OPPOSITION DIVISION
OPPOSITION No B 2 730 193
2Pay Holding S.r.l., Via Riccardo Lombardi 14/4, 30020 Marcon (Venezia), Italy
(opponent), represented by De Gaspari Osgnach S.r.l., Via Oberdan 20, 35122
Padova, Italy (professional representative)
a g a i n s t
Le Holdings Ltd., a Cayman Islands company, Sertus Chambers, P.O. Box 2547,
Cassia Court, Camana Bay, Grand Cayman, Camana Bay, Cayman Islands,
(applicant), represented by Zivko Mijatovic & Partners, Avenida Fotógrafo
Francisco Cano 91A, 03540 Alicante, Spain (professional representative).
On 03/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 730 193 is partially upheld, namely for the following
contested goods and services:
Class 9: Smartphones; encoded magnetic cards; computer programmes
[programs], recorded; chips [integrated circuits]; computer software
applications, downloadable; television apparatus; navigational
instruments.
Class 36: Insurance consultancy; fund investments; providing financial
information via a web site; financing services; issue of tokens of
value; banking; brokerage; credit card services; debit card services;
electronic funds transfer.
2. European Union trade mark application No 15 138 274 is rejected for all the
above goods and services. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 138 274 for the figurative mark namely
against all the goods and services in Classes 9 and 36. The opposition is based on
European Union trade mark registration No 14 171 839 for the word mark ‘EQUOpay’
in relation to which the opponent invoked Article 8(1)(b) EUTMR.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
Decision on Opposition No B 2 730 193 page: 2 of 10
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Software; application software; computer operating programs; interfaces
for computers; network access server operating software; operating
computer software for main frame computers; computer software for
analysing market information; computer software for use in computer
access control; computer software for controlling and managing access
server applications; software for online messaging; computer software for
communicating with users of hand-held computers; electronic payment
terminal; software for commerce over a global communications network;
computer programmes for data processing; computer e-commerce
software.
Class 36: Automated payment services; electronic payment services; remote
payment services; electronic wallet services (payment services); financial
transfers and transactions, and payment services; information services
relating to the automated payment of accounts; bank card, credit card,
debit card and electronic payment card services; providing multiple
payment options by means of customer-operated electronic terminals
available on-site in retail stores; collection of payments; processing
payments made by charge cards; credit card payment processing;
processing electronic payments made through prepaid cards; collection
of credit sales; electronic funds transfer; money transfer services utilising
electronic cards.
The contested goods and services are the following:
Class 9: Smartphones; encoded magnetic cards; computer programmes
[programs], recorded; chips [integrated circuits]; computer software
applications, downloadable; television apparatus; batteries, electric;
headphones; compact disc; navigational instruments.
Class 36: Insurance consultancy; fund investments; providing financial information
via a web site; financing services; issue of tokens of value; banking;
brokerage; credit card services; debit card services; electronic funds
transfer.
Decision on Opposition No B 2 730 193 page: 3 of 10
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Contested goods in Class 9
The contested computer programmes [programs], recorded; computer software
applications, downloadable are both by their nature computer programs, i.e.
a collection of instructions that performs a specific task when executed by
a computer. The first ones are recorded (e.g. maintained on a memory device), while
the second ones can be downloaded on a device. The opponent’s software is
composed of programs, routines, and symbolic languages that control the functioning
of the hardware and direct its operation. The opponent’s software is a broader
category which covers all of the above contested goods, thus these goods are
considered identical.
The contested smartphones are handheld devices with a mobile operating system
that combines computing, telephone/fax, Internet and networking features. They use
software in order to operate, but more importantly, they also allow users to download,
install and utilise other software (application software also known as ‘an app’). The
contested television apparatus are any kind of device which displays pictures and
plays sound. This broad category covers also smart TVs or TV sets which,
additionally to their main function, allow consumers to download, install and use
applications in order to increase the functionality of the product and/or enhance user
experience. The contested navigational instruments are instruments whose purpose
of navigation is to ascertain position and to determine the speed, and/or direction to
arrive at the port or point of destination. These instruments include GPS devices
which function in a manner similar to computers or tablet computers and allow its
users to install software of navigational or supplementary purpose. In this sense, the
Opposition Division finds the contested smartphones, television apparatus and
navigational instruments similar to the opponent’s software. The latter is important for
use of the former, as use of application software increases the functionality of the
product. Therefore these goods are complementary to each other. They may be
found in similar channels of distribution and have similar relevant public. Also, the
usual origin of these goods is similar because manufacturers of smartphones, smart
TV and navigational instruments often design and offer their own software for these
or similar products.
