Bankia v OHMI - Banco ActivoBank (Portugal) (Judgment) [2015] EUECJ T-323/14 (17 September 2015)

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(Community trade mark — Opposition proceedings — Application for the Community figurative mark Bankia — Earlier national word mark BANKY — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Bankia, SA, established in Valencia (Spain), represented by F. De Barba, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 14 February 2014 (Joined Cases R 649/2013-2 and R 744/2013-2) relating to opposition proceedings between Banco ActivoBank (Portugal), SA and Bankia, SA,

composed of G. Berardis, President, O. Czúcz and A. Popescu (Rapporteur), Judges,

having regard to the response lodged at the Court Registry on 17 September 2014,

having regard to the decision of 24 October 2014 refusing leave to lodge a reply,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

1 On 15 July 2011, the applicant, Bankia, SA, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 Registration as a mark was sought for the following figurative sign, claiming the colours brown (Pantone 7533 C) and green (Pantone 382 C):

3 The goods and services in respect of which registration was sought are in Classes 9, 16, 35, 36, 38, 41 and 45 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus’;

– Class 16: ‘Printed publications, periodical publications, relating to monetary, financial and banking affairs, real estate and insurance’;

– Class 35: ‘Advertising and commercial or industrial management assistance; business administration, office functions; import-export agencies’;

– Class 36: ‘Insurance services; financial affairs; financial analysis; monetary affairs; banking business; home banking; stockbrokerage and stock exchange quotations; fund management and capital investments; real estate administration, housing agents and real estate appraisal; real estate services; deposits of valuables; issuing of credit and debit cards; trustee services; mutual fund creation and investment; mortgage lending; online banking, financial, monetary, insurance and real estate services via telecommunication networks (including mobile telephones), data transmission networks and global computer communications networks’;

– Class 41: ‘Education, providing of training; Entertainment; Sporting and cultural activities’;

– Class 45: ‘Personal and social services, not included in other classes, rendered by others to meet the needs of individuals; security services for the protection of property and persons; legal services; investigation and surveillance relating to the security of individuals and collectivities; marriage bureaux; funeral services’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 210/2011 of 7 November 2011.

5 On 7 February 2012, Banco ActivoBank (Portugal), SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the services in Class 36.

6 The opposition was based on the earlier national word mark BANKY, which was filed on 4 May 2009 and registered in Portugal on 23 September 2009 under No 448479.

7 The earlier mark covers services in Class 36, which correspond to the following description:

– Class 36: ‘Financial and banking services, including those provided through the internet or other means of telecommunications’.

8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

10 The Opposition Division found that there was a likelihood of confusion in respect of ‘Insurance services; financial affairs; financial analysis; monetary affairs; banking business; home banking; stockbrokerage and stock exchange quotations; fund management and capital investments; real estate appraisal; deposits of valuables; issuing of credit and debit cards; trustee services; mutual fund creation and investment; mortgage lending; online banking, financial, monetary, insurance services via telecommunication networks (including mobile telephones), data transmission networks and global computer communications networks’ in Class 36.

11 The Opposition Division considered, inter alia, that, although it was the case that the element ‘bank’, which appears in both signs, may allude to banks or banking even for non-English speakers in Portugal, that term alluded to banks or banking in an unusual manner. Consequently, it took the view that the element ‘bank’, although allusive, had a weak distinctive character in respect of the services in question. As regards the signs at issue, the Opposition Division considered that they had visual, phonetic and conceptual similarities.

12 On 8 April 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision, to the extent that the opposition was upheld.

13 On 22 April 2013, Banco ActivoBank (Portugal) also filed an appeal against the Opposition Division’s decision, to the extent that the opposition had been rejected in respect of ‘real estate services; real estate administration; real estate services via telecommunication networks (including mobile telephones), data transmission networks and global computer communications networks’ in Class 36.

14 By decision of 14 February 2014 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal and partially upheld the appeal lodged by Banco ActivoBank (Portugal), upholding the opposition in respect of the ‘real estate services’ in Class 36.

15 First, the Board of Appeal considered that the relevant public was Portuguese and consisted of the general public and professionals with a high level of attention.

