OPPOSITION No B 2 650 771

Nest Bank SA, ul. Domaniewska 39A, 02-672 Warszawa, Poland (opponent), represented by Kulikowska & Kulikowski SP.J., ul. Nowogrodzka 47A, 00-695 Warsaw, Poland (professional representative)

a g a i n s t

Cyfrowy Polsat Trade Marks Sp. z o.o., ul. Łubinowa 4A, 03-878 Warszawa, Poland,

Plus TM Management, Spółka z ograniczoną odpowiedzialnością, ul. Konstruktorska 4

02-673 Warszawa, Poland (applicant), represented by Chmura & Wspólnicy, ul. J.P. Woronicza 31/142, 02-640 Warszawa, (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 650 771 is partially upheld, namely for the following contested services:

Class 35:        advertising; computerized file management (listed three times); business administration; office functions; business management (listed twice); compilation of information and systemization of information into computer databases; marketing services; dissemination of samples; production and dissemination of advertising matter; press, radio and television advertising; on-line advertising on a computer network; rental of advertising time on communication media; rental of advertising space; distribution of advertising material; updating of advertising material; publication of publicity texts; providing advertising information via telephone; advertising information, promotion information; customer services via the internet for the transmission of information relating to advertising; presentation of online offers in the field of advertising; presentation of telecommunications, electronic communications and online offers in the field of telecommunications; presentation of offers relating to education and training consultancy; promotion of systems for transmission of sound and images via radiophonic communications, via communications by telegrams, telephones, mobile phones and fax apparatus, and via digital systems; accounting and book-keeping; holdings management; business management of performing artists; business investigations (listed twice); relocation services for businesses; assistance in management of business activities; management of commercial information centres; business consultancy in the field of the usage of energy and fuels and derivatives thereof; telephone call centres, namely management of telephone call centres, for others; management of contracts relating to providing and subsequent use of medical and nursing services, management of contracts relating to providing and subsequent use of medical clinic services, nursing services, medical services, services of a psychologist, consultancy in the field of health, alternative medicine, speech therapy services and telemedicine; management of contracts relating to providing and subsequent use of services relating to the safety and protection of individuals and properties, guarding services and consultancy in the field of safety;  management of contracts relating to providing and subsequent use of services in the field of energy transmission and distribution, in particular electrical and thermal energy, supply of energy, in particular electrical and thermal energy, distribution and supply of water, supply of steam and hot water, sewage and waste disposal; business information, trade information, information relating to the location of buildings; management assistance services; organisation consultancy (listed twice); commercial information agencies; arranging exhibitions or trade fairs; compilation of information into computer databases; promotion of mobile and online applications, including promotion of applications via application platforms for the aforesaid purposes; services involving the following: registration and preparation of duplicates, storage and compilation of transcripts, systemisation of written information (messages), registration, use and compilation of mathematical or statistical data; customer services by means of telephone and online networks, the internet and intranets (office functions); brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to medical services, brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to nursing services; brokerage in the field of sale of medical services, brokerage in the field of sale of nursing services; brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to medical clinics, nursing services and medical services, psychological advice, consultancy in the field of health, alternative medicine, speech therapy and telemedicine; brokerage in the field of sale of medical clinic services, nursing services, medical care services, healthcare centre services, psychological advice services, consultancy in the field of health, speech therapy services, alternative medicine and telemedicine; brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to services relating to the safety and protection of individuals and properties, guarding services and consultancy in the field of safety; brokerage in the field of sale of services relating to the safety and protection of individuals and properties, guarding services and consultancy in the field of safety; brokerage of sale and purchase contracts via telephone and the internet.

2.        European Union trade mark application No 13 081 195 is rejected for all the above services. It may proceed for the remaining contested goods and services, as well as for the remaining non-contested 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 13 081 195, namely against all the goods and services in Classes 16, 35 and 41. The opposition is based on, inter alia, Polish trade mark registration No 272 072. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Polish trade mark registration No 272 072.

