MINT | Decision 2442476 – The Royal Bank of Scotland Group plc v. INTUIT INC.

OPPOSITION No B 2 442 476

The Royal Bank of Scotland Group plc, 36 St Andrew Square, Edinburgh EH2 2YB, United Kingdom (opponent), represented by Lincoln IP Limited, 9 Victoria Street, Aberdeen, Aberdeenshire AB10 1XB, United Kingdom (professional representative)

a g a i n s t

Intuit Inc., 2535 Garcia Avenue, Mountain View CA 94043, United States of America (applicant), represented by Nabarro LLP, 125 London Wall, London EC2Y 5AL, United Kingdom (professional representative).

On 01/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 442 476 is partially upheld, namely for the following contested goods and services:

Class 9: Computers; computer hardware; computer software; computer firmware; computer programs; sound, video and data recordings; data recorded in electronic, optical or magnetic form; apparatus and instruments all for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging or enhancing of data; algorithms for the compression and decompression of data; telecommunications apparatus and instruments; downloadable computer software applications; computer software for personal and small business financial management; computer software for online banking, transaction management, financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; computer software for creating reports and graphs; computer software for forecasting and analysis of data; computer software for data aggregation; computer software for providing alerts; computer software for providing wireless access to data and databases; computer software for enabling users to retrieve account balance and transaction information using mobile phones, smart phones, and mobile telecommunication networks.

Class 35: Advertising; dissemination of advertising matter; promoting the goods and services of others through computer and communication networks, the internet, social media and software applications; business management; business research; business management advice and assistance .

2. European Union trade mark application No 13 005 831 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 005 831. The opposition is based on United Kingdom trade mark registration No 2 360 715 and European Union trade mark registrations No 3 899 333 and 5 317 102. The opponent invoked Article 8(1)(b), 8(5) EUTMR in relation to the earlier UK trade mark registration No 2 360 715 and the European Union trade mark registration No 3 899 333 and Article 8(4) EUTMR in relation to the earlier non-registered mark ‘MINT’ used in the course of trade in the United Kingdom.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication 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 shall be rejected.

The applicant requested that the opponent submit proof of use of the earlier UK trade mark registration No 2 360 715 and European Union trade mark registration No 3 899 333 on which the opposition is among others based.

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

The contested application was published on 25/08/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the United Kingdom (for the earlier UK No 2 360 715) and the European Union (for the earlier EUTM No 3 899 333) from 25/08/2009 to 24/08/2014 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

UK No 2 360 715

Class 9: Publications, newsletters, magazines, periodical pamphlets and leaflets; all in electronic form supplied on-line from databases or from facilities provided on the Internet (including websites); publications, newsletters, magazines, periodicals, pamphlets and leaflets; all in digital or electronic format supplied on-line; DVDs, CD-ROMs and diskettes; all relating to financial, banking, credit, credit card, mortgage, savings, loan, insurance and travel agency services and promotional services including incentive schemes, loyalty cards, purchase group clubs and discount offers made in connection with financial, banking, credit, credit card, mortgage, savings, loan and insurance services; charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; magnetically encoded cards for carrying data; multifunction cards for financial services; ATM (Automated Teller Machine) cards, access cards, identification cards, integrated chip cards and pre-paid cards and supporting systems related thereto; ATM machines, point of sale cards and readers; computer software; computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web pages and websites); computer software and telecommunications apparatus (including modems) to enable connection to databases; parts and fittings for all the aforesaid goods; hand-held devices for payment and value exchange services and other personal information services; remote control devices; data carriers; computer software for the provision of credit card services, mortgage services, banking services and financial services; computer software providing information relating to credit, credit card services, mortgages, banking and finance; computer software to enable the searching of data relating to the aforegoing.

Class 16: Printed matter; books, magazines, leaflets, periodical publications, newsletters, brochures, information materials and information packs; all relating to financial, banking, credit, credit card, mortgage, savings, loan, insurance and travel agency services and promotional services including incentive schemes, loyalty cards, purchase group clubs and discount offers made in connection with financial, banking, credit, credit card, mortgage, savings, loan and insurance services; gift vouchers, payment vouchers, discount vouchers, vouchers for travel by land, sea and air.

