OPPOSITION No B 2 195 942

Unicre-Instituição Financeira de Crédito, S.A, Avª António Augusto Aguiar, 122 3º, Lisboa, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

mTrust s.r.o., Odborárska 21, 831 02 Bratislava, Slovakia (applicant), represented by Magdaléna Bachratá, Krasovskeho 13, 851 01 Bratislava, Slovakia (professional representative).

On 10/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 195 942 is partially upheld, namely for the following contested goods and services:

Class 9: Photographic, cinematographic, optical, teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; data processing equipment, computers; Computer software; Antennas; Audiovisual teaching apparatus; Teller machines (Automated -) [ATM]; Vehicle radios; Plotters; Readers [data processing equipment]; Demagnetizing apparatus for magnetic tapes; Agendas (Electronic -); Dictating machines; Disks, magnetic; Electronic tags for goods; Electronic pocket translators; Cinematographic film, exposed; Facsimile machines; Films, exposed; Cameras [photography]; Photocopiers [photographic, electrostatic, thermic]; Sound recording discs; Identity cards, magnetic; Encoded identification bracelets, magnetic; Electronic notice boards; Cinematographic cameras; Smart cards [integrated circuit cards]; Encoded magnetic cards; Discs (Compact -) [audio-video]; Discs (Compact -) [read-only memory]; Magnetic encoders; Magnetic data media; Magnetic tapes; Modems; Monitors [computer programs]; Video game cartridges; Optical discs; Optical data media; Optical apparatus and instruments; Optical goods; Sound recording strips; Computer peripheral devices; Notebook computers; Computers; Computer memory devices; Computer programmes [programs], recorded; Computer software, recorded; Portable media players; Laptop computers; Personal stereos; Portable telephones; Receivers (Audio-- and video- -); Computer game programs; Computer operating programs, recorded; Programs (Computer -) [downloadable software]; Floppy disks; Radios; Radiotelephony sets; Radiotelegraphy sets; Radio pagers; X-ray films, exposed; Interfaces for computers; Walkie-talkies; Satellite navigational apparatus; Satellites for scientific purposes; Scanners [data processing equipment]; Telephone wires; Telephone transmitters; Telephone apparatus; Telephone receivers; Answering machines; Phototelegraphy apparatus; Telegraph wires; Telegraphs [apparatus]; Teletypewriters; Television apparatus; Printers for use with computers; Transponders; Camcorders; Video cassettes; Videotapes; Video recorders; Video telephones; Intercommunication apparatus; Vehicles (Navigation apparatus for -) [on-board computers]; Transmitters of electronic signals; Transmitters [telecommunication]; Transmitting sets [telecommunication]; Teaching apparatus; Global Positioning System [GPS] apparatus; Data processing apparatus; Sound transmitting apparatus; Sound recording apparatus; Sound recording carriers; Sound reproduction apparatus; all the aforementioned goods not for the purpose of mortgage granting and servicing.

Class 36: Insurance; Financial affairs; Monetary affairs; Analysis (Financial -); Home banking; Banking; Customs brokerage; Retirement payment services; Funds transfer (Electronic -); Factoring; Financial information; Evaluation (Financial -) [insurance, banking, real estate]; Timber (Financial evaluation of standing -); Evaluation of wool (Financial -); Financial consultancy; Financing services; Financial sponsorship; Hire-purchase financing; Financial management; Insurance information; Fund investments; Debt collection agencies; Surety services; Clearing-houses, financial; Provident fund services; Stock exchange quotations; Business liquidation services, financial; Accident insurance underwriting; Brokerage of carbon credits; Numismatic appraisal; Evaluation (Repair costs -) [financial appraisal]; Jewellery appraisal; Antique appraisal; Art appraisal; Stamp appraisal; Fiscal assessments; Organization of collections; Verification (Check [cheque] -); Instalment loans; Marine insurance underwriting; Health insurance underwriting; Insurance underwriting; Life insurance underwriting; Actuarial services; Insurance consultancy; Loans [financing]; Savings bank services; Trusteeship; Brokerage; Insurance brokerage; Stocks and bonds brokerage; Deposits of valuables; Safe deposit services; Credit bureaux; Debit card services; Credit card services; Fire insurance underwriting; Issue of tokens of value; Travellers’ checks [cheques] (Issuing of -); Issuance of credit cards; Pawnbrokerage; Lending against security; Charitable fund raising; Exchanging money; Mutual funds; all the aforementioned services not for the purpose of mortgage granting and servicing.

Class 38: Telecommunications; Wireless broadcasting; Electronic mail; Voice mail services; Communications by fiber [fibre] optic networks; Cellular telephone communication; Transmission of greeting cards online; Communications by computer terminals; Message sending; Providing internet chatrooms; Providing access to databases; Providing telecommunications connections to a global computer network; Providing telecommunication channels for teleshopping services; Providing user access to global computer networks; Rental of facsimile apparatus; Rental of modems; Rental of access time to global computer networks; Rental of telephones; Rental of telecommunication equipment; Rental of message sending apparatus; Transmission of telegrams; Transmission of digital files; Satellite transmission; Computer aided transmission of messages and images; Facsimile transmission; Radio broadcasting; Electronic bulletin board services [telecommunications services]; Telecommunications routing and junction services; Communications by telephone; Telephone services; Communications by telegrams; Telegraph services; Information about telecommunication; Teleconferencing services; Television broadcasting; Telex services; News agencies; Cable television broadcasting; Paging services [radio, telephone or other means of electronic communication]; all the aforementioned services not for the purpose of mortgage granting and servicing.

2. Community trade mark application No 11 125 002 is rejected for all the above goods and 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 Community trade mark application No 11 125 002. The opposition is based on Portuguese trade mark registration No 476 750. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods and services

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

Class 9: Electronic cards; credit cards; encoded and magnetic cards for use in relation to the electronic transfer of funds and for financial transactions in general; cards bearing electronically recorded data.

Class 36: Credit card services; issue of credit cards; credit card transaction processing services.

