DECISION

of the Second Board of Appeal

of 4 March 2021

In case R 2705/2019-2

ABANCA CORPORACIÓN BANCARIA, S.A.
C/ Cantón Claudino Pita, nº 2 15300 Betanzos (La Coruña) Spain	Opponent / Appellant

represented by BALDER IP LAW, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain

v

DEMETRA S.P.A.
Via Efrem Nobili 44 40062 Molinella Italy	Applicant / Defendant

represented by BUGNION S.P.A., Via di Corticella, 87, 40128 Bologna, Italy

APPEAL relating to Opposition Proceedings No B 3 065 379 (European Union trade mark application No 17 918 210)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), H. Salmi (Rapporteur) and C. Negro (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 14 June 2018 with no priority claim, Demetra S.P.A. (‘the applicant’) sought to register the figurative mark

for the following list of 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.

2. The application was published on 29 June 2018.

3. On 1 October 2018, Abanca Corporación Bancaria, S.A. (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the goods.

4. The grounds of opposition were those laid down in Article 8(1)(b) and 8(5) EUTMR.

5. The opposition was based on the following earlier rights:

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

deemed to be filed and registered on 2 October 2014 and with a priority date of 28 April 2014 on the basis of the Spanish trade mark application 3 508 886 and covering, for the purpose of the present proceedings, the following services:

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 of the figurative mark

filed on 20 March 2018 and registered on 29 August 2018 and covering, for the purpose of the present proceedings, the following services:

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.

6. By decision of 28 October 2019 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety. It gave, in particular, the following grounds for its decision:

Article 8(1)(b) EUTMR

• The contested goods are dissimilar to the opponent’s services in Class 36.

• Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled.

Article 8(5) EUTMR

• 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.

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

• On 17 December 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 sports 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 June 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 July 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;

;

• Printouts from the opponent’s website, dated 22 October 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 October 2018 and it is stated 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 provides 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 June 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 July 2014, in Spanish where can be deciphered on a photo;

• Document 7: two decisions issued by the Spanish Office. These decisions are dated 18 December 2014 and 7 June 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’. 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. No probative evidence 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.

7. On 28 November 2019, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 27 and 28 February 2020. The opponent also stated that it included two CD’s, one to be forwarded to the applicant.

8. On 26 June 2020, the applicant informed the Office that it had not received the CD mentioned in the statement of grounds.

9. On 30 June 2020, the Boards of Appeal informed the opponent that only one CD was received at the Office. The opponent was requested to send a copy of the CD to the Office as soon as possible for forwarding to the applicant.

10. On 17 July 2020, the opponent submitted the requested copy, in the form of a DVD, to the Office.

11. Also, on 17 July 2020, the opponent submitted an extract of a judgment of the EUTM Court in Alicante as well as another DVD to the Office.

12. On 4 August 2020, the Boards of Appeal forwarded the two communications from the opponent which were received on 17 July 2020 to the applicant. The Board also sent the applicant the DVD of 17 July 2020 and an USB stick which contained the content of the statement of grounds and the DVD of 28 February 2020. The applicant was invited to file its observations within a two-month period of receipt of the Board’s notification.

13. The applicant did not file any observations.

Submissions and arguments of the opponent

14. The opponent’s arguments raised in the statement of grounds are summarised as follows:

• The goods and services are connected. The relevant public composed of professional and general customers operating in the agricultural field will connect the financial and insurance services included in the purchase of agricultural machinery with the financial and insurance services provided by an expert in the coverage of financial necessities dealing with agricultural and farming activities. For these kinds of goods it is presumed that the payment will need financial support.

• Reference was made to previous submissions. Nevertheless, it has to be pointed out that over the years, the opponent has become the main sponsor of several agricultural events and that it offers its clients the section ‘We are , we are ’on its website. This is a specific area exclusively dedicated to the agricultural and farming sectors. In this section, the clients can find abundant information on all the possible advantages they can obtain by counting on ABANCA to finance their projects, such as special investment plans, loans which are specifically addressed to the clients’ purpose and insurance plans. Therefore, the public will assume that the new agricultural goods under the trademark are being provided by a specific new division of the and business.

