FIDENTIS ADVISORS LIMITED | Decision 2748807

Date Published: Oct 1, 2017

OPPOSITION No B 2 748 807

Fidentiis Equities Sociedad de Valores, S.A., Velázquez, 140 - 2º dcha., 28006 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Fidentis Advisors Limited, 29 Pall Mall, Pall Mall London, City of SW1Y 5LP, United Kingdom (applicant), represented by Simons Muirhead & Burton, 8-9 Frith Street, London W1D 3JB, United Kingdom (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 748 807 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 395 072 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 395 072. The opposition is based on, inter alia, Spanish trade mark registration No 2 563 158 and European Union trade mark registration No 3 445 161. The opponent invoked Articles 8(1)(a) and (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 Spanish trade mark registration No 2 563 158 and European Union trade mark registration No 3 445 161.

1. The goods and services

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

Spanish trade mark registration No 2 563 158:

Class 16:         Paper and goods made from paper, not included in other classes; cardboard and goods made from cardboard, not included in other classes; printed matter; publications (newspapers, magazines or books); bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); printers’ type; printing blocks; plastic materials for packaging (not included in other classes).

Class 41:        Education; providing of training; entertainment; sporting and cultural activities.

European Union trade mark registration No 3 445 161:

Class 35:         Publicity; business management; business administration; office functions; import and export; retail store services; commercial retailing via global computer networks.

Class 36:         Insurance; financial affairs; monetary affairs; banking business; real-estate affairs.

Class 42:         Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computers and software; legal services.

The contested goods and services are the following:

Class 16:         Printed matter; stationery; photographs; books; manuals; newspapers; newsletters; catalogues; magazines; pamphlets; periodicals; printed publications.

Class 35:         Accountancy services; business accounts management; book-keeping and accounting; business administration; company record-keeping; business management; corporate planning; advisory services for business management; advisory services relating to business planning; advisory services relating to business management and business operations; advisory services relating to the corporate structure of businesses; arranging and concluding commercial transactions for others; acquisition of business information relating to company activities; analysis of markets; analysis of business statistics; marketing analysis; research of business information; business networking services; data processing services; financial marketing; preparation of income tax returns; tax advice [accountancy]; advisory services relating to tax preparation; human resources consultancy; market research.

Class 36:         Financial affairs; administration of financial affairs; advisory services relating to finance; arranging of financial investments; financial consultancy; financial information services; administration of investment funds; advice relating to investments; capital investments; capital fund investment; administration of financial affairs relating to real estate; estate brokerage; estate trust planning; real estate consultancy; administration of trusts; trust advice; financial advisory services relating to assets management; administration of shares; brokerage; equity financing; management of assets; arranging credit; financial advice relating to income tax; financial advice relating to taxation; advice relating to pensions; insurance advice; valuation services; insolvency services.

Class 45:         Legal consultancy services; legal advice; legal services relating to business; personal legal affairs consultancy; provision of legal information.

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

The contested printed matter, stationery, photographs; books; newspapers; magazines are identically contained in both lists of goods (including synonyms) (ES No 2 563 158).

The contested printed publications are included in the broad category of the opponent’s publications (newspapers, magazines or books) in Class 16 (ES No 2 563 158). These goods are identical.

The contested manuals; newsletters; catalogues; pamphlets; periodicals are included in the broad category of the opponent’s printed matter in Class 16. (ES No 2 563 158). These goods are identical.

Contested services in Class 35

The contested accountancy services; business accounts management; book-keeping and accounting; company record-keeping; preparation of income tax returns are included in the broad category of the opponent’s business administration in Class 35 (EU No 3 445 161), which are services intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies. Consequently, these services are identical.

The contested data processing services are included in the broad category of the opponent’s office functions in Class 35 (EU No 3 445 161). These services are identical.

The contested business administration; business management are identically mentioned in both lists of services (EU No 3 445 161).

The contested corporate planning; advisory services for business management; advisory services relating to business planning; advisory services relating to business management and business operations; advisory services relating to the corporate structure of businesses; acquisition of business information relating to company activities; analysis of markets; analysis of business statistics; marketing analysis; research of business information; business networking services; financial marketing; tax advice [accountancy]; advisory services relating to tax preparation; human resources consultancy; market research are included in the broad category of the opponent’s business management in Class 35 (EU No 3 445 161). Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Examples of business management are business research and appraisals, cost price analysis and organisation consultancy, since they are all intended to help in the strategy of a commercial undertaking. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the management of a business, such as how to efficiently allocate financial and human resources; improve productivity; increase market share; deal with competitors; reduce tax bills; develop new products; communicate with the public; do marketing; research consumer trends; launch new products and how to create a corporate identity, etc. Consequently, these services are identical.

The contested arranging and concluding commercial transactions for others are similar to the opponent’s business administration in Class 35 (EU No 3 455 161). These services may coincide in producer, end-user and distribution channels.

Contested services in Class 36

The contested financial affairs are identically mentioned in both lists of services (EU No 3 445 161).

The contested administration of financial affairs; advisory services relating to finance; arranging of financial investments; financial consultancy; financial information services; administration of investment funds; advice relating to investments; capital investments; capital fund investment; administration of financial affairs relating to real estate; administration of trusts; trust advice; financial advisory services relating to assets management; administration of shares; brokerage; equity financing; management of assets; arranging credit; financial advice relating to income tax; financial advice relating to taxation; advice relating to pensions; valuation services; insolvency services are included in the opponent’s broad category of financial affairs (EU No 3 445 161). These services are identical.

