OPPOSITION No B 2 427 105

VocaLink Limited, 1 Angel Lane, London EC4R 3AB, United Kingdom (opponent), represented by D Young & Co LLP, 120 Holborn, London EC1N 2DY, United Kingdom (professional representative)

a g a i n s t

ZTE Corporation, ZTE Plaza, Keji Road South, Hi-Tech Industrial Park, Nanshan District, Shenzhen, People’s Republic of China (applicant), represented by Interpatent, via Caboto, 35, 10129 Torino, Italy (professional representative).

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

DECISION:

1.        Opposition No B 2 427 105 is upheld for all the contested services, namely the following:

Class 36:        Home banking.

2.        European Union trade mark application No 12 888 467 is rejected for all the contested services. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 888 467, namely against some of the services in Class 36. The opposition is based on, inter alia, European Union trade mark registration No 198 036. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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 European Union trade mark registration No 198 036.

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, inter alia, earlier European Union trade mark registration No 198 036 on which the opposition is based.

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

The contested application was published on 21/07/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 21/07/2009 to 20/07/2014 inclusive.

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

Class 36:        Banking services for the dispensing of cash; funds transfer and payment services; financial information 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 14/01/2016, in accordance with Rule 22(2) EUTMIR, the Office gave the opponent until 19/03/2016 to submit evidence of use of the earlier trade mark.

The opponent had already submitted the following documents, on 17/04/2015, in support of its opposition (first batch):

• A witness statement dated 31/03/2015, signed by Mr Graham Mott, Head of Strategy and External Relations of VocaLink Limited (the opponent), containing information about the opponent’s activities and making reference to the 12 exhibits listed below, in addition to figures concerning ‘LINK’ transactions in the United Kingdom. It is explained that the ‘LINK’ scheme is a financial network, in which the opponent provides the infrastructure of the network and processes ‘LINK’ scheme transactions and payment services between network members for their customers throughout the United Kingdom and in France. The network itself is built up of network members, which are generally financial and banking institutions and building societies authorised to provide payment and financial services through ATMs under the opponent’s ‘LINK’ trade marks by signing licensing agreements. It is stated that the ‘LINK’ network dominates ATM services in the United Kingdom and is also used in France and that all ‘LINK’ ATMs bear the opponent’s trade mark.

• Exhibit 1: extracts from the trade mark register showing the registration of the opponent’s earlier marks, on which the opposition is based.

• Exhibit 2: a list prepared by the opponent of the network members of the ‘LINK’ scheme as of May 2014.

• Exhibit 3: a selection of press cuttings, published in various UK online and print media, such as The Guardian, Datamonitor NewsWire, Leicester Mercury, PR Newswire Europe, The Times, Financial Times, Daily Mail, The Daily Telegraph, etc. Some articles are dated 2006-2014 and others are undated or dated by the opponent within the same period. Some of the undated articles contain references in the text to different years during the period 2006-2014. The documents contain news relating to cash withdrawals and financial transactions with reference to the ‘LINK’ ATM network. From the information in these documents it is clear that the opponent operates the UK’s national cash machine interchange network ‘LINK’ – a financial network engaged in providing payment and financial services through ATMs. Some articles mention that this network is ‘the largest single-country ATM network in the world’ and ‘the world’s busiest shared ATM network operator’. An article from 2006 clarifies that ‘the “LINK” ATM Scheme brings together 105 million card holders and over 58 000 ATMs in the UK and provides a 24-hour, 365-days a year, real time, fully authorised transaction processing and settlement service’. An article from 18/01/2007 published by The PressWIRE states that the ‘LINK’ network ‘deals with up to 226m transactions per month and at its busiest, it processes over 1 million transactions an hour’. It also adds that ‘there are over 130 million “LINK” cards in circulation from around 38 issuers’. An article from 09/11/2009 published by The Telegraph states that ‘a record £10.3 billion was taken out of ATMs that are part of the LINK Network during the month’. It is mentioned in this article that the ‘LINK’ network handled transactions for around 64 000 ATMs, which equated to nearly every cash machine in the United Kingdom. An article dated 08/05/2012 refers to the collaboration between the UK Government and the cash machine operator ‘LINK’ to enable consumers to use ATMs in the United Kingdom to donate to charity. An article from 21/02/2013 published by Reuters provides information about the ‘LINK’ scheme, stating that over 3 billion transactions were processed by the ‘LINK’ network in 2011 and that over GBP 10 billion cash is withdrawn through ‘LINK’ ATMs every month. An article dated by the opponent as 07/03/2013 states that the cash machine network ‘LINK’ and the charity organisation Crimestoppers have joined forces to offer GBP 25 000 as a reward for information about cashpoint crimes. This exhibit also contains a Wikipedia extract with information about the Euro Alliance of Payment Schemes – an international alliance of European bank and interbank networks with the aim of creating a pan-European debit card system, including, among its members, the ‘LINK’ network in the United Kingdom.

