OPPOSITION Nо B 3 114 109

 

SEB Kort Bank AB, Stjärntorget 4, 169 79 Solna, Sweden (opponent), represented by AWA Sweden AB, Jakobsbergsgatan 36, 111 44 Stockholm, Sweden (professional representative) 

 

a g a i n s t

 

Monni ApS, Nørrebrogade 47, 1., 2200 København N, Denmark (applicant), represented by Patrade A/S, Ceresbyen 75, 8000 Aarhus C, Denmark (professional representative).

On 25/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 114 109 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 16/03/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 158 211 ‘MONNI’ (word mark). The opposition is based on national Swedish trade mark registration No 603 111, ‘MONIMATE’ (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.

 

 

a) The goods and services

 

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

 

Class 9: Mobile apps; application software.

Class 36: Finance services; provision of loans; electronic payment services; payment transaction and receipt processing services; verification of payments; transaction reconciliation services; payment transaction card services; card accessed banking services; card operated financial services; currency exchange rate quotations; provision of financial services by means of a global computer network or the internet.

The contested goods and services are the following:

 

Class 9: Bank cards, debit cards, credit cards, charge cards, electronic and magnetic identification cards; encoded prepaid payment cards; encoded prepaid credit cards; encoded prepaid cards for financial transactions; computer software for use within banking, monetary and financial services, including for online access via mobile phones, computer, modem, internet and other global computer network systems; application software, including for mobile phones, mobile units, computers, modems, internet and other global computer network systems; computer and application software in the form of electronic payment systems via the internet and other global networks; computer software used to process mobile payments; computer software for transmitting, processing, facilitating, verifying, and authenticating credit and debit card information and transaction and payment information; computer software for ensuring the security of mobile payments, of contactless transactions with retailers, merchants and vendors via mobile devices, and of credit and debit card information; computer software for the storage, transmission, verification, and authentication of credit and debit card and other payment and transaction information.

Class 36: Banking; savings bank services; investment services; currency trading and exchange services; financial affairs; monetary affairs; provision of prepaid cards and tokens; processing electronic payments made through prepaid cards; administration, checking and processing of payments; electronic transfer of funds, including via hand held terminals such as mobile phones; electronic payment services via the internet and other global networks; payment card services; providing, transmitting, processing, facilitating, verifying, and authenticating mobile payments, and contactless transactions with retailers, merchants, and vendors via mobile devices; processing and administration of mobile payments and contactless transactions with retailers, merchants, and vendors via mobile devices; all the aforesaid services also provided via the internet or intranet.

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

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and 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).

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 computer software for use within banking, monetary and financial services, including for online access via mobile phones, computer, modem, internet and other global computer network systems; application software, including for mobile phones, mobile units, computers, modems, internet and other global computer network systems; computer and application software in the form of electronic payment systems via the internet and other global networks; computer software used to process mobile payments; computer software for transmitting, processing, facilitating, verifying, and authenticating credit and debit card information and transaction and payment information; computer software for ensuring the security of mobile payments, of contactless transactions with retailers, merchants and vendors via mobile devices, and of credit and debit card information; computer software for the storage, transmission, verification, and authentication of credit and debit card and other payment and transaction information are identically covered by, included in, or overlap with, the opponent's application software. Therefore, they are identical.

The contested bank cards, debit cards, credit cards, charge cards; encoded prepaid payment cards; encoded prepaid credit cards; encoded prepaid cards for financial transactions and the opponent’s finance services in Class 36 have the same purpose since the only intended purpose of all these cards is their use in the course of financial services. Furthermore, they target the same relevant public and coincide in distribution channels. Moreover, these contested goods are usually issued by financial institutions and consumers will believe that the responsibility for ensuring that the relevant cards at issue function correctly is assumed by the financial institutions which issue them. Therefore, the goods and services under comparison will be perceived as originating from the same commercial source. In addition, these contested goods are closely connected with the opponent’s finance services in Class 36, in the sense that one is indispensable or important for the use of the other, with the result that those goods and services are complementary (see, to this effect, 26/09/2017, T‑83/16, WIDIBA / ING DiBa (fig.) et al., EU:T:2017:662, § 62-66). Therefore, they are similar.