• It is to be considered that the Office should have compared the signs in conflict despite the fact that it ‘erroneously’ considered that the goods and services were dissimilar.

• As demonstrated in previous submissions, the conclusion to be reached after comparing the signs at stake is that they are almost identical. This finding is supported by previous EUIPO decisions.

• Thus, given the quasi-identity between the signs, even a minimum of similarity between the goods and services must be taken into account.

• The Office’s conclusion regarding the opponent earlier rights’ reputation is too severe considering the important amount of information containing the depiction of the earlier rights.

Reasons

Admissibility of the appeal

15. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Article 8(1)(b) EUTMR

16. Under Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

17. A likelihood of confusion lies in the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

18. A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

19. The opponent argues that taking into account the interdependence rule, a likelihood of confusion may exist if the signs are almost identical and even if the goods and services are not similar (see statement of grounds, page 8, penultimate paragraph).

20. It is true, as also referred to by the applicant, that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (17/09/2015, C-548/14 P, GRAZIA / GRAZIA, EU:C:2015:624, § 45 and the case‑law cited therein).

21. However, as correctly pointed out by the Opposition Division, a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered by the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative (20/01/2021, T-328/17, RENV, BBQLOUMI (fig.) / HALLOUMI et al., EU:T:2021:16, § 47 and the case‑law cited therein; 12/10/2004, C‑106/03, Hubert, EU:C:2004:611, § 51).

22. In other words, even if the signs are identical and the earlier marks were to have the highest reputation possible, it is still necessary for the applicability of Article 8(1)(b EUTMR to prove that the goods and services in question are similar to some degree (26/09/2014, T-490/12, Grazia, EU:T:2014:840, § 31).

23. Therefore, the Board will first assess if the Opposition Division erred in finding the contested goods dissimilar to the services of the earlier mark.

Comparison of the goods and services

24. The goods and services to be compared 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.	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.
    	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
    Contested sign	Earlier IR designating EU Earlier Spanish mark

25. Goods and services may not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification (in accordance with Article 33(7) EUTMR).

26. In assessing the similarity of the goods and services concerned, all the relevant features of the relationship between them should be taken into account, including, inter alia, their nature, their intended purpose, their method of use, and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned, or the fact that the goods are often sold in the same specialist sales outlets, which is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (18/06/2013, T‑522/11, Apli-Agipa, EU:T:2013:325, § 32 and the case‑law cited) or that the goods and services are usually produced/rendered by the same manufacturer/service provider.

27. Insofar as the opponent argues that the goods and services are connected or closely linked, it should be noted that if the goods and services are not similar the degree of connection is irrelevant for the purpose of Article 8(1)(b) EUTMR (16/11/2006, T‑278/04, Yuki, EU:T:2006:351, § 57 last sentence).

28. The opponent argues that the goods and services are not dissimilar in their nature.

29. However, precisely because of the goods being tangible and the services intangible, their nature is different. Nonetheless, in certain circumstances, even goods and services may be found to be similar. They may be complementary or compete with each other (18/12/2008, C‑16/06 P, Mobilix, EU:C:2008:739, § 66).

30. Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44).

31. By definition, goods and services intended for different publics cannot be complementary (22/06/2011, T‑76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T‑361/11, Dolphin, EU:T:2012:377, § 48). In the case at hand, and contrary to the consideration in the contested decision, the goods and services are, partially, aimed at the same public.

32. However, although it is true, as asserted by the applicant, that the payment of the contested goods in general will require financial support and thus that the opponent’s services may be essential or important for the purchase of the contested goods, this does not mean that therefore these services are essential or important for the use of the contested goods in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. Already therefore, the goods and services are not complementary.