16 Secondly, the Board of Appeal confirmed the Opposition Division’s findings in respect of services, except with regard to ‘real estate services’. It found that those services constituted a broad category of services designating any services relating to real estate. They include real estate appraisal services, which are similar to the ‘financial services’ of the earlier mark. According to the Opposition Division, those two types of services may be carried out by the same provider (a financial institution) in order to assess the value of real estate in connection with lending money to a customer for its purchase. The Board of Appeal therefore concluded that those services shared distribution channels, end-users and also providers and that, consequently, they were similar.

17 Thirdly, as regards the comparison of the signs, the Board of Appeal noted that, visually and conceptually, the signs were similar and that, phonetically, they were highly similar.

18 Fourthly, the Board of Appeal considered, in essence, that, despite the weak distinctive character of the earlier mark, in the light of the similarity of the services and the similarity of the signs, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 for the relevant public notwithstanding its high level of attention.

19 Fifthly and finally, as regards the alleged reputation of the mark applied for, the Board of Appeal stated that it was not relevant in the context of relative grounds for refusal on the ground that there is a likelihood of confusion, since the highly distinctive character of a sign is relevant only in respect of the earlier mark and not the later mark.

– annul the contested decision so that registration of the mark applied for is granted for all the products and services covered;

– order Banco ActivoBank (Portugal), SA or OHIM to pay the costs incurred by the applicant in the present proceedings.

22 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

23 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

24 According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 25).

25 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM –– easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

26 The question whether the Board of Appeal was correct to hold that there was a likelihood of confusion between the marks at issue must be examined in the light of those considerations.

27 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).

28 Moreover, it must be noted that the relevant public is composed of consumers likely to use both the goods and services covered by the earlier mark and those covered by the mark at issue (see, to that effect, judgments of 1 July 2008 in Apple Computer v OHIM — TKS-Teknosoft (QUARTZ), T‑328/05, EU:T:2008:238, paragraph 23, and 30 September 2010 in PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, EU:T:2010:419, paragraph 28).

29 As regards the services concerned and the fact that the earlier mark is protected in Portugal, it is necessary to uphold the findings of the Board of Appeal in paragraphs 22 and 23 of the contested decision, which were not challenged by the applicant, to the effect that the likelihood of confusion must be analysed from the point of view of the relevant Portuguese public, which is made up of the general public and professionals with a high level of attention.

30 According to settled case-law, in order to assess the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 23; see also judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

31 Goods or services which are complementary are those with a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods or services intended for different publics cannot be complementary (see judgment in easyHotel, cited in paragraph 25 above, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

32 The applicant merely contests the Board of Appeal’s assessment that the ‘real estate services’ covered by the mark applied for and the ‘financial and banking services’ included in Class 36 covered by the earlier mark are similar. The applicant argues, in essence, that those services differ in terms of their nature and intended purpose, which is confirmed by the fact that, where such services are available from banks or financial institutions, they are usually provided by separate departments, which are exclusively dedicated to providing those services.

33 The Court endorses the finding of the Board of Appeal in paragraph 24 of the contested decision, which was not challenged by the applicant, to the effect that there is similarity between the ‘insurance services; financial affairs; financial analysis; monetary affairs; banking business; home banking; stockbrokerage and stock exchange quotations; fund management and capital investments; real estate appraisal; deposits of valuables; issuing of credit and debit cards; trustee services; mutual fund creation and investment; mortgage lending; online banking, financial, monetary, insurance services via telecommunication networks (including mobile telephones), data transmission networks and global computer communications networks’ covered by the mark applied for and the services in Class 36 covered by the earlier mark. The Board of Appeal’s findings in paragraphs 25 and 26 of the contested decision to the effect that ‘real estate administration; real estate services via telecommunication networks (including mobile telephones), data transmission networks and global computer communications networks’ are dissimilar to the services covered by the earlier mark must be upheld.

34 As regards the comparison of the ‘real estate services’ covered by the mark applied for and the ‘financial and banking services’ in Class 36 covered by the earlier mark, the Board of Appeal found, contrary to the Opposition Division, that those services were similar on the ground, in essence, that they shared distribution channels, end-users and also providers (see paragraph 16 above).

