OPPOSITION No B 2 988 429

Banco Comercial Português, S.A., Praça D. João I, 28, 4000-295, Porto, Portugal (opponent), represented by Gastão Da Cunha Ferreira, LDA., Rua dos Bacalhoeiros, nº. 4, 1100-070, Lisboa, Portugal (professional representative)

a g a i n s t

Shenzhen M-Horse Technology CO. LTD, F3 F5, building 37, YinTian Ind. Park YanTian Community, XiXiang St, BaoAn Dist, Shenzhen, People's Republic of China (applicant), represented by Arpe Patentes y Marcas, S.L., C/ Proción, 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 31/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 988 429 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods of European Union trade mark application No 16 936 511 . The opposition is based on Portuguese trade mark registrations No 454 191 and No 473 563 , for which the opponent invoked Article 8(1)(a) and (b) EUTMR, and Portuguese registration No 400 347 ‘Millennim BCP’, in respect of which the opponent invoked Article 8(5) 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 473 563 .

1. The goods and services

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

Class 9: Magnetic credit and debit cards and magnetic cards for bank operations; scientific, nautical, geographical, photographic, cinematographic, optical, weighing, measuring, signaling, control (inspection), safety and education instruments; apparatus for registration, transmission, reproduction of the sound or images.

Class 16: Publications, brochures, prospects, paperworks used in banking and commerce operations, calendars and agendas, paper, cardboard and products thereof, not included in other classes; printing products; credit cards without magnetic; printed unified cards for use in banking transactions, magazines, periodic publications.

Class 36: Insurance and financial services including those provided through the internet or other telecommunication mean.

Class 38: Telecommunication services and electronic transmission related to the financial area.

The contested goods are the following:

Class 9: Portable telephones; Navigational instruments; Peripheral devices (Computer-); Measuring instruments; Cabinets for loudspeakers; Cameras [photography]; Electric batteries; Electric converters; Mobile phones; Computers; Word processors; Scanners [data processing equipment]; Aerials; Global Positioning System [GPS] apparatus; Mobile phone straps; Personal stereos; Sound reproduction apparatus; Audiovisual teaching apparatus; Wires (Telephone-); Sound alarms; Chargers for batteries; Cases for mobile phones; Dust covers for computers; electronic chip cards; mobile phone covers.

Some of the contested goods are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 goods assumed to be identical are directed at the public at large with an average degree of attention.

3. The signs

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).

The earlier mark is a figurative sign consisting of a slightly stylised white upper typeface letter ‘M’ set against a dark pink square with rounded corners.

The verbal element of the earlier mark ‘M’ will be understood as such by the relevant public. Single letters or single numbers are not devoid of any distinctive character (09/09/2010, C‑265/09 P, α, EU:C:2010:508; 09/07/2008, T‑302/06, E, EU:T:2008:267). However, the distinctive character of single-letter trade marks may generally be more difficult to establish (05/11/2011, T‑378/12, X, EU:T:2013:574, § 43). In the present case, being an individual letter ‘M’, the earlier mark has only a low degree of inherent distinctive character, and the letters will normally be seen in conjunction with further elements such as their figurative features.

The figurative element in the earlier mark of a dark pink background is of a purely decorative nature and therefore, has a less distinctive character than its verbal element. Therefore, the verbal element is more distinctive than the figurative element.

The contested sign is also a figurative sign consisting of the phrase ‘M-NET’ depicted in fairly standard black bold upper case letters without any adornment. Both elements are separated by a hyphen.

As for the verbal element ‘M’ of the contested sign, the considerations above regarding the earlier mark are equally valid.

The element ‘NET’ of the contested sign is a very basic English word, which will be understood by the relevant public. In connection with the relevant goods, relating to IT, telecommunications and audio-visual devices, will be associated with ‘a communications or broadcasting network’ (information extracted from Oxford English Dictionary online on 29/08/2018 at http://english.oxforddictionaries.com) and therefore, is non-distinctive.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in that they represent a capital letter ‘M’, fairly stylised in the earlier mark. However, they differ in the colour applied to the letters and in the additional word element ‘-NET’ of the contested sign which has no counterpart in the earlier mark.

Taking into account the fact that the earlier mark is composed of one letter only, it is considered that the differences between the signs introduced by these additional letters ‘-NET’ of the contested sign will not go unnoticed by the relevant consumers when they perceive the marks visually, even if the word is non distinctive. Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‛M’, present identically in both signs. The pronunciation differs in the sound of the letters ‛NET’ of the contested sign, which have no counterparts in the earlier mark.

Taking into account the non-distinctive character of the element ‘NET’ in the contested sign, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs contain a letter ‘M’, the signs are conceptually similar to 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.

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.

According to the opponent, the earlier trade mark has a reputation in Portugal in connection with part of the goods and services for which it is registered, namely financial services.

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

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• An article titled ‘Life inspires us’, from the web page Millenniumbcp.pt on the trade mark ‘Millennium BCP’ (figurative), and mentioning that the opponent is the largest Portuguese financial institution and an international superbrand. The document is undated but includes a reference to the years 2002-2006.

• A screenshot from the web page Millenniumbcp.pt on the internationalisation of the group at 31/12/2014.

• A screenshot from the web page Millenniumbcp.pt on the press release of 28/06/2011 communicating the award of ‘Best Bank in Portugal’ given to the opponent by an international financial magazine.

• A screenshot from the web page Forbes.com describing the opponent as international commercial bank operating in retail banking, corporate and investment banking, private banking and asset management and foreign activity.

• A list from a publication ‘The banker’ of February 2015 including the opponent in Nº 335 in 2015 among the ‘top 500 banking brands’.

