Cash&Drive | Decision 2596974

Date Published: Sep 25, 2017

OPPOSITION No B 2 596 974

Caixa Geral de Depositos, S.A., Avenida João XXI 63, 1000-300 Lisbon, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados – Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisbon, Portugal (professional representative)

a g a i n s t

Pfando Cash&Drive GmbH, Bismarckstraße 24, 10625 Berlin, Germany (applicant), represented by V. Nieding Ehrlinger Geipel Ingendaay PartgmbB, Kurfürstendamm 66, 10707 Berlin, Germany (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 596 974 is partially upheld, namely for the following contested services:

Class 36: Financial affairs; monetary affairs; banking; pawnbroking services, in particular of vehicles; credit agencies; loans [financing]; financing and funding services; financial advice; debt collection agencies; financial appraisal services; financial advice and consultancy services; leasing, in particular of motor vehicles; brokering of leasing contracts, in particular for motor vehicles; pawnbrokers, in particular motor vehicle pawnbrokers.

2. European Union trade mark application No 13 963 822 is rejected for all the above services. It may proceed for the remaining goods and 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 No 13 963 822, namely against all the services in Classes 35 and 36. The opposition is based on Portuguese trade mark registration No 441 175. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of Portuguese trade mark registration No 441 175 ‘CAIXADRIVE’ (word mark).

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date.

The contested application was published on 20/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Portugal from 20/07/2010 to 19/07/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 35: Business management, business administration, business management assistance, business information, advertising.

Class 36: Financial, monetary, real estate and banking affairs, including international banking services and those provided via the Internet or other means of telecommunications; Exchanging money, issuing of bank cheques, issuing, management and distribution of credit, debit and bank cards; Funds transfer; Credit, finance and loans, brokerage; Financial assistance.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 10/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/08/2016 to submit evidence of use of the earlier trade mark. This time limit was extended until 15/10/2016. On 14/10/2016, within the time limit, the opponent submitted evidence of use.

List of evidence

Therefore, the evidence to be taken into account is, in particular, the following:

Document 1: advertising for ‘CAIXADRIVE’ card services in the October 2012 edition of CX magazine, a free distribution magazine produced by the opponent, with a circulation of 72 000 units.
Document 2: advertising for ‘CAIXADRIVE’ card services in the February 2013 edition of the abovementioned magazine.
Document 3: advertising for ‘CAIXADRIVE’ card services in the December 2013 edition of the abovementioned magazine.
Document 4: advertising for ‘CAIXADRIVE’ card services dating from October 2010, indicating the card services’ conditions and characteristics.
Document 5: undated advertisement for ‘CAIXADRIVE’ credit card services.
Document 6: undated picture of a billboard during a cycling event, namely, according to the opponent, the 36th Tour of the Algarve in 2010.
Document 7: undated printout from the website of Repsol (a multinational petrochemical company), http://repsol.com, mentioning ‘CAIXADRIVE’ and displaying an image of a credit card.
Documents 8 and 9: printouts from Repsol’s site mentioning ‘CAIXADRIVE’ in connection with credit card services; the material is dated 10/10/2016, outside the relevant period.
Documents 10 and 11: undated advertising material mentioning the ‘CAIXADRIVE’ credit card.
Document 12: advertisement mentioning ‘CAIXADRIVE’ in connection with credit card services; the brochure is dated 09/07/2009, outside the relevant period.
Document 13: undated picture of packaging in which a ‘CAIXADRIVE’ credit card can be seen.
Document 14: undated picture of a key ring on which the mark appears.
Document 15: online magazine article published on 16/01/2012, on http://economico.sapo.pt, mentioning ‘CAIXADRIVE’ in connection with card services.
Document 16: online magazine article published on 03/12/2009 (outside the relevant period), on http://marketeer.pt, mentioning ‘CAIXADRIVE’ in connection with card services.
Document 17: online magazine article published on 31/03/2011, on http://bancos.wewebit.biz, mentioning ‘CAIXADRIVE’ in connection with card services.
Document 18: online magazine article published on 04/12/2009 (outside the relevant period), on http://briefing.pt, mentioning ‘CAIXADRIVE’ in connection with card services.
Document 19: extract from an online magazine article published on 02/12/2009 (outside the relevant period), on http://dinheirodigital.sapo.pt, mentioning ‘CAIXADRIVE’ in connection with credit card services.