Class 35: Organisation, administration, operation and supervision of loyalty schemes and sales information on incentive schemes, buying group offers; organisation, operation, administration and supervision of discounts for goods and services; the bringing together for the benefit of others of a variety of alcoholic beverages, books, video cassettes, CDs and DVDs to enable customers to conveniently view and purchase those goods from a mail order catalogue, by telecommunication, from the Internet or by providing of auctions; information, advisory and consultancy services relating to all the aforesaid services.

Class 36: Banking services; mortgage services, automated banking services; payment and credit services; credit brokerage; insurance services; financial consultation services; financial information services; financial advisory services; advice and enquiries regarding credit; services for the provision of credit; mortgage services; consultancy, information and advisory services relating to all the aforesaid services.

Class 39: Transport of people and goods by road, rail, sea and air; travel arrangement services, travel agency services; arrangement of sightseeing tours, escorting of travellers; organisation of excursions, sightseeing tours, holidays and seat reservations for travellers; car rental services; transport and travel reservation services; consultancy, information and advisory services relating to all the aforesaid services

Class 41: Books clubs; providing on-line electronic publications of books, magazines and other publications (not downloadable); leasing of books, video cassettes, CDs, DVDs and pre-recorded film; providing on-line publications for entertainment, in particular electronic games, books and magazines; all relating to financial, banking, credit, credit card, mortgage, savings, loan and insurance services; consultancy, information and advisory services relating to all the aforesaid services.

EUTM No 3 899 333

Class 9: Charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; magnetically encoded cards for carrying data; multifunction cards for financial services; ATM (Automated Teller Machine) cards, access cards, identification cards, integrated chip cards and pre-paid cards and supporting systems related thereto; ATM machines, point of sale card readers; computer software; computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web pages and web sites); computer software and telecommunications apparatus (including modems) to enable connection to databases; parts and fittings for all of the aforesaid goods; data carriers; computer software for the provision of credit card services, mortgage services, banking services and financial services; computer software to enable the searching of data relating to the aforegoing; publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in digital or electronic format or provided by CD-ROM or diskette.

Class 36: Financial services; credit card, debit card, charge card, cash card and bank card services; banking services; mortgage services; monetary transfer; payment services; automated banking services; bill payment services; payment and credit services; account debiting services; cheque encashment services; credit brokerage; automatic cash dispensing services, automatic teller machine services; insurance services; financial consultation services; financial analysis and providing reports; financial information services; financial advisory services; computerised financial services; advice and enquiries regarding credit; services for the provision of credit; acceptance of deposits; discounts of bills (notes); domestic remittance; travellers cheque services; providing loans and savings accounts services; providing savings bonds; managing saving and investments for others; providing savings accounts and services on-line; information services relating to credit, credit card services, mortgages, banking and finance; advisory, consultancy and information services relating to all of the aforesaid services.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 22/07/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 27/09/2015 to submit evidence of use of the earlier trade marks. After an extension requested by the opponent, the time limit expired on 27/11/2015. Within the time limit, the opponent submitted the following evidence of use.

