OPPOSITION No B 2 696 873

The Royal Bank of Scotland Group plc, 36 St Andrew Square, EH2 2YB Edinburgh, United Kingdom (opponent), represented by Lincoln Ip Limited, 9 Victoria Street, AB10 1XB Aberdeen, United Kingdom (professional representative)

a g a i n s t

Intuit Inc., 2535 Garcia Avenue, 94043 Mountain View, United States (applicant), represented by Lane Ip Limited, The Forum, St Paul’s, 33 Gutter Lane, EC2V 8AS London, United Kingdom (professional representative).

On 22/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 696 873 is partially upheld, namely for the following contested services:

Class 35: Business management; business management advice and assistance; commercial information and advice for consumers; business research; compilation of statistics; economic forecasting; providing information, news, opinions and advice in the fields of accounting, tax preparation and planning, personal budgeting, household budgeting and consumer spending, including via computer and communication networks, the internet, social media and software applications; providing economic forecasting and analysis, and market analysis, including through computer or communication networks, the internet, social media and software applications.

Class 36: All the services applied for in this class, except for real estate services (none of the foregoing services related to insurance brokerage services and investment brokerage services).

2. European Union trade mark application No 15 003 701 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 003 701 for the word mark ‘MINTLIFE’. The opposition is based on:

 United Kingdom trade mark registration No 2 360 715 G for the word mark ‘MINT’ for goods and services in Classes 9, 16, 35, 36, 39 and 41, for which Article 8(1)(b) and Article 8(5) EUTMR is invoked;

 European Union trade mark registration No 3 899 333 for the word mark ‘MINT’ for goods and services in Classes 9 and 36, for which Article 8(1)(b) and Article 8(5) EUTMR is invoked;

 European Union trade mark registration No 5 317 102 for the word mark ‘MINT MOBILE’ for goods and services in Classes 9, 16 and 35, for which Article 8(1)(b) EUTMR is invoked;

 Non-registered mark ‘MINT’ used in the course of trade in the United Kingdom, for which Article 8(4) EUTMR is invoked.

PRELIMINARY REMARK

In addition to the particular circumstances of the present case and the case-law considered applicable to them, the final decisions of 08/09/2017, R 373/2017-5, MINT / MINT et al., of 23/03/2018, R 864/2017-5, MINT / MINT MOBILE et al. and 23/03/2018, R 540/2017-5, MINTLIFE / MINT et al. will be particularly taken into account for the resolution of the case, since they decided on opposition cases between the same parties, based on the same earlier trade marks as the present ones, against contested EUTM applications for similar/identical signs (namely the word mark ‘MINT’ and ‘MINTLIFE’) seeking registration for the same or similar services. The evidence submitted in the present case is also identical to the evidence submitted in these previous Board of Appeal cases.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all the earlier marks on which the opposition is based.

The date of filing of the contested application is 14/01/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the United Kingdom and the European Union, as applicable, from 14/01/2011 to 13/01/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, which belong to the classes listed above. The full list of the opponent’s goods and services (which is not reproduced here due to its length) can be found in the notice of opposition, which can be accessed through https://euipo.europa.eu. The opponent’s most relevant goods and services are the following:

UK trade mark registration No 2 360 715 G (‘the UK earlier registered mark’):

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, CDROMs 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 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.

European Union trade mark registration No 3 899 333 (‘the EU earlier “MINT” mark’):

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.

European Union trade mark registration No 5 317 102 (‘the EU earlier “MINT MOBILE” mark’):

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.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade marks for the goods or services in respect of which it is registered and on which the opposition is based.

On 20/03/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 25/05/2017, extended upon request until 25/07/2017, to submit evidence of use of the earlier trade marks. On 25/07/2017, within the time limit, the opponent submitted evidence of use, which is the same for all three earlier trade marks. All exhibits but two (SW12 and SW16) are the same as the ones submitted on 18/11/2016 within the substantiation deadline.