The contested encoded magnetic cards are data storage media with the
characteristic of being both encoded and magnetic, e.g. encoded magnetic banking
cards issued to users of banking services. The opponent’s electronic payment
terminal is an electronic device which interfaces with payment cards to make
electronic funds transfers. These goods are considered similar as they have a similar
intended purpose, namely to allow electronic funds transfer. Also the methods of use
are similar and they are complementary to each other, because use of one is
indispensable or, at very least, important for use of the other.
Regarding the contested chips [integrated circuits], these goods are electronic
circuits formed on a small piece of semiconducting material, performing the same
function as a larger circuit made from discrete components. The mere fact that these
goods may be destined to be used and/or mounted in the opponent’s electronic
payment terminal – as argued by the opponent – is not sufficient to render them
similar to the latter. Also, the intended purpose of these goods is very different. The
main purpose of the opponent’s chips [integrated circuits] is to perform particular,
Decision on Opposition No B 2 730 193 page: 4 of 10
high-level tasks, while the main purpose of the opponent’s electronic payment
terminal is to make electronic funds transfers. These goods normally have different
method of use, channels of distribution, relevant public and also the usual origin.
They are thus dissimilar.
The contested chips [integrated circuits] are also dissimilar to all the other earlier
goods in Class 9 consisting mainly of software and programs as well as to the
services in Class 36 consisting of financial services. They all have a very different
nature, method of use, they are neither complementary nor in competition with each
other and the usual origin of these goods and services is different.
As regards the remaining contested goods in Class 9, the contested batteries,
electric are containers consisting of one or more cells, in which chemical energy is
converted into electricity and used as a source of power. The contested headphones
are devices consisting of a pair of earphones joined by a band placed over the head,
for listening to audio signals such as music or speech. The contested compact discs
or CDs are digital optical discs on which data such as music, text, or graphic images
can be digitally encoded. These goods are clearly dissimilar to the opponent’s goods
in Class 9 consisting mainly of software and programs of general or specific purpose.
They have different nature (hardware or peripherals versus software), intended
purpose, channels of distribution and usual origin. In particular, the contested
compact disc are not considered similar to the content stored on it, e.g. like the
opponent’s software. Likewise, the fact that headphones may be used to listen to the
sounds produced by or incorporated in the software is not sufficient to render these
goods similar. They are also not similar to the opponent’s electronic payment
terminal as they have different intended purpose, method of use and usual origin.
They are neither in competition or complementary to each other. The mere fact that
electronic payment terminal may use batteries, electric does not render these goods
similar.
Likewise, the above goods are dissimilar to the opponent’s financial and payment
services in Class 36. They have different nature (goods versus services), serve
completely different purpose as well as have different relevant public and usual
origin.
Contested services in Class 36
The contested services electronic funds transfer are identically contained in both lists
of the trade marks in comparison. These services are thus identical.
The contested financing services include inter alia the opponent’s financial transfers
and transactions, and payment services. The contested services clearly constitute
a broader category which covers also the opponent’s services. Since the Opposition
Division cannot dissect ex officio the broad category of the contested services, all of
the above contested services are considered identical to the opponent’s services.
Likewise, the contested banking includes inter alia the opponent’s bank card, credit
card, debit card and electronic payment card services; processing payments made
by charge cards; credit card payment processing; processing electronic payments
made through prepaid cards. Since the contested services constitute a broader
category which covers the opponent’s services, these services are considered
identical.
