OPPOSITION No B 3 078 186

Novo Banco, S.A., Avenida da Liberdade, no. 195, 1250 Lisbon, Portugal (opponent), represented by Garrigues IP, Unipessoal Lda., Avenida da República, 25 - 1º, 1050-186 Lisboa, Portugal (professional representative)

a g a i n s t

Newcommerce Services Spółka z ograniczoną odpowiedzialnością, ul. Łopuszańska 38d, 02-232 Warszawa, Poland (applicant), represented by Chmura & Wspólnicy, ul. J.P. Woronicza 31/142, 02-640 Warszawa, Poland (professional representative).

On 23/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 186 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 253 519 for the word mark ‘bancovo’. The opposition is based on the following earlier rights:

 European Union trade mark registration No 13 228 796 for the word mark ‘NOVO BANCO’

 European Union trade mark registration No 13 293 022

 European Union trade mark registration No 14 302 459

 Portuguese trade mark registration No 534 187 for the word mark ‘NOVO BANCO’.

The opponent invoked Article 8(1)(b) EUTMR in relation to all the above rights and, in addition, Article 8(5) EUTMR in relation to the Portuguese earlier right.

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 European Union trade mark registration No 13 228 796 and Portuguese trade mark registration No 534 187, both for the word marks ‘NOVO BANCO’.

a) The goods and services

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

EUTM No 13 228 796

Class 35: Commercial information agencies; business analysis of markets; business management; business administration.

Class 36: Banking; finance services; banking and financing services; card services; credit and ATM card services; issuance of credit cards; bank card, credit card, debit card and electronic payment card services; credit card and payment card services; banking insurance; insurance brokerage; insurance underwriting services.

Class 38: Communication by electronic means; communication of information by electronic means; data communication by electronic means.

PT No 534 187

Class 9: Coded magnetic cards; magnetic cards pre-payed magnetic cards; cards with chip electronic; magnetic identification cards; portable computers [laptops]; portable computers [notebooks]; tablet computers; bag calculators; rats [computers]; radio appliances for vehicles; data processing apparatus; computers; computer printers; download computer games; computer software, including download software from the internet; mechanisms for applications determined by the introduction of sheets or coins; rules [measurement instruments].

Class 35: Commercial administration, in particular management of retail and thickness sale points; marketing; publicity; advice and information on businesses and trade, provided by phone or from a computer database, computer network, global computer network or the internet; management and administration of business projects.

Class 36: Financial services provided through the internet and by phone; commercial bank services; banking investment services in real estate; banking and financial services; online banking services; financial, investment and insurance services; payment card services.

Class 38: Communication and telecommunication services; communication services provided on the internet.

The contested services are the following:

Class 35: Advertising; commercial management; business administration; office functions; specialist consultancy and advice, assistance, organisation and management of business activities, enterprises and business and commercial projects, auditing, book-keeping and accounting, brokerage in the conclusion of commercial transactions, specialist commercial and business consultancy, commercial brokerage, import-export agencies and commercial information agencies; sales promotion (for others), arranging of auctions; business research, business investigations, business appraisals, efficiency experts; business relocation services, acquisition, drafting and release of business information; office functions; employment agencies, personnel recruitment, personnel management consultancy; organisation of exhibitions and trade fairs for business and promotional purposes; market research and opinion polling, economic forecasting and market analysis, cost-price analysis, statistical research and business appraisals; drawing up of statements of accounts, computerised management of files and datasets in computer systems, namely compilation of information into computer databases, systemisation, sorting and compilation of information into computer databases, computerised file management, data search in computer databases and files; advertising and promotion, public relations services, advertising by verbal, audio, audiovisual or multimedia means and via computer networks, direct mail advertising, dissemination of advertising matter, providing advertising space and advertising time, loyalty and promotional programme management (office functions); electronic and traditional archiving of documents; presentation of offers for financial and banking products, presentation of offers for financial and banking products on websites, presentation of offers for financial and banking products via a computer platform; price comparison relating to financial and banking offers; business management of internet platforms enabling the presentation and selection of offers for financial and banking services; provision of commercial information; business management of internet platforms enabling the presentation, comparison and selection of offers for financial or banking services by retail customers; the provision of information relating to the aforesaid services.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs, financial affairs, monetary affairs, brokerage, operation of securities deposit accounts, securities trading, investment in the capital, securities and real estate markets, purchase and sale of securities, stock exchange quotations; management of financial assets (client portfolio management), securities trading consultancy, including preparation of securities trading reports, analyses and studies ordered by clients, brokerage in the purchase of large blocks of shares as a tender offer, preparation of prospectuses, flotation of companies, performing the function of an issue sponsor, market maker and issuer, preparation of information memoranda; organising trading in securities of companies on the private market, activities relating to the issue and trading of securities, securities underwriting; securities brokerage, management of brokerage accounts, purchase and sale of securities for others; settlement of accounts relating to the holding, purchase or sale of securities, brokerage in the purchase of blocks of shares, brokerage houses, financial expertise and forecasting, financial analysis, financial consultancy, financial consultancy and advice, investment consultancy, trusteeship, trust management; investment of entrusted funds in one’s own name and in a pooled account of mutual fund participants, sale of mutual fund units, management of companies, investment funds and pension funds, operation of individual pension accounts, distribution of investment fund company units, providing and servicing of loans for the purchase of securities; management of entrusted monetary funds and other assets, risk management, setting up and managing of investment and trust funds; deposit and credit services, brokerage, clearing, leasing and factoring, services relating to entrusted capital, letters of credit and travellers’ cheques, management of bank accounts, acceptance of savings contributions and fixed-term deposits, granting and borrowing in the field of credit and loans, settlement of transactions, promissory note and cheque-related operations; execution of electronic transactions and transfers; receiving and making fixed-term deposits in national and foreign banks, receiving and issuing bank security bonds and guarantees, trade in foreign exchange, accepting valuables, documents and securities into deposit and providing safety- deposit boxes, arranging and participating in bank consortia, trade in receivables, performing specified banking operations on the instructions of other banks, performing trust-related activities, issuing and servicing payment cards, futures operations, insurance operations, insurance brokerage; moveable asset and real estate appraisal, financial management, banking relating to the liquidation of enterprises, real estate brokers, leasing of real estate; charitable fund raising; financial sponsorship; information about the aforesaid services; consultancy relating to all the services included in this class; providing of financial information, providing financial information via a web site, providing information relating to the offers of banks and financial services providers; compilation of financial and banking statistics.

Class 38: Telecommunications; news agencies, message sending, transmission of text, visual and audio and compiled information in the form of an electronic recording and providing communications for the transmission of the aforesaid information by computer terminals, fibreoptic networks, telephone, telegraphs, teleprinters, fax machines, radio, television and satellite apparatus, communication and transmission of text, audio and visual information by computer terminals and fibreoptic networks, providing telecommunications connections to the global computer network, rental of message-sending apparatus, electronic bulletin board services (telecommunications services), providing access to and services for electronic mail and mailboxes, internet transmission, internet portals, providing internet chatrooms, communications and information portal services; providing access to a portal with financial, economic, stock market, tax and legal information, and with commentaries and advice for investors, providing access to an internet platform for investing on the currency market, providing access to databases accessible via the internet; providing communications media for online customer support, information about the aforesaid services; teleconferencing services, facsimile transmission, rental of modems, rental of telecommunication equipment and message-sending apparatus, communications by telephone; providing online interactive bulletin boards in the banking and financial sector; information about the aforesaid services; providing access to an internet platform for the presentation and selection of offers for financial and banking services; providing access to an internet platform for the presentation, comparison and selection of offers for financial or banking services by retail customers.

Class 42: Providing an internet platform for the presentation and selection of offers for financial and banking services; hosting an internet platform for the presentation and selection of offers for financial and banking services; providing an internet platform for the presentation, comparison and selection of offers for financial or banking services by retail customers; providing of information relating to business sales; hosting an internet platform for the presentation, comparison and selection of offers for financial and banking services by retail customers; the provision of information relating to the aforesaid services.

Some of the contested services are identical or similar to the 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 services were identical to the goods and services of the earlier marks which, for the opponent, is the best light in which the opposition can be examined. Based on this assumption, the Opposition Division will not comment on the parties’ arguments about their core businesses and factual commercial activities on the respective markets.

