OPPOSITION Nо B 3 064 126

Bankia, S.A., Calle Montesquinza, 48, 28020 Madrid, Spain (opponent), represented by Despacho González-Bueno, S.L.P., Calle Gurtubay 4, 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 28/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 126 is partially upheld, namely for the following contested goods and services:

Class 9: All the contested goods in this class.

Class 35: All the contested services in this class, except auctioneering services.

Class 36: 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.

2. European Union trade mark application No 17 889 900 is rejected for the abovementioned goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

On 13/09/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 889 900 for the word mark ‘BANQUÌ’. The opposition is based on European Union trade mark registration No 10 125 284, for the figurative mark and European Union trade mark registration No 10 125 219, for the word mark ‘BANKIA’. The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier marks, and Article 8(5) EUTMR in relation to European Union trade mark registration No 10 125 284.

On 14/10/2019, the Opposition Division rendered a decision that resulted in the rejection of all the contested goods and services in Classes 9, 35 and 36, except auctioneering services in Class 35.

The decision was appealed, and the Board of Appeal decided (19/10/2020, R 2594/2019‑1). The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the decision contained substantial procedural errors in its methodology and reasoning that affected the outcome of the proceedings. In particular, the Opposition Division did not take into consideration the correct scope of protection of earlier EUTM No 10 125 284 in Class 36, resulting in the erroneous assessment of partial identity and partial similarity of the contested services in this class. Therefore, the Opposition Division made an error in its examination of the list of services in Class 36. Moreover, the contested decision erred in granting enhanced distinctiveness for the earlier mark’s financial affairs in Class 36 which, de facto, are not covered by the registration.

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.

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: Real estate administration, housing agents; real estate services; 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 travellers’ 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; 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; 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

The contested 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. Moreover, some of them are in competition. They are manufactured by the same companies and, logically, have the same distribution channels and target the same public.

The contested databases (electronic); computer software; 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 are similar to the opponent’s data processing equipment, as they can coincide in producer, end user and distribution channels. 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 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 and advice in the field of business management 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 advisory and information services (listed twice) and auditing are included in the broad category of, or overlap with, the opponent’s business administration. They are identical.

The contested accounting; accountancy, book keeping 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 some of the contested services are included in, or overlap with, these 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; efficiency experts; business research; business risk management services; business strategy and planning services; business appraisal; news clipping services; economic forecasting; opinion polling.

The contested arranging of festivals for advertising purposes and organisation of trade fairs for commercial or advertising purposes consist 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 similar to the opponent’s advertising, since they have the same purpose. Furthermore, they usually coincide in provider and relevant public.

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

Contested services in Class 36

Identical services

The opponent’s services in this class include real estate administration, housing agents; real estate services; real estate services via telecommunication networks (including mobile telephones), data transmission networks and global computer communications networks. These services comprise real estate property management and evaluation, and real estate agency services, as well as consultancy and provision of related information. This mainly involves finding a property, making it available for potential buyers, and acting as an intermediary.

The contested 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 in, or overlap with, the opponent’s real estate services; hence, they are identical.

Dissimilar services

The contested application also covers a wide range of various financial and banking services and related consultation and information services, namely:

Financial affairs; monetary affairs; banking; financial advice; home banking; evaluation (financial -) [insurance, banking, real estate]; issuance of travellers’ 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; 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; 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; financial analysis; safe deposit services; credit leasing; stockbroking; currency trading and exchange services; fiscal assessments; stock exchange quotations; savings bank services; electronic funds transfer; check [cheque] verification; financial services rendered by insurance companies.

It should be noted that ‘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. They concern 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 there is no relevant connection with the opponent’s services in Class 36, which are essentially real estate services (including specific ones). Consumers clearly distinguish the services provided by real estate agents from those of financial institutions. They do not expect a bank to find housing or a real estate agent to manage their finances. Moreover, financial and banking services do not have the same nature, intended purpose or method of use as real estate services.

