OPPOSITION No B 3 096 095

Bellevue Group AG, Seestrasse 16, 8700 Küsnacht, Switzerland (opponent), represented by Louis Godart Avocat SPRL, Chaussée de Waterloo 835 bte/10, 1080 Brussels, Belgium (professional representative)

a g a i n s t

Moneta International UAB, Jogailos g. 4, 01116 Vilnius, Lithuania (applicant), represented by Darius Paulikas, A. Smetonos st. 4-2, LT-01115 Vilnius, Lithuania (professional representative).

On 23/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 095 is partially upheld, namely for the following contested services:

Class 36: Automated payment; automated payment services; payment processing; electronic payment services; payment processing services; conducting cashless payment transactions; processing of payment transactions via the internet; processing of payment transactions via the internet; processing of electronic payments.

2. European Union trade mark application No 18 063 914 is rejected for all the above services. It may proceed for the remaining goods.

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 18 063 914 for the figurative mark . The opposition is based on the international trade mark registration No 1 375 200 designating the European Union and Germany for the figurative mark . 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.

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 international trade mark registration No 1 375 200 designating the European Union.

a) The goods and services

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

Class 35: Commercial business management; commercial administration.

Class 36: Banking and financing services of all kinds, including financial management; financial affairs; monetary affairs; insurance services; real estate affairs; distribution of information and advice in connection with all the aforementioned services; provision of all the aforementioned services also online from computer data banks and/or via the Internet.

The contested goods and services are the following:

Class 9: E-commerce and e-payment software; online payment software; payment software; software for processing electronic payments to and from others; computer software for facilitating payment transactions by electronic means; software for arranging online transactions.

Class 36: Automated payment; automated payment services; payment processing; electronic payment services; payment processing services; conducting cashless payment transactions; processing of payment transactions via the internet; processing of payment transactions via the internet; processing of electronic payments.

An interpretation of the wording of the list of is required to determine the scope of protection of these services.

The term ‘including’, used in the opponent’s list of services indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

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 opponent submits that intended purpose of the contested software in Class 9 is their use in the course of, and that they are developed with the sole objective of being used in the course of the opponent’s banking and financing services in Class 36. For this reason it considers that they are closely connected and complementary, and therefore, according to the opponent, the contested goods in Class 9 are highly similar to the opponent’s services in Class 36. However, the Opposition Division does not agree that they are similar. Nowadays the financial services sector has become increasingly digitalized and data-driven and the use of smartphones for mobile banking, investing services and crypto currency are examples of technologies aiming to make financial services more accessible to the general public. However, in today’s high-tech society, this finding holds true for the vast majority of electronic or digital goods and for a wide range of services of a different nature, purpose, sphere, etc. This is not, however, sufficient to justify the conclusion that software (even if explicitly limited to a certain sector, such as financial or payments software) is similar to goods/services that use software. The Opposition Division considers that the contested goods in Class 9 and the opponent’s services in Class 36 do not have the same purpose (software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation and a computer program is a set of coded instructions that enables a machine, especially a computer, to perform a desired sequence of operations) while the purpose of the opponent’s services is mainly financial or monetary commerce of some sort or another. Also, the goods and services do not have the same distribution channels and are neither complementary to, or in competition with, each other. By way of example, consumers would never consider that the bank offering them a loan is also responsible for making software or providing programming services or vice versa. Such services are outsourced to specialists who are able to implement the requirements of the financial institutions to cater for their needs as well as for those of their clients who expect their services to be available on line, every day of the year. The Opposition Division considers, therefore, that the opponent’s arguments cannot be considered as sufficient to establish any degree of similarity. In fact, the goods and services involved (software related in Class 9, on the one hand, and the opponent’s services in Class 36, on the other hand) belong to different business sectors. This conclusion is supported by recent case-law rendered by the Board of Appeal in the decision of 22/10/2018, R 1954/2017-4 - ‘imagin bank’ /‘imagic’; as well as by the General Court in judgment (26/09/2014, T-490/12, ‘Grazia’, EU:T:2014:840, § 28). In other cases, such as R 2429/2017-1, of 03/08/2018, (m3 moneymailme (fig.) / MONEY MAIL), the Board of Appeal confirmed the dissimilarity between ‘financial management software’ in Class 9 and ‘provision of information relating to insurance and financial services’ in Class 36. Consequently, the Opposition Division takes the view that the contested goods in Class 9 are dissimilar to the opponent’s services in Class 36.