The evidence to be taken into account is the following:

 Witness statements of an employee of the opponent, who has held the position of IP Manager for three years. According to the document, the opponent has been offering a credit card under the mark ‘MINT’ together with other financial benefits such as travel accident insurance, emergency assistance and loans since 2004. Three versions of the ‘MINT’ card were offered, namely ‘MINT Classic’, ‘MINT Gold’ and ‘MINT Platinum’. In the witness statements, the opponent provides information about the number of customers in the United Kingdom having a MINT credit card account from 2004 until 2014 (343 000 customers in 2014) and the number of transactions made by customers using MINT credit cards since 2007 (witness statement No 1 submitted on 18/11/2016 and witness statement No 2 submitted on 25/07/2017).

 Exhibit SW1: a photograph showing a ‘Master’ credit card with the depiction of the word ‘MINT’ on it.

 Exhibit SW2: a selection of press articles and advertisements published in UK newspapers in 2006 and 2007 (for example in the Daily Mail, The Sunday Times, The Times, Telegraph, Daily Mirror, Metro, Sunday Herald, Sunday Express and the Guardian). The documents all contain a reference to the credit card ‘Mint’ issued by the opponent in relation to the payment of credit card bills, offers on transfer balances from other cards, online billing, etc.

 Exhibit SW3: copies of newspaper articles published in different newspapers (for example The Times, The Mail, Sunday Herald, Daily Mail, Daily Star, The Observer, Birmingham Post, Yorkshire Post and the Eastern Daily Press) in 2008, with reference to the services connected to MINT credit cards (for example expenses with late payments, interest rates with balance transfers, credit limit, etc.).

 Exhibit SW4: copies of newspaper articles published in different newspapers (for example The Sunday Telegraph, The Independent, Daily Record, Daily Mail, Daily Mirror, Daily Express, The Mail, the Sunday Times, Evening Times, East Anglian, and Evening News) in 2009. The articles mostly contain references to the ‘MINT’ credit card issued by the opponent.

 Exhibit SW5: screenshots of YouTube TV advertisements for ‘Mint’ (title: ‘Mint Card Advert Sneeze in Soup’; ‘Mint Card-Hamster’; ‘Mint Card – Man Fired’).

 Exhibit SW6: examples of promotional material concerning ‘MINT’ credit card conditions for late payments over limit, same day payments, etc. and templates of a letter by the opponent concerning interests on new purchases and money transfers in 2013 and 2014. According to the opponent, the offers were sent to ‘MINT’ customers between July 2001 and May 2014.

 Exhibit SW7: an example of a statement sent to ‘MINT’ customers and a document showing the conditions for use of the ‘MINT’ credit card.

 Exhibit SW8: printouts taken from the opponent’s website www.mint.co.uk, showing the mint.co.uk screenshot history (captured up to 12/02/2015) and ‘MINT’ credit card features. According to this document, customers can register for ‘MINT’ online services and access their account 24/7, receive monthly statements online and access a wide range of other services such as balance transfer, online payments, account management, etc.

 Exhibit SW9: a copy of the Consumer Credit Licence of 28/09/2010 issued by the UK Office of Fair Trading and addressed to The Royal Bank of Scotland. The documents show that the bank is licensed to carry out consumer credit and debit collecting services, among others, and ‘also trading [inter alia] as Mint’.

 Exhibit SW10: a copy from the UK Financial Conduct Authority website www.fca.org.uk concerning company information about the Royal Bank of Scotland PLC. The document shows, among others, that the bank uses the trade name ‘MINT’ and that the interim permission, to carry out mainly consumer credit and debt collecting services, is valid from April 2014.

 Exhibit SW11: a document named ‘Notice of Variation’ issued in November 2011 and another named ‘Changes to your credit card’ generated in June 2014 concerning the conditions applicable to the ‘MINT’ credit card.

 Exhibit SW12: extracts from the Annual Reports and Accounts, and the Annual Results, published by the opponent’s company. The Annual Report concerns 2010 and 2011.

 Exhibit SW13: Adobe Scheduled Report for RBSG Mint Consumer showing customers’ visits for October 2013.

 Exhibit SW14-SW15: Adobe Scheduled Report for RBSG Mint Consumer showing customers’ visits from 01/11/2004 until 30/11/2015.

 Exhibit SW16: one article published on www.moneywise.co.uk, last updated on 19/04/2011, on ‘the best credit cards for customer service – as voted by you’, showing the customer service score for the UK credit card companies. According to the table provided in the article, the card provider ‘MINT’ received 39 votes. There is also an article published on the BBC website on 09/03/2012 regarding the ‘mis-sale of PPI’ in which a user mentions the ‘MINT’ sign.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

As far as the witness statements are concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(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 declarations are supported by the other items of evidence.

