OPPOSITION No B 3 064 126

Bankia, S.A., Calle Montesquinza, 48, 28020 Madrid, Spain (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Cassa Centrale Banca - Credito Cooperativo Italiano S.p.A., in forma abbreviata Cassa Centrale, Via Segantini 5 38122 Trento (TN) Italy (applicant), represented by Legance Avvocati Associati, Via Broletto 20, 20121 Milano, Italy (professional representative).

On 14/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 126 is partially upheld, namely for all the contested goods and services in Classes 9, 35 and 36, except for auctioneering services in Class 35.

2. European Union trade mark application No 17 889 900 is rejected for all the contested goods and services, except for auctioneering services in Class 35. It may proceed for these services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 889 900 ‘BANQUÌ’. The opposition is based on inter alia, European Union trade mark registration No 10 125 284, and European Union trade mark registration No 10 125 219, ‘BANKIA’. The opponent invoked Article 8(1)(b) for both signs and Article 8(5) EUTMR in relation to European Union trade mark registration No 10 125 284.

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 10 125 284, because this mark covers more goods and services than the other earlier mark.

a) The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 35: Advertising and commercial or industrial management assistance; business administration, office functions; import-export agencies.

Class 36: Insurance services; financial affairs; financial analysis; monetary affairs; banking business; home banking; stockbrokerage and stock exchange quotations; fund management and capital investments; real estate administration, housing agents and real estate appraisal; real estate services; deposits of valuables; issuing of credit and debit cards; trustee services; mutual fund creation and investment; mortgage lending; online banking, financial, monetary, insurance and real estate services via telecommunication networks (including mobile telephones), data transmission networks and global computer communications networks.

The contested goods and services are the following:

Class 9: Databases (electronic); computer software; USB flash drives [not pre-recorded]; USB flash drives; smart cards [integrated circuit cards]; cash cards [encoded]; printed cash cards [encoded]; cash cards [magnetic]; credit cards; electronic card readers; laser cards; smart cards [integrated circuit cards]; card readers for credit cards; magnetic coded card readers; banking cards [encoded or magnetic]; encoded cards for use in point of sale transactions; payment cards being magnetically encoded; encoded cards for use in relation to the electronic transfer of funds; terminals for electronically processing credit card payments; apps for smartphones, tablet computers and desktop computers for access to banking services; computer software for accessing information directories that may be downloaded from the global computer network; internet servers; computer servers; computer database servers.

Class 35: Advertising; business management; business analysis; business analysis of markets; cost price analysis; analysis of business information; economic analysis for business purposes; advertising agencies; assistance to industrial enterprises in the conduct of their business; business administration assistance; compilation, production and dissemination of advertising matter; advice in the field of business management and marketing; business advisory and information services; marketing services; arranging of commercial and business contacts; arranging of trading transactions and commercial contracts; bidding quotation; arranging of festivals for advertising purposes; organisation of trade fairs for commercial or advertising purposes; efficiency experts; public relations services; accountancy, book keeping and auditing; business advisory and information services; marketing studies; business research; business consultancy and advisory services; business risk management services; business strategy and planning services; business appraisal; news clipping services; accounting; economic forecasting; opinion polling; drawing up statements of account; auctioneering services; business auditing.

Class 36: Financial affairs; monetary affairs; banking; financial advice; home banking; evaluation (financial -) [insurance, banking, real estate]; insurance agencies; administration of insurance plans; administration of insurance plans; administration of insurance portfolios; banking insurance; credit risk insurance; mortgage insurance; credit insurance; consulting and information concerning insurance; insurance guarantees; financial services rendered by insurance companies; real estate procurement for others; real estate management; arranging letting of real estate; investment advisory services relating to real estate; real estate lending services; real estate management; real estate trustee services; assessment and management of real estate; issuance of travelers’ checks; issuing stored value cards; deposit of valuables; acquisition and transfer of monetary claims; administration of savings accounts; financial management; administration of pension schemes; merchant banking services; brokerage; arranging the provision of finance; advisory services relating to financial planning; tax services [not accounting]; establishment of trusts (services for the -); provision of current accounts; arranging the provision of finance; provision of pension schemes; provision of financial services by means of a global computer network or the internet; provision of financial securities; securing of funds; financial risk management services; estate trust management; financial management of current accounts; financial management relating to banking; internet banking; financial investment; merchant banking services; online banking; financial planning and management; loan and credit, and lease-finance services; internet banking; banking and financing services; telebanking; bank account services; deposit accounts services; savings accounts services; current account facilities; financing and funding services; savings scheme services; pension services; monetary services; pension services; bank account and savings account services; financial transfers and transactions, and payment services; card services; issuance of credit cards; provision of credit cards and debit cards; providing of automated teller machines (ATM) and debit cards; bank card, credit card, debit card and electronic payment card services; credit card and payment card services; management of credit card services; consultancy relating to credit cards, debit cards and charge cards; opening and closing bank accounts; accommodation bureaux [apartments]; estate agency; financial analysis; safe deposit services; credit leasing; insurance brokerage; real estate brokerage; stockbroking; currency trading and exchange services; fiscal assessments; stock exchange quotations; savings bank services; real-estate valuations; electronic funds transfer; check [cheque] verification.