Decision on Opposition No B 2 730 193 page: 5 of 10
The contested credit card services; debit card services, despite a somewhat different
wording, are identical to the opponent’s bank card, credit card, debit card and
electronic payment card services.
The contested services providing financial information via a web site overlap with the
opponent’s information services relating to the automated payment of accounts.
These services are thus considered to be identical.
The contested services fund investments are a way of investing money alongside
other investors in order to benefit from the advantages of working as part of a group.
The individual investors supply capital in order to purchase securities collectively
while each investor retains ownership and control of his own shares. The opponent´s
broad category of financial transactions covers, in general terms, events involving
money or payment, such as the act of depositing money into a bank account,
borrowing money from a lender, or buying or selling goods or property. Acquiring an
investment fund´s shares in exchange for money is considered a financial
transaction. There is, thus, an overlap between the contested fund investments
services and the opponent´s financial transfers and transactions, which renders the
both services identical.
The contested insurance consultancy forms part of insurance services. The
contested services have a similar nature to financial services, including the
opponent’s financial transfers and transactions, and payment services. In that regard,
firstly, insurance companies are subject to, in relation to licensing, supervision and
solvency, rules similar to those of financial institutions. Both services are often offered
in combination with each other, in fact, many financial institutions offer insurance
services together with, or as an addition to, their main services, e.g. insurance of
payments made by credit card. These services also coincide in distribution channels
and target similar relevant public. Further, they may be provided by the same
undertaking or related undertakings. Additionally, it is not unusual to see a financial
institution and an insurance company in the same economic group. It follows that
these services are considered similar.
The contested issue of tokens of value refers to issuance of objects whose value
exceeds its cost of production and which can be exchanged at a value rate
independent from its commodity value. The opponent´s financial transactions
services cover agreements between buyer and seller regarding any assets that can
be traded. Tokens of value may be objects of financial transactions. The services in
comparison have a similar nature, both being financial services. They may have
similar distribution channels as well as the relevant public. These services are
therefore considered at least similar to each other.
The contested brokerage refers to services which are offered by of a broker. They
involve arrangement of transactions between a buyer and a seller for a commission
when the deal is executed, especially in the field of buying and selling of stocks or
other securities. In that sense the contested services have similar nature to the
opponent´s financial transfers and transactions, they have similar distribution
channels as well as target similar relevant public. Also, they often appear in
combination with each other. These services are therefore considered at least similar
to each other.
b) 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
Decision on Opposition No B 2 730 193 page: 6 of 10
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar are
primarily targeted at a professional public, who will have a heightened level of
attention when purchasing or contracting them. For the general public, who may also
be the addressee of, at least, some of the goods in Class 9, such as ‘computer
programmes’ or ‘encoded magnetic cards’ and some of the services in Class 36, for
example, ‘credit card services’, the level of attention will also be enhanced, as these
goods and services are not purchased or contracted on a regular basis and/or their
price might be relatively high. To this extent, it should be pointed out that, since such
services are specialised services that may have important financial consequences for
their users, the consumers’ level of attention would be high when choosing them
(03/02/2011, R 0719/2010-1, f@ir Credit, § 15; appeal dismissed in judgment of
19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444; appeal dismissed in judgment of
14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874).
Other goods in Class 9, namely, smartphones; television apparatus; navigational
instruments are addressed at the public at large whose degree of attention may vary
from average to high, depending on the specialised nature of the goods, the
frequency of purchase and their price.
c) The signs
EQUOpay
Earlier trade mark Contested sign
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the application.
Not all of the elements of the signs in comparison would be understood in all parts of
the European Union. Part of the relevant public which speaks Slavic languages, e.g.
the relevant public in Poland, Czech Republic and Slovakia, will not understand the
meaning of the word ‘EQUO’ of the earlier sign. This, in turn, will influence their
perception of the two signs in comparison and the assessment of the likelihood of
confusion. The Opposition Division finds it appropriate to focus the comparison of the
signs on the part of the relevant public that speaks Slavic languages.