35 In that respect, it should be noted, first, that, as regards the nature, intended purpose and method of use of the services at issue, financial and banking services do not have the same nature, the same intended purpose or the same method of use as real estate services. Whereas financial services are provided by financial institutions for the purposes of managing their clients’ funds and consist of, inter alia, the holding of deposited funds, the remittance of funds, the granting of loans or the performance of various financial operations, real estate services are services connected with a property, namely, in particular, the lease, the purchase, the sale or the management of such a property. Secondly, as regards the fact that the services in question might be found in the same distribution channels, it is clear that real estate services are not, in principle, provided on the same premises as financial services (see, to that effect, judgment of 11 July 2013 in Metropolis Inmobiliarias y Restauraciones v OHIM — MIP Metro (METRO), T‑197/12, EU:T:2013:375, paragraphs 42 and 43).

36 In any event, it cannot be validly argued that financial and banking services and real estate services are offered to customers without distinction in the same agency or branch of a bank. In principle, real estate services are provided by separate branches of financial institutions, so that financial activities are separate from any real estate activities (see, by analogy, judgment in METRO, cited in paragraph 35 above, EU:T:2013:375, paragraphs 44 and 45).

37 Thirdly, as regards whether the services in question are complementary, the Board of Appeal having found, in essence, in paragraph 26 of the contested decision that they were complementary, it should be noted that, while financial and banking services may play a significant role in the purchase of a property, it cannot be inferred from that fact alone that consumers would be led to believe that the same undertaking was responsible for real estate services and financial services. It cannot be claimed that consumers looking for a property turn to a financial institution in order to carry out that task. On the contrary, in such cases, consumers generally turn, first, to a real estate agency to search for a property and, secondly, to a financial institution in order to fund the property transaction. To conclude otherwise would imply that any non-financial procedure which, on the basis of its scale or other criteria, depends upon the provision of financing is complementary to a financial service, even where the only link lies precisely in the need to obtain financing and where consumers would in no way assume that the same undertaking was responsible for those services (see, to that effect, judgment in METRO, cited in paragraph 35 above, EU:T:2013:375, paragraphs 46 to 49).

38 The conclusion must therefore be drawn from the above, as the Opposition Division noted, that there is no similarity between the services in question, since, even though financial and banking services may be necessary in order to use real estate services, they are not so necessary that consumers will consider that the same undertaking was responsible for those financial services and real estate services.

39 It follows that, as the applicant claims, the Board of Appeal erred in finding that there was similarity between the ‘real estate services’ covered by the mark applied for and the ‘financial and banking services’ in Class 36 covered by the earlier mark.

40 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, bearing in mind, inter alia, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. In addition, account must be taken of the fact that the average consumer has only occasionally the opportunity to carry out a direct comparison of the various trade marks and must rely on his imperfect mental image of them (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

41 According to case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 16 May 2007 in Merant v OHIM — Focus Magazin verlag (FOCUS), T‑491/04, EU:T:2007:141, paragraph 45).

42 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, cited in paragraph 40 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments in OHIM v Shaker, cited in paragraph 40 above, EU:C:2007:333, paragraph 42, and 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is likely, by itself, to dominate the image of that mark recollected by the relevant public, with the result that all the other components of the mark make a negligible contribution to the overall impression created by it (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).

43 It must be added that, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgments of 31 January 2012 in Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, EU:T:2012:36, paragraph 38, and 18 September 2012 in Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, EU:T:2012:432, paragraph 35).

45 The applicant does not dispute the Board of Appeal’s finding in paragraph 35 of the contested decision - which must be upheld - that the element ‘bank’ which appears in both the signs at issue has weak distinctive character.

46 On the other hand, the applicant claims that there is no likelihood of confusion for the relevant public since, contrary to the Board of Appeal’s view, despite the visual and phonetic similarities, the signs at issue are dissimilar overall.

47 In support of this claim, the applicant argues, in essence, first, that the mark applied for is widely used in Spain and is consequently also well known in Portugal and in Europe. According to the applicant, given that the public is already aware of the existence of that mark, consumers will not confuse the marks at issue, on account of the highly distinctive character of the mark applied for, which the earlier mark does not possess. Furthermore, the applicant claims that the parties have existed alongside one another on the financial services markets without there ever having been a single incident where any confusion has occurred.

