LePay | Decision 2691866
Date Published: Sep 28, 2017
OPPOSITION No B 2 691 866
EE Capital Limited, 3rd Floor, Windward House, La Route De La Liberation, St Helier 23BQ, Jersey (opponent), represented by Искра Братованова, ул. "Якубица" № 76, партер, 1169 София, Bulgaria (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 26/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 691 866 is partially upheld, namely for the following contested services:
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 15 131 907 is rejected for all the above 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 15 131 907. The opposition is based on European Union trade mark registration No 13 324 983. 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 services on which the opposition is based are the following:
Class 36: Financial and monetary services; payment transaction services; banking.
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.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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
In today’s high-tech society, many banking, financial and payment transaction services use the contested computer programmes [programs], recorded; chips [integrated circuits]; computer software applications, downloadable. This does not, however, lead to the automatic conclusion that these goods are similar to the opponent's financial and monetary services, payment transaction services; banking services, in Class 36.
These goods and services are not complementary because they are not aimed at the same public. The producers are not the same, nor are the distribution channels, and they do not have the same purpose. In addition, goods and services are dissimilar by nature. Consequently, the contested computer programmes [programs], recorded; chips [integrated circuits]; computer software applications, downloadable are dissimilar to the opponent's financial and monetary services, payment transaction services; banking.
The contested encoded magnetic cards include credit cards (small plastic cards issued to users as a system of payment), that allow its holders to buy goods and services based on the holder’s promise to pay for these goods and services. The issuer of the card creates a revolving account and grants a line of credit to the consumer (or the user) from which the user can borrow money for payment to a merchant or as a cash advance to the user.
The opponent's services are offered by institutions like banks for the facilitation of various financial transactions and other related activities in the world of finance. Even though credit cards are related to some extent to financial services, for example they can be used to withdraw money from the cash dispenser of a bank, this link is too remote to render the goods and services similar. The customers are aware of the fact that financial institutions are not responsible for the technological aspects of issuing magnetic or chip cards (decision of 07/05/2012, R 1662/2011-5, CITIBANK, § 29). Consequently, these contested goods are dissimilar to all of the opponent's services in Class 36.
The contested smartphones; television apparatus; batteries, electric; headphones; compact disc; navigational instruments are clearly dissimilar to all the opponent's services in Class 36. Besides being different in nature, they obviously have different purposes, producers and distribution channels.
Contested services in Class 36
Banking is identically contained in both lists of services.
The contested fund investments; providing financial information via a web site; financing services; issue of tokens of value; brokerage; credit card services; debit card services; electronic funds transfer are included in the opponent's broad category of banking services. Banking services indeed consists of providing all the services necessary for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business. Consequently, they are identical.
The contested insurance consultancy consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages.
Insurance services serve different purposes from banking services such as providing credit or asset management, credit card services, financial evaluation or stocks and bonds brokerage. Nevertheless, there are also some significant similarities.
Insurance services are of a financial nature and insurance companies are subject to licensing, supervision and solvency rules similar to those governing banks and other institutions providing financial services. Most banks also offer insurance services, including health insurance, or act as agents for insurance companies with whom they are often economically linked. Additionally, it is not unusual to see a financial institution and an insurance company in the same economic group.
Therefore, although the contested insurance consultancy and the opponent’s banking services have different purposes, they are of a similar nature, may be provided by the same undertaking or related undertakings and often have the same distribution channels. Therefore, insurance consultancy are similar to banking services.
- 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 and business customers.
The degree of attention will be high for all customers, 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).
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- The signs
LeoPay | |
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 contested application.
The common verbal elements 'Le' and 'Pay' are not meaningful in certain territories, for example, in those countries where French and English language is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese- and Spanish-speaking part of the public such as Portugal and Spain.
The earlier mark is a word mark consisting of the string of letters ‘LeoPay’. Being a word mark, the word as such is protected, not its written form. Indeed, according to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). The protection offered by the registration of a word mark applies to the word stated in the application for registration, i.e. ‘LEOPAY’ and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.
From the perspective of the relevant public (as defined in section b) of this decision), this word has no clear meaning. Even if part of the professional public would perceive the element ‘Pay’ as a reference to the English verb ‘to pay’, this will in any event not be the case in the perception of the relevant average public. Indeed, while part of the professional public in the given field will be familiar with English, such knowledge cannot be expected from the public at large. In addition, while it cannot totally be excluded that a minor part of the public could associate the first three letters ‘LEO’ with the first name 'Leo' or as an abbreviation of the first name 'Leonardo' or 'Leopoldo', this will not be the case for a significant part of the public. Consequently, for a significant part of the relevant public taken into account, the earlier mark has no elements that are more distinctive than others and enjoys average distinctiveness. The comparison will proceed on this basis, which is the best light in which the opponent's case can be considered.
The contested sign is a figurative mark consisting of the string of letters ‘LePay’, in a very standard typeface. The string of letters ‘LePay’ is meaningless for a significant part of the relevant public, as detailed above. Consequently, it will be seen as a fanciful word and it has an average degree of distinctive character.
None of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the string of five letters ‘LE*PAY’, which forms the entire contested sign and which is distinctive from the perspective of the relevant public. They merely differ in the additional letter ‘O’, in the middle of the earlier mark that has no counterpart in the contested sign, and the stylisation of the contested sign, which is however only minimal.
Furthermore, the beginnings of the conflicting marks are identical, and so are their endings. Consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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. In addition, due to its position, the one-letter-difference in the present case has only a limited impact on the overall impression created by the sign and it may be overlooked by the public, which will not overanalyse the signs, given that they are both single, meaningless terms. Furthermore, the stylisation of the contested sign is likely to be overlooked as it is only minimal.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the five letters ‘LE*PAY’, present identically in both signs as a distinctive element. The pronunciation differs in the sound of the letter ‘O’ of the earlier mark which, whilst having no counterpart in the earlier mark, has a limited impact on the overall impression created by the earlier mark, due to its position in the middle of the mark, considering that the signs have identical beginnings and endings. In addition, the pronunciation of both signs coincides in rhythm and intonation.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for a significant part of the public taken into account 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 goods in question from the perspective of the public in the relevant territory taken into account as mentioned above. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
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).
Furthermore, 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 goods/services covered are from the same or economically linked undertakings.
Also, account must be 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).
The present assessment of likelihood of confusion is carried out in relation to the perception of the part of the public in the relevant territory that is more prone to confusion, namely the general public. As set out above, the only noticeable difference between the signs is the additional middle letter in the earlier mark; this difference is incapable of counteracting the similar overall impressions created by the signs sufficiently to enable the relevant public with an imperfect recollection to safely distinguish between them, even where the degree of attention is high.
The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. As the services are identical and similar, due to the visual and aural similarity to a high degree, while the conceptual aspect does not influence the assessment of the similarity of the signs, a likelihood of confusion cannot be excluded, and this despite the fact that the attention will be high.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish- and Portuguese- speaking part of the general public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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. Therefore, there is no need to analyse the remaining 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 goods 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 goods 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 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
Gueorgui IVANOV | Edith Elisabeth VAN DEN EEDE | 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.