OPPOSITION Nо B 3 121 866

Open Bank, S.A., Paseo de la Castellana 24, 28046 Madrid, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Moneybite Limited, Level 3, Ennglad, Valley Road, MSD9022 Msida, Malta (applicant), represented by Ganado Advocates, 171, Old Bakery Street, VLT 1455 Valletta, Malta (professional representative).

On 14/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 121 866 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 197 110 is rejected in its entirety.

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

REASONS

On 22/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 197 110 for the word mark ‘MONEYBITE’. The opposition is based on European Union trade mark registrations No 15 024 706 and No 14 903 959, both for the 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.

a) The goods and services

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

 EUTM registration No 15 024 706

Class 9: Downloadable applications for use with mobile devices.

 EUTM registration No 14 903 959

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

The contested goods and services are the following:

Class 9: Cryptography software; downloadable cryptographic keys for receiving and spending cryptocurrency; utility, security and cryptography software; payment software.

Class 36: Virtual currency services; virtual currency transfer services; payment processing; automated payment; payment administration services; payment processing services; financial payment services; bill payment services; electronic payment services; remote payment services; e-wallet payment services; financial transactions via blockchain.

Class 42: Data authentication via blockchain; data storage via blockchain.

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 cryptography software; downloadable cryptographic keys for receiving and spending cryptocurrency; utility, security and cryptography software; payment software are various software and keys used to prevent unauthorised access to digital information and/or software used in relation to payments and cryptocurrency. These goods are at least similar to the opponent’s downloadable applications for use with mobile devices, as those applications are software that might, inter alia, allow financial transactions and/or prevent unauthorised access to digital information, and might therefore have the same application field. These goods have the same nature, they might be complementary, are produced by the same undertakings, offered through the same distribution channels and might target the same relevant public.

Contested services in Class 36

The contested virtual currency services; virtual currency transfer services; payment processing; automated payment; payment administration services; payment processing services; financial payment services; bill payment services; electronic payment services; remote payment services; e-wallet payment services; financial transactions via blockchain are included in the broad categories of the opponent’s financial affairs and/or monetary affairs. Therefore, they are identical.

Contested services in Class 42

The contested data authentication via blockchain; data storage via blockchain are at least similar to a low degree to the opponent’s downloadable applications for use with mobile devices in Class 9. These goods and services are complementary in the sense that blockchain technology is often indispensable in mobile applications to make transactions fast and to keep important user information secure, and mobile app users are informed about the use of such technology to create more trust. These goods and services might originate from the same type of undertakings and target the same relevant public.

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 (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise in the financial and/or IT sector.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

As far as the financial services are concerned, although these services mainly target the general public, who is reasonably well informed and reasonably observant and circumspect, 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).

c) The signs

	MONEYBITE
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Both earlier trade marks protect the same figurative mark ‘moneybit’. For reasons of simplicity, both marks will hereinafter be referred to as one mark in the singular.

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 Opposition Division does not agree with the applicant that the earlier mark as a whole will be perceived as ‘a bit of money or a quantity of money’. In fact, the single verbal elements in both signs have as a whole no specific or clear meaning.

Nevertheless, 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).

The majority of the relevant public will immediately dissect the verbal elements and distinguish the word ‘money’ in both signs, referring to coins or bank notes you use to buy things or the sum you have in a bank account, as this is a rather basic English term also frequently used in non-English speaking territories. Taking into account the nature of the relevant services in Class 36, and the fact that the services in Classes 9 and 42 might be related to securing financial transactions, this element is at best weak.

The remaining elements, ‘bit’ in the earlier mark and ‘BITE’ in the contested sign, will be perceived by at least part of the English-speaking part of the public with the same or a very similar meaning. The word ‘bit’ meaning, inter alia, ‘a small part or section of it, a small piece of it’ and ‘bite’ meaning, inter alia, ‘a small part or amount of it’ (information extracted from Collins Dictionary on 08/06/2021 at https://www.collinsdictionary.com/). It has no direct relation to the relevant goods and services and is, therefore, distinctive. The remaining part of the relevant public will perceive these elements as meaningless and distinctive.

As regards the earlier mark, the black rectangular background is purely decorative and of limited distinctiveness. The stylisation/colour, including the small abstract figurative element inside the letter ‘o’, of the earlier mark are not capable of distracting attention away from the verbal element. 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 earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their first eight letters ‘MONEYBIT*’ and differ only in the last letter ‘E’ of the contested sign. 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. They also differ in the stylisation/colours of the earlier mark, which have less impact than the verbal element, as explained above. The contested sign is a word mark and its protection concerns the word as such, irrespective of the use of lower- or upper-case letters.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides at least in ‘MONEYB*T*, while it might differ in the letters ‘I’ and ‘E’. However, part of the public will also pronounce the letters ‘I’ identically, and it cannot be excluded that a part of the public will pronounce both words identically, as in some languages (for example French), the last letter ‘E’ is mute.

Therefore, the signs are aurally at least similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will both be associated with a similar meaning on account of the element ‘MONEY’, being at best weak, and for part of the public also on account of the distinctive elements ‘BIT’/‘BITE’, the signs are for part of the public conceptually similar to a low degree and for another part of the public conceptually at least 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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of some (at best) weak elements in the marks, as stated above in section c) of this decision (the element ‘MONEY’ and the black rectangular background).

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, and 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).

The earlier marks have an average degree of distinctiveness. The relevant public is the public at large and a professional public, and the degree of attention varies from average to high.

Account is 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).

The goods and services are partly identical and partly similar (to varying degrees).

The signs are visually similar to an average degree and aurally similar to at least a high degree. Conceptually, the signs are for part of the relevant public similar to a low degree and for another part of the relevant public conceptually at least highly similar.

The similarities between the signs are produced by the fact that the verbal element of the earlier mark is fully included at the beginning of the contested sign. The differences between the signs are confined to one additional final letter in the contested sign and the stylisation/colours of the earlier mark, which are not sufficient to safely distinguish between the signs, even taking into account a high degree of attention in relation to some of the goods and services. The applicant argues that differences in the manner in which word elements are depicted and their stylisation are considered to be relevant differentiating factors, however, it has to be taken into account that the stylisation of the earlier mark is rather limited and that the contested sign is a word mark.

As regards the contested services in Class 42 that are similar to at least a low degree only, 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). In the present case, the high degree of phonetic similarity and for part of the public also the conceptual at least high similarity between the signs is clearly sufficient to offset the at least low degree of similarity between some of the goods and services.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 15 024 706 and No 14 903 959. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Chantal VAN RIEL

Saida CRABBE

Helena GRANADO CARPENTER

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.