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 goods and services assumed to be identical are directed at the public at large, as well as at business customers with specific professional knowledge or expertise, in particular businesses interested in financial services and in other professional support services of an administrative, management, marketing or clerical character.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased; in particular, it will be higher when applied in relation to most of the services in Classes 35 and 36.

By way of example, the financial services covered in Class 36 target, inter alia, the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such services 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

NOVO BANCO	bancovo
Earlier trade marks	Contested sign

The relevant territories are the European Union and 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 expression ‘NOVO BANCO’ is meaningful for Portuguese speakers, who form the relevant public for the earlier national mark and a part of the relevant public for the EU earlier mark. It will be immediately perceived as meaning ‘new bank’ and, when seen in relation to the services in Class 36, it is descriptive of their characteristics, and to that extent has a weak distinctive character (at best), as it merely provides information that the services in question are offered in a banking institution that recently opened. For the remaining goods and services, this expression may be also somewhat allusive and have a lower-than-average distinctiveness, in that its concept relates to the goods or services offered (e.g. some goods in Class 9 such as cards for financial transactions, services in Classes 35 and 38 related to administration of banking or communications provided by a bank), or it may have no relation at all and, accordingly, its distinctiveness is normal.

As far as the perception of the remaining part of the public is concerned, given the similar equivalents in other languages, and depending on the similarity between the services, the expression may be understood, entirely or partly, by consumers who speak other European Union languages, such as Spanish (banco nuevo), Italian (nuova banca), French (nouvelle banque), German (neue Bank), Dutch (nieuwe bank) and by some Slavic-speaking consumers, such as Polish (nowy bank), Croatian (nova banka), Slovenian and Slovak (nová/a banka), Bulgarian (нова банка). Likewise, depending on the public’s familiarity with the meaning/s conveyed, the signs may be perceived as descriptive in relation to some of the services in question, especially for Class 36, whereas they may remain rather allusive or even distinctive for the remaining services. Finally, for another part of the public the expression will be entirely meaningless, for example, the Estonian consumers (uus pank) and therefore the sign will have a normal degree of distinctiveness for all the services in question.

The element ‘bancovo’ constituting the contested sign is meaningless for the public throughout the European Union, including for the Portuguese speakers. In principle, when a sign is composed of one verbal element, the relevant consumers, when perceiving it, may 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). This finding is however not relevant in the present case as consumers are unlikely to split the sign into more elements. Indeed, the part of the sign ‘banco-’ may allude to the perception of a ‘bank’ for some consumers, in particular for the Portuguese and Spanish speakers, and therefore be somewhat weaker when seen in the context of the services in Class 36. However, this is less probable for consumers who do not tend to identify the word ‘banc/o’ as existing word/s in their languages. In any of the above scenarios, the sign as a whole has a normal degree of distinctiveness.

Visually and aurally, the signs share two common strings of letters, namely ‘banco’ and ‘vo’, where the second word ‘banco’ of the earlier marks is placed at the beginning of the contested sign and the syllable ‘vo’ is part of their first word or a conjoined part at the end of the contested sign. The signs differ in the additional letter sequence ‘no-’ at the beginning of the earlier marks with no counterpart in the contested sign. Moreover, the signs generally differ in their structures since the earlier marks consist of two words, whereas the contested sign is a one-word mark and the abovementioned verbal components are placed in different positions.

In any case, the Opposition Division notes that these visual coincidences will be perceived by consumers only upon detailed examination of the signs, whereas they will most likely remain unnoticed at first sight and on intermittent viewing of the signs. When the conflicting signs appear in the market environment, they would rarely be encountered side by side for a detailed check on their coincidences to be performed by consumers.

Moreover, 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. In the present case, due to their different structures and compositions, the signs differ entirely in their beginnings.

Therefore, following the above considerations, in particular taking into account the degree of distinctiveness of the coinciding elements when related to the relevant goods and services, the signs are considered visually and aurally at best similar to a low degree.

Conceptually, although the contested sign as a whole does not have any meaning for any of the public in the relevant territory, the element ‘banco’, included also in the earlier marks, may be associated with the meaning explained above. Depending on its degree of distinctiveness in relation to the goods and services, whether descriptive or only weak, the signs are considered conceptually similarity to at best a low degree. However, when a meaning is seen only in the earlier mark, the signs are not conceptually similar.