1. The goods and services

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

Class 35:        Advertising; business management; business administration; office functions; organization of business operations to obtain customer loyalty; business consultancy and information; sales promotion of goods and services for others by means of rewards generated in connection with the use of credit, debit and payment cards; business promotion on media of all kinds, including via a computer communications network (such as the internet or an intranet); business marketing for others, for advertising purposes; sales promotion for others and advertising; business management, organisation and consultancy for organising loyalty schemes, in particular in the field of bonus schemes, discount schemes, coupons and rewards; business consultancy and management, in particular for creation and support of loyalty schemes for promoting of loyalty schemes, including in the field of bonus schemes and company rewards, loyalty marketing, arranging and providing of goods and/or bonus services of all kinds; business consultancy relating to loyalty schemes; business management, business administration; efficiency experts, searching for information in computer database (for others), compilation of information into a computer database, systemization of information into computer databases, computerised file management.

Class 36:        Insurance; financial affairs; monetary affairs; real estate affairs; finance services; banking; internet banking (home banking); internet banking; telebanking; banking; managing bank accounts; financial operations services; financial transaction services; fund investments; payment by pre-paid, credit, debit, loyalty or gift cards; electronic transactions by credit or payment cards; electronic funds transfer; financial consultancy; provision of credit facilities; commercial and consumer loans and funds; brokerage; trusteeships; financial investment fund services; managements of funds; creation of savings schemes; financial information; financial information; automated teller machine services; insurance services; insurance brokerage; insurance consultation; leasing; debt factoring services; real estate development in the field of residential building construction, namely acquisition of land, purchase and sale brokerage of real estate, renting of flats; property (real estate -) management; sales brokerage of financial products, in particular bonds; concluding of contracts for the participation in investment trusts and pension funds; deposit services; issuing of sureties and guarantees; cheque and bill turnover; monetary operations; securities trading services; settlement of financial transactions by credit or payment cards via computer terminals.

Class 38:        Computer-aided transmission of data; providing communications, including via computer terminals; rental of message sending apparatus; transmission; processing of financial transactions by credit or payment cards via computer terminals.

The contested goods and services are the following:

Class 16:        Stationery; paper stationery, including envelopes and headed notepaper, cartons of cardboard for packaging, gift cartons; magazine; books; periodicals; posters; albums; atlases; almanacs; forms; folders; booklets; prospectuses; printed matter, forms [printed], photographs; catalogues, calendars; posters; stickers [stationery]; adhesive labels; book jackets; printed matters; drawings; occasion cards; tickets; paper vouchers; instructional and teaching material (except apparatus); office requisites ( except furniture). 

