OPPOSITION No B 3 061 685

Mahou, S.A., Titán, 15 - planta 13, 28045 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

mBank S.A. , ul. Senatorska 18, 00-950 Warszawa, Poland (applicant),

On 18/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 685 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 865 507, (fig), namely against all the goods and services in Classes 9, 35, 36 and 45. The opposition is based on, inter alia, Spanish trade mark registration No M 2 906 241, (fig). The opponent invoked Article 8(1) (b) and Article 8 (5) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

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 Spanish trade mark registration No  M 2 906 241.

a) The goods and services

The goods and services on which the opposition is based 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, automatic vending machines and mechanisms for coin - operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus.

Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks, syrups for making beverages, fruit juices, syrups.

Class 35: Advertising and help in the working or management of commercial or industrial undertakings; business administration, office functions; import-export agencies; retail store services, wholesaling or retail via global computer networks; exclusives and sales representation.

Class 36: Insurance, financial affairs, monetary affairs, banking, and real estate affairs.

Class 45: Personal and social services, not included in other classes, rendered by others to meet the needs of individuals; security services for the protection of property and individuals; legal services; investigation and surveillance services relating to the safety of persons and entities; matrimonial agencies; funeral services.

The contested goods and services are the following:

Class 9: Magnetic card readers; Magnetic data media; Magnetic, computing, optical and compact discs; Floppy discs; Holograms; Information processors; Calculating and adding machines; Computer memory devices; False coin detectors; Automated teller machines [ATM]; Magnetic cards; Identity cards, magnetic; Cards with storage or microprocessor; Credit and bank cards; Integrated circuit cards [smart cards]; Computer software for electronic banking; Electronic data carriers.

Class 35: Business management consultancy, including using information and communication technology and social networks; Providing business information and advice; Economic forecasting; Business assistance relating to the establishment of banks and commercial companies; Keeping registers of pension fund members and investment fund participants.

Class 36: Banking and financing services; Banking and financing services using ICT techniques and technologies and mobile ICT techniques and technologies; Financial and monetary affairs; Financial consultancy, advice and information, including using information and communication technology and social networks; Financial analysis; Issuing of credit and debit cards, tokens of value and travellers' cheques, and services relating thereto; issuance and Securities trading services; Financial valuation services and Securities brokerage; Financial investment; Investment fund services; Managing bank accounts; Processing and receiving of fixed deposits and savings; Opening letters of credit; Providing of credit and loans; Banking and Electronic capital transfer; Brokerage; Insurance brokerage; Fiduciary and deposit services; Exchanging money; Exchange and cheque operations; Providing safety-deposit boxes; Purchase and sale of cash receivables and real estate; Monetary settlements; Granting of credit and loans; Providing and acknowledging of sureties; Trading in foreign exchange values and securities; Financial services relating to foreign trading; Operation of securities deposit accounts; Deposits of valuables and securities; Banking and insurance consultancy; Taking orders for services in the field of pension funds and the conclusion of membership agreements; Custodianship of pension and investment funds; Funds management for state authorities and for others; Receiving orders for purchasing, repurchasing and subscribing to share units or to investment certificates in investment funds; Exchange of receivables for parts of debtors' assets; Sale and purchase of foreign exchange values; Money order services and foreign currency settlements.

Class 45: Legal services relating to the establishment of banks and commercial companies.

Some of the contested goods and services are identical or similar 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 which, for the opponent, is the best light in which the opposition can be examined.

b) Relevant public — degree of attention

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

In the present case, the goods and services assumed to be identical are directed at the public at large, but also at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the specialised nature, or terms and conditions of the goods and services purchased (e.g. consumers will be rather attentive with regard to the business administration services in Class 35 because of the potential impact of such services on the users business).

The services in Class 36 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, 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

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both marks are figurative marks.

The earlier trade mark consists of three white vertical lines joined together at the top, resembling a stylized, lower-case letter “m” written in white bold typeface, with pointed corners. The earlier trade mark is depicted inside a red rectangle.

The contested sign consists of three white vertical lines joined at the top, resembling a stylised letter “m” written in a white smooth and rounded typeface. The contested sign is depicted against a multi-coloured background, consisting of differently seized blocks made of the colours green, blue, rose and blue, which give an almost three-dimensional impression.

The General Court has stated in a number of cases that a trade mark containing a single letter or a single numeral may indeed be inherently distinctive (08/05/2012, T-101/11, G, EU:T:2012:223, § 50; 06/10/2011, T-176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T-378/12, X, EU:T:2013:574, § 37-51).

The element ‘m’ of the signs has no meaning for the relevant public and is, therefore, distinctive.

