OPPOSITION No B 2 899 873

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 Lisbon, Portugal (professional representative)

a g a i n s t

Amazon Europe Core S.à.r.l., 5 Rue Plaetis, 2338 Luxembourg, Luxembourg (applicant), represented by Cooley (UK) LLP, Dashwood 69 Old Broad Street, EC2M 1QS, London, United Kingdom (professional representative).

On 13/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 899 873 is partially upheld, namely for the following contested services:

Class 35: Advertising; advertising and marketing services, namely, promoting the goods and services of others.

2. European Union trade mark application No 16 331 514 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the services of European Union trade mark application No 16 331 514 for the word mark ‘APPY FAMILIES’, namely against all the services in Class 35. The opposition is based on, inter alia, Portuguese trade mark registrations No 524 863 for the word mark ‘APPY PAY’ and No 526 005 for the word mark ‘APPY DAY’. 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.

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 Portuguese trade mark registration No 524 863.

1. The services

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

Class 35: Advertising; business management; business administration; office functions.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; securities affairs.

The contested services are the following:

Class 35: Advertising; advertising and marketing services, namely, promoting the goods and services of others; retail store services featuring computer software provided via the internet and other computer and electronic communication networks; retail store services featuring computer software for use on computers, handheld mobile digital electronic devices other portable consumer electronic devices; retail store services featuring computer and entertainment products; retail store services featuring electronic products, namely, electronic book readers, audio and video players, electronic personal organizers, personal digital assistants, digital audio players, digital video players, DVD players, handheld media players, MP3 players, MP4 players, portable media players, video players, wireless remote controls for portable and handheld electronic devices, portable and handheld electronic devices for video games, mobile phones, smart phones and tablet devices; retail store and online store services featuring computer and entertainment products provided via the Internet and other computer, electronic and communications networks; retail store and online store services featuring electronic products, namely, electronic book readers, audio and video players, electronic personal organizers, personal digital assistants, digital audio players, digital video players, DVD players, handheld media players, MP3 players, MP4 players, portable media players and video players provided via the Internet and other computer, electronic and communications networks; retail store and online store services featuring electronic products, namely, wireless remote controls for portable and handheld electronic devices, portable and handheld electronic devices for video games, mobile phones, smart phones and tablet devices provided via the Internet and other computer, electronic and communications networks.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Advertising is identically contained in both lists of services.

The contested advertising and marketing services, namely, promoting the goods and services of others are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The rest of the contested services, namely retail store services featuring computer software provided via the internet and other computer and electronic communication networks; retail store services featuring computer software for use on computers, handheld mobile digital electronic devices other portable consumer electronic devices; retail store services featuring computer and entertainment products; retail store services featuring electronic products, namely, electronic book readers, audio and video players, electronic personal organizers, personal digital assistants, digital audio players, digital video players, DVD players, handheld media players, MP3 players, MP4 players, portable media players, video players, wireless remote controls for portable and handheld electronic devices, portable and handheld electronic devices for video games, mobile phones, smart phones and tablet devices; retail store and online store services featuring computer and entertainment products provided via the Internet and other computer, electronic and communications networks; retail store and online store services featuring electronic products, namely, electronic book readers, audio and video players, electronic personal organizers, personal digital assistants, digital audio players, digital video players, DVD players, handheld media players, MP3 players, MP4 players, portable media players and video players provided via the Internet and other computer, electronic and communications networks; retail store and online store services featuring electronic products, namely, wireless remote controls for portable and handheld electronic devices, portable and handheld electronic devices for video games, mobile phones, smart phones and tablet devices provided via the Internet and other computer, electronic and communications networks are dissimilar to all the opponent’s services. They have a different nature and purpose, as well as different providers, distribution channels and end users.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention is expected to be higher than average owing to the specialised nature of the services in question and their price.

3. The signs

APPY PAY	APPY FAMILIES
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

Both signs are word marks, ‘APPY PAY’ and ‘APPY FAMILIES’. For the relevant Portuguese-speaking public the coinciding verbal element ‘APPY’ is meaningless. It has, therefore, an average degree of distinctiveness.

The verbal element ‘PAY’ of the earlier sign is an English word meaning ‘the action or fact of paying for something’ (information extracted from Oxford Dictionary). In Portuguese this verbal element has no meaning. Nevertheless, insofar as the relevant public comprises business customers with specific knowledge and expertise, it is likely that a significant part of the relevant public will be acquainted with the meaning shown above of this English word. Furthermore, the Court has also stated that the knowledge of English, admittedly to varying degrees, is relatively widespread in Portugal and that, although it cannot be claimed that the majority of the Portuguese public speaks English fluently, it may, however, reasonably be presumed that a significant part of that public has, at the very least, a basic knowledge of that language (decision of 16/01/2014, T-528/11, Forever, EU:T:2014:10, § 68).

