MINTLIFE | Decision 2476847 - The Royal Bank of Scotland Group plc v. INTUIT INC.
Date Published: May 17, 2018
OPPOSITION No B 2 476 847
The Royal Bank of Scotland Group plc, 36 St Andrew Square, Edinburgh EH2 2YB, United Kingdom (opponent), represented by Lincoln IP Limited, 9 Victoria Street, Aberdeen, Aberdeenshire AB10 1XB, United Kingdom (professional representative)
a g a i n s t
Intuit Inc., 2535 Garcia Avenue, Mountain View, CA 94043, United States of America (applicant), represented by Nabarro LLP, 125 London Wall, London EC2Y 5AL, United Kingdom (professional representative).
On 18/01/2017, the Opposition Division takes the following
1. Opposition No B 2 476 847 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the services (in Class 36) of European Union trade mark application No 13 348 818 (word mark:
“MINTLIFE”). The opposition is based on the following earlier trade marks:
- European Union trade mark registration No 3 899 333 (word mark:
“MINT”). The opponent invoked Article 8(1)(b) and 8(5) EUTMR;
- European Union trade mark registration No 5 317 102 (word mark:
“MINT MOBILE”). The opponent invoked Article 8(1)(b) EUTMR;
- United Kingdom trade mark registration No 2 360 715 G (word mark:
“MINT”). The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
Furthermore, the opposition is also based on the non-registered trade mark “MINT” in the territory of the United Kingdom. The opponent invoked Article 8(4) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of European Union trade mark No 3 899 333 and United Kingdom trade mark No 2 360 715 G, on which, inter alia, the opposition is based, for the European Union and the United Kingdom, respectively.
The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to EUTM application.
The contested application was published on 24/11/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and the United Kingdom from 24/11/2009 to 23/11/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:
European Union trade mark registration No 3 899 333
Class 9: Charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; magnetically encoded cards for carrying data; multifunction cards for financial services; ATM (Automated Teller Machine) cards, access cards, identification cards, integrated chip cards and pre-paid cards and supporting systems related thereto; ATM machines, point of sale card readers; computer software; computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web pages and web sites); computer software and telecommunications apparatus (including modems) to enable connection to databases; parts and fittings for all of the aforesaid goods; data carriers; computer software for the provision of credit card services, mortgage services, banking services and financial services; computer software to enable the searching of data relating to the aforegoing; publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in digital or electronic format or provided by CD-ROM or diskette.
Class 36: Financial services; credit card, debit card, charge card, cash card and bank card services; banking services; mortgage services; monetary transfer; payment services; automated banking services; bill payment services; payment and credit services; account debiting services; cheque encashment services; credit brokerage; automatic cash dispensing services, automatic teller machine services; insurance services; financial consultation services; financial analysis and providing reports; financial information services; financial advisory services; computerised financial services; advice and enquiries regarding credit; services for the provision of credit; acceptance of deposits; discounts of bills (notes); domestic remittance; travellers cheque services; providing loans and savings accounts services; providing savings bonds; managing saving and investments for others; providing savings accounts and services on-line; information services relating to credit, credit card services, mortgages, banking and finance; advisory, consultancy and information services relating to all of the aforesaid services.
United Kingdom trade mark registration No 2 360 715 G
Class 9: Publications, newsletters, magazines, periodical pamphlets and leaflets; all in electronic form supplied on-line from databases or from facilities provided on the Internet (including websites); publications, newsletters, magazines, periodicals, pamphlets and leaflets; all in digital or electronic format supplied on-line; DVDs, CD-ROMs and diskettes; all relating to financial, banking, credit, credit card, mortgage, savings, loan, insurance and travel agency services and promotional services including incentive schemes, loyalty cards, purchase group clubs and discount offers made in connection with financial, banking, credit, credit card, mortgage, savings, loan and insurance services; charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; magnetically encoded cards for carrying data; multi-function cards for financial services; ATM (Automated Teller Machine) cards, access cards, identification cards, integrated chip cards and pre-paid cards and supporting systems related thereto; ATM machines, point of sale cards and readers; computer software; computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web pages and websites); computer software and telecommunications apparatus (including modems) to enable connection to databases; parts and fittings for all the aforesaid goods; hand-held devices for payment and value exchange services and other personal information services; remote control devices; data carriers; computer software for the provision of credit card services, mortgage services, banking services and financial services; computer software providing information relating to credit, credit card services, mortgages, banking and finance; computer software to enable the searching of data relating to the aforegoing.