Class 38: Telecommunications services; transfer of data by telecommunications; transmission and reception of data via telecommunication media; providing access to a computer server by way of telephone lines, cable, network connections and the internet; broadcasting and transmission of information via networks or the internet.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Acid hydrometers; Acidimeters for batteries; Centering apparatus for photographic transparencies; Actinometers; Battery jars; Battery boxes; Accumulators, electric; Accumulators, electric, for vehicles; Plates for batteries; Speaking tubes; Acoustic couplers; Alidades; Ammeters; Anemometers; Anode batteries; Anodes; Antennas; Anticathodes; Apertometers [optics]; Lenses for astrophotography; Astronomy (Apparatus and instruments for -); Audiovisual teaching apparatus; Teller machines (Automated -) [ATM]; Vehicle breakdown warning triangles; Vehicle radios; Asbestos clothing for protection against fire; Asbestos gloves for protection against accidents; Asbestos screens for firemen; Azimuth instruments; Lighting ballasts; Barometers; Batteries for lighting; Batteries, electric; Gasoline gauges; Betatrons; Safety restraints, other than for vehicle seats and sports equipment; Lightning arresters; Flash-bulbs [photography]; Flashing lights [luminous signals]; Marking buoys; Compasses (Directional -); Buzzers; Time recording apparatus; Time switches, automatic; Chemistry apparatus and instruments; Chromatography apparatus for laboratory use; Chronographs [time recording apparatus]; Coils, electric; Spools [photography]; Chips [integrated circuits]; Plotters; Cleaning apparatus for sound recording discs; Bar code readers; Readers [data processing equipment]; Teleprompters; Galvanic batteries; Diaphragms [photography]; Anti-dazzle shades; Radiology screens for industrial purposes; Saccharometers; Eyeglasses; Cyclotrons; Binoculars; Measuring spoons; Decompression chambers; Demagnetizing apparatus for magnetic tapes; Densitometers; Stills for laboratory experiments; Distillation apparatus for scientific purposes; Detectors; Smoke detectors; False coin detectors; Metal detectors for industrial or military purposes; Diagnostic apparatus, not for medical purposes; Distance measuring apparatus; Remote control apparatus; Igniting apparatus, electric, for igniting at a distance; Transparencies [photography]; Agendas (Electronic -); Punched card machines for offices; Diffraction apparatus [microscopy]; Dictating machines; Disk drives for computers; Disks, magnetic; DNA chips; Clocks (Time -) [time recording devices]; Light (Traffic- -) apparatus [signalling devices]; Road signs, luminous or mechanical; Printed circuit boards; Dosage dispensers; Wires, electric; Respiratory masks, other than for artificial respiration; Breathing apparatus for underwater swimming; Breathing apparatus, except for artificial respiration; Dynamometers; Fire hose nozzles; Electric door bells; Electricity mains (Materials for -) [wires, cables]; Electric installations for the remote control of industrial operations; Electrified fences; Electro-dynamic apparatus for the remote control of signals; Electro-dynamic apparatus for the remote control of railway points; Light-emitting diodes [LED]; Electrolysers; Electromagnetic coils; Pens (Electronic -) [visual display units]; Light-emitting electronic pointers; Electronic tags for goods; Electronic pocket translators; Vacuum tubes [radio]; Thermionic valves; Epidiascopes; Ergometers; Cinematographic film, exposed; Exposure meters [light meters]; Invoicing machines; Facsimile machines; Crash test dummies; Film cutting apparatus; Films, exposed; Filters [photography]; Filters for respiratory masks; Filters for ultraviolet rays, for photography; Fluorescent screens; Cameras [photography]; Photovoltaic cells; Darkrooms [photography]; Photocopiers [photographic, electrostatic, thermic]; Photometers; Physics (Apparatus and instruments for -); Galvanic cells; Galvanometers; Surveying instruments; Record player needles (Apparatus for changing -); Sound recording discs; Record players; Fire extinguishing apparatus; Heliographic apparatus; Viewfinders, photographic; Voting machines; Holograms; Juke boxes, musical; Densimeters; Hydrometers; Identity cards, magnetic; Encoded identification bracelets, magnetic; Identification sheaths for electric wires; Quantity indicators; Electric loss indicators; Coils (Choking -) [impedance]; Inductors [electricity]; Armatures [electricity]; Electronic notice boards; Gradient indicators; Incubators for bacteria culture; Integrated circuits; Inverters [electricity]; Ionization apparatus not for the treatment of air or water; Riding helmets; Cables, electric; Cables (Fibre [fiber Am] optic -); Calibrating rings; Cinematographic cameras; Capillary tubes; Smart cards [integrated circuit cards]; Cathodic anti-corrosion apparatus; Cathodes; Cassette players; Containers for microscope slides; Coaxial cables; Encoded magnetic cards; Electrified rails for mounting spot lights; Collectors, electric; Discs (Compact -) [audio-video]; Discs (Compact -) [read-only memory]; Comparators; Compasses [measuring instruments]; Commutation (Electric apparatus for -); Commutators; Terminals [electricity]; Capacitors; Connectors [electricity]; Contact lenses; Contacts, electric; Regulating apparatus, electric; Correcting lenses [optics]; Boiler control instruments; Leather (Appliances for measuring the thickness of -); Skins (Apparatus for measuring the thickness of -); Cosmographic instruments; Theft prevention installations, electric; Dressmakers’ measures; Animated cartoons; Retorts; Pedometers; Galena crystals [detectors]; Covers for electric outlets; Fermentation (Apparatus for -) [laboratory apparatus]; Oxygen transvasing apparatus; Clothing especially made for laboratories; Laboratory centrifuges; Lactodensimeters; Lactometers; Lamps (Darkroom -) [photography]; Lasers, not for medical purposes; Magic lanterns; Glazing apparatus for photographic prints; Alcoholmeters; Ticket dispensers; Logs [measuring instruments]; Magnetic wires; Magnetic encoders; Magnetic data media; Magnetic tape units for computers; Magnetic tapes; Tape recorders; Magnets; Magnets (Decorative -); Mannequins (Resuscitation -) [teaching apparatus]; Pressure gauges; Mathematical instruments; Mechanical signs; Copper wire, insulated; Megaphones; Diaphragms [acoustics]; Diaphragms for scientific apparatus; Juke boxes for computers; Converters, electric; Frequency meters; Measuring instruments; Measuring apparatus; Measuring devices, electric; Plane tables [surveying instruments]; Gauges; Meteorological balloons; Meteorological instruments; Counters; Metronomes; Measures; Hands free kits for phones; Microphones; Micrometer gauges; Micrometer screws for optical instruments; Microprocessors; Microscopes; Microtomes; Scales (Lever -) [steelyards]; Coin-operated mechanisms for television sets; Coin-operated apparatus (Mechanisms for -); Hourglasses; Washing trays [photography]; Modems; Monitors [computer programs]; Monitoring apparatus, electric; Monitors [computer hardware]; Marine depth finders; Weighbridges; Grids for batteries; Mouse [data processing equipment]; Chargers for electric batteries; Battery chargers; Furniture especially made for laboratories; Knee-pads for workers; Marine compasses; Naval signalling apparatus; Video game cartridges; Signals, luminous or mechanical; Signalling buoys; Navigational instruments; Neon signs; Bullet-proof waistcoats [vests (Am)]; Levelling instruments; Plates (Carriers for dark -) [photography]; Objectives [lenses] optics; Holders for electric coils; Junction sleeves for electric cables; Garments for protection against fire; Limiters [electricity]; Jigs [measuring instruments]; Shoes for protection against accidents, irradiation and fire; Protective helmets; Protective suits for aviators; Protective masks; Clothing for protection against accidents, irradiation and fire; Protective helmets for sports; Gloves for protection against X-rays for industrial purposes; Protection devices against X-rays, not for medical purposes; Voltage surge protectors; Branch boxes [electricity]; Drainers for use in photography; Measuring glassware; Resistances, electric; Reflecting discs for wear, for the prevention of traffic accidents; Anti-interference devices [electricity]; Ohmmeters; Fire blankets; Octants; Eyepieces; Spectacles [optics]; Goggles for sports; Spectacle cases; Spectacle frames; Eyepieces (Instruments containing -); Pince-nez chains; Pince-nez mountings; Spectacle glasses; Plumb bobs; Plumb lines; Optical character readers; Optical discs; Optical condensers; Optical data media; Optical apparatus and instruments; Optical glass; Optical lenses; Light conducting filaments [optical fibers fibres]; Optical goods; Optical lanterns; Mercury levels; Oscillographs; Anti-glare glasses; Protection devices for personal use against accidents; Revolution counters; Egg-candlers; Ozonisers [ozonators]; Horns for loudspeakers; Parking meters; Head cleaning tapes [recording]; Sound recording strips; Furnaces for laboratory use; Money counting and sorting machines; Computer peripheral devices; Periscopes; Pipettes; Dog whistles; Whistle alarms; Planimeters; Blueprint apparatus; Sheaths for electric cables; Screens [photography]; Nautical apparatus and instruments; Gas testing instruments; Gasometers [measuring instruments]; Notebook computers; Computers; Calculating disks; Slide-rules; Calculating machines; Computer keyboards; Computer memory devices; Computer programmes [programs], recorded; Computer software, recorded; Abacuses; Mouse pads; Laboratory trays; Wrist rests for use with computers; Fuse wire; Fuses; Polarimeters; Semi-conductors; Printed circuits; Socks, electrically heated; Alarms; Slide calipers; Calipers; Divers’ masks; Diving suits; Food analysis apparatus; Fire alarms; Fire engines; Motor fire engines; Fire boats; Fire hose; Fire beaters; Observation instruments; Rulers [measuring instruments]; Rules [measuring instruments]; Carpenters’ rules; DVD players; Compact disc players; Projection screens; Projection apparatus; Transparency projection apparatus; Tone arms for record players; Portable media players; Laptop computers; Personal stereos; Portable telephones; Telerupters; Precision measuring apparatus; Precision balances; Peepholes [magnifying lenses] for doors; Receivers (Audio-- and video- -); Headphones; Prisms [optics]; Central processing units [processors]; Computer game programs; Computer operating programs, recorded; Programs (Computer -) [downloadable software]; Clothing for protection against fire; Current rectifiers; Rods for water diviners; Floppy disks; Electronic publications, downloadable; Containers for contact lenses; Pince-nez cases; Pyrometers; Radar apparatus; Radios; Cell switches [electricity]; Radiological apparatus for industrial purposes; Radiotelephony sets; Radiotelegraphy sets; Radio pagers; Frames for photographic transparencies; Screens for photoengraving; Refractometers; Refractors; Cash registers; Voltage regulators for vehicles; Stage lighting regulators; Speed regulators for record players; Relays, electric; Rheostats; Regulators [dimmers] (Light -), electric; Loudspeakers; Respirators for filtering air; Steering apparatus, automatic, for vehicles; Control panels [electricity]; X-ray films, exposed; X-rays producing apparatus and installations, not for medical purposes; X-ray apparatus not for medical purposes; X-ray photographs, other than for medical purposes; X-ray tubes not for medical purposes; Air analysis apparatus; Interfaces for computers; Distribution boards [electricity]; Distribution consoles [electricity]; Switchboxes [electricity]; Walkie-talkies; Gloves for protection against accidents; Gloves for divers; Electricity conduits; Speed measuring apparatus [photography]; Speed indicators; Salinometers; Satellite navigational apparatus; Satellites for scientific purposes; Adding machines; Valves (Solenoid -) [electromagnetic switches]; Sextants; Spherometers; Nets for protection against accidents; Signal bells; Signalling panels, luminous or mechanical; Signalling whistles; Signal lanterns; Fog signals, non-explosive; Simulators for the steering and control of vehicles; Sirens; Glass covered with an electrical conductor; Cases fitted with dissecting instruments [microscopy]; Cabinets for loudspeakers; Distribution boxes [electricity]; Test tubes; Material testing instruments and machines; Testing apparatus not for medical purposes; Lens hoods; Sunglasses; Scanners [data processing equipment]; Cell phone straps; Pince-nez cords; Solar batteries; Sonars; Sounding lines; Sounding leads; Sounding apparatus and machines; Probes for scientific purposes; Sound locating instruments; Cases especially made for photographic apparatus and instruments; Spectrograph apparatus; Spectroscopes; Couplers [data processing equipment]; Circuit closers; Connections for electric lines; Junction boxes [electricity]; Nose clips for divers and swimmers; Sprinkler systems for fire protection; Connections, electric; Downloadable music files; Downloadable image files; Starter cables for motors; Stands for photographic apparatus; Stereoscopic apparatus; Stereoscopes; Downloadable ring tones for mobile phones; Workmen’s protective face-shields; Marking gauges [joinery]; Retorts’ stands; Masts for wireless aerials; Editing appliances for cinematographic films; Sulphitometers; Drying racks [photography]; Drying apparatus for photographic prints; Beacons, luminous; Signs, luminous; Wire connectors [electricity]; Tachometers; Speed checking apparatus for vehicles; Kilometer recorders for vehicles; Ear plugs for divers; Taximeters; Crucibles [laboratory]; Telephone wires; Telephone transmitters; Telephone apparatus; Telephone receivers; Answering machines; Phototelegraphy apparatus; Telegraph wires; Telegraphs [apparatus]; Range finders; Telescopes; Teletypewriters; Television apparatus; Theodolites; Heat regulating apparatus; Thermometers, not for medical purposes; Temperature indicators; Thermostats; Thermostats for vehicles; Word processors; Thread counters; Printers for use with computers; Push buttons for bells; Pressure in vehicle tires [tyres] (Automatic indicators of low -); Pressure measuring apparatus; Pressure indicator plugs for valves; Totalizators; Transformers [electricity]; Step-up transformers; Transponders; Transistors [electronic]; Triodes; Tripods for cameras; Counter-operated apparatus (Mechanisms for -); Ducts [electricity]; Accounting machines; Protractors [measuring instruments]; Water level indicators; Pressure indicators; Urinometers; Particle accelerators; USB flash drives; Releases (Shutter -) [photography]; Shutters [photography]; Scales; Letter scales; Vacuum gauges; Variometers; Weighing apparatus and instruments; Weighing machines; Balancing apparatus; Verniers; Video screens; Camcorders; Video cassettes; Videotapes; Video recorders; Video telephones; Wind socks for indicating wind direction; Viscosimeters; Hygrometers; Wavemeters; Intercommunication apparatus; Conductors, electric; Spirit levels; Levels [instruments for determining the horizontal]; Voltmeters; Vehicles (Navigation apparatus for -) [on-board computers]; Pocket calculators; Wafers [silicon slices]; Discharge tubes, electric, other than for lighting; Switches, electric; Circuit breakers; Transmitters of electronic signals; Transmitters [telecommunication]; Transmitting sets [telecommunication]; Altimeters; High-frequency apparatus; Surveyors’ levels; Levelling staffs [surveying instruments]; Teaching apparatus; Aerometers; Anti-theft warning apparatus; Fire escapes; Life buoys; Life-saving rafts; Life belts; Safety tarpaulins; Safety nets; Life jackets; Life saving apparatus and equipment; Spark-guards; Needles for record players; Sighting telescopes for firearms; Locks, electric; Switchboards; Global Positioning System [GPS] apparatus; Stamping mail (Apparatus to check -); Distance recording apparatus; Data processing apparatus; Plugs, sockets and other contacts [electric connections]; Weights; Screw-tapping gauges; Railway traffic safety appliances; Surveying apparatus and instruments; Surveying chains; Flashlights [photography]; Hemline markers; Identification threads for electric wires; Amplifiers; Amplifying valves; Mirrors for inspecting work; Mirrors [optics]; Teeth protectors; Enlarging apparatus [photography]; Magnifying glasses [optics]; Solderers’ helmets; Bells [warning devices]; Alarm bells, electric; Sound transmitting apparatus; Sound recording apparatus; Sound recording carriers; Sound reproduction apparatus; Sound alarms; Acoustic conduits; all the aforementioned goods not for the purpose of mortgage granting and servicing.

Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs; Analysis (Financial -); Home banking; Banking; Customs brokerage; Retirement payment services; Funds transfer (Electronic -); Factoring; Financial information; Evaluation (Financial -) [insurance, banking, real estate]; Timber (Financial evaluation of standing -); Evaluation of wool (Financial -); Financial consultancy; Financing services; Financial sponsorship; Hire-purchase financing; Financial management; Insurance information; Fund investments; Debt collection agencies; Surety services; Clearing-houses, financial; Provident fund services; Stock exchange quotations; Business liquidation services, financial; Apartment house management; Accident insurance underwriting; Brokerage of carbon credits; Numismatic appraisal; Evaluation (Repair costs -) [financial appraisal]; Real estate appraisal; Jewellery appraisal; Antique appraisal; Art appraisal; Stamp appraisal; Fiscal assessments; Organization of collections; Verification (Check [cheque] -); Instalment loans; Marine insurance underwriting; Health insurance underwriting; Insurance underwriting; Life insurance underwriting; Actuarial services; Insurance consultancy; Loans [financing]; Renting of flats; Leasing of farms; Rental of offices [real estate]; Leasing of real estate; Real estate agencies; Savings bank services; Real estate management; Trusteeship; Brokerage; Insurance brokerage; Stocks and bonds brokerage; Housing agents; Accommodation bureaux [apartments]; Deposits of valuables; Safe deposit services; Credit bureaux; Debit card services; Credit card services; Fire insurance underwriting; Rent collection; Issue of tokens of value; Travellers’ checks [cheques] (Issuing of -); Issuance of credit cards; Pawnbrokerage; Lending against security; Charitable fund raising; Exchanging money; Mutual funds; all the aforementioned services not for the purpose of mortgage granting and servicing.