In the light of the aforesaid and for reasons of procedural economy the Opposition Division finds it appropriate to focus in the further assessment of likelihood of confusion on the part of the relevant public that knows the meaning of the English word ‘PAY’.

Insofar as the services in question can relate to the marketing and promotion of payment services (see by analogy decision of 27/01/2017, R 1911/2016-2, epayments (fig.), § 58), the word ‘PAY’ is weak because it alludes to possible characteristics of the services in question. It will, therefore, have less impact on the relevant public than the other distinctive element ‘APPY’ of the earlier sign.

The verbal element ‘FAMILIES’ of the contested sign is also an English word and the plural form of ‘a group consisting of two parents and their children living together as a unit’ (information extracted from Oxford Dictionary). It will be understood by the relevant public due to the high similarity of this word to the Portuguese word with the same meaning which is ‘famílias’. The word ‘FAMILIES’ has a low degree of distinctiveness as it characterizes the target customers of the services at hand, namely families (decision of 18/03/2014, R 1966/2013-1, FamilyMart (fig.), § 21).

Visually, the signs coincide in the verbal element ‘APPY’, contained identically in both signs. However, they differ in the additional verbal elements ‘PAY’ and ‘FAMILIES’, respectively of the earlier and the contested sign which have no counterparts in the other sign and also have, for the reasons set out above, a limited impact on the relevant public.

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.

Therefore, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛A‑PY’, present identically in both signs. The pronunciation differs, however, in the syllables ‘PAY’ of the earlier sign and ‘FA-MI-LI-ES’ of the contested sign which form words with a limited impact on the relevant public as shown above.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually not similar because they bear different concepts through the words ‘PAY’ and ‘FAMILIES’, contained respectively in the earlier and the contested sign, whereas the coinciding verbal element ‘APPY’ is meaningless.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade mark enjoyed an inherent enhanced degree of distinctiveness as the word ‘APPY’ was wordplay between ‘happy’ and ‘app’.

Any higher degree of distinctiveness acquired by the earlier mark, which would broaden its scope of protection, has to be proven by its proprietor by submitting appropriate evidence. A mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (decision of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

In the present case the opponent did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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/services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the services were found partly identical and partly dissimilar. The signs are visually and aurally similar to an above average degree and conceptually not similar. The earlier sign is normally distinctive and the degree of attention of the relevant public will be higher than average.

The coinciding verbal element ‘APPY’ is placed at the beginning of the signs where it first catches the attention of the public. The following verbal elements ‘PAY’ and ‘FAMILIES’ are weak for the reasons set out above in part c) of this decision. Having a limited impact on the relevant public these elements are not able to counteract the similarities between the signs arising from the more distinctive verbal element ‘APPY’ which both signs have in common.

On account of the identity of the services in question and the visual and aural similarities to an above average degree of the signs at issue the relevant public is likely to believe that the services designated by the conflicting signs originate from the same undertaking or from economically-linked undertakings, despite the higher than average degree of attention that the targeted consumers are likely to pay in the purchase of these services.

The Opposition Division notes, that it is a common practice for providers of services to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image. On account of the weak verbal elements following the more distinctive and coinciding verbal element ‘APPY’, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant argues in its observations that the commercial reality needed to be taken in account in the assessment of likelihood of confusion and that in the present case the conflicting services were provided in separate areas through different channels of trade. Consumers would never, for instance, visit the applicant’s website with the expectation of finding the opponent’s products and vice versa.

The Opposition Division concurs with the assertion of the applicant that the commercial reality needs to be taken into consideration and that likelihood of confusion is not an abstract term but it needs to reflect, instead, the actual perception of the relevant public of the signs in question. However, it should also be pointed out that for the purpose of these proceedings, it is irrelevant what services both parties actually provide or to what kind of customers they actually sell. The services have to be compared as they appear on the register and as they are applied for before the Office (see, for example, 11/11/2010, R 1327/2010, MONELLA VAGABONDA VIP (fig.) / VAGABOND et al., §25). This principle does not ignore the commercial reality but it, nevertheless, guarantees objectivity of the proceedings and a compliance with the rules laid down in Article 8(1)(b) EUTMR, namely a finding based on the comparison of the signs and of the goods and services in question as they have been registered or applied for.