Class 16: Printed matter; books, magazines, leaflets, periodical publications, newsletters, brochures, information materials and information packs; all relating to financial, banking, credit, credit card, mortgage, savings, loan, insurance and travel agency services and promotional services including incentive schemes, loyalty cards, purchase group clubs and discount offers made in connection with financial, banking, credit, credit card, mortgage, savings, loan and insurance services; gift vouchers, payment vouchers, discount vouchers, vouchers for travel by land, sea and air.
Class 35: Organisation, administration, operation and supervision of loyalty schemes and sales information on incentive schemes, buying group offers; organisation, operation, administration and supervision of discounts for goods and services; the bringing together for the benefit of others of a variety of alcoholic beverages, books, video cassettes, CDs and DVDs to enable customers to conveniently view and purchase those goods from a mail order catalogue, by telecommunication, from the Internet or by providing of auctions; information, advisory and consultancy services relating to all the aforesaid services.
Class 36: Banking services; mortgage services, automated banking services; payment and credit services; credit brokerage; insurance services; financial consultation services; financial information services; financial advisory services; advice and enquiries regarding credit; services for the provision of credit; mortgage services; consultancy, information and advisory services relating to all the aforesaid services.
Class 39: Transport of people and goods by road, rail, sea and air; travel arrangement services, travel agency services; arrangement of sightseeing tours, escorting of travellers; organisation of excursions, sightseeing tours, holidays and seat reservations for travellers; car rental services; transport and travel reservation services; consultancy, information and advisory services relating to all the aforesaid services.
Class 41: Books clubs; providing on-line electronic publications of books, magazines and other publications (not downloadable); leasing of books, video cassettes, CDs, DVDs and pre-recorded film; providing on-line publications for entertainment, in particular electronic games, books and magazines; all relating to financial, banking, credit, credit card, mortgage, savings, loan and insurance services; consultancy, information and advisory services relating to all the aforesaid services.
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 17/07/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 22/09/2015 to submit evidence of use of the earlier trade marks. The time limit was extended until 31/12/2015 (see the Office’s letter of 09/11/2015). On 02/11/2015, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
- A witness statement by Mr Richard Curtin, head of intellectual property of the opponent’s company, dated 02/11/2015, with various figures relating to ‘Mint credit cards’, such as numbers of customers, numbers of transactions and volumes of purchases, in the years 2004-2014. In this statement, the following 13 exhibits are included:
- a photograph of the card (RC 1);
- copies of press articles published in national UK newspapers in 2006 and 2007 (RC 2);
- copies of newspaper articles published in the UK press in 2008 (RC 3);
- copies of newspaper articles published in the UK press in 2009 (RC 4);
- screenshots from the website www.youtube.com, showing advertisements for the credit cards exhibited prior to 2009 (RC 5);
- examples of customer promotional letters regarding balance transfer offers that were sent to customers between July 2011 and May 2014 (RC 6);
- an example of a statement sent out to customers (RC 7);
- printouts from the opponent’s website (RC 8);
- Consumer Credit Licence and Financial Authority Record (RC 9 and RC 10);
- Notice of Variation, dated November 2011 (RC 11);
- extracts from the company’s annual reports for 2010 and 2011 (RC 12);
- printouts of articles posted on the BBC website on 09/03/2012 and published in Moneywise financial magazine that refer to the Mint credit card (RC 13).
As far as the Witness Statement is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.
As regards the abovementioned documents, the following has to be considered: Exhibits RC 1-5 and RC 7 are either undated or are dated outside the relevant period. Although Exhibit RC 2 has articles from national, high-circulation papers such as The Mail on Sunday and, even though the articles are dated 2006, they still make references such as ‘popular Mint credit cards’; such references are also made in the article from December 2007. Their impact is reduced, as they do not relate to the relevant period and it cannot be assumed that the ‘popular’ credit cards continued to be so. Even for those articles that are within the relevant period, the information mainly refers to ‘credit card rates’ and brief references to ‘Mint’ as a credit card but does not include clear, tangible information. As regards Exhibit RC 6, there is no evidence that any such letters were posted or to whom they were addressed. The website in Exhibit RC 8 has no information as regards the extent of use of the sign for the relevant goods and services in question. Exhibits RC 9 and RC 10 demonstrate what services the opponent is permitted to carry out in the UK. They do not demonstrate that such services were actually provided. Exhibit RC 11 does not provide any evidence of goods/services provided during the relevant period. Exhibit RC 12 does not provide any information as regards the specific goods and services in question. The same applies to Exhibit RC 13, which consists of two press articles, dated April 2011 and March 2012.
Other documents, which could prove use of the earlier trade marks, such as invoices, turnover for the goods and services in question or extracts from tax accounts or balances of payments, have not been submitted.
The Opposition Division concludes that the evidence (in particular as regards the extent of use) furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territories during the relevant period of time.
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.
The procedure continues for the other earlier European Union trade mark registration, No 5 317 102, for which no proof of use has been requested.