33. Furthermore, the goods and services are not in competition. In order for the goods and services to be regarded as in competition, there must be an element of interchangeability (04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 42-43 and the case‑law cited). However, the purpose of the Class 36 services at hand is clearly different from the purpose of the Class 7 goods; they are not in competition.

34. The opponent reiterates its argument before the Board that there is an important number of agricultural machine suppliers offering customers financial support. However, as correctly pointed out by the Opposition Division, the financing activity offered by the agricultural machine suppliers has one goal, which is finding consumers a solution to purchase its own goods. This financial support cannot be considered as financial services in the sense of the Nice Classification. It is rather unlikely – and certainly not common - that the Class 7 manufacturers as mentioned in the file will provide financial support to the relevant public so it is able to purchase the goods of its competitor.

35. Furthermore, the opponent itself alleged before the Opposition Division that it is not unusual that machinery and equipment companies themselves offer customers the required financing in connection with their own financial suppliers or banking entities (see observations of 23 July 2019, page 5, paragraph 2). This seems to suggest that the Class 7 producers merely act as intermediaries between the companies that actually render the Class 36 services and the relevant public that wishes to purchase the Class 7 goods of this specific producer.

36. The opponent also argued before the Opposition Division that ‘an important part of the most widely known agricultural machine suppliers offer financial services themselves as customer service, these being announced even on their websites’ (see observations of 23 July 2019, page 5, paragraph 3). In support of its assertion, the opponent adds parts of seven different websites and their corresponding hyperlinks.

37. However, firstly, it does not follow from the corroborating evidence on file (that is the evidence contained within the observations of 23 July 2019, pages 5-8) that the Class 7 producers mentioned therein render Class 36 services and do not merely act as intermediaries between the companies that actually render the Class 36 services and the relevant public that wishes to purchase the Class 7 goods of this specific producer. In this respect the Board notes that the burden is on the opponent to provide clear and precise evidence, in particular when it does not concern mass consumption goods but rather a specific field. As to the hyperlinks, they can be modified at any time. Furthermore, neither the Board nor the applicant can be obliged to investigate on its own motion the content of the documents to which the hyperlinks refer.

38. Secondly, and as a separate ground for not accepting the validity of the opponent’s allegation, the practice of seven of the, allegedly, most widely known agricultural machine suppliers does not demonstrate that it is common within the European Union (or Spain) for Class 7 manufacturers to provide also Class 36 services.

39. Insofar as the opponent refers to ten trade mark registrations covering both Class 7 and Class 36, this cannot demonstrate that the signs are used on the market both for Class 7 and Class 36 goods and services and less that it is common for companies to be a producer of Class 7 goods and a Class 36 service provider.

40. Insofar as the opponent stresses its involvement in financing and insuring clients in the agricultural and farming sectors, this may be true. However, this mere assertion does not justify a finding that consumers of the Class 7 goods will think that the responsibility for the production of those goods as well as the provision of those services lies with the same undertaking. Concluding otherwise would imply that the Class 36 services are potentially similar to a vast range of different goods (and services). In the case at hand, the opponent has not provided any evidence showing that it is common for the provider of the Class 36 services at issue also to produce the Class 7 goods at issue.

41. Insofar as the opponent argues that it is the main sponsor of several agricultural events, this may be true but has no relevance in establishing a similarity between the Class 7 goods and Class 36 services at issue.

42. In light of the foregoing, the Board concurs with the Opposition Division that the contested Class 7 goods and the Class 36 services of the earlier marks are dissimilar.

43. Therefore, contrary to the opponent’s arguments, the Opposition Division was not obliged to make a comparison of the signs. Since the goods and services are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled. The opposition must be rejected insofar as it is based on this ground.

Article 8(5) EUTMR

44. According to Article 8(5) EUTMR, an opposition to an application for a European Union trade mark may be founded on an earlier EU trade mark which has a reputation in the European Union or on an earlier national trade mark which has a reputation in the Member State concerned, even though the earlier mark is registered for goods or services which are not similar to the goods or services covered by the application for an EU trade mark, provided that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark.