Class 35:        Wholesaling and retailing of solid, liquid and gaseous fuels and derivatives thereof; sales brokerage of solid, liquid and gaseous fuels and derivatives thereof; business consultancy in the field of the usage of energy and fuels and derivatives thereof; accounting and book-keeping; management assistance services; business administration; office functions; business management and organisation consultancy; business management and organization consultancy; holdings management; business management of performing artists; business investigations; relocation services for businesses; assistance in management of business activities; marketing services; management of commercial information centres; services involving the following: registration and preparation of duplicates, storage and compilation of transcripts, systemisation of written information (messages), registration, use and compilation of mathematical or statistical data, computerised file management; dissemination of samples, compilation of information and systemization of information into computer databases; computerized file management; compilation of information into computer databases; computerised file management; promotion of mobile and online applications, including promotion of applications via application platforms for the aforesaid purposes; business investigations, providing advertising information via telephone, arranging exhibitions or trade fairs, brokerage of sale and purchase contracts via telephone and the internet; advertising; production and dissemination of advertising matter; press, radio and television advertising; on-line advertising on a computer network; rental of advertising time on communication media; rental of advertising space; distribution of advertising material; updating of advertising material; publication of publicity texts; business information, trade information, advertising information, promotion information, information relating to the location of buildings; commercial information agencies; customer services via the internet for the transmission of information relating to advertising; the bringing together, for the benefit of others, of goods relating to providing or using telecommunications, online and electronic services, including communications and telecommunications apparatus and instruments, electric and electronic apparatus and instruments, all the aforesaid goods being for processing, registration, storage, transmission, search and receipt of data, apparatus for recording, transmission or reproduction of sound, images and encoded data, television apparatus, holograms, computers, programmed electronic circuits for data transmission, computer programs, computer software, discs, tapes and wired magnetic memories, all being magnetic data carriers, blank and recorded magnetic cards, computer software downloaded from the internet, electronic publications provided online from a computer database or from the internet, computer software and telecommunications apparatus (including modems) enabling connections with databases and the internet, computer software enabling data search, downloadable modules with music in the digital format provided from a computer database or the internet, downloadable modules with music in the digital format provided from mp3 files, mp3 players, satellite transmitters and receivers, electric wires and cables, paging apparatus and instruments, radio paging and radiotelephony apparatus and instruments, telephones, portable telephones and telephone receivers, accessories for telephones and telephone receivers, telephone adaptors, apparatus for charging telephone batteries, telephone hands-free kits for desks or vehicles, cradles for vehicle telephone receivers, bags and cases specifically adapted for storing and carrying electronic mobile apparatus and electronic equipment and accessories, computerised personal organisers, antennas, batteries, microprocessors, keyboards, modems, electronic global positioning systems, electronic navigational and positioning apparatus and instruments, monitoring apparatus and instruments, radios, apparatus and instruments for controlling and testing electricity, signalling, checking (supervision) and teaching apparatus and instruments, optical and electro-optical apparatus and instruments, video films, electric and electronic peripheral accessories and apparatus designed and adapted for use with computers, audio-visual apparatus and electronic game equipment and apparatus, parts and fittings for all the aforesaid goods, enabling customers to conveniently view and purchase those goods or familiarise themselves with the description thereof, in particular from a catalogue of various goods, in shops, by electronic means, via online systems, directly outside the retail network, or on a website, and consultancy relating to the aforesaid field; the bringing together, for the benefit of others, of goods including portable electronic apparatus and accessories therefor, enabling customers to conveniently view and purchase those goods or familiarise themselves with the description thereof, in particular from a catalogue of various goods, in shops, by electronic means, via online systems, directly outside the retail network, or on a website, and consultancy relating to the aforesaid field; the bringing together, for the benefit of others, of goods including stationery and informational materials, enabling customers to conveniently view and purchase those goods or familiarise themselves with the description thereof, in particular from a catalogue of various goods, in shops, by electronic means, via online systems, directly outside the retail network, or on a website, and consultancy relating to the aforesaid field; the bringing together, for the benefit of others, of telecommunications services, including providing access to the internet, digital and analogue television, including providing of audio and video materials on demand, enabling customers to conveniently view and purchase those goods or familiarise themselves with the description thereof, in particular from a catalogue of various goods, in shops, by electronic means, via online systems, directly outside the retail network, or on a website, and consultancy relating to the aforesaid field; the bringing together, for the benefit of others, of telecommunications services, including providing of audio and video materials on demand, enabling customers to conveniently view and purchase those goods or familiarise themselves with the description thereof, in particular from a catalogue of various goods, in shops, by electronic means, via online systems, directly outside the retail network, or on a website, and consultancy relating to the aforesaid field; wholesale and retail of energy, including electrical and thermal energy; sales brokerage relating to energy, including electrical and thermal energy; brokerage in the aforesaid field; presentation of online offers in the field of advertising; presentation of telecommunications, electronic communications and online offers in the field of telecommunications; presentation of offers relating to education and training consultancy; services of agents responsible for selling a variety of goods (brokerage in the field of purchasing goods for others); second-hand shops; customer services by means of telephone and online networks, the internet and intranets (office functions); telephone call centres, namely management of telephone call centres, for others; sale of goods relating to providing or using telecommunications, online and electronic services, including communications and telecommunications apparatus and instruments, electric and electronic apparatus and instruments, all the aforesaid goods being for processing, registration, storage, transmission, search and receipt of data, apparatus for recording, transmission or reproduction of sound, images and coded data, television apparatus, holograms, computers, programmed electronic circuits for data transmission, computer programs, computer software, discs, tapes and wired magnetic memories, all being magnetic data carriers, blank and recorded magnetic cards, computer software downloaded from the internet, electronic publications provided online from a computer database or from the internet, computer software and telecommunications apparatus (including modems) enabling connections with databases and the internet, computer software enabling data search, downloadable modules with music in the digital format provided from a computer database or the internet, downloadable modules with music in the digital format provided from mp3 files, mp3 players, satellite transmitters and receivers, electric wires and cables, paging apparatus and instruments, radio paging and radiotelephony apparatus and instruments, telephones, portable telephones and telephone receivers, accessories for telephones and telephone receivers, telephone adaptors, apparatus for charging telephone batteries, telephone hands-free kits for desks or vehicles, cradles for vehicle telephone receivers, bags and cases specifically adapted for storing and carrying electronic mobile apparatus and electronic equipment and accessories, computerised personal organisers, antennas, batteries, microprocessors, keyboards, modems, electronic global positioning systems, electronic navigational and positioning apparatus and instruments, monitoring apparatus and instruments, radios, apparatus and instruments for controlling and testing electricity, signalling, checking (supervision) and teaching apparatus and instruments, optical and electro-optical apparatus and instruments, video films, electric and electronic peripheral accessories and apparatus designed and adapted to be used with computers, audio-visual apparatus and electronic game equipment and apparatus, parts and fittings for all the aforesaid goods; sale of sets for electronic signatures; promotion and sale of systems for transmission of sound and images via radiophonic communications, via communications by telegrams, telephones, mobile phones and fax apparatus, and via digital systems; management of contracts relating to providing and subsequent use of services in the field of energy transmission and distribution, in particular electrical and thermal energy, supply of energy, in particular electrical and thermal energy, distribution and supply of water, supply of steam and hot water, sewage and waste disposal; brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to medical services, brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to nursing services, brokerage in the field of sale of medical services, brokerage in the field of sale of nursing services, brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to medical clinics, nursing services and medical services, psychological advice, consultancy in the field of health, alternative medicine, speech therapy and telemedicine, brokerage in the field of sale of medical clinic services, nursing services, medical care services, healthcare centre services, psychological advice services, consultancy in the field of health, speech therapy services, alternative medicine and telemedicine; management of contracts relating to providing and subsequent use of medical and nursing services, management of contracts relating to providing and subsequent use of medical clinic services, nursing services, medical services, services of a psychologist, consultancy in the field of health, alternative medicine, speech therapy services and telemedicine; brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to services relating to the safety and protection of individuals and properties, guarding services and consultancy in the field of safety; brokerage in the field of sale of services relating to the safety and protection of individuals and properties, guarding services and consultancy in the field of safety; management of contracts relating to providing and subsequent use of services relating to the safety and protection of individuals and properties, guarding services and consultancy in the field of safety; retailing and wholesaling of radio and television articles, portable electronic apparatus and accessories therefor; the provision of information relating to the aforesaid services.