The red rectangle of the earlier right is almost non distinctive, as it is a figurative element of a purely decorative nature. Therefore, the letter is more distinctive than the figurative element.

The multi-coloured figurative element of the contested sign is however quite striking and unusual, hence it is at least of normal distinctiveness.

Neither the earlier sign nor the contested sign have an element that could be considered clearly more dominant than other elements.

Account must be taken of the fact that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs differ especially in their figurative elements. The earlier right is placed in a red square which is a frequently used and common, banal element in branding and has therefore at most a weak distinctive character. In the contested sign however, the background is very unusual in its styling – which gives almost a three-dimensional impression – and the bright, neon-like colours green, blue and rose displayed. This striking and fully distinctive colourful element of the contested mark will certainly be noticed by the relevant consumers. The letter elements ‘m’ – although depicted in both signs in white - differ nevertheless in the font used, as the ‘m’ of the earlier sign has sharper endings than the ‘m’ of the contested right. The signs coincide, as such in the letter ‘m’, namely in the fact that both consist of three white vertical lines joined together at the top and written in white bold typeface.

Therefore, the signs are overall visually similar at best to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‘m’, present identically in both signs.

Consequently, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as the letter ”m” the signs are conceptually identical.

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, the earlier trade mark has a reputation in Spain in connection with part of the goods and services for which it is registered, namely the goods and services in Classes 32 and 35. This claim must 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:

ATTACHMENT 2: Evidence of use of various marks belonging to Mahou's family of ’m" logos. This evidence consists of screenshots of the Mahou five stars beer on sale on an internet shopping provider in December 2018, a press article about gluten free beer made by Mahou, information about the activities of the Mahou foundation taken of its webpage, and articles about a football player, who was awarded by trophy by Mahou, and finally information about how Mahou changed its presentation of its marks. All this information was made available only in Spanish.

ATTACHMENT 3: Copies of graphs and charts posted on the corporate website at www.mahou-sanmiguel.com and at el Economista.es as well as corporate documents available on the opponents' website https://www.mahou.es.

This information was provided in English and Spanish, and it deals with the Mahou company and its different brands. The production numbers given refer to the overall production of beer and water/soft drink by the whole company, but are not detailed concerning the individual brands the company owns, e.g. are not put into relation to the earlier mark at issue. The same holds true for the numbers of staff who is working for the company, the investment taken by the company, and the sales figures of the company. Also the numbers concerning the ranking of the Mahou enterprise refer to the company, not the trade mark at issue.

ATTACHMENT 4: A list of press articles on the Mahou company and its beers in English. These articles refer to a new factory of Mahou’s in Cordoba, the success of the brand San Miguel and Mahou in the United Kingdom, an article about an international director of Mahou, about the new wheat beer, an interview with football players and an article about Mahou activities in India. Furthermore some articles about Mahou San Miguel beer are presented.

ATTACHMENT 5: A search on Mahou’s “m” logo on Google Spain, a copy of the SPTO decision in Spanish refusing EN MAREA trademark and screen shots of Mahou’s social media like Facebook, Twitter, Google and You Tube.

ATTACHMENT 6: Information about Mahou’s sponsorships of the Spanish football teams and players, in Spanish.

ATTACHMENT 7: Mahou’s social projects through its Fundación Mahou San Miguel. All information is provided in Spanish.

ATTACHMENT 8: A file of other uses of Mahou's "m" logo and news items and social media comments in connection to the media stir that arose on social media and in the press in Spain when the Galician political party EN MAREA announced its logo in 2016. All this information is provided in Spanish.

The fact that the opponent has filed a large number of documents – which are mainly not dated - does not automatically lead to proof of enhanced distinctiveness or reputation of the earlier mark. For example, a large number of documents do not show the extent of use of the earlier mark.

Both enhanced distinctiveness and reputation require recognition of the concrete mark by a significant part of the relevant public.

‘In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether or not it contains an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.’

(22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

Furthermore, it follows from Article 95(1) EUTMR that

in inter partes proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should exclusively base its findings on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (see also 06/11/2014, R 437/2014-1, SALSA / SALSA (FIG.MARK) et al.).

Although the documents submitted by the opponent suggest that use of the earlier mark has been made in the relevant market in relation to beer, in order to establish that an earlier mark has acquired an enhanced distinctive character or reputation, not only must use of the mark be shown, but also a certain threshold, in terms of the relevant public’s knowledge of the mark, must be reached.

The final outcome depends on the overall assessment of the evidence in the particular case.

The internet extracts and screenshots of online stores demonstrate that goods bearing the earlier mark have been offered for sale on dates in recent years within the relevant territory.