• A press release of 03/03/2015 from the opponent informing of its positioning by the prestigious US magazine The Banker.

• The annual report on the world’s most valuable banking brands of February 2015, published by ‘Brand Finance’ (world’s leading independent brand valuation and strategy consultancy).

• Three press clips with publicity of the trade mark ‘Millenium BCP’ (figurative) from various sources: i) web journal www.expresso.pt (undated), ii) unknown of 28/03/2009 and iii) ‘Negocios’ of 03/10/2005.

• A screenshot from the web page economico.sapo.pt with an untranslated information of 17/04/2013.

• A screenshot from the web page Millenniumbcp.pt on the history of the brand since 1985 to 2007.

• An agenda of an event on 12 March, but with no reference to the year.

• A screenshot of 17/04/2016 from the web page e-cultura.sapo.pt. In Portuguese, untranslated.

• A screenshot of 17/04/2016 from the web page Millenniumbcp.pt with reference to 2015. In Portuguese, untranslated.

• A screenshot of 22/04/2016 from the web page marketer.pt with reference to 2010. In Portuguese, untranslated.

• A screenshot of 17/04/2016 from the web page portaldosprogramas. No date reference. In Portuguese, untranslated.

• A press release of 28/07/2015 from the opponent informing of the award of the Medal of Cultural Merit.

• A promotional booklet from the opponent on its brands in Portugal in 2014.

• A screenshot from the web page melosepublicidade.pt on superbrands in 2008 and 2009. In Portuguese, untranslated.

• A screenshot of 15/07/2015 from the web page tvi.iol.pt with reference to 2014. In Portuguese, untranslated.

• A screenshot of 14/08/2015 from the web page worldfinance.com with information on the opponent’s activity in the insurance market in 2011.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high or higher degree of distinctiveness through its use.

The evidence submitted consists of documents that related almost exclusively to a mark ‘Millennium BCP’ in a figurative form or to the company of the opponent. Only in some occasions the evidence shows the earlier mark .

Enhanced distinctiveness requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

Despite showing some use of the trade mark , contrary to the opponent’s assertions, there is no clear evidence that the earlier mark has acquired reputation in Portugal.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

5. Global assessment, other arguments and conclusion

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).

The goods are assumed to be identical and target the public at large which will have an average degree of attention.

The signs under comparison are visually similar to a low degree, and aurally and conceptually similar to an average degree. Both signs begin similarly with a single letter ‘M’ but, the signs differ in their lengths, constituent elements and structure.

Stylised single-letter marks depicting the same letter will be confused when the stylisation coincides in characteristic elements, which is not the case in the present situation.

The similarities between the signs are limited to the fact that both include a representation of a letter ‘M’. Considering this, the way the letter ‘M’ appears in each sign is determinant. The letter ‘M’ is depicted in a different manner in the two signs because in the earlier trademark, the strokes have equal thinness, with slightly inclined outer one and with an elongation at the upper left stroke, whereas, in the ‘M’ in the contested sign there are two thin strokes and two thick ones, they are straight and the outer ones lie on two horizontal small strokes. Therefore, the letter ‘M’ is depicted in a different manner in the two signs, and — in spite of assumed identity of the goods— this is not sufficient to find a likelihood of confusion.

When considered as a whole, the differences stated above are sufficient to counteract the similarities between the signs, which result from not particularly distinctive elements.

Furthermore, the earlier mark has a lower than normal degree of distinctiveness.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the Portuguese trade mark registration No 454 191 .

This other earlier right invoked by the opponent is less similar to the contested mark because, even if it ends with ‘net‘, which is not distinctive, it contains the word ‘Millennium’ and not the single letter ‘M’ as in the other earlier right. Therefore, the outcome cannot be different.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

The opposition will now be examined on the ground of Article 8(5) EUTMR in respect of Portuguese registration No 400 347 ‘Millennim BCP’.

REPUTATION — ARTICLE 8(5) EUTMR

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 for 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: 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.

1. The signs

Millennim BCP
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).

The earlier mark is the phrase ‘Millennim BCP’. Neither of the verbal elements has any meaning for the relevant public and both are, therefore, distinctive.

The contested sign is a figurative sign consisting of the phrase ‘M-NET’ depicted in standard black bold upper case letters without any adornment.

As stated in section c) above, the verbal element ‘M-’ of the contested sign has only a low degree of inherent distinctive character.

The element ‘NET’ of the contested sign is a very basic English word, which will be understood by the relevant public and it will be associated with ‘a communications or broadcasting network’ (information extracted from Oxford English Dictionary online on 29/08/2018 at http://english.oxforddictionaries.com). Bearing in mind that the relevant services are insurance, financial and monetary affairs that can be provided through a telematics network, this element is non distinctive for these services.

Visually, the signs coincide in the fact that they both start with the letter ‘M’ and in the inclusion of the letters ‘N’ and ‘E’ in different positions. They differ in the rest of their letters and in the slight stylisation of the contested sign. Their structure is different because the earlier mark is composed of a first long word ‘Millennim’ and a three-letter acronym ‘BCP’, while the contested sign is composed of a single letter ‘M’, a hyphen and a three-letters word.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

As the signs only share two individual letters, it is concluded that the signs are not visually similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛M’, ‘E’ and ‘N’, included in both signs, but as these letters are standing alone or in different combinations with other letters, the sound they produce is different in each sign. Furthermore the pronunciation of the earlier mark is much longer than in the contested sign due to its higher number of letters and syllables.

As the signs do not aurally coincide in any syllable, it is concluded that the signs are not aurally similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘NET’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs only coincide in irrelevant aspects, it is concluded that they are dissimilar.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

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

Jessica LEWIS

Loreto URRACA LUQUE

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.