OPPOSITION No B 2 600 677

Banco Bilbao Vizcaya Argentaria, S.A., Plaza de San Nicolás, 4, 48005 Bilbao (Vizcaya), Spain (opponent), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative)

a g a i n s t

BBV Tech SRL, Via Lario 8, 20159 Milan, Italy (applicant).

On 31/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 600 677 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 533 608. The opposition is based on European Union trade mark registration No 1 349 943 and Spanish trade mark registration No 2 264 653. The opponent invoked Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims that the earlier European Union trade mark registration No 1 349 943 and Spanish trade mark registration No 2 264 653 are reputed in the territory of Spain.

The reputation is claimed for the following services:

Class 36: Insurance services; financial affairs; monetary affairs and real estate affairs.

The contested goods are the following:

Class 6: Flexible tubes of metal.

Class 11: Filters for industrial and household use.

Class 17: Seals (Non-metallic -) for floating roof storage tanks; shock-absorbing and packing materials, vibration dampers; flexible pipes, tubes, hoses, and fittings therefor, including valves; elastomer expansion joints; flexible expansion joints; fire resistant expansion joints; gaskets; pressure hoses (non-metallic -); rubber tubes and pipes; hose pipes made of rubber; flexible hose pipes of rubber; hoses made from elastomer lined woven textiles; flexible pipes of rubber reinforced with synthetic fabric; flexible hoses of rubber reinforced with synthetic fabric; industrial hoses of rubber; flexible tubes, not of metal; non-metallic flexible hoses made of rubber; non-metallic flexible hoses made of synthetic rubber; non-metallic flexible hoses of textile-reinforced synthetic rubber; fabric expansion joints.

Class 22: Bindings, not of metal.

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 shall 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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

BBVA BBV TECH

Earlier trade marks	Contested sign

The relevant territory is Spain.

Both signs are word marks, the earlier one consists of the element ‘BBVA’ and the contested one of the elements ‘BBV’ and ‘TECH’.

The earlier marks and the element ‘BBV’ of the contested sign have no meaning for the public in the relevant territory.

The element ‘TECH’ of the contested sign could be related by part of the relevant public to the word ´técnico´, as ´pertaining to or relating to the applications of sciences and the arts´ (´perteneciente o relativo a las aplicaciones de las ciencias y las artes´, see http://dle.rae.es/?id=ZIkyMDs).

Bearing in mind that the relevant goods are a variety of metal and non-metal machine and building parts and/or appliances for home or industrial use and materials used in handling loads, which in general belong to the area of technological elaborations, it is considered that this element is weak for all of the contested goods and for the part of the public that understands it in the meaning specified above. For the rest of the relevant public the element is of an average distinctiveness.

Visually and aurally, the signs coincide in the sequence (the sounds) of letters ´BBV´, which are the first three letters in the earlier signs and form the entire first element of the contested sign. The signs differ in the (sounds) of the last letter ´A´ of the earlier marks and the element ´TECH´ of the contested sign (which is weak for a part of the relevant public).

Therefore, the signs are visually and aurally similar at least to an average degree.

Conceptually, for part of the public in the relevant territory while the element ´TECH´ of the contested sign will be perceived in the meaning specified above, the earlier marks lack any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For part of the public in the relevant territory, neither of the signs has a meaning. 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 the opposition on the ground of Article 8(5) EUTMR will proceed.

2. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in Spain.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 07/09/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 36: Insurance services; financial affairs; monetary affairs and real estate affairs.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 22/04/2016 the opponent submitted evidence of reputation.