For the rest of the public for which neither of the signs has a meaning and a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

d) Distinctiveness of the earlier marks

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 Portuguese trade mark has been extensively used and enjoys an enhanced scope of protection in relation to the services in Class 36. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim will not be assessed at this stage (see below in ‘Global assessment’). The Opposition Division will proceed on the assumption that the earlier Portuguese mark enjoys an enhanced distinctiveness in relation to the services claimed (Class 36), which is the best light in which the case may be examined under Article 8(1)(b) EUTMR.

With respect to the other goods and services of this earlier mark, as well as to the distinctiveness of the earlier EU trade mark as a whole, the findings in section c) above may also be applied. While for part of the goods and services, the marks may have a normal degree of distinctiveness, for another part of the goods and services, they may have a lower-than-average degree of distinctiveness.

Even though the earlier EUTM may be entirely descriptive in relation to the services in Class 36, it was registered because acquired distinctiveness was proven at the time of examining the sign’s qualities. According to Office practice, if a trade mark has been registered in accordance with Article 7(3) EUTMR, it enjoys the same protection as any other trade mark that was found inherently registrable upon examination (Guidelines for examination of European union trade marks, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 14, Acquired distinctiveness through use, 9 (Article 7(3) EUTMR) available online at https://guidelines.euipo.europa.eu/1803468/1789118/trade-mark-guidelines/9-consequences-of-acquired-distinctiveness).

e) Global assessment, other arguments and conclusion

The goods and services were assumed to be identical and they target the public at large, as well as the professional public, whereas the degree of attention of both segments may vary between average and high, for the reasons expressed in section b) of this decision.

As discussed in sections c) and d) of this decision, the distinctiveness of the earlier marks also varies between low and normal for the different goods and services of the opponent.

Moreover, the Opposition Division has assumed in section d) that the earlier Portuguese mark has been extensively used and enjoys an enhanced scope of protection for the services in Class 36. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier Portuguese mark has an enhanced degree of distinctiveness. 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).

As established above, the signs are visually, aurally and conceptually, at best, similar to a low degree, when taking into account the various degrees of distinctiveness of their coinciding elements. However, even though the signs show some similarities, in particular in the element ‘banco’ and the string of letters ‘vo’, there is no likelihood of confusion as these coincidences concern either elements that are not distinctive or are of very low distinctiveness, or elements that are secondary within the overall impression given by the signs or parts of the signs that are hardly perceptible or unlikely to be mentally perceived when the nature of the services is taken into account. As the applicant correctly points out, a coincidence in a non-distinctive element (‘banco’) is not in itself a reason to find signs similar. Moreover, both signs have additional distinctive or at least less weak elements that, together with their different structures and compositions, create a sufficient differentiation in the overall impression of the signs.

Even if the earlier Portuguese mark enjoyed enhanced distinctiveness, as previously assumed, that would not prevail over the other factors leading to the outcome reached above, in particular the descriptive character of the coinciding element ‘banco’ in relation to the services in Class 36 in both marks.

An additional factor to be taken into account is the relevant public, as consumers of services in the financial domain are considered not only observant and reasonably circumspect but to display a higher degree of attention at the time of purchase. Indeed, a consultation with the providers of these services is often made to ascertain the consumers’ choice before making a decision. However, that consumers will be able to assess the marks in conflict and become familiar with their peculiarities will in no way close the gap between them.

Therefore, the similarities identified above are of a rather insignificant character and are not sufficient to lead to a likelihood of confusion on the part of the public.

The opponent refers to several 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.

The previous cases referred to by the opponent are not relevant to the present proceedings since they cover essentially different sets of circumstances; by way of example, either the signs have identical beginnings and endings (16/04/2010, B 1 438 292, ‘CASACOR’ and ‘CASA DÉCOR’) or the components are simply inverted in both signs, but retain their meanings (26/02/2018, R 935/2017‑4, ‘DELI-DOG’ and ‘DOG’S DELI’). Consequently, the findings of these cases or the outcomes thereof cannot be simply transferred and equally applied to the present case.

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

The opposition is based on two more earlier marks that have not been examined above, namely:

 European Union trade mark registration No 13 293 022 ,

 European Union trade mark registration No 14 302 459 .

These earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements, as well as some degree of stylisation and the use of colour, which are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

Since the opposition fails under Article 8(1)(b) EUTMR, the examination will proceed with respect to the reputation claim in relation to the earlier national mark, under Article 8(5) EUTMR.

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.

a) Reputation of the earlier trade mark

According to the opponent, the earlier Portuguese trade mark No 534 187 for the word mark ‘NOVO BANCO’ has a reputation in Portugal. In particular, the opponent claims it to be

a part of one of Portugal’s leading banking and financial services groups, the activity of which is centred in the financial industry sector and on corporate, institutional and private individual clients. The opponent has succeeded a previous Portuguese business (Banco Espírito Santo) and this act was broadly covered by the national media leading to the opponent’s bank ‘Novo banco’ to turn into a well-known financial institution to the Portuguese community.

In that respect, the opponent even refers to the recognition its trade mark received from the national Court, in the case of 27/06/2019, No 81/18.0YHLSB.L1. The opponent adds that it currently operates over 400 agencies and 20 business centres in Portugal and employs around 5 100 employees (more than 4 800 at a national level).

Unlike the assessment of enhanced distinctiveness, reputation implies a knowledge threshold that 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. Moreover, the present assessment is in no way bound to the findings and outcome of the assessment of acquired distinctiveness of the earlier EUTM at the time of examination to which the opponent refers. The Opposition Division emphasises that these are two separate examinations of different character and no correlation exists between them.

In the present case, the contested trade mark was filed on 27/09/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Portugal prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 36: Financial services provided through the internet and by phone; commercial bank services; banking investment services in real estate; banking and financial services; online banking services; financial, investment and insurance services; payment card services.

The services against which the opposition is directed have already been mentioned in the previous section.

In order to determine the mark’s 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 30/09/2019, the opponent submitted the following evidence:

Item A: references in the national media: some examples of press articles released between 2016 and July 2017 (prior to the filing of the contested trade mark application) in which the ‘NOVO BANCO’ trade mark and the opponent’s company are mentioned. The articles are originally in Portuguese and are accompanied by partial translations into English. In particular, the following:

 ‘Who is the shark that has bought Novo Banco’, published at Visão, 2017;

 ‘Novo Banco reduces loss to 290.3 million in the 1st semester’, ‘Pre-retirement and voluntary termination plans with 268 Novo Banco Employees’, ‘Who is the owner of Novo Banco?’, ‘Several international funds come together to halt sale of Novo Banco’, published on sicnoticias.pt’, in 2017;

 ‘If Novo Banco is not sold until August 2017 it enters the orderly liquidation process’, published on idealista.pt, in 2016;

 ‘Novo Banco liquidated if it is not sold until August 2017’, ‘Carlos César considers that proposals for Novo Banco are ‘vexatious’ and admits nationalization’, published on Zap, 2016 and 2017.

 ‘Lone Star gets 75 % of Novo Banco’, published in Jornal de Notícias, in 2017.

Item B: sponsorships under ‘NOVO BANCO’: some extracts from press releases or articles referring to sponsorships undertaken by the opponent during 2017 (further mentioned in the opponent’s annual reports). The sponsorships have been accordingly referenced, in particular, in the following:

 ‘Novo Banco Revelação 2017 Award already has four finalists selected’, published on agriculturaemar.com, providing information about the initiative in partnership with the Serralves Foundation (Fundação Serralves) to promote young artists in Portugal (in the field of photography);

 ‘Novo Banco Photo 2016’, referred to on the opponent’s official website www.novobanco.pt, where information is provided about the ‘NOVO BANCO Photo’ - an initiative in partnership with the Berardo Collection Museum, launched in 2004 and considered one of the most relevant prizes for the recognition of an artistic work in the field of photography;

 ‘Novo Banco signs 10 years sponsorship to ‘Tourism Oscars’, published in Publituris Newspaper, in 2017, where it is explained that ‘the NOVO BANCO is the exclusive bank sponsor of the Publituris Portugal Travel Awards’;

 ‘NOVO BANCO is the official sponsor of the Portuguese National team’, a press release published on the opponent’s website giving information about its sponsorship of the national team in the European Championship 2016 and FIFA World Cup qualification 2018 in Russia.