For the sake of completeness, the contested goods in Class 9 are also dissimilar to the opponent’s commercial business management and commercial administration in Class 35. They differ in nature, purpose, are provided/manufactured by different companies and differ in distribution channels. They target consumers with different needs and are not complementary.

Contested services in Class 36

The contested automated payment; automated payment services; payment processing; electronic payment services; payment processing services; conducting cashless payment transactions; processing of payment transactions via the internet; processing of payment transactions via the internet; processing of electronic payments are included in the broad categories of the opponent’s banking and financing services of all kinds. 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 at business customers with specific professional knowledge or expertise.

Since the services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (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

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both marks are figurative and contain the combination of letters ‘BB'. The word elements 'BB' of the signs will be perceived by the relevant consumers as meaningless combinations of two letters, with no immediate perceptible meaning for the services at issue. As a consequence, these verbal elements in both signs are distinctive to a normal degree for the relevant public.

The letters ‘BB’ in the contested sign are, although interlocked at top and bottom, depicted in rather standard upper case letters in red colour. The stylisation and the colour of the letters in the contested sign will be perceived as mainly decorative and are therefore less distinctive than the verbal element itself. In any event, it should be noted 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). It follows that the colours and stylisation of the verbal element will play a secondary role in the perception of the contested sign.

In the earlier mark the letters ‘BB’ are depicted in grey standard upper case with a thin vertical line between them. This vertical line merely has the effect of visually separating both letters, and does not impede the mark’s first verbal element from being principally perceived as the combination of letters ‘BB’. On the right side of and obliquely below the letters ‘BB’ the verbal element ‘Bellevue’ is located, depicted in standard title case letters, also in grey.

Since the term ‘Bellevue’ in the earlier mark is made up of two French words meaning ‘beautiful’ and ‘view’, the word ‘Bellevue’ is likely to be perceived as ‘beautiful view’ by the French speakers. Bellevue is also, as pointed out by the opponent, the name of specific geographical locations in Switzerland and France. However, the latter is not likely to be generally known in the EU, at least to a significant part of the relevant public.

The applicant argues that the word ‘Bellevue’ is made up of two well-known French words ‘belle’ (Eng. beautiful) and ‘vue’ (Eng. view), having the meaning of ‘beautiful view’ and that the word “bella“ is related to the Italian, Spanish, Greek, Portuguese and Latin words for ‘beautiful’, to the name Belle, meaning ‘beautiful’ in French and therefore, according to the applicant, the words ‘belle vue’ are well known to the public of the European Union.

However, the Opposition Division disagrees to that the words ‘Belle vue’ are known to the whole public of the European Union. First of all, even if the word ‘Belle’ is used as a name in some languages, it is not likely to be dissected since it is not used on its own in the earlier mark but as a part of a whole word, ‘Bellevue’. Moreover, in many languages in the European Union the term ‘Bellevue’ does not resemble any words. It is not a basic French word and proper words with the meanings of ‘beautiful’ and ‘view’ exist in most of the relevant languages, which are very different from their French equivalents. For instance, in Bulgarian, the word ‘vue’ does not exists as such and its equivalent is totally different to the French word, namely ‘изглед’ (transliterated as ‘izgled’). In other languages, such as in Swedish and Polish, the word ‘vue’ does not exists either, and the equivalent word is also rather different in these languages, ‘vy’ and ‘widok’ respectively. Moreover, it should be noted that the relevant consumers in the various Member States of the EU mainly speak the languages predominant in their respective territories (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 27). These languages are normally the official languages of the relevant territory. Therefore, the word ‘Bellevue’ is not likely to be dissected and is more likely to be perceived as a single, meaningless word by these parts of the public. In either case, understood or not, ‘Bellevue’ does not have a direct meaning for the relevant services, and is, therefore, distinctive.

