OPPOSITION No B 3 065 379

Abanca Corporación Bancaria, S.A., C/ Cantón Claudino Pita, nº 2, 15300 Betanzos (La Coruña), Spain (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Demetra S.P.A., Via Efrem Nobili 44, 40062 Molinella, Italy (applicant), represented by Bugnion S.P.A., Via di Corticella 87, 40128 Bologna, Italy (professional representative).

On 28/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 379 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 918 210 for the figurative mark , namely against all the goods in Class 7. The opposition is based on international trade mark registration No 1 244 722 designating the European Union for the figurative mark and Spanish trade mark registration No 3 710 190 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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.

1. The goods and services

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

International trade mark registration No 1 244 722 designating the European Union (hereinafter earlier mark 1)

Class 36: Insurance services; financial business services; monetary business services; hire-purchase financing; debt collection; banking services, financial information; credit and debit card services; financial database services; processing of electronic payments carried out by means of prepaid cards; financial evaluations; financial consulting and analysis services; financial risk management.

Spanish trade mark registration No 3 710 190 (hereinafter earlier mark 2)

Class 36: Insurance services; finance services; monetary affairs; hire-purchase financing; debt collection agencies: banking, information (financial -); credit and debit card services; financial data base services; processing electronic payments made through prepaid cards; financial evaluation; financial analysis and consulting services; financial risk management services; factoring of debts; organising services of debt collections.

The contested goods are the following:

Class 7: Agricultural machines; agricultural, gardening and forestry machines and apparatus; cutters (machines); agricultural machines for grass cutting; agricultural machines for grass collecting; bush cutters (machines); excavators; atomisers being parts for agricultural crop spraying machines; sprayers [machines] for agricultural use in spraying herbicide; elevating apparatus; agricultural elevators; dispensing machines; lawn mowing attachments for vehicles.

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.

The contested goods are various types of agricultural machines as well as parts and attachments thereof. These goods are obviously dissimilar to the opponent’s services in Class 36, which are insurance and financial services. These services are provided by insurance companies and banks or financial institutions, and clearly the goods and services originate from different undertakings and distribution channels. They clearly have different natures, purposes and methods of use. They do not target the same public and are neither complementary nor in competition.

The opponent provided some evidence showing agricultural machine suppliers offering services to assist consumers in finding a financing solution for their purchases. However, the opponent has erred in its reasoning, as services comprise economic activities provided to third parties. The financing activity offered by the agricultural machine suppliers has one goal, which is finding consumers a solution to purchase its own goods and for these reasons, it cannot be compared with financial services in the sense of the Nice Classification.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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.

3. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in Spain.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 14/06/2018. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

International trade mark registration No 1 244 722 designating the European Union

Class 36: Insurance services; financial business services; monetary business services; hire-purchase financing; debt collection; banking services, financial information; credit and debit card services; financial database services; processing of electronic payments carried out by means of prepaid cards; financial evaluations; financial consulting and analysis services; financial risk management.

Spanish trade mark registration No 3 710 190

Class 36: Insurance services; finance services; monetary affairs; hire-purchase financing; debt collection agencies: banking, information (financial -); credit and debit card services; financial data base services; processing electronic payments made through prepaid cards; financial evaluation; financial analysis and consulting services; financial risk management services; factoring of debts; organising services of debt collections.

The opposition is directed against the following goods:

Class 7: Agricultural machines; agricultural, gardening and forestry machines and apparatus; cutters (machines); agricultural machines for grass cutting; agricultural machines for grass collecting; bush cutters (machines); excavators; atomisers being parts for agricultural crop spraying machines; sprayers [machines] for agricultural use in spraying herbicide; elevating apparatus; agricultural elevators; dispensing machines; lawn mowing attachments for vehicles.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 17/12/2018, the opponent submitted the following evidence:

• Document 1: undated photographs of ATMs, as well as exteriors and interiors of branch offices bearing the earlier marks (either in blue, white or grey) in combination with the mark . One undated and unsourced photograph is described as showing education projects as well as sport sponsorship involving the opponent. In some photographs information in Galician is legible.

• Document 2: press coverage of articles referring to the opponent for the years 2014-2018. With two exceptions, namely one article dated 27/06/2014 and published in ‘La Voz de Galicia’ and a series of articles, dated 2016, depicting a photo of a press conference, none of the impressive amount of press reviews displays or refers to the earlier marks. The evidence almost only refers to the opponent’s mark ‘ABANCA’, either as a word mark or as a figurative mark .

• Document 3: documents provided by the opponent showing marketing and advertising investment. They include an affidavit in Spanish signed on 15/07/2016 by Angel Manuel Maján Gil, ‘Director Administración de Dentsu Aegis Network Iberia, S.L.U. y sociedades filiales’.

• Document 4:

• Screenshots of the App store page and the Google Play store page, dated 2018, in which the following image is depicted.

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• Printouts from the opponent’s website, dated 22/10/2018. The section ‘Quiénes somos’ displays one of the earlier marks.

• Facebook pages of ‘Afundación’ and ‘ABANCA’ where the profile pictures are the earlier marks. The document is dated 24/10/2018 and it is written that 26 000 people liked the page ‘Afundación’ and 55 430 people liked the page ‘ABANCA’.

• Social media presence of the mark ‘ABANCA’ (Twitter, Instagram, Linkedin, and Google +). The earlier marks are not depicted on any of these pages. It can be seen, for instance, that 12 400 people follow the Twitter account and 3 140 people follow the Instagram account.

• Document 5: internal documents (partly undated and partly dated 2018) as well as press articles and social network printouts showing that the opponent has created an Agro division, which is bringing financial support to boost the agricultural sector.

• Document 6:

• Brochures and internal documents referring to sponsorship activities funded by or by ‘ABANCA’.

• An article, dated 29/06/2017, in Spanish (a partial translation is provided) stating ‘Deportivo’s stadium will be called ABANCA Riazor until 2025’.

• Undated photographs only showing the following mark .

• An article, dated 19/07/2014, in Spanish where can be deciphered on a photo.

• Document 7: two decisions issued by the Spanish Office. These decisions are dated 18/12/2014 and 07/06/2018. The documents are in Spanish. The opponent argues that these decisions acknowledged the earlier mark’s reputation, but they only refer to the mark ‘ABANCA’.

The opponent’s evidence almost exclusively refers to the mark . As a general rule, reputation proven for a complex sign refers to that sign as such and not to a particular element alone. To establish the reputation of a trade mark on the basis of evidence relating to the use and well-known nature of a different trade mark, the former must be included in the latter and play therein ‘a predominant or even significant role’ (21/05/2005, T‑55/13, F1H20 / F1 et al., EU:T:2015:309 § 47). In the present case, the verbal element ‘ABANCA’ consists of six letters, which is indisputably significantly longer than the earlier marks and creates a different overall impression (even if the string of the letters ‘BANCA’ will be perceived as a reference to the services provided), and cannot be considered as ancillary.

When the earlier mark has been used as part of another mark, it is incumbent on the opponent to prove that the earlier mark has independently acquired in itself, a reputation (12/02/2015, T‑505/12, B, EU:T:2015:95, § 121). No probative evidence (opinion polls, third party publications, etc.) has been filed corroborating the opponent’s arguments with respect to the figurative marks on which the opposition is based. The use of this figurative element alone in a limited number of documents is considered insufficient from both a quantitative and qualitative point of view.

Considering the foregoing, the evidence submitted does not give the Opposition Division sufficient information to conclude that the earlier marks have a reputation in the relevant territories.

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 marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Solveiga BIEZA

Birgit FILTENBORG

Christophe DU JARDIN

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.