48 Secondly, the applicant claims, in essence, that, since the element ‘bank’, which appears in both the signs at issue, is descriptive of the services at issue, greater weight should be given to the other elements of the marks. The endings of the signs at issue, namely the letters ‘ia’ of the mark applied for and ‘y’ of the earlier mark, and the figurative element of the mark applied for, should be regarded as dominant since they are more eye-catching. Furthermore, the applicant argues that in short signs composed of just a few letters, as in the present case, consumers pay more attention to marks (particularly if one of them is very famous and well known) and would more easily identify differences, even those consisting of just one or two letters.

49 First, the argument that the mark applied for has a highly distinctive character on account of its alleged reputation must be rejected as irrelevant. It is sufficient to note, in that regard, that, although a highly distinctive character is relevant in the context of absolute grounds for refusal or an absolute ground for invalidity, it is not relevant in the context of relative grounds for refusal or a relative ground for invalidity, as in the present case in respect of whether there is a likelihood of confusion. According to the case-law, the highly distinctive character of a sign is relevant only in respect of the earlier mark and not the later mark (see, to that effect, judgment of 28 June 2012 in I Marchi Italiani and Basile v OHIM — Osra (B. Antonio Basile 1952), T‑133/09, ECR, EU:T:2012:327, paragraph 67 and the case-law cited).

50 Next, the claim that the parties have co-existed on the financial services market and no incident giving rise to confusion has ever occurred (see paragraph 47 above) must be rejected. Assuming that, by that claim, the applicant is arguing that it is necessary to take into account the coexistence of marks in assessing the likelihood of confusion in the present case, it must be noted that that claim is not supported by any evidence.

51 Finally the argument that, in essence, the ‘bank’ element of the signs at issue cannot be regarded as dominant because it is descriptive must also be rejected.

52 First, it should be noted, in that respect, that contrary to the applicant’s suggestion, the Board of Appeal did not in any way claim that the ‘bank’ element was dominant, but simply that the mark applied for was not dominated by the font, colour or graphical presentation and that consequently, it was more than likely that, when faced with the mark applied for, the relevant public would remember the word ‘bankia’.

53 Secondly, it is important to note that, having regard to the need for an overall assessment of the signs at issue, it cannot be accepted that no account should be taken of the ‘bank’ element because it is descriptive, since, according to the case-law referred to in paragraph 42 above, it is only if an element is negligible that the assessment of similarity may be made on the sole basis of the dominant element.

54 Thirdly, it should be noted, in any event, that, according to settled case-law, the fact that an element of a composite trade mark has weak distinctive character does not necessarily mean that that element cannot constitute a dominant element since, on account, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them (see judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 54 and the case-law cited).

55 In the present case, as OHIM correctly observes, first, the signs at issue are short and there appears to be no question of the consumer breaking them down in the manner suggested by the applicant. In addition, given that the relevant public consists of Portuguese consumers, the ‘bank’ element will not be perceived as purely descriptive, given the difference in spelling between that element and the Portuguese word ‘banco’ and the fact that the ‘bank’ element does not stand apart from the other letters, that is to say the letter ‘y’ in the earlier mark and the letters ‘i’ and ‘a’ in the mark applied for. The Board of Appeal’s finding that the ‘bank’ element is allusive but not descriptive must therefore be upheld.

56 It must be added that, contrary to what the applicant essentially claims, it cannot reasonably be maintained that the letter ‘y in the earlier mark and the letters ‘i’ and ‘a’ in the mark applied for or the figurative element of the mark applied for are capable in themselves of dominating the signs at issue, with the result that all the other elements of those signs play a negligible role in the overall impression produced by it. As OHIM observed, the relevant public will not divide the signs at issue into two separate units, one descriptive and the other distinctive. It will perceive both signs as inseparable units alluding to banking services, but which are at the same time invented and fanciful words.

57 Consequently, in the light of the case-law referred to in paragraph 42 above, the comparison between the signs at issue may not be made, as the applicant claims, on the sole basis of the endings of the signs at issue, namely the letter ‘y’ of the earlier mark and the letters ‘i’ and ‘a’ of the mark applied for, or on the basis of the figurative element of the mark applied for, but must be made having regard to the marks at issue each considered as a whole (see, to that effect, judgment of 6 May 2008 in Redcats v OHIM — Revert & Cía (REVERIE), T-246/06, EU:T:2008:141, paragraph 39].