Class 38: Telecommunications; Wireless broadcasting; Electronic mail; Voice mail services; Communications by fiber [fibre] optic networks; Cellular telephone communication; Transmission of greeting cards online; Communications by computer terminals; Message sending; Providing internet chatrooms; Providing access to databases; Providing telecommunications connections to a global computer network; Providing telecommunication channels for teleshopping services; Providing user access to global computer networks; Rental of facsimile apparatus; Rental of modems; Rental of access time to global computer networks; Rental of telephones; Rental of telecommunication equipment; Rental of message sending apparatus; Transmission of telegrams; Transmission of digital files; Satellite transmission; Computer aided transmission of messages and images; Facsimile transmission; Radio broadcasting; Electronic bulletin board services [telecommunications services]; Telecommunications routing and junction services; Communications by telephone; Telephone services; Communications by telegrams; Telegraph services; Information about telecommunication; Teleconferencing services; Television broadcasting; Telex services; News agencies; Cable television broadcasting; Paging services [radio, telephone or other means of electronic communication]; all the aforementioned services not for the purpose of mortgage granting and servicing.

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 (‘Canon’ criteria).

Contested goods in Class 9

The earlier mark covers electronic cards; cards bearing electronically recorded data, inter alia, in Class 9. These goods belong to the category of data carriers (all kinds of memory devices, whether removable, detachable or transportable). The earlier mark also covers telecommunication services in Class 38, that is, services that allow people to communicate with one another by remote means.

The applicant’s magnetic data carriers; compact discs, DVDs and other digital recording media; recording discs; discs (compact-) [audio-video]; discs (compact-) [read-only memory]; disks, magnetic; floppy disks; optical discs; video cassettes; videotapes; magnetic tapes; encoded identification bracelets, magnetic; all the aforementioned goods not for the purpose of mortgage granting and servicing are all data carriers. They are similar to a high degree to the opponent’s electronic cards. They have the same purpose (storing data), distribution channels and producers, they target the same consumers and they are likely to be in competition.

The contested encoded magnetic cards; identity cards, magnetic; magnetic data media; optical data media; sound recording strips; computer memory devices; smart cards [integrated circuit cards]; sound recording carriers; sound recording discs; all the aforementioned goods not for the purpose of mortgage granting and servicing are all data carriers and recording media. They are identical to the opponent’s electronic cards because the opponent’s goods are included in or overlap with the contested goods or vice versa, or they are similar to a high degree to the opponent’s electronic cards since these goods have the same purpose (storing data), distribution channels and producers, they target the same consumers and they are likely to be in competition.

The contested video game cartridges; cinematographic film, exposed; films exposed; X-ray films, exposed; all the aforementioned goods not for the purpose of mortgage granting and servicing are media content. They are similar to a high degree to the opponent’s cards bearing electronically recorded data since these goods have the same purpose (storing media content), distribution channels and producers and they target the same consumers.

The contested teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; data processing equipment, computers; audiovisual teaching apparatus; data processing apparatus; all the aforementioned goods not for the purpose of mortgage granting and servicing are similar to a high degree to the opponent’s electronic cards; cards bearing electronically recorded data. Some of these goods have the same purpose (for instance, the contested apparatus for recording sound or images and the opponent’s goods that record data), they are complementary, they target the same consumers and they have the same distribution channels and producers.

The contested photographic, cinematographic, optical apparatus and instruments; all the aforementioned goods not for the purpose of mortgage granting and servicing are similar to the opponent’s electronic cards; cards bearing electronically recorded data. These goods are complementary, they target the same consumers and they have the same distribution channels and producers.

The contested optical goods; all the aforementioned goods not for the purpose of mortgage granting and servicing include goods such as photographic instruments and multimedia electronic goods, and to that extent they are similar to the opponent’s electronic cards; cards bearing electronically recorded data. These goods are complementary, they target the same consumers and they have the same distribution channels and producers.

The contested computer peripheral devices; scanners [data processing equipment]; magnetic encoders; answering machines; camcorders; dictating machines; personal stereos; portable media players; sound recording apparatus; sound reproduction apparatus; sound transmitting apparatus; video recorders; cameras [photography]; cinematographic cameras; readers [data processing equipment]; agendas (electronic -); teller machines (automated -) [ATM]; electronic pocket translators; laptop computers; notebook computers; printers for use with computers; all the aforementioned goods not for the purpose of mortgage granting and servicing are apparatus for recording, transmission or reproduction of sound or images and/or apparatus for processing data. All these contested goods are similar at least to a medium degree to the opponent’s electronic cards; cards bearing electronically recorded data because the contested goods are used in connection with the opponent’s goods, meaning that the goods usually originate from the same undertakings and are distributed through the same channels to the same consumers. There may also be a certain interdependence and therefore a complementary relationship.

