OPPOSITION No B 3 107 489

Nest Bank SA, ul. Wołowska 24, 02‑675 Warszawa, Poland (opponent), represented by Kancelaria Prawno-Patentowa Ryszard Skubisz, ul. Piastowska 31, 20‑610 Lublin, Poland (professional representative)

a g a i n s t

Cfoconsult - Consultores De Gestão Lda, Rua Barão de São Januário, 33, Sala 37, 4470‑473 Maia, Portugal (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative).

On 10/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 107 489 is upheld for all the contested services.

2. European Union trade mark application No 18 111 013 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 111 013 ‘GOLDNEST’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 15 744 691 (figurative 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 15 744 691.

a) The services

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

Class 35: Loyalty card services; consultancy and information services relating to accounting; business acquisitions consultation; advisory services for business management; economic forecasting and analysis; organization of business operations to obtain customer loyalty; advertising, marketing and promotional services; computerised business promotion; loyalty, incentive and bonus program services; collection and systematization of business data.

Class 36: Finance services; monetary services; financial and monetary transaction services; securities trading services; exchange and cheque operations; monetary transfer; banking; private banking services; banking by means of data transmission; telebanking; financial management of companies; bank account services; financial services relating to letters of credit; currency dealing; financial analysis; financing and procurement of financing; financial loan advisory services; fund investments; capital investment consultation; loan procurement services; loan and credit, and lease-finance services; credit risk insurance [factoring]; deposit services; provision of safe deposit facilities; mortgage, banking, investment management, trusteeship and financial advisory services; deposit taking, savings, investment, mortgage and real estate agency services; securities brokerage; brokerage; stockbroking; financial administration services; financing services for securing of funds; financing services for the securing of funds for others and for the financing and arranging of loans; services for the financing of home loans; financial guarantees [surety services]; real estate brokerage; assisting in the acquisition of and financial interests in real estate; property management and administration; insurance services; evaluation of chattels; nominee services; tax and duty payment services; capital investment; public and private equity financing; venture capital financing; monetary transfer; brokerage agencies for insurance and credit; wealth management; issuance of travelers’ checks; credit card, charge card, cash card, cheque guarantee card, purchase, payment and debit card services; currency trading and exchange services; real estate appraisals, brokerage, leasing, management and valuations; real estate selection and acquisition; rent collection; renting and leasing of premises; card services; credit and discount card services; issuing of credit and debit cards, bonds and securities, travellers’ cheques; issuance of tokens of value for use in loyalty schemes.

The contested services are the following:

Class 35: Advertising; business management; business administration; office functions; business administration consultancy.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs, in particular financial consultancy in relation to the buying and selling of businesses; brokerage; management of private equity funds; private equity fund investment services.

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

The term ‘in particular’, used in the applicant’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).

Contested services in Class 35

Advertising is identically contained in both lists of services.

The contested business management includes, as a broader category the earlier advisory services for business management. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested business administration; office functions include, as broader categories, the opponent’s consultancy and information services relating to accounting. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

The contested business administration consultancy overlaps with the opponent’s advisory services for business management. Therefore, they are identical.

Contested services in Class 36

Insurance; monetary affairs; financial affairs; brokerage are identically contained in both lists of services (including synonyms).

The contested real estate affairs, in particular financial consultancy in relation to the buying and selling of businesses overlap with the opponent’s real estate agency services. Therefore, they are identical.

The contested management of private equity funds; private equity fund investment services are included in the broad category of the opponent’s financial and monetary transaction services. 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, as well as professionals.

The public’s degree of attentiveness may vary from average (e.g. office functions) to high, depending on the price, or terms and conditions of the services purchased.

Financial services target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such 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).

In addition, the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

c) The signs

	GOLDNEST
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.

The contested sign is composed of one verbal element that, as such, has no meaning for the relevant public. However, although it is true that the consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that they will break down a word into elements which, for them, have a concrete meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, it can be assumed that the relevant public will recognise the English word ‘GOLD’ at the beginning of the sign since it is commonly used in the market throughout the European Union to indicate a higher level of quality (21/09/2012, T‑278/10, Western Gold, EU:T:2012:459, C‑55/12 P) and, accordingly, it has a limited degree of distinctiveness in relation to the relevant services.

The remaining verbal element of the contested sign, ‘NEST’, which coincides with the first and dominant element in the earlier mark, exists as such in Dutch, English, and German and refers to a place made by birds for breeding or to a person’s snug or secluded retreat. However, this word is perceived as a meaningless invented term by a significant part of the public (e.g. Italian- and Spanish-speaking consumers). The Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public since, for them, the coinciding term is of an average distinctive character (i.e. neither descriptive nor allusive of the characteristics of the services involved).

The remaining English word ‘BANK’ of the earlier mark is likely be understood by the relevant public as referring to a financial institution, since it is close to the equivalent word in their official languages (‘banca’/‘banco’). Therefore, it has very little, if any, distinctive character for the services at issue (04/07/2019, R 1323/2018‑4, The alpha way to invest / Alpha bank et al., § 27).

As regards the figurative elements and aspects of the earlier mark (the background, colours and the stylisation of the letters), they are of a purely decorative nature and have, at most, a low degree of distinctiveness, if any. The verbal element ‘nest’ is clearly the dominant element (eye-catching), due to its larger size and central position, whereas ‘BANK’ has a limited impact due to its smaller size, rather standard typeface and less prominent position in the sign.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). 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).

Visually and aurally, the signs coincide in the verbal element ‘NEST’. They differ in the additional verbal elements, ‘BANK’ in the earlier mark and ‘GOLD’ in the contested sign, and in the figurative elements and aspects of the earlier mark.

Therefore, and taking into account the conclusions regarding the distinctiveness and the impact of the elements, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the words ‘BANK’ in the earlier mark and ‘GOLD’ in the contested sign will evoke the concepts explained above, they are not sufficient to establish any conceptual difference, as these elements are weak or even devoid of any distinctive character and cannot indicate the commercial origin of the services. The attention of the relevant public will be attracted by the additional, distinctive, verbal element ‘NEST’, in both signs, which is meaningless. Therefore, 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an element in the mark that is, at most, weak, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The services are identical and they target the public at large, as well as professionals with a degree of attention that varies from average to high. The earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally similar to an average degree, taking into account that they coincide in the only distinctive verbal element of both signs, ‘NEST’. The differing verbal elements (‘BANK’/‘GOLD’) and the figurative element of the earlier mark, for the reasons explained above, will have less impact on the consumer. Moreover, the conceptual aspect does not influence the assessment of the similarity of the signs.

Although the public may perceive certain differences between the marks, 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 undertaking or economically linked undertakings. Indeed, in view of the coinciding element ‘NEST’ with respect to identical services, 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), namely as a variation of the earlier mark, intended for designating a specific range of services of higher quality.

Moreover, a global assessment of a 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). Therefore, in the present case, a lesser similarity between the signs is offset by the identity of all the services.

Considering all the above, there is a likelihood of confusion on the part of the Italian- and Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 744 691. It follows that the contested trade mark must be rejected for all the contested services.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sylvie ALBRECHT

Sofía SACRISTÁN MARTÍNEZ

Francesca DRAGOSTIN

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.