In the present case, the opponent also submitted some other documents (such as press articles, advertisements, annual reports, Adobe reports of users’ access to the opponent’s website) supporting the witness statements mentioned above.

Place of use

The evidence (in particular the press articles and advertisements) demonstrates that the place of use is the United Kingdom. This can be inferred from the language of the documents (English) and the references in the articles where the earlier mark ‘MINT’ is mentioned in relation to credit cards and credit card services provided by the opponent which is based in the United Kingdom. Therefore, the evidence relates to the relevant territory.

Time of use

The information on the time of use provided in the witness statements has been corroborated by the submitted evidence. In particular, a leaflet dated 01/07/2011 (SW6) includes information on ‘MINT’ credit card benefits, including 24-hour Telephone Banking Services, Customer Service Officers, ‘MINT’ Mobile services, ‘Minicom’ number; Credit Card Online Services and Direct Debit, and a website www.mint.co.uk (SW8), which were accompanied by sample letters (sent 2013-2014) to existing clients (SW6); a bank statement and the Notice of Variation dated November 2011 (SW6-7 and SW11). The letters mentioned include personalised promotions for ‘MINT’ credit card users, such as 0% interest rates for some purchases/time periods on Balance Transfers, or reduction of fees. The Notice of Variation (2011) and changes to credit cards (2014) (SW11) include the conditions of use of ‘MINT’ credit cards. The evidence showing customer visits on the dedicated website (SW13-15) further confirms the witness statements. Additionally, the opponent submitted evidence proving its authorisation to issue credit cards including ‘MINT’ (SW9-10) issued by the Office of Fair Trading (2010) and the Financial Conduct Authority (2014). Furthermore, the Annual Report and Accounts and Annual Results (2011) (SW12) mention the ‘MINT’ product (08/09/2017, R 373/2017-5, MINT / MINT et al., § 25-27). Therefore, the evidence overall is dated within the relevant period.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The evidence submitted clearly shows that the ‘MINT’ trade mark was used for credit cards and related credit card services (SW1, SW6-8, SW13-15). Taking note of the highly confidential nature of any bank data and for the information concerning the extent of use, the witness statements must be considered in conjunction with the evidence, in particular the Annual Report and Accounts (SW12). In this regard, the witness statements provide sufficient information concerning the commercial volume of use of the earlier marks, namely 620 000 ‘MINT’ customers in 2010 and 343 000 in 2014. In addition, the high volume of transactions, purchases within the EU and worldwide and the balance of transfers are enough to lead to the conclusion that the criterion of extent of use is satisfied. The opponent, moreover, claimed that out of 50 million credit card accounts in the United Kingdom, the Royal Bank of Scotland Group plc had approximately an 8.5% share, out of which ‘MINT’ made up of 6.5%, since 2004, when it was first launched and from the date when the extensive promotion campaign commenced (witness statements, SW2-SW5). The Annual Report and Accounts (SW12) include the opponent’s financial performance in 2011 and also mention the ‘MINT’ brand, without giving, however, any precise information on the services or volumes generated (08/09/2017, R 373/2017-5, MINT / MINT et al., § 29-30).

Nature of use

All the relevant evidence shows that the opponent used the sign ‘MINT’ in a trade mark sense, publicly and outwardly. The trade mark appears on credit cards, promotional leaflets, sample letters, bank statements, screenshots from the opponent’s website and the Annual Report (SW1, SW6-8, SW11-13). The use in the forms mentioned above, that is, with the omission of the element ‘MOBILE’ with respect to the EUTM No 5 317 102, does not alter the distinctive character of the mark in the form in which it was registered since that element is in a secondary position and not particularly distinctive in relation to the goods and services at issue which are usually and increasingly provided through mobile phones’ applications/handheld computers and similar mobile technology. Therefore, it also counts towards genuine use of the earlier mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37).

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the Opposition Division finds that the evidence submitted by the opponent does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory, namely in the United Kingdom and also in the European Union (5/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57; 19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 50).

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288).

In the present case, the evidence shows that the opponent has been using its earlier marks in relation to credit cards and credit services, services for the provision of credit, credit card services.