Exhibit RC1: Witness Statement of 25/09/2015 signed by Mr. Richard Curtin, Head of Intellectual Property at the Royal Bank of Scotland (RBS) Group. According to the document the RBS has been offering a credit card under the mark ‘MINT’ together with other financial services such as travel accident insurance, emergency assistance and loans since 2004. Three versions of card ‘MINT’ were offered, namely ‘MINT Classic’, ‘MINT Gold’ and ‘MINT Platinum’. In the witness statement, the opponent provides information about the number of customers having MINT credit card account from 2004 until 2014 (343 000 customers in 2014) and the number of transactions made by customers using MINT credit card since 2007.
Exhibit RC1: a photograph showing a ‘Master’ credit card with the depiction of the word ‘MINT’ on it.
Exhibit RC2: a selection of press articles and advertisements published in the UK newspapers in 2006 and 2007 (for example in The Mail, The Sunday Times, The People, Daily Mail, The Times, The Sunday Telegraph, Daily Mirror, Free Metro, Sunday Herald, Sunday Express, The Observer, The Guardian, etc.). The documents all contain a reference to the credit card ‘Mint’ issued by the Royal Bank of Scotland in relation to the payment of credit card bills, offers on transfer balances from other cards, online billing, etc.
Exhibit RC3: copies of newspaper articles published in different newspapers (for example The Times, The Mail, Sunday Herald, Daily Mail, Daily Star, The Observer, Birmingham Post, Yorkshire Post, Eastern Daily press, etc.) in 2008 with reference to the services connected to ‘MINT’ credit cards (for example expenses with late payments, interest rates with balance transfers, credit limit, etc.).
Exhibit RC4: copies of newspaper articles published in different newspapers (for example articles from The Sunday Telegraph of 25/10/2009, Daily Record of 14/05/2009, The Independent of 22/04/2009 and 06/10/2009, Daily Mail of 22/04/2009, Daily Mirror of 22/04/2009, Daily Express of 04/04/2009, The Mail of 29/03/2009, the Sunday Times of 01/03/2009, Evening Times of 22/04/2009, East Anglian of 03/11/2009, etc.) in 2009. The articles mostly contain reference to ‘MINT’ credit card issued by RBS card provider.
Exhibit RC5: screenshots of You Tube TV advertisements for Mint (title: Mint Card Advert Sneeze in Soup; Mint Card-Hamster; Mint Card – Man Fired).
Exhibit RC6: examples of promotional material concerning ‘MINT’ credit card conditions for late payments over limit, same day payments, etc. and three templates of a letter by the company mint concerning interests on new purchases and money transfers in 2013 and 2014. According to the opponent, the offers were sent out to MINT customers between July 2001 and May 2014.
Exhibit RC7: an example of a statement, which according to the opponent was sent out to ‘MINT’ customers and a document showing the conditions for the use of MINT credit card.
Exhibit RC8: print outs taken from the opponent’s website www.mint.co.uk, showing the Mint.co.uk screenshot history and MINT credit card features. According to this document the customers can register for ‘MINT’ online services and access their account 24/7, receive monthly statement online and access wide range of other services such as balance transfer, online payments, account management, etc.
Exhibit RC9: a copy of Consumer Credit Licence of 28/09/2010 issued by the Office of Fair Trading and addressed to The Royal Bank of Scotland. The documents show that RBS is licensed to carry out consumer credit and debit collecting services.
Exhibit RC10: a copy from the website www.fca.org.uk concerning company information about the Royal Bank of Scotland PLC. The document shows that, among others, that the bank uses the trade name ‘MINT’.
Exhibit RC11: a document ‘Notice of Variation’ and ‘Changes to your credit card’ issued in November 2011 concerning the conditions for MINT credit card.
Exhibit RC12: extracts from the annual reports and accounts published by the opponent’s company RBS Group. The annual report concerns the year 2010 and 2011.
Exhibit RC13: articles published on BBC website on 09/03/2012, showing the customer service score for the UK credit card companies. According to the table provided in the article, the card provider ‘MINT’ received 39 votes and an overall customer service score 7.7.

Furthermore, on 20/11/2015, the opponent filed the following evidence:

Exhibit RCB1: Adobe Scheduled Report for RBSG Mint Consumer showing customers visits for October 2013.
Exhibit RCB2: Adobe Scheduled Report for RBSG Mint Consumer showing customers visits from October 2015.
Exhibit RCB3: Adobe Scheduled Report for RBSG Mint Consumer showing customers visits from 01/11/2004 until 30/11/2015.

As far as the witness statement is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

In the present case, the opponent mostly submitted press articles, advertisements and print-outs from different websites supporting the affidavit mentioned above.

Exhibits RC 1-3 contain articles published between 2006 and 2008 and are therefore dated outside the relevant period. The impact of this evidence is therefore reduced, as it cannot be assumed that the ‘popular’ credit cards continued to be used also after this period. The only three articles which are dated within the relevant period and could potentially show the use of the earlier mark within the relevant period are included in the Exhibit RC 4 (articles from national, high-circulation papers Sunday Telegraph and The Independent). However, these three articles are dated in a period of eight days in between only. Moreover, the information contained in these articles mainly refers to different ‘credit card rates’ and only briefly mentions the earlier mark ‘Mint’.

