LIA | Decision 2656836
Date Published: Oct 1, 2017
OPPOSITION No B 2 656 836
Lia Advisory (Malta) Ltd, 26 St. Barbara Bastions, Valletta VLT 1961, Malta (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)
a g a i n s t
Lia Trade Marks Limited, 1 Finsbury Circus, London EC2M 7SH, United Kingdom (applicant), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative).
On 04/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 656 836 is upheld for all the contested services.
2. European Union trade mark application No 14 648 752 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 14 648 752. The opposition is based on European Union trade mark registration No 14 187 942. The opponent invoked Article 8(1)(b) EUTMR.
DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.
The opponent invoked Article 8(1)(b) EUTMR, which covers situations where there may be a likelihood of confusion due to similarity between the signs and the goods/services, or identity of only one of these two factors. However, Article 8(1)(a) EUTMR covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services.
The specific conditions under these provisions are interconnected. Therefore, an opposition based only on Article 8(1)(b) EUTMR that meets the requirements of Article 8(1)(a) EUTMR will be dealt with under the latter provision, without any examination under Article 8(1)(b) EUTMR.
- The services
The services on which the opposition is based are the following:
Class 35: Business management; business administration; professional business consultancy; business management and organisation consultancy; business management consultancy; advisory services for business management.
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial services; financial services, namely, financial planning, financial research, financial management, financial consultation; investment services; investment services, namely, those concerning mutual fund investment, hedge fund investment, private equity fund investment, fund of funds and multi-manager investment, direct investment, equity and debt investment, investments through pooled funds, private equity investment, trading in bonds and equities and currency trading; investment services, namely, fixed asset investment in real estate, holding companies, oil and gas; financing and treasury management services; financial consultancy services; financial management services; fund, portfolio, asset and property management services; fund investments; investment advisory services; investment management services; capital investments; mutual funds, namely, mutual fund distribution and establishing mutual funds for others; financial information; stock exchange quotations; insurance information; financial evaluation for insurance purposes; charitable collections in the nature of fundraising; real estate services, including real estate investments; provision of information relating to the real estate property market in the field of real estate values; pricing information services, namely, quotation of stock market prices; investment information services; information about stock broking services; provision of information relating to shares prices, and corporate savings account services; provision of information relating to real estate and real property in the field of evaluation of real property; computerised financial information relating to commodities and securities; computerised financial services for retail businesses; provision of financial information relating to rates of exchange; real estate property appraisal services; real estate property brokerage services; real estate property consultancy services; real estate property evaluation services; real estate property financing services; real estate property investment services; real estate rental property management services; real estate property development services; estate trust management services relating to real estate and property; financial services relating to the acquisition and sale of property; collection of credit sales being credit recovery and collection services; collection of payment being rent; financial administration of stock exchange trading of shares in financial markets; brokerage of shares; computerised information services relating to share prices; financial management of shares; financial information relating to shares; financial services, namely, the trading of shares; automated banking services relating to electronic charge card and credit card transactions; computerised information services relating to banking matters; providing information about banking services; providing financial information, namely the provision of financial news.
Class 41: Education; providing of training; educational services, namely classes and seminars in the field of financial and business matters; training services in the field of financial and business matters; arranging and conducting of educational conferences, congresses, seminars, symposiums and training workshops; news reporting services, namely the provision of financial news.
The contested services are the following:
Class 35: Business management; business administration; business consultancy.
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial services; asset allocation among investment classes of equities, fixed income and alternatives including hedge funds, commodities and property; organizing and investing in infrastructure, industrial, housing, hospitality, agricultural and commercial greenfield and brownfield projects and in natural resource development; management of reserves of proprietary and fiduciary funds; provision of financial news.
Class 41: Education; providing of training.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The term ‘including’, used in the applicant’s and opponent’s list of services, indicates that the specific 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 the opponent’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
Contested services in Class 35
Business management; business administration; business consultancy are identically contained in both lists of services, albeit with slightly different wording.
Contested services in Class 36
Insurance; financial affairs; monetary affairs; real estate affairs; financial services; provision of financial news are identically contained in both lists of services, albeit with slightly different wording.
The contested asset allocation among investment classes of equities, fixed income and alternatives including hedge funds, commodities and property; organizing and investing in infrastructure, industrial, housing, hospitality, agricultural and commercial greenfield and brownfield projects and in natural resource development; management of reserves of proprietary and fiduciary funds are included in the broad category of the opponent’s investment services. Therefore, they are identical.
Contested services in Class 41
Education; providing of training are identically contained in both lists of services.
- The signs
LIA | LIA |
Earlier trade mark | Contested sign |
The signs are identical.
- Global assessment, other arguments and conclusion
The signs are identical and the services at issue are also identical.
Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for all the abovementioned services.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Sonia MEHANNEK | Alexandra APOSTOLAKIS | Martina GALLE |
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.