OPPOSITION No B 3 087 806

Skandia Brands AB, Lindhagensgatan 86, 10655 Stockholm, Sweden (opponent), represented by AWA Sweden AB, Jakobsbergsgatan 36, 111 44 Stockholm, Sweden (professional representative)

a g a i n s t

PSA Payment Services Austria GmbH, Rennweg 46-50, 1030 Wien, Austria (applicant), represented by Sylvia Unger, Ferstelgasse 1/1, 1090 Wien, Austria (professional representative).

On 19/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 806 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 and services of European Union trade mark application No 18 005 409 . The opposition is based on European Union trade mark registration No 16 001 471  . The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

a) The goods and services

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

Class 35: Promotional sponsorship.

Class 36: Insurance; insurance brokerage; insurance information relating to damage prevention work; management of captive insurance companies; financial services; services in relation to monetary affairs; bank affairs; securities trading services; fund management; asset management; real estate affairs; securities brokerage including stocks and bonds brokerage; estate management; real estate agency; bail bonding services; charitable fund-raising, financial sponsorship; investment of funds for charitable purposes; sponsoring of entertainment events, sporting events and cultural events; sponsoring via support for scientific research or services relating to care or fostering of children or young people with the aim of improving the mental health of the child or young person, preventing marginalisation, supporting damage prevention services in the fields of traffic safety, crime prevention or help against crime.

Class 41: Education, providing of training; entertainment; sporting and cultural activities; organisation and arranging of events for cultural, entertainment or sporting purposes; fetes (organisation of -) for cultural purposes; exhibitions for cultural or educational purposes; health and wellness training.

Class 42: Scientific research and development in the fields of preventive health care, care or fostering of children or young people for the purpose of improving the mental health of the child or young person, preventing marginalisation, supporting damage prevention services in the fields of traffic safety, crime prevention or help against crime.

The contested goods and services are the following:

Class 9: Mechanisms for coin-operated apparatus; coin-operated mechanisms; coin-operated mechanisms for vending machines; automated teller machines [ATM]; automated teller machines [ATM]; apparatus for electronic payment processing; computer programmes relating to financial matters; electric and electronic apparatus and installations for receiving and paying cash and payments in cashless money transactions; computer programs for use with the aforesaid goods.

Class 35: Administrative data processing; computerised data verification; compilation and systemization of information into computer databases.

Class 36: Automated telling machine services; financial and monetary services, and banking; financial transfers and transactions, and payment services; electronic payment services; electronic wallet services (payment services); bank card, credit card, debit card and electronic payment card services; conducting of financial transactions; conducting cashless payment transactions; clearing services for payment transactions; contactless payment services; electronic funds transfer; financial services relating to the withdrawal and depositing of cash; money transfer; electronic funds transfer; banking; computerised banking services; electronic banking services; automated banking services; card accessed banking services; electronic funds transfer; electronic funds transfer; card services; card operated financial services; financial services relating to bank cards; bank card services; money transfer services utilising electronic cards; clearing-houses, financial; bankers clearing house services; credit card and debit card services; debit card payment services; processing of debit card payments; processing debit card transactions for others; payment processing.

Class 38: Electronic messaging; communication of information by electronic means; transfer of information and data via online services and the internet; data transmission and data broadcasting; electronic transmission of data; data streaming; transmission of data by electronic means; transferring information and data via computer networks and the internet; all of the aforesaid services in relation to financial services and electronic payments.

Class 42: Updating and maintenance of computer software and programs; creation, updating and adapting of computer programs; writing and updating computer software; writing of computer programs; creation, maintenance and adaptation of software; installation, maintenance and updating of computer software; installation, maintenance, updating and upgrading of computer software; software in relation to the installation and operation of automatic teller machines; all of the aforesaid services in relation to financial services and electronic payments.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 and services in Classes 9, 35, 38 and 42

The contested goods in Class 9 are essentially mechanisms for coin-operated apparatus, automated teller machines [ATM] and computer programmes, including programs related to financial matters.

The contested services in Class 35 basically consist in the collection and systematization of data and are offered as administrative support to companies to help them running their back office activities.

The contested services in Class 38 have the purpose to provide communications by way of access to, or the transmission of data on communication networks in relation to financial services and electronic payments.

The contested services in Class 42 relate to the installation and management of computer software in relation to financial services and electronic payments.

The opponent’s mark essentially covers promotional services for others (Class 35), insurance, financial and real estate services (Class 36), education, training, entertainment and sporting and cultural activities (Class 41) and scientific research and development restricted to the field of health care or care of children and young people (Class 42).