This is also suggested by the use of the Spanish language in some of these websites. However, there is no evidence on the extent of the alleged trade mark use, this in the absence of any convincing evidence as regards the frequency the sites have been visited and the number of items sold. It also appears from the evidence that magazines and advertising were destined also for the United Kingdom and Indian markets.

In addition, previous decisions of a Spanish court about a media stir cannot demonstrate its recognition by the relevant public in the relevant market.

Moreover, in the Opposition Division’s view, the presence of the earlier mark on social networks, such as Facebook, Twitter, Google, You Tube or Instagram, is nowadays not a valuable indicator of recognition but rather normal activity for any company in the market. This is even more the case here, because the opponent’s allegations on hits on Google are not corroborated by any independent source of information.

It must be pointed out that there is no confirmation of any commercial transactions, even online. Not a single invoice has been submitted. Even if the goods were offered for sale, there is no data about how long they were offered on the given web page or otherwise. Nor is there any information about any goods being sold or any potential and relevant consumers being engaged, either through an offer or a sale.

The opponent itself submits that he owns three main beer brands: Mahou, San Miguel and Alhambra. From the reported general turn over for the years 2015-2017, no information can be found for the individual trade marks, the figures relate to sales as such but do not differentiate between the different products sold by the company, so that an evaluation of the figures with respect to the earlier right is not possible. The same holds true for the number of staff – it is impossible for the Opposition Division to draw any conclusions with respect to the earlier right from this figure. It would have been up to the opponent to make a clear and correct assignment to the individual goods bearing the earlier trade mark.

Many of the documents originate from the opponent’s webpages or its own advertising and documents downloaded from its website. There is insufficient documentation/information from third parties to reflect clearly and objectively the opponent’s trade mark precise position in the market.

Even with respect to social projects realized through its Fundación Mahou San Miguel, the opponent did not submit for instance any information about the funding involved and the costs borne by Mahou.

Since there are no neutral statements or third-party information beyond some press articles, the documents can only be evaluated to a limited extent as material that is meaningful in itself. Other documents that could prove enhanced distinctiveness or reputation from neutral sources and outside of material produced by the opponent, such as affidavits, sales figures, turnover, advertising costs (each divided into the individual goods and the trade mark concerned), marketing surveys, opinion polls, contributions from professional associations or excerpts from tax and/or trade balances, have not been presented.

Under these circumstances and in the absence of any further independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public at the relevant date, it is concluded that the evidence does not demonstrate the degree of recognition of the trade mark by the relevant public. Even bearing in mind that the evidence must be looked at in its entirety, avoiding a piecemeal approach, the Opposition Division concludes that the opponent failed to prove that its trade mark has acquired an enhanced distinctive character 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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 goods and services have been assumed to be all identical. They are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered to vary from average to higher than average.

For what concerns the signs, they have been found visually similar to a low degree, aurally identical and conceptually identical.

It follows from the case-law of the Court that in the assessment of likelihood of confusion between signs comprising the same single letter, visual comparison is, in principle, decisive. The aural and conceptual identity may be overridden, in the assessment of likelihood of confusion, by sufficient visual differences between the signs.

The visual similarities between the signs are limited to the letter ’m’ common to both signs, however depicted in a slightly different typeface, and their overall impression leads only to a low degree of visual similarity.

Considering this, the way the signs appear as a whole is determinant. As already explained in section c) of the present decision, the overall visual impression created by the colourful and striking figurative element of the contested sign differs to a large extent from the quite banal and almost non distinctive figurative element of the earlier right. Hence the marks in question show sufficient visual differences, outweighing their aural and conceptual identity. These differences are able to create a different overall impression in the minds of the consumers and to exclude a likelihood of confusion.

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 insofar as it is based on Article 8(1)(b) EUTMR.

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

Spanish trade mark registration No M 3 549 259 for the figurative mark, and Spanish trade mark registration No M 3083075 for the figurative mark and Spanish trade mark registration No 7320203 for the figurative mark .

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements, namely a red ‘m’ instead of a white ‘m’ with no background, and a blue ‘m’ with an additional word, or the additional five white little stars, which are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of the 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. Furthermore, the opponent did not submit any further evidence with respect to enhanced distinctiveness regarding these two earlier rights.

REPUTATION — ARTICLE 8(5) EUTMR

The Opposition Division will now examine the opposition in relation to earlier trade marks for which the opponent also claimed repute in the EU. For all the marks where it claimed repute, the opponent submitted the same set of documents without any differentiation regarding the earlier rights invoked.

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 highly distinctive character of the earlier trade marks have already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

b) Conclusion

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

Since 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Peter QUAY

Karin KLÜPFEL

Tobias KLEE

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.