OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 508 078
Banca Sella S.p.A., Piazza Gaudenzio Sella, 1,13900 Biella, Italy (opponent), represented by Jacobacci & Partners S.P.A.,Corso Emilia, 8, 0152 Torino, Italy (professional representative)
a g a i n s t
Global Exchange Payments SE, Palisády 33, 811 06 Bratislava, Slovakia (applicant), represented by JUDr. Miroslav Ivanovič, Grösslingova 45, 81109 Bratislava, Slovaquia (professional representative).
On 22/02/2016, the Opposition Division takes the following
Class 9: Computer programmes relating to financial matters; Software; Application software.
Class 36: Insurance services; Financial and monetary services, and banking; Valuation services; Provision of prepaid cards and tokens.
Class 38: Telecommunication services.
trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against some of the goods and services
of Community trade mark application No
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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Computer software, recorded, magnetic data carriers including magnetic cards and electronic cards; calculating machines, data processing equipment and computers.
Class 36: Banking services; financial analysis and management; capital investment services; brokerage services in the fields of futures, commodities, securities, currencies and financial instruments; trading of financial instruments; electronic financial trading services; providing financial information, including information in the fields of futures, commodities, securities, currencies, financial instruments, brokerage, trading, investments, companies, financial markets and indices; financial securities and commodities exchange services; provision of financial information in electronic form relating to market quotations, trade executions, trading in financial instruments in the nature of offers and trades; providing financial pricing information and financial information relating to trade execution.
Class 38: Services of information, transmission of data and consultation provided also through a global system of telematic connections.
The contested goods and services are the following:
Class 9: Computer programmes relating to financial matters; Software; Application software.
Class 36: Insurance services; Financial and monetary services, and banking; Valuation services; Real estate services; Provision of prepaid cards and tokens.
Class 38: Telecommunication services.
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 goods, Computer programmes relating to financial matters; Software; Application software are included in the broad category of the opponent’s Computer software. Therefore, they are identical.
Contested services in Class 36
The contested Financial and monetary services; include, as broader categories, the opponent’s financial analysis and management; capital investment services; brokerage services in the fields of futures, commodities, securities, currencies and financial instruments; trading of financial instruments; electronic financial trading services;. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested banking services are identically contained in both lists of services (including synonyms). These services are identical.
The contested Valuation services; Provision of prepaid cards and tokens are included in the opponent’s broader category of banking services. These services are identical.
The contested Insurance services are similar to the opponent’s financial services described as for example financial analysis and management. They have the same nature. They can coincide in producer, end user and distribution channels.
The contested Real estate services are provided by real estate agencies or by licensed/certified individual assessors, whereas the earlier services, of primary financial nature are provided by financial institutions. The mere fact that real estate may have to be financed in order to be purchased is not enough to find similarity between real estate services and financial services. Even if financial services can be important for the acquisition of real estate, the consumers usually turn first to a real estate agent to search for a property, and secondly to a financial institution to finance the property. As such they are dissimilar to all the opponent’s services in class 36 which are of primary financial nature. They are also dissimilar to the opponent’s goods in class 9, Computer software, recorded, magnetic data carriers including magnetic cards and electronic cards; calculating machines, data processing equipment and computers and the opponent’s services in class 38, Services of information, transmission of data and consultation provided also through a global system of telematic connections, in as much as the former are goods of different nature and purpose and the latter are telecommunication services, also different in purpose, distribution channels, end users.
Contested services in Class 38
The contested services Telecommunication services, as a broader category overlaps with the opponent’s Services of information, transmission of data and consultation provided also through a global system of telematic connections. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
Earlier trade mark
The relevant territory is the European Union.
The earlier mark is a one word mark formed by the letters “GESTPAY”.
The contested sign is a figurative mark composed by two terms “gex” and “PAY” inserted from top to bottom in a red background circle as shown above. The term “gex” is written in a fanciful typeface while “PAY” appears in a close to standard typeface.
Visually, the middle letters ST of the earlier trade mark vs the last letter X of the first element “gex” in the contested sign are different together with the fact that the contested mark is composed by two verbal elements inserted in a red background circle. Nevertheless, the signs are similar to the extent that they coincide in the letters ‘GE’ and ’PAY’.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GE’ and ’PAY’ present in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters “ST” vs “X” that is nevertheless similar in a large part of the territory (i.e French speaking countries). As such, the marks are phonetically highly similar.
Conceptually, the earlier mark does not have a meaning per se in the relevant territory. The term PAY of the contested sign, reproduced at the end of the earlier mark is an English word meaning give (someone) money that is due for work done, goods received, or a debt incurred. The first part of the earlier mark GEST- is also a English term meaning adventure. As stated by the applicant, the first word of the contested sign, GEX may be an acronym for Global Exchange (eCommerce/electronic data interchange)- Source: acronym Finder for part of the relevant public, in particular, the specialised public mentioned in part e) of the present decision. The marks are therefore conceptually similar at least for the part of the consumer that sees the meaning of PAY at the end of the earlier mark.
Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs under comparison are similar.
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 dominant (visually eye-catching) than other elements.
The word GESTPAY forming the earlier mark does not exist as a meaningful word in the relevant territory. Nevertheless, as mentioned in the conceptual comparison of the signs, the English speaking part of the relevant public is likely to perceive “PAY”, meaning, inter alia, either the action of giving money to someone for work performed, or the money perceived for doing a job. The first part of the sign, GEST- (meaning adventure) does not have any relation with the services in question. – PAY could be been seen as a weak element of the mark because it may allude to the opponent’s services in class 36 for this part of the public only.
As stated above, the first word of the contested sign, GEX could be an acronym for Global Exchange (eCommerce/electronic data interchange)- Source: acronym Finder that would be recognised by the specialised public and thus alluding to the services in question in as much as it would refer to the electronic transactions. Nevertheless, there would still be a part of the relevant public for which this word does not have a meaning, nor a relation with the goods and services and thus, distinctive. Finally, it can be stated that part of the relevant consumers may recognise the term ‘Pay’ in the contested mark without the need for analytical effort (especially because it is an independent term). This term is in fact descriptive for services in class 36, where it can indicate that the services facilitate payment transactions.
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 as described in section c) above. 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 despite the presence of an allusive element as mentioned in part c).
Relevant public – degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the services found to be identical or similar are directed at both the public at large and at business customers with specific professional knowledge or expertise in business and in the field of insurance, banking and monetary services. The level of attention varies from average to higher than average. These services can affect the financial assets of the individual or undertakings.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, paragraph 18; judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, paragraph 20; judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 24; judgment of 29/09/1998, C-39/97, ‘Canon’, paragraph 17).
The earlier mark “GESTPAY” enjoys a normal degree of distinctiveness as a whole in as much as the entire word does not have any meaning. The signs share not only the same beginning ‘GE’ but also the same ending ‘PAY’ while the different letters respectively ‘ST’ and ‘X’ have been found aurally highly similar for part of the public. They are also conceptually similar for part of the public although the common element PAY when understood is weak for part of the services. For the part of the public not understanding the term PAY (in any of the marks) the signs are similar overall (visual and aural similarity as described above).
Some of the contested goods and services were found identical or similar and some were found dissimilar to those of the earlier mark.
In light of the foregoing considerations, it must be held that there is a likelihood of confusion on the part of the public for the contested goods and services that have been found identical or similar. Therefore the opposition is partially well founded on the basis of the opponent’s international trade mark registration No 1 183 301.
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 those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) CTMR, the opposition based on this article and directed at these services cannot be successful.
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
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.