Item C: results of a survey on spontaneous awareness of ‘Novo Banco’, which according to the opponent was carried out by Basef Banca – Marktest and concerns data for 2017. According to the table and the opponent’s references, approx. ‘45 % of the 3 000 to 4 000 individuals’ that were asked each month during that year showed spontaneous recognition of the opponent’s mark.

Item D: financial report and activities (unaudited), entitled: ‘Novo Banco Group Activity And Results For Financial Year 2017’, dated in 2018, in which the net income of the bank is discussed, as well as other relevant activity indicators. As may be inferred from the report, the bank mostly generates its income from the support services provided to businesses, commissions on payment services, processing of payments and cards, asset management and various bank assurance products. The report also mentions that ‘NOVO BANCO was named the best provider of Securities and Custody services in Portugal (2017) by the Global Finance international magazine. This award provides international recognition to the Bank’s capabilities and performance in this important business area’.

Items E and F: annual financial reports 2016 and 2017, which are, according to the opponent, publicly available online on the opponent’s official website, and provide results related to the opponent’s core business, that is, online banking and financial services. The reports also address the opponent’s corporate segments and provide information concerning economic sectors, regions and companies, as well as awards and partnerships.

Having examined the above materials in their entirely, the Opposition Division finds that the opponent failed to provide objective and extensive evidence that demonstrates that the earlier trade mark acquired a reputation.

Assessment of the evidence

In detail, the evidence mainly consists of references to the opponent’s business in the national media and sponsorships, a survey on spontaneous recognition and financial reports provided by the interested party.

First of all, information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation, for example, when the opponent submits internal memoranda or tables with data and figures of an unknown origin. By contrast, if such information is publicly available or has been compiled for official purposes and contains information and data that have been objectively verified, or reproduces statements made in public, its probative value is generally higher. Consequently, the extracts from the national media and the annual reports, which have been audited, will be of a higher probative character than the remaining evidence originating exclusively from the opponent’s domain.

With respect to the articles provided in item A, these media references relate to the opponent’s business/group in general, that is to say, they refer to the opponent as a legal entity without necessarily linking its activity to the trade mark under which financial operations may have been or have been performed. Consequently, the media coverage on its own does not show that the trade mark ‘NOVO BANCO’ has a reputation for providing services in Class 36, neither does it serve to provide indications about the public’s perception of the news in question. It merely produces information for the public regarding the state and development of the business after its acquisition by the opponent’s group.

Furthermore, even though sponsorships are an important factor for assessing the reputation of a trade mark, the opponent’s evidence in item B is not convincing about the nature of the sponsorships and their media coverage. While in principle sponsorships would reveal some important information about the commercialisation and strength of a brand, sponsorships rarely provide direct information on the relevant field in which the brand is known, therefore, they cannot establish a link to the opponent’s business activity for which reputation is claimed. Moreover, even though the opponent may be engaged in various social activities and sport events, it failed to submit the respective materials illustrating how these events were received in the public domain and whether the sponsorships affected positively the recognition of its brand in the financial sector.

As regards item C, even though the table shares very valuable information that may indicate recognition of the brand, it lacks essential components that would ascertain its degree of reliability. The opponent needs to be aware that in order for a survey to be considered relevant and reliable, certain criteria set by the Office need to be met.

In particular, in evaluating the credibility of an opinion poll or market survey, the Office needs to know: whether it was conducted by an independent and recognised research institute or company, in order to determine the reliability of the source of the evidence (27/03/2014, R 540/2013‑2, SHAPE OF A BOTTLE (THREE DIMENSIONAL MARK), § 49); the number and profile (sex, age, occupation and background) of the interviewees, in order to evaluate whether the results of the survey are representative of the different kinds of potential consumers of the services in question; the method and circumstances under which the survey was carried out and the complete list of questions included in the questionnaire; how and in what order the questions were formulated, in order to ascertain whether the respondents were asked leading questions; whether the percentage given in the survey corresponds to the total amount of persons questioned or only to those who actually replied.

Most of the above requirements were not met and the results provided by the opponent were not supported by any further materials providing more information on the relevant circumstances addressed above. Consequently, the figures on which the opponent relies in its observations cannot be taken into account on their own to prove recognition of the sign.