58 It is in the light of those considerations that the signs at issue must be compared.

59 The applicant claims, in essence, that the signs at issue are clearly visually dissimilar on the ground, first, that the mark applied for is figurative and the earlier mark is a word mark; secondly, the earlier mark ends in the letter ‘y’ while the mark applied for ends in the letters ‘i’ and ‘a’; thirdly, the mark applied for consists of the word ‘bankia’ in green on a brown, rectangular background in highly stylised letters, in particular the letters ‘n’ and ‘k’, which in themselves form a figurative element that attracts the consumer’s attention. The applicant submits that the fact that both marks contain the word ‘bank’ is not sufficient to render them similar because that common term is descriptive.

60 In that respect, it should be noted that, according to settled case-law, there is nothing to prevent any visual similarity between a word mark and a figurative mark being determined, since both types of mark have graphic form which may create a visual impression (judgment of 3 September 2010 in Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, ECR, EU:T:2010:347, paragraph 50).

61 In addition, it should be noted that the mark applied for is composed of a word mark made up of the six letters ‘b’, ‘a’, ‘n’, ‘k’, ‘i’ and ‘a’, which are in a slightly stylised font with the exception of the letter ‘k’ which is perceived as sharing its vertical line with the preceding letter ‘n’. That word element is in green, with the first letter only in upper case, and appears on a figurative element in the form of a brown rectangle. The earlier mark is simply made up of five letters: ‘b’, ‘a’, ‘n’, ‘k’ and ‘y’, which are in upper case and a standard font. The Court considers that, although the presentation of the figurative element and its size cannot be ignored, it is secondary to the word element.

62 It follows that the signs at issue are both composed of the same four letters in the same order, which make up the word ‘bank’. The signs at issue are therefore partially identical so that they create a certain impression of visual similarity on the part of the relevant public.

63 It is true, as the applicant observes, that the letter ‘y’ appears at the end of the earlier mark and the letters ‘i’ and ‘a’ at the end of the mark applied for. However, that difference cannot, in the present case, lead to the conclusion that the signs are dissimilar.

64 The overall impression created by the marks at issue must be taken into consideration (judgment of 12 November 2009 in Spa Monopole v OHIM — De Francesco Import (SpagO), T‑438/07, ECR, EU:T:2009:434, paragraph 23). Furthermore, it should be noted that, first, the consumer generally pays greater attention to the beginning of a mark than to the end (see judgment of 25 March 2009 in L’Oréal v OHIM — Spa Monopole (SPA THERAPY), T‑109/07, ECR, EU:T:2009:81, paragraph 30 and the case-law cited) and that, secondly, when assessing the degree of similarity between the signs, account must be taken of the fact that a consumer has only occasionally the opportunity to make a direct comparison of the various trade marks and must rely on his imperfect mental image of them (see paragraph 40 above).

65 Furthermore, it should be pointed out that visual dissimilarity between the signs is not created by the figurative component of the mark applied for, which is secondary to the word element (see paragraph 61 above).

66 It follows that, in the light of the characteristics of the elements of which the marks at issue consist, it must be concluded, in line with the view of the Board of Appeal, that there is visual similarity between the signs in question when viewed as a whole.

67 As a preliminary point, it should be stated that, on a phonetic level, the pronunciation of a complex sign corresponds to that of all its verbal elements, regardless of their specific graphic features, which fall rather within the visual analysis of the sign (judgment of 25 May 2005 in Creative Technology v OHIM — Vila Ortiz (PC WORKS), T‑352/02, ECR, EU:T:2005:176, paragraph 42). Consequently, with regard to the mark applied for, the figurative element must not be taken into account in the phonetic comparison of the signs at issue.

68 The applicant essentially submits that there is no phonetic similarity on the ground that the endings are particularly strong because they act as a distinctive element which renders the sounds ‘ban-ky’ and ‘ban-kia’ phonetically different. For the reasons set out in paragraphs 56 and 57 above, that argument must, however, be rejected.