45. The application of Article 8(5) EUTMR is subject to the following cumulative conditions:

1. the earlier mark claimed in the opposition must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark;

2. the marks at issue must be identical or similar;

3. there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;

4. there is no due cause justifying the use of the mark.

46. Since the above conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 30).

47. The types of injury referred to in Article 8(5) EUTMR, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 23; 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29; and 41; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 30).

Reputation

48. A trade mark has a reputation within the meaning of Article 8(5) EUTMR if it is known by a significant portion of the public concerned by the products or services covered by that trade mark (06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 24). In examining the reputation, all the relevant facts of the case must be taken into consideration, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (28/06/2018, C‑564/16 P, DEVICE OF A JUMPING ANIMAL (fig.) / PUMA (fig.) et al., EU:C:2018:509, § 56) and the case‑law cited therein).

49. The reputation of an earlier mark must be established as at the filing date of the application for the contested mark. This does not exclude the possibility that account may be taken of evidence which is subsequent to the filing date of the application for registration. However, this evidence should enable one to draw conclusions regarding the situation as it was on the filing date (16/10/2018, T‑548/17, ANOKHI (fig.) / Kipling (fig.) et al., EU:T:2018:686, § 103; 104 and the case-law cited).

50. Moreover, ‘reputation’ cannot be proven by means of probabilities or suppositions but must be demonstrated by means of solid and objective evidence.

51. However, an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, may be insufficient to constitute proof of the accuracy of those facts (16/10/2018, T‑548/17, ANOKHI (fig.) / Kipling (fig.) et al., EU:T:2018:686, § 96 and the case-law cited).

52. The Opposition Division considered that the opponent’s evidence almost exclusively referred to the word and figurative mark ‘ABANCA’ and did not contain sufficient information to conclude that the earlier marks have a reputation.

53. In the appeal’s statement of grounds, the opponent argues that the evidence as filed before the Opposition Division clearly demonstrates that the earlier marks enjoy recognition. Before the Board the opponent submitted the same amount of annexes with the same ‘title’ as before the Opposition Division:

Annex 1: The opponent’s figurative trade marks are depicted in all the wide-spread network of cash points and as a corporate logo;

Annex 2: The opponent’s media coverage;

Annex 3: Marketing and advertising investment in the promotion of the opponent’s earlier rights;

Annex 4: Wide presence in IP media and Internet of the A and ABANCA (fig.) marks;

Annex 5: Global commitment to the development of the agricultural sector;

Annex 6: Important sponsorship activity in sport, base sport, cultural and educational projects and

Annex 7: Recognition of the opponent’s reputation by a Spanish Authority.

54. Allegedly, these aforesaid annexes as submitted before the Board include additional information in order to reinforce the recognition. In addition, after the time limit to submit the statement of grounds, the opponent submitted a decision of the EUTM Court in Alicante as well as another DVD containing, allegedly, the documentation previously provided.

55. It should be noted that the opponent does not clearly indicate in the statement of grounds what pieces of information are additional as to demonstrate recognition of the earlier marks. However, after having compared the original evidence with the evidence as submitted together with the appeal’s statement of grounds, the Board considers that to the extent there is new evidence within the Annexes 1-7, this is merely supplementary and admissible evidence in accordance with Article 95(2) EUTMR and Article 27(4) EUTMDR.

56. As to the decision of the EUTM Court in Alicante submitted on 17 July 2020, this decision is dated 19 June 2020 and was shortly afterwards forwarded to the Office. Taking into account that this evidence could not have submitted within the time limit to submit the statement of grounds, this evidence is acceptable.

57. Finally, as to the content of the DVD sent on 17 July 2020, this will be discussed after the evidence as mentioned above is assessed.

Use of the sign

58. The Board firstly concurs in essence with the description of the evidence in the contested decision.

59. Most evidence refers to the sign or the word ‘ABANCA’. It should be noted that the opponent, even though, as follows from the file, the proprietor of trade mark registrations, did not base its opposition on any of these marks.