Class 41: Training; education; providing of training; education via telephone, the internet, radio and television; entertainment services; cultural activities; sport and athletic activities; sports information; organisation of exhibitions, cultural events and concerts; operating and providing of online computer games on websites; arranging of events, trade fairs and exhibitions; arranging of online entertainment; club services (entertainment or education); arranging and conducting of conferences; organization of competitions education or entertainment; operating of lotteries; publishing services; publication of texts (other than publicity texts); providing online electronic publications; operation of radio stations, television stations (editing and distribution of programmes); film, television and video production; movie studios; recording studios; videotaping; production of radio and television programmes; videotape editing, television and radio entertainment; distribution of films, video recordings and sound recordings; rental of sound recordings; rental of radio and television sets; rental of movie projectors and accessories; rental of motion pictures; rental of cine-films; rental of videotapes; radio and television sets (rental of -); rental of audio equipment; information relating to the aforesaid services.

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.

General clarifications regarding the opponent’s services

As a preliminary remark some general clarifications about the natures and relevant intended purposes will be made in relation to the opponent’s services in Classes 35, 36 and 38.

The opponent’s advertising and advertising-related services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

On the other hand, the opponent’s business management services in Class 35 are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The opponent’s business administration services in Class 35 are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation's board of directors. They include activities such as personnel recruitment, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by inter alia employment agencies, auditors and outsourcing companies.

