bonusway | Decision 2724477
Date Published: Sep 25, 2017
OPPOSITION No B 2 724 477
Türkiye Garanti BankasI Anonim Sirketi, Levent Nispetiye Mahallesi, Aytar Caddesi No. 2 Besiktas, Istanbul 34340 Turkey (opponent), represented by Curell Suñol S.L.P.,Via Augusta 21, 08006 Barcelona, Spain (professional representative)
a g a i n s t
Suomen Ostohyvitys Oy, Aleksanterinkatu 15 B 6. Krs, 00100 Helsinki, Finland (applicant), represented by Papula Oy, Mechelininkatu 1 a, 00180 Helsinki, Finland (professional representative).
On 11/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 724 477 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 269 269. The opposition is based on international trade mark registration No 931 921 designating the European Union. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Apparatus and instruments used for measuring, weighing and evaluation in the field of science, laboratory, navigation, topography, meteorology, electricity, photography, cinematography; equipment testing apparatus and instruments; barometers, ammeters, gas testing instruments, slide calipers, hygrometers, thermometers, voltmeters, microscopes, magnifying glass (optic), telescopes, periscopes; equipments used in laboratory; test tubes, measuring tubes; furnaces for laboratory experiments, furniture especially made for laboratories; illuminated advertisement boards, scoreboards, electric notice boards; instruments for recording, transmission or reproduction of sound or image (except communication instruments); radios, televisions, videos, cameras, audio apparatus and instruments, amusement apparatus adapted for use with television receivers only, cinematographic instruments, remote control machines, headphones, loudspeakers, megaphones, intercommunication apparatus, picture and slide projectors; data processing equipments; computers, computer software and hardware, printers for use with computers, laser printers for use with computers, scanners, cash registers, calculating machines, bar code readers, part and fittings for aforesaid goods, navigation apparatus for vehicles (on-board computers); magnetic and optic data carriers; cassettes, magnetic disks, floppy disks, CDs, films exposed; all kinds of cameras (photography), parts and accessory of cameras, enlarging apparatus (photography); films (cinematography and photography), X-ray films; antennas, satellite antennas, amplifiers and parts there of; electric apparatus for remote ignition; mechanisms for coin, card and token operated apparatus; automatic vending machines, coin operated photography machines, ticket automats, weighing automats, automatic money withdraw machines; electronic components for machines and instruments; conductors, electronic circuits, integrated chips, photocell, diodes, transistors, circuit cards, crystal oscillators, condensers (capacitors), interface circuits, relays, liquid crystal displays, hybrid circuits, thermistor, converters, magnetic heads, magnetic deviators; communication machines; telephones, facsimile machines, telex machine, telegraph machines, wireless switchboards; electric machines for copying and reproduction; photocopiers, blueprint machines; counters; counters for water and electricity, gasometers, gasoline pumps for service stations, parking meters, timers, egg timers (sand glass); electronic and magnetic cards; telephone cards, banking cards, automatic cards to open and close doors, electronic cards for counters, electronic tickets; weighing machines; precision balances, scales, balances (steelyards); detectors, roentgen apparatus not for medical purposes, X-ray machines not for medical purposes, radiological apparatus for industrial purposes; life saving and protecting instruments; life jackets, life buoys, swimming jackets, respiratory masks, diving suits, divers' masks, safety restraints, safety nets, protective clothes, gloves, glasses and helmets; signaling whistles and lanterns, signaling buoys; eyeglasses; sunglasses, optical lenses, eyeglass and lens cases, parts and fittings of these goods; plugs, sockets, junction box, electric switches, circuit breakers, circuit closers, fuses, ballasts, starters, electric boards, elevator operating apparatus, nose clips for divers and swimmers, conduits, cable raceway, buttons, resistances, connectors (electric), instruments and apparatus for conducting, switching, transforming, accumulating, regulating or controlling electricity; adapters, chargers; electric doorbells, alarms (other than automobile alarms); sirens; cables and wires; all kinds of cables and wires used for electric and telephone lines, optical fibers, fiber optic cables; power suppliers; accumulators, solar batteries, batteries, continuous power suppliers; irons, electric irons, steam iron, press iron; indicators for vehicles; speed, oil, fuel and heat indicators, tachometers, taximeters; balancing apparatus; vehicle breakdown warning triangles, road signs (luminous or mechanical), mechanical or electrical equipment for traffic signalization, controlling equipment for road junctions, flashing lights; fire extinguisher instruments, fire-extinguishing apparatus; apparatus for electric welding machines; soldering irons, welding electrodes for electric spot welding machines and electric soldering machines; radar apparatus, sonars, night vision apparatus; lighting conductors; spirit levels, meters, measures, plumb bobs; dosage dispensers; electrically heated hair-curlers, hair-curlers; electric devices for attracting and killing insects; automatic door closing apparatus (electric), automatic turnstiles, electric door openers and closers; satellites for scientific purposes; apparatus for electrolysers, galvanizing apparatus; anodes, cathodes; filters for computer and television screens; remote control mechanisms for vehicle doors; magnets, decorative magnets; ear plugs.