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 goods in Class 9

Electronic card readers; card readers for credit cards; terminals for electronically processing credit card payments are identical to the opponent’s data processing equipment, because the contested goods are included in, or overlap with, the opponent’s goods.

The contested USB flash drives [not pre-recorded]; USB flash drives; smart cards [integrated circuit cards] (listed twice); cash cards [encoded]; printed cash cards [encoded]; cash cards [magnetic]; credit cards; laser cards; magnetic coded card readers; banking cards [encoded or magnetic]; encoded cards for use in point of sale transactions; payment cards being magnetically encoded; encoded cards for use in relation to the electronic transfer of funds are all included in the category of ‘data storage and media’. These goods are at least similar to a high degree to the opponent’s magnetic data carriers, recording discs, which are also included in the category of ‘data storage devices and media’ and which store information in order to keep, transport, or reproduce it. These goods have the same purpose and are therefore in competition. They are manufactured by the same companies and, logically, they have the same distribution channels and target the same public.

The contested databases (electronic) are at least similar to the opponent’s data processing equipment, they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested computer software; computer software for accessing information directories that may be downloaded from the global computer network; internet servers; computer servers; computer database servers are similar to the opponent’s data processing equipment, as they can coincide in producer, end user and distribution channels. Furthermore, they are complementary.

The contested apps for smartphones, tablet computers and desktop computers for access to banking services are similar to the opponent’s data processing equipment since they can coincide in the same distribution channels, target the same relevant public and are often produced by the same undertakings. Furthermore, they are complementary.

Contested services in Class 35

Advertising is identically contained in both lists of services.

The contested advertising agencies; compilation, production and dissemination of advertising matter; advice in the field of business management and marketing; marketing services; public relations services; marketing studies are included in the broad category of, or overlap with, the opponent’s advertising. They are identical.

The contested business management; assistance to industrial enterprises in the conduct of their business are included in the broad category of, or overlap with, the opponent’s industrial management assistance. They are identical.

The contested business administration assistance; drawing up statements of account; business auditing; business consultancy and advisory services; business risk management services; business strategy and planning services; business advisory and information services (listed twice); efficiency experts are included in the broad category of, or overlap with, the opponent’s business administration. They are identical.

The contested accounting; accountancy, book keeping and auditing are included in the broad category of, or overlap with, the opponent`s office functions. They are identical.

The opponent’s commercial or industrial management assistance is a broad category of services that encompasses a variety of support roles in overseeing and managing an organisation’s daily, monthly, and yearly activities, as well as managing the people who are employed in the organisation. Examples of such services are organising meetings, booking accommodation, managing staff, preparing letters and emails, compiling monthly reports, helping organisations improve overall business performance, or monitoring and analysing the systems being used by an organisation to check their efficiency and effectiveness. These services are identical (because the contested services are included in or overlap with the opponent’s services) or at least similar to an average degree (because they have the same general purpose, can be provided by the same undertakings and target the same users) to the contested business analysis; business analysis of markets; cost price analysis; analysis of business information; economic analysis for business purposes; arranging of commercial and business contacts; arranging of trading transactions and commercial contracts; bidding quotation; business research; business appraisal; news clipping services; economic forecasting; opinion polling.

The contested organisation of trade fairs for commercial or advertising purposes consists of the arrangement of events, presentations, exhibitions or trade fairs to facilitate or encourage the promotion and sale of the client’s goods and services. As such, these services are considered similar to the opponent’s advertising services since they have the same purpose. Furthermore, they usually coincide in producer and relevant public. The same reasoning applies to the contested arranging of festivals for advertising purposes. They are also similar.

However, the contested auctioneering services are dissimilar to all the opponent’s services. These contested services are very specific and unrelated to the opponent’s goods and services, including the ones in Class 35. Auctioneering consists of several services including conducting an auction by announcing the lots and controlling the bidding. Therefore, they have different purposes, methods of use, distribution channels and relevant public to those of the opponent’s goods and services.

