OPPOSITION No B 2 685 868

Banco Bilbao Vizcaya Argentaria S.A., Plaza de San Nicolás, 4, 48005 Bilbao (Vizcaya), Spain (opponent), represented by Baker & McKenzie, Paseo de la Castellana, 92, 28046 Madrid, Spain (professional representative)

a g a i n s t

Oney Bank S.A., 40, Avenue de Flandre, 59170 Croix, France (applicant), represented by T Mark Conseils, 9 Avenue Percier, 75008 Paris, France (professional representative).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 685 868 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 085 889 for the word mark ‘AUTOMATRIC’, namely against all the services in Class 36. The opposition is based on Spanish trade mark registration No 3 534 367 for the word mark ‘AUTOMIK’. 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.

1. The services

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

Class 36:        Financing services for all types of vehicles and applicable to mobility services; insurance services for any type of vehicle and mobility-related services; capital lease services for any type of vehicles and mobility services.

The contested services are the following:

Class 36:        Insurance; various risk insurance services; financial affairs, banking and monetary affairs; financing and loan services; electronic payment services; services relating to bank, credit, debit and payment cards and other cards or cheques providing financial advantages; online banking accessible via the internet and telecommunications networks of all kinds, including via mobile phone; issuing of gift cards and gift tokens; issuing of discount coupons; issuance of travelers' checks; insurance and financial consultancy; financial sponsorship; organisation of payment for the providing of gift items and all kinds of goods or services through the issuing, distribution and exchanging of gift vouchers, tickets, cheques, coupons, stubs, prepaid cards or credit cards or any other payment method, in particular by computer networks or by telephone; secure payment and financing provided via a telephone or a computer terminal; payment by means of biometric authentication; financial services relating to the possession of loyalty cards or payment cards; loyalty card payment services; financial services relating to the holding of promotional loyalty coupons; services relating to payment by promotional loyalty coupons; issuing and financial management of means of payment, in particular purchasing vouchers; sales promotion for others, through the issuing of loyalty cards or payment cards enabling points to be accumulated through purchases and enabling gift vouchers, promotional offers and gift items to be received.

Some of the contested services are identical to services on which the opposition is based. For instance, the contested insurance and financing services include, as broader categories, the opponent’s insurance services for any type of vehicle and mobility-related services and financing services for all types of vehicles and applicable to mobility services. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, most of the services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. Some services target only a professional public, for example sales promotion for others, through the issuing of loyalty cards or payment cards enabling points to be accumulated through purchases and enabling gift vouchers, promotional offers and gift items to be received.

The degree of attention of the professional public may vary from average to high depending on the price, sophistication, specialised nature, or terms and conditions of the purchased services. For the public at large, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010-1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

3. The signs

AUTOMIK	AUTOMATRIC
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both signs are word marks. The earlier mark is composed of the word ‘AUTOMIK’ and the contested sign is composed of the word ‘AUTOMATRIC’.

Although both marks consist of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). In this case, the element ‘AUTO’ will be recognised by the relevant public, due to its meaning, and also because it is at the beginning of each sign, since this prefix is widely used to form nouns and verbs.

The element ‘AUTO’ can have various meanings for the Spanish public. It might be perceived as a short form of the word ‘automobile’ (i.e. car) or of the word ‘automatic’ or as the prefix meaning ‘self; by oneself’. Regardless of the meaning that the public attributes to the word ‘AUTO’, bearing in mind that the relevant services consist mainly of financing and insurance services, the element is considered to have a weak distinctive character for such services, as it may be perceived as a reference to their nature or subject matter. It suggests, for example, that the relevant insurance/financing services relate to cars or is suggestive of the way in which the services are performed (e.g. immediately or through self-service). Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The additional elements, ‘MIK’ and ‘MATRIC’, present in the earlier mark and the contested sign have no meaning for the relevant public; therefore, they are the most distinctive verbal elements of the signs.

As regards the contested sign, it cannot be excluded that the relevant public may perceive the contested sign as a whole, without splitting it into two elements (AUTO-MATRIC). In this scenario, the consumers will perceive this element as a variation or misspelling of the Spanish word ‘automático’, equivalent to the English ‘automatic’. Therefore, as it is suggestive of the characteristics of the relevant services (i.e. that they are performed or can be used automatically, that is, without continual human intervention), this element is considered weak for this part of the public.

The analysis below will be undertaken considering the part of the public that will dissect the contested sign into two elements, ‘AUTO’ and ‘MATRIC’, since the element ‘MATRIC’ has distinctive character and this part of the relevant public seems most prone to confusion in this case. This is the best-case scenario for the opponent.

Visually, the signs coincide in the string of letters ‘AUTOM’ and in their penultimate letter (‘I’). However, they differ in the string of letters ‘ATR’, present in the contested sign, which has no counterpart in the earlier sign, and also in their last letters (‘K’ in the earlier mark versus ‘C’ in the contested sign). Furthermore, the signs differ in their length (seven letters versus ten letters).

The main similarity between the signs essentially lies in the weak element ‘AUTO’, which the signs have in common. However, as stated above, this element has less impact on the overall impression created by the signs, and the relevant public will pay more attention to the distinctive elements, ‘MIK’ and ‘MATRIC’, which, despite having some letters in common, have a limited degree of similarity. In view of the foregoing, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛AUTOM***IK’, since the last letters of the signs, ‘K’ and ‘C’, will be pronounced in the same way (i.e. like the letter ‘K’ in English). The pronunciation differs in the sound of the letters ‘*****ATR**’. The signs also differ in their numbers of syllables (AU-TO-MIK versus AU-TO-MA-TRIC), which means that they have different rhythms and intonations.

Since the same reasoning as regards the weak elements applies here, the signs are aurally similar to a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘AUTO’, included in both signs, will be associated with the meanings given above. However, this similarity must be seen in the context of the limited distinctive character and significance of this component of the marks. Therefore, the signs are conceptually similar to a low degree.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The relevant services are assumed to be identical. They target the public at large and business customers, and the degree of attention is considered to vary from average to high for the reasons given in section b) of the present decision. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually and aurally similar to a low degree. In spite of the commonality in the element ‘AUTO’, the impact of this element on the overall impression created by the signs is very limited because it is weak for the relevant services. The limited distinctive character of this element also affects the degree of the conceptual similarity found, which is considered low. The differences observed, namely the differing letters, lengths and numbers of syllables, and rhythms and intonations of the marks, are sufficient to outweigh the similarities between the signs. Therefore, and taking into account that the degree of attention of the relevant public will vary from average to high, there is no risk that relevant consumers will be misled or believe that the services assumed to be identical come from the same undertaking or from economically-linked undertakings.

In its observations of 10/10/2016, the opponent refers to the principle of interdependence, whereby a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. The previous decisions referred to by the opponent are not relevant to the present proceedings, since they refer to cases where the interdependence principle was decisive for a finding of likelihood of confusion. The Opposition Division has, indeed, taken this principle into account when assessing the likelihood of confusion; nonetheless, in the present case the differences between the marks are clearly perceptible and cannot be overcome by the (assumed) identity of the relevant services.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the contested sign is not broken down into two elements but perceived as a whole. For this part of the public, the entire word is weak and the public will perceive the signs as being even less similar. Furthermore, from the conceptual point of view, if the element ‘AUTO’ of earlier mark is perceived as referring to ‘automobile’ or as meaning ‘self; by oneself’, the signs will convey dissimilar concepts, since the contested sign will be perceived as meaning ‘automatic’.

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

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

The Opposition Division

Orsola LAMBERTI

Birgit FLITENBORG

Andrea VALISA

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.