OPPOSITION No B 2 524 422

Groupement des Cartes Bancaires (Groupement d'Intérêt Economique), 151 Bis, rue Saint Honoré, 75001 Paris, France (opponent), represented by Inlex IP Expertise, 5, rue Feydeau, 75002 Paris, France (professional representative)

a g a i n s t

China Construction Bank Corporation, No. 25 Financial Street, Xicheng District, Beijing, People’s Republic of China, (applicant), represented by Hoffmann · Eitle Patent- Und Rechtsanwälte Partmbb, Arabellastr. 30, Munich, Germany (professional representative).

On 04/10/2016 the Opposition Division takes the following

DECISION:

1. Opposition No B 2 524 422 2 491 754 is upheld for all the contested services, namely:

Class 36: Banking; Financial evaluation [insurance, banking, real estate]; Financing services; Credit card services; Deposits of valuables; Antique appraisal; Brokerage; Guarantees; Fiduciary.

2. European Union trade mark application No. 13 359 609 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against European Union trade mark (EUTM) application No. 13 359 609 for the mark shown below:

The opposition is directed against all the services (the ‘contested services’) protected by the contested mark, namely:

Class 36 Banking; Financial evaluation [insurance, banking, real estate]; Financing services; Credit card services; Deposits of valuables; Antique appraisal; Brokerage; Guarantees; Fiduciary.

The opponent invoked Articles 8(1)(b) and 8(5) EUTMR and relies upon, inter alia, EUTM No. 269 415 (the ‘earlier mark’). The Opposition Division will first examine the opposition in relation to the earlier mark in respect of Article 8(1)(b) EUTMR, and only examine the opposition in relation to the opponent’s other earlier right, and 8(5) EUTMR, should it become necessary.

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.

1. The services

The services on which the opposition is based (the ‘earlier services’) are, inter alia, the following:

Class 36: Insurance and finance, namely insurance underwriting, foreign exchange bureaux; issuing of travellers' cheques and letters of credit; financial affairs, monetary affairs, banking; savings banks; management of banking and monetary flow by electronic means; electronic purse services; Issuing of and services relating to prepayment cards, debit cards, credit cards, cash withdrawal cards, chip (integrated circuit) cards, magnetic cards and smart cards; issuing of bank cards, non-electronic; cash withdrawal using chip (integrated circuit) cards, electronic funds transfer; electronic payment; card payment services; prepaid card services; financial transactions by card holders via automated teller machines; authentification and verification of parties involved; financial information via all means of telecommunication; authorisation and regulation of payments by card numbers; remote secure payment; financial information, namely remote collection of financial information and data.

The contested services are the following:

Class 36: Banking; Financial evaluation [insurance, banking, real estate]; Financing services; Credit card services; Deposits of valuables; Antique appraisal; Brokerage; Guarantees; Fiduciary.

The contested banking is included identically in the earlier services.

The contested financial evaluation [insurance, banking, real estate]; Financing services; Credit card services; Deposits of valuables; Antique appraisal; Brokerage; Guarantees; Fiduciary fall under the earlier broader terms financial affairs, monetary affairs. These services are therefore identical.

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 specialised and directed at customers with specific professional knowledge or expertise, such as professionals in banking or finance. The degree of attention will be higher than average owing to the specialised nature of the services.

3. The signs

Earlier EUTM	Contested sign

The relevant territory is the European Union (E.U).

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 earlier mark is a figurative mark consisting of the letters ‘CB’ in black robust capital letters.

The contested sign consists of ‘CCB’ in black capitals with a circular device over the top which may be perceived as a letter ‘C’.

The earlier mark and the contested sign have no elements that could be considered clearly more distinctive or dominant than other elements.

Visually, both signs are figurative marks. The signs coincide in their first and last letters (C and B). They differ in that the contested mark has an additional letter C placed in-between the letters C and B, and a device placed over the middle letter C. The device could be construed as another C, but is highly stylised. The letters of the earlier mark are stylised but recognisable, while the letters of the contested mark are in standard font.