Contested services in Class 36

The contested application covers a wide range of various financial services and related consultation and information services, such as:

Banking; financial advice; evaluation (financial -) [insurance, banking, real estate]; issuance of travelers’ checks; issuing stored value cards; acquisition and transfer of monetary claims; administration of savings accounts; financial management; administration of pension schemes; merchant banking services; brokerage; arranging the provision of finance; advisory services relating to financial planning; tax services [not accounting]; establishment of trusts (services for the -); provision of current accounts; arranging the provision of finance; provision of pension schemes; provision of financial services by means of a global computer network or the internet; provision of financial securities; securing of funds; financial risk management services; estate trust management; financial management of current accounts; financial management relating to banking; internet banking; financial investment; merchant banking services; financial planning and management; loan and credit, and lease-finance services; internet banking; banking and financing services; telebanking; bank account services; deposit accounts services; savings accounts services; current account facilities; financing and funding services; savings scheme services; pension services (repeated); monetary services; bank account and savings account services; financial transfers and transactions, and payment services; fundraising; card services; issuance of credit cards; provision of credit cards and debit cards; providing of automated teller machines (ATM) and debit cards; bank card, credit card, debit card and electronic payment card services; credit card and payment card services; management of credit card services; consultancy relating to credit cards, debit cards and charge cards; opening and closing bank accounts; credit leasing; stockbroking; currency trading and exchange services; fiscal assessments; stock exchange quotations; savings bank services; electronic funds transfer; check [cheque] verification.

Financial services are services provided by the finance industry. The finance industry encompasses a broad range of organisations that deal with the management, investment, transfer, and lending of money. Among these organisations are banks, credit card companies, insurance companies, consumer finance companies, stock brokerages and investment funds. Banking services consist of providing all the services necessary for savings or commercial purposes, concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business.

All of the aforementioned contested services are of a financial nature and are at least similar to the opponent’s financial affaires; financial analysis; monetary affairs; banking business; home banking. Since they share the same distribution channels, target the same relevant public and are often produced by the same undertakings. Some of these goods can also be complementary.

Others, for example the contested fundraising, which aims to solicit money and/or organise financial support, particularly in relation to charity, culture, educational and environmental protection, can be identical to the opponent’s financial affaires.

The safe deposit services and deposit of valuables are services also known as a ‘safe deposit box’ whereby a financial institution rents out safe deposit boxes or other individually secured containers which may be accessed with keys, pin numbers or some other type of security pass. Valuables, such as documents and jewellery are placed inside, and customers rely on the security of the building and vault to protect those valuables (information extracted from Investopedia on 20/09/2018 at www.investopedia.com/terms/s/safe-deposit-box.asp). They are similar to the opponent’s financial affaires as they have the same nature. They usually coincide in provider, relevant public and distribution channels.

The rest of the contested services are identical to the opponent’s services in the same class, either because they are identically contained in both lists (including synonyms) (e.g. financial affairs; monetary affairs; home banking; financial analysis; online banking), or for the following reasons.

 Real estate procurement for others; real estate management; arranging letting of real estate; investment advisory services relating to real estate; real estate lending services; real estate management; real estate trustee services; assessment and management of real estate; accommodation bureaux [apartments]; estate agency; real estate brokerage; real-estate valuations are included or overlap with the opponent’s real estate services; hence, identity.

 Insurance agencies; administration of insurance plans; administration of insurance plans; administration of insurance portfolios; banking insurance; credit risk insurance; mortgage insurance; credit insurance; consulting and information concerning insurance; insurance guarantees; financial services rendered by insurance companies; insurance brokerage are included, or overlap with the opponent’s insurances services; which consist mainly of accepting liability or provision of monetary compensation in case of certain risks and losses. Hence, identity.

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 found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.For some of the services, which are specialised services that may have important financial consequences for their users, the consumers’ level of attention, even that of the general public, would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (FIG. MARK) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874).

c) The signs

	BANQUÌ
Earlier trade mark	Contested sign

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.

In the case of word marks, the use of upper- or lower-case letters is irrelevant (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57).

The contested mark ‘BANQUÌ’ has no meaning for the relevant consumers in any of the territories of the EU. However, for some of the consumers, such as the French, or Spanish consumers, the element ‘banquì’ will be deemed very allusive to the French equivalent ‘banque’ (bank) or the Spanish ‘banquero’ (banker). Since it refers to the nature of the services themselves or the entity offering the said services, its distinctive character is low in relation to the goods in Class 9, that relate to financial activities, and the services in Class 36. Therefore, it cannot be excluded that some consumers, such as the French- or Spanish-speaking part of the public, when encountering these goods and services, will see the mark as an allusion to ‘banque’ or ‘banquero’. For the rest of the goods and services, its distinctiveness remains normal.