• Exhibits 4-9: materials in relation to different banking services emanating from several UK financial institutions or building societies:

• Exhibit 4: copies of brochures issued by the UK bank Halifax, mentioning that users of Halifax services may use any ‘LINK’ cash machine free of charge to withdraw money from their accounts. The brochures are undated, but some of them contain references to 2013.

• Exhibit 5: copies of undated brochures issued by the UK bank Barclays and extracts from Barclays’ website, www.barclays.co.uk, dated 11/03/2015, mentioning that users of Barclays’ services may use any ‘LINK’ cash machine to withdraw money from their accounts.

• Exhibit 6: copies of undated brochures issued by the UK bank Lloyds TSB and an undated extract from Lloyds TSB’s website, www.lloydstsb.com, mentioning that users of Lloyds TSB services may use any ‘LINK’ cash machine to withdraw money from their accounts.

• Exhibit 7: a copy of a brochure issued by the bank Santander, referring to current accounts that allow access to customers’ money via ‘LINK’ cash machines. The final page of the brochure states that the information is correct as of December 2014.

• Exhibit 8: a copy of a brochure issued by the Yorkshire Building Society, dated 04/03/2015, referring to current accounts and the possibility for customers to use ‘LINK’ banking cards.

• Exhibit 9: a copy of a brochure issued by The Cooperative Bank, dated August 2014, mentioning that there are more than 66 000 ‘LINK’ cash machines in the United Kingdom, which customers of The Cooperative Bank could use.

• Exhibit 10: extracts from the opponent’s website (referring to the LINK Interchange Network), giving information and statistics about the ‘LINK’ cash machines network. It is stated that the ‘LINK’ network deals with around 250 million transactions a month and that there are more than 130 million ‘LINK’ cards in circulation from around 38 card issuers. The extracts are not dated, but some of them contain a copyright date at the bottom of the web page with reference to 2002-2008.

• Exhibit 11: results of a survey entitled ‘ATM LINK Brand Awareness and Imagery’, conducted by the opponent, VocaLink Limited, among 2 100 UK adults, dated June 2014. This document is marked as ‘internal’ and states that 86% of the respondents were familiar with the ‘LINK’ logo and 57% of this group associate it with ATMs.

• Exhibit 12: results of a survey conducted by the company BJM on consumer recognition of the ‘LINK’ brand. In total, 622 people, who were holders of bank or building society cash machine cards, were interviewed in December 2000 in 40 sampling points throughout the United Kingdom. It is stated that the ‘LINK’ logo was recognised by 92% of all respondents, and 81% of these associated it with ATM machines and 16% associated it with cash cards. The survey concludes that the prompted recognition of the logo is very high and that over four in five of those who recognised the logo correctly nominated an appropriate source.