Therefore, with respect to Class 9, the evidence shows genuine use of all the earlier marks for credit cards only.

Regarding the services in Class 36 (which are only included in the specifications of the UK earlier registered mark and of the EU earlier ‘MINT’ mark), the evidence demonstrates use for credit services; services for the provision of credit; credit card services. These services are specifically listed in the specification of the EU earlier ‘MINT’ mark; they can be considered to form an objective subcategory of credit services included in the specification of the UK earlier registered mark.

There are no references to the use of the earlier marks in relation to the remaining services in Class 36 of the earlier marks. The references to insurance services in the witness statements are not supported by any other item of evidence that shows these services to be offered to customers as a separate service under the earlier marks.

Finally, there is no evidence of any use of the earlier marks for the other goods in Class 9, any of the goods in Class 16 and any of the services in Classes 35, 39 and 41 of the earlier trade mark registrations (08/09/2017, R 373/2017-5, MINT / MINT et al., § 34).

In view of the above, the Opposition Division considers that the evidence shows genuine use of the UK earlier registered mark and of the EU earlier ‘MINT’ mark only for the following goods and services:

Class 9: Credit cards.

Class 36: Credit services; services for the provision of credit; credit card services.

Furthermore, for the EU earlier ‘MINT MOBILE’ mark, the evidence shows genuine use only for the following goods:

Class 9: Credit cards.

Therefore, the Opposition Division will only consider the abovementioned goods and services in its further examination of the opposition.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier UK registered mark and EU ‘MINT’ mark.

a) The goods and services

The goods and services on which the opposition is based and for which the use has been shown are the following:

Class 9: Credit cards.

Class 36: Credit services; services for the provision of credit; credit card services.

Further to a limitation filed by the applicant on 12/05/2016, the contested services are the following:

Class 35: Advertising; business management; business administration; office functions; accounting; book-keeping; administrative accounting; business management advice and assistance; company and business information and administrative assistance; commercial information and advice for consumers; business research; compilation of statistics; price comparison services; compilation of information into computer databases; data search in computer files for others; dissemination of advertising matter; economic forecasting; news clipping services; providing information, news, opinions and advice in the fields of accounting, tax preparation and planning, personal budgeting, household budgeting and consumer spending, including via computer and communication networks, the internet, social media and software applications; providing commercial information on, and comparisons of, the products and services of others, including through computer and communication networks, the internet, social media and software applications; providing comparison of shopping services, including through computer and communication networks, the internet, social media and software applications; promoting the goods and services of others through computer and communication networks, the internet, social media and software applications; providing economic forecasting and analysis, and market analysis, including through computer or communication networks, the internet, social media and software applications.

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; financial affairs; monetary affairs; real estate affairs; financial services; personal and small business financial management services; online banking; transaction management; financial planning; financial management; financial analysis; financial consultancy; bill tracking and management; expense tracking and management; taxable item tracking and management; forecasting and analysis of financial data; financial data aggregation; services for the management of credit and debit cards, loans, mortgages, investments and financial accounts; providing information, news, opinions and advice in the fields of banking, financial management, saving and financial planning and retirement planning, including via computer and communication networks, the internet, social media and software applications; electronic bill presentation and electronic payment services, namely, receipt, processing and payment of bills, issuance of personal payments and the electronic transmission of payment data for others; providing bill payment and tax payment processing services via computer and communication networks; money transfer services; providing peer-to-peer payment services allowing users to pay others with electronic bank drafts, credit cards, debit cards, stored value cards, direct debit, direct account transfers, wire transfers, digital currency, non-bank value stores; 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 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.

Contested services in Class 35

All the contested services in this class are dissimilar to all the opponent’s goods and services in Classes 9 and 36, as they do not have anything in common. They have different producers/providers, different methods of use, natures and purposes. They have different publics, distribution channels and sales outlets. Moreover, they are neither complementary nor in competition.

Contested services in Class 36

The contested financial affairs; monetary affairs; financial services; services for the management of credit and debit cards, loans, mortgages, investments and financial accounts; providing peer-to-peer payment services allowing users to pay others with electronic bank drafts, credit cards, debit cards, stored value cards, direct debit, direct account transfers, wire transfers, digital currency, non-bank value stores (none of the foregoing services related to insurance brokerage services and investment brokerage services) are identical to the opponent’s credit services; credit card services in the same class, either because the opponent’s services include, are included in, or overlap with, the contested services.