However, the contested electronic and magnetic identification cards are dissimilar to the opponent’s goods and services. This is because the purpose of identification card is to prove a person’s identity, which is not essential for the provision of (in particular) financial services. Therefore, these goods have different nature, purpose, methods of use and are neither complementary to, nor in competition with the opponent’s goods and services. Moreover, the compared goods and services are usually not produced or provided by the same undertakings as those concerned with the opponent’s mobile apps or application software in Class 9, or financial services in Class 36, and hence they do not share producers or distribution channels.

Contested services in Class 36

The contested banking; savings bank services; investment services; currency trading and exchange services; financial affairs; monetary affairs; provision of prepaid cards and tokens; processing electronic payments made through prepaid cards; administration, checking and processing of payments; electronic transfer of funds, including via hand held terminals such as mobile phones; electronic payment services via the internet and other global networks; payment card services; providing, transmitting, processing, facilitating, verifying, and authenticating mobile payments, and contactless transactions with retailers, merchants, and vendors via mobile devices; processing and administration of mobile payments and contactless transactions with retailers, merchants, and vendors via mobile devices; all the aforesaid services also provided via the internet or intranet are included in the opponent's broad category of finance 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 goods and services found to be identical or similar are directed at the public at large, as well as at business customers with specific professional knowledge or expertise.

As regards the services concerned in Class 36, they are specialised services that may have important financial consequences for their users and the customer’s level of attention would therefore be 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). For the same reasons, the relevant public’s degree of attention in relation to the goods concerned in Class 9 that have a close connection with financial services is also likely to be rather high.

However, in relation to some of the goods concerned in Class 9 (such as application software), the degree of attention may vary from average to high depending on the specialised nature of those goods, the frequency of purchase and their price.

c) The signs

 

MONIMATE	MONNI
Earlier trade mark	Contested sign

 

The relevant territory is Sweden.

 

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 applicant puts forward that the letters ‘MONI’, present at the beginning of the earlier mark, will phonetically be similar to the English word ‘money’, which will be understood by the Swedish public and therefore perceived as descriptive with regard to the relevant goods and services in the financial sector. Additionally, the applicant states that the letters ‘MATE’, present at the end of the earlier mark, will be perceived by the relevant public as referring to the English word with the meaning of ‘an ally’ or ‘a partner’. Therefore, the earlier mark will, considered as a whole, be perceived as conveying the concept of ‘a partner within the banking/money industry’ and, as a consequence, the earlier mark will altogether be descriptive for the relevant goods and services.

On this note it has to be mentioned that the combination of elements of the sign creates a single unit that should not be artificially dissected. Although indeed there is a certain visual and phonetic similarity between the first four letters of the earlier mark (‘MONI’) and the English word ‘money’ (which indeed would be understood by the Swedish public), ‘MONI’ is not a usual or otherwise obvious misspelling of the word ‘money’ and the link to this concept is not immediate and thus far-fetched. Since the letters ‘MONI’ have no particular meaning in Swedish and is not obviously related to any English word, there is no reason why the ending letters ‘MATE’, which neither have any meaning in Swedish, would be singled out and perceived as consisting of an English word with the meaning outlined above, in particular since that concept has no clear or direct meaning as such in relation to the goods and services concerned. Consequently, as there are too many steps to be taken by the relevant public in order to dissect the earlier mark and perceive it as consisting of two separate elements with the meanings of ‘money’ and ‘mate’ respectively, as argued by the applicant, it has to be concluded that the earlier mark will rather be perceived as a whole, as consisting of a fanciful word without any meaning. Since the verbal element ‘MONIMATE’ of which the earlier mark consists will not be perceived as having any meaning in relation to the goods and services in question, it is distinctive to a normal degree.

Similarly, the verbal element ‘MONNI’ of which the contested sign consists has no meaning in Swedish and will therefore be perceived by the relevant public as a fanciful word without any meaning in relation to the relevant goods and services. Therefore, it is also distinctive to a normal degree.

Visually, the signs coincide in the sequence of letters ‘MON’ identically placed at the beginning of both signs and the letter ‘I’ placed as the fourth letter of the earlier mark and fifth letter of the contested sign. The signs differ in the additional letter ‘N’ placed between the coinciding letters ‘MON’ and ‘I’ in the contested sign. The signs differ additionally in the sequence of the letters ‘-MATE’ present at the end of the earlier mark.

