OPPOSITION No B 2 905 167

Monte de Piedad y Caja de Ahorros de Ronda, Cadiz, Almeria, Malaga, Antequera y Jaén, Avda. Andalucía 10-12, 29007 Málaga, Spain (opponent), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative)

a g a i n s t

Unicre - Instituição Financeira de Crédito, S.A., Avenida António Augusto de Aguiar, No.122 - 3º., 1050-19 Lisboa, Portugal (applicant), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative).

On 26/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 905 167 is partially upheld, namely for the following contested services:

Class 36: Provision of credit cards; Issuance of credit cards; Instalment credit financing; Consumer lending services; Financial services relating to credit cards; Credit and cash card services.

2. European Union trade mark application No 16 474 819 is rejected for all the above mentioned services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 474 819 . The opposition is based on European Union trade mark No 9 698 838 ‘UNICAJABANCO’ and European Union trade mark No 9 698 952 ‘BANCOUNICAJA’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based. The date of filing of the contested application is 16/03/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 16/03/2012 to 15/03/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the services on which the opposition is based.

In that regard, the Opposition Division notes that the opponent’s lists of services in Class 36 in the first and second language of filing do not read the same.

In particular, in the first language of filing, namely, Spanish, the list of services in Class 36 reads as follows:

Class 36: Seguros; Operaciones financieras; Operaciones monetarias; Negocios inmobiliarios.

In English, the description of the services in Class 36 reads as follows:

Class 36: Insurance; Monetary affairs; Monetary transaction services; Real estate affairs.

As apparent from the above, the services operaciones financieras for which the application has been filed was translated as monetary affairs in English while in accordance with the data appearing on the harmonised database for classification, this category of services should have been translated as banking.

It results from all the foregoing that the evidence must show use of the trade marks for the following services:

Class 36: Insurance; Banking; Monetary transaction services; Real estate affairs.

Class 38: Telecommunications.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 16/05/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 21/07/2018 to submit evidence of use of the earlier trade marks. On 14/06/2018, within the time limit, the opponent submitted evidence of use. As the opponent had already filed documents along with the further facts, evidence and arguments in support of the opposition that it submitted in order to substantiate its reputation and enhanced distinctiveness claims, said evidence has also to be taken into account. Therefore, the evidence to be taken into account is the following:

Evidence presented on 26/12/2017

 Opponent’s portfolio of trade marks consisting of, or including, the mark UNICAJA;

 Spanish press clippings featuring signs ‘UNICAJA’ and/or ‘UNICAJA BANCO’ published between 2015 and 2017, the headlines of which have been translated into English;

 Initial Public Offering for ‘UNICAJA BANCO, S.A.’ dated 15/06/2017 on top of which a figurative sign ‘Unicaja Banco’ is depicted;

 Opponent’s website extracts in Spanish showing that ‘UNICAJA’ is the sponsor of Málaga basketball team;

 Google search results for the term ‘UNICAJA’.

Evidence presented on 14/06/2018

 Invoices addressed to the opponent for each year for the period 2011 – 2017 mentioning the domain names ‘unicajabanco.com’ and ‘unicajabanco.es’ along with extracts in English of said domains dated 14/06/2018, in particular a section entitled ‘About Unicaja Banco’ explaining that it ‘is a Spanish bank with an established trajectory of financial solvency and strength’;

 Independent audit reports in English for each year of the period 2013 – 2017 of Unicaja Banco, S.A.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the services for which the earlier marks are registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Assessment of the evidence of use

As regards the place of use, it is noted that the evidence filed in the present case shows that the earlier mark has been used in Spain. This can be inferred from the language of the documents, in particular the press clippings, the opponent’s website extracts showing sponsoring of a Spanish basketball team, the Google search results and the invoices addressed to the opponent, which are all in Spanish as well as from the currency mentioned on the articles, the invoices, as well as on the audit’s reports (Euros).

As Spain constitutes a significant part of the European Union, it has to be considered that, the use of the earlier marks in this country is use in the European Union (see, 15/07/2015, T-398/13, TVR ITALIA, EU:T:2015:503, § 57; 30/01/2015, T-278/13, now, EU:T:2015:57, by analogy). Therefore, the evidence relates to the relevant territory.