Exhibit RC 6 consists of promotional letters, there is no evidence that any such letters were posted to the customers and to whom they were addressed. The Exhibit RC 7 is undated and does not refer to the earlier mark ‘MINT’. The website in Exhibit RC 8 has no information as regards the extent of use of the sign for the relevant goods and services in question. Exhibits RC 9 and RC 10 demonstrate what services the opponent is permitted to carry out in the UK. They do not demonstrate that such services were actually provided. Exhibits RC 11 and 12 do not provide any evidence of goods/services provided during the relevant period. The same applies to Exhibit RC 13, which consists of two press articles from April 2011 and March 2012. Additional evidence submitted on 20/11/2015 contains reports on customer's visits to the 'MINT' website. Finally, information provided in the tables (number of transactions made by customers’ using the MINT credit card from 2007 until 2014, volumes of purchases made by customers within the EU and total value of balance transfers) derives directly from the opponent is of unofficial character and lacks objective confirmation. Other documents, which could prove use of the earlier trade marks, such as invoices, turnover for the goods and services in question or extracts from tax accounts or balances of payments, have not been submitted.

Therefore, the Opposition Division concludes that the evidence (in particular as regards the extent of use) furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR insofar it was based on the these two earlier rights.

The examination of the opposition will now proceed for the earlier European Union trade mark registration, No 5 317 102, for which no proof of use has been requested.

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 goods and services

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

Class 9: Telecommunications, telephonic and communications apparatus and instruments; data communication apparatus and instruments; apparatus and instruments for the processing, transmission, reproduction, storage, display, logging, protection, reception and retrieval of data, information, sounds, images, text, audio, graphic images or video or combination thereof; encoded cards; smart cards; magnetic data carriers; cards bearing magnetic data media; media for storing information, data, images and sound; machine readable media; personal digital assistants; satellite receiving and transmission apparatus and instruments; adapters for use with telecommunications apparatus; telephones; mobile telephones; electronic personal organisers; pocket and laptop computers; downloadable ringtones and graphics for mobile phones; customised display screens downloaded to telecommunications apparatus; electronic publications (downloadable) provided on-line from a computer database, the Internet or other electronic network; charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; magnetically encoded cards for carrying data; smart cards, encoded cards and multifunction cards for financial transactions and financial services; ATM (Automated Teller Machine) cards, access cards, identification cards, integrated chip cards and pre-paid cards, and supporting systems related thereto; ATM machines, cash dispensers, apparatus for payment with encoded cards; automatic paying-in and deposit machines; point of sale card readers; computer software; computer programs; computer operating programs and computer operating systems; computer hardware; computers; computer software and hardware for managing voice mail; computer software and hardware for text messages, SMS (short message system) messages, MMS (multimedia messaging service) messages, MIM (mobile instant messaging services); EMS (enhanced messaging services) or mobile email; application software for mobile telephones; interactive and multi-media software, materials and equipment; calculating machines; data processing apparatus and equipment; software, data, text or images supplied by electrical or electronic means; computer software and publications in electronic or machine readable form; computer software and software upgrades supplied on-line from computer databases, computer networks, global computer networks or the Internet; electronic publications, newsletters, magazines, periodicals, pamphlets, leaflets, instructional materials and teaching materials, provided on-line from computer databases, computer networks, global computer networks or the Internet (including web pages and web sites); publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in digital or electronic format or provided by CD-ROM or diskette; computer software for facilitating or enabling access to business services, financial services, information services and e-mail services; computer software for use in network communications; computer software for facilitating electronic communications; computer software and telecommunications apparatus (including modems) to enable connection to databases, computer networks, global computer networks and the Internet; computer software to enable searching of data; interactive computer software and interactive computer discs; software for interrogating a bank account by means of text message; compact discs; diskettes, CD-ROMs, DVDs; computer software to enable the searching of data; parts, fittings and software for all of the aforementioned goods.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters, office requisites (except furniture); instructional and teaching materials (except apparatus); wrapping and packaging materials; plastic materials for packaging; printers' type; printing blocks; printed publications; advertising materials; brochures, vouchers, cheques, cheque books, paying-in books; bank cards, cash cards, cheque cards, debit cards, credit cards, charge cards; cheque book holders.