The opponent’s office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

The opponent’s services in Class 36 are in general financial services provided by the finance industry. The finance industry encompasses a broad range of organisations that deal with the management, investment, transfer, and lending of money. Among these organisations are, for example, banks, credit card companies, insurance companies, consumer finance companies, stock brokerages and investment funds.

In particular, the opponent’s banking services in Class 36 consist of providing all the services necessary for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business.

The opponent’s insurance services in Class 36 are of a financial nature and insurance companies are subject to licensing, supervision and solvency rules similar to those governing banks and other institutions providing financial services. Most banks also offer insurance services, including health insurance, or act as agents for insurance companies with whom they are often economically linked. Additionally, it is not unusual to see a financial institution and an insurance company in the same economic group.

The real estate services are related to the purchase and sale of a type of property, namely land and buildings, usually offered by brokers and/or particularly real estate agents.  

Further, the opponent’s services in Class 38 are telecommunication services in general that include in particular the transmission of data, messages or as in the present case, also processing of financial transactions.

Contested goods in Class 16

The contested stationery; paper stationery, including envelopes and headed notepaper, cartons of cardboard for packaging, gift cartons; magazine; books; periodicals; posters; albums; atlases; almanacs; forms; folders; booklets; prospectuses; printed matter, forms [printed], photographs; catalogues, calendars; posters; stickers [stationery]; adhesive labels; book jackets; printed matters; drawings; occasion cards; tickets; paper vouchers; instructional and teaching material (except apparatus); office requisites (except furniture) are printed matter, as well as any office or/and writing materials or equipment used in writing. These goods are dissimilar to all the opponent’s services in Classes 35, 36 and 38. Firstly, it has to be noted that services are fundamentally different in nature and purpose from the manufacture of goods. Secondly, although some of the contested goods can be used, for instance, as a medium for disseminating advertising or as means for effective accomplishing of various secretarial services, in particular catalogues, booklets and calendars or office requisites and stationery, this is not enough for them to be considered similar to any degree. Neither is the fact that some of the contested goods could be the subject of the advertisement or used in the relevant commercial field. The nature, purpose and method of use of the contested goods and the opponent’s services differ and they do not normally come from the same kind of producer/provider. In addition their methods of use, relevant publics and distribution channels do not generally coincide.

 

Contested services in Class 35

The contested advertising; computerized file management (listed three times); business administration; office functions; business management (listed twice); compilation of information and systemization of information into computer databases are identically contained in both lists of services (including synonyms).

The contested marketing services overlap with the opponent’s business marketing for others, for advertising purposes. They are identical. 

The contested dissemination of samples; production and dissemination of advertising matter; press, radio and television advertising; on-line advertising on a computer network; rental of advertising time on communication media; rental of advertising space; distribution of advertising material; updating of advertising material; publication of publicity texts; providing advertising information via telephone; advertising information, promotion information; customer services via the internet for the transmission of information relating to advertising; presentation of online offers in the field of advertising; presentation of telecommunications, electronic communications and online offers in the field of telecommunications; presentation of offers relating to education and training consultancy; promotion of systems for transmission of sound and images via radiophonic communications, via communications by telegrams, telephones, mobile phones and fax apparatus, and via digital systems are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

The contested accounting and book-keeping; holdings management; business management of performing artists; business investigations (listed twice); relocation services for businesses; assistance in management of business activities; management of commercial information centres; business consultancy in the field of the usage of energy and fuels and derivatives thereof; telephone call centres, namely management of telephone call centres, for others; management of contracts relating to providing and subsequent use of medical and nursing services, management of contracts relating to providing and subsequent use of medical clinic services, nursing services, medical services, services of a psychologist, consultancy in the field of health, alternative medicine, speech therapy services and telemedicine; management of contracts relating to providing and subsequent use of services relating to the safety and protection of individuals and properties, guarding services and consultancy in the field of safety;  management of contracts relating to providing and subsequent use of services in the field of energy transmission and distribution, in particular electrical and thermal energy, supply of energy, in particular electrical and thermal energy, distribution and supply of water, supply of steam and hot water, sewage and waste disposal; business information, trade information, information relating to the location of buildings are included in the broad category of, or overlap with, the opponent’s business management. Therefore, they are identical.