The opponent did not provide a complete translation of the evidence into the language of the proceedings. However, it should be noted that the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, their self-explanatory character and the translation of their essential elements submitted, the Opposition Division considers that there is no need to request a translation.

On 20/03/2017, after expiry of the time limit to submit proof of use, the opponent submitted additional evidence. In the present case the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take into account the additional evidence submitted on 20/03/2017 can remain open, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the earlier trade mark.

As the opponent requested to keep certain commercial data contained in the evidence filed on 20/03/2017 confidential vis-à-vis third parties, the Opposition Division will describe this evidence only in the most general terms without divulging any such data.

The additional evidence submitted is the following:

Document 1: written affidavit of 15/03/2017 by an unidentified representative of the opponent:

stating that the key ring shown in Document 14 submitted with the opponent’s previous observations was distributed in Portugal;
indicating that the earlier mark was mentioned in 11 editions of CX magazine between 2011 and 2015;
providing information on the distribution of said magazine in Portugal (several tens of thousands of copies);
providing information (i.e. the date of the event) on the sporting event shown in Document 6 submitted with the opponent’s previous observations.

Document 2: copies of CX magazine in which the earlier mark is mentioned; these documents had already been submitted as evidence of genuine use (as Documents 1, 2 and 3); the opponent highlighted the number of copies distributed.
Document 3: information on the Portuguese Association for the Control of Print Run and Circulation, which is competent to certify the number of copies of publications distributed by selected editors.
Document 4: excerpt from the abovementioned association’s statute, regarding its activities and area of interest.
Document 5: table indicating the number of copies distributed of an unidentified magazine.

Assessment of the evidence

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

In its observations of 28/12/2016, the applicant claimed that some of the evidence showed a use not by the opponent but by the company Repsol (e.g. Documents 7, 8 and 9). According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225). Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by another company was made with the opponent’s consent and thus is equivalent to use made by the opponent. In any case, the Opposition Division notes that this relates to only Document 7 and that the rest of the evidence cannot be considered to be evidence of use by a third party but clearly relates to a partnership between the company Repsol and the opponent for the provision of certain services.

The evidence submitted includes an affidavit from an unidentified representative of the opponent. Bearing in mind that this evidence was filed outside of the relevant period, it must nonetheless be noted that Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

In the light of the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Place of use

Regarding the place of use, the evidence submitted shows that the place of use is Portugal. This can be inferred from the language of the documents (Portuguese) and some addresses in Portugal (see, for instance, Documents 1, 2 and 3). Therefore, the evidence relates to the relevant territory.

Time of use

Concerning the time of use, some of the evidence does not refer to the relevant period mentioned above (i.e. from 20/07/2010 to 19/07/2015 inclusive).

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the period to which the evidence relates is very close to the relevant period, dating from about one year before or after the period to be taken into consideration (see, for instance, Documents 8, 9, 12, 16, 18 and 19). Furthermore, it is common for dates on evidence, such as brochures, to relate to an advertising campaign that would have been under development months or even years before it ran in newspapers, on the internet and in other media. Therefore, the evidence dated outside the relevant period is taken into account. Moreover, is should be noted that word marks are protected no matter the font or stylisation used on the market.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, in particular Documents 1, 2 and 3, provide the Opposition Division with sufficient information concerning the extent of use of the mark, since it is possible from them to infer that the mark was used for advertising purposes in a magazine with a considerable circulation (i.e. several tens of thousands of copies).

The territorial scope is sufficiently indicated by the fact that the relevant services targeted the Portuguese market. Sufficient duration of use is clearly indicated by the fact that the opponent submitted several items of evidence dated throughout the entire relevant period.

Therefore, it is concluded that the evidence provides sufficient indications regarding the extent of use.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. It is considered that the mark was used as registered.

Contrary to the applicant’s argument, it is considered that the earlier mark was used as registered. Admittedly, in some of the documents the mark appears in slightly stylised characters. Nonetheless, it should be noted that Article 15 EUTMR states that use of the mark in a form different from that in which it is registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark. The Opposition Division considers that the use of slightly stylised characters does not alter the distinctive character of the mark. Therefore, the use demonstrated in the evidence submitted is not of a substantial variation of the mark as registered.