On 20/11/2015, the opponent submitted the following additional documents (second batch):

• Appendixes 1-3: previous opposition decisions of the Office: decision of 31/08/2015, B 2 373 200, for the earlier mark ‘BELO’ and the contested sign ‘RIO BELO’; decision of 18/08/2015, B 2 446 519, for the earlier mark ‘ONLY’ and the contested sign ‘OWNONLY’; and decision of 10/04/2015, B 1 492 175, for the earlier mark ‘LIFE’ and the contested sign ‘DIRECTLIFE’.

• Appendix 4: extracts from the registration of trade marks, containing the element ‘LINK’.

• Appendix 5: extracts from the opponent’s website, obtained through the digital archive Wayback Machine, showing information from the opponent’s website between 25/01/2009 and 31/10/2014. The documents give information about the ‘LINK’ cash machines network. For example, the extract from 14/03/2010 states that there are 130 million LINK-enabled cards in circulation. The extract from 15/05/2013 states that ‘the total value of LINK cash withdrawals can exceed GBP 10 billion per month and that at its busiest the “LINK” network processes over 1 million transactions an hour’.

On 18/03/2016, within the time limit for submitting the requested evidence of use, the opponent submitted the following documents (third batch):

• Items 1-14: a selection of press cuttings, published in various UK online and print media, such as The Telegraph, The Times, Channel 4 News, Mail Online, etc., dated between 09/11/2009 and 20/06/2014. The documents contain news relating to cash withdrawals and financial transactions with references to the ‘LINK’ ATM network; these documents were already submitted in the first batch of documents as part of Exhibit 3.

• Item 15: several charts, obtained from the opponent’s website, http://www.link.co.uk, giving statistical information about cash withdrawals and transactions processed by the ‘LINK’ network per year for the period 1986-2014, about the number of ‘LINK’ ATMs between 2001 and 2015 and about ‘LINK’ transactions and cash withdrawal volumes for the period 2014-2016.

• Items 16-21: copies of brochures issued by the financial or building institutions Halifax, Barclays, Lloyds TSB, Santander, the Yorkshire Building Society and The Cooperative Bank; these were already submitted in the first batch of documents as Exhibits 4-9.

• Item 22: extracts from the opponent’s website; these were already submitted in the first batch of documents as Exhibit 10.

• Item 23: results of a survey conducted by the company BJM; these were already submitted in the first batch of documents as Exhibit 12.

• Item 24: results of a survey entitled ‘ATM LINK Brand Awareness and Imagery’, conducted by the opponent; these were already submitted in the first batch of documents as Exhibit 11.

The evidence to be taken into account is all the documents listed above.

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 witness statement are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the services for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The evidence must show that the earlier European Union trade mark has been genuinely used in the European Union.

The documents submitted show that the place of use is the United Kingdom. The publications and website extracts demonstrate that the majority of the ATM transactions in the United Kingdom are processed through the ‘LINK’ network and that a large proportion of commerce in the United Kingdom is affiliated to the ‘LINK’ system. It is stated that ‘LINK’ cards are a universal means of payment in the United Kingdom and that the opponent’s company is the national interbank network of the United Kingdom.

Consequently, the evidence submitted suffices to establish that the sign was present in the market in the relevant territory.

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period, namely from 21/07/2009 to 20/07/2014, inclusive.

In the present case, a substantial number of the articles and publications (Exhibit 3 from the first batch of documents) and some of the dated brochures (Exhibits 4 and 9) are dated within the relevant period or contain information referring to the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, part of the evidence referring to use outside the relevant period, in particular some of the articles, brochures and website extracts dated before or after this time period, presents additional supporting information of use of the opponent’s mark within the relevant period, because the use it refers to is close in time to it and it provides evidence of continuity of use over time.