The earlier mark is a figurative mark consisting of the stylised word ‘Bankia’, written in green and positioned inside a brown rectangular background. The letters in the contested sign are only slightly stylised, apart from the letter ‘k’, which is perceived as using the letter ‘n’ which comes before it, to provide its vertical line.

The letters ‘BANK’ in the earlier mark are allusive considering that the relevant consumer will perceive them as referring to the concept of a bank/banking, taking into account the fact that some of the relevant goods and services are related to financial aspects, which are often provided by banks. It can be assumed that ‘bank’ is a basic English word, understood all over the European Union, even by those who do not speak English.

As such the verbal element ‘BANKIA’ has little distinctive character for the services in Class 36. For the rest of the goods and services (Classes 9 and 35) the earlier mark is distinctive to a normal degree.

The Opposition Division finds it appropriate to focus the comparison of the signs on the French- and Spanish-speaking part of the public, as the likelihood of confusion may be higher because the phonetic similarities are higher in these languages.

It should be pointed out 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 element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Visually, the signs are similar to the extent that they both contain the same letter sequence ‘BAN’ and the letter ‘I’ (without an accent in the earlier mark). The signs differ visually in the stylisation of the letters in the earlier mark, in particular the ‘K’ as well as the brown background and also the letters ‘QU’ of the contested sign.

The stylised typeface used in the earlier mark is, all in all, not striking enough to substantially modify its visual perception. It is, therefore, more than likely that, when encountering the earlier mark, the public will recall the verbal element ‘Bankia’ which reproduces four out of the six letters comprising the contested mark ‘BANQUÌ’. Therefore, the marks are visually similar to an average degree.

Aurally, since for the French and Spanish consumers the letters ‘Y’ and ‘i’, and the letters ‘K’ and ‘QU’ will be pronounced the same, the pronunciation of the marks coincides in the sound of the letters ‘BANQUI’ and ‘BANKI’, present in both signs, and to that extent the marks are aurally similar. The pronunciation differs in the sound of the letter ‘a’ of the earlier mark which has no respective counterpart in the contested sign and the fact that the contested sign contains an accent at the end. Consequently, the marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks are, in any event, similar to a higher than average degree in this aspect as both contain the connotation of bank/banking.

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.

According to the opponent, the earlier trade mark enjoys a high degree of recognition among the relevant public in the European Union in connection with all the goods and services for which it is registered. 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).

On 14/09/2018 the opponent submitted the following evidence:

 Annex 1: Printouts from the opponent’s official website, www.bankia.com, where information about the company is found: for example, that they have more than 8 million customers worldwide, that they have invested nearly 20 million euros in social spending, that they have more than 16 thousand employees and more than 180 thousand shareholders.

 Annex 2: Printout of the Interbrand website, where BANKIA is placed in 19th position in a list of the best Spanish brands of 2017. The document is in Spanish.

 Annex 3: Information obtained from Brand Finance (www.brandirectory.com), where Bankia appears among the 100 best Spanish brands in all sectors, and among the 500 most important global brands in the banking sector.

The mark ‘Bankia’ appears in the following brand league tables:

o Year 2018

Ranked 21 in the Spanish 100

Ranked 158 in the Banking 500

o Year 2017

Ranked 22 in the Spanish 100

Ranked 162 in the Banking 500

o Year 2016

Ranked 146 in the Banking 500

Ranked 20 in the Spanish 100

Ranked 379 in the Euro 500

o Year 2015

Ranked 138 in the Banking 500

o Year 2014

Ranked 139 in the Banking 500

 Annex 4: Information obtained from the official website of the Madrid Stock Exchange (www.bolsamadrid.es), where Bankia is listed, along with other financial facts.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market.

Both enhanced distinctiveness and reputation require 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 whether or not it contains an element that is 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 that, 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, § 23).

Furthermore, as follows from Article 95(1) EUTMR, in inter partes proceedings, the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys enhanced distinctiveness or reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponents. The evidence must be clear, convincing and ultimately reveal the facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R 437/2014‑1, SALSA / SALSA (FIG MARK) et al.).

