OPPOSITION No B 2 457 813

mBank S.A., ul. Senatorska 18, 00-950 Warszawa, Poland (opponent), represented by Kancelaria Patentowa Lex-Patent "Novita", Ul. Piotrkowska 270, p. V, pok 509, 90-361 Łódź, Poland (professional representative)

a g a i n s t

Mopolis GmbH, Bleibtreustraße 12, 10623 Berlin, Germany (applicant), represented by Lausen, Residenzstr. 25, 80333 München, Germany (professional representative).

On 17/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 457 813 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 13 245 303, namely against some of the goods and services in Classes 9 and 35 and all the services in Class 36. The opposition is based on, inter alia, Community trade mark registration No 11 874 773. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Community trade mark registration No 11 874 773.

1. The goods and services

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

Class 9: Data processing apparatus; computer memories, computer software for electronic banking; electronic data carrying media.

Class 35: Providing of services, including with the aid of communication technologies including social networking portals, namely business and commercial management assistance, providing business information, providing commercial information and advice to customers and potential customers, providing business information to bank customers, economic forecasting.

Class 36: Banking and financial services, banking and financial services by means of communications techniques and technologies, banking and financial services by means of mobile techniques and communication technologies, financial and monetary affairs, providing services, including services by means of communication technologies including social networking portals, namely financial consultancy, providing information aimed at recipients of banking services informing them about their financial status, providing assistance in the field of managing finances of recipients of banking services, providing information aimed at recipients and/or potential recipients of banking services informing them about the opportunity of using bank products and services, financial analysis, issuing of credit cards, debit cards, tokens of value, travellers' checks, issuing and trading in securities, financial evaluation and securities brokerage, investment services, investment fund services, managing bank accounts, processing and receiving of fixed deposits and savings, opening of letters of credit, providing of credit and loans, financial transactions and electronic funds transfer, securities brokerage, brokerage, insurance brokerage, fiduciary and deposit services, exchanging money, bill of exchange and cheque operations, safe deposit services, purchase and sale of cash receivables, purchase and sale of real estate, conducting monetary settlements, providing of credit and loans, providing and acknowledging of sureties, trading in foreign exchange values and providing financial services relating to trading abroad, securities trading and managing of securities deposit accounts, deposits of valuables and securities, banking and insurance consultancy, acquisition services on behalf of pension funds, acting as a depositary for pension and investment funds, fund administration by order of public authorities and other authorities, keeping a record of pension fund members and a record of pension fund participants, receiving orders for purchasing, repurchasing and subscribing to share units or to investment certificates in investment funds, arranging and exchanging debts for parts of the debtor's property, purchase and sale of foreign currency, brokerage of money transfers and foreign exchange settlements.

The contested goods and services are the following:

Class 9: Computers and data processing apparatus; mobile computer hardware; mobile players for multimedia products, including fittings (included in class 9); computer programs (recorded or downloadable ); computer software, in particular applications (apps) for PCs, notebook computers, smartphones, tablets, smartwatches and televisions.

Class 35: Arranging commercial transactions for third parties, also within the framework of e-commerce; arranging contracts for the buying and selling of goods for others; Product and price comparison services; consumer consultancy, namely providing of information and advice for consumers in commercial and business affairs; assembling data in computer-databases; accounting for electronic order systems, providing a system for the payment of invoices via the internet or mobile terminals.

Class 36: Handling of monetary transactions with credit cards, transfers and direct debits; fiduciary management of financial transactions.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the white letter ‘M’. However, they also differ as the earlier sign consists of a lowercase letter ‘m’ with a multi-coloured squared background striped in dark red, yellow, black, grey, light red, pink-purple and orange and the contested sign consists of an uppercase letter ‘M’ with a uniform orange background. Moreover, the left side of the letter letter ‘M’ and of the orange background in the contested sign are lengthened to the bottom giving the impression of a perspective.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the sound of the only letter /m/ of both signs and the signs are identically pronounced.

As both signs will be perceived as a single letter ‘m/M’, the signs are conceptually identical.

Taking into account the abovementioned visual, aural and 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 marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 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.