The contested 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); personal and small business financial management services; online banking; transaction management; financial planning; financial management; financial analysis; financial consultancy; bill tracking and management; expense tracking and management; taxable item tracking and management; forecasting and analysis of financial data; financial data aggregation; providing information, news, opinions and advice in the fields of banking, financial management, saving and financial planning and retirement planning, including via computer and communication networks, the internet, social media and software applications; electronic bill presentation and electronic payment services, namely, receipt, processing and payment of bills, issuance of personal payments and the electronic transmission of payment data for others; providing bill payment and tax payment processing services via computer and communication networks; money transfer services (none of the foregoing services related to insurance brokerage services and investment brokerage services) are similar to the opponent’s credit services; credit card services in the same class. The services have the same nature (financial services), and they may be provided by the same companies via the same distribution channels and may target the same customers. The contested services are of the kind that the public would reasonably assume a financial institution or a credit card issuer would provide (08/09/2017, R 373/2017-5, MINT / MINT et al., § 53 and 23/03/2018, R 540/2017-5, MINTLIFE / MINT et al., § 65-66).

The contested real estate affairs (none of the foregoing services related to insurance brokerage services and investment brokerage services) comprise real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of related information. This mainly involves finding a property, making it available for potential buyers and acting as an intermediary. Consumers clearly distinguish real estate agents’ services from those of financial institutions. They do not expect a bank to find housing or a real estate agent to manage their finances. Therefore, they are dissimilar to all the opponent’s goods and services in Classes 9 and 36, as financial and banking services do not have the same nature, the same intended purpose or the same method of use as real estate services. While financial services are provided by financial institutions for the purposes of managing their clients’ funds and consist of, inter alia, the holding of deposited funds, the remittance of funds, the granting of loans or the performance of various financial operations, real estate services are services connected with a property, namely, in particular, the lease, the purchase, the sale or the management of such a property. Furthermore, regarding the fact that the services in question might be found in the same distribution channels, it is clear that real estate services are not, in principle, provided on the same premises as financial services (17/09/2015, T-323/14, Bankia / BANKY, EU:T:2015:642, § 34-38).

b) 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 identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

Considering that the services in Class 36 are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

c) The signs

MINT	MINTLIFE
Earlier trade marks	Contested sign

The relevant territories are the UK and the EU, respectively.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both signs are single-word marks. The contested sign begins with the only element of the earlier marks, ‘MINT’, followed by the additional word ‘LIFE’. These words are meaningful in certain territories, for example in those countries where English is understood. Consequently, and also considering that one of the earlier marks relied upon by the opponent is the UK earlier registered mark, the Opposition Division finds it appropriate to focus the comparison of the signs, in relation to the EU earlier ‘MINT’ mark, on the English-speaking part of the public.

In light of the above, it is noted that, although the contested sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The common element ‘MINT’ will be associated with several meanings, such as an herb with fresh-tasting leaves or a place where new coins are made or, more colloquially, an extremely large amount of money (information extracted from Cambridge Dictionary on 16/10/2019 at https://dictionary.cambridge.org/dictionary/english/mint). As none of them directly describes the relevant services, the distinctiveness of this element is considered to be normal. Even in its more informal connotation, where ‘MINT’ alludes to the idea of having a lot of money, its application to credit card related services is humorous and quirky and does not detract from the distinctiveness of the marks.

The component ‘LIFE’ of the contested sign will be perceived as the period between birth and death, or the experience or state of being alive, but also as the amount of time that something exists or works or that something can be used (information extracted from Cambridge Dictionary on 16/10/2019 at https://dictionary.cambridge.org/dictionary/english/life). Bearing in mind that the relevant services in Class 36 are related to personal finance, financial planning and information related thereto, it is considered that this word alludes to the subject matter of the services at issue, and therefore it is of lower distinctiveness for these services. The public understands the meaning of this word and will not pay as much attention to it as to the other, more distinctive, word at the beginning of the sign. It follows that, within the contested sign, the word ‘MINT’ is the most distinctive component.