The reports on ranking of brands consistently position the earlier mark amongst the leading marks in value both in the category ‘banca y servicios financieros’ (banking and financial services) and globally. The mark ‘Bankia’ was included amongst the most valuable Spanish trade marks for several years in a row and was also mentioned as one of the top brands in the world. Therefore, the name of the bank, ‘Bankia’, can be regarded as being used in relation to the services. It is clear from the evidence submitted, taken as a whole, that a link is established between the name of the bank, ‘Bankia’, and the financial services it provides.

Annex 1 originates from the opponent, and there is no information originating from independent sources that could possibly be used to establish to which part of the public these advertisements have been distributed. It is clear that the opponent has made advertising efforts. However, without any further data showing how this has affected the awareness of the relevant public regarding the earlier sign with respect to the relevant services, it cannot be concluded that the earlier mark enjoys a reputation. The evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted.

As a result, the evidence is insufficient to show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation. However, some of the evidence leads to the conclusion that the earlier mark enjoys a certain degree of enhanced distinctiveness.

However, the evidence does not succeed in establishing that the trade mark has a higher degree of distinctiveness for all the services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to financial affairs in Class 36, whereas there is little or no reference to the remaining services.

Therefore, the Opposition Division concludes that the evidence submitted by the opponent suffices to demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use in relation to financial affairs in Class 36.

These findings will be referred to again in the ‘Reputation Article 8(5) EUTMR’ section. Whether Article 8(5) EUTMR is applicable depends on other factors relevant under Article 8(5) EUTMR that will be examined further below.

For the remaining relevant goods and services of the earlier mark, in Classes 9 and 35, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The earlier trade mark has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, for the goods and services in Classes 9 and 35 the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

The interdependence of those factors is expressly referred to in recital 8 in the preamble to the EUTMR, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the mark on the market, the association that can be made with the used or registered sign, the degree of similarity between the mark and the sign and that between the goods or services identified (10/09/2008, T‑325/06, Capio, EU:T:2008:338, § 72 and the case-law cited).

The relevant goods and services are partly identical, partly similar to varying degrees and partly dissimilar (auctioneering in Class 35). The relevant public will pay an average to high degree of attention.

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

The signs are visually similar to an average degree, aurally similar to a high degree and conceptually similar to a higher than average degree, for the reasons shown above.

The earlier mark enjoys protection for those goods and services identical to the contested ones. Furthermore, as shown in section d) of this decision, the earlier mark has acquired a high degree of distinctiveness among the relevant public in relation to services which are identical/similar to the contested services in Class 36.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Indeed, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Therefore, taking into account the visual and aural commonalities between the signs and the conceptual link that exists between them, and considering the high degree of distinctiveness of the earlier mark, it is likely that the relevant French or Spanish-speaking public may believe that the goods and services found to be similar come from the same undertaking or economically linked undertakings, even when the degree of attention is high.

Given the enhanced distinctiveness of the earlier mark, the fact that the most important element of the earlier mark is reproduced in the initial part of the contested sign is sufficient to cause at least a part of the relevant public to make an association between the signs.

Therefore, the differences between the signs are not enough to counteract the existing similarities.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French- and Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

The auctioneering services in Class 35 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.

The opponent has also based its opposition on European Union trade mark registration No 10 125 219 ‘BANKIA’. While this word mark is more similar to the contested sign than the one examined, it only covers goods in Class 9. Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The Opposition Division will now examine the opposition on the ground of Article 8(5) EUTMR claimed by the opponent in relation to EUTM No 10 125 284.

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.

a) Reputation of the earlier trade mark

The evidence submitted by the opponent (on 14/09/2018) to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above, under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As explained above, some of the evidence leads to the conclusion that the earlier mark enjoys a certain degree of enhanced distinctiveness. However, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Indeed, the evidence is insufficient to show the degree of recognition of the trade mark by the relevant public. The documents submitted by the opponent are not enough to reach the threshold of reputation.

As already mentioned above, the opponent could have submitted opinion polls or market surveys which are largely held as being the most suitable means of evidence for providing information about the degree of knowledge of the mark. Aside from submitting such information, the opponent could have filed more supporting documentation, such as newspaper articles attesting as to the reputation of the mark.

As a result, the evidence taken as a whole does not show the degree of recognition of the trade mark by 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 as regards this ground.

Final Conclusion

It follows that the opposition is partially well founded on the ground of Article 8(1)(b) EUTMR. It is upheld for those contested goods and services found identical or similar to varying degrees, and rejected for the remaining dissimilar services, namely auctioneering in Class 35.

The opposition is also rejected on the ground of Article 8(5) EUTMR for these remaining contested services

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tu Nhi VAN

Gonzalo BILBAO TEJADA

Aliki SPANDAGOU

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.