Even though there is an established legal practice according to which the initial part of a sign is the one that first catches the attention of the reader, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, as an average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).

The compared signs have overall significantly different length. The initial and coinciding part of the signs is not particularly long and the difference in the single and double letter ‘N’ in the signs will not go unnoticed by the relevant public, especially since the use of single and double consonants is common in the Swedish language to differentiate between the sound of the preceding vowel. Therefore, this difference in both signs, as well as the additional four letters present only in the earlier mark, are clearly noticeable.

Taking the above into consideration, the signs are visually similar to a low degree.

 

Aurally, according to normal Swedish pronunciation rules the earlier mark when pronounced has four syllables - MO/NI/MA/TE and the contested sign two - MÅ/NNI. Although the pronunciation of the single ‘N’ in the earlier mark compared to the double ‘N’ in the contested sign will produce no aural difference insofar as this letter is concerned, so the second syllable of the signs will be pronounced identically, the double letter ‘N’ in the contested sign makes the pronunciation of the preceding letter ‘O’ in this sign shorter and quicker than the pronunciation of the preceding letter ‘O’ in the earlier mark. This leads to a difference in the pronunciation of the first syllable of the signs, even if it consists of the same letters 'MO'. The signs additionally differ in the pronunciation of the syllables ‘MA/TE’ in the earlier mark, which have no counterpart in the contested sign. As a consequence, the signs, when pronounced, only share the same sound of their respective second syllable, have overall significantly different length, and hence different rhythm and intonation.

Therefore, the signs are also aurally similar to a low degree.

 

Conceptually, neither of the signs has a meaning for the public 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 claims that the earlier trade mark has a high, or at least above average, degree of inherent distinctiveness for all the goods and services concerned. However, in accordance with Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), it cannot be considered to have more than a normal degree of inherent distinctiveness. Furthermore, the opponent did not submit any evidence of use of the earlier mark that could otherwise support that the earlier mark has acquired an enhanced distinctiveness based on intensive use of the mark in the market. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

In the present case, as explained above in section c) of this decision, the earlier trade mark has no meaning for any of the goods and 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.

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, Sabel, EU:C:1997:528, § 22).

 

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.

Account should also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the goods and services concerned are partly identical or similar and partly dissimilar. The relevant public is the public at large, as well as a professional public, and the degree of attention may vary from average to high depending on the goods and services in question.

As regards the contested goods found to be dissimilar to the opponent’s goods and 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 signs are visually and aurally similar to a low degree and a conceptual comparison is not possible since neither of the signs will be perceived as conveying any concept. The earlier mark has an average degree of distinctiveness.

Even if the signs coincide in a few letters placed at the beginning of the signs, the letter ‘N’ in the earlier mark is single and in the contested sign it is double which will not go unnoticed by the public in the relevant territory for the reasons set out above in section c) of this decision. Furthermore, the earlier mark contains the additional letters ‘-MATE’ and the verbal element ‘MONIMATE’ will be perceived as a whole as consisting of one fanciful word. Altogether, this has a significant impact on the overall visual and aural impression of the signs. Contrary to the opponent’s arguments, the mere coincidence in some letters/sounds is not sufficient to conclude that the relevant consumer would confuse the marks and consider that the goods and services in question, bearing the marks, come from the same undertaking or economically linked undertakings. Consequently, irrespective of the degree of attention paid by the relevant public when purchasing the goods and services concerned, bearing in mind that the average consumer must still be deemed to be reasonably well informed and reasonably observant and circumspect, the differences between the signs are sufficient to outweigh the similarities between them. Indeed, even if consumers have to rely on their imperfect recollection of the signs, they are only similar to a low degree overall and the differences between them are thus clearly perceptible and would not be overlooked by the relevant public. As a result, even if some of the goods and services concerned are identical and even if the signs in dispute share some of their letters, on the basis of the overall low degree of similarity between them there is no reason why consumers would believe that those goods and services originated from the same or economically linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public in the relevant territory in relation to the goods and services found to be identical or similar either.

Therefore, the opposition must be rejected.

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

Sam GYLLING

Claudia SCHLIE

Begoña URIARTE VALIENTE

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.