Class 35: Advertising; advisory, consultancy, information and helpline services relating to all of the aforementioned services; the aforementioned services also provided by a customer care network.

The contested goods and services are the following:

Class 35: Advertising; business management; business administration; office functions; accounting; book-keeping; administrative accounting; business management advice and assistance; company and business information and administrative assistance; commercial information and advice for consumers; business research; compilation of statistics; price comparison services; compilation of information into computer databases; data search in computer files for others; dissemination of advertising matter; economic forecasting; computerised file management; news clipping services; providing information, news, opinions and advice in the fields of accounting, tax preparation and planning, personal budgeting, household budgeting and consumer spending, including via computer and communication networks, the internet, social media and software applications; providing commercial information on, and comparisons of, the products and services of others, including through computer and communication networks, the internet, social media and software applications; providing comparison of shopping services, including through computer and communication networks, the internet, social media and software applications; promoting the goods and services of others through computer and communication networks, the internet, social media and software applications; providing economic forecasting and analysis, and market analysis, including through computer or communication networks, the internet, social media and software applications.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial services; personal and small business financial management services; online banking; transaction management; financial planning; financial management; financial analysis; financial consultancy; bill tracking and management; expense tracking and management; taxable item tracking and management; forecasting and analysis of financial data; financial data aggregation; services for the management of credit and debit cards, loans, mortgages, investments and financial accounts; providing information, news, opinions and advice in the fields of banking, financial management, saving and financial planning and retirement planning, including via computer and communication networks, the internet, social media and software applications.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested computers; computer hardware; computer software; computer firmware; computer programs; apparatus and instruments all for processing, reproducing, transmitting of data; telecommunications apparatus and instruments are identically contained in both lists of goods (including synonyms).

The contested downloadable computer software applications; computer software for personal and small business financial management; computer software for online banking, transaction management, financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; computer software for creating reports and graphs; computer software for forecasting and analysis of data; computer software for data aggregation; computer software for providing alerts; computer software for providing wireless access to data and databases; computer software for enabling users to retrieve account balance and transaction information using mobile phones, smart phones, and mobile telecommunication networks are included in the opponent’s computer software. The goods are identical.

The contested apparatus and instruments all for recording, receiving, modifying, compressing, decompressing, broadcasting, merging or enhancing of data are included in the broad category of the opponent’s data processing apparatus and equipment. The goods are identical.

The contested algorithms for the compression and decompression of data overlap with the opponent’s computer software. The goods are identical.

The contested data recordings; data recorded in electronic, optical or magnetic form overlap with the opponent’s publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in digital or electronic format or provided by CD-ROM or diskette. The goods are identical.

The contested sound and video recordings are discs or tape recordings of sound and videos. These goods overlap with the opponent’s publications in digital or electronic format or provided by CD-ROM or diskette. The goods are identical.

Contested services in Class 35

The contested advertising is identically contained in both lists of goods (including synonyms).

The contested dissemination of advertising matter and promoting the goods and services of others through computer and communication networks, the internet, social media and software applications are services that fall into a broad category of the opponent’s advertising. The services are identical.

The contested business management; business research; business management advice and assistance are lowly similar to the opponent’s advertising as they have the same purpose. They can coincide in producer and end user.