The contested management assistance services; organisation consultancy (listed twice); commercial information agencies are included in the broad category of, or overlap with, the opponent’s business administration. Therefore, they are identical.

The contested compilation of information into computer databases; promotion of mobile and online applications, including promotion of applications via application platforms for the aforesaid purposes; services involving the following: registration and preparation of duplicates, storage and compilation of transcripts, systemisation of written information (messages), registration, use and compilation of mathematical or statistical data are included in, or overlap with, the opponent’s computerised filed management. Therefore, they are identical.

The contested customer services by means of telephone and online networks, the internet and intranets (office functions) are included in the opponent’s office functions. Therefore, they are identical.

The contested arranging exhibitions or trade fairs are similar to a low degree to the opponent’s advertising since these services may have the same relevant purpose, advertising, in particular exposing the relevant goods and services. In addition, these services may often target the same public of professional customers and public at large.

The contested brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to medical services, brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to nursing services; brokerage in the field of sale of medical services, brokerage in the field of sale of nursing services; brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to medical clinics, nursing services and medical services, psychological advice, consultancy in the field of health, alternative medicine, speech therapy and telemedicine; brokerage in the field of sale of medical clinic services, nursing services, medical care services, healthcare centre services, psychological advice services, consultancy in the field of health, speech therapy services, alternative medicine and telemedicine; brokerage relating to the conclusion of contracts relating to providing and arranging of and providing access to services relating to the safety and protection of individuals and properties, guarding services and consultancy in the field of safety; brokerage in the field of sale of services relating to the safety and protection of individuals and properties, guarding services and consultancy in the field of safety; brokerage of sale and purchase contracts via telephone and the internet are contract and sale services provided by consultants in different areas such as healthcare, safety and protection of property and individuals, whereby this for a brokerage fee or commission charged by the company rendering the services. The afore mentioned contested services are directed at mediator agents that will offer the relevant services to the end consumer. Although the contested brokerage services do not serve for business consultancy, advice or administration, or for advertising purposes, but involve the sale or purchase of a commercial product, in particular the conclusion of contracts relating to providing of specific services, these services are still considered similar to a low degree to the opponent’s business consultancy and management that may be addressed to the same professional public and may be provided by the same consultancy companies. In a way, contrary to the applicant’s opinion, there is a certain overlap between these two commercial sectors, where the object of business negotiations and contracting are non-tangible assets for the company. In that sense, the broad categories of the opponent’s list of services in Class 35, such as business administration, business management, office functions, may cover, indeed, the contested specialised categories of business assistance and consultancy-related services and to that extent a certain degree of similarity may not be completely ruled out.      