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 assumed to be identical are directed at the public at large (e.g. computers) or at business customers with specific professional knowledge or expertise (e.g. arranging contracts for the buying and selling of goods for others). The degree of attention will vary from average to high.

6. Global assessment, other arguments and conclusion

It has been assumed in the previous sections of the present decision that the goods and services in question are identical. It has also been concluded that the signs are similar as they both contain a letter ‘m/M’.

The signs have been found aurally and conceptually identical to the extent that they contain a letter ‘m/M’. However, the Opposition Division must attach the appropriate weight to each of these aspects and the overall impression that they are capable of producing on the consumer.

With respect to the aural identity, given that the only sound in each case is that of a single letter, the identity in sound attaches to the most basic irreducible unit of language for word formation, namely a single letter. Whilst such a level of identity cannot be overlooked completely, its capacity to contribute to confusion on the part of

the consumer is minimal in the view of the Opposition Division. The fact that two marks are identical to the extent of the sound of one single letter is not considered to leave much of an impression on the consumer, especially considering that the goods in question are not normally ordered in a way that requires extra prominence to be given to the aural similarity (as might be the case for certain goods, such as particular beverages). Further, both marks are, of course, figurative marks, in that both the opponent and applicant opted to apply for a particular visual depiction of the letter in question.

As regards conceptual identity, again, the identity in question attaches to one of the most basic semantic concepts that a mark can represent - a single letter. Concepts do not come much more basic than this, and the mere fact that there is conceptual identity between two marks based only on the fact that they contain a representation of the same letter cannot be given much weight.

As mentioned above, the opponent and applicant opted to apply for a particular visual depiction of the letters in the respective marks. Given the minimal impact of the aural and conceptual identity merely due to one common letter, the scope for likelihood of confusion must also take on board, to an important extent, the visual impression that arises from the particular way in which the marks are represented.

In this regard, the Court made it clear that the fact that two trade marks consisting of the same letter (or of the same sequence of letters) are found to be identical from an aural and a conceptual point of view is relevant when it comes to assessing the existence of a likelihood of confusion. In such cases, it is only when the later trade mark causes a sufficiently different visual impression that a likelihood of confusion can be safely ruled out (judgment T‑187/10, (G / G ea), para. 60).

Consequently, a likelihood of confusion can be safely excluded when two conflicting signs, albeit consisting of the same single letter, are stylised in a sufficiently different way or consist of sufficiently different graphic representations, so that their different graphical characterisation eclipses the common element.

Considering this, the way the letter ‘m/M’ appears in each sign and whether the signs present further features is determinant. In the present case, the earlier sign consists of a lowercase letter ‘m’ and the contested sign of an uppercase letter ‘M’ with a left side lengthened to the bottom. This particular stylisation of the letter ‘M’ in the contested sign is striking and will be remembered by the relevant public as it gives the impression of a perspective. Moreover, the backgrounds on which a letter ‘m/M’ is placed in each of the signs differ. The letter ‘m’ in an earlier sign is placed on a multi-coloured squared background stripped in dark red, yellow, black, grey, light red, pink-purple and orange and the letter ‘M’ in the contested sign is placed on the uniform orange background with the left side lengthened. These different elements cannot be overlooked and have a significant bearing on the overall impression.

The marks in question have therefore enough visual differences that outweigh the similarities between them.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

Community trade mark registration No 11 874 451  ;

Community trade mark registration No 11 874 609 ;

Community trade mark registration No 11 874 971 ;

Community trade mark registration No 11 875 176 ;

Community trade mark registration No 11 875 267 ;

Polish trade mark registration No 265 121 ;

Polish trade mark registration No 265 122 ;

Polish trade mark registration No 265 123 ;

Polish trade mark registration No 265 124 ;

Polish trade mark registration No 265 119 ;

Polish trade mark registration No 265 120  .

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain colours which are less similar to the colours used in the contested mark or colours that are not present in the contested trade mark. Moreover, they cover the same scope of goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) CTMIR, 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

Vít MAHELKA

Anna BAKALARZ

Volker MENSING

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.