The goods and services under comparison do not have relevant points of contact that could justify finding a level of similarity between them. They are not complementary in the relevant sense, nor do they coincide in distribution channels. Given their different nature, purpose and method of use, the relevant public would not perceive these goods and services as having a common commercial origin. It follows, that these gods and services dissimilar.

In particular, even though some of the contested services in Class 36, such as bank card, credit card, debit card and electronic payment card services and some of the opponent’s goods in Class 9 such as automated teller machines [ATM] may seem to be somewhat related, e.g. they relate to the withdraw of money, this link is too remote to render those goods and services similar. Consumers are aware of the fact that financial institutions are not responsible for the technological aspects of the manufacturing of ATMs (by analogy 07/05/2012, R 1662/2011-5, ‘CITIBANK’, paragraph 29). The specific knowledge and expertise required for the provision of the services and the manufacturing of the goods in question is different. Therefore, the conclusion of dissimilarity also applies to these specific conflicting goods and services.

Contested services in Class 36

Despite the differing wording, the contested financial and monetary services, and banking; banking can be considered synonyms, and thus are identical, to financial services; services in relation to monetary affairs; bank affairs.

The remaining automated telling machine services; financial transfers and transactions, and payment services; electronic payment services; electronic wallet services (payment services); bank card, credit card, debit card and electronic payment card services; conducting of financial transactions; conducting cashless payment transactions; clearing services for payment transactions; contactless payment services; electronic funds transfer (repeated four times); financial services relating to the withdrawal and depositing of cash; money transfer; computerised banking services; electronic banking services; automated banking services; card accessed banking services; card services; card operated financial services; financial services relating to bank cards; bank card services; money transfer services utilising electronic cards; clearing-houses, financial; bankers clearing house services; credit card and debit card services; debit card payment services; processing of debit card payments; processing debit card transactions for others; payment processing are included in the broad categories of, or overlap with, the opponent’s financial services or bank affairs. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are directed at the public at large and business customers with specific professional knowledge or expertise.

Since these services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (inter alia, 03/02/2011, R 719/2010-1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444, §21).

c) The signs

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).

Both signs are purely figurative marks, both containing two circles (equally sized in each sign) placed one above the other on the same vertical line and separated by a gap which is slightly shorter in the contested sign. In the earlier mark, the circles are white and placed against a green rectangular background. In the contested mark, the upper dot is of a light green colour and the one at the bottom is in blue colour.

Neither of the graphic forms of the signs has a discernible meaning. Nonetheless, it cannot be excluded, as the applicant claims, that since the circles in the earlier mark are placed at a greater distance from each other they may be perceived as a colon. If that were the case, however, there would be no reason to argue differently in respect of the two circles in the contested sign. Indeed, although the gap between the circles in the contested mark is slightly shorter than in the earlier mark, it is still sufficient to separate the circles which clearly appear detached from each other as they are in the punctuation mark in question.

Be it as it may, the figurative marks under comparison do not bear any connection in respect of the relevant services.

That being said, it must also be noted that circles are basic geometrical shapes and as a general rule, simple abstract graphic elements consisting of just one or two basic geometrical forms are inherently weak elements (17/05/2013, T-502/11, Stripes, EU:T:2013:263, § 58; 19/06/2017, R 2056/2016-2, Device of closed ring (fig.) / G (fig.), § 34; 03/06/2016, R 1453/2015-2, Device of two overlapped ellipses (fig.) / Device of two separated ellipses (fig.), § 62).

The principle above outlined is relevant in the present case, since both marks consist, indeed, of the repetition of two basic geometrical shapes (circles), which in the earlier mark appear against an additional element, that is a rectangular shaped background. In the light of the foregoing and even taking into account the peculiar colour combination specific to each mark, the degree of distinctive character of both marks is deemed to be below average. This conclusion holds true even in the event that the two circles were associated to the idea of a colon, since punctuation marks as such are not endowed with a normal degree of distinctive character (by analogy, 30/09/2009, T-75/08, !, EU:T:2009:374).

The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, it cannot be denied that both signs comprise two circles which are aligned in the same way. However, the conflicting signs clearly diverge in their colours. In the earlier mark the circles are both of the same colour (white) in striking contrast against the dark green background, whilst in the contested sign the two circles are not placed against a contrasting background and are depicted in two different colours, light green and blue. Moreover, the green colour present in both marks is of a noticeably different hue, which contributes to further visually distancing the signs.

The differences highlighted above result in a different visual overall impression of the two marks. It is also observed that the coincidence in the geometrical shapes of the two circles is not particularly strong since they are basic geometrical forms and, therefore, weak elements.

In conclusion, the signs are visually similar only to a low degree.