Class 35: Advertising services, advertising agencies, radio and television commercials, dissemination of advertising matters, organization of exhibitions for commercial or advertising purposes, modeling for advertising or sales promotion, marketing studies, sale promotions, shop window dressing, opinion polling, public relations; office functions; secretarial services, document reproduction, photocopying, typing services, word processing, compilation of information into computer databases, systemization of information into computer databases, telephone answering services, arranging newspaper subscriptions, rental of office machines and equipment, rental of vending machines; business administration services; commercial or industrial management assistance, consultancy of business management and organization, business management of hotels, business investigation, statistical information, personnel management consultancy, personnel recruitment, accounting, drawing up of statements of accounts, auditing, price analysis, economic forecasting, payroll preparation, tax preparation; import and export agencies; business management of performing artists; expertise services for evaluation of industrial and commercial goods, auctioneering; retail sale services, namely bringing together a wide variety of goods enabling customers to view and purchase those goods.
Class 36: Insurance services; accident, life, fire, health and marine insurance underwriting, insurance investigation, actuary services, insurance consultancy; financial and monetary affairs; banking, financial management, financial analysis, financial sponsorship, financial information, factoring, leasing, issuance of credit cards for shopping by installment, exchanging money; real estate affairs, real estate brokers, apartment house management services; real estate appraisal services; antique money appraisal, antique appraisal, jewellery appraisal, stamp appraisal, art appraisal; customs brokerage.
The contested goods and services are the following:
Class 9: Encoded credit cards; credit cards; credit cards [magnetic]; magnetically encoded credit cards.
Class 35: Loyalty, incentive and bonus program services; loyalty card services; loyalty scheme services; organisation, operation and supervision of customer loyalty schemes; management of customer loyalty, incentive or promotional schemes; organisation and management of business incentive and loyalty schemes; customer
loyalty services for commercial, promotional and/or advertising purposes; organisation, operation and supervision of loyalty schemes and incentive schemes; loyalty, incentive and bonus program services.
Class 36: Issuing of tokens of value in relation to customer loyalty schemes; issue of tokens of value; issue of tokens, coupons and vouchers of value; issuing of cash vouchers; issuing of tokens of value in relation to incentive schemes; issuing stored value cards; issuing of vouchers for use as money; issue of credit cards; charge card and credit card services; provision of credit cards; debit card services; credit and debit card services; issuance of credit and debit cards; processing debit card transactions for others.
Some of the contested goods and services are identical to goods and services on which the opposition is based: for example, in Class 9, the contested magnetically encoded credit cards are included in the broad category of the opponent’s electronic and magnetic cards. In Class 36, the contested issue of credit cards includes, as a broader category the opponent’s issuance of credit cards for shopping by instalment, exchanging money. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services. Finally, in Class 36, the contested issuing of cash vouchers is included in the broader category of the opponent’s financial affairs since it covers services of providing capital and managing financial assets.
For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 goods and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high (e.g issue of credit cards in class 36 which are part of financial services) since they 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).
- The signs
bonusway | |
Earlier trade mark | Contested sign |
The relevant territory is 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).
As regards the contested sign, although it is composed 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).
The English word ‘bonus’, contained in both signs, means ‘something in addition to what is expected or strictly due’ (an additional economic advantage or benefit). The term ‘bonus’ is spelled identically or very similarly in a number of languages of the European Union: for example in the Czech, German, Danish, Finnish, French, Italian, Dutch, Polish, Slovenian and Swedish languages. It is also very similar to equivalent words in other languages, such as ‘boonus’ in Estonian, ‘bónusz’ in Hungarian, ‘bônus’ in Portuguese and ‘bónus’ in Slovak. Its transcription in Greek is μπόνους, but it is used also with the Latin characters ‘bonus’.
Even though, as mentioned by the opponent, in countries such as Latvia or Bulgaria ‘bonus’ does not have a meaning, the Opposition Division considers that ‘bonus’ is a very basic English word which will be understood in each Member State in the relevant territory. In addition, the term is commonly used and known in commerce, trade and finance throughout the entire European Union, including in countries where English is not an official language.
The Opposition Division does not agree with the opponent arguing that ‘bonus’ is not descriptive for the goods and services covered by the marks and that it is a distinctive element.