Overall assessment

Taking into account the evidence in its entirety, the Opposition Division finds that the evidence furnished by the opponent is, in principle, sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following services:

Class 36: Financial and banking affairs, including international banking services and those provided via the Internet or other means of telecommunications, namely card services; issuing, management and distribution of credit, debit and bank cards; credit, finance and loans.

According to case-law, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (14/07/2005, T-126/03, Aladin, EU:T:2005:288). This is applicable to the opponent’s financial and banking affairs, including international banking services and those provided via the Internet or other means of telecommunications, which include card services, the latter being the services to which the evidence essentially refers. The documents submitted do not contain any reference to the rest of the services in Classes 35 and 36, or any information from which it could be inferred that the mark was used in relation to these services.

Therefore, the Opposition Division considers that the evidence, although not particularly exhaustive, considered as a whole, shows genuine use of the trade mark for only the services listed above and will consider only these services in its further examination of the opposition.

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 services on which the opposition is based are the following:

The contested services are the following:

Class 35: Advertising; drafting and publication of publicity texts; advertising via the internet; television advertising; marketing services; business management; business administration; business consultancy and advisory services; professional business consulting; counselling on business matters; providing of business information, in particular via the internet; office functions; arranging of contracts for the buying and selling of goods, for others, in particular motor vehicles; auctioneering, in particular of motor vehicles; wholesaling and retailing, including via the internet, in the fields of vehicles and vehicle fittings.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The terms ‘in particular’ and ‘including’, used in both the applicant’s and the opponent’s lists of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed 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 advertising; drafting and publication of publicity texts; advertising via the internet; television advertising; marketing services; business management; business administration; business consultancy and advisory services; professional business consulting; counselling on business matters; providing of business information, in particular via the internet; office functions; arranging of contracts for the buying and selling of goods, for others, in particular motor vehicles; auctioneering, in particular of motor vehicles; wholesaling and retailing, including via the internet, in the fields of vehicles and vehicle fittings are mainly services rendered by persons or organisations principally with the object of helping in the running or management of a commercial undertaking, or helping in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services. By contrast, the opponent’s services do not necessarily target business customers, as they are often used to make non-business-related purchases; therefore, the services at issue do not have the same nature or purpose and they do not target the same public. Their providers are also different. Indeed, the opponent’s services are typically provided by banks or financial institutions, unlike the contested services. Moreover, these services are not complementary or in competition with each other. Therefore, they are considered dissimilar.

Contested services in Class 36

The earlier mark is protected essentially for credit card and credit services. The contested financial affairs; monetary affairs; banking; pawnbroking services, in particular of vehicles; credit agencies; loans [financing]; financing and funding services; financial advice; debt collection agencies; financial appraisal services; financial advice and consultancy services; leasing, in particular of motor vehicles; brokering of leasing contracts, in particular for motor vehicles; pawnbrokers, in particular motor vehicle pawnbrokers basically consist of currency-related services and financial and finance-related services. These services are identical or similar to the opponent’s financial and banking affairs, including international banking services and those provided via the Internet or other means of telecommunications, namely card services; issuing, management and distribution of credit, debit and bank cards; credit, finance and loans, as some of the contested services are identical to, include or are included in the opponent’s services. Concerning the other services (e.g. financial advice and consultancy services versus credit, finance and loans), they have the same nature, namely they are all financial services. Moreover, these services are very often provided by the same entities (typically banks and financial institutions), target the same relevant public and can be used in combination.

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 essentially financial services. They target the general public, which is reasonably well informed and reasonably observant and circumspect. However, 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).

The signs

CAIXADRIVE

Earlier trade mark

Contested sign

The relevant territory is Portugal.

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 earlier mark is a word mark consisting of the word ‘CAIXADRIVE’, which will be spilt by the relevant public into the elements ‘CAIXA’ and ‘DRIVE’. Word marks should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements. However, 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 the present case, the relevant public will immediately perceive the Portuguese word ‘CAIXA’, meaning cashier. Bearing in mind that the relevant services are financial services, this element is weak for these services, since it alludes to their nature. Consequently, it will play a limited role in the present comparison. The element ‘DRIVE’ is meaningless, and therefore distinctive, for the relevant public.

