OPPOSITION No B 2 762 147
La Banque Postale, 115 rue de Sèvres, 75275 Paris Cedex 06, France (opponent), represented by Marchais Associés, 4, avenue Hoche, 75008 Paris, France (professional representative)
a g a i n s t
Petro Corner, Ronda de Poninete 3, 28760 Tres Cantos, Spain (applicant).
On 14/06/2017, the Opposition Division takes the following
1. Opposition No B 2 762 147 is upheld for all the contested services, namely
Class 36: Provision of prepaid cards and tokens.
2. European Union trade mark application No 15 488 737 is rejected for all the contested services. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against some of the services of European Union trade mark application No 15 488 737. The opposition was initially filed against all the services in Classes 35 and 36 but later on limited only against all the services in Class 36. The opposition is based on French trade mark registration No 94 530 342. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The services
The opposition was initially based on services in Classes 35 and 36. However, the basis of the opposition was later on limited only to the following services in Class 36:
Class 36: Financial affairs; monetary affairs.
The contested services are the following:
Class 36: Provision of prepaid cards and tokens.
The contested provision of prepaid cards and tokens is included in the broad category of the opponent’s financial affairs. Therefore, they are identical.
- 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 are directed at the public at large. The degree of attention will be average.
- The signs
Earlier trade mark
The relevant territory is France.
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 elements ‘REALYS’ of the earlier mark and ‘RETALIS’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.
Visually, the signs coincide in five letters, namely ‘RE*AL*S’. However, they differ in the additional letter ‘T’ in the middle part of the contested sign and in the letter ‘Y’/’I’ near the end of the signs. Both marks have the same structure (one word) and a similar length (six letters as opposed to seven).
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘RE*ALIS’, present identically in both signs (given that ‘Y’ and ‘I’ produce essentially the same sound). The pronunciation differs only in the additional sound of the letter ‛T’ of the contested mark, which has no counterpart in the earlier sign.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The services have been found identical. The degree of distinctiveness of the earlier trade mark is average and the degree of attention of the relevant public is average as well.
The marks are visually similar to an average degree and aurally similar to a high degree. There is nothing to link or differentiate the marks conceptually. Both marks are composed predominantly of the same letters (sounds) placed essentially in the same positions. On the whole, the overall impressions created by the marks are clearly similar.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 94 530 342. It follows that the contested trade mark must be rejected for all the contested services.
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
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.