OPPOSITION No B 3 049 945

Open Bank, S.A., Ciudad Grupo Santander Avda. de Cantabria s/n, 28660, Boadilla del Monte, Spain (opponent), represented by Marcas Grupo Santander, Avda. de Cantabria s/n, 28660, Boadilla del Monte (Madrid), Spain (professional representative)

a g a i n s t

Preta, 40 rue de Courcelles, 75008, Paris, France (applicant), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003, Alicante, Spain (professional representative).

On 26/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 945 is partially upheld, namely for the following contested services:

Class 36: Monetary affairs consisting of transfer of payment flows via the Internet or a global network; banking and financial services provided via the Internet or a global network; financial consultancy; financial transaction processing services; electronic processing of bill payment data for users of computer and communication networks; financial services, namely services enabling the transfer of funds and the purchase of goods and services offered by others, all the aforesaid services being provided via electronic communications networks; payment transactions and financial services conducted via global computer networks; banking involving the transfer of payments via the Internet and/or electronic communications networks; electronic payment services, namely electronic processing and transmission of data relating to the payment of invoices; electronic payments services, namely computer-aided payment processing, via telecommunications apparatus and electronic communications networks.

2. European Union trade mark application No 17 315 102 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 315 102 for the figurative mark . The opposition is based on Spanish trade mark registration No 3 604 521 for the word mark ‘OPENBANKING’. The opponent invoked Article 8(1)(a) and (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.

a) The services

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

Class 36: Financial consultation; financial analysis; financial investment brokerage; financial investment in the field of real estate; financial loan consultation; financial management; financial planning; insurance actuarial services; insurance administration; insurance agency and brokerage; insurance consultancy; financial investment brokerage; accident insurance underwriting; fire insurance underwriting; mortgage financing services; loan financing; financial planning; bill payment services; insurance consultancy; mortgage brokerage; financial consulting services, namely, expert analysis in finance; providing financial information; advice relating to investments; financial services, namely, investment advice, investment management, investment consultation and investment of funds for others, including private and public equity and debt investment services; investment banking services; monetary strategy consultation and research; mortgage banking; agencies or brokerage for trading of securities, securities index futures, securities options, and overseas market securities futures; banking services featuring the provision of certificates of deposit; on-line cash account services; commercial lending services; consumer lending services; credit counselling services; financial affairs and monetary affairs, namely, financial information, management and analysis services; financial management of employee pension plans; financial services, namely, financial intermediary agent; services on securities exchanges and over-the-counter markets; financial services, namely, investment fund transfer and transaction services; financial services, namely, mortgage planning; financial services, namely, money lending; mortgage financing services; real estate lending services; savings account services; loan financing; agencies or brokerage for trading of securities and securities index futures; consultancy of capital investment; capital investment services.

The contested services are the following:

Class 35: Updating and maintenance of data in computer databases; compilation, organisation and systemisation of data; input, storage and processing of information, namely compilation and systemisation in databases; marketing of invoicing and payment services on the Internet or over a global network; business organisation and management consultancy, in particular relating to e-commerce and management of invoicing and payments on the internet or over a global network by electronic ordering systems.

Class 36: Monetary affairs consisting of transfer of payment flows via the Internet or a global network; banking and financial services provided via the Internet or a global network; financial consultancy; financial transaction processing services; electronic processing of bill payment data for users of computer and communication networks; financial services, namely services enabling the transfer of funds and the purchase of goods and services offered by others, all the aforesaid services being provided via electronic communications networks; payment transactions and financial services conducted via global computer networks; banking involving the transfer of payments via the Internet and/or electronic communications networks; electronic payment services, namely electronic processing and transmission of data relating to the payment of invoices; electronic payments services, namely computer-aided payment processing, via telecommunications apparatus and electronic communications networks.

Class 38: Telecommunications, in particular transmission of payments via telecommunications apparatus, computer and/or electronic communications networks; electronic transmission of messages and information of all kinds; providing access to invoicing and payment services on the Internet or over a global network and use of services on the Internet or over a global network (telecommunications).

Class 42: Design and development of computer software and databases, computer system design, development of interactive online websites and databases for providing information; development of computer software, in particular programs for managing accounting systems and payment flow systems on the internet and/or via electronic communications networks; computer services with regard to electronic data storage; management of data on servers; development of computer software for managing invoicing systems and payment flow systems via the Internet or a global network; development, implementation and enhancing of invoicing and payment systems (software) on the Internet or over a global network.

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

The term ‘in particular’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and the opponent’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.

Contested services in Classes 35, 38 and 42

The contested services in these three classes include updating and maintenance of data, marketing and business organisation and management in Class 35, telecommunications services in Class 38 and design and development of computer software and databases in Class 42.

The opponent’ services are financial monetary, banking, insurance and real estate services. Even if the contested services and the opponent’s services may target the same relevant public, this coincidence is clearly insufficient. These services have a different nature and purpose and they are usually provided by different companies, specialised in each of the areas. They do not use the same distribution channels. Furthermore they do not share a complementary nature nor are they in competition with one another. Therefore, given the vast differences, the contested services in Classes 35, 38 and 42 are considered dissimilar to all the opponent’s services.

Contested services in Class 36

Financial consultancy is identically contained in both lists of services (including synonyms).

The contested banking and financial services provided via the Internet or a global network; financial transaction processing services are banking and financial services that at least similar to some of the opponent’s services, such as, financial management. The services have the same nature, target the same relevant public, share the distribution channels and are provided by the same companies.

