MOGU | Decision 2711318 - AS Mogo v. HANGZHOU SHIQU INFORMATION AND TECHNOLOGY CO., LTD.

Date Published: Oct 1, 2017

OPPOSITION No B 2 711 318

AS Mogo, Skanstes iela 50, Rīga, 1013, Latvia (opponent), represented by Law Firm Fort, 8-4 Antonijas Street, Riga, 1010, Latvia (professional representative)

a g a i n s t

Hangzhou Shiqu Information and Technology Co. Ltd., Room 1001, Block 1, The More Center, Xihu District, Hangzhou City, People’s Republic of China (applicant), represented by Roeb y Cia S.L., Plaza de Cataluña, 4 - 1º, 28002 Madrid, Spain (professional representative).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 711 318 is partially upheld, namely for the following contested services:

Class 36:        Financing services; electronic funds transfer; providing financial information via a web site; financial sponsorship; fund investments; fund raising; lending against security; online banking.

2.        European Union trade mark application No 15 176 291 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 some of the goods and services of European Union trade mark application No 15 176 291, namely against some of the services in Class 36. The opposition is based on European Union trade mark registrations No 11 858 123 and No 13 611 538 and Latvian trade mark registration No M 66 366. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

SUBSTANTIATION OF LATVIAN TRADE MARK No M 66 366

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards earlier Latvian trade mark registration No M 66 366 on which the opposition is, inter alia, based.

On 14/06/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 19/10/2016.

The opponent did not submit any evidence concerning the substantiation of its earlier Latvian trade mark registration.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded as far as it is based on the opponent’s earlier Latvian trade mark registration No M 66 366.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claimed reputation in Latvia for its earlier European Union trade mark registration No 11 858 123.

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 will 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.

In accordance with Article 76(1) EUTMR, the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based during the substantiation period, which expired on 19/10/2016.

Therefore, the opposition must be rejected as unfounded insofar as this ground is concerned.

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 European Union trade mark registration No 11 858 123.

1. The services

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

Class 36: Financial affairs; financing services; hire-purchase financing; financial leasing; instalment loans; lease-purchase financing; lending against security; loans and financing of loans.

The contested services are the following:

Class 36: Financing services; electronic funds transfer; providing financial information via a web site; financial sponsorship; fund investments; leasing of real estate; fund raising; lending against security; online banking.

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.

Financing services; lending against security are identically contained in both lists of services.

The contested electronic funds transfer; providing financial information via a web site; financial sponsorship; fund investments; fund raising; online banking are various types of financial services and, as such, are included in the opponent’s broad category of financial affairs. These services are, therefore, identical.

The contested leasing of real estate involves finding a property, making it available and acting as an intermediary. Consumers clearly distinguish real estate agents’ services from those of financial institutions. They do not expect a bank to find housing or a real estate agent to manage their finances. Since the opponent’s services are of an exclusively financial nature and have an exclusively financial purpose and are, therefore, offered by different undertakings from those that provide real estate leasing, the services in question are dissimilar.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical are directed at both the public at large and business customers.

The degree of attention is higher than average, since financial services are specialised services that usually have important consequences for their users.

3. The signs

MOGO
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, since the contested sign’s verbal element means ‘I can’ in Croatian, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public that does not speak Croatian and for which the signs do not convey any relevant concepts.

The earlier mark comprises the verbal element ‘MOGO’. As it lacks any meaning for the relevant public, this word has an average degree of distinctiveness.

The contested sign comprises the verbal element ‘MOGU’ with a figurative element above it that is composed of a black semicircle with a dot in its lower part. None of the elements is more dominant than the others. Since they lack any meaning for the relevant public, they have an average degree of distinctiveness.

Visually, the signs coincide in the letter sequence ‘MOG-’ and differ in their endings, ‘O’ versus ‘U’, and in the contested sign’s figurative element. The fact that three of the earlier sign’s four letters are included in the same order in the contested sign is, to a certain extent, counteracted by the contested sign’s figurative element. However, account must be taken of the fact that, 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). In addition, in signs containing a verbal element, the beginning of this element has a significant influence on the general impression made by the mark. Based on all the foregoing, the signs must be considered visually similar to an average degree.

Aurally, the above conclusions regarding the visual similarity of the signs’ verbal elements are also relevant here. In addition, the only aurally relevant difference between the signs, namely the sounds of their final letters, ‘o’ versus ‘u’, may be indistinct when pronounced. Overall, 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.

4. Distinctiveness of the earlier mark

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

As seen above with regard to Article 8(5) EUTMR, the opponent claimed that the earlier trade mark enjoys reputation, but did not file any evidence in order to prove such a claim.

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.

5. Global assessment, other arguments and conclusion

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

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the signs are visually similar to an average degree, aurally highly similar, and they lack any concept that could help the consumer to differentiate between the signs. The differences between them lie in the final letters/sounds of their verbal elements and in a figurative element that is not sufficient to counteract the similarities.

Considering all the above, there is a likelihood of confusion on the part of the public in the European Union that does not speak Croatian. 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, and there is no need to analyse the remaining part of the public.

Therefore, the Opposition Division finds that the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 858 123.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

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

The opponent has also based its opposition on earlier European Union trade mark registration No 13 611 538 ‘MOGO FINANCE’. Since this mark covers services that are also covered by the opponent’s mark examined above, the examination of the other earlier EUTM on which the opposition is based would not change the outcome with regard to the dissimilar 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Marianna KONDÁS

Ferenc GAZDA

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.