The Opposition Division notes that a conceptual difference between the signs, such as that existing for the French-speaking public as referred to above, could help consumers to more easily distinguish between them. However, for part of the public in the European Union, such as a significant part of the public in Bulgaria, Sweden and Poland, the verbal element ‘Bellevue’ in the earlier mark will be perceived as having no meaning. Therefore, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, §69), the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the relevant territory that will perceive no meaning in either of the signs, such as the Bulgarian-, Swedish- and Polish-speaking parts of the public.

Contrary to the applicant’s opinion, the earlier mark has no element that could be considered clearly more dominant than other elements, in the sense of being visually eye-catching. However, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive capitalised letters ‘BB’, which is the first element of the earlier mark and plays an independent role in it, and is the only element of the contested sign. The stylisation of the letters ‘BB’ in both signs is merely decorative and even if the thin horizontal line in the earlier mark will not be overlooked, it has, as said, merely the function of creating a slight visual separation between the letters concerned.

The signs differ in the second verbal element ‘Bellevue’ of the earlier mark. The signs also differ in their colours and stylisations which, however, play a secondary role in the perceptions of the signs for the reasons explained above.

It is true as the applicant argues that the earlier mark consists of two elements, while the contested mark consists of just one. However, although the signs differ in the second word element ‘Bellevue’ of the earlier mark and despite that it is slightly bigger in size than the other element, it has no bigger impact in the sign than the letter combination ‘BB’. This is because the letter combination ‘BB’ plays an independent and distinctive role in the earlier mark and also since it is located in the beginning of that sign where consumers tend to focus their attention when they encounter a trade mark.

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the identical letter combination ‘BB’ and differs in the sound of the term ‘Bellevue’ in the earlier mark.

Even if the contested sign is pronounced as ‘BB Bellevue’, due to the shared letter combination ‘BB’ at the beginning of that sign and since word marks are read from left to right, and which is the only word element of the contested sign, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 analysed public in the relevant territory. 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).

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 services are identical to the opponent’s services and the contested goods are dissimilar to the opponent’s services.

The services, for which identity was found, are directed at the public at large and professionals with a high degree of attention. The earlier mark has an average degree of distinctiveness for the services at issue.

The signs are visually similar to a degree below average and aurally similar to an average degree on account of the combination of the letters 'BB', which is the first element of the earlier mark and plays an independent role therein, and is the only verbal element of the contested sign.

The differences between the signs are not, as explained in section c) of this decision, sufficient to offset the aforementioned similarities and less so given that there is no conceptual difference between the signs for the part of the public under analysis to offset the aforementioned similarities and also bearing in mind that the services are identical. Therefore, even considering that the relevant public's degree of attention is high, 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 goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the letter combination ‘BB’. In support of its argument the applicant refers to several European Union trade mark registrations. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the letter combination ‘BB’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-French speaking part of the public such as a significant part of the Bulgarian, Swedish and Polish-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 375 200 designating the European Union. 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 contested goods are dissimilar to the opponent’s services. 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 cannot be successful.

The opponent has also based its opposition on earlier international trade mark registration No 1 375 200 designating Germany, for the figurative mark and covering the same services in Classes 35 and 36. Since this mark is identical to the one which has been compared above and covers the same scope of services, the outcome cannot be different with respect to this earlier right. Therefore, no likelihood of confusion exists with respect to the remaining goods.

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. 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

Boyana NAYDENOVA

Martin INGESSON

Anna ZIÓŁKOWSKA

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.