OPPOSITION No B 2 492 786

NB Seguros – Mediação de Seguros, Lda, Rua Elias Garcia, Nº 45 – C, 1000 148, Lisbon, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)

a g a i n s t

Novo Banco, S.A., Avenida da Liberdade, no. 195, 1250 Lisbon, Portugal (applicant), represented by Garrigues IP, Unipessoal Lda., Avenida da República, 25 – 1º, 1050-186 Lisbon, Portugal (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 492 786 is partially upheld, namely for the following contested services:

Class 36:        Insurance and finance; banking; personal insurance; life insurance underwriting; life assurance; fire, accident, all risks insurance; reinsurance; brokerage; saving banks; monetary affairs; fund investments; financial evaluations and appraisals; consultancy relating to financial investments; financial analysis; portfolio management; investment services; arranging the provision of finance; investment and mutual capital; financial assistance in the context of insurance contracts, financial assistance, namely reimbursement of medical and healthcare costs, reimbursement of costs incurred by subscribers to contracts for assistance during journeys and travel, financial assistance connected with credit transactions; financial sponsorship.

2.        European Union trade mark application No 13 386 875 is rejected for all the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 386 875, namely against all the services in Classes 35 and 36. The opposition is based on European trade mark registration No 13 342 464 and Portuguese company name ‘NB SEGUROS – MEDIAÇÃO DE SEGUROS, LDA.’. The opponent invoked Article 8(1)(b) and Article 8(4) 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.

1. The services

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

Class 36:        Insurance.

The contested services are the following:

Class 35:        Business organisation, management and administration; business management supervision; business consultancy and advisory services; business analysis, research and information services.

Class 36:        Insurance and finance; banking; accommodation bureaux; real estate affairs; debt collection agencies; personal insurance; life insurance underwriting; life assurance; fire, accident, all risks insurance; reinsurance; brokerage; saving banks; monetary affairs; fund investments; financial evaluations and appraisals; consultancy relating to financial investments; financial analysis; portfolio management; investment services; arranging the provision of finance; investment and mutual capital; real estate appraisals and valuations; real-estate valuations; consultancy relating to real estate affairs and real estate investments; property (real estate -) management; estate agency; arranging letting of real estate; financial assistance in the context of insurance contracts, financial assistance, namely reimbursement of medical and healthcare costs, reimbursement of costs incurred by subscribers to contracts for assistance during journeys and travel, financial assistance connected with credit transactions; financial sponsorship.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘namely’, which is used in the applicant’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 35

The contested research and information services refer to various kind of researches related to business, marketing and other activities which have no relation with insurance services. These services and the opponent’s insurance are normally offered by different specialised companies, target different consumers and, furthermore, they are not complementary or in competition. Therefore, they are considered dissimilar. 

The contested business organisation, management and administration; business management supervision; business consultancy and advisory services; business analysis are services rendered by a specialised provider principally with the object of help in the working or management of a commercial undertaking. Therefore, these services differ in provider, distribution channels and purpose from the opponent’s insurance. Furthermore, they are not complementary or in competition with each other. Therefore, they are dissimilar.

Contested services in Class 36

The contested insurance services are identically contained in both lists of services.

The contested personal insurance; life insurance underwriting; life assurance; fire, accident, all risks insurance; reinsurance; brokerage are either included in or overlap with the broad category of insurance of the opponent’s trade mark. Therefore, they are identical.

The contested financial assistance in the context of insurance contracts, financial assistance, namely reimbursement of medical and healthcare costs, reimbursement of costs incurred by subscribers to contracts for assistance during journeys and travel are included in the broad category of the opponent’s insurance services. Therefore, they are identical.

The contested services finance; banking; saving banks; monetary affairs; fund investments; financial evaluations and appraisals; consultancy relating to financial investments; financial analysis; portfolio management; investment services; arranging the provision of finance; investment and mutual capital; financial assistance connected with credit transactions; financial sponsorship are financial and banking services and the opponent’s insurance services are of a financial nature, furthermore, insurance companies are subject to licensing, supervision and solvency rules similar to those governing banks and other institutions providing financial services. In this regard, they are of a similar nature, may be provided by the same undertaking or related undertakings and have the same distribution channels. Therefore, they are similar.

The contested accommodation bureaux; real estate affairs; real estate appraisals and valuations; real-estate valuations; consultancy relating to real estate affairs and real estate investments; property (real estate -) management; estate agency; arranging letting of real estate comprise real estate property management, evaluation, as well as consultancy and provision of information related thereto. This mainly involves finding a property, making it available to potential buyers and acting as an intermediary. The opponent’s services insurance consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs. Consumers will clearly distinguish real estate administration services from those of an insurer and they would not expect insurance providers (e.g. insurance companies, banks or financial institutions) to find housing or real estate agents to manage their risks and/or insurance. The mere fact that real estate may be covered by several types of insurance, such as insurance against fire or burglary/theft, is not sufficient to find a similarity between the opponent’s real estate administration services and the contested insurance. These services are dissimilar.

The contested debt collection has different purposes, different commercial origins and targets different end users from the opponent’s services. Therefore, they are dissimilar.

2. 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 the public at large and at professionals in the fields of finance and insurance. The degree of attention is high, 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).

3. The signs

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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. As the marks in conflict contain verbal elements that bear a meaning in Portuguese and Spanish, the Opposition Division finds it appropriate to focus the decision on the Portuguese and Spanish-speaking part of the public.