The opponent divided the submitted evidence into several different categories and ‘exhibits’. For the sake of clarity, the Opposition Division lists the submitted evidence in the same way. Therefore, the evidence is the following:

• ‘Economic news regarding BBVA (source: third parties)’ (Exhibits 1 to 24). The exhibits include:

  • 24 Press Articles in Spanish with provided translation of excerpts of them in English. The articles are from the following sources: ‘Actualidad Economica’, www.tatum.es (referring to ‘Dossier Empresarial’, ‘Reuters’, ‘RRHH Digital’ and ‘terra’ as sources of information), ‘El Mundo’, ‘Expansion’, ‘ABC’, www.sincodias.com, www.marketingmk.com, and are dated between 01/2005 and 29/07/2014. The articles provide information about ‘BBVA’ as being a bank and they contain further details on its activities and presence on the market, such as: ‘BBVA’, being one of the ‘two main banks’ (www.tatum.es, 10/2011); ‘Santander and BBVA have the best workforce for commercial banking’ (‘RRHH Digital’, 13/11/2006); ‘BBVA makes a 4,606-million turnover in 2010, 94% more than in 2009 […] BBVA issued data yesterday, complying with the conditions of the Spanish National Bank, about its exposure to the real-estate sector. This entity has loaned 16,600 mill. to developers, 3,543 mill., which mounts to default payments, making a 21.3 %, four points more than last year’ (‘El Mundo’ , 03/02/2011); ‘BBVA-40 years of the very first bank card […] The BBVA celebrated yesterday its 40 anniversary of the first bank card in Spain ever’ (‘El Mundo’, 18/05/2011); ‘[t]he bank that does not spare ideas […] BBVA, introducer of the very first credit card is still faithful to innovation’ ( ‘ABC’ , 16/04/2013); ‘[i]n a report which analyses the 50 biggest financial groups of the Old Continent, the ranking of the credit rating of each one of them stands out. In the classification, the two Spanish giants, BBVA and Santander, appear in the top positions. The former and the latter occupy the third and the fourth position, respectively, by quality of the rating’ (el.Economista.es, 07/09/2011);

  • 3 excerpts in Spanish, non-translated, originating from www.abc.es (dated 15/07/2007); ‘wikipedia’; ‘El Economista’ (14/01/2013);

• ‘Internal news (i.e. economic news regarding BBVA, coming from BBVA)’ (Exhibits 25 to 33). The exhibits include:

  • Corporate Responsibility Annual Reports (2007, 2008 and 2009) and Executive Summary (providing information on the activities of BBVA Group in 2011); an excerpt, referring to market share. The documents provide information on the activities of ‘BBVA’ as a ‘financial service group’ and a ‘global financial institution’. The Reports focus on giving information about business strategy and principles on which the activity of the Group is based, as well as its expansion in other countries (apart from Spain). It is claimed that ‘[i]n terms of financing and consultation, BBVA is among the leaders in the world ranking of investment banking products, structured finance and trade finance, and has received numerous awards for the operations it has taken part in’ (Annual Report, 2009). The documents further provide information on the engagement of the company in building a sustainable environmental policy and corporate volunteer work. There is a reference to some prizes and awards (such as ‘Ranking Safest Banks Awards’, Global Finance, listed in the Annual Report 2009). In the Executive Summary, it is stated that the brand awareness in Spain is 68.3 in 2010 and 64.6 in 2011 (in a scale of 1-100), where the brand is defined as ‘the promise made to the stakeholders and the experiences they share with BBVA’. It is stated that the Reports are verified in its entirety by Deloitte. It is also explained that the information on the financial matters is available at www.bbva.com;

  • Press clippings, incorporated on what appears to be a company document, dated May 13^th-20^th with no indication of the year, mentioning: a business deal between BBVA and another bank, a launch of a new guaranteed fund; and the appointment of new heads of BBVA in France and Italy;

  • Market share figures, which appear as an excerpt from a company document. The document lists in the area of ‘Retail Banking/ Customer Management), ´BBVA España´ with ‘market penetration’ (‘% of participants who declare working with certain institution’) being 15%. There are no further details on what basis these figures are obtained;

  • Excerpts referring to http://inversores.bbva.com, where it is stated that ‘BBVA is a word-wide banking group whose origins go back more than 150 years. […] We are recognised as a trusted advisor to key decision makers in strategic acquisitions […] and in financing the consequences of such transactions’. It is also stated that ‘BBVA is a global financial services group with approximately € 584 billion in total assets, 47 million clients, 7 400 branches and 110,625 employees in more than 30 countries’;

  • Some excerpts (press clippings) in Spanish (non-translated), originating as well from what appear to be internal documents/reports.