Concerning the time of use, the Opposition Division notes that the opponent has provided audit reports for each year of the relevant period and close to 20 press articles dated at regular intervals within the last two years of the relevant period. Moreover, the Opposition Division considers that the evidence which is dated outside the relevant period (the webpages’ extracts and the Google search results) are also relevant, as they corroborate the evidence which is dated within the relevant period. Therefore, the opponent has established the time of use.

As regards the extent of use, all of the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

Indeed, the assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the marks was not high may be offset by the fact that use of the marks was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The audit reports and the articles published in Spanish press provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Indeed, both the audit reports and the Spanish press articles show a rather high commercial volume as well as a national significance. Moreover, the audit reports establish a regular, effective and consistent use throughout the whole relevant period. Therefore, it is concluded that the opponent has provided sufficient indications concerning the extent of use of the earlier marks.

As to the nature of use, it has to be borne in mind that in the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In the present case, the evidence shows that on the market, the opponent uses several signs in order to identify its services, namely the words ‘Unicaja’ (a) and ‘Unicaja Banco’ (b) and the following figurative sign (c).

From the outset, the Opposition Division notes that although the earlier marks as registered, ‘UNICAJABANCO’ and ‘BANCOUNICAJA’ do not have a meaning as a whole for a substantial part of the relevant consumers, since when perceiving a sign, consumers will generally break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57), the Opposition Division considers that the earlier mark will be dissected by the Spanish-speaking part of the relevant public in ‘UNICAJA’ and ‘BANCO’ (or ‘BANCO’ and ‘UNICAJA’) and even ‘UNI’, ‘CAJA’ and ‘BANCO’ (or ‘BANCO’, ‘UNI’ and CAJA’).

Indeed, the element ‘UNI’ corresponds to a common prefix which means single or only one, ‘CAJA’ has numerous meanings but taking due account of both the context of the services in question in the present case in Class 36 and the presence of the word ‘BANCO’ which designates inter alia, a company dedicated to perform financial operations with the money from its shareholders and the deposits of its customers, this element will most probably be associated with ‘caja de ahorro’ that is, a credit institution originally constituted as a foundation of a private nature and social purpose, specializing in the financing of families and small and medium enterprises (definitions extracted from Diccionario de la lengua Española de la Real Academia online at https://dle.rae.es/).

Considering the descriptive meaning and hence lack of distinctiveness of the element ‘BANCO’, the fact that it is sometimes omitted when referring to the opponent and/or its services cannot alter the distinctive character of the earlier marks as registered.

As to the sign shown above under letter (c), considering that, in accordance with the case-law, in cases where the figurative element plays only a minor role, being merely decorative, the distinctive character of the sign as registered is not affected (12/12/2014, T-105/13, TrinkFix, EU:T:2014:1070; 23/01/2014, T-551/12, Rebella, EU:T:2014:30), which is the case here, the Opposition Division considers that the graphical aspects of this sign do not affect the distinctive character of the earlier marks as registered.

In view of the above, the Opposition Division considers that the evidence does show use of the signs as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade marks during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use for all the services covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, contrary to the applicant’s contentions, it is quite clear from the evidence that the earlier trade marks have been used in relation to banking services that is, the provision of all those services carried out for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business.

As the earlier marks are registered for banking, it is considered that genuine use is proven for these services.

On the other hand, the earlier marks are also registered for, inter alia, monetary transaction services, that is, services consisting of making or receiving a payment, including deposits, withdrawals, and exchanges. Specific examples of monetary transactions include electronic funds transfers, checks, money orders, gift cards, and bartering. Considering that the banking services for which the earlier marks have been used include the broad category of monetary transaction services for which the earlier marks are also registered, it is considered that use has been proven also for these services.

However, the evidence does not show genuine use of the earlier marks for the remaining services on which the opposition is based, namely, insurance; monetary affairs; real estate affairs in Class 36 and/or for telecommunications in Class 38. In particular, although the above mentioned services correspond to activities that might be carried out by banking establishments, none of these may be considered as included or including the banking services for which the earlier marks have been used and the opponent has not shown that it deals with any of these activities.