Therefore, the evidence of use filed by the opponent contains sufficient indications concerning the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The evidence submitted by the opponent in order to prove genuine use of the earlier mark relates exclusively to the United Kingdom. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not. The materials submitted, in particular most of the articles, brochures and website printouts, relate to years and dates throughout the whole relevant period and prove the frequency of use of the mark during that period. The information regarding the number of payments and transactions associated with the sign ‘LINK’ during the period 2009-2014 and the number of ‘LINK’ ATMs and bank cards in circulation is sufficient to demonstrate the commercial volume of use. According to the documents submitted, around 130 million ‘LINK’ cards have been issued in total, and the total value of transactions made with such cards could exceed GBP 10 billion per month for the years 2009-2014. These articles and publications also contain supporting information in relation to the scale of the opponent’s activities, stating that ‘LINK’ is ‘the largest single-country ATM network in the world’ and ‘the world’s busiest shared ATM network operator’. All this material indicates that the EUTM proprietor has maintained a stable position in the market.

All this gives the Opposition Division sufficient information regarding the commercial activities of the opponent throughout the relevant period and enables it to conclude that use of the trade mark at issue took place to a sufficient extent.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of § 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

Firstly, it should be noted that, although in some of the evidence submitted the opponent’s company and the network are referred to as ‘LINK’, the material clearly also shows references to various financial services with the indication ‘LINK’ (e.g. ‘LINK transactions’, ‘LINK card withdrawals’).

Moreover, in the case of services, it is impossible to use the trade marks ‘on’ services, as they are immaterial. Therefore, the use of ‘LINK’ in the various publications and brochures and in the form of a logo on the top or bottom of web pages with information about the services in question is considered sufficient to prove use of it as a trade mark.

Secondly, it is appropriate to consider whether the mark as used contains differences from its registered form that would affect its distinctive character or, in spite of some differences, the mark as used and its registered form are essentially the same.

In the present case, earlier European Union trade mark registration No 198 036 is the word mark ‘LINK’. The evidence submitted demonstrates use of the sign as registered (‘LINK’) in the majority of the documents in the text references to different services in Class 36. The evidence also shows use of the element ‘LINK’ in a stylised typeface together with a figurative element on a few printouts from the opponent’s website, namely as . The figurative element is mostly decorative. The depiction of the verbal element in the way shown above constitutes an acceptable means of bringing the mark in question to the public’s attention and, consequently, does not affect the distinctiveness of the verbal element, ‘LINK’, which has been registered as a word mark.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1)(a) EUTMR.

Overall assessment

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

The earlier mark is registered for the following services:

Class 36:        Banking services for the dispensing of cash; funds transfer and payment services; financial information services.

The evidence filed by the opponent relates to various financial and banking services, such as financial transactions, payment operation services and cash withdrawal services.

Therefore, there are sufficient indications that the earlier trade mark has been used in relation to some particular financial, monetary and banking services, which are not in essence different from those explicitly mentioned in the specification of services for which the earlier trade mark is registered. Moreover, as regards financial information services, these are included in the various financial and banking services for which use has been demonstrated, since financial and banking services cannot be offered without the complementary information services. Consequently, the evidence of use of the earlier trade mark refers to the services for which it is registered.

REPUTATION – ARTICLE 8(5) EUTMR

As seen above, for reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 198 036, for which the opponent claimed reputation in the United Kingdom for all the services for which the mark is registered, namely banking services for the dispensing of cash; funds transfer and payment services in Class 36. The opposition is directed against home banking services in Class 36.

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 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.

1. The signs

LINK
Earlier trade mark	Contested sign

The relevant territory is the European Union.

However, as reputation is claimed only in the United Kingdom, the analysis below focuses on the public in the United Kingdom.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word mark ‘LINK’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The contested sign is a figurative mark, containing a figurative element in grey depicting the symbol for infinity. To the right of this element is an inscription in foreign characters, possibly Chinese, below which is a smaller conjoined verbal element, ‘ShareLink’, with the letters ‘S’ and ‘L’ in upper case and the remaining letters in lower case.

Neither of the marks under comparison has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

The word ‘LINK’, constituting the earlier mark, will be perceived by the relevant public in the United Kingdom as denoting ‘a relationship between two things or situations, especially where one affects the other’.