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 goods and services
The goods and services in Classes 9, 16 and 35 on which the opposition is based are the following:
Class 9: Telecommunications, telephonic and communications apparatus and instruments; data communication apparatus and instruments; apparatus and instruments for the processing, transmission, reproduction, storage, display, logging, protection, reception and retrieval of data, information, sounds, images, text, audio, graphic images or video or combination thereof; encoded cards; smart cards; magnetic data carriers; cards bearing magnetic data media; media for storing information, data, images and sound; machine readable media; personal digital assistants; satellite receiving and transmission apparatus and instruments; adapters for use with telecommunications apparatus; telephones; mobile telephones; electronic personal organisers; pocket and laptop computers; downloadable ringtones and graphics for mobile phones; customised display screens downloaded to telecommunications apparatus; electronic publications (downloadable) provided on-line from a computer database, the Internet or other electronic network; charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; magnetically encoded cards for carrying data; smart cards, encoded cards and multifunction cards for financial transactions and financial services; ATM (Automated Teller Machine) cards, access cards, identification cards, integrated chip cards and pre-paid cards, and supporting systems related thereto; ATM machines, cash dispensers, apparatus for payment with encoded cards; automatic paying-in and deposit machines; point of sale card readers; computer software; computer programs; computer operating programs and computer operating systems; computer hardware; computers; computer software and hardware for managing voice mail; computer software and hardware for text messages, SMS (short message system) messages, MMS (multimedia messaging service) messages, MIM (mobile instant messaging services); EMS (enhanced messaging services) or mobile email; application software for mobile telephones; interactive and multi-media software, materials and equipment; calculating machines; data processing apparatus and equipment; software, data, text or images supplied by electrical or electronic means; computer software and publications in electronic or machine readable form; computer software and software upgrades supplied on-line from computer databases, computer networks, global computer networks or the Internet; electronic publications, newsletters, magazines, periodicals, pamphlets, leaflets, instructional materials and teaching materials, provided on-line from computer databases, computer networks, global computer networks or the Internet (including web pages and web sites); publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in digital or electronic format or provided by CD-ROM or diskette; computer software for facilitating or enabling access to business services, financial services, information services and e-mail services; computer software for use in network communications; computer software for facilitating electronic communications; computer software and telecommunications apparatus (including modems) to enable connection to databases, computer networks, global computer networks and the Internet; computer software to enable searching of data; interactive computer software and interactive computer discs; software for interrogating a bank account by means of text message; compact discs; diskettes, CD-ROMs, DVDs; computer software to enable the searching of data; parts, fittings and software for all of the aforementioned goods.
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters, office requisites (except furniture); instructional and teaching materials (except apparatus); wrapping and packaging materials; plastic materials for packaging; printers' type; printing blocks; printed publications; advertising materials; brochures, vouchers, cheques, cheque books, paying-in books; bank cards, cash cards, cheque cards, debit cards, credit cards, charge cards; cheque book holders.
Class 35: Advertising; advisory, consultancy, information and helpline services relating to all of the aforementioned services; the aforementioned services also provided by a customer care network.
The contested services in Class 36 are the following:
Class 36: Providing information and editorial content services related to personal finance; financial information; providing a website featuring personal finance information and guidance; editorial content services related to personal finance, namely providing an online blog featuring articles, tips, questions and answers, and guidance in the field of personal finance, financial planning, budgeting, and saving money; none of the foregoing services related to insurance brokerage services and investment brokerage services.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘namely’, used in the applicant’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.
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.
Although the applicant offers financial and banking services, and services related to transacting other financial business, the opponent also offers specific hardware and software (Class 9), paper, cardboard and goods made from these materials, not included in other classes (Class 16) and advertising (Class 35). Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding a similarity. Therefore, advertising is dissimilar to the goods or services being advertised. The same applies in relation to the abovementioned goods in Classes 9 and 16. The contested services and the opponent’s goods have different natures, purposes and methods of use. They are not in competition with each other or complementary. They are offered by different companies to consumers with different needs. Their distribution channels are also different. Consumers would not think that these goods and services came from the same undertaking or economically linked undertakings. The fact that the goods can relate to financial services is not sufficient to make them similar to those services. Therefore, they are dissimilar.
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.
NON REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
The opposition is based on the non-registered trade mark “MINT” in the territory of the United Kingdom.
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:
• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;
• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;
• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.
According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.
According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.
Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.
As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision).
Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.
Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.
In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the non-registered trade mark “MINT” in the territory of the United Kingdom within the relevant time limit for substantiation. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the law in the Member State mentioned by the opponent.
Therefore, the opposition is not well founded under Article 8(4) EUTMR.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.