Financial services are provided by financial institutions for the purposes of managing their clients’ funds. They consist of, inter alia, the holding of deposited funds, the remittance of funds, the granting of loans or the performance of various financial operations. In contrast, real estate services are services connected with a property. In particular, they concern the lease, purchase, sale or management of property. Furthermore, although the services in question might be found in the same distribution channels, it is clear that real estate services are not, in principle, provided on the same premises as financial services (17/09/2015, T‑323/14, Bankia / BANKY, EU:T:2015:642, § 34-38). Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service. It must therefore be concluded that these services are dissimilar, even if financial services are essential or important for the use of real estate. Consumers would not attribute responsibility for both services to the same company (11/07/2013, T‑197/12, Metro, EU:T:2013:375, § 47-51). These contested services are even further removed from the opponent’s remaining services in Class 35 or goods in Class 9. They have a different nature and purpose, are neither complementary nor in competition, and do not usually share the same commercial origins.

Therefore, these contested services are dissimilar to all of the opponent’s goods and services.

The contested services also include ‘insurance services’, namely:

insurance agencies; administration of insurance plans (listed twice); administration of insurance portfolios; banking insurance; credit risk insurance; mortgage insurance; credit insurance; consulting and information concerning insurance; insurance guarantees; insurance brokerage.

These contested services are also dissimilar to all the goods and services covered by the earlier mark, because they have nothing in common. Consumers can clearly distinguish the opponent’s real estate services from those of insurance companies. They do not expect an insurance company to find housing or a real estate agent to provide insurance. Insurance services do not have the same nature, intended purpose or methods of use as real estate services. Real estate services are services connected with property, in particular, the lease, purchase, sale or management of property. The contested services are provided by, for example, insurers, usually to provide monetary compensation and/or assistance in the event of a specified contingency (e.g. death, accident, sickness, breaking of a contract or, in general, any event capable of causing damages). They are not, in principle, provided on the same premises as real estate services. Therefore, these services are dissimilar, even though insurance services are essential or important for the use of real estate. Consumers would not attribute responsibility for these services to the same company (11/07/2013, T‑197/12, Metro, EU:T:2013:375, § 47-51).

These contested services are also completely different from the expertise related to the opponent’s services in Class 35. Furthermore, these contested services are provided by specialised companies, such as insurance companies, which nowadays are not uncommonly in the same economic group (17/11/2014, R 421/2014‑4, ARGO (fig.) / ERGO, § 22; 28/01/2014, R 1524/2013‑4, PEOPLE SMART SHOPPING (fig.) / SMARTSHOPPING (fig.), § 26).

Finally, the contested safe deposit services and deposit of valuables are also dissimilar to the opponent’s goods and services. These provide places for valuables, such as documents and jewellery, to be placed inside, and customers rely on the security of the building and vault to protect those valuables (information extracted from Investopedia at www.investopedia.com/terms/s/safe-deposit-box.asp). They differ in their purpose, distribution channels, providers and method of use from the opponent’s goods and services. Furthermore, they are neither in competition nor necessarily complementary.

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 and services, the frequency of purchase, their price, or the terms and conditions of the goods and services purchased.

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 European Union. For some consumers, such as the French-speaking consumers, the letters ‘BANQU-’ can allude to banque (bank), and therefore to the nature of some of the goods. Therefore, its level of distinctiveness is low in relation to some of the goods for these consumers. However, for Spanish consumers – despite the existence of the terms banquero (banker) and banco (bank) in Spanish – the sign is not descriptive or allusive to such an extent that its distinctiveness would be affected. Nor is it otherwise weak in relation to the relevant goods and services.

The earlier mark is a figurative mark consisting of the stylised verbal element ‘Bankia’, depicted in green and positioned inside a dark brown rectangular background. The letters in the earlier mark are only slightly stylised: the letter ‘k’ is merged with the preceding letter ‘n’ as they share the same vertical line.

The earlier mark’s element ‘Bankia’ has a normal degree of distinctiveness. This is true even though consumers will perceive it as referring to the concept of a bank / banking, because the relevant goods and services are not directly related to financial matters, which are often provided by banks.

The Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, as the evidence filed for demonstrating its reputation relates to the Spanish market. Furthermore, the phonetic similarities are greater in Spanish.

The earlier mark’s figurative elements (i.e. background and stylisation of the letters) serve rather decorative purposes and will barely be attributed any trade mark significance. Indeed, the typeface in which the letters are depicted is standard and the background is a banal, basic geometric shape. 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 letter sequence ‘BAN’ and the letter ‘I’ (without an accent in the earlier mark). The signs differ visually in the earlier mark’s stylisation of its letters – in particular the ‘k’ – and its brown background. They also differ in the contested sign’s letters ‘QU’.

The earlier mark’s stylised typeface is, overall, 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 of the six letters comprising the contested mark ‘BANQUÌ’. Therefore, the marks are visually similar to an average degree.

Aurally, since for the Spanish consumers the letters ‘k’ and ‘qu’ will be pronounced in the same way, the pronunciation of the marks coincides in the sound of the letters /banqui/ and /banki/, respectively. 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 accent on the contested sign’s final letter. Consequently, the marks are aurally similar to a high degree.

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

As the signs 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, showing information about the company. For example, that they have more than 8 million customers worldwide, have invested nearly 20 million euros in social spending, and have more than 16 thousand employees and more than 180 thousand shareholders.

 Annex 2: printout from 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 2018

Ranked 21st in the Spanish 100

Ranked 158th in the Banking 500

o 2017

Ranked 22nd in the Spanish 100

Ranked 162nd in the Banking 500

o 2016

Ranked 146th in the Banking 500

Ranked 20th in the Spanish 100

Ranked 379th in the Euro 500

o 2015

Ranked 138th in the Banking 500

o 2014

Ranked 139th 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 evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use in relation to the relevant goods and services.

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 facts, 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 brand rankings 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 among the most valuable Spanish trade marks for several consecutive years, and was also mentioned as one of the top brands in the world in the banking sector. Therefore, the name of the bank, ‘Bankia’, can be regarded as being used in relation to financial 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 which part of the public these printouts have been distributed to. It should be noted that, 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.

Reputation must be proved for the goods and services for which the earlier mark is registered (28/04/2011, R 1473/2010‑1, SUEDTIROL, § 58) and on which the opposition is based.

The evidence mainly relates to financial affairs in Class 36, whereas there is little or no reference to the remaining goods and services. The earlier mark is not registered for these services. Both enhanced distinctiveness or reputation (Article 8(5) EUTMR) can only be invoked if the supposedly well-known/renowned mark is a registered trade mark and if the goods/services for which this reputation/renown is claimed appear on the certificate.

These findings will be referred to further below, in the section ‘Reputation – Article 8(5) EUTMR’.

The assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The earlier mark’s element ‘Bankia’ has a normal degree of distinctive character. This is true even though the relevant consumers perceive it as referring to the concept of a bank / banking, but the relevant goods and services are not related to financial aspects that are often provided by banks.

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 this, 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. The relevant public (both the public at large and professionals) 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 not similar, for the reasons shown above.

As shown in section d) of this decision, the earlier mark’s distinctive character is normal.

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, it is likely that the relevant Spanish-speaking public may believe that the goods and services found to be identical or similar to varying degrees come from the same undertaking or economically linked undertakings, even when the degree of attention is high.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the 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 No 10 125 284. 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.

Some services in Class 36 and 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, because is a word mark and does not contain figurative elements, it is only based on the following goods:

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.

Since this mark covers the same scope of goods in Class 9, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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.

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.

Considering the items of evidence submitted, the opponent did not provide specific evidence that makes it possible to establish that the earlier mark has obtained a level of recognition amongst the relevant public for the services for which it has been registered, and for which a reputation is claimed.

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.

The opposition is rejected on the ground of Article 8(5) EUTMR for the dissimilar 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

Lidiya NIKOLOVA

Gonzalo BILBAO TEJADA

Félix ORTUÑO LÓPEZ

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.