The contested transponders; modems; phototelegraphy apparatus; photocopiers [photographic, electrostatic, thermic]; plotters; electronic notice boards; facsimile machines; television apparatus; vehicle radios; antennas; Global Positioning System [GPS] apparatus; vehicles (navigation apparatus for -) [on-board computers]; intercommunication apparatus; portable telephones; radios; radio pagers; walkie-talkies; radiotelegraphy sets; radiotelephony sets; receivers (audio-- and video- -); satellite navigational apparatus; satellites for scientific purposes; telegraph wires; telegraphs [apparatus]; telephone apparatus; telephone receivers; telephone transmitters; telephone wires; teletypewriters; transmitters of electronic signals; transmitters [telecommunication]; transmitting sets [telecommunication]; video telephones; all the aforementioned goods not for the purpose of mortgage granting and servicing are similar to telecommunication services in Class 38 of the earlier right, as the contested goods and the opponent’s services allow communication, thus coinciding in purpose, and are complementary. Their distribution/provision channels are the same, as is their target consumer. The contested interfaces for computers are composed of either hardware or software that allows interaction with different electronic devices, as well as communication. Therefore, the same conclusion and findings are relevant.

The contested computer software; computer game programs; computer operating programs, recorded; computer programmes [programs], recorded; programs (computer-) [downloadable software]; computer software, recorded; monitors [computer programs]; all the aforementioned goods not for the purpose of mortgage granting and servicing are considered similar to a low degree to the opponent’s cards bearing electronically recorded data to the extent that, very often, recording devices come with their own integrated software. Therefore, these goods are complementary and consumers are likely to expect that these goods might have the same origin and producer.

The contested electronic tags for goods; all the aforementioned goods not for the purpose of mortgage granting and servicing have similarities to cards bearing electronically recorded data of the earlier right, given that the contested goods are encoded with information. The goods may originate from the same undertaking, because the same technology and know-how are used in their production, and such goods are usually distributed through the same channels. Therefore, there is at least a low degree of similarity between these goods.

The contested demagnetizing apparatus for magnetic tapes; all the aforementioned goods not for the purpose of mortgage granting and servicing is similar to a low degree to cards bearing electronically recorded data of the earlier mark. Not only is there an interdependent relationship, which means that the goods are complementary, but they may well derive from the same undertakings and be distributed through the same channels.

With regard to the remaining contested goods, listed below, no similarity can be found to the goods and services of the earlier right. None of these goods has anything relevant in common with the opponent’s goods and services in Classes 9, 36 and 38; their natures and purposes differ, as do their producers, consumers and distribution channels. Furthermore, they are not complementary and nor are they in competition with one another.