Indeed, the word ‘bonus’ is descriptive for the following services which clearly mention the word bonus or refer to an incentive: loyalty, incentive and bonus program services (mentioned twice); management of customer loyalty, incentive or promotional schemes; organisation and management of business incentive and loyalty schemes; customer loyalty services for commercial, promotional and/or advertising purposes; organisation, operation and supervision of loyalty schemes and incentive schemes in Class 35 and issuing of tokens of value in relation to incentive schemes in Class 36. Therefore, it is non-distinctive for these services.
For the rest of the goods ‘bonus’ will be weak as it identifies the added value that could be associated with them: indeed, it indicates to the relevant public that it will receive some extra and unexpected advantages and benefits.
The element ‘net’ in the earlier sign will be understood as referring to the internet, especially a top-level domain name and as the abbreviation for network. This element is weak in relation to the opponent’s goods and services since they can be offered online or through a specific network. Associated with the word ‘bonus’, it will be perceived as referring to both an internet site and a network of people where services are offered which confer an extra and unexpected advantage in addition to what is normally offered.
Regarding the word ‘way’ present in the contested sign, it will refer for the English speaking part of the public to a way of doing something and will be understood as actions that can be taken or a method that can be used to achieve it. It is distinctive for the relevant goods and services. For the rest of the public, ‘way’ is meaningless and will also be distinctive.
Visually, the signs coincide in the non-distinctive/weak element ‘bonus’. However, they differ in their second verbal element, the weak word ‘net’ in the earlier mark and the distinctive word ‘way’ in the contested sign. They further differ in their stylisation since the earlier mark is composed of the word ‘bonus’ in green lower case letters followed by the word ‘net’ in white lower case letters on a background of different shades of orange resembling a circle.
Therefore, the signs are visually at most similar to a low degree since the non-distinctive and weak word ‘bonus’ will not be overlooked.
Following the same line of reasoning as in the visual comparison, it is considered that the signs are aurally at most similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark has a meaning as a whole which is not the case of the contested trade mark. Furthermore, the conceptual link between the signs resides in a non-distinctive and weak word. For this reason, the marks are at most 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.
- 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for all goods and services in question. Indeed, the earlier trade mark is composed of two weak verbal elements, which convey a laudatory meaning. The specific combination of those two elements and the figurative elements is not sufficient to endow the earlier mark as a whole with more than a below average degree of distinctiveness.
- Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
According to the case-law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C251/95, ‘Sabèl’).
The signs are similar to the extent that they coincide in the word ‘bonus’. According to the opponent this coinciding word will attract the most attention, as consumers tend to focus on word elements, in particular the first word elements of signs.
The Opposition Division does not agree with this. As mentioned above, the verbal element ‘bonus’ is non-distinctive/weak for the relevant goods and services and therefore carries less weight visually, aurally and conceptually than the remaining elements of the marks.
Visual, aural and conceptual differences arise from the additional weak word ‘net’ of the earlier mark, as well as from the distinctive word ‘way’ in the contested sign. The signs also differ visually in their stylisation.
The low degree of distinctiveness of their common element, and even of the whole earlier mark whose distinctiveness only derives from the fact that it is figurative, are sufficient to exclude a likelihood of confusion between them, even more so taking into account the higher degree of attention of the relevant public in relation to some services.
The opponent refers to a judgment (24/01/2012, T-260/08 EU:T:2012:23) to support the fact that “even if an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular of the similarity of the signs and between the goods and services covered”. Indeed the Court stated that “the distinctive character of the earlier mark (…) is only one factor among others involved in that assessment”.
This is exactly the reasoning of the Opposition Division in the present proceedings, however the previous case referred to by the opponent is not relevant since the degree of similarity between the marks in the case cited prove to be sufficiently high to justify the conclusion of a likelihood of confusion. Indeed, the earlier mark ‘VISUAL’ was weak but was fully included in the contested sign ‘VISUAL MAP’. Therefore the signs were more similar than the signs at issue since the earlier mark in the present case has an additional verbal element ‘net’ which is not present in the contested sign and which despite being weak creates visual, aural and conceptual differences between the marks.
The opponent refers to another judgment (03/07/2003, T-129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) EU:T:2003:184) to support the fact that it is common for companies to use sub-brands in order to distinguish its various lines from one another.
This argument must be set aside since the capacity of the common term ‘bonus’ to distinguish the goods and services of one undertaking from those of another undertaking is very limited. Therefore, the relevant public will not associate one trade mark with another and therefore will not perceive the contested sign as a variant of the earlier mark.
The similarities between the marks are not sufficient to lead to a likelihood of confusion since they reside in the non-distinctive/weak element ‘bonus’. Even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
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
Saida CRABBE | Lucinda CARNEY | Vanessa PAGE |
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.