69 In the present case, as regards the phonetic comparison of the signs at issue, the Board of Appeal rightly observed, in paragraph 30 of the contested decision, that, when viewed overall, the two marks at issue possess a high degree of phonetic similarity. It should be noted that the signs at issue, which include the same first four letters making up the word ‘bank’ differ in that the letter ‘y’ appears at the end of the earlier mark and the letters ‘i’ and ‘a’ at the end of the mark applied for. However, in so far as it is common ground that the relevant Portuguese public will pronounce the letter ‘y’ of the earlier mark in the same way as the letter ‘i’ of the mark applied for, the only phonetic difference is in the pronunciation of the letter ‘a’.

70 The Board of Appeal essentially stated in paragraph 31 of the contested decision that the marks were conceptually similar because they will be understood by a Portuguese consumer as referring to a bank.

71 The Court considers that those findings are not vitiated by any error and must consequently be upheld. As is apparent from paragraph 56 above, although the two signs in question are not purely descriptive of the services at issue, the relevant public will perceive them to be inseparable units alluding to banking services and as a result will associate then with the same concept.

72 It follows from the above that, in order to assess whether there is a likelihood of confusion between the marks at issue, it is necessary to take into consideration the fact that they possess a certain degree of visual and conceptual similarity and a high degree of phonetic similarity and that the services at issue are similar.

73 The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case. That global assessment takes account of the degree of similarity between the marks and between the goods or services covered and implies some interdependence of the factors taken into account, with the result that a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see to that effect, judgments in Canon, cited in paragraph 30 above, EU:C:1998:442, paragraph 17, and of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

74 The Board of Appeal found, in paragraphs 33 to 41 of the contested decision that, given the overall similarity of the signs and the level of attention of the relevant public, there was a likelihood of confusion in respect of all services deemed to be identical or similar.

75 In the light of the considerations relating to the similarity of the services at issue and of the marks at issue, that conclusion of the Board of Appeal must be endorsed in respect of all of the services concerned, with the exception of ‘real estate services’.

76 In view of, first, the similarity of the services other than ‘real estate services’ (see paragraphs 30 to 38 above) and, secondly, the visual, phonetic and conceptual similarities between the marks (see paragraphs 59 to 71 above), it must be concluded that the Board of Appeal did not err in considering that there was a likelihood of confusion in the present case.

77 Furthermore, it should be noted that the fact that the relevant public’s level of attention is high is not in any event sufficient to rule out the likelihood of confusion. The simple fact that experts pay a high degree of attention, when they choose services, does not mean that they do not also take into account the fact that the two marks may have the same origin owing to similarities between then on a commercial level. Accordingly, the fact that the public is made up of professionals or the general public with a high attention level is not sufficient to rule out the possibility that they may think that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings. (judgments of 14 July 2005 in Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, ECR, EU:T:2005:288, paragraph 100, and 9 September 2008 in Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, ECR, EU:T:2008:319, paragraph 62).

78 On the other hand, since the ‘real estate services’ covered by the mark applied for and the ‘financial and banking services’ in Class 36 covered by the earlier mark are not similar, it must be held that one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 is not satisfied and that, accordingly, there is no likelihood of confusion since the relevant public will not think that those services could have the same commercial origin.

79 It follows that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, and therefore the action, is well founded only to the extent that the Board of Appeal wrongly found that there was a likelihood of confusion between the signs at issue in respect of the ‘real estate services’ covered by the Community trade mark application. Consequently the contested decision must be annulled to the extent that it upheld the appeal of Banco ActivoBank (Portugal) concerning the ‘real estate services’ covered by the Community trade mark application in Class 36.

81 Under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the Court may order each party to bear its own costs.

82 In the present case, the applicant and OHIM have failed in part of their claims. Accordingly, the parties must be ordered to bear their own costs.

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 14 February 2014 (Joined Cases R 649/2013-2 and R 744/2013-2) to the extent that it upheld the appeal of Banco ActivoBank (Portugal), SA concerning the ‘real estate services’ covered by the Community trade mark application in Class 36;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Bankia v OHMI - Banco ActivoBank (Portugal) (Judgment) [2015] EUECJ T-323/14 (17 September 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T32314.html Cite as: [2015] EUECJ T-323/14, ECLI:EU:T:2015:642, EU:T:2015:642

Court of Justice of the European Communities (including Court of First Instance Decisions)