In this regard, the Opposition Division notes the applicant’s claim, submitted in its observations in reply of 06/12/2017, that ‘[o]ut of all of the above definitions of MINT, the only one which makes conceptual or grammatical sense in combination with LIFE is to use MINT in the adjectival form, essentially connoting a very good period between birth and death of a human being’. The applicant further claims that ‘to the extent that MINTLIFE, being an inventive word, would be endowed with any kind of conceptual meaning by the relevant consumer, it is submitted that this meaning is completely dissimilar to the one which is held by the Opponent’s MINT marks’. The Opposition Division considers that, where the two words of which the contested sign is composed could form independent semantic units, the potential meanings of each of the units would be too many and too varied to be reduced to a single concept which totally differs from the concept conveyed by the earlier single-word marks. This would involve too many mental steps for the relevant public, which is also composed of general users of credit card related services.

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the most distinctive word (and its sound) ‘MINT’, which is the sole word element of the earlier marks and is fully reproduced at the beginning of the contested sign. The signs differ in the additional component (and its sound) ‘LIFE’ of the contested sign, which is considered to be of lower distinctiveness in relation to the services at issue.

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

Conceptually, the coinciding element ‘MINT’ will be associated with the meanings explained above. As the additional element ‘LIFE’ will be perceived as being of lower distinctiveness for the services at issue, the signs are conceptually similar to at least an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no directly applicable meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

In the present case, the contested services have been found to be partially identical, partially similar and partially dissimilar to the opponent’s goods and services. The identical or similar services target both the general and the professional public, whose degree of attention will be higher than average.

Bearing in mind the complete incorporation of the earlier marks in the contested sign’s initial part, which is the one on which consumers focus the most, as well as the fact that the differing word ‘LIFE’ is of lower distinctiveness than the word ‘MINT’ and occupies a secondary position, the signs have been found to be visually, aurally and conceptually similar to at least an average degree.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods and services covered are from the same undertaking or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In the present case, the consumers may easily conclude that the services labelled and offered under the contested sign come from the same undertaking as the earlier marks or from an undertaking that is economically linked; the consumers, even when displaying a higher than average degree of attention, may see the contested sign, to which the word ‘LIFE’ has simply been added after the word constituting the earlier marks, ‘MINT’, as being a variant or a sub-brand of the earlier marks.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public (in relation to the EU earlier ‘MINT’ mark) and therefore the opposition is partly well founded on the basis of the opponent’s EU earlier ‘MINT’ mark and UK earlier registered mark. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union (in relation to the EU earlier ‘MINT’ mark) is sufficient to reject the contested application.

Therefore, the opposition is upheld insofar as it is directed against the identical and similar services.

The rest of the contested services are dissimilar. As the similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent and in relation to identical and similar services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar services, as the similarity of services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on European Union trade mark No 5 317 102 for the word mark ‘MINT MOBILE’ for the goods and services in the classes listed above. Since, further to the examination of proof of use of this earlier mark, the goods for which genuine use has been proved cover a narrower scope than the other earlier marks considered above, 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.

REPUTATION — ARTICLE 8(5) EUTMR

According to the opponent, the earlier UK trade mark registration No 2 360 715 G and EU trade mark registration No 3 899 333, both for the word mark ‘MINT’, have a reputation in the United Kingdom and the European Union, respectively.

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 will 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 abovementioned 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.

a) Reputation of the earlier trade mark

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 14/01/2016. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom and in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely for all the goods and services covered by the specification of UK trade mark registration No 2 360 715 G and for the goods and services covered by the specification of EUTM trade mark registration No 3 899 333, both listed in full in the notice of opposition.

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 mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 18/11/2016, the opponent submitted the evidence to support its claim of reputation. On 25/07/2017, the opponent submitted evidence of use. All annexes but two (SW12 and SW16) are the same as the ones submitted within the substantiation deadline, and have already been listed above under the section ‘PROOF OF USE’. As the only additional annexes will not change the outcome of the assessment on reputation but will help render a decision on substance taking into consideration the file in its entirety, they will be taken into account as belated evidence, also considering that the applicant has had a chance to comment on it (at paragraphs 29-31 and 34-35 of its 06/12/2017 observations).

The evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation. The evidence does not include any direct indications regarding the public’s awareness of the earlier marks (e.g. surveys or opinion polls).