In its observations, the applicant argues that the earlier trade mark ‘LINK’ has a low distinctive character given that there are many trade marks registered for services in Class 36 that include the element ‘LINK’. In support of its argument, the applicant refers to trade mark registrations in the European Union and in different territories of the European Union, extracted from the TMView database.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘LINK’. Under these circumstances, the applicant’s claims must be set aside.

Contrary to the applicant’s arguments, the Opposition Division is of the opinion that the word ‘LINK’ is of an average degree of distinctiveness, as it does not describe or allude to any of the essential characteristics of the services at issue. Since the earlier mark is composed of only one element, it does not have any element that could be considered clearly more distinctive than other elements.

As regards the contested sign, its verbal element ‘ShareLink’ does not have a meaning as a whole for the public in the relevant territory. However, the fact that the sequence of letters ‘Share’ and the sequence of letters ‘Link’ both start with upper case letters will facilitate the perception of these words as separate elements; therefore the elements of this conjoined verbal element do not create one clear or univocal conceptual unit, but will be perceived with their separate meanings.

The word ‘SHARE’ of the contested sign will be understood as, inter alia, ‘a part or portion of a larger amount which is divided among a number of people, or to which a number of people contribute’, ‘each of the notional parts into which property held by joint owners is divided’ and/or ‘one of the equal parts into which a company’s capital is divided, entitling the holder to a proportion of the profits’ (all definitions extracted from Oxford Dictionaries on 24/02/2017 at https://en.oxforddictionaries.com/). In relation to the relevant banking services in Class 36, this word is likely to be understood as a unit of account for various investments, as it is often used to denote the stock of a corporation, but is also used for collective investments such as mutual funds, limited partnerships and real estate investment trusts. Consequently, this element is weak for the relevant services, namely home banking in Class 36, as it refers to a particular segment of the services, namely those involved in mutual funds, limited partnerships and real estate investment trusts. Therefore, the impact of this element is limited when assessing the degree of similarity between the marks.

The word ‘LINK, present in the contested sign, has already been defined above. This element is of an average degree of distinctiveness in relation to the relevant contested services.

The applicant argues that trade marks under comparison have different beginnings, which differentiate them. Although the beginning of a sign is generally more important in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity between the signs must take account of the overall impression produced by those signs.

As seen above, the word ‘SHARE’ of the contested sign has little impact on the public’s perception of the contested sign due to its limited degree of distinctiveness in relation to the relevant services, while the letters ‘LINK’, although not determining the overall impression conveyed by the contested sign, retain an independent and distinctive role within that sign.

The figurative device in the contested sign may be perceived by at least a part of the public as the mathematical symbol representing the concept of infinity. It has no meaning in relation to the relevant services and is, to that extent, of an average degree of distinctiveness. Nevertheless, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The same applies to the elements above the verbal element ‘ShareLink’ in the contested sign, which will be perceived as verbal elements written in a foreign language and will not be associated with any meaning. Consequently, the relevant consumer in the relevant territory will not be able to comprehend, read and pronounce these verbal elements and will not use them to refer to the sign.

Visually, the signs coincide in the letters ‘LINK’, which constitute the entire earlier trade mark and are included and identifiable as an independent element in the contested sign. They differ in the additional elements of the contested sign, namely the weak verbal element ‘Share’, the foreign characters and the figurative device, as well as in the overall stylisation of that sign, which have a limited impact in the sign for the reasons explained above.

Therefore, taking into account all the relevant factors and the differences in the overall structures of the marks, it is concluded that the signs are visually similar to only a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘LINK’, constituting the whole of the earlier mark and present identically in the conjoined verbal element ‘ShareLink’ of the contested sign. The pronunciation differs in the sound of the first word contained in that element of the contested sign, ‘SHARE’, which is, however, of limited distinctiveness and has a limited impact in the contested sign.

Consequently, the marks are aurally similar to an average degree on account of the distinctive verbal element ‘LINK’ that they have in common.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Consequently, there is a conceptual link between the signs on account of the coinciding element ‘LINK’. They differ in the additional concepts present in the contested sign, conveyed by the weak element ‘SHARE’ and by the figurative device, and the latter may be perceived by at least a part of the public as representing the infinity symbol.