60. Notwithstanding the previous paragraph, the acquisition of a reputation may be a result of its use as part of another registered trade mark (07/07/2005, C‑353/03, Have a break, EU:C:2005:432, § 30-32; 07/09/2006, T‑168/04, Aire limpio, EU:T:2006:245, § 73- 74).

61. Although the opponent did not rebut the Opposition Division’s reasoning leading to the finding that use of the word or figurative mark ‘ABANCA’ does not demonstrate use or reputation of the earlier marks, the Board will have to assess on its own motion if reputation of the IR designating the EU  or the Spanish mark is acquired as part of the mark  in Spain (in particular Galicia). At this stage the Board will presume that the sign enjoys a reputation in a part of Spain for the Class 36 services at issue.

62. As also pointed out in the contested decision, 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 latter mark must be used in forms which differ from the former mark solely by insignificant variations so that the two signs could be regarded as broadly equivalent (19/06/2019, T‑307/17, DEVICE OF THREE PARALLEL STRIPES (fig.), EU:T:2019:427, § 61-63).

63. The earlier IR designating the EU forms the beginning of the figurative mark . Moreover, the component ‘BANCA’ as such is rather weak for the Class 36 services at issue since it means, inter alia, ‘the economic activity of financial operations carried out through banks’ or ‘a group of banking institutions’ (see https://dle.rae.es/banca). Nonetheless, as correctly pointed out by the Opposition Division, the combination of the figurative letter ‘A’ followed immediately by the string of letters ‘ BANCA’, the latter not being merely ancillary within the mark as a whole, creates a different overall impression from the figurative earlier mark.

64. In other words, a presumed reputation of the sign does not imply automatically a reputation of the earlier IR designating the EU (by analogy, Opinion of the Advocate General in C-353/03, Have a break, EU:C:2005:61, § 43; 16/09/2015, C‑215/14, Nestlé KIT KAT, EU:C:2015:604, § 66 and reference therein to Opinion of the Advocate General in C-215/14, Nestlé KIT KAT, EU:C:2015:395, § 49). This applies equally, if not more with respect to the earlier Spanish mark .

65. There is no objective and solid evidence on file showing that the earlier marks have obtained a reputation as a result of use of the word or figurative mark ‘ABANCA’ nor did the opponent provide any specific allegations before the Opposition Division or the Board in this respect.

66. Notwithstanding that most of the evidence refers to the figurative or word mark ‘ABANCA’, there is also evidence referring to the earlier marks. The Board will now proceed to assess if this latter use is sufficient to demonstrate their reputation.

Use of the earlier marks  and

67. For the purpose of the present assessment hereunder, the Board will refer to the earlier marks independently of whether the documents show use of either the earlier mark or the earlier mark or the same figurative element but in a different colour than the two earlier marks.

68. The opponent argues that the Opposition Division’s conclusion of not accepting recognition of the earlier marks is too severe, especially taking into account that there is an important amount of information containing the depiction of the earlier marks.

69. Before the Board the opponent submitted some additional arguments and evidence with respect to the original documents 1-7 (before the Board referred to as Annexes 1-7). However, in essence, its line of argumentation was as made before the Opposition Division with respect to the content of the documents.

70. The Board will now proceed to assess the evidence on file.

• Annex 1 (cash points and corporate logo)

71. The opponent argues, as before the Opposition Division, that there are nearly 1 000 cash points throughout Spain with the largest network in Galicia and the A (fig.) mark is also the identifying element in the main entrance of many branch offices.

72. As correctly considered by the Opposition Division, this annex contains undated photographs of ATMs, as well as exteriors and interiors of branch offices bearing the earlier marks. Most photographs also show use of the mark on the exteriors of the branch offices and ATMs.