• ‘Advertising and Sponsorship’(Exhibits 34 to 37), containing:

  • 5 Articles in Spanish (dated between 16/10/2006 and 26/01/2011), with provided partial translations. The sources are: www.marketingmk.com; ‘El Mundo’; ‘MK Marketing + Ventas’, ‘MarketingNews.es’; ‘BBVA Press Room’. The translated parts are providing information on BBVA being the ‘Title Sponsor of the First and Second Division’ and participating in sponsorship of football games and advertising investment in events.

  • 3 articles in English (dated in 2010 and 2012) from: ‘BBVA Press Room’; ‘NBA Development League’, www.fundaciomiro-bcn.org, giving information on the sponsorship, provided by the BBVA for sports events and foundation activities;

  • Several excerpts from a website www.coloribus.com (dated between 2004 and 2005), providing advertisement of ‘BBVA’ bank as a private bank, as providing mortgage services when ‘buying a home’; and for financial services in general;

  • 18 photographs depicting different events, such as a football game or press conferences. The earlier signs are depicted on the stage, around the football field, on a football and on a bank card;

  • A survey, conducted by MillwardBrown, which contains information in Spanish with only some titles of the pages given in English. The opponent provides its own analysis of the data of the survey, where it is claimed that it follows from the information provided that in 2011, the 9% of the total investment in advertising activities in Spain for all kind of medias came from the opponent. However, there is no translation of the document itself, neither of material parts of it;

  • 13 Non-translated articles: from ‘ABC’, ‘Wikipedia’, www.marketingmk.com, www.press.bbva.com, www.intereconomia.com, ‘El Mundo’; ‘es.coloribus.com’; http://publi.es; ‘MK Marketing + Ventas’; two articles from ‘MKMarketing+Ventas’, dated in 2007 and 2008 (with a single translated paragraph, however unclear to which article it belongs);

  • Spanish articles from different sources, for which the opponent provides only translation of some paragraph, however it is unclear to which article the translation belongs or they are illegible (abcdesevilla.es, ‘El Mundo’; www.eurosintesis.com; ‘Fundación Amigos Del Museo Del Prado´, www.guggenheim-bilbao.es, ´Dialnet´, ´El Economista´).

• ‘Ranking and awards’ (Exhibits 38 to 69), containing:

  • 11 Excepts in Spanish from webpages, dated between 03/2004 and 22/04/2013 with partial translations: The excerpts provide information on the presence of BBVA in the media, such as: an excerpt from http://marketingmasventas.dev.nuatt.es (dated 10/2010), stating that ‘2007 KAR (Key Audience Research) Survey of Corporate Reputation, carried out by Ipsos’ places BBVA among the top 10 companies most likely to succeed the most the following year, according to the participants in the survey. Another excerpt from the same source (dated 10/2010) states that in a survey ordered by ‘Foro de Marcas Renombradas’, directed by Universidad Carlos III de Madrid and sponsored by Instituto Español de Comercio Exterior, which has the objective to learn to what extent the citizens of other countries know the origin of the renowned brands in the world, ´BBVA´ is placed among the ten most known Spanish brands; A different excerpt from the same source (article dated 06/2009) explains that ‘[t]he brands Santander, BBVA, Movistar and Zara have demonstrated their global strength and good image, consolidating their position another year in the BrandZ ranking of the Top 100 Most Powerful brands in the World, which the consultant Millward Brown carries annually’; excerpt from: www.abc.es (dated 07/12/2008), states that ‘BBVA’ repeats its third position in ‘the financial brand with best reputation in Spain’; excerpt from www.abc.es (dated 04/01/2008), stating that according to a survey carried out by Interbrand, BBVA is one of the most valued Spanish brands (with 7,736 million) and that about the BBVA brand ‘the report points out the “Adelante” campaign, which has defined the bank’s strategy and has strengthen it in new markets’; excerpt from www.abc.es (dated 22/04/2013) stating results from ranking done by ‘Villafañe & Associates´, which places ´BBVA´ among the national companies with reputation and the most valued ones regarding the corporate responsibility and governance´; excerpt from www.prensa.bbva.com (dated 19/06/2008), states that ‘BBVA is awarded the Premio Príncipe Felipe for Best Management of a Reputed Trade Mark´ and that ´BBVA is a financial services global group with a solid position of leadership in the Spanish market´;

• A brochure ‘Leading Brands of Spain’ (undated, unclear source), listing inter alia, BBVA;

• A document entitled ‘The SMI-Wizness Social Media Sustainability INDEX 2012’, which lists the top 10 companies ‘demonstrating their sustainability actions, services, and products using social media storytelling’. It lists the opponent’s company on the second place. The ranking concerns companies around the world.