Therefore, taking into account all the above, the marks are conceptually similar to an average degree on account of the distinctive verbal element ‘LINK’ that they have in common.

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

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has 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 20/05/2014. Therefore, the opponent was required to prove that the trade mark 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 services for which the opponent has claimed reputation and has demonstrated genuine use, namely the following:

Class 36:        Banking services for the dispensing of cash; funds transfer and payment services; financial information services.

In order to determine the mark’s 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.

The evidence submitted in support of the opponent’s claim has already been listed above, that is, as the first batch of documents of 17/04/2015, which was received within the time limit for substantiating the opposition, and consists of a witness statement and 12 exhibits.

On the basis of the documents submitted, the Opposition Division concludes that the earlier trade mark has a reputation in the United Kingdom for all of the services in Class 36 for which it is registered and for which use has been demonstrated.

Although the opponent has not provided direct quantitative evidence of market share or investments in promotional activities of the sign at issue, the numerous references in the documents to the scale of its activities and the well-known character of the network scheme ‘LINK’ give sufficient indirect indications of the awareness of the relevant consumers of the opponent’s trade mark in relation to certain financial services.

The documents demonstrate that the ‘LINK’ brand has a national impact in the United Kingdom, as reflected in the press cuttings referring to the opponent’s activities and the role of the ‘LINK’ network in the banking services in the United Kingdom. The documents demonstrate that the opponent’s company provides services under the mark ‘LINK’ of a national interbank network of ATMs operating in the United Kingdom, which connects virtually all ATMs in the country.

The majority of the evidence is formed of a variety of publications, press cuttings and printouts from various websites, which show that the earlier mark, ‘LINK’, has been subject to long-standing and intensive use in the United Kingdom in relation to financial transactions and banking services accessed through ATMs and that it is generally known in the relevant market. The press releases and publications in independent media give information about the opponent’s growing activities and the scale of such activities. Most articles refer to information about financial operations affecting institutions that are network members of the opponent’s network and their customers. It has been repeatedly stated that the ‘LINK’ network is the busiest shared ATM network, connecting millions of bank card holders and operating millions of transactions per month. It becomes clear that most of the UK’s largest bank institutions are members of the ‘LINK’ network. An article published in The Telegraph in 2009 clarifies that the ‘LINK’ network handled transactions for around 64 000 ATMs at that time, which equated to nearly every cash machine in the United Kingdom. Other publications give information about collaborations between the opponent and the UK Government in relation to charity donations through the ‘LINK’ ATM network or about collaborations involving the opponent’s investment and participation in the fight against cashpoint crimes. The supporting documents from independent banking institutions and building societies issued for their customers repeatedly mention the availability of cross-institutional ATM services of the ‘LINK’ network across the United Kingdom.

The financial figures and statistical data on transaction values by year provided by the opponent for 2002-2014 or extracted from its website refer to quite substantial volumes of cash transactions and are significant indications of the number of consumers that can be expected to have encountered the earlier sign. These figures are partly supported by the information in the press cuttings discussed above, which give independent information on the scale of the activities of the opponent’s network for certain years.

The evidence submitted demonstrates the particularly impressive duration and geographical extent (the whole territory of the United Kingdom, involving almost all cash machines in the country) of use of the opponent’s mark ‘LINK’. The documents suggest that the sign has become well known as a result of the continuous activities of the opponent and the extent of these activities. Moreover, although some of the documents submitted derive from the opponent itself, it should be noted that the opponent is a financial institution, subject to governmental control and regulation. Financial institutions and banks usually perform their activities under certain requirements, restrictions and guidelines from the government, designed to create market transparency between banking institutions and the individuals and corporations that they deal with. Consequently, they are not fully independent to freely pursue the protection of their private interests only. Therefore, the information and figures deriving directly from the opponent are publicly available and have been compiled for official purposes and can, therefore, be considered reliable and be given appropriate weight and probative value.