Decision on Opposition No B 2 730 193 page: 7 of 10
The Opposition Division will comment on the distinctiveness of the word ‘PAY’, which
coincides in both of the signs in comparison in relation to the goods and services in
Classes 9 and 36.
The word ‘PAY’ is a very basic English term meaning ‘to give money or other
compensation in exchange for goods or services’. It is widely used and commonly
understood in the field of financial services, in particular with regard to card and
electronic payment services. In other words, it is not a random English term with no
connection to the specific services or which is never or rarely used in their marketing,
but on the contrary, it is one of the core terms and ubiquitous in the area of payment
services. As far as the services are directed at financial experts it can be assumed
that those specialists in the financial market will understand the meaning of the
English term ‘pay’. However, also the general public for financial products and
services will understand that the word ‘pay’ refers directly to the kind of services in
Class 36. This simple expression may be understood throughout the European
Union, including the non-English-speaking Member States (28/01/2015, T-123/14,
AquaPerfect, EU:T:2015:52, § 36; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444,
§ 40; 27/06/2013, T-367/12, MOL Blue Card, EU:T:2013:336, § 42).
The same must be considered true in relation to the payment related goods in Class
9, namely the earlier electronic payment terminal and the contested encoded
magnetic cards.
Consequently, the word ‘PAY’ is, at most, very lowly distinctive in relation to the
earlier goods in Class 9 connected with payments and processing thereof and the
payment services in Class 36 as well as in relation the contested encoded magnetic
cards in Class 9 and the contested services in Class 36.
On the other hand, the contested trade mark covers also smartphones; television
apparatus; navigational instruments and computer programs in Class 9 and the
earlier trade mark covers also various types of software in Class 9. There is no direct
link between the meaning of the word ‘PAY’ and those goods. Accordingly, the
common element ‘PAY’ of the conflicting signs enjoys normal distinctiveness for these
goods.
It has to be recalled that the average consumer normally perceives a mark as
a whole and does not proceed to analyse its various details (11/11/1997, C-251/95,
Sabel, EU:C:1997:528, § 23, and 22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 25). On the other hand, the Court has also held that the consumer,
when perceiving a word sign, will break it down into word elements which, for him or
her, have a concrete meaning or which resemble words known to him/her
(11/11/2009, T-277/08, Citracal, EU:T:2009:433, § 55).
The earlier sign is composed of combination of two words ‘EQUO‘ and ‘PAY’ written
together. As noted above, the word ‘EQUO’ would be considered meaningless by the
relevant public and is thus considered distinctive.
The contested sign is a figurative one which is composed of two three-
letter words, namely ‘ECO’ and ‘PAY’. Both have the structure where the first letter is
written in upper case characters and the remaining ones are written in lower case
characters. Despite being of a figurative nature, the sign is written in a very simple
typeface.
The word ‘ECO’ is a simple English word that would be understood throughout the
European Union, and in particular in the relevant territory as defined above, as an
Decision on Opposition No B 2 730 193 page: 8 of 10
abbreviation of ‘economic’ or ‘ecologic’. It is widely used in commerce in this territory
in both of the above meanings. Therefore Slavic speakers may understand the whole
sign ‘ECO PAY’ as alluding to ‘economic payments’ or ‘ecologic payments’. However,
although allusive, the distinctiveness of the expression as a whole is not called into
question.
Visually, the signs coincide in letters ‘E*O’ and ‘PAY’, which form five out of six
letters of the contested sign and are in the same position in both signs. They differ in
the letters ‘QU’ and ‘C’ as well as the fact that the earlier sign is one letter longer and
composed of just one word, while the contested sign is composed of two words. The
differing middle sections of the signs, namely the letters ‘QU’ and ‘C’, do not have
sufficient impact to outweigh the identical beginnings and endings. The stylisation of
the contested sign is banal and cannot influence the above comparison.
Consequently, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincide in the sound of the letters ‘E*O’ and
‘PAY’. The signs have the same number of syllables as well as the same rhythm and
intonation. Also the vowel sequence is identical. The pronunciation differs in the
sound of the letters ‘QU’ and ‘C’, however this difference is only minor. As noted
earlier, the part of the relevant public will understand the word ‘ECO’ and will
pronounce it as ‘EKO’, which is very close to ‘EQUO’.