• Excerpt from articles in English: article ‘Debunking the myth, originating from ‘Marca España 2013´, quoting ´Forbes Magazine´ and stating that ´[b]anks such as Santander or BBVA, rated as two of the five best banks in the world’; from www.mtn-i-3.co.uk, which lists ‘2011 Awards Americas’, listing inter alia, BBVA; from http://press.bbva.com (dated 14/02/2013), stating that ‘BBVA wins the “Best private bank in Spain” award in the inaugural edition of The Global Private Banking Awards’ and that ‘BBVA’s private banking business boasts strong characteristics which set it apart from its peers and are key to its success’; from http://bancaparatodos.com, stating that ´BBVA is the fifth in the ranking prepared by SMI-Wizness of companies that best use social media´; from http://press.bbva.com (08/02/2010), stating that ‘Euromoney rates BBVA the best private banking services provided in Spain’; selection of articles from http://press.bbva.com, giving information on different awards in 2010/2011/2012, such as ‘the Global Private Banking award in the category of Best private banking in Spain’ (2011); ‘BBVA Compass has climbed to third place in the annual reputation ranking by “American Banker”’ (2012);

• Certificate from ‘Foro de Marcas Renomradas Españolas’ (‘Spanish Well-known Brands Association’), with provided translation in English, dated 04/04/2012, certifying that the opponent is a full member of the ‘Spanish Well-known Brands Association’ since March 2000 and that the trade mark ‘BBVA’ which belongs to this company is well-known, according to the definition set forth in the Spanish Trademark law 17/2001;

• 6 Court decisions in Spanish, with provided translation in English, issued between 2005 and 2009 of the High Court of Justice of Madrid and the Spanish Supreme Court. The decisions mention the following: ‘the awareness of the abbreviation BBVA contributes to the singularity and distinctiveness of this bank company’ (High Court of Justice of Madrid, judgement of 14/11/2005); ‘the trademark identified with the abbreviation “BBVA”, which is identified with Banco Bilbao Vizcaya Argentaria as it is known in this manner by the general public’ (High Court of Justice of Madrid, judgement of 07/07/2006);

• 3 Reports from ‘Brand Finance banking 500’ (‘The annual report on the most valuable global banking brands’), issued by ‘Brand Finance’, for the years 2009/ 2010/ 2011. They give the following ranking for the brand ‘BBVA’ with domicile in Spain-17^th position in 2008 and 19^th in 2009 (according to the Report from 2009); 17^th in 2010 (according to the Report from 2010) and 20^th in 2011 (according to the Report from 2011). All of the reports also give information on the brand value (e.g. 10,720 in million USD for 2011) and the report from 2009 provides a brief entry on the brand itself, regarding its positioning on the respective spot;

• Excerpt from http://es.finance.yahoo.com, providing ranking of ‘Top companies for leaders 2011’, where for the European Ranking, the first place is taken by ‘BBVA’;

• 3 Rankings from ‘Brand TOP 100 MOST Valuable Global Brands’, issued by Millward Brown for the years 2008/ 2009/ 2010. The documents provide the brand values in million USD, for instance in 2010 for ‘BBVA’ it is 12,977. ‘BBVA’ is placed on the 77^th position in 2008; the 55^th position in 2009; and the 56^th position on 2010. The ranking from 2009 further places ‘BBVA’ on the 12^th place among the brands in ‘the financial institution category’ and provides information (method) on how the ranking is made;

• ‘Spanish Most valuable Brands, 2005 Ranking’, performed by Interbrand. It places ‘Grupo BBVA’ on the third place, stating that ‘it continues implementing its brand philosophy of a customer centred bank’;

• Some excerpts in Spanish, non-translated, from www.comercio.mineco.gob.es; http://marketingmasventas.dev.nuatt.es; www.presspeople.com; www.abc.es; www.premioscentrodelamarca.com; ‘Actualidad Economica’;

• Non- translated rankings from www.merco.info.