The only evidence that directly refers to public recognition is the article (SW16) showing the customer service score for UK credit card companies in 2011, where the credit card provider ‘MINT’ received 39 votes. This is not sufficient to prove that the earlier marks are reputed.

Moreover, the statements on the promotional expenses and on the actual users of the ‘MINT’ cards have not been corroborated by conclusive data and/or by an independent source. The evidence shows that the trade marks appeared continuously in nationwide newspapers from 2006 to 2009 (SW2-4). That means that the UK public had constant exposure to the opponent’s trade marks over a four-year period. However, this evidence is outdated, as the relevant date is in 2016. Therefore, since the elapsed period between the latest significant evidence of use and the filing of the EUTM application is quite significant, the relevance of this evidence is diminished.

Therefore, the Opposition Division finds that the evidence submitted does not provide sufficient information on the degree of recognition of the earlier trade marks by the relevant public.

The assessment of reputation requires, inter alia, the data on the degree of the brand’s recognition, which has not been submitted. The evidence listed above, in line with the findings of the Board of Appeal concerning the same earlier rights above, proves that they have been genuinely used in the UK; however, this is not sufficient to pass the (different) knowledge threshold of acquired reputation in the UK (23/03/2018, R 864/2017-5, MINT / MINT MOBILE et al. § 83).

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition based on this ground must be rejected.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opposition is also based on the non-registered trade mark ‘MINT’ used in the course of trade in 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 will 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.

With respect to this ground, the Opposition Division refers to the Board of Appeal decision R 864/2017-5 of 23/03/2018, which relates to the same parties, similar marks, partly overlapping contested services and the same set of evidence. The Opposition Division notes that, to some extent, R 540/2017-5 of 23/03/2018 is also relevant in relation to this ground.

Since there are no changes of circumstances or new arguments or evidence in relation to Article 8(4) EUTMR, the Opposition Division refers to the analysis and findings of the Board of Appeal starting at paragraph 32 (R 864/2017-5 of 23/03/2018). In particular, at paragraph 43 it was found that ‘the sign has been used in the course of trade to an extent that is of more than mere local significance’, in relation to financial services associated with credit card use.

The examination therefore continues in relation to the non-registered trade mark under the laws of the United Kingdom.

Passing off

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods and services claimed under its mark.

At paragraph 59 of the abovementioned Board of Appeal decision (R 864/2017-5 of 23/03/2018), it was found that ‘[t]he goodwill in the “MINT” brand used for financial services associated with credit card use is owned by the opponent… who successfully demonstrated that it has a protectable goodwill under the Member State law, it being the UK.’

It is noted that in this matter that the signs at issue are similar, as the earlier ‘MINT’ mark is fully incorporated in the mark applied for ‘MINTLIFE’ (23/03/2018, R 540/2017-5, MINTLIFE / MINT et al., paragraph 62).

With respect to misrepresentation, the contested trade mark must be likely to lead the public to believe that services to be offered by the applicant are the opponent's services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s services in the belief that they are the opponent’s.

The public is unlikely to be misled where the contested services are dissimilar to those upon which the opponent’s goodwill has been built. Therefore, the contested services must be compared with the services for which the opponent has shown that it has acquired goodwill through use.

In this regard, the abovementioned decision of the Board of Appeal found that:

[p]art of the contested services in Class 35 can be associated with financial services normally offered by banks managing credit cards of their private or business consumers.

The financial services associated with credit cards offered primarily to the general and professional consumers would include: ‘commercial information and advice for consumers; compilation of statistics; providing information, news, opinions and advice in the fields of accounting, tax preparation and planning, personal budgeting, household budgeting and consumer spending, including via computer and communication networks, the internet, social media and software applications; providing economic forecasting and analysis, and market analysis, including through computer or communication networks, the internet, social media and software applications’. These contested services are of the kind that the public would reasonably assume a financial institution or a credit card issuer would provide, furthermore, the Board notes that the contested services are indispensable in provision of the earlier right’s credit card and bank card services (judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). Moreover, the services in conflict share the same nature, being financial services, and are provided by the same entities, typically banks or other financial institutions and may be aimed at the same customers.

(23/03/2018, R 864/2017-5, MINT / MINT MOBILE et al., paragraphs 66-67).