Aurally, it is observed that purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to what has been stated above. Both signs include the same geometrical shape repeated twice and are thus similar to the extent that they convey the notion of two circles. In other words, they share the semantic content that the relevant public may attribute to such geometric shapes. The same conclusion will be reached where the marks were interpreted as depicting the same punctuation mark (a colon).

However, in both scenarios, since the coincidence between the signs rests in weak elements, the conceptual similarity is in any case very low (by analogy, 17/05/2013, T-502/11, Stripes, EU:T:2013:263, § 50-51; 03/06/2016, R 1453/2015-2, Device of two overlapped ellipses (fig.) / Device of two separated ellipses (fig.), § 73; 19/06/2016, R 2056/2016-2, Device of closed ring (fig.) / G (fig.), § 49).

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 distinctiveness as result of its long standing and intensive use in the European Union. 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).

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 Annex 1-3: Printouts from the website of the Swedish authority ‘Riksarkivet’ (the Swedish National Archives), the encyclopaedia ‘Nationalencyklopedin’ (NE) and Wikipedia containing information regarding SKANDIA, in English and Swedish (with a translation of the relevant parts). As indicated in these documents, the insurance company Skandia was founded in Sweden in 1855 and has since then expanded to a number of countries, inside and outside Europe.

 Annex 4: Report from ‘Svensk Försäkring’ (Swedish Insurance) in Swedish and with a translation thereof. The document bears the date 24/02/2020, and contains information and statistics regarding the Swedish insurance sector in the four quarters of 2019. In particular, in the translated part it can be read that ‘[t]he three largest companies within the competitive pension and life insurance sector – Folksam, Skandia and Electa - accounted for approx. 38 per cent of all premiums paid’. According to the diagram contained in this document, Skandia owned the second largest market share during the years 2017-2019.

 Annex 5: A report from the Swedish Bankers’ Associations, in English, titled ‘Banks in Sweden’ published in May 2020, in which the Swedish financial market and its major banking groups are described and analysed. Under the heading ‘The major banking groups’ at page 53, it is stated that Skandia is among ‘Nordic financial groups with a strong position in Sweden’. It is also stated that ‘[t]he largest bank-owned insurance company is SEB Trygg Liv, which together with […], Skandia […] has the largest market share for life insurance and unit-linked life insurance’ (page 56).

 Annex 6: Skandia’s annual report for 2019 as filed with ‘Bolagsverket’ (the Swedish Companies Registration Office) in 2020. It follows from page 74 that the opponent´s annual premium income from health, casualty and life insurance alone ranged from 972 to 1182 MSEK (Million Swedish Kroner) for the years 2015 to 2019 (translation on page 122).

 Annex 7: Extracts from Skandia’s annual financial and sustainability report for 2019 showing, inter alia, that the opponent has approximately 1.8 million pension and life insurance customers (page 126 of the documents) and that the accumulated value of house mortgages provided to customers exceeds 70.000 MSEK for 2019 (page 130).

 Annex 8A: A number of invoices covering the years 2016-2019 showing substantial amount paid by the opponent as investment in the development of various advertising campaigns for publication in major Swedish newspapers, media platforms and TV channels in Sweden.

 Annex 8B: A brochure dated 28/02/2019 (‘Fokus annonser’), showing the use of the earlier mark in the following fashion: and . in relation to, inter alia, house mortgages, deposit funds, asset management and life insurance products.

 Annex 8C: Selection of TV/web commercials and campaigns for SKANDIA, available at the opponent’s YouTube channel.

 Annex 9: Printouts from the opponent’s website (www.skandia.se) Selection of rewards and recognitions for the years 2016-2019, such as ‘Life insurance company of 2016-2019’, ‘Sweden's most satisfied corporate customers - occupational pension 2019’ and ‘Sweden's most satisfied private customers - Pension and life insurance 2017’. In the awards the trade mark SKANDIA is visible (e.g. or ).

 Annex 10: Press release by Söderberg & Partners (04/03/2020), a Swedish advisors and intermediaries of insurance and financial products, announcing that Skandia has been rewarded as the ‘Life Insurance Company of 2019’ (page 211).

 Annex 11: Printouts from the website fortune.com, showing Fortune’s (a media organisation) ‘Change the World’ list of 2016, on which Skandia was positioned as the twentieth company worldwide.

 Annex 12: Extracts showing that Skandia was given the ‘World Finance Global Insurance Awards 2018’ (Denmark) and 2014 (Sweden). As can be read in the document, World Finance is a quarterly print and online magazine providing comprehensive coverage and analysis of the financial industry, international business and the global economy. The magazine targets an audience of finance professionals, and corporate and private investors (page 223).

