OPPOSITION No B 2 262 270

Türkiye Garanti Bankasi Anonim Sirketi, Levent Nispetiye Mahallesi, Aytar Caddesi No. 2, Besiktas, Istanbul 34340, Turkey (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Caversham Finance Limited, 5 Hercules Way, Leavesden Park, Watford WD25 7GS, United Kingdom (applicant), represented by Fieldfisher LLP, Riverbank House 2 Swan Lane, London, London City of EC4R 3TT, United Kingdom (professional representative).

On 05/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 262 270 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 11 895 315, namely against all the services in Class 36. The opposition is based on, inter alia, international trade mark registrations No 907 732, designating Bulgaria, Czech Republic, Croatia, Spain, France, United Kingdom, Greece, Hungary, Ireland, Italy, Lithuania, Latvia, Poland, Portugal, Slovenia, and No 931 921, designating Austria, the Benelux, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Germany, Spain, Finland, France, Croatia, Hungary, Italy, Lithuania, Latvia, Portugal, Sweden, Slovenia, Slovakia. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The services

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

International trade mark registration No 907 732

Class 36: Financial and monetary services; banking services, financial management services, financial analysis services, financial sponsorship services, providing of information services concerning financial matters, factoring services (buying of goods and debt collecting organizations), leasing services, issuance of credit cards with installment payment plan, credit card services, issuing credit cards, credit services, money exchange services, issuance of travellers' checks, check verification, electronic funds transfer, retirement payment services, guarantees, rent collection services, securities brokerage, safe deposit services, mutual funds, mortgage banking.

International trade mark registration No 931 921

Class 36: Insurance services; accident, life, fire, health and marine insurance underwriting, insurance investigation, actuary services, insurance consultancy; financial and monetary affairs; banking, financial management, financial analysis, financial sponsorship, financial information, factoring, leasing, issuance of credit cards for shopping by installment, exchanging money; real estate affairs, real estate brokers, apartment house management services; real estate appraisal services; antique money appraisal, antique appraisal, jewellery appraisal, stamp appraisal, art appraisal; customs brokerage.

The contested services are the following:

Class 36: Financial services; credit services; arranging credit and loans relating to the purchase of consumer goods; lease purchase finance; arrangement and provision of loans; issuing of tokens of value in relation to customer loyalty schemes; credit card services; information, advisory and consultancy services relating to all the aforesaid.

Contested services in Class 36

The contested financial services; credit card services are identically contained in both lists of services (IR No 907 732).

The contested financial services are included in the broad category of the opponent’s financial affairs (IR No 931 921). Therefore, they are identical.

The contested credit services; arranging credit and loans relating to the purchase of consumer goods; lease purchase finance; arrangement and provision of loans; issuing of tokens of value in relation to customer loyalty schemes are included in the broad category of the opponent’s banking services (IR No 907 732). Therefore, they are identical.

The contested credit services; arranging credit and loans relating to the purchase of consumer goods; lease purchase finance; arrangement and provision of loans; issuing of tokens of value in relation to customer loyalty schemes; credit card services are included in the broad category of the opponent’s banking (IR No 931 921). Therefore, they are identical.

The contested information, advisory and consultancy services relating to all the aforesaid are included in the broad category of the opponent’s providing of information services concerning financial matters (IR No 907 732). Therefore, they are identical.

The contested information, advisory and consultancy services relating to all the aforesaid are included in the broad category of the opponent’s financial information (IR No 931 921). Therefore, they are identical.

2. The signs

GARANTI BONUS (IR No 907 732) (IR No 931 921)	BRIGHTBONUSES
Earlier trade mark	Contested sign

The relevant territories are Bulgaria, Czech Republic, Croatia, Spain, France, United Kingdom, Greece, Hungary, Ireland, Italy, Lithuania, Latvia, Poland, Portugal, Slovenia for earlier mark 1) and Austria, the Benelux, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Germany, Spain, Finland, France, Croatia, Hungary, Italy, Lithuania, Latvia, Portugal, Sweden, Slovenia, Slovakia for earlier mark 2).

The earlier mark 1) is a word mark consisting of the words ‘GARANTI BONUS’. The earlier mark 2) is a figurative mark consisting of two verbal elements, ‘bonus’ and ‘net’, written in lower case letters, the first of which, ‘bonus’ is depicted in green and the second, ‘net’, is depicted in white and enclosed in an orange balloon or droplet in various shades of light and dark orange. The contested sign is a word mark consisting of the word ‘BRIGHTBONUSES’. In case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether the word marks are represented in lower or upper case or a combination of those letters.

