of the signs into ‘EX’ and ‘ANE/IN’ would be artificial. There is no reason why the relevant public would perceive these arbitrary components in the indivisible words at issue. Therefore, the signs will be assessed as one word, and the applicant’s argument is dismissed.
Visually, the signs coincide in the sequence of letters ‘EX*N*’, which makes up three out of the contested sign’s four letters and three out of the earlier mark’s five letters. They differ in the third letter, ‘A’, and the fifth letter, ‘E’, of the earlier mark and in the third letter, ‘I’, of the contested sign.
As the coinciding letters appear in the same positions in the signs, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sounds of the letters /EX*N*/, present identically in both signs. The French-speaking public will not pronounce the ‘E’ at the end of the earlier mark and the earlier mark will, therefore, be pronounced as /EXAN/, while the contested sign will be pronounced as /EXIN/. As a result, the marks differ only in the sounds of the letters ‘A’ of the earlier mark and ‘I’ of the contested sign. Since the difference between the signs is confined to one vowel in the same position in each sign, they have the same length and rhythm.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). This is also true for consumers with a high degree of attention, which consumers will have in relation to the services in question, since these customers would also need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The services are identical and the degree of distinctiveness of the earlier mark is normal. The degree of attention of the relevant public is deemed to be higher than average.
Admittedly, there are certain differences between the signs. Nevertheless, the visual similarity between the words ‘EXANE’ and ‘EXIN’ is average, while the aural similarity from the perspective of the French-speaking public is high, as explained in section c) of this decision. The differences identified between the signs cannot counteract the similar overall impressions produced by the signs sufficiently to enable the average consumer to safely distinguish between the signs, even taking into account the high degree of attention that the relevant public will have in relation to the services in question.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 92 428 464. It follows that the contested trade mark must be rejected for all the contested services.
As earlier French trade mark registration No 92 428 464 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Fabian GARCÍA QUINTO | Cecilie Leth BOCKHOFF | Solveiga BIEZA |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.