OPPOSITION No B 3 088 526

Banca Nazionale Del Lavoro S.p.A., Viale Altiero Spinelli 30, 00157 Roma, Italy (opponent), represented by Bugnion S.p.A., Viale Lancetti, 17, 20158 Milano, Italy (professional representative)

a g a i n s t

JUD IP Limited, 61 St. Paul Street, VLT 1212 Valletta, Malta (applicant), represented by Refalo & Zammit Pace Advocates, 61 St. Paul Street, VLT 1212 Valletta, Malta (professional representative).

On 11/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 526 is upheld for all the contested services.

2. European Union trade mark application No 18 040 113 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 040 113 for the figurative mark . The opposition is based on Italian trade mark registration No 1 588 327 for the word mark ‘BNL’. The opponent invoked Article 8(1)(b) 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.

a) The services

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

Class 36: Banking affairs; financial affairs; monetary affairs; banking, financial and monetary services.

The contested services are the following:

Class 36: Financial and monetary services, and banking.

Financial and monetary services, and banking are identically contained in both lists of services.

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 services in question.

The services found to be identical target the general public and business customers with specific professional knowledge or expertise. Since they 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

BNL
Earlier trade mark	Contested sign

The relevant territory is Italy.

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, ‘BNL’, which will be perceived by the relevant consumers as an acronym without any specific meaning from linguistic point of view and is, therefore, distinctive to a normal degree. The parties did not argue that it would be associated with any meaning and did not provide any evidence to this effect

The contested sign is a figurative mark consisting of a dark grey figurative element composed of basic geometric shapes, namely the head of an arrow and the right half of a circle separated in its centre by a white horizontal line, followed by the verbal element ‘BNF’ depicted in dark grey upper-case letters. The lettering of the contested sign is commonplace, with the exception of the letter ‘B’, which displays a certain degree of stylisation, albeit very low. The degree of stylisation is not of such a nature as to obstruct the immediate recognition of this letter. Therefore, the relatively standard dark grey typeface of the contested sign will be perceived as a purely decorative graphic resource, as it is usual in the market sector for the verbal elements of signs to be slightly stylised.

The letters ‘BNF’ will be perceived by the relevant consumers as an acronym without any specific meaning and is, therefore, distinctive to a normal degree.

The figurative element of the contested sign is a simple device essentially consisting of basic geometric shapes and is likely to be perceived by the relevant consumers as essentially ornamental and weak. Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign has no elements that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the letters ‘BN*’ and differ in the letter ‘L’ as opposed to ‘F’ as the last letter of their respective acronyms. In addition, the contested sign differs in the stylisation of its verbal element, which will nevertheless not detract the consumer’s attention away from the verbal element as such. The signs also differ in the figurative element of the contested sign, which, however, is weak and will not attract much of the public’s attention for the reasons set out above.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the consonants ‘B’ and ‘N’, present identically in both signs. However, the signs differ in the sound of the consonants ‘L’ and ‘F’, respectively the last letter of the signs’ acronyms. All these letters will be pronounced separately. The figurative part of the contested sign is not subject to a phonetic assessment.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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.

e) Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the services covered are from the same or economically linked undertakings.

The degree of distinctiveness of the earlier mark is deemed to be normal. The signs are visually and aurally similar to an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

All the contested services are identical to the opponent’s services and they target the general and professional public. The degree of attention would be quite high, as explained above in section b).

Where the services are identical a likelihood of confusion can only be excluded where the signs present substantial visual, aural or conceptual differences (29/01/2013, T‑283/11, Nfon, EU:T:2013:41, § 69; 28/04/2014, T‑473/11, Menochron, EU:T:2014:229, § 46).

As stated above, the signs are visually and aurally similar to the extent that they coincide in the letters ‘BN*’, which are reproduced in the same order in the sole element of the earlier mark and in the most distinctive element of the contested sign. This coinciding part is located at the beginning of the signs, where consumers normally focus their attention (21/05/2015, T‑420/14, Wine in Black / NOVAL BLACK, EU:T:2015:312, § 25). This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. They differ in the last letter of these components, ‘L’ and ‘F’ respectively. In addition, the contested sign differs from the earlier mark in the stylisation of its verbal element and its figurative device, which are, however, not particularly distinctive. Therefore, these elements will not attract much of the public’s attention.

Therefore, bearing in mind the identity between the services concerned, the differences between the signs are not sufficient to counteract the overall similarity between them so as to exclude a likelihood of confusion on the part of the public. It is highly conceivable that the relevant consumers, who need to rely on the imperfect recollection of the signs, even if they pay a relatively high degree of attention, may be led to believe that the identical services concerned offered under the similar signs at issue originate from the same or economically linked undertakings.

Considering all the above, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 588 327. It follows that the contested trade mark must be rejected for all the contested services.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Jakub MROZOWSKI

Patricia LOPEZ FERNANDEZ DE CORRES

Ivo TSENKOV

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.