Scientific, nautical, surveying, weighing, measuring, signalling, checking (supervision), life-saving apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; mechanisms for coin-operated apparatus; cash registers, calculating machines; fire-extinguishing apparatus; Acid hydrometers; Acidimeters for batteries; Centering apparatus for photographic transparencies; Actinometers; Battery jars; Battery boxes; Accumulators, electric; Accumulators, electric, for vehicles; Plates for batteries; Speaking tubes; Acoustic couplers; Alidades; Ammeters; Anemometers; Anode batteries; Anodes; Anticathodes; Apertometers [optics]; Lenses for astrophotography; Astronomy (Apparatus and instruments for -); Vehicle breakdown warning triangles; Asbestos clothing for protection against fire; Asbestos gloves for protection against accidents; Asbestos screens for firemen; Azimuth instruments; Lighting ballasts; Barometers; Batteries for lighting; Batteries, electric; Gasoline gauges; Betatrons; Safety restraints, other than for vehicle seats and sports equipment; Lightning arresters; Flash-bulbs [photography]; Flashing lights [luminous signals]; Marking buoys; Compasses (Directional -); Buzzers; Time recording apparatus; Time switches, automatic; Chemistry apparatus and instruments; Chromatography apparatus for laboratory use; Chronographs [time recording apparatus]; Coils, electric; Spools [photography]; Chips [integrated circuits]; Cleaning apparatus for sound recording discs; Bar code readers; Teleprompters; Galvanic batteries; Diaphragms [photography]; Anti-dazzle shades; Radiology screens for industrial purposes; Saccharometers; Eyeglasses; Cyclotrons; Binoculars; Measuring spoons; Decompression chambers; Densitometers; Stills for laboratory experiments; Distillation apparatus for scientific purposes; Detectors; Smoke detectors; False coin detectors; Metal detectors for industrial or military purposes; Diagnostic apparatus, not for medical purposes; Distance measuring apparatus; Remote control apparatus; Igniting apparatus, electric, for igniting at a distance; Transparencies [photography]; Punched card machines for offices; Diffraction apparatus [microscopy]; Disk drives for computers; DNA chips; Clocks (Time -) [time recording devices]; Light (Traffic- -) apparatus [signalling devices]; Road signs, luminous or mechanical; Printed circuit boards; Dosage dispensers; Wires, electric; Respiratory masks, other than for artificial respiration; Breathing apparatus for underwater swimming; Breathing apparatus, except for artificial respiration; Dynamometers; Fire hose nozzles; Electric door bells; Electricity mains (Materials for -) [wires, cables]; Electric installations for the remote control of industrial operations; Electrified fences; Electro-dynamic apparatus for the remote control of signals; Electro-dynamic apparatus for the remote control of railway points; Light-emitting diodes [LED]; Electrolysers; Electromagnetic coils; Pens (Electronic -) [visual display units]; Light-emitting electronic pointers; Vacuum tubes [radio]; Thermionic valves; Epidiascopes; Ergometers; Exposure meters [light meters]; Invoicing machines; Crash test dummies; Film cutting apparatus; Filters [photography]; Filters for respiratory masks; Filters for ultraviolet rays, for photography; Fluorescent screens; Photovoltaic cells; Darkrooms [photography]; Photometers; Physics (Apparatus and instruments for -); Galvanic cells; Galvanometers; Surveying instruments; Record player needles (Apparatus for changing -); Record players; Fire extinguishing apparatus; Heliographic apparatus; Viewfinders, photographic; Voting machines; Holograms; Juke boxes, musical; Densimeters; Hydrometers; Identification sheaths for electric wires; Quantity indicators; Electric loss indicators; Coils (Choking -) [impedance]; Inductors [electricity]; Armatures [electricity]; Gradient indicators; Incubators for bacteria culture; Integrated circuits; Inverters [electricity]; Ionization apparatus not for the treatment of air or water; Riding helmets; Cables, electric; Cables (Fibre [fiber Am] optic -); Calibrating rings; Capillary tubes; Cathodic anti-corrosion apparatus; Cathodes; Cassette players; Containers for microscope slides; Coaxial cables; Electrified rails for mounting spot lights; Collectors, electric; Comparators; Compasses [measuring instruments]; Commutation (Electric apparatus for -); Commutators; Terminals [electricity]; Capacitors; Connectors [electricity]; Contact lenses; Contacts, electric; Regulating apparatus, electric; Correcting lenses [optics]; Boiler control instruments; Leather (Appliances for measuring the thickness of -); Skins (Apparatus for measuring the thickness of -); Cosmographic instruments; Theft prevention installations, electric; Dressmakers’ measures; Animated cartoons; Retorts; Pedometers; Galena crystals [detectors]; Covers for electric outlets; Fermentation (Apparatus for -) [laboratory apparatus]; Oxygen transvasing apparatus; Clothing especially made for laboratories; Laboratory centrifuges; Lactodensimeters; Lactometers; Lamps (Darkroom -) [photography]; Lasers, not for medical purposes; Magic lanterns; Glazing apparatus for photographic prints; Alcoholmeters; Ticket dispensers; Logs [measuring instruments]; Magnetic wires; Magnetic tape units for computers; Tape recorders; Magnets; Magnets (Decorative -); Mannequins (Resuscitation -) [teaching apparatus]; Pressure gauges; Mathematical instruments; Mechanical signs; Copper wire, insulated; Megaphones; Diaphragms [acoustics]; Diaphragms for scientific apparatus; Juke boxes for computers; Converters, electric; Frequency meters; Measuring instruments; Measuring apparatus; Measuring devices, electric; Plane tables [surveying instruments]; Gauges; Meteorological balloons; Meteorological instruments; Counters; Metronomes; Measures; Hands free kits for phones; Microphones; Micrometer gauges; Micrometer screws for optical instruments; Microprocessors; Microscopes; Microtomes; Scales (Lever -) [steelyards]; Coin-operated mechanisms for television sets; Coin-operated apparatus (Mechanisms for -); Hourglasses; Washing trays [photography]; Monitoring apparatus, electric; Monitors [computer hardware]; Marine depth finders; Weighbridges; Grids for batteries; Mouse [data processing equipment]; Chargers for electric batteries; Battery chargers; Furniture especially made for laboratories; Knee-pads for workers; Marine compasses; Naval signalling apparatus; Signals, luminous or mechanical; Signalling buoys; Navigational instruments; Neon signs; Bullet-proof waistcoats [vests (Am)]; Levelling instruments; Plates (Carriers for dark -) [photography]; Objectives [lenses] optics; Holders for electric coils; Junction sleeves for electric cables; Garments for protection against fire; Limiters [electricity]; Jigs [measuring instruments]; Shoes for protection against accidents, irradiation and fire; Protective helmets; Protective suits for aviators; Protective masks; Clothing for protection against accidents, irradiation and fire; Protective helmets for sports; Gloves for protection against X-rays for industrial purposes; Protection devices against X-rays, not for medical purposes; Voltage surge protectors; Branch boxes [electricity]; Drainers for use in photography; Measuring glassware; Resistances, electric; Reflecting discs for wear, for the prevention of traffic accidents; Anti-interference devices [electricity]; Ohmmeters; Fire blankets; Octants; Eyepieces; Spectacles [optics]; Goggles for sports; Spectacle cases; Spectacle frames; Eyepieces (Instruments containing -); Pince-nez chains; Pince-nez mountings; Spectacle glasses; Plumb bobs; Plumb lines; Optical character readers; Optical condensers; Optical glass; Optical lenses; Light conducting filaments [optical fibers fibres]; Optical lanterns; Mercury levels; Oscillographs; Anti-glare glasses; Protection devices for personal use against accidents; Revolution counters; Egg-candlers; Ozonisers [ozonators]; Horns for loudspeakers; Parking meters; Head cleaning tapes [recording]; Furnaces for laboratory use; Money counting and sorting machines; Periscopes; Pipettes; Dog whistles; Whistle alarms; Planimeters; Blueprint apparatus; Sheaths for electric cables; Screens [photography]; Nautical apparatus and instruments; Gas testing instruments; Gasometers [measuring instruments]; Calculating disks; Slide-rules; Calculating machines; Computer keyboards; Abacuses; Mouse pads; Laboratory trays; Wrist rests for use with computers; Fuse wire; Fuses; Polarimeters; Semi-conductors; Printed circuits; Socks, electrically heated; Alarms; Slide calipers; Calipers; Divers’ masks; Diving suits; Food analysis apparatus; Fire alarms; Fire engines; Motor fire engines; Fire boats; Fire hose; Fire beaters; Observation instruments; Rulers [measuring instruments]; Rules [measuring instruments]; Carpenters’ rules; DVD players; Compact disc players; Projection screens; Projection apparatus; Transparency projection apparatus; Tone arms for record players; Telerupters; Precision measuring apparatus; Precision balances; Peepholes [magnifying lenses] for doors; Headphones; Prisms [optics]; Central processing units [processors]; Clothing for protection against fire; Current rectifiers; Rods for water diviners; Electronic publications, downloadable; Containers for contact lenses; Pince-nez cases; Pyrometers; Radar apparatus; Cell switches [electricity]; Radiological apparatus for industrial purposes; Frames for photographic transparencies; Screens for photoengraving; Refractometers; Refractors; Cash registers; Voltage regulators for vehicles; Stage lighting regulators; Speed regulators for record players; Relays, electric; Rheostats; Regulators [dimmers] (Light -), electric; Loudspeakers; Respirators for filtering air; Steering apparatus, automatic, for vehicles; Control panels [electricity]; X-rays producing apparatus and installations, not for medical purposes; X-ray apparatus not for medical purposes; X-ray photographs, other than for medical purposes; X-ray tubes not for medical purposes; Air analysis apparatus; Distribution boards [electricity]; Distribution consoles [electricity]; Switchboxes [electricity]; Gloves for protection against accidents; Gloves for divers; Electricity conduits; Speed measuring apparatus [photography]; Speed indicators; Salinometers; Adding machines; Valves (Solenoid -) [electromagnetic switches]; Sextants; Spherometers; Nets for protection against accidents; Signal bells; Signalling panels, luminous or mechanical; Signalling whistles; Signal lanterns; Fog signals, non-explosive; Simulators for the steering and control of vehicles; Sirens; Glass covered with an electrical conductor; Cases fitted with dissecting instruments [microscopy]; Cabinets for loudspeakers; Distribution boxes [electricity]; Test tubes; Material testing instruments and machines; Testing apparatus not for medical purposes; Lens hoods; Sunglasses; Cell phone straps; Pince-nez cords; Solar batteries; Sonars; Sounding lines; Sounding leads; Sounding apparatus and machines; Probes for scientific purposes; Sound locating instruments; Cases especially made for photographic apparatus and instruments; Spectrograph apparatus; Spectroscopes; Couplers [data processing equipment]; Circuit closers; Connections for electric lines; Junction boxes [electricity]; Nose clips for divers and swimmers; Sprinkler systems for fire protection; Connections, electric; Downloadable music files; Downloadable image files; Starter cables for motors; Stands for photographic apparatus; Stereoscopic apparatus; Stereoscopes; Downloadable ring tones for mobile phones; Workmen’s protective face-shields; Marking gauges [joinery]; Retorts’ stands; Masts for wireless aerials; Editing appliances for cinematographic films; Sulphitometers; Drying racks [photography]; Drying apparatus for photographic prints; Beacons, luminous; Signs, luminous; Wire connectors [electricity]; Tachometers; Speed checking apparatus for vehicles; Kilometer recorders for vehicles; Ear plugs for divers; Taximeters; Crucibles [laboratory]; Range finders; Telescopes; Theodolites; Heat regulating apparatus; Thermometers, not for medical purposes; Temperature indicators; Thermostats; Thermostats for vehicles; Word processors; Thread counters; Push buttons for bells; Pressure in vehicle tires [tyres] (Automatic indicators of low -); Pressure measuring apparatus; Pressure indicator plugs for valves; Totalizators; Transformers [electricity]; Step-up transformers; Transistors [electronic]; Triodes; Tripods for cameras; Counter-operated apparatus (Mechanisms for -); Ducts [electricity]; Accounting machines; Protractors [measuring instruments]; Water level indicators; Pressure indicators; Urinometers; Particle accelerators; USB flash drives; Releases (Shutter -) [photography]; Shutters [photography]; Scales; Letter scales; Vacuum gauges; Variometers; Weighing apparatus and instruments; Weighing machines; Balancing apparatus; Verniers; Video screens; Wind socks for indicating wind direction; Viscosimeters; Hygrometers; Wavemeters; Conductors, electric; Spirit levels; Levels [instruments for determining the horizontal]; Voltmeters; Pocket calculators; Wafers [silicon slices]; Discharge tubes, electric, other than for lighting; Switches, electric; Circuit breakers; Altimeters; High-frequency apparatus; Surveyors’ levels; Levelling staffs [surveying instruments]; Aerometers; Anti-theft warning apparatus; Fire escapes; Life buoys; Life-saving rafts; Life belts; Safety tarpaulins; Safety nets; Life jackets; Life saving apparatus and equipment; Spark-guards; Needles for record players; Sighting telescopes for firearms; Locks, electric; Switchboards; Stamping mail (Apparatus to check -); Distance recording apparatus; Plugs, sockets and other contacts [electric connections]; Weights; Screw-tapping gauges; Railway traffic safety appliances; Surveying apparatus and instruments; Surveying chains; Flashlights [photography]; Hemline markers; Identification threads for electric wires; Amplifiers; Amplifying valves; Mirrors for inspecting work; Mirrors [optics]; Teeth protectors; Enlarging apparatus [photography]; Magnifying glasses [optics]; Solderers’ helmets; Bells [warning devices]; Alarm bells, electric; Sound alarms; Acoustic conduits; all the aforementioned goods not for the purpose of mortgage granting and servicing.