73. Insofar as the opponent refers to the use of ATMs in bus and train stations as well as airports, the evidence on file shows that the earlier marks are only partially depicted on these machines whereas the figurative mark ‘ABANCA’ is shown completely.

74. Insofar as the opponent refers to the undated guidelines for the placement and use of the ‘ABANCA (fig.) logo at ABANCA’s offices, they further corroborate the evidence of the photographs.

75. Annex 1 also contains, in relation to education projects and sports sponsorship, one undated and unsourced photograph. However, the Board notes that this single photograph seems to be cut off at the earlier mark (the figurative letter ‘A’) end; one can still perceive a small part of what most likely is the upper left part of the letter ‘B’ in .

76. The evidence concerning sports, cultural and educational projects will be further assessed in Annex 6 hereunder. This also applies with respect to the opponent’s argument that the earlier mark is also used for its charitable foundation ‘Afundacion’ and corroborated, in Annex 1, with undated photographs.

77. Insofar as the opponent stresses before the Board that the earlier marks also appear on various credit and debit cards, this is true ( ; the cards also showing the figurative mark ‘ABANCA’ ). It is to be noted that the opponent did not provide any information on the amount of credit cards and debit cards in circulation by the filing date. Insofar as the Board is able to link the cards with a time of use, the opponent submitted two card order forms which are after the filing date (namely 6 December 2018 and 14 May 2019, 5 000). Moreover, contrary to the opponent’s allegation, they show a relatively low number of cards ordered (namely 7 000 and 5 000 respectively).

• Annex 2 press coverage 2014-2018 

78. The opponent provided the same evidence and reasoning as before the Opposition Division and did not provide any allegation as to what extent the Opposition Division erred in its description of the evidence in document 2.

79. The Board agrees with the Opposition Division that with the exceptions of one article dated 27 June 2014 and published in La Voz de Galiciaand 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.

• Annex 2: press coverage, year 2019

80. Insofar as the opponent submitted before the Board news articles of 2019, leaving aside that they are all dated after the filing date, this evidence contains the same flaw as the news articles between 2014 and 2018. The 2019 evidence – which also includes some reference to the opponent’s sponsorship in sports and involvement in education and teaching - almost only refers to the opponent’s mark ‘ABANCA’, either as a word mark or as a figurative mark.

81. Insofar as the evidence shows the earlier mark on the upper part of a soccer T-shirt sleeve during a soccer game, it is to be noted that this concerns an extract from16 November 2019. Taking into account that it is common for football clubs to change T-shirts each football season, this evidence is already for this reason irrelevant for proving use, and less recognition, at the filing date.

• Annex 3: marketing and advertising investment

82. The opponent provided the same evidence and reasoning as before the Opposition Division.

83. The extracts in these documents, insofar they refer to a trade mark, refer to the figurative mark ‘ABANCA’ and not to the earlier marks.

• Annex 4 IP media and Internet presence of the A and ABANCA (fig.) marks

84. Firstly, as to the evidence submitted before the Opposition Division, this was described as follows:

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

85. Before the Board, the opponent alleges that its App ABANCA – Banca móvil has been downloaded by more than 1 million people.

86. It is true that the extract submitted before the Board shows that the App has been installed more than 1 million times.

87. However, firstly, the Board notes that the date is well after the filing date. Before the Opposition Division, a few months before the filing date, the extract of Google play mentions more than 500 000 downloads.

88. With respect to the amount of more than 500 000 downloads, according to the opponent itself, before the Opposition Division the App ABANCA – Banca móvil in Google Play had at that time 33 329 users.

89. Consequently, there is a rather big difference in the numbers of downloads and actual users. The difference is not explained by the opponent. Although speculative, it may be caused by the fact that one user had to download and install various updates and/or has the same App on different devices.

90. Finally, the Board adds that no information is provided with respect to the App Store and the number of downloads and users of the opponent’s App.

91. In light of the foregoing - leaving aside the question of the extent of probative value of these screenshots to demonstrate a reputation of the earlier marks on their own - these extracts do not give a clear indication as to the amount of people who are using or have been confronted with the earlier marks for any of the services at issue.