Visually, the signs are similar to the extent that they coincide in the letters ‘B-O-N-U-S’. On the other hand, they differ in the first word ‘GARANTI’ of the earlier mark 1), the word ‘net’ of the earlier mark 2) and regarding the latter also in the figurative elements and colours, as described above, and in the first letters ‘B-R-I-G-H-T-’ and the last letters ‘-E-S’ of the contested sign.

Aurally, irrespective of the different pronunciation rules and different languages in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /B-O-N-U-S/ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the syllables /GA-RAN-TI/ of the earlier mark 1); the sound of the syllable /net/ in the earlier mark 2), the letters /B-R-I-G-H-T/ and the ending /E-S/ of the contested sign.

Conceptually, the word ‘BONUS’ of the earlier marks will be understood by the consumers as ‘something given, paid, or received above what is due or expected’ (see Collins English Dictionary online). It is a word that exists in many languages, such as in Dutch, Finnish, French, German, Italian, Danish, Portuguese, Swedish; it has also very similar equivalents in other languages, for example ‘bonusz’ in Hungarian, but it is also a word that belongs to the basic, inter alia, English vocabulary and will be understood by the consumers in all the Member States. In addition, the term is commonly used and known in commerce, trade and finance throughout the entire European Union, including in countries where English is not an official language. The word ‘GARANTI’, will be understood as well throughout the whole European Union, since it is the same word in Danish and Swedish; it has equivalent similar words in other languages ‘garantie’ (in Dutch, French and German), ‘garanzia’ (in Italian), ‘gwarancja’ (in Polish), ‘garantía’ (in Spanish), ‘garantia’ (in Portuguese), but it is also a word that is very basic and will be understood in all the languages spoken in the European Union as having the following meaning ‘a formal assurance, especially in writing, that a product, service, etcetera, will meet certain standards or specifications’ (see Collins English Dictionary online). The second verbal element ‘net’ of the earlier mark 2) will be understood as a reference to the internet and a top-level domain name. The figurative element in the earlier mark 2) refers to a balloon or droplet and is perceived as such. The contested sign as a whole has no meaning. However, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (judgment of 13/02/2007, T-256/04, ‘Respicur’, paragraph 57). Therefore, it is reasonable to assume that the contested sign will be split into two elements, ‘BRIGHT’ and ‘BONUSES’. The element ‘BRIGHT’ is perceived in this context, and only by a part of the public with a deeper knowledge of the English language, as ‘full of promise; magnificent; glorious’ (see Collins English Dictionary online). For another part of the public this word is meaningless. The element ‘BONUSES’, being the plural of ‘BONUS’, has the same meaning as in the earlier marks, however in its plural form and would be understood by all the public thus allowing it to distinguish it as an element of the contested sign even for the part not understanding ‘BRIGHT’. That part of the public that would perceive the meaning of the elements ‘GARANTI’, ‘net’, the figurative elements of the earlier mark and the element ‘BRIGHT’ of the contested sign, these would perceive some conceptual differences between the marks. However, since the signs will be associated with a similar meaning as they include the word ‘BONUS’/’BONUSES’, the signs are conceptually similar to this extent.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar to a certain degree.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

The first word ‘garanti’ of the earlier mark 1) will be associated with ‘a formal assurance, especially in writing, that a product, service, etcetera, will meet certain standards or specifications’. Bearing in mind that the relevant services are all kinds of financial services, it is considered that this element is weak for these services, as it means that the services that are offered give a formal assurance to the consumer. The public understands the meaning of the element and will not pay as much attention to this weak element. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The second word ‘net’ of the earlier mark 2) will be perceived by the relevant public as a reference to the internet and a top-level domain name. Bearing in mind that the relevant services are all kinds of financial services, it is considered that this element is weak for these services, as it means that the services are offered through the internet. The public understands the meaning of the element and will not pay as much attention to this weak element. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The elements ‘BONUS’ of the earlier marks and ‘BONUSES’ of the contested sign will be associated with ‘something given, paid, or received above what is due or expected’. Bearing in mind that the relevant services are all kinds of financial services, it is considered that these elements are weak for these services. The public understands the meaning of these elements and will not pay as much attention to these weak elements. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘BRIGHT’ of the contested sign will be perceived, by a part of the relevant public, as ‘full of promise; magnificent; glorious’ and gives a very positive connotation to the word following it. Bearing in mind that the relevant services are all kinds of financial services, it is considered that this element is weak for these services, as it means that the services are very good and that the consumer is clever when opting for these ones. That part of the public that understands the meaning of the element will not pay as much attention to this weak element. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. However, for that part of the public that would only understand ‘BONUSES’, that part will not pay as much attention to this weak element and will focus more on the other more distinctive element ‘BRIGHT’ of the contested sign. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