The earlier mark and the contested sign are figurative marks.

The earlier mark consists of the letters ‘NB’ written in navy blue bold uppercase characters surrounded by a red incomplete rectangle with rounded corners. The word ‘SEGUROS’ appears in red smaller capital characters underneath.

The contested sign consists of the letters ‘GNB’, a little line and the word ‘SEGUROS’ in bold upper case characters. The letters ‘NB’ and the little line are depicted in green, however, the rest of the letters are in grey. Consequently, consumers will immediately perceive these two letters as an independent element. The words ‘GRUPO NOVO BANCO’ appear below on the left side in grey smaller characters.

The verbal element ‘SEGUROS’ contained in both signs will be understood by the Portuguese and Spanish-speaking part of the public as meaning ‘insurance’. Hence, it is descriptive in relation to the services at issue in the field of insurance.

As regards the expression ‘GRUPO NOVO BANCO’ of the contested sign, it will be understood, as a whole, as meaning a “new group bank”. Given that the services in conflict regard banking, financial and insurance activities, such expression is considered non-distinctive.

It follows from the above that the sequence of letters ‘NB’ and ‘GNB’ are the most distinctive elements of the earlier mark and of the contested sign, respectively.

The element ‘NB’ is also the most dominant element in the earlier mark, while In the contested sign, the elements ‘GNB SEGUROS’ are the dominant elements on account of their position and their clearly larger size as compared with ‘GRUPO NOVO BANCO’.

Visually, the signs coincide in the letters ‘NB’ and in the word element ‘SEGUROS’. Despite the fact that in the contested sign the letters ‘NB’ are preceded by the letter ‘G’, the particular colouring of the mark underlines the combination ‘NB’ and overshadows the initial letter ‘G’. The marks differ in the expression ‘GRUPO NOVO BANCO’ of the contested sign, which however have less impact in the present analysis due to its non-distinctive character, position and size.

In light of the above, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛NB’ and in the sound of the letters which form the word ‘SEGUROS’. The pronunciation differs in the sound of the letter ‛G’ and of the letters of the words ‘GRUPO NOVO BANCO’.

In light of the above and considering the descriptiveness and non-distinctiveness of the elements ‘SEGUROS’ and ‘GRUPO NOVO BANCO’, the signs are similar to an average degree taking into account that the verbal elements of the earlier mark are totally included in the contested sign.

Conceptually, the signs convey a concept related to banking, financial and insurance activities due to the presence of the common element ‘SEGUROS’ and the expression ‘GRUPO NOVO BANCO’ of the contested sign. The acronyms ‘NB’ and ‘GNB’ will be considered as meaningless elements. Therefore, the signs are considered similar to low degree. However, as the coinciding concept of the marks is given by descriptive and non-distinctive elements, its impact will be secondary in the present analysis.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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 a non-distinctive element in the mark, for the part of the relevant public mentioned, as stated above in section c) of this decision.

5. Global assessment

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 goods covered are from the same or economically linked undertakings.

The goods are partly identical, partly similar and partly dissimilar. The signs target the public at large and at professionals with a high degree of attention and the distinctiveness of the earlier mark has been considered normal.

They are visually and phonetically similar to an average degree, to the extent that the contested sign reproduces all the verbal elements of the earlier mark, the letters ‘NB’ and the word ‘SEGUROS’. In the contested sign, although the combination ‘NB’ is preceded by the letter ‘G’, particular account is given to the fact that such combination is highlighted in green and stands out against the letter ‘G’ depicted in grey. Moreover, the additional wording of the contested sign, ‘GRUPO NOVO BANCO’, cannot detract the similarities between the signs due to its secondary position and smaller size.

Additionally, 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 with 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).

Indeed, it is conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different figurative version according to the type of services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that there are many trade marks composed by ‘NB’. In support of its argument the applicant cites several European Union trade mark registrations which include ‘NB’ for the services in Class 36.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used.

This list of registered marks does not demonstrate that the relevant consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word element ‘NB’ in relation to the relevant services. Under these circumstances, the applicant’s claim must be set aside.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. In the Boards of Appeal case R 82/2011-4 of 18/11/2011, ‘’ (interalia)’ vs. ‘’; Opposition Division case B 2 317 496 of 12/12/2014 ‘ ‘ vs. ‘’; Boards of Appeal case R 168/1999-2 of 25/10/2000 ‘NATURA’, ‘VIGOR’ vs. ‘’; Boards of Appeal case R 548/2002-3 of 25/11/2003 ‘EWS’ vs. ‘EMS’ ‘’ among many aspects taken into account it has been considered that the signs include differing components which are enough to counteract their similarities.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the Portuguese and Spanish-speaking part of the relevant public, even those with a high degree of attention as the differentiating elements between the signs are not enough to counteract the similarities between the signs. 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.

Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 13 342 464. It follows that the contested trade mark must be rejected for the services found to be identical or similar (to various degrees) 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) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Given that the opposition is not successful under Article 8(1)(b) CTMR for all the contested services, the Opposition Division will proceed with the examination of the opposition on the grounds of Article 8(4) CTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent invokes Article 8(4) EUTMR on the basis of the company name ‘NB SEGUROS – MEDIAÇÃO DE SEGUROS, LDA.’, claiming that this earlier right is used in the course of trade in Portugal.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

On 31/03/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on -0510/2015.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Francesca CANGERI SERRANO

María Clara IBÁÑEZ FIORILLO

Pierluigi M. VILLANI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.