• Printouts from the opponent’s website, dated 22 October 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 October 2018 and it is stated 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.

92. Before the Board, the number of followers on social media has been updated by the opponent, but the earlier marks are not depicted on any of the pages.

93. Insofar as the opponent submitted before the Board three extracts concerning three third‑party advertisements – apart from that in two (Apple Pay and Google Pay), the figurative mark ‘ABANCA’ dominates – the opponent did not provide any date as to when these advertisements were used (they could very well have been shown to the public after the filing date of the contested mark) nor is there any information as to the circulation of these advertisements.

94. Insofar as the opponent submitted before the Board information on the ABANCA Pay System, apart from that to the extent that it shows dates, they are after the filing date, it does not show the earlier marks.

• Annex 5: Global commitment to the development of the agricultural sector

95. As correctly mentioned in the contested decision, internal documents (partly undated and partly dated 2018) as well as press articles and social network printouts show that the opponent has created an Agro division, which provides financial support to boost the agricultural sector. It is to be added that in these documents reference is made to the word or figurative mark ‘ABANCA’, not the earlier marks.

• Annex 6 : Sponsorship activity

96. The evidence, including the additional evidence, mainly refers to sport, educational or cultural sponsorship activities funded by the opponent which show the composition or the single word or figurative mark ‘ABANCA’.

97. The earlier marks as such are either not shown or, when shown, the extract is not dated (see the brochures concerning the opponent’s mobile app) or dated after the filing date (see the two photographs of a football match showing the earlier mark on the sleeves of the football shirts of Deportivo ABANCA; they are at least a year later than the filing date and thus concern a different football season from that at the filing date).

98. As to the documents concerning the figurative mark ‘Afundacion’, the Board adds that:

1. for the same reasons as given above concerning the reputation of the earlier marks (see paragraphs 58-65) in , use of the figurative mark ‘Afundacion’ does not justify use or reputation of the earlier marks;

2. the services rendered linked to ‘Afundacion’ are not Class 36 services and, in any event;

3. the opponent does not submit any further information on the extent of use of the sign ‘Afundacion’.

99. Therefore, the use of the figurative mark ‘Afundacion’ is not capable of strengthening the reputation of the earlier marks.

• Annex 7: Recognition of the opponent’s reputation by a Spanish Authority

100. As to the two decisions issued by the Spanish Trade Mark Office as referred to before the Opposition Division, these decisions refer to the opponent’s reputed ‘ABANCA’ marks. However, the earlier marks at issue are different from those before the Spanish trade mark authorities.

101. As to the 2019 decision, submitted for the first time before the Board, the opponent argues that the Spanish trade mark authorities considered that there was a likelihood of confusion between the contested mark and the opposing trademark M 3 508 886 as well as that the former would take unfair advantage of the reputed earlier mark.

102. The opponent does not provide any further information as to the opposing trademark M 3 508 886 before the Spanish trade mark authorities and which was not used as the basis of the opposition before the Office. However, the Board notes that it is evident from the file that it concerns the earlier mark ; the priority date of the earlier IR designating the EU is based on the filing date of the Spanish trademark application M 3 508 886 (see paragraph 5, first indent, above).

103. Notwithstanding the last sentence of the previous paragraph, the decision of the Spanish trade mark authorities of 10 December 2019 is almost a year and half after the filing date of the contested mark (14 June 2018). Secondly, and more importantly, the decision of the Spanish trade mark authorities neither provides any information as to what evidence was submitted to prove reputation nor any reasoning justifying a finding of reputation. Under such circumstances, the 2019 decision by the Spanish trade mark authorities cannot outweigh the considerations above concerning the evidence in the other documents.

104. As to the 2020 decision of the EUTM Court in Alicante, it should be noted that the opponent’s earlier EUTM and Spanish mark in that case concerned the figurative mark ‘ABANCA’ as well as that the reputed character of these marks was accepted by the Court merely because the reputation had been recognised by the other party.