The abovementioned reasoning applies by analogy to the contested economic forecasting and also to business management; business management advice and assistance; business research which were not at issue in the Board of Appeal case. In general terms, business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. The providers of such services gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Therefore, these services are reasonably similar to the opponent’s services.

In relation to the remaining contested services in Class 35, the Opposition Division refers to the abovementioned decision of the Board of Appeal that found that:

[h]owever, the remaining services applied for in Class 35 depart sufficiently from the field of activity of the opponent, that the risk of misrepresentation is excluded. In particular ‘office functions’ are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the operation of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information in computer databases, invoicing, and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. The ‘data search in computer files for others’ are specific IT services offered to other business. The purpose of the contested ‘news clipping services’ is to provide an enterprise with information concerning its public image. Finally, ‘providing comparison of shopping services, including through computer and communication networks, the internet, social media and software applications and providing commercial information on, and comparisons of, the products and services of others, including through computer and communication networks, the internet, social media and software applications’ are services usually offered on-line which shoppers use to filter and compare products and services based on price, features, reviews and other criteria. Banks do not offer any of those services; hence the risk of misrepresentation is excluded.

(23/03/2018, R 864/2017-5, MINT / MINT MOBILE et al., paragraph 69).

The Opposition Division finds that the contested business administration, accounting; book-keeping; administrative accounting; company and business information and administrative assistance; price comparison services; compilation of information into computer databases in Class 35 are significantly different from the opponent’s services. Business administration in general terms comprise services that are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, since these enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

The abovementioned reasoning applies by analogy to the remaining contested advertising; dissemination of advertising matter; promoting the goods and services of others through computer and communication networks, the internet, social media and software applications in Class 35, since, in general terms, 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 the client’s position in the market and enabling them to acquire a competitive advantage through publicity. These services are provided by advertising companies. The mere fact that financial services are advertised is not sufficient to establish misrepresentation.

A similar reasoning is applicable to the remaining contested services in Class 36, namely real estate affairs (none of the foregoing services related to insurance brokerage services and investment brokerage services), which were found to be dissimilar under Article 8(1)(b) EUTMR. Misrepresentation can also be safely excluded, since, as explained in the analysis of likelihood of confusion above, consumers clearly distinguish real estate agents’ services from those of financial institutions. They do not expect a bank to find housing or a real estate agent to manage their finances.

In relation to the third criterion to be satisfied under passing off, i.e. damage, the Opposition Division, in line with the findings in the Board of Appeal decisions 23/03/2018, R 864/2017-5 (paragraphs 77 and 78) and 23/03/2018, R 540/2017-5 (paragraphs 69-70), considers that, given the similar nature of the mark applied for to the opponent’s earlier mark, and the closeness of the part of the applicant’s activities, there is confusion about the economic connection; there is a clear potential to damage the opponent’s goodwill for financial probity with respect to part of the services found similar to the opponent’s business activities. The Opposition Division endorses the opponent’s claim that in order to offer a credit, a company must be licensed to and subject to considerable regulation, whereas the types of financial services offered by the applicant are not subject to a license. It is for this very reason that the opponent is concerned that, irrespective of any likelihood of confusion, unregulated use of ‘MINTLIFE’ by the applicant for its finance-related services would cause damage to the goodwill of its earlier ‘MINT’ mark. In addition, the applicant stands to benefit from associating itself with the opponent’s goodwill for credit card services. The applicant’s services would enjoy an increased credibility and appeal in the eyes of the relevant public due to the goodwill enjoyed by the opponent in the similar mark.

Therefore, the opposition is successful insofar as it is based on Article 8(4) EUTMR for the following contested services:

Class 35: Business management; business management advice and assistance; commercial information and advice for consumers; business research; compilation of statistics; economic forecasting; providing information, news, opinions and advice in the fields of accounting, tax preparation and planning, personal budgeting, household budgeting and consumer spending, including via computer and communication networks, the internet, social media and software applications; providing economic forecasting and analysis, and market analysis, including through computer or communication networks, the internet, social media and software applications.

Since the rest of the contested services are sufficiently different from the field of activity of the opponent, the risk of misrepresentation is excluded. As one of the conditions of Article 8(4) EUTMR is not fulfilled, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Valeria ANCHINI

Keeva DOHERTY

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.