The contested insurance advice is included in the opponent’s broad category of insurance (EU No 3 445 161). These services are identical.

The contested estate brokerage; estate trust planning; real estate consultancy are included in, or overlap with, the opponent’s broad category of real-estate affairs (EU No 3 445 161). These services are identical.

Contested services in Class 45

The contested legal consultancy services; legal advice; legal services relating to business; personal legal affairs consultancy; provision of legal information are included in the broad category of the opponent’s legal services in Class 45 (formerly Class 42) (EU No 3 445 161). These services are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the relevant goods and services found to be identical or similar are partly directed at the public at large and partly at specialised customers with specific professional knowledge or expertise, for example in the business, financial, insurance, publishing and legal fields. The degree of attention may vary from average to above average, depending on the price, (specialised) nature and the (technical) conditions of the purchased/provided goods and services. Bearing in mind that some of these services may have important financial or legal consequences for their users, such as financial affairs and insurance services in Class 36 and legal services in Class 45 (formerly in Class 42), the level of attention of the relevant public is considered to be above average for these services.

3. The signs

FIDENTIIS EQUITIES	FIDENTIS ADVISORS LIMITED
Earlier trade marks	Contested sign

The relevant territory is the European Union and Spain.

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. Given that the national mark covers Spain, the Opposition Division finds it more coherent and expedient to focus on the Spanish-speaking part of the public for the European Union trade mark.

The word ‘LIMITED’ in the contested sign is understood, since it is very similar to the equivalent word ‘limitado/a’, often used in, for example, ‘sociedad limitada’, indicating that the owners of a ‘limited company’ are legally responsible for only part of any money that it may owe if it goes bankrupt (see Collins English Dictionary online). This word is, therefore, non-distinctive for the relevant goods and services, as it merely denotes the legal form of the undertaking. Regarding the word ‘ADVISORS’, even though it is an English word, it is often used in the relevant fields of most of the classes concerned, especially regarding the services, and belongs more to English vocabulary that at least a part of the public would understand as referring to the plural form of an expert whose job is to give advice to another person or to a group of people (see Collins English Dictionary online). To this extent, therefore, this word is non-distinctive for the relevant goods and services. For the goods in Class 16 the distinctive character may also be reduced to the extent that the goods are aimed at such experts. However, for those for whom the term is meaningless, the distinctive character remains intact.

Regarding the word ‘EQUITIES’, even though it is an English word, it is often used in the relevant fields, in particular in Classes 35 and 36. This word refers to ‘shares in a company that are owned by people who have a right to vote at the company’s meetings and to receive part of the company’s profits after the holders of preference shares have been paid’ (see Collins English Dictionary online). Given its meaning this element is of a weaker distinctive character for those who understand it as such, but distinctive for those for whom it has no meaning.

The word ‘FIDENTIIS’ from the earlier marks and ‘FIDENTIS’ from the contested sign have no clear meaning in relation to the relevant goods and services and as such are distinctive. This near identity at the beginnings of the signs is important as consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the letters ‘F-I-D-E-N-T-I-(I)-S’, the only difference being the double letter ‘I’ in the earlier marks. Even if the earlier marks are composed of two words and the contested sign of three, particular importance is attached to the first element, as remarked above, and it is featured in an independent and distinctive manner in the sign. Further, for part of the public the remaining words are less distinctive thus diminishing their impact. As such, at least an average degree of similarity can be found.

Aurally, the pronunciation of the signs coincides in the sound of the word /FIDENTI(I)S/, present identically in all the signs. Even though in the earlier marks, two vowels ‘I’ appear, they will be pronounced in the same way as the first word of the contested sign. Even if the earlier marks are composed of two words and the contested sign of three, particular importance is attached to the first, as remarked above and it is featured in an independent and distinctive manner in the sign. Further, for part of the public the remaining words are less distinctive thus diminishing their impact. As such, at least an average degree of aural similarity can be found.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs as whole convey no clear meaning as ‘FIDENT(I)IS’ is meaningless. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of similarity. The element ‘EQUITIES’ is understood, at least by a part of the public, but also the words ‘ADVISORS LIMITED’ of the contested sign are perceived as having the above mentioned meanings, at least for a part of the public. For those who understand the terms mentioned above, the signs convey dissimilar meanings.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak or non-distinctive element in the marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services at issue have been found to be identical and similar, while the level of attention varies from average to above average. The earlier marks have a normal degree of distinctiveness.

The marks have been found visually and aurally similar to at least an average degree and the marks convey, from a conceptual level, dissimilar meanings or the conceptual comparison is not possible.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and 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, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the present case, although the public in the relevant territory might detect certain visual and aural differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier marks configured in a different way depending on the type of goods/services that it designates or provides or vice versa. It is, therefore, conceivable that the relevant public, even with a high degree of attention, will regard the goods and services designated by the conflicting signs as belonging to two ranges of goods and services coming from the same undertaking.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking public and, therefore, the opposition is well-founded on the basis of the opponent’s Spanish trade mark registration No 2 563 158 and European Union trade mark registration No 3 445 161. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As the earlier rights, Spanish trade mark registration No 2 563 158 and European Union trade mark registration No 3 445 161, ‘FIDENTIIS EQUITIES’ lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) 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.

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

Alexandra APOSTOLAKIS

Chantal VAN RIEL

Vanessa PAGE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.