105. Finally, as to the content of the DVD sent on 17 July 2020, this contains 16 documents of which several were already provided previously by the opponent, namely documents 8-11 and 13-14.

106. As to the other documents, the opponent shortly described their content by means of an index. The opponent did not provide any further reasoning or clarification as to the content of these documents and why they could serve to prove reputation of the earlier marks. These documents are:

• Documents 1-3: extracts from or related to the ‘REGISTRO MERCANTIL CENTRAL’ [central commercial registry];

• Document 4: a screenshot of an undated extract of dominio.es showing that ‘abanca.es’ is a registered domain name since 21 May 2009 in the name of a certain ‘E.Dorado’ and which seems to be related to the other party in the case as decided by the EUTM Court on 19 June 2020 in Alicante (see paragraph 11 above and, EUTM Court Judgment untranslated, page 9, point 2 of the Judgment);

• Document 5: screenshots of the ‘waybackmachine’ which do not provide the information as alleged by the opponent;

• Document 6: an extract of EUTM No 12 674 081 ‘ABANCA’;

• Document 7: an extract of the Spanish trade mark registration No 3 510 039 ;

• Document 12: a press release on the new name of the stadium ‘ABANCA BALAÍDOS’. This document, of 4 June 2018, only refers to the word or figurative mark ‘ABANCA’;

• Documents 15-16: two untranslated extracts between the opponent and Abanca Servicios Delegados, which are the same parties as mentioned in the EUTM Court Judgment of 19 June 2020 (see paragraph 12 above).

107. On the face of it, many documents contained within the 2020 DVD, if not all, are not relevant to the assessment of reputation of the earlier marks (or the similarity of goods and services) and thus do not seem to be relevant to the outcome of the case. Consequently, most, if not all, of these belatedly filed documents are not to be taken into account in accordance with Article 95(2) EUTMR and Article 27(4) EUTMDR. Moreover, even if the above considerations were not sufficient to partially or entirely refuse to take into account the content of the 2020 DVD, it follows from the description of this evidence in the previous paragraph and the assessment of the other evidence that these 2020 DVD documents cannot in any way serve to demonstrate reputation of the earlier marks at any point in time.

Evidence as a whole

108. The evidence on file concerns the evidence submitted before the Opposition Division in combination with the supplementary evidence as submitted before the Board – but which in essence is the same as filed before the First‑Instance Department.

109. This evidence on file and to the extent it shows use of the earlier marks can be regarded at most as secondary evidence which may be able to support, where relevant, direct evidence showing that the earlier marks are known by a significant portion of the public concerned in relation to the services at issue.

110. However, the opponent failed to submit any direct evidence, such as surveys or market research and/or independent statements from chambers of commerce or industry.

111. In light of the foregoing assessment, the evidence as a whole is clearly insufficient to justify a finding that the earlier Spanish mark or the earlier IR designating the EU in relation to any of the Class 36 services covered by those trade marks is known by such a significant portion of the public concerned that the reputation threshold has been reached.

112. Since the opponent did not prove reputation of its earlier marks, one of the necessary conditions of Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar it is based on this ground.

Conclusion

113. The Board endorses the finding of the Opposition Division that the grounds for opposition – Article 8(1)(b) EUTMR and Article 8(5) EUTMR – cannot succeed.

114. Consequently, the appeal is dismissed.

Costs

115. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the opposition and appeal proceedings.

116. These consist of the applicant’s costs of professional representation of EUR 550.

117. As to the opposition proceedings, the Opposition Division ordered the opponent to bear the applicant’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 850.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to pay EUR 550 for the applicant’s costs in the appeal proceedings. The total amount to be paid by the opponent in the opposition and appeal proceedings is EUR 850.

Signed S. Stürmann

Signed H. Salmi

Signed C. Negro

Registrar: Signed H.Dijkema