However, the contested the wholesaling and retailing of solid, liquid and gaseous fuels and derivatives thereof; sales brokerage of solid, liquid and gaseous fuels and derivatives thereof; wholesale and retail of energy, including electrical and thermal energy; sales brokerage relating to energy, including electrical and thermal energy; brokerage in the aforesaid field; the bringing together, for the benefit of others, of goods including stationery and informational materials, enabling customers to conveniently view and purchase those goods or familiarise themselves with the description thereof, in particular from a catalogue of various goods, in shops, by electronic means, via online systems, directly outside the retail network, or on a website, and consultancy relating to the aforesaid field; second-hand shops; retailing and wholesaling of radio and television articles, portable electronic apparatus and accessories therefor; the provision of information relating to the aforesaid services; sale of systems for transmission of sound and images via radiophonic communications, via communications by telegrams, telephones, mobile phones and fax apparatus, and via digital systems; the bringing together, for the benefit of others, of goods relating to providing or using telecommunications, online and electronic services, including communications and telecommunications apparatus and instruments, electric and electronic apparatus and instruments, all the aforesaid goods being for processing, registration, storage, transmission, search and receipt of data, apparatus for recording, transmission or reproduction of sound, images and encoded data, television apparatus, holograms, computers, programmed electronic circuits for data transmission, computer programs, computer software, discs, tapes and wired magnetic memories, all being magnetic data carriers, blank and recorded magnetic cards, computer software downloaded from the internet, electronic publications provided online from a computer database or from the internet, computer software and telecommunications apparatus (including modems) enabling connections with databases and the internet, computer software enabling data search, downloadable modules with music in the digital format provided from a computer database or the internet, downloadable modules with music in the digital format provided from mp3 files, mp3 players, satellite transmitters and receivers, electric wires and cables, paging apparatus and instruments, radio paging and radiotelephony apparatus and instruments, telephones, portable telephones and telephone receivers, accessories for telephones and telephone receivers, telephone adaptors, apparatus for charging telephone batteries, telephone hands-free kits for desks or vehicles, cradles for vehicle telephone receivers, bags and cases specifically adapted for storing and carrying electronic mobile apparatus and electronic equipment and accessories, computerised personal organisers, antennas, batteries, microprocessors, keyboards, modems, electronic global positioning systems, electronic navigational and positioning apparatus and instruments, monitoring apparatus and instruments, radios, apparatus and instruments for controlling and testing electricity, signalling, checking (supervision) and teaching apparatus and instruments, optical and electro-optical apparatus and instruments, video films, electric and electronic peripheral accessories and apparatus designed and adapted for use with computers, audio-visual apparatus and electronic game equipment and apparatus, parts and fittings for all the aforesaid goods, enabling customers to conveniently view and purchase those goods or familiarise themselves with the description thereof, in particular from a catalogue of various goods, in shops, by electronic means, via online systems, directly outside the retail network, or on a website, and consultancy relating to the aforesaid field;  the bringing together, for the benefit of others, of goods including portable electronic apparatus and accessories therefor, enabling customers to conveniently view and purchase those goods or familiarise themselves with the description thereof, in particular from a catalogue of various goods, in shops, by electronic means, via online systems, directly outside the retail network, or on a website, and consultancy relating to the aforesaid field; the bringing together, for the benefit of others, of telecommunications services, including providing access to the internet, digital and analogue television, including providing of audio and video materials on demand, enabling customers to conveniently view and purchase those goods or familiarise themselves with the description thereof, in particular from a catalogue of various goods, in shops, by electronic means, via online systems, directly outside the retail network, or on a website, and consultancy relating to the aforesaid field; the bringing together, for the benefit of others, of telecommunications services, including providing of audio and video materials on demand, enabling customers to conveniently view and purchase those goods or familiarise themselves with the description thereof, in particular from a catalogue of various goods, in shops, by electronic means, via online systems, directly outside the retail network, or on a website, and consultancy relating to the aforesaid field; sale of goods relating to providing or using telecommunications, online and electronic services, including communications and telecommunications apparatus and instruments, electric and electronic apparatus and instruments, all the aforesaid goods being for processing, registration, storage, transmission, search and receipt of data, apparatus for recording, transmission or reproduction of sound, images and coded data, television apparatus, holograms, computers, programmed electronic circuits for data transmission, computer programs, computer software, discs, tapes and wired magnetic memories, all being magnetic data carriers, blank and recorded magnetic cards, computer software downloaded from the internet, electronic publications provided online from a computer database or from the internet, computer software and telecommunications apparatus (including modems) enabling connections with databases and the internet, computer software enabling data search, downloadable modules with music in the digital format provided from a computer database or the internet, downloadable modules with music in the digital format provided from mp3 files, mp3 players, satellite transmitters and receivers, electric wires and cables, paging apparatus and instruments, radio paging and radiotelephony apparatus and instruments, telephones, portable telephones and telephone receivers, accessories for telephones and telephone receivers, telephone adaptors, apparatus for charging telephone batteries, telephone hands-free kits for desks or vehicles, cradles for vehicle telephone receivers, bags and cases specifically adapted for storing and carrying electronic mobile apparatus and electronic equipment and accessories, computerised personal organisers, antennas, batteries, microprocessors, keyboards, modems, electronic global positioning systems, electronic navigational and positioning apparatus and instruments, monitoring apparatus and instruments, radios, apparatus and instruments for controlling and testing electricity, signalling, checking (supervision) and teaching apparatus and instruments, optical and electro-optical apparatus and instruments, video films, electric and electronic peripheral accessories and apparatus designed and adapted to be used with computers, audio-visual apparatus and electronic game equipment and apparatus, parts and fittings for all the aforesaid goods; sale of sets for electronic signatures; services of agents responsible for selling a variety of goods (brokerage in the field of purchasing goods for others) are various types of sale, retail and wholesale services concerning the bringing together of particular goods, including such goods related to the telecommunication sector. However, the mere fact that telecommunication services are provided by means of different electronic and telecommunication apparatus is not considered sufficient to find similarity between the opponent’s provision of communications and transmission and the sale services involving goods that may be involved in those processes. The services have different distribution channels and target different publics. Furthermore, they are neither in competition nor complementary. To that extent, they are considered dissimilar. As far as it concerns the similarity between these services and the remaining opponent’s services in Classes 35 or 36, it is obvious that they have no relevant points in common.

