OPPOSITION No B 3 027 680

Compass Banca S.p.A., Via Caldera, 21, 20153 Milano, Italy (opponent), represented by Barzanò & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Magic Compass Ltd, 1, Iakovou Tombazi, Vashiotis Business Centre, 2nd Floor, 3107 Limassol, Cyprus (applicant).

On 11/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 027 680 is upheld for all the contested services.

2. European Union trade mark application No 17 383 118 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 383 118 for the figurative trade mark . The opposition is based on, inter alia, European Union trade mark registration No 14 049 498 for the word mark ‘COMPASS BANCA’. The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 14 049 498.

a) The services

The services on which the opposition is based are, inter alia, the following:

Class 36: Finance services; monetary services; banking.

The contested services are the following:

Class 36: Financial and monetary services, and banking.

The contested monetary services and banking are identically contained in both lists of services. Moreover, the contested financial services and the opponent’s finance services are identical as these terms refer to the same services.

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 are directed at the public at large, who purchases the services in question for personal use, and at business customers with specific professional knowledge or expertise. Since these services 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

COMPASS BANCA
Earlier trade mark (word)	Contested sign (figurative)

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘BANCA’ included in the earlier mark sign is the Italian word for bank, namely an institution offering certain financial services, such as the safekeeping of money, conversion of domestic into and from foreign currencies, lending of money at interest, etc. (information available at https://www.collinsdictionary.com/dictionary/english/bank on 06/12/2018). Bearing in mind that the relevant services in Class 36 are financial and monetary services and banking, i.e. services typically offered by a bank, it is considered that this element is non-distinctive in relation to these services for the Italian speakers, as it indicates their nature.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public. Given that the previously mentioned element is non-distinctive for this part of the public, its impact in the comparison of the signs is reduced, thus enhancing the degree of similarity between the signs.

The common word element ‘COMPASS’ of the two signs is defined as ‘an instrument for finding direction, usually having a magnetized needle which points to magnetic north swinging freely on a pivot’ (information available at https://www.collinsdictionary.com/dictionary/english/compass on 06/12/2018). As this is an English word, it will either not be understood by the relevant Italian-speaking public or it will be understood on account of its close resemblance to the Italian equivalent ‘compasso’. In either case, since ‘compass’ has no meaning in relation to the services in question, it is considered distinctive for these services.

The English word ‘MAGIC’ included in the contested sign is also likely to be understood by the relevant Italian-speaking public due to its close resemblance to the Italian word ‘magico’. When used as an adjective, the word ‘magic’ may indicate that something is ‘wonderful; marvellous; exciting’ (information available at https://www.collinsdictionary.com/dictionary/english/magic on 06/12/2018). As such, it is considered a laudatory term, whose objective is to give a positive view of the services involved, and is, therefore, of weak distinctiveness.

Regarding the figurative device of the contested sign, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal elements than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, even if the applicant’s device could be considered a creative arrangement of three overlapping triangles, going beyond a simple geometric shape, its impact on the perception of the mark is still limited compared to the mark’s verbal components.

Visually, the signs coincide in the word ‘COMPASS’. They differ in the second verbal element ‘BANCA’ of the earlier mark and the word ‘MAGIC’ at the beginning of the contested sign, as well as the figurative device of the contested sign. However, these differing components are either non-distinctive/weak or have a secondary impact on the perception of the mark, as was explained above.

Therefore, given that the signs coincide in their most distinctive element, they are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘COMPASS’, which, as mentioned above, is the most distinctive element of both signs. The signs differ in the sound of their non-distinctive/weak words ‘BANCA’ of the earlier mark and ‘MAGIC’ of the contested sign. The figurative element of the contested sign is not subject to a phonetic assessment.

Overall, bearing in mind the aural identity of the signs’ distinctive verbal element ‘COMPASS’, it is considered that 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. Assuming that the relevant Italian-speaking public will understand the meaning of the English terms contained in the two signs, the signs are conceptually similar to an average degree, as they both refer to the concept of a compass.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the Italian-speaking public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element in the mark (‘BANCA’), as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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. 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).

In the present case, the services in question are identical while the signs have been found to be visually, aurally and conceptually similar to an average degree.

Importantly, the coinciding element of the two signs ‘COMPASS’ is the most distinctive element thereof. This is because the remaining verbal element ‘BANCA’ of the earlier mark is descriptive of the services offered for the Italian-speaking public, while the verbal element ‘MAGIC’, regardless of its prominence at the beginning of the contested sign, is a qualifier and, thus, plays a minor role compared to the word ‘COMPASS’. As for the contested sign’s figurative element, it is considered that this is not fanciful or memorable enough to guarantee that the marks will be distinguished from each other.

Considering all the above, there is a likelihood of confusion on the part of the Italian-speaking public, even despite the fact that this public has been assessed to have a higher than average degree of attention with respect to the relevant services. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Consequently, it is not necessary to analyse the opposition from the perspective of the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 049 498. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right EUTM No 14 049 498 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Manuela RUSEVA

Vanessa PAGE

Vít MAHELKA

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.