VANECK VECTORS | Decision 2724113
Date Published: Sep 22, 2017
OPPOSITION No B 2 724 113
Vector, Boulevard Emmanuel Servais 20, 2535 Luxembourg, Luxembourg (opponent), represented by Keymarks BVBA, Opaallaan, 11, 1030 Brussels, Belgium (professional representative)
a g a i n s t
Van Eck Associates Corporation, 666 Third Avenue, 9th Floor, New York NY 10017-4033, United States of America (holder), represented by Jones Day, Prinzregentenstr. 11, 80538 Munich, Germany (professional representative).
On 12/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 724 113 is upheld for all the contested services.
2. International registration No 1 296 394 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the services of international registration designating the European Union No 1 296 394. The opposition is based on European Union trade mark registration No 14 190 805. 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 services
The services on which the opposition is based are the following:
Class 36: Insurance underwriting; banking; monetary affairs; real estate brokerage; real estate services; real estate acquisition services; real estate appraisal; capital investment brokerage; mutual funds; trust investment services.
The contested services are the following:
Class 35: Providing financial indices based upon selected groups of securities.
Class 36: Development and issuance of financial instruments, namely, exchange traded funds and exchange traded notes.
The term ‘namely’, used in the holder’s list of 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 services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 services in Class 35
The contested providing financial indices based upon selected groups of securities is a specified service (providing financial information) and, as such, similar to the opponent’s capital investment brokerage. It has the same purpose. They target the same public and are usually offered by the same undertakings. They may also be complementary.
Contested services in Class 36
The contested development and issuance of financial instruments, namely, exchange traded funds and exchange traded notes are also services of financial nature and as such, highly similar to the opponent’s capital investment brokerage. It has the same nature and purpose (capital growth), may target the same relevant public (investors) and is usually offered by the same undertakings.
- 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 similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.
Since the services in question are specialised services that may have important financial consequences for their users, consumers’ level of attention would be higher than average when choosing them (03/02/2011, R 719/2010-1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874, dismissed).
- The signs
VECTOR FUND | VANECK VECTORS |
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common element ‘VECTOR’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The element ‘VANECK’ of the contested mark has no meaning for the relevant public and is, therefore, distinctive.
The element ‘VECTOR’ and ‘VECTORS’ (plural form) of the marks will be understood, by a majority of the relevant public, as originating from mathematics, statistics or physics and having the meaning of, inter alia, a variable quantity, such as force, that has magnitude and direction and can be resolved into components that are odd functions of the coordinates; any behavioural influence, force, or drive (information extracted from Collins Dictionary on 07/09/2017 at www.collinsdictionary.com/dictionary/english/vector). Even though, as the holder describes, the word ‘VECTOR’ may indicate a direction or a trend, and in this meaning can also be used in relation to finance and statistics, it is not descriptive, not even allusive or otherwise weak for the relevant services. It is therefore considered distinctive.
The element ‘FUND’ of the earlier sign will be associated with, inter alia, amounts of money that are available to be spent, especially money that is given to an organization or person for a particular purpose (information extracted from Collins Dictionary on 07/09/2017 at www.collinsdictionary.com/dictionary/english/fund). Bearing in mind that the relevant services are financial services, this element is non-distinctive as descriptive of the subject matter of the services, namely capital investment brokerage.
Neither the earlier mark, nor the contested sign have any elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the letters ‘VECTOR’. This coinciding component is distinctive, as described above. However, they differ in the plural-S of this verbal element in the contested mark, the word ‘FUND’ (non-distinctive) of the earlier mark and the word ‘VANECK’ (distinctive) of the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛VECTOR’, present identically in both signs. This coinciding component is distinctive, as described above. The pronunciation differs in the sound of the letters ‛FUND’ (non-distinctive) of the earlier sign and ‘VANECK’ (distinctive) and the plural-S of the verbal element ‘VECTOR’ of the contested mark, which have no counterparts in the opposite marks.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘VECTOR(S)’, included in both signs, will be associated with the meaning explained above. The word ‘VANECK’ in the contested sign has no concept and the word ‘FUND’ in the earlier mark is non-distinctive. The coinciding element ‘VECTOR’ is distinctive for the relevant services. To that extent, the signs are conceptually highly similar.
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 as a whole 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, despite the presence of a non-distinctive and descriptive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
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).
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.
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).
The earlier mark is inherently distinctive to an average degree.
The goods are similar to various degrees. They target the general public and business customers with specific professional knowledge or expertise. The degree of attention is higher than average.
The signs are visually and aurally similar, and conceptually highly similar, to the extent that they coincide in the distinctive element ‘VECTOR’. The word ‘FUND’ is non-distinctive and although the verbal element ‘VANECK’ is placed in the beginning of the contested mark, consumers will be more inclined to remember the verbal element ‘VECTOR’, since it has a meaning.
Taking into account all the relevant circumstances of the case, the differences between the marks are not sufficient to counterbalance the similarity between them. The English-speaking public may therefore, and even despite a higher degree of attention, believe that the relevant services come from the same undertaking or at least economically-linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 190 805. It follows that the contested trade mark must be rejected for all the contested 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 holder 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
Claudia ATTINÀ | Lena FRANKENBERG GLANTZ | Plamen IVANOV |
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.