Contested services in Class 36

The contested services in this class all fall into four categories the class contains (insurance; financial affairs; monetary affairs; real estate affairs). For ease of reference, all of the services contained in the contested application are listed below together with the category to which they belong:

Financial affairs; monetary affairs: Analysis (Financial -); Home banking; Banking; Customs brokerage; Retirement payment services; Funds transfer (Electronic -); Factoring; Financial information; Evaluation (Financial -) [insurance, banking, real estate]; Timber (Financial evaluation of standing -); Evaluation of wool (Financial -); Financial consultancy; Financing services; Financial sponsorship; Hire-purchase financing; Financial management; Fund investments; Debt collection agencies; Surety services; Clearing-houses, financial; Provident fund services; Stock exchange quotations; Business liquidation services, financial; Brokerage of carbon credits; Numismatic appraisal; Evaluation (Repair costs -) [financial appraisal]; Jewellery appraisal; Antique appraisal; Art appraisal; Stamp appraisal; Fiscal assessments; Organization of collections; Verification (Check [cheque] -); Instalment loans; Actuarial services; Loans [financing]; Savings bank services; Trusteeship; Brokerage; Stocks and bonds brokerage; Deposits of valuables; Safe deposit services; Credit bureaux; Debit card services; Credit card services; Issue of tokens of value; Travellers’ checks [cheques] (Issuing of -); Issuance of credit cards; Pawnbrokerage; Lending against security; Charitable fund raising; Exchanging money; Mutual funds; all the aforementioned services not for the purpose of mortgage granting and servicing.

Insurance: Insurance information; Accident insurance underwriting; Marine insurance underwriting; Health insurance underwriting; Insurance underwriting; Life insurance underwriting; Insurance consultancy; Insurance brokerage; Fire insurance underwriting; all the aforementioned services not for the purpose of mortgage granting and servicing.

Real estate affairs: Apartment house management; Real estate appraisal; Renting of flats; Leasing of farms; Rental of offices [real estate]; Leasing of real estate; Real estate agencies; Real estate management; Housing agents; Accommodation bureaux [apartments]; Rent collection; all the aforementioned services not for the purpose of mortgage granting and servicing.

The earlier mark is registered for credit card services; issue of credit cards; credit card transaction processing services, which are financial/monetary services. Therefore, all the contested services related to financial affairs and monetary affairs are either identical to the opponent’s services or similar to them, since they have the same nature, the same distribution channels and the same providers, and they target the same public. The fact that the contested services are not for the purpose of mortgage granting and servicing does not change that finding.

The contested insurance; insurance information; accident insurance underwriting; marine insurance underwriting; health insurance underwriting; insurance underwriting; life insurance underwriting; insurance consultancy; insurance brokerage; fire insurance underwriting; all the aforementioned services not for the purpose of mortgage granting and servicing are all insurance services. Providing insurance services consists of accepting liability for certain risks or losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingency occurs, such as death, accident, sickness, contract failure and, in general, any event capable of causing damages. They have different purposes from the opponent’s credit card services, which are usually provided by banks. Nevertheless, they also have some significant points in common. Insurance services have a financial nature and insurance companies are subject to similar rules of licensing, supervision and solvency to banks and other institutions providing financial services. Most banks also offer insurance services, including health insurance, or they act as agents for insurance companies, with which they are often economically linked. In addition, it is not unusual to find a financial institution and an insurance company in the same economic group. Therefore, although insurance services and the opponent’s services have different purposes, they have similar natures, they may be provided by the same undertaking or related undertakings and they have the same distribution channels. Therefore, they are considered similar at least to a low degree.

The contested real estate affairs; apartment house management; real estate appraisal; renting of flats; leasing of farms; rental of offices [real estate]; leasing of real estate; real estate agencies; real estate management; housing agents; accommodation bureaux [apartments]; rent collection; all the aforementioned services not for the purpose of mortgage granting and servicing are all real estate services. They comprise the managing of real estate properties, real estate agency and the evaluation of real estate properties, as well as consultancy and provision of information related thereto. This mainly involves the finding of property, making it available for potential buyers and acting as an intermediary. These services are not similar to the opponent’s services in Class 36. These services do not have the same nature and purpose and they are provided by different entities. Consumers clearly distinguish real estate agents’ services from those of financial institutions. They do not expect a bank to find housing or expect a real estate agent to manage their finances. The mere fact that real estate may have to be financed in order to be purchased is not sufficient for a finding of similarity between real estate affairs and the opponent’s financial services. Although financial services can be important for the acquisition of real estate, consumers usually turn first to a real estate agent to search for a property and second to a financial institution to finance the property. The abovementioned contested services in Class 36 are also dissimilar to the opponent’s goods and services in Classes 9 and 38, since they do not meet any of the ‘Canon’ criteria (nature, purpose, method of use, distribution channels, providers/producers, relationship of complementarity or competition).