Contested services in Class 41

The contested training; education; providing of training; education via telephone, the internet, radio and television; entertainment services; cultural activities; sport and athletic activities; sports information; organisation of exhibitions, cultural events and concerts; operating and providing of online computer games on websites; arranging of events, trade fairs and exhibitions; arranging of online entertainment; club services (entertainment or education); arranging and conducting of conferences; organization of competitions education or entertainment; operating of lotteries; publishing services; publication of texts (other than publicity texts); providing online electronic publications; operation of radio stations, television stations (editing and distribution of programmes); film, television and video production; movie studios; recording studios; videotaping; production of radio and television programmes; videotape editing, television and radio entertainment; distribution of films, video recordings and sound recordings; rental of sound recordings; rental of radio and television sets; rental of movie projectors and accessories; rental of motion pictures; rental of cine-films; rental of videotapes; radio and television sets (rental of -); rental of audio equipment; information relating to the aforesaid services cover services rendered by persons or institutions and organisations in the development of the mental facilities of persons or animals, as well as services intended to entertain or to engage the attention. These services, mostly related to entertainment or education and training, do not have the same natures, method of use or purpose as the opponent’s services listed above, and furthermore, they require different types of knowledge and expertise in comparisons to business management and administration, advertising, financial services and telecommunications. Consequently, the do not coincide in their distribution channels as they will have different type of providers and they will be addressed to different parts of public, in particular services in Class 35 are directed at professional customers, whereas services in Class 41 usually target the public at large. The services are not complementary or in competition with each other; the fact that these services may, for instance, appear in advertisements is insufficient for finding similarity. Taking into considerations all these differences between them, they are considered dissimilar.  

2. The signs

SMART BANK	smart bank
Earlier trade mark	Contested sign

The earlier mark is a word mark consisting of the verbal elements ‘SMART BANK’ written in upper case letters and the contested sign is the word mark ‘smart bank’ written in lower case letter. However, in the case of word marks, it is the word as such that is protected and not its written form; therefore, it is immaterial whether the marks are represented in upper or lower case letters.

The signs are considered in such case identical.

3. Global assessment, other arguments and conclusion

The goods and services are partly identical and similar to a low degree and partly dissimilar and the signs are identical.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Polish trade mark registration.

The signs were found to be identical and some of the contested services, namely some of the services in Class 35 are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these services.

In addition, some of the services in Class 35 were found similar to a low degree to the opponent’s services. Bearing in mind the principle of interdependence, according to which less degree of similarity between the conflicting goods and services may be outbalanced by the great similarity of the signs, and taking into account the identity of the signs in the present case, this is concluded to be a sufficient reason to find likelihood of confusion also in respect to lowly similar services. Therefore, the opposition must be upheld according to Article 8(1)(b) EUTMR for these services.

The rest of the contested goods and services are dissimilar. As the 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 goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark: European Union trade mark registration for the figurative mark  registered for identical services in Classes 35, 36 and 38 as the mark examined above.

Since these marks cover the same or a narrower scope of services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Volker MENSING

Patricia LOPEZ FERNANDEZ DE CORRES

Dorothée SCHLIEPHAKE

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.