• ‘Sworn statement, and list of domain names and marks composed by ‘BBVA’ (Exhibits 70 to 72), containing:

  • Affidavit, dated 20/04/2016, signed by Irene Rodriguez Alonso, a legal representative of the opponent and Head of Global Trade mark and TLDs management since 2011. The document provides information on the history of the company and the profits generated in Spain related to the use of the marks for the services for which reputation is claimed. The figures are as follows: . It is further stated that the company participates actively in sport sponsorships (supported with excerpts from different webpages, mostly in Spanish), such as the Spanish soccer league. It is also stated that the bank goes through digital transformation in order to respond to the demand of the new technologies and it takes interest and initiatives in corporate social responsibility (some excerpts from the website in Spanish are provided). The affidavit further states that the brand has been recognised and won different awards and a list of awards is provided. The affidavit is further supplemented by: a list of the offices in the world of ‘BBVA’ bank and; a list of the trade marks ‘BBVA’, registered/applied for in different countries amounting to hundreds entries; some webpage visitors reports printouts;

  • List of domain names, containing ‘bbva’; and search engine results, containing the earlier marks.

With regard to the documents submitted in a language different from the language of the proceedings, for which no translation of the document or material parts of it is provided, it is noted that, pursuant to Rule 19(2)(c), Rule 19(3) and Rule 98 EUTMIR, the evidence that the earlier right has a reputation must be filed in the language of the proceedings or accompanied by a translation within the time limit for substantiation of the earlier right on which the opposition is based. In the case at issue, the opponent was given until 23/04/2016 to substantiate its earlier rights (following the letter of the Office sent to the opponent on 18/12/2015). The opponent did not submit any further translations.

Since, the documents that are not in the language of the proceedings are part of the evidence submitted to substantiate the earlier marks with a reputation, it follows that, for the ones for which translation was not submitted (neither of a document as a whole nor of a material part of it) within the substantiation deadline, these cannot be taken into account in the present proceedings.

It is clear from the evidence for which (partial) translation is provided, that the earlier trade marks have been subject to long-standing and intensive use and are generally known in the relevant market, where they enjoy a consolidated position among the leading brands, as has been attested by diverse independent sources, namely a variety of articles and rankings. The profit figures, and the various references in the press and the amount of awards show that the marks enjoy a high degree of recognition among the relevant public. The ‘BBVA’ brand recognition by the local jurisdictions and commercial organisations in Spain, such as the courts and the ‘Spanish Well-known Brands Association’ are further affirming the awareness of the public in the relevant territory.

It is further noted that the world rankings of the brand, the trade mark registrations and applications all over the world, confirm that the opponent invested in the building of the ‘BBVA’ brand and its recognition and protection.

Even though on the evidence the name ‘BBVA’ is often designating a company, it is also clarified that this is a financial (bank) institution, namely the one that provides financial services. Therefore, the name of the bank ‘BBVA’ can be regarded as used in relation to the services. It is clear from the submitted evidence, taken as a whole, that link is established between the name of the bank ‘BBVA’ and the financial services it provides.

The evidence, however, does not succeed in establishing that the trade marks have a reputation for all the services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to financial affairs (as the submitted independent press clips and ranking show), whereas there is no or little reference to the remaining services, or the documents submitted for them originate mainly from the opponent and are not supported by information from independent sources.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

While the relevant section of the public for the goods or services covered by the conflicting marks is the same or overlaps to some extent, those goods or services are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public.

In the present case, the Opposition Division considers that the two spheres of economic activities in question, financial affairs versus the contested goods in Classes 6, 11, 17 and 22 are so distinct that the only point they have in common is that they can all target the same relevant public. The consumer of the contested goods, namely metal tubes (Class 6), filters (Class 11); non-metallic construction and building materials and materials used in handling loads (Classes 17 and 22) is mostly a specialised public in the building and construction sector, but it could also be the general public, such as in cases of filters for household use in Class 11. The relevant consumer of the contested goods, being specialised or general public, is likely to use as well the opponent’s financial services, since the latter are used largely nowadays, as the main channel of operating with personal or business related financial sources.

