OPPOSITION No B 3 100 117

MyJar Treasury Limited, 1st Floor, Waterloo House, Don Street, St Helier 1 1AD, Jersey (opponent), represented by Beck Greener LLP, Fulwood House 12 Fulwood Place, London WC1V 6HR, United Kingdom (professional representative)

a g a i n s t

MyMoneyJar Limited, 2 Marine Terrace, Dun Laoghaire A96P920, Ireland (applicant), represented by Hanna Moore + Curley, Garryard House 25/26 Earlsfort Terrace, Dublin 2 D02 PX51, Ireland (professional representative).

On 25/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 117 is partially upheld, namely for the following contested services:

Class 36: Financial research; financial assistance; financial analysis; financial planning; financial guardianship; computerised financial services; financial management of funds; collection of financial information; personal financial planning; financial planning and management; online financial transactions; consumer credit services; financial credit services; credit facility services; credit information services; credit and loan services; credit risk insurance; advisory services relating to loan services; advisory services relating to money management; advisory services relating to investments and finance; consultancy relating to educational financial assistance; computerised financial advisory services; financial advice and consultancy services; computerised financial data services; computerised financial information services; financial advisory services for individuals; financial information services relating to individuals; financial evaluation and analysis; information services relating to finance, provided on-line from a computer database or the internet; providing financial information on-line; provision of pricing information about commodities.

2. European Union trade mark application No 18 048 009 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 048 009 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 12 321 246 ‘MYJAR’ (word mark). The opponent invoked Article 8(1)(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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 321 246.

a) The goods and services

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

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial services; financial consultancy; investment services, consultancy and advice; private equity fund investment services, consultancy and advice; financial evaluation; financial planning services; financial management; debit and credit card services; banking services; management of portfolios of transferrable securities; electronic transfer of funds; exchanging money; mortgage and lending services; short-term small consumer loans; loan services; arrangement of loans; financing of loans; provision of loans; information, management, advice and assistance in respect of all the aforesaid.

The contested goods and services are the following:

Class 9: Software for arranging online transactions; application software for mobile devices; software and applications for mobile devices; computer application software for mobile telephones.

Class 35: Provision of online price comparison services; provision of online financial services comparisons; providing online marketplaces for sellers of goods and or services; provision of an online marketplace for buyers and sellers of goods and services.

Class 36: Financial research; financial assistance; financial analysis; financial planning; financial guardianship; computerised financial services; financial management of funds; collection of financial information; personal financial planning; financial planning and management; online financial transactions; consumer credit services; financial credit services; credit facility services; credit information services; credit and loan services; credit risk insurance; advisory services relating to loan services; advisory services relating to money management; advisory services relating to investments and finance; consultancy relating to educational financial assistance; computerised financial advisory services; financial advice and consultancy services; computerised financial data services; computerised financial information services; financial advisory services for individuals; financial information services relating to individuals; financial evaluation and analysis; information services relating to finance, provided on-line from a computer database or the internet; providing financial information on-line; provision of pricing information about commodities.

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 in Class 9

The contested software for arranging online transactions; application software for mobile devices; software and applications for mobile devices; computer application software for mobile telephones are dissimilar to all of the opponent’s services in Class 36.

Although many financial services are rendered with the use of software, for example online banking platforms, such software is an integral part of the financial services themselves and is not sold independently from them. Financial companies or institutions are not normally engaged in the development of highly specialised software. Rather, they would outsource the development of such software to IT companies. These goods and services are clearly provided by different undertakings with expertise in completely different areas, and target different users, which rules out any complementary relationship. Moreover, taking into account that by nature goods are different from services, they neither coincide in their purpose, method of use or channels of distribution.

Contested services in Class 35

The contested services (mainly online comparison of prices and financial services, providing online marketplaces for buyers and sellers of goods or services) are services provided by intermediaries, the purpose of which is to allow an informed purchase decision by consumers. These services provide prospective buyers with information on prices and financial services and give them access to a software platform which they can conveniently view and compare various goods/services before they make a purchase decision.

The opponent’s services are financial, insurance and real estate services as well as the related advisory services. The contested services are fundamentally different in nature and purpose from the provision of the opponent’s services. Contrary to the opponent’s opinion, the services under comparison target different publics with different needs. They are provided by different companies and are offered through different distribution channels. The services in question are not complementary, in the sense that one is indispensable to the other, nor in competition.

Therefore, the contested provision of online price comparison services; provision of online financial services comparisons; providing online marketplaces for sellers of goods and or services; provision of an online marketplace for buyers and sellers of goods and services are dissimilar to all of the opponent’s services at issue.

Contested services in Class 36

Financial planning (listed twice), loan services, financial advice and consultancy services, financial evaluation are identically contained in both lists of services.

The contested financial research; financial assistance; financial analysis; financial guardianship; computerised financial services; financial management of funds; collection of financial information; personal financial planning; financial management; online financial transactions; consumer credit services; financial credit services; credit facility services; credit information services; credit services; advisory services relating to loan services; advisory services relating to money management; advisory services relating to investments and finance; consultancy relating to educational financial assistance; computerised financial advisory services; computerised financial data services; computerised financial information services; financial advisory services for individuals; financial information services relating to individuals; financial analysis; information services relating to finance, provided on-line from a computer database or the internet; providing financial information on-line; provision of pricing information about commodities are included in, and are therefore identical to, the opponent’s broad categories of financial services and information, management, advice and assistance in respect of all the aforesaid (i.e. financial services) respectively.