The data on the opponent’s growth and performance and the indications of the number of users of its services and the geographical extent and duration of its activities give some information about the steps undertaken by the opponent to build up a brand image and enhance trade mark awareness among the public. The opponent’s intensive and widespread activities are a strong indication that the mark has acquired a reputation among the consumers of the services in question. The effects of the opponent’s activities are reported in the survey carried out by the independent company BJM in December 2000, which clearly indicates a high degree of awareness (92% prompted trade mark recognition) of the opponent’s sign ‘LINK’ in relation to ATM and cash withdrawal services.

The abovementioned evidence indicates that the earlier trade mark has been used intensively and for a substantial period of time. The scope of the opponent’s activities suggests that the trade mark has a consolidated position in the market. Although some of the evidence, in particular the survey on trade mark recognition by the company BJM, is dated some time before the contested trade mark’s filing date, it contains relevant information and, furthermore, account must be taken of the fact that the reputation of a trade mark is, in general, acquired progressively. Changes in consumer habits and perceptions may take some time to happen, usually depending on the particular market involved. In the present case, the articles and publications give sufficient information about the opponent’s activities after 2000, when the opinion poll was carried out, and up to 2014, when the contested trade mark was applied for, and about the growing number of users and ‘LINK’ transactions each year, suggesting that the same level, or even higher levels, of investments and promotional activities were maintained by the opponent after the opinion poll was carried out.

Consequently, the numerous activities performed by the opponent in the financial field and its involvement with the latest developments and events related to financial transactions, as well as the total number of users and the long-standing partnership between the opponent and most of the UK’s national bank institutions, all suggest that the earlier mark is generally known in the relevant market.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation within the meaning of Article 8(5) EUTMR for all the relevant services in Class 36. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, it is likely that such a link will exist between the marks.

Firstly, as regards the degree of similarity between the signs required under Article 8(5) EUTMR, the Court has held that it differs from that required under Article 8(1)(b) EUTMR. Whereas the implementation of the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the implementation of the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 27, 29 and 31; and 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58 and 66).

In the present case, the signs are similar insofar as the earlier word mark, ‘LINK’, is included in its entirety as an independent and distinctive element in the contested sign. They differ in their structures and the additional elements of the contested sign. However, as seen above, the verbal elements of trade marks usually have a stronger impact on the consumer than the figurative components. Moreover, the additional verbal element of the contested sign is of limited distinctiveness in relation to the relevant services and, thus, has a limited impact in the overall impression created by the contested mark. An important factor that must also be taken into account when assessing the link between the marks at issue is the degree of distinctiveness of the earlier mark. The coinciding word ‘LINK’ is an English word, which is inherently distinctive for the services at issue because it is not related to them. Therefore, it is particularly relevant that the similarities between the signs lie in their distinctive verbal element ‘LINK’.

Secondly, the opponent’s sign, ‘LINK’, is, as demonstrated by the opponent, a well-known mark in the United Kingdom in relation to banking services related to financial transactions and the dispensing of cash and it is bound to be known to a substantial part of the public to which the abovementioned contested services are directed.

It is further to be noted that the establishment of a link, while triggered by similarity between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

The services for which the earlier mark has a reputation are the following:

Class 36:        Banking services for the dispensing of cash; funds transfer and payment services; financial information services.

The contested services are the following:

Class 36:        Home banking.

The applicant argues that the opponent’s services and the applicant’s services are provided through different distribution channels, namely, respectively, providing financial services related to ATMs and providing financial services that involve the use of telecommunication systems and equipment. The applicant argues that its services are intended for telecom operators.

In relation to the applicant’s arguments about the actual use in the market of the contested trade mark, it should be noted that the examination of an opposition on relative grounds for refusal carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the contested mark are actually marketed have, as a matter of principle, no impact on the assessment because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58). Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, it is the scope of protection of the contested sign at issue as applied for that is relevant.