However, as the Court has stated, ‘even if the relevant section of the public as regards the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public’ (judgment of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 49).

The Opposition Division adjudges that a link between the field of financial affairs and goods such as metal tubes, filters; non-metallic construction and building materials and materials for handling loads is unlikely to be made, given that the latter goods are not likely to bring the former services to the mind of the consumer. In the present case, there is no nexus between the market of the opponent’s services on one hand and the markets of the applicant’s goods, on the other.

The opponent states that, even though the nature of the goods and services may be different, a ‘link’ exists, due to the presence and reputation of the ‘BBVA’ trade mark and ‘the fact that the consumers of both marks will be the general public and the financial services, payment services and credit services are involved in the commercialization and the acquirement by the public of the goods covered in classes 6, 11, 17, 22’.

The conclusion of the opponent cannot be supported. It is due not only to the tangible nature of the goods and the intangible character of the services, but also because they serve a totally different purpose and cover different needs. The link could not be established on the basis that the opponent’s services could be used or needed for the obtainment of the contested goods, as this could be practically concluded for any goods and services, for the purpose specified above, e.g. individuals and entities are using banking (financial) services to operate on a daily basis. However, the nature of these services is very specific, they are offered only by specialised undertakings, which have to undergo strictly regulated procedures for obtaining permission for establishment and operating. These procedures are government regulated in order to create the security and the market transparency necessary for assuring the safe handling of other people’s and businesses’ financial affairs. The entire activity of the financial institutions, regarding the services they provide to the public, is regulated by norms and different mechanisms for control. Furthermore and due to the heavy control requirements, the institutions offering financial services do not expand naturally in the production of goods, needless to say those that have nothing in common with their area of activity. Thus, the activity of the banking (financial) institution, even if it could be expanded to other services related to handling financial issues and security (such as insurance services) does not undergo brand extension towards markets of production of goods that are not relevant to the financial services in general.

The contested goods as mentioned above are a variety of construction and building metal and non-metal goods, materials used in handling loads, and goods for cleaning and purifying (air/water) in the industry or in the household. These have completely different channels of commercialisation, such as large department stores, and specific purposes and providers that are usually focused on the specific goods due to the particular method or technology of obtaining the goods (e.g. metals and metal articles). There is no proximity in the economic sectors of the opponent’s services and the contested goods, but rather a large gap, which makes it unlikely that the contested sign would remind the relevant consumer of the earlier marks.

Furthermore, consumers are commonly exposed to sponsorship advertisements for all different varieties of companies, as the promotion of sponsors inevitably accompanies the sports events. Typical examples are football and basketball games, where the names of sponsors appear on the team uniforms of the players, on the side tribunes, etc. Even though, the provider who is offering opponent’s services could be regularly a sponsor of that kind of events (as also shown on some evidence submitted by the opponent), the contested goods are not in any way close to the goods where the brand of the sponsor could be usually placed (e.g. T-shirts, caps, balls, etc.). The contested goods could not be used as merchandising items either. This is due to the fact that the contested goods serve specific functions mentioned above (e.g. to be used in construction or for air purification) and are not naturally used as to be displayed or to serve, inter alia, for decorative purposes. Therefore, even if the provider of the opponent’s services offers sponsorship or uses merchandising items for advertisement, no connection could be established between the opponent’s services and the contested goods, as the latter are not naturally related or used in such activities.

In this respect, the Opposition Division considers that the huge differences in usage, purpose and regulatory frame (mainly for the opponent’s services) between the goods in dispute and the services for which a reputation has been proven make it very unlikely that the public will make this link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR. It is even less likely that, when intending to purchase an item for building or construction purposes, the relevant public will link these goods to the existence of trade marks that are very well known, but for services in the financial sector. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

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 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Claudia MARTINI

Eamonn KELLY

Vanessa PAGE

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.