The contested credit risk insurance is included in the broad category of the opponent’s insurance. 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.

The degree of attention is rather high in relation to the relevant services in Class 36, since such services are specialised services that may have important financial consequences for their users (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, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

c) The signs

MYJAR
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both signs are comprised of English words. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark consists of the verbal element ‘MYJAR’. The relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the earlier mark will be dissected into ‘MY’ and ‘JAR’, as both words are meaningful for the relevant public.

The common word ‘MY’ will be associated with ‘the first person singular possessive determiner’ (information extracted from Collins English Dictionary on 14/08/2020 at https://www.collinsdictionary.com/dictionary/english/my). The common word ‘JAR’ means ‘a glass container with a lid that is used for storing food’ (information extracted from Collins English Dictionary on 14/08/2020 at https://www.collinsdictionary.com/dictionary/english/jar). Therefore, the expression ‘MY JAR’ in the earlier mark will be understood as ‘a glass container of my own’. Since it has no direct or indirect link with the services at issue, it is distinctive to a normal degree.

The word ‘MONEY’ of the contested sign means ‘the coins or bank notes that you use to buy things, or the sum that you have in a bank account’ (information extracted from Collins English Dictionary on 14/08/2020 at https://www.collinsdictionary.com/dictionary/english/money). Taking into consideration the services at issue (which are financial services or insurance services related to financial credits), this verbal element is descriptive and non-distinctive as it indicates their nature or purpose. Therefore, the expression ‘MY MONEY JAR’ in the contested sign will be understood as ‘a glass container of my own, containing coins or bank notes’.

The contested sign includes some figurative elements which fulfil a merely decorative role such as the black rectangular background and the specific stylisation and arrangement of the verbal elements. These are intended to highlight the verbal elements themselves. Furthermore, the upper part of the rectangle contains the depiction of what will be perceived by the public under analysis, because of the adjacent words, as a stylised hand holding a coin. Considering that the services at issue are of a financial nature, this figurative element is likely to be perceived as being weak by the public under analysis or at the very least as being less distinctive than the words themselves (which it merely illustrates). Additionally, it is to be taken into account that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign has no element that could be considered clearly more dominant than other elements because none of the element has more visual impact than other.

Visually, the signs coincide in the verbal elements ‘MY’ and ‘JAR’, which form the entire earlier mark. However, these elements are conjoined in the earlier mark, whereas in the contested sign they appear as separate verbal elements. In addition, the signs differ in the contested sign’s verbal element ‘MONEY’, positioned between the verbal elements cited, and in additional figurative elements as described above, which are either non-distinctive or at least have reduced impact in the overall impression for the reasons set out above.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘MY’ and ‘JAR’, present in both signs. However, they differ in the sound of the additional word ‘MONEY’ of the contested sign, which is non-distinctive for the services at issue, and has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the part of the public under analysis. The signs will be associated with the same distinctive concept of the expression ‘MY JAR’ present in both signs. They differ in the meaning of the word ‘MONEY’ of the contested sign, which is non-distinctive for the services at issue, and the figurative element of a hand holding a coin does not introduce any additional concept but rather reinforces the concept of the verbal elements of the sign, as previously mentioned.

Therefore, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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 contested goods and services are partly identical and partly dissimilar to the opponent’s services. The identical services target the public at large and business customers whose degree of attention is rather high. The earlier mark enjoys a normal degree of distinctiveness.

The degree of similarity between the signs is average visually and at least average aurally. Furthermore, the signs are conceptually highly similar. The verbal elements of the earlier mark are reproduced in the contested sign. The differences are in the fact that they are conjoined in the earlier mark and separate in the contested sign, which has no impact on their perception by the English-speaking part of the relevant public, as explained above, and in the additional element ‘MONEY’ of the contested sign, the impact of which is strongly attenuated by its non-distinctive nature. Moreover, the graphic differences between the signs play a secondary role and have less impact on the consumers, as explained above. Consequently, these differences are not sufficient to counteract the visual, aural and conceptual similarities between the signs.

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. In this case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Indeed, the contested mark may be perceived as a new mark of the same or economically linked company for a specific range of financial and insurance services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public, even with a relatively high degree of attention, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 12 321 378 for the figurative mark .

 United Kingdom trade mark registration No 2 642 776 for the figurative mark .

 United Kingdom trade mark registration No 2 638 142 for the figurative marks and .

 United Kingdom trade mark registration No 2 649 956 for the figurative mark .

 United Kingdom trade mark registration No 2 638 141 for the figurative marks and .

 United Kingdom trade mark registration No 2 649 831 for the figurative mark .

 United Kingdom trade mark registration No 2 638 283 for the word mark ‘MYJAR’.

The other earlier rights invoked by the opponent cover either the same services in Class 36 as the earlier mark compared, or a narrower scope of services. Therefore, the outcome cannot be different with respect to the contested goods and services in Classes 9 and 35 for which the opposition has already been rejected based on the fact that they are dissimilar to the opponent’s services in Class 36; no likelihood of confusion exists with respect to those goods and services on the basis of those other marks.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Catherine MEDINA

Claudia SCHLIE

Martin MITURA

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.