OPPOSITION No B 2 481 458

Nb Seguros – Mediação De Seguros, Lda, Rua Elias Garcia, Nº 45 – C, 1000 148 Lisbon, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)

a g a i n s t

Novo Banco S.A., Avenida da Liberdade no. 195, 1250 Lisbon, Portugal, (applicant), represented by Garrigues IP Unipessoal Lda, Avenida da República, 25 – 1º, 1050-186 Lisbon, Portugal (professional representative).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 481 458 is partially upheld, namely for the following contested services:

Class 36: Banking; Finance services; Banking and financing services; Credit and cash card services; Issuance of credit cards; Issuance of credit and debit cards; Bank card, credit card, debit card and electronic payment card services; Credit card and debit card services; Banking insurance; Insurance brokerage; Insurance underwriting services; Card services.

2.        European Union trade mark application No 13 386 784 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application (EUTM) No 13 386 784, namely those in Classes 35 and 36. The opposition is based on EUTM No 13 342 464. The opponent invoked Article 8(1)(b) EUTMR in the notice of opposition and accompanying writ.

It is true, that in the writ accompanying the notice of opposition, the opponent refers to Article 8(4) EUTMR and also refers to Article 239(2)(a) of the Portuguese Industrial Property Code concerning trade names and company names. However, in this writ the opponent mixes both grounds and, whether or not the opponent wished to expressly invoke Article 8(4) EUTMR is not entirely clear.

In any event, the Opposition Division notes that the opponent did not fulfil the requirements of Article 8(4) EUTMR as it did not submit any evidence whatsoever of use of its mark in the course of trade of more than mere local significance. Moreover, although the opponent referred to the provision noted above it did not submit the actual text in Portuguese, the original language of the law.

Rule 19(2)(d) EUTMIR provides that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent shall provide evidence of its acquisition, continued existence and scope of protection.

In view of the foregoing and for the sake of completeness, even if the opponent had wished to rely on the ground of Article 8(4) EUTMR, failure to fulfil the conditions as referred to above would have led to the opposition being rejected anyway. Consequently, it is not necessary to enter into further detail on this point.

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: Insurance

The contested services are the following:

Class 35: Commercial information agencies; Business analysis of markets; Business management; Business administration.

Class 36: Banking; Finance services; Banking and financing services; Credit and cash card services; Issuance of credit cards; Issuance of credit and debit cards; Bank card, credit card, debit card and electronic payment card services; Credit card and debit card services; Banking insurance; Insurance brokerage; Insurance underwriting services; Card services.

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

Contested services in Class 35

The contested business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Examples of these services include the contested business analysis of markets, and to a certain extent, the contested commercial information agencies. Notwithstanding the fact that the latter is rather vague, it still relates to the provision of business information. The contested business administration help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia employment agencies, auditors and outsourcing companies.

The earlier, insurance services consist of accepting liability for certain risks and respective losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingency occurs, such as death, accident, sickness, breaking of a contract and, in general, any event capable of causing damages.

It is patent, from the definitions given above, that the nature and purpose of these activities do not match. None of these services coincide in any relevant points of contact as their producers, consumers and distribution channels differ. Furthermore, they do not share a complementary nature, nor are they in competition with one another. Consequently, they are dissimilar.

Contested services in Class 36

The contested banking insurance; Insurance brokerage; Insurance underwriting services are included in the broader insurance from the earlier right and are identical.

The contested card services is a broad term that includes various activities such as specific insurance for credit or debit cards in the event that they are stolen or used in a fraudulent manner. To the extent that the earlier insurance services also include insurance services for cards, they are identical. The contested credit and cash card services; Bank card, credit card, debit card and electronic payment card services; Credit card and debit card services relate to the aforementioned card services, even if specific kinds of cards are referred to, and as such the same assertions and conclusion is also applicable.  

The contested banking; banking services consist of the provision of all those services carried out for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business.

Reference is made to the previous definition of insurance services and it should also be considered that insurance companies are subject to rules similar to those of a financial institution, at least in relation to licensing, supervision and solvency.  Therefore, although insurance services and banking services have a different purpose, they have a similar nature, may be provided by the same undertaking or related undertakings and share the same distribution channels. These circumstances show that insurance services are similar to banking; banking services. This outcome and these considerations are also relevant as concerns the contested finance and financing services.  

The contested issuance of credit cards; issuance of credit and debit cards concern a variety of services from the design and promotion of such cards to getting people to sign up for them as well as managing the account including any liabilities surrounding debt payment as well as the capital required to fund loans to cardholders, finance payment terminals and route payments between entities. Bearing in mind the previous description of insurance, the services are similar, given that they may well derive from the same undertakings and share the same distribution channels. Further they have a similar nature.

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, the services found to be identical or similar are directed at the public at large which includes professionals.

The degree of attention may vary from average to high given that in the case of insurance services, for example, the cost and consequences may be high.

3. The signs

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 common element of the signs ‘NB’ will most probably be perceived as an acronym, of which the possible definitions are infinite, such as ‘Nota Bene’ (a Latin term indicating that something is to be noted well), ‘Notebook’, ‘Newborn’ and so forth. Amongst the various possibilities, there is nothing related to the relevant services. The opponent argues that ‘NB’ is its company name. However, it cannot be held that consumers will perceive this, particularly given that there is not a full reference to the name in the sign, thus this has no bearing on the case. Aside from this, neither of the parties has adduced any arguments in this regard. As such this element is distinctive. Additionally, it is the most visually outstanding element in both cases.

At least Spanish and Portuguese speakers will understand ‘seguros’ as ‘insurance’ and it is descriptive for these services. For others it will be meaningless. However, even in this distinctive scenario, this element loses weight as it is depicted in a secondary position at the bottom of the sign and in smaller writing thus reducing its impact.

The figurative elements of the signs such as the colouring, red ribbon-like border and the device will be perceived as less distinctive decorative elements.  

Visually, the signs coincide in ‘NB’ and differ in the aforementioned figurative elements as well as ‘SEGUROS’. Taking into account the previous considerations the signs are similar to a high degree. 

Aurally, the pronunciation is identical as concerns ‘NB’ and only differs in ‘SEGUROS’. However, its secondary positioning and, for some, descriptive nature, make it less prone to be referred to. In view of the foregoing, the signs are similar to a high degree.

Conceptually, given that ‘seguros’ will either not be understood or recognised as non-distinctive and as such plays a reduced role, the signs are similar to a high degree on account of the identical acronym.

In view of the foregoing, the examination 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 services are dissimilar, similar and identical and are aimed at the public at large including professionals and the degree of attention may range from average to high.

The comparison of signs illustrates the similarities between them and the divergences reside in secondary/non-distinctive or less distinctive aspects that are not sufficient to distance the marks.

It should be borne in mind that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the services covered are from the same or economically linked undertakings. In this regard, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub brand, a variation of the earlier mark, configured in a different way according to the type of services which it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). Consequently, there is a patent risk that the marks will be confused.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and it follows that the contested trade mark must be rejected for the services found to be identical and similar to those of the earlier trade mark.

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

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

The Opposition Division

Martin MITURA

Vanessa PAGE

Lucinda CARNEY

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.