Contested services in Class 38

The contested telecommunications; all the aforementioned services not for the purpose of mortgage granting and servicing are included in the opponent’s telecommunications. Therefore, they are identical.

The rest of the contested services, namely: wireless broadcasting; electronic mail; voice mail services; communications by fiber [fibre] optic networks; cellular telephone communication; transmission of greeting cards online; communications by computer terminals; message sending; providing internet chatrooms; providing access to databases; providing telecommunications connections to a global computer network; providing telecommunication channels for teleshopping services; providing user access to global computer networks; rental of facsimile apparatus; rental of modems; rental of access time to global computer networks; rental of telephones; rental of telecommunication equipment; rental of message sending apparatus; transmission of telegrams; transmission of digital files; satellite transmission; computer aided transmission of messages and images; facsimile transmission; radio broadcasting; electronic bulletin board services [telecommunications services]; telecommunications routing and junction services; communications by telephone; telephone services; communications by telegrams; telegraph services; information about telecommunication; teleconferencing services; television broadcasting; telex services; news agencies; cable television broadcasting; paging services [radio, telephone or other means of electronic communication]; all the aforementioned services not for the purpose of mortgage granting and servicing are also included in the broad category of the opponent’s telecommunications. Therefore, these services are considered identical.

2. The signs

REDUNICRE QUICKPAY
Earlier trade mark	Contested sign

The relevant territory is Portugal.

Visually, the signs are similar to the extent that they coincide in the letters ‘QUI*KPAY’. Since the earlier sign is a word mark, the word itself is protected and not its written form. Therefore, it is irrelevant whether the sign is written in upper or lower case letters, or in a combination thereof. All the letters of the contested sign are included in the earlier mark, which differs only in the additional letter ‘C’ and in the additional word ‘REDUNICRE’. The contested sign also differs in its stylisation (the word ‘QUIK’ is written in bold black upper case letters with a small blue figurative element inside the letter ‘Q’, whereas the letters ‘pay’ are written in blue lower case letters).

Aurally, the pronunciation of the signs coincides in the sound of the element ‘QUIK(C)PAY’, and to that extent the signs are aurally similar. The additional letter ‘C’ of the earlier mark, placed before the letter ‘K’, does not change the pronunciation of the word, pronounced /kuik-pai/ in both signs. The pronunciation differs in the sound of the additional word ‘REDUNICRE’ of the earlier mark.

Conceptually, the word ‘REDUNICRE’ of the earlier mark is meaningless. The elements ‘QUICKPAY’ of the earlier sign and ‘QUIKPAY’ of the contested sign are also meaningless for a large part of the relevant Portuguese public, as is the figurative element of the contested sign, which does not convey any specific meaning. However, it cannot be ruled out that part of the public will perceive the element ‘QUICKPAY’ of the earlier mark as composed of the two English words ‘QUICK’, meaning ‘fast’, and ‘PAY’, meaning ‘give (someone) money that is due for work done, goods received, or a debt incurred’ (see Oxford Dictionaries online). Therefore, part of the public will understand this element, as a whole, as meaning ‘fast payment’. This meaning will be perceived by part of the public in the contested sign notwithstanding the misspelling of the word ‘QUIK’. Therefore, for a large part of the public, neither of the signs has a meaning and, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. For part of the public, however, the signs are conceptually similar to the extent that they both refer to the same concept of ‘fast payment’.

Taking into account the abovementioned visual, aural and, for part of the public, conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The element ‘QUICKPAY’ of the earlier mark will be associated, by part of the public, with ‘fast payment’. Bearing in mind the relevant services in Class 36 (financial and monetary affairs, insurance), it is considered that, for this part of the public and in relation to these services, this element alludes to ‘fast payment’ and is thus less distinctive than the remaining element, ‘REDUNICRE’, of the earlier mark. For the remaining, large, part of the public that will not understand the element ‘QUICKPAY’, the earlier mark has no element that could be clearly considered more distinctive than other elements.

The contested sign has no element that could be clearly considered more distinctive than other elements.

The earlier mark has no element that could be considered more dominant (visually eye‑catching) than other elements.

The element ‘QUIK’ of the contested sign, written in larger letters and in bold, is slightly more dominant than the element ‘pay’.

4. 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, taken as a whole, 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, despite the presence, for part of the public, and in relation to some of the services, of an allusive and less distinctive element in the mark, as stated above in section c) of this decision.

5. 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 different degrees are directed at the public at large. The level of attention varies from average to higher than average depending on the nature of the goods and services. Since the services in Class 36 may have a significant financial impact on their users, consumers’ level of attention in relation to these services will be rather high.

6. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to different degrees and partly dissimilar.

The signs are visually similar to the extent that the contested sign, ‘QUIKpay’, is fully included within the independent element ‘QUICKPAY’ of the earlier mark. These elements, ‘QUICKPAY’ and ‘QUIKpay’, differ only in the additional letter ‘C’ of the earlier mark. Aurally, this difference has no impact and these elements are identical. Furthermore, for a large part of the public, these elements are meaningless and thus distinctive. The stylisation of the contested sign does not deflect attention from the verbal component, and the small blue figurative element is essentially of a decorative nature.

Therefore, the Opposition Division considers that the visual and aural dissimilarities, mainly arising from the additional element ‘REDUNICRE’ of the earlier mark, are not sufficient to counterbalance the visual, aural and, for part of the public, conceptual similarities between the signs. Although part of the Portuguese public will perceive the elements ‘QUICKPAY’ and ‘QUIKPAY’ as alluding to ‘fast payment’ in relation to some of the relevant services, namely the services in Class 36, this fact does not prevent a finding that there is a likelihood of confusion, since these English words are conjoined to form an invented word that is still capable of indicating the commercial origin of the goods and services in question. Therefore, the differing elements do not outweigh the similarities resulting from the coinciding elements ‘QUICKPAY’ and ‘QUIKPAY’.

In addition, average consumers only rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. In this respect, it must be borne in mind that even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (judgment of 21/11/2013, T‑443/12, ‘ancotel’, paragraph 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, even when the degree of attention is high, and therefore the opposition is partially well founded on the basis of the opponent’s Portuguese trade mark registration.

Even if the marks would not be directly confused with one another, for the purposes of Article 8(1)(b) CTMR there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes, due to their similarities, that they derive from the same undertaking or indeed economically linked undertakings. This is clearly applicable in this the case, and the relevant consumer may perceive the contested application as a brand variation of the earlier mark, used for a different line of goods and services, or vice versa.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to different degrees to those of the earlier trade mark. This is also valid for the goods and services that are similar to a low degree, given the significant similarities between the signs.

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) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Frédérique SULPICE

Begoña URIARTE VALIENTE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.