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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters C which is repeated in the contested mark and the sound of the letter B.

In France (a territory in respect of which the opponent claims enhanced distinctiveness for its mark), the earlier sign is likely to be pronounced Cee/Bee and the contested sign as Cee/Cee/Bee.

Therefore, the signs are similar to an average degree.

Conceptually, neither of the two signs has a meaning, beyond the fact that they are acronyms. Therefore, the conceptual comparison does not influence the assessment of similarity of the signs. There is no conceptual similarity between 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.

The opponent claims that its mark is particularly distinctive by virtue of intensive use.

Evidence of Enhanced distinctiveness

According to the opponent the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use at least in France and at least for all the services designated in Class 36.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted, inter alia, the following evidence of the enhanced distinctiveness of EUTM No. 269 415 in France:

• An Activity Report for the opponent company for 2014 showing the earlier mark.

• Printout of a Wikipedia page describing the Groupement des Cartes Bancaires CB, making reference to the earlier mark, which is shown in the extract.

• Printout of a report in French from ledauphine that describes the new biometric system employed by the opponent on its credit cards. The earlier mark is clearly shown on the card and mentioned in the report.

• Copies of the opponent’s Annual Reports from 2010 to 2014.

• Various press releases and newsletters from the opponent company containing the earlier mark.

• Screenshots from the web sites of several major banks and finance companies (Banque Populaire, BBVA, VISA, Banque Accord Auchan, Société Générale) showing the earlier mark on credit cards.

• Screenshots from the web sites of several major companies showing the earlier mark on credit cards (Amazon, Le Figaro newspaper, Le Monde newspaper, Gaumont Pathe).

The opponent also cites case law from the Opposition Division and Boards of Appeal of the Office that confirmed the enhanced distinctiveness of the earlier mark.

It is clear from the evidence filed that the earlier mark has been put to considerable use in the French market, in the field of finance, monetary affairs, debit and credit cards, etc. The opponent has provided cogent and apparently incontrovertible evidence that the trade mark in question has been put to intensive use in France.

The opponent has clearly made large financial investments on marketing, advertising and promoting their ‘CB’ mark and bringing to the attention of consumers.

The evidence submitted includes the detailed and extensively substantiated descriptions of the variety of services offered by the opponent under the CB trade mark and leaves no doubt that the earlier mark is known by a significant proportion of the relevant public in France.

The existence of the enhanced distinctiveness of the earlier mark has been confirmed by the Boards of Appeal in relation to all the earlier services (see Decision of 27 August 2014 – R 944/2013-4 – CCB / CB et al).

The Opposition Division is therefore satisfied that the earlier trade mark has been subject to a long-standing and intensive use and that it was generally familiar to consumers in France.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) CTMR that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope (29.09.1998, C-39/97, Canon, EU:C:1998:442, § 29 and 22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular the similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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 and 22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29.09.1998, C-39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s level of attention is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26 and 30.06.2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

The contested mark is three letters long, and the first and last letters are the same as the earlier mark. This results in the marks having a similar sound when pronounced. The services in question are identical. Although the letters forming the earlier mark are stylised, they are still immediately recognisable as the letters C and B.

It is a basic principle of trade mark law that the more distinctive a mark, the greater the scope of protection it enjoys. The earlier mark is entitled to extra protection in relation to the French market as a result of the enhanced distinctiveness it has in that territory. In the view of the Opposition Division, a consumer who sees banking services marketed under the brand CCB, combined with a non-descript device, could easily confuse or associate the commercial source of the services with a competing brand CB, albeit in a different design.

Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested services.

Since the opponent succeeded entirely on the basis of EUTM No. 269 415, there is no need to examine the opposition in relation Article 8(5) EUTMR or the other earlier right relied upon by the opponent.

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) EUTMIR and Rule 94(7)(d)(iii) 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

Lucinda CARNEY

Rhys MORGAN

Janja FELC

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.