As regards the contested sign, it is a figurative mark including the verbal element ‘CASH&DRIVE’ in slightly stylised bold blue title case letters with a white outline. The element ‘CASH’ will be perceived by the relevant public in its English meaning, since it is commonly used in the relevant territory especially in relation to financial matters (e.g. the word ‘cash-flow’ and the expression ‘cash and carry’ are commonly used in the relevant territory). This component of the mark has a weak distinctive character, and therefore is of secondary relevance, because it alludes to the nature of the relevant services. The character ‘&’ (ampersand) is used as shorthand for the conjunction ‘and’ and is commonly used in trade (16/02/2017, R 1050/2016-1, metal&glass, § 18), and therefore is non-distinctive. In fact, it will be perceived as connecting the two words ‘CASH’ and ‘DRIVE’, the latter being meaningless for the relevant public, as noted above.

The mark also includes a figurative element consisting of three diagonal blue lines decreasing in width from left to right. This element is not particularly distinctive and, due to its figurative nature, has limited importance in the present comparison. Indeed, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Neither of the signs has any element that is more dominant (eye-catching) than other elements.

Visually, since the signs coincide in the distinctive element ‘DRIVE’ and differ in less relevant components, they are visually similar to an average degree.

Admittedly, the marks differ in their first and (usually) most important parts, as argued by the applicant in its observations of 28/12/2016. The Opposition Division acknowledges that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, this is only one of the factors to be taken into account when defining the degree of similarity between signs and cannot be decisive alone. Moreover, it should be taken into account that the differing elements have a weak distinctive character, and are therefore of secondary importance in the present assessment.

Account must also be taken also of the fact that, when figurative marks with word elements and word marks are compared visually, what matters is whether the signs have in common a significant number of letters in the same positions and whether the word element in the figurative sign is highly stylised. Similarity may be found despite the fact that the letters are graphically depicted in different typefaces, in italics or bold, in upper or lower case or in colour. In principle, when the same letters are depicted in the same sequence, any variation in stylisation has to be significant in order for visual dissimilarity to be found. Therefore, the differences noted by the applicant in its observations and lying in the (limited) stylisation of and use of upper and lower case characters in the contested sign, have no relevance for the present evaluation.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CA***DRIVE’, present identically in both signs, as well as in their rhythm and intonation. The letters ‘X’ of the earlier mark and ‘SH’ of the contested sign are pronounced identically (i.e. like ‘sh’ in English). The pronunciation differs in the sound of the first letter ‘I’ and in the second letter ‘A’ of the earlier mark, as well as in the character ‘&’ of the contested sign (‘e’ in Portuguese, which will be pronounced ‘ɛ’, as in the English word ‘red’). As the abovementioned differences result from elements placed in the middle of the signs, where consumers usually do not tend to focus their attention, the signs are considered aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, consumers will understand the meanings of the words ‘CAIXA’ in the earlier mark and ‘CASH’ and ‘&’ in the contested sign. Therefore, the signs are conceptually dissimilar. This must, however, be seen in the light of the secondary importance of those elements and taking into account the fact that the words ‘CAIXA’ and ‘CASH’, despite not having the very same meaning, evoke similar concepts.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

Global assessment, other arguments and conclusion

The contested services are partly identical, partly similar and partly dissimilar to the opponent’s services. These services target the public at large. The degree of attention is considered high. Furthermore, the earlier mark enjoys an average degree of distinctiveness in connection with the relevant services.

The signs are visually similar to an average degree and aurally similar to a high degree. The differences between the signs are confined to aspects that either may pass unnoticed both visually and aurally or have a limited impact on the overall impression of the sign concerned, since they lie in secondary elements (i.e. the weak, non-distinctive and figurative components of the signs) or they are placed in the middle of the sign (i.e. the difference in the pronunciation of the first letter ‘I’ and of the second letter ‘A’ of the earlier mark, as well as of the character ‘&’ of the contested sign). Admittedly, the signs are conceptually dissimilar; however, the differing elements ‘CAIXA’ of the earlier mark and ‘CASH’ of the contested sign (which are in any case weak) evoke similar concepts. Moreover, the other conceptually dissimilar element, ‘&’, has no distinctive character and is, therefore, of limited relevance.

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). 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or 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 will 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

Michele M.

BENEDETTI-ALOISI

Orsola LAMBERTI

Francesca CANGERI SERRANO

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.

Cash&Drive | Decision 2596974

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