The contested business administration; office functions; accounting; book-keeping; administrative accounting; company and business information and administrative assistance; commercial information and advice for consumers; compilation of statistics; price comparison services; compilation of information into computer databases; data search in computer files for others; economic forecasting; computerised file management; news clipping services; providing information, news, opinions and advice in the fields of accounting, tax preparation and planning, personal budgeting, household budgeting and consumer spending, including via computer and communication networks, the internet, social media and software applications; providing commercial information on, and comparisons of, the products and services of others, including through computer and communication networks, the internet, social media and software applications; providing comparison of shopping services, including through computer and communication networks, the internet, social media and software applications; providing economic forecasting and analysis, and market analysis, including through computer or communication networks, the internet, social media and software applications are all dissimilar to all the earlier goods and services in Classes 9, 35 and 36. They do not share the same commercial origin or the distribution channels and are also not directed at the same consumers.

Contested services in Class 36

The contested insurance; financial affairs; monetary affairs; real estate affairs; financial services; personal and small business financial management services; online banking; transaction management; financial planning; financial management; financial analysis; financial consultancy; bill tracking and management; expense tracking and management; taxable item tracking and management; forecasting and analysis of financial data; financial data aggregation; services for the management of credit and debit cards, loans, mortgages, investments and financial accounts; providing information, news, opinions and advice in the fields of banking, financial management, saving and financial planning and retirement planning, including via computer and communication networks, the internet, social media and software applications are dissimilar to all the opponent’s goods and services. These services do not have the same end consumers, purpose and method of use as the opponent’s goods and services in Classes 9, 16 and 35. Moreover, they are not provided by the same undertakings and they are not in competition. They also differ in nature, since goods are tangible while services are intangible.

Although the opponent’s list of goods and services includes goods such as charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards, it has to be noted that these goods are issued to users as a system of payment. They allow their holders to buy goods and services based on the holder’s promise to pay for these goods and services. The issuer of the card creates a revolving account and grants a line of credit to the consumer (or the user) from which the user can borrow money for payment to a merchant or as a cash advance to the user. On the other hand the contested services such as financial services are offered by institutions, for example banks, to facilitate various financial transactions and other related activities in the world of finance. Although credit cards are related to some extent to financial services – for example, they can be used to withdraw money from the cash dispenser of a bank – this link is too remote to render the goods and services similar. The customers are aware of the fact that financial institutions are not responsible for the technological aspects of issuing magnetic or chip cards (07/05/2012, R 1662/2011-5, CITIBANK, § 29). Therefore, the opponent’s charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards are dissimilar to the contested services in Class 36 (which all relate to financial services). Their nature, purposes and methods of use are different. Their commercial origins are different and they target different consumers. In addition, they are neither in competition nor complementary.

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 found to identical or lowly similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services. For example for the services in Class 35, the attentiveness will be high, while for some of the goods in Class 9, the attentiveness will be normal.

The signs

MINT MOBILE

MINT

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.

The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public where the words ‘MINT’ and ‘MOBILE’ are both understood.

The element ‘MINT’, which forms the contested mark and is included at the beginning of the earlier mark will be associated with a herb with fresh-tasting leaves. This element is considered to be distinctive as it is not descriptive, allusive or otherwise weak for the relevant goods and services.

The contested mark is a one word mark and has no elements that could be considered more distinctive than other elements.

The element ‘MOBILE’ of the earlier mark will be perceived as referring to mobile phones, handheld computers, and similar mobile technology by the relevant public. Bearing in mind the relevant goods and services in Classes 9 and 35, it is considered that this element is non-distinctive for these goods and services. The public understands the meaning of this element and will not pay as much attention to this non-distinctive element as to the other, more distinctive, elements of the mark. It follows that within the earlier mark, the word ‘MINT’ is the most distinctive element.

The marks are word marks and have no elements that could be considered more dominant than other elements.

Visually, the signs coincide in the distinctive word ‘MINT’, which is the sole word element of the contested mark and is fully included in the earlier mark. The marks differ in the additional word ‘MOBILE’ of the earlier mark which is considered to be non-distinctive at least in relation to the goods and services in Classes 9 and 35. Account should also be taken of the fact that the word ‘MINT’ forms the first part of the earlier mark, to which the consumers will normally direct more attention.

As the signs coincide in the distinctive element ‘MINT’ and differ in a non-distinctive element ‘MOBILE’, they are found to be similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛MINT’, present identically in both signs. The pronunciation differs in the sound of the word ‛MOBILE’ included in the earlier sign.