In the present case, the contested services are home banking in Class 36. These are in essence electronic payment system services that enable customers of a bank or other financial institution to conduct a range of financial transactions through the financial institution’s website. While these services are not identical to the opponent’s services, they are closely related. As seen above, the opponent’s services are services enabling people to withdraw money from and deposit money into their bank account using machines that do not necessarily belong to the bank where they have their accounts. All of the services under comparison are financial and banking services that, in most cases, can be provided by the same undertakings through the same channels and which target the same relevant public.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent argues that the trade mark ‘LINK’ has acquired a high degree of recognition and reputation among the relevant consumers. According to the opponent, due to the link between the signs, the contested mark is likely to benefit from the goodwill and reputation of the earlier mark and will free-ride on the investment of the opponent in promoting it. Furthermore, it considers that, if the applicant uses its trade mark for identical or similar services, the distinctiveness of the earlier mark will be reduced, as will its ability to clearly identify the opponent’s products. The opponent also argues that further detriment could be found if the services offered by the applicant were of an inferior quality to those offered by the opponent, which could lead to tarnishing the reputation that the earlier mark enjoys in the United Kingdom.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

According to the opponent, if a financial service under a trade mark that is highly similar to the opponent’s trade mark is launched in the European Union, the contested sign is likely to benefit from the attractiveness of the earlier mark, since the advantage of the opponent’s existing marketing efforts and the prestige of the ‘LINK’ mark would be transferred to the applicant’s trade mark. The opponent points out that it has proven that it has used the ‘LINK’ trade mark significantly and that it has widely promoted the services offered under this mark. It considers that, as the applicant is new to the market, it would obtain a real economic advantage by free-riding on the opponent’s goodwill and reputation. The economic advantage gained by the applicant is likely to include more sales of its services without the need to spend money on heavily advertising and marketing its brand. The opponent considers that, as the trade marks are similar, the public is likely to become more easily aware of the applicant’s trade mark because of its association with the opponent’s earlier mark. According to the opponent, the connection between the signs provides the applicant with significant benefits that it would not otherwise have received had it chosen a dissimilar trade mark. The opponent considers it clear that the filing of the contested trade mark application is an effort by the applicant to trade based on the reputation of the opponent’s trade mark ‘LINK’. Consequently, it considers that the contested mark will gain an unfair advantage as a consequence of an association between the marks.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

As seen above, there is a link between the signs, since the marks are similar to a certain extent, the earlier trade mark has reputation and there is a clear relationship between banking services for the dispensing of cash; funds transfer and payment services, financial information services in Class 36, for which the earlier mark is reputed, and the contested home banking in Class 36. Considering the similarity between the signs, the distinctiveness and reputation of the earlier mark and the relationship between the services at issue, there is a high probability that the use of the mark applied for, for the services concerned, may lead to free-riding, that is to say, it would take unfair advantage of the established reputation of the earlier trade mark and the investments undertaken by the opponent to achieve that reputation.

For example, the services covered by the trade mark applied for could be more attractive to consumers than they otherwise would have been due to the reputation of the earlier mark and, therefore, the opponent’s reputation could facilitate the marketing of the abovementioned contested services, or the applicant may unfairly benefit from the reputation of the opponent’s mark. It seems inevitable that the image of the earlier mark associated with the national interbank network operating in the United Kingdom, connecting virtually all ATMs and the major players in the banking field in the country, and its reputation for banking services for the dispensing of cash; funds transfer and payment services; financial information services in Class 36, as shown in the submitted evidence, will be transferred to the aforementioned services of the applicant if they are marketed under the contested sign. In this way, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s mark in the minds of consumers.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark in relation to the contested services in Class 36. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested services.

Given that the opposition is entirely successful under Article 8(5) EUTMR on the basis of earlier European Union trade mark registration No 198 036, it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

COSTS

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

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Adriana VAN ROODEN

Boyana NAYDENOVA

Catherine MEDINA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.