For the sake of completeness, the Opposition Division points out that the earlier mark 1), as a whole, will be associated with an advantageous offer that has a formal assurance. The earlier mark 2), as a whole, will be associated with an advantageous offer through the internet. The contested sign, as a whole, and by that part of the public that would understand the two elements, would be understood as advantageous, smart offers that would be a clever choice for the consumer.

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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for all of the services on which the opposition is based. The earlier trade marks are composed of two weak elements which convey a laudatory meaning. The specific combination of those two elements and the figurative elements in earlier mark 2) are not sufficient to endow the earlier marks as a whole with more than a minimum degree of distinctiveness.

5. 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 the public at large and business customers with specific professional knowledge or expertise. Taking into account that the services at issue may have important financial consequences, the degree of attention of the relevant public is expected to be rather high.

6. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

According to the case-law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C‑251/95, ‘Sabèl’).

The services have been found to be identical and the level of attention is rather high, since the services can have financial consequences, meaning that the consumers will be more informed and observant. This will help them to even better distinguish between the marks in conflict.

For the public the marks are visually, aurally and conceptually similar insofar as they contain the element ‘BONUS/BONUSES’. Nonetheless, as stated above, it is important to bear in mind that this term, which is the only common element of the signs, has an extremely weak intrinsic value for the services at issue, since they merely designate to the relevant public that they will receive some extra and unexpected advantage or benefit. Hence, the presence of these words does not impinge upon the way the signs are perceived. This contrary to the argument of the opponent, in its observations of 17/10/2013, where it states that the coincidence in the term ‘BONUS’ will surely lead consumers to confusion and when consumers come across the trade mark ‘BRIGHTBONUSES’ for the services in Class 36, they will erroneously believe that they are in front of the new branch of the Turkish ‘BONUS. Furthermore, the remaining elements of the contested sign, namely the element ‘BRIGHT’, the word ‘GARANTI’ of the earlier mark 1), the word ‘net’, together with the figurative elements in the form of a balloon or droplet and colours of earlier mark 2), do not have any similarity from a visual, phonetic and conceptual aspect, and give the marks a different overall impression.

Even though the words ‘GARANTI’ of the earlier mark 1), the word ‘net’ of the earlier mark 2) and ‘BRIGHT’, by that part of the public that would understand it, of the contested sign, are also weak elements, the consumer would visually, phonetically and conceptually perceive the differences between these words or letters.

In the light of the visual, phonetic and, by a part of the public, also the additional conceptual differences between the signs at issue, notwithstanding the identity of the services concerned and the interdependence principle, there cannot be any likelihood of confusion on the part of the target public, since the existence of a visual, phonetic and conceptual similarity between the signs at issue, in the case of the marks at hand, being the common element of limited distinctiveness, is not sufficient to give rise to a presumption of such a likelihood of confusion.

Bearing in mind the above, the Opposition Division deems that the existing differences between the marks and, in particular, the low degree of distinctiveness of their common element and even of the whole earlier marks, are sufficient to exclude a likelihood of confusion between them, even more taking into account the higher degree of attention of the relevant public in relation to the services. The capacity of the common terms ‘BONUS’/’BONUSES’ to distinguish services of one undertaking from those of another undertaking is very limited and not capable of confusing the marks.

Considering all the above, the Opposition Division finds that the divergences between the marks are sufficient to outweigh the similarity of the marks, which lies only in a weak element, ‘BONUS’/’BONUSES’, and that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• Maltese trade mark registration No 47 659 for the word mark ‘GARANTI BONUS’ for services in Class 36.

• Maltese trade mark registration No 47 658 for the word mark ‘GARANTI BONUS’ for goods in Class 9.

Since these marks are identical to the ones which have been compared and cover the same (IR 931 921) or even a different scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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

Julia SCHRADER

Chantal VAN RIEL

Jessica LEWIS

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.