As the word ‘MOBILE’ is a non-distinctive element, there is a high degree of aural similarity.

Conceptually, the element ‘MINT’, included in both signs, will be associated with the meaning explained above. As the part ‘MOBILE’ will be perceived as being non-distinctive for the goods and services concerned, the level of conceptual similarity between the marks is high.

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

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 goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

Global assessment, other arguments and conclusion

The goods and services are partially identical and partially lowly similar and the degree of attention varies from average to high.

The conflicting signs are visually, aurally and conceptually similar to a high degree as they coincide in the distinctive word ‘MINT’, which constitutes the only word element of the contested mark and is entirely included in the earlier mark, where it plays an independent role. The marks therefore present striking similarities. The fact that the marks differ in the additional word ‘MOBILE’ has a limited impact on the likelihood of confusion due to the secondary position of this word in the earlier mark and its descriptive meaning for the relevant goods and services.

Consequently, in the present case and in accordance with the principles of interdependence and imperfect recollection of the signs, the difference of the additional non-distinctive word in the contested sign is insufficient to counteract the similarity of the signs and, therefore, there is a likelihood of confusion for those goods and services that are identical or lowly similar, even for the public with a high degree of attention. In addition, the Opposition Division notes that the likelihood of confusion includes the likelihood of association (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 16). In the present case, the consumer may easily conclude that the goods labelled and offered under the contested sign come from the same undertaking as the earlier mark or from one that is economically linked; they may see the earlier mark as being a variant or sub-brand of the contested sign.

Therefore, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 317 102. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or lowly similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

REPUTATION – ARTICLE 8(5) EUTMR

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 shall 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 of 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: the 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 abovementioned conditions may not be sufficient. The opposition may still fail if the [applicant][holder] establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade mark

According to the opponent, the earlier UK trade mark registration No 2 360 715 and EUTM trade mark registration No 3 899 333 have a reputation in the United Kingdom.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 17/06/2014. However, the contested trade mark has a priority date of 18/12/2013. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely for the following goods and services:

UK trade mark registration No 2 360 715

EUTM trade mark registration No 3 899 333

In order to determine the marks level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 08/06/2015 and 25/09/2015, the opponent submitted the evidence to support its claim of reputation.

The evidence submitted by the opponent to prove the reputation of the earlier trade marks have already been listed above under the section ‘PROOF OF USE’.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation. The evidence does not include any direct indications regarding the public’s awareness of the earlier marks (e.g. surveys or opinion polls) and no information about the share of the UK market that the marks hold is provided, either.

A large proportion of the documents are articles and advertisements published in different magazines and newspapers in the United Kingdom. Although the marks ‘MINT’ are mentioned in these magazines and newspapers (Exhibits RC2-4), they are mentioned only briefly in connection with a credit card issued by the Royal Bank of Scotland and do not give any indication of the level of recognition, or even of any actual outward use, of the mark.

Moreover, the fact that the earlier marks ‘MINT’ are mentioned in various magazines and newspapers dated from 2006 until 2009 (five years before the filing dated of the contested mark) does not indicate that they were also known at the filing date of the contested sign by a significant part of the relevant. It cannot be excluded that the recognition of the marks 'MINT', assuming it ever existed, was lost over the years. With regard to this the Opposition Division notes that the opponent must demonstrate that the earlier mark had a reputation at the filing date of the contested EUTM application or at priority date. In the present case, the articles are all dated and/or refer to a time period (from 2006 until 2009), that is quite far apart from the relevant priority date 18/12/2013 of the contested sign and the relevance of this evidence is therefore reduced.

The remaining evidence either contains no information about the market share held by the earlier marks, the intensity, geographical extent, size of investment made by the opponent and duration of the use of the signs for the relevant goods and services or does not demonstrate that the goods and services were actually provided (Exhibits 8-13). The articles published on BBC website (Exhibit 13) which show that in 2012, a credit card provider ‘MINT’ received 39 votes are not convincing either.