The contested monetary affairs consisting of transfer of payment flows via the Internet or a global network; electronic processing of bill payment data for users of computer and communication networks; financial services, namely services enabling the transfer of funds and the purchase of goods and services offered by others, all the aforesaid services being provided via electronic communications networks; payment transactions and financial services conducted via global computer networks; banking involving the transfer of payments via the Internet and/or electronic communications networks; electronic payment services, namely electronic processing and transmission of data relating to the payment of invoices; electronic payments services, namely computer-aided payment processing, via telecommunications apparatus and electronic communications networks are all monetary and payment services that are at least similar to the opponent’s bill payment services. The services have the same nature, share the same distribution channels, target the same relevant public and can be provided by the same companies.

b) Relevant public — degree of attention

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

In the present case, the services found to be identical or similar are directed at both the general public and professionals with specific professional knowledge or expertise. However, given that the general public is more prone to confusion, the examination will proceed on this basis.

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

‘OPENBANKING’
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 verbal element ‘EUROPE’ in the contested sign will, due to its close proximity to the Spanish equivalent ‘Europa’, be perceived as ‘the continent Europe’ and is non-distinctive in relation to all the relevant services, as it indicates that they originate from Europe or that Europe is the targeted territory or territory of distribution.

The earlier mark, as a whole, is an invented word. However, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

Therefore, the majority of the relevant public will associate the word ‘OPEN’ – being a basic English word and present in both signs - with, the idea of something ‘…accessible or having no enclosing or confining barrier’ (28/01/2016, R 1996/2014-2, openBI / OPENBIT, § 34). Therefore, it cannot be endowed with a high inherent distinctiveness in relation to the services in question, as it could be seen as alluding to the accessibility of these services, in the sense of ‘freedom’, ‘accessibility’ or ‘less formality’ (01/04/2008, R 1056/2007-2, Openfinance / OPEN, § 32, by analogy), and consequently it is considered to have a weak distinctive character for all the services in question.

The word ‘Banking’, present in both signs, has a meaning in English where it designates ‘the business of operating a bank’ (definition extracted from Cambridge English Dictionary online on 10/04/2019 at https://dictionary.cambridge.org/dictionary/english/banking). Taking into consideration the relevant services in Class 36 (essentially financial services), consumers are very attentive, well informed and familiar with basic English financial terminology (22/06/2010, T-490/08, CM Capital Markets Holding, SA / OAMI, (CARBON CAPITAL MARKETS Emissions Compliance Solutions & Carbon Finance / CM Capital Markets),EU:T:2010:250, § 33). Therefore, the term will be allusive to the bank sector and the distinctiveness of this element is considered lower than average.

Consequently, the verbal element ‘OPEN BANKING’ present in both signs is not particularly distinctive, but since the additional graphic features of the contested mark are purely decorative, both marks are placed on an equal footing as regards the distinctive character of their elements

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

Visually, the signs coincide in the words ‘OPEN’ and ‘BANKING’, which constitute entirely the earlier mark, although written without an space, and which are wholly reproduced in the contested sign. The differences are confined to the non-distinctive word ‘EUROPE’, the typeface, the colours and the vertical orientation of the verbal elements, all in the contested sign.

It is therefore considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincide in the sound of the words ‘OPEN’ and ‘BANKING and differs in the non-distinctive word ‘EUROPE’ at the end of the contested sign.

It is therefore considered that the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated to the weak concepts of ‘OPEN’ and ‘BANKING’, indicating somehow the accessibility of the relevant services. As the additional word ‘EUROPE’ is non-distinctive and the common concept of the signs lies in a weak element, the signs are conceptually similar to a low degree.

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

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Regardless of whether the earlier mark’s verbal elements might be non-distinctive or lowly-distinctive in relation to the services, it must be pointed out that the Office applies the practice clarified in the judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, namely that in proceedings opposing the registration of an EUTM, the validity of earlier trade marks may not be called into question. Therefore the earlier mark is deemed to be endowed with some degree of distinctiveness.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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.

In the present case the contested services are identical and similar to the opponent’s services and the earlier mark enjoys a minimum degree of inherent distinctiveness. The signs are visually similar to an average degree, aurally highly similar and conceptually similar to a low degree on account of the words ‘OPEN’ and ‘BANKING’, which constitute the earlier mark which and are fully incorporated at the beginning of the contested sign, where consumers pay more their attention. The differences are confined to the vertical orientation of the verbal elements, the coloured typeface and the non-distinctive word ‘EUROPE’, all in the contested sign. These differences are clearly insufficient to outweigh the significant similarities between the signs in relation to the identical or similar services concerned.

Therefore, it is highly conceivable that the relevant consumer, even displaying a high degree of attention, will perceive the contested sign as a stylised sub-brand, or a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

In its arguments the applicant claims that the earlier is devoid of distinctive character. In support of its arguments, the applicant submits Google results and several definitions in English based on ‘OPENBANKING’. However, in view of the Opposition Division, as explained in section d) of this decision, the earlier mark is endowed with some degree of distinctiveness.

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 cases referred to by the applicant are not relevant to the present proceedings. In Opposition No 2 711 904 the distinctiveness of the elements of the signs has no link to the current case and in Oppositions No 2 525 353 and No 2 431 461, the contested goods and services were dissimilar to the opponent’s goods and services, one of the conditions for a finding of likelihood of confusion.

Therefore, the applicant’s arguments are to be set aside.

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 Spanish trade mark registration No 3 604 521.

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

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 and directed against the remaining services because the signs and the services are obviously not identical.

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

Begoña URIARTE VALIENTE

Jorge ZARAGOZA GÓMEZ

María del Carmen COBOS PALOMO

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.