As regards the financial documents submitted in items D, E, F, even though this type of evidence includes all kinds of information about the opponent’s business, activities and perspectives of the opponent’s company, or more detailed figures about turnovers, sales, advertising, etc., this by itself is not sufficient to show the extent of recognition of the mark since it is not set in the context of the market and competitors in question. Therefore, this evidence on its own also does not provide a sufficient indication of the degree of recognition of the trade mark by the relevant public, and due to the lack of other evidence that may corroborate it, does not serve to prove reputation.

Finally, the opponent refers in its observations of 30/09/2019 and 04/05/2020 to national decisions issued by the Court of Appeal in Lisbon (Cases No. 81/18.0YHLSB.L1, 27/06/2019 and No. 83/18.7YHLSB, 28/02/2019), in which the recognition of the brand was confirmed. While the first decision was merely extracted from its original form, the second decision was provided by the opponent in its original (Portuguese) and accompanied by a partial translation. Indeed, since such decisions may serve to indicate reputation and to record a successful enforcement of the mark, their relevance should be addressed and examined. However, there might be differences between the substantive and procedural conditions applicable in national proceedings and those applied in opposition proceedings before the Office. Firstly, there may be differences in how the requirement of reputation is defined or interpreted. Secondly, the weight the Office gives to the evidence is not necessarily the same as the weight given to it in national proceedings. Furthermore, national instances may be able to take into account ex officio facts known to them directly, whereas, under Article 95 EUTMR, the Office may not.

For these reasons, the probative value of national decisions will be considerably enhanced if the conditions of law and facts on the basis of which they were taken are made abundantly clear. This is because, in the absence of these elements, it will be more difficult both for the applicant to exercise its right of defence and for the Office to assess the decision’s relevance with a reasonable degree of certainty. Similarly, if the decision is not yet final, or if it is outdated due to the time that has elapsed between the two cases, its probative value will be diminished accordingly. Consequently, the probative value of national decisions should be assessed on the basis of their contents and may vary depending on the case.

In the present case, the Opposition Division made an assessment of reputation based on the facts and evidence submitted only; it is therefore necessary to note that the evidence on which the outcome in the national decisions was based was not submitted, and the legal procedure and assessment approach followed by the national Court was not clear. Consequently, the outcome of these decisions cannot be merely transferred to the present proceedings.

Conclusion and some other remarks (on the lack of link)

Considering the materials as a whole and in corroboration with each other, the evidence does not prove that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

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

For the sake of completeness, the Opposition Division also notes that even if some degree of reputation was established, the opposition would have also failed due to the lack of link between the signs. First of all, as the opponent itself points out, to the extent that the intrinsic quality of the opponent’s mark may be questioned, the opponent has fully relied on its acquired distinctiveness (which cannot be the subject of the present proceedings) and consequent reputation.

The signs have in common ‘banco’ and ‘vo’, leading to some similarities between them. This does not mean however that the relevant public is likely to establish a link between them. When consideration is given to the services in question, it is clear that the similarities between the signs in dispute relate to an element that is descriptive, namely the word ‘banco’, which is the Portuguese equivalent for a ‘bank’, and to the element ‘vo’, which appears in a completely different context and arrangement in the two signs – as a part of a meaningful and descriptive word (‘novo’) or as a part of another meaningless word (‘bancovo’).

As discussed in the previous section, consumers will perceive the element ‘banco’ as exclusively referring to the types of services offered and not as a distinctive component of a trade mark. Indeed, even some degree of reputation of the earlier mark would not compensate for the descriptiveness of its components so as to bring them into mind when seen in another sign in that field. By contrast, the contested sign bears a very different structure: it is a one-word sign, and the occasional coincidences in strings of letters will not be sufficient to trigger a link between the signs.

The Opposition Division therefore disagrees with the opponent on the point that consumers will perceive the different elements ‘banco’ and ‘vo’ in the contested sign individually and link them when they are used in the totally different composition of the earlier mark. Such a claim is unconvincing and, with the lack of any supportive evidence, cannot be regarded as plausible.

Therefore, in view of the descriptive character of the elements in question and the overall arrangement of the signs, the similarities between the contested trade mark and the earlier trade mark are unlikely to bring the earlier trade mark to the mind of the average consumer.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public would have made a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them, which would again lead to the failure of the opposition under Article 8(5) EUTMR.

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, 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

Valeria ANCHINI

Manuela RUSEVA

Sylvie ALBRECHT

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.