The evidence of sales volumes and the investment in promotion comes entirely from three tables where there is no indication of the source of the information or any indication as to the trade marks which these figures refer to. Likewise, there is no indication of the market share achieved by the trade marks. The information contained in the annual reports (Exhibit RC12) refers to the opponent’s company itself and does not tell anything about reputation of the earlier marks.

The opponent also submitted more recent evidence which includes a screenshot of TV commercials (Exhibit RC5) published on You Tube and some examples of promotional material concerning ‘MINT’ credit card conditions (Exhibit RC6). However, this evidence does not indicate where the commercials were broadcasted and how many people have viewed it or that any letters were posted to the customers and to whom they were addressed. Moreover, in relation to Exhibit RC5, it is not possible to ascertain that the viewers are UK consumers.

Therefore, the evidence submitted does not provide sufficient information on the degree of recognition of the earlier trade marks by the relevant public. There is no information concerning the market share or promotional expenses. The mere appearance of the trade mark in newspapers or on a website does not allow any conclusion regarding the level of awareness of the trade marks among the relevant public in the United Kingdom.

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.

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

The opposition is based on the non-registered trade mark ‘MINT’ used in the course of trade in the United Kingdom.

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 shall 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.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;
pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;
the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Prior use in the course of trade of more than mere local significance

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. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 17/06/2014. However, the contested trade mark has a priority date of 18/12/2013. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for

Class 9: Credit cards, bank cards, ATM cards, computer software and apparatus for making payments and electronic publications.

Class 36: financial and banking services, business services, credit card services, payment and credit services

On 08/06/2015 and 20/11/2015 the opponent filed the evidence to prove use and reputation. Reference is made to the list of evidence under the ‘PROOF OF USE’ section of this decision, which will be taken into account for the present assessment within the meaning of Article 8(4) EUTMR

The notion of ‘use in the course of trade’ in accordance with Article 8(4) EUTMR is not the same as ‘genuine use’ in accordance with Article 42(2) and (3) EUTMR (30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 24-27).

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 43).

It is noted that the sign must be in use before the priority date of the application for the contested mark (December 2013) and also, it must still be in use at the time of filing of opposition (November 2014). This was confirmed by the General Court in judgment of 23/10/2013 in case T-581/11 (Baby Bambolina). The Court held that the earlier right relied on in support of an opposition must still exist at the time that notice of opposition is filed. Indeed, Rule 19(2)(d) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) expressly provides that, in the event that an opposition is based on Article 8(4) of Regulation No 207/2009, the opposing party must provide evidence not only of the acquisition and of the scope of protection of that earlier right, but also of the continued existence of that right. This presupposes normally that the sign in question must still be in use at the time of the filing of the notice of opposition. Indeed, it is precisely the use of the sign in the course of trade which is the basis of the existence of the rights to that sign (23/10/2013, T-581/11, ‘Baby Bambolina’, ECLI:EU:T:2013:553, §26 and §27).

The Articles (Exhibit RC2-4) mention the mark ‘MINT’ in relation to credit cards and credit services. However, they only show some use for three years (from 2006 until November 2009), without covering the last five years before the date of filing an opposition. The evidence concerning the period after 03/11/2009 until 2014 when the opposition was filed only includes three articles (published in the magazines The Independent, The Sunday Telegraph, East Anglian Daily Times), some promotional letters concerning ‘MINT’ credit card, print-outs from the opponent’s website, Adobe Report of visits of Mint website (RCB1) and other documents such as consumer credit card licence, credit card terms and conditions of the and a copy of annual reports for RBS Group. These documents do not make it possible to determine the intensity of use of the earlier mark in the course of trade in the United Kingdom during 2009 and 2014 or that the sign was used in the United Kingdom. On the other hand the evidence of use relating to the period before the filing of the contested mark shows use that cannot be considered as being more than mere local significance.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier non-registered trade mark was used in the course of trade of more than local significance in connection with the goods and services on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded, insofar as it is based on Article 8(4) EUTMR.

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 shall decide a different apportionment of costs.

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

The Opposition Division

Fabián GARCIA QUINTO

Janja FELC

Francesca CANGERI SERRANO

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.

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