OPPOSITION No B 2 914 581

Banco BPI, S.A., Rua Tenente Valadim, 284, 4100-476 Porto, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados - Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisboa, Portugal (professional representative)

a g a i n s t

Kino Polska TV S.A., Puławska 61, 02-595 Warszawa, Poland (applicant), represented by Chmura & Wspólnicy, ul. J.P. Woronicza 31/142, 02-640 Warszawa, Poland (professional representative).

On 14/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 914 581 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 151 004 , namely against some of the services in Class 38 and all services in Classes 35 and 36. The opposition is based on Portuguese trade mark registration No 372 297  . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The services

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

Class 36: Credit card services.

The contested services, following applicant’s limitation received on 07/11/2017, are the following:

Class 35: Advertising using all verbal, audio, audiovisual, televisual and multimedia methods and via the internet, management, managerial services involving the administration and management of television and film production, marketing, production of advertising broadcasts and films, market research, management of information centres involving the collection, processing and sharing of commercial information relating to goods, services and events (commercial information agencies), organisation of exhibitions, trade fairs and competitions for commercial or advertising purposes, business brokerage, sales promotion.

Class 38: Digital transmission, telecommunications networks and satellite transmission, leasing and rental of decoders and receivers of encoded and encrypted programmes.

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 Classes 35 and 38

The opponent’s credit card services in Class 36 belong to financial sector and as such they have no direct points of contact with the contested services in Classes 35 and 38 which are advertising, marketing, business management related (Class 35) and telecommunication related services (Class 38). These services clearly belong to different sectors and as such they differ in nature, purpose and method of use. They are neither in competition nor complementary. They also target different public and are offered through different distribution channels.

The opponent argues that the consumers are used to seeing the same trade marks on credit card services and apparatus destined for credit cards and therefore there is similarity between the services in Class 38 and the opponent’s services. The Opposition Division, however, does not find these services similar as credit card services target general public and are provided by financial institutions whereas the apparatus and technology used for their operation is offered by telecommunication companies to these institutions. Their commercial origins, distribution channels and targeted public do not usually overlap.

All the contested services in Classes 35 and 38 are considered dissimilar to the opponent’s credit card services in Class 36.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anna BAKALARZ

Katarzyna ZANIECKA

Justyna GBYL

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.