Therefore, the Opposition Division will only consider the abovementioned banking; monetary transaction services in Class 36 in its further examination of the opposition.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public. 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 European Union trade mark registration No 9 698 838 ‘UNICAJABANCO’.

a) The services

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

Class 36: Banking; Monetary transaction services.

The contested services are the following:

Class 36: Provision of credit cards; Issuance of credit cards; Instalment credit financing; Consumer lending services; Financial services relating to credit cards; Credit and cash card services.

Class 38: Telecommunication 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 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 services in Class 36

The contested services in that class all belong to the financial sector and involve monetary transactions. It follows that they all include or overlap with the opponent’s banking; monetary transaction services to which they are hence identical.

Contested services in Class 38

The contested services in that class consist of different kinds of telecommunication services, that is, services of exchange of information by electronic and electrical means over a significant distance. As apparent from the above explanations, the opponent’s banking; monetary transaction services have a completely different nature and purpose since they qualify as financial services and their purpose is the exchange of money. Moreover, these services differ in distribution channels and usual provider and they are in competition with each other nor complementary to each other. In that context, the mere fact that both kinds of services address the public at large is not sufficient for a finding of similarity between these services. Therefore, they are dissimilar.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, the consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

c) The signs

UNICAJABANCO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark made of a single element ‘UNICAJABANCO’ while the contested sign is a figurative element made of a single word element ‘unibanco’ written in a lower caser standard bold typeface, the letter ‘u’ being represented in another colour within a circle.

From the outset, the Opposition Division notes that as already explained under the preceding section, the earlier mark is comprised of elements which will perceived as meaningful by the Spanish-speaking part of the relevant public and this is also true for the contested sign.

Indeed, in the same line as above, it is considered that consumers will perceive the element ‘UNI’ common to the signs, as a prefix meaning single or only one and the other common element ‘BANCO’ as designating a company dedicated to perform financial operations with the money from its shareholders and the deposits of its customers while the element ‘CAJA’ of the earlier mark will most probably be associated with ‘caja de ahorro’ that is, a credit institution originally constituted as a foundation of a private nature and social purpose, specializing in the financing of families and small and medium enterprises (definitions extracted from Diccionario de la lengua Española de la Real Academia online at https://dle.rae.es/).

As the unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57), a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore, the Opposition Division finds it appropriate in light of the above to focus the comparison of the signs on the Spanish-speaking part of the public.

Considering the elements ‘BANCO’ and ‘CAJA’ have a descriptive meaning in relation to all the services in question, they lack distinctive character whereas the word ‘UNI’ included in both signs has no clear and direct meaning in relation to the services at hand and has an average degree of distinctiveness, it is concluded that the element ‘UNI’ is the only distinctive word element of the signs.

As to the contested sign’s graphical representation, it is noted that the typeface is standard and the circle in which the letter ‘u’ is depicted is a basic geometric shape which merely serves to highlight the letter depicted within. In addition, these elements play a decorative role, mainly serving as an embellishment. Therefore, these elements and aspects lack any distinctive character.

Visually, the signs coincide in their first element ‘UNI’ as well as in the element ‘BANCO’ corresponding to the last element in each sign. However, the signs differ in so far as the following element of the earlier mark ‘CAJA’ has no counterpart in the contested sign. As the earlier mark contains an element having no counterpart in the contested sign, the signs also differ in length.

Taking due account of the lack of distinctive character of the differing elements but also of the fact that they will not be disregarded and still have some impact, the conclusion is taken that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the first letters ‘U-NI’ as well as in the sound of the word ‘BAN-CO’. The signs differ in the sound of the earlier mark’s element ‘CA-JA’ which has no counterpart in the contested sign and therefore, also in rhythm and intonation. As they coincide in the sound ‘UNI’ which corresponds to the first and most distinctive element of the signs, these are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to a single (‘UNI’) financial establishment (‘CAJA’ and ‘BANCO’) and taking into account the minor conceptual difference between the words ‘CAJA’ and ‘BANCO’ originating from the slight difference in the nature and/or purpose of these two kinds of financial establishments, it is considered that the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier 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.