The applicant also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous decisions referred to by the applicant are not relevant to the present proceedings.

In case R 77/2003-2 the conflicting signs consist, unlike in the present case, of a single word and the goods and services are clearly more different than the ones at issue.

In opposition decision B 2 190 794 one of the marks is a word mark consisting of a single word and the other sign is a figurative mark. In the present case both signs are word marks consisting of two elements and they coincide in one of them. Also the goods in the case referred to by the applicant are clearly more different than the services in the present case.

The applicant also refers to previous Office decisions where the conflicting signs are word marks consisting of two verbal elements as it is in the present case. However, in case B 1 016 015 the signs coincide in an element which has been found weak, whereas the coinciding element in the present case is of normal distinctiveness.

In case B 307 639 the coinciding verbal element ‘CANNON’ has various meanings and the earlier mark as a whole conveys a specific meaning which is well known by the relevant public and clearly distinguishable from the meaning of the contested sign. In the present case both signs as a whole have no meaning.

In case B 1 089 251 it has been established that the coinciding verbal element has a meaning for a part of the public unlike in the present case.

Insofar as the earlier Portuguese trade mark registration No 524 863 leads just to a partial success of the opposition, the examination of likelihood of confusion will proceed on the grounds of the earlier Portuguese trade mark registration No 526 005 which covers the broadest scope of services.

6. The services

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

Class 35: Advertising; business management; business administration; office functions.

Class 36: Insurance; financial affairs; monetary affairs; securities affairs; real estate affairs.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; arranging and conducting of colloquiums, conferences and congresses; conducting of exhibitions for cultural or educational purposes.

Class 42: Scientific and technological services and research and design relating thereto; development of software applications for mobile devices.

The contested services found dissimilar to the services of the earlier Portuguese trade mark registration No 524 863, namely retail store services featuring computer software provided via the internet and other computer and electronic communication networks; retail store services featuring computer software for use on computers, handheld mobile digital electronic devices other portable consumer electronic devices; retail store services featuring computer and entertainment products; retail store services featuring electronic products, namely, electronic book readers, audio and video players, electronic personal organizers, personal digital assistants, digital audio players, digital video players, DVD players, handheld media players, MP3 players, MP4 players, portable media players, video players, wireless remote controls for portable and handheld electronic devices, portable and handheld electronic devices for video games, mobile phones, smart phones and tablet devices; retail store and online store services featuring computer and entertainment products provided via the Internet and other computer, electronic and communications networks; retail store and online store services featuring electronic products, namely, electronic book readers, audio and video players, electronic personal organizers, personal digital assistants, digital audio players, digital video players, DVD players, handheld media players, MP3 players, MP4 players, portable media players and video players provided via the Internet and other computer, electronic and communications networks; retail store and online store services featuring electronic products, namely, wireless remote controls for portable and handheld electronic devices, portable and handheld electronic devices for video games, mobile phones, smart phones and tablet devices provided via the Internet and other computer, electronic and communications networks are dissimilar also to all the above services covered by the earlier Portuguese trade mark registration No 526 005.

The opponent’s services in Classes 35, 36 and 41 have clearly a different nature and purpose from the contested retail services. Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale, whereas the opponent’s service relate to education, entertainment, advertising, business management, financial affairs etc. They also do not have the same providers, distribution channels or end users.

The contested retail services, despite relating to computer and electronic products and thus to technological products, are also not similar to the opponent’s services in Class 42. The opponent’s services in Class 42 are normally performed by scientists, who apply methodologies based on hypothesis, experimentation and learning, so that more knowledge in their field is acquired. This highly specific and technical kind of work does not have any commonalities with the sale or retail of the products designed by the technical experts. Therefore, there are no common features such as the nature, purpose, providers, distribution channels or end users between the contested services and the opponent’s services in Class 42. The dispute raised by the parties whether the services in question are complementary does not need to be duly analysed and resolved at this stage because even if they were complementary such single point of coincidence would still not lead to a similarity.

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

Portuguese trade mark registration No 524 862 for the word mark ‘BPI APPY PAY’ and Portuguese trade mark registration No 518 075 for the word mark ‘APPY DAY BPI’.

Since these marks cover the same or a narrower scope of services compared to the other earlier rights on the ground of which likelihood of confusion has been assessed, 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.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 524 863.

It follows from the above that the contested trade mark must be rejected for the services found identical to those of aforementioned earlier trade mark.

The rest of the contested services are dissimilar. As 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.

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

Swetlana BRAUN

Alexandra APOSTOLAKIS

Martin EBERL

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.