Therefore, the signs are aurally similar to a high degree.
Conceptually, the relevant public will understand the word ‘PAY’ which is
incorporated identically in both signs. This similarity cannot be overemphasised,
however, in relation to the contested goods encoded magnetic cards in Class 9 as
well as all of the contested services in Class 36 for which the word ‘PAY’ has at most
a very low distinctiveness.
Therefore, the signs are conceptually similar to a low degree. The similarity is
considered slightly higher in relation to the remaining goods in Class 9 in relation to
which word ‘PAY’ does not have any meaning.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods and services in question from the perspective of the
public in the relevant territory. Therefore, the distinctiveness of the earlier mark must
be seen as normal, despite the presence of a weak element in the mark, as stated
above in section c) of this decision.
Consequently, the distinctiveness of the earlier mark as a whole is average.
Decision on Opposition No B 2 730 193 page: 9 of 10
e) 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. 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).
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, 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). Account is taken of the
fact that average consumers rarely have the chance to make a direct comparison
between different marks, but must trust in their imperfect recollection of them
(22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Having said that, it
must be stressed that even consumers who pay a high degree of attention need to
rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel,
EU:T:2013:605, § 54).
The goods and services have been found partially identical, partially similar and
partially dissimilar.
The earlier mark, as a whole, has an average degree of distinctiveness. The signs
are visually similar to an average degree whereas aurally the signs are similar to
a high degree. From the conceptual perspective, the signs are similar to a low
degree. The degree of similarity is slightly higher with the goods in Class 9 in relation
to which ‘PAY’ does not have any meaning. The relevant public is the public at large
and/or the professional public whose level of attention is enhanced, but also public at
large with level of attention varying from average to high.
A coincidence in an element with a low degree of distinctiveness will not normally on
its own lead to likelihood of confusion. However, there may be likelihood of confusion
if the other components are of insignificant visual impact and the overall impression
of the marks is similar. There may also be a likelihood of confusion if the overall
impression of the marks is highly similar or identical. In the present case, the element
‘PAY’ has been found, at most, lowly distinctive for part of the contested goods in
Class 9 and all the contested services in Class 36. However, the signs coincide not
only in this weak element located at the end (which is identical in both signs), but
also in the beginning of the signs (letters ‘E*O’ which are considered similar).
Moreover, the differences in the letters ‘QU’ and ‘C’ are located in the middle sections
of both signs, which are more likely to be overlooked. At the same time, the differing
letters will be pronounced in a highly similar manner by the relevant public. All in all,
the overall impression of the two marks is similar. This impression of similarity would
be even stronger for goods in Class 9 in relation to which the word ‘PAY’ does not
have any meaning.
Bearing in mind the above factors, the Opposition Division concludes that there is
a likelihood of confusion for the relevant public with high level of attention (both
professional and public at large with enhanced level of attention). Even the highly
attentive public might be led to believe that the relevant goods and services come
from the same or economically linked undertakings. The same outcome applies, all
Decision on Opposition No B 2 730 193 page: 10 of 10
the more, with regard to the public at large with average level of attention as this
public is likely to be confused even more easily.
Considering all the above, there is a likelihood of confusion on the part of the Slavic-
speaking part of the public and therefore the opposition is partly well founded on the
basis of the opponent’s European Union trade mark registration No 14 171 839. As
stated above in section c) of this decision, a likelihood of confusion for only part of
the relevant public of the European Union is sufficient to reject the contested
application. It follows that the contested trade mark must be rejected for all the
contested goods and services found to be identical or similar to those of the earlier
trade mark.
The opposition is not successful insofar as the goods that are dissimilar are
concerned, namely part of the goods in Class 9. As similarity of goods and services
is a necessary condition for the application of Article 8(1) EUTMR, the opposition
based on this article and directed at these goods cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Torben Engholm
KRISTENSEN
Jakub MROZOWSKI Lucinda CARNEY
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.