According to the opponent, ‘UNICAJA is a well-known trademark in Spain and in part of Europe’ and it enjoys a high degree of recognition among the relevant public in connection with the services in Class 36 for which the earlier mark is registered.

This claim must be understood as a claim that the earlier mark ‘UNICAJABANCO’ has acquired enhanced distinctive character through use, which has to be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 Opponent’s ‘UNICAJA’ trade marks portfolio;

 Spanish press clippings featuring ‘UNICAJA’ or ‘UNICAJABANCO’ published between 2015 and 2017, the headlines of which have been translated in English;

 Initial Public Offering for ‘UNICAJA BANCO, S.A.’ dated 15/06/2017;

 Opponent’s website extracts in Spanish showing that ‘UNICAJA’ is the sponsor of Malaga basketball team.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Despite showing some use of the trade mark, the evidence provides little information on the extent of such use and no information whatsoever as to its degree of recognition by the relevant public.

In particular, although the Spanish press clippings provide some indication as to the sales volumes in the last two years preceding the filing of the contested sign, they do not provide sufficient indications as to its position on the market, as the opponent cannot be valued against its competitor and neither of them indicate the market share of the trade mark or the extent to which the trade mark has been promoted. Moreover, less than twenty articles over two years are not sufficient to establish the relevant public has been confronted extensively by the earlier mark.

As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation or that it has acquitted an enhanced distinctive character through use.

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 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 some non‑distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested services are partly identical and partly dissimilar to the opponent’s services. The degree of attention of the relevant public is quite high.

The signs are visually and aurally similar to an average degree and conceptually similar to a high degree, insofar due to the coincide in the element ‘UNI’, which constitutes their only distinctive element and is placed in the beginning of each of the signs under comparison and the element ‘BANCO’, which is placed in the end of both of these signs. Together, these two coinciding elements constitute the contested sign in its entirety. On the other hand, the differences between the signs lie in non-distinctive elements and aspects, namely, the graphical depiction of the contested sign’s word element(s), and the additional element of the earlier mark ‘CAJA’ which have no counterpart in the other sign.

As the differing verbal element ‘CAJA’ will be seen as merely describing the type of establishment providing these financial services and the graphical depiction of the contested sign will not be given trade mark significance, while the coinciding element placed in the beginning of each sign, ‘UNI’ is distinctive, a likelihood of confusion on the part of the Spanish-speaking part of the public cannot be safely excluded.

Indeed, it is conceivable that the Spanish-speaking consumers, even if paying a quite high degree of attention, perceive the contested sign ‘UNIBANCO’ as a new version or a sub-brand of the earlier mark ‘UNICAJABANCO’ for designating a new type of financial services (see, in that line, 23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

The opponent has also based its opposition on earlier European Union trade mark No 9 698 952 ‘BANCOUNICAJA’. Since this mark covers the same scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected and there is no need to assess the claim for a family of marks. Therefore, no likelihood of confusion exists with respect to those services even though the opponent would have established that it uses a family of marks.

However, the opponent has also invoked Article 8(5) EUMTR. Therefore, the Opposition Division will carry on with the assessment of the merits of the opposition based on that ground.

REPUTATION — ARTICLE 8(5) EUTMR

For the sake of clarity, the Opposition Division recalls that the opposition founded on Article 8(5) EUTMR is based on European Union trade mark No 9 698 838 ‘UNICAJABANCO’ and European Union trade mark No 9 698 952 ‘BANCOUNICAJA’.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and high distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR for earlier European Union trade mark No 9 698 838 ‘UNICAJABANCO’. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR and apply mutatis mutandis to European Union trade mark No 9 698 952 ‘BANCOUNICAJA’.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation.

Since, following the examination of the evidence in the previous section of the present decision, it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Nicole CLARKE

Marine DARTEYRE

Loreto URRACA LUCQUE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.