 Annex 13: Extracts from ‘Dagens Industri’ (DI), which, as can be read in the same document, is the largest business magazine in the Nordic region (page 233), showing that articles about Skandia are published on a frequent basis. In some of the articles published about the opponent, the earlier mark appears together with the mark ‘skandia’:

 Annex 14: Extracts from the website of the Financial Times, www.ft.com, showing multiple articles about ‘Skandia’ between 2014-2020.

 Annex 15: Article published on 5 November 2013 by IPE Magazine, in which Skandia is mentioned as one of the top-ranked brands in the Swedish life and pensions industry.

 Annex 16: Extracts from the website www.privataaffarer.se, of the ‘Privata Affärer’ finance magazine, showing articles about Skandia published during the period 2017-2020.

 Annex 17: Extract from the Swedish (daily) newspapers ‘Aftonbladet’, showing articles published on (or mentioning) the Skandia brand (2018-2019).

 Annex 18: Decision of 19 December 2008 from the Swedish Administrative Court of Patent Appeals, in case No. 05-369. The Court acknowledges that SKANDIA is notoriously well-known for insurance and financial services.

 Annex 19: Decision of 18/12/2014 from the Swedish Patent- and registration Office. On page 6, the Office concludes that the SKANDIA trademark has maintained its reputation for insurance and financial services.

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 or reputation through its use.

The earlier trade mark registration on which the opposition is based, is the figurative mark and, therefore, the assessment of enhanced distinctiveness must ascertain whether the registered form of the mark has become known by a significant part of the public for the relevant services covered by this earlier trade mark. In this respect, it has to be noted that the vast majority of the evidence submitted by the opponent refers to the use of the sign ‘skandia’ without depicting or mentioning the figurative earlier mark. In fact, the only documents where the depiction of the earlier mark appears are Annexes 8B and 13 (a promotional brochure and the extracts from a business magazine). However, even in those cases, the earlier mark appears together with the other mark ‘skandia’, within the following composition, and . The opponent should have at least demonstrated that the earlier sign on its own has independently acquired enhanced distinctiveness and that consumers, when confronted with the depiction in relation to the relevant services, will recognise it as belonging to the opponent (by analogy 12/02/2015, T-505/12, B, EU:T:2015:95, § 121).

However, from the evidence on file, it is not possible to deduce any information on whether the figurative mark in question was memorised or, at the very least, recognised by that public independently of the word element ‘skandia’ with which it appears. Moreover, as rightly pointed out by the applicant, there is no evidence of use whatsoever of this figurative element alone.

Accordingly, in the absence of further objective evidence (for example articles, market studies, invoices to prove any sales or other documents showing the turnover generated by the earlier mark as registered), the documentation provided is not enough to prove how intensive, geographically widespread or longstanding the use of the mark has been.

The Opposition Division, therefore, takes the view that the opponent has failed to submit any solid and objective evidence of any enhanced distinctiveness of its mark in the relevant territory.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

In the present case, the inherent distinctiveness of the earlier sign is considered to be below average since it principally consists of two white circles, which as such are basic geometrical shapes, against a green background (03/06/2016, R 1453/2015-2, Device of two overlapped ellipses (fig.) / Device of two separated ellipses (fig.), § 80; T-502/11, § 56-57; 19/12/2007, R 1132/2007-4, Rhomus (fig.) / framed square (fig.), § 26).

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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 contested goods and services have been found partly identical and partly dissimilar to the opponent’s services. The degree of attention of the relevant public is quite high.

The signs are visually similar to a low degree, aurally not comparable and conceptually similar only to a very low degree, and the earlier mark is endowed with a below average degree of inherent distinctiveness.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a 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).

The conflicting signs both include two circle aligned in the same way. However, as mentioned above, circles are basic geometrical shapes to which the public does not generally attribute a function of indication of origin. This conclusion is still valid even if the earlier mark additionally includes a rectangular background, since this addition will not render the mark as a whole more memorable to consumers.

As a result, the low visual similarity and the very low conceptual similarity are considered not sufficient to justify a risk of confusion, since the differences created by the signs’ differing figurative features outweigh the above mentioned commonalities.

In conclusion, considering the quite high degree of attention of the relevant public, the principle of interdependence between factors and notwithstanding the principle of imperfect recollection, there is no reason to assume that the relevant public in the European Union will be misled into thinking that services bearing the conflicting signs, even if identical, come from the same undertaking or from undertakings that are economically linked.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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, 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

Eva Inés PÉREZ SANTONJA

Claudia ATTINÀ

Martina GALLE

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.