Abarca v EUIPO - Abanca Corporacion Bancaria (ABARCA SEGUROS) (EU trade mark - Judgment) [2020] EUECJ T-106/19 (29 April 2020)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark ABARCA SEGUROS — Earlier EU word mark ABANCA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)

Abarca — Companhia de Seguros SA, established in Lisbon (Portugal), represented by J. Pimenta and Á. Pinho, lawyers,

European Union Intellectual Property Office (EUIPO), represented by G. Schneider, J. Crespo Carrillo and H. O’Neill, acting as Agents,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Abanca Corporación Bancaria, SA, established in Betanzos (Spain), represented by M. Aznar Alonso, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 November 2018 (Case R 1370/2018-2), relating to opposition proceedings between Abanca Corporación Bancaria and Abarca — Companhia de Seguros,

composed of A. Marcoulli, President, S. Frimodt Nielsen and C. Iliopoulos (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on
20 February 2019,

having regard to the response of EUIPO lodged at the Court Registry on 24 May 2019,

having regard to the response of the intervener lodged at the Court Registry on 21 May 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 15 November 2016, the applicant, Abarca — Companhia de Seguros SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the figurative sign with a colour claim (pink: Pantone 486 C; light blue: Pantone 283 C; light green: Pantone 374 C; black: Pantone black C) as reproduced below:

3 The services in respect of which registration was sought are in Class 36 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 to the following description: ‘Insurance agencies; insurance underwriting, including bail bonding; bail bonding services; warranty services; insurance underwriting and appraisals and assessment for insurance purposes; administration of insurance portfolios; administration of insurance claims; administration of insurance business; administration of group insurance plans; administration of insurance plans; insurance agency and brokerage; consulting and information concerning insurance; insurance consultancy; financial consultancy and insurance consultancy; reinsurance consultancy; service insurance contracts; brokerage; reinsurance brokerage; insurance premium rate computing; insurance studies; brokerage of non-life insurance; insurance brokerage for property; transport insurance brokerage; brokerage of casualty insurance; providing information relating to insurance premium rate computing; providing reinsurance information; providing online information about reinsurance from a computer database or the internet; providing online information about insurance from a computer database or the internet; providing information relating to life insurance brokerage; providing insurance information; insurance guarantees; reinsurance information; insurance information; credit risk insurance; insurance of credit risks (factoring); reinsurance; reinsurance of claim settlements; claim adjustment for non-life insurance; provision of annuities; computerised processing of insurance claims; reinsurance of processing claims; provision of information relating to insurance and financial services; arranging of annuities; arranging of life insurance; arranging of insurance; life assurance brokerage; insurance brokerage; insurance investigations; health insurance; banking insurance; accident insurance; mortgage banking insurance; insurance for businesses; insurance for property owners; insurance for third party liability; medical insurance; marine insurance; mortgage insurance; life insurance; travel insurance; private health insurance; time and cost overrun risk insurance; time and cost completion risk assurance; home contents insurance; commodities insurance; professional indemnity insurance; insurance of buildings; credit insurance; aviation insurance; insurance against loss of credit; brokerage advisory services relating to insurance; insurance brokerage consultancy and information; insurance and financial information and consultancy services; financial guarantee assessment services; advisory services relating to life assurance; advisory services relating to insurance claims; advisory services relating to insurance contracts; financial advisory services relating to life insurance; consultancy services relating to insurance; annuity services; reinsurance actuarial services; variable insurance investment services; variable annuity investment services; insurance premium financing services; medical insurance brokerage services; consultancy and brokerage services relating to life insurance; consultancy and brokerage services relating to travel insurance; consultancy and brokerage services relating to vehicle insurance; consultancy and brokerage services relating to accident insurance; actuarial consulting and advisory services; insurance services relating to credit; insurance services relating to contingency planning; insurance services relating to pension funds; insurance subrogation; processing of insurance claims; real estate services; lending against securities; provision of prepaid cards and tokens; financial and monetary services and banking; fundraising and sponsorship; financial appraisal services; consultancy, advice and information relating to the aforesaid services’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2017/29 of 13 February 2017.

5 On 12 May 2017, the intervener, Abanca Corporación Bancaria, SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the trade mark applied for in respect of all the services in Class 36 referred to in paragraph 3 above, except for ‘real estate services’.

6 The opposition was based on the EU word mark ABANCA, registered on 2 February 2016 under number 12674081 for services in Class 36 corresponding to the following description: ‘Insurance services; finance services; monetary affairs; credit leasing; debt collection agencies: banking, information (financial -); credit & debit card services’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 By decision of 16 May 2018, the Opposition Division refused to register the trade mark applied for in respect of all the contested services referred to in paragraph 5 above, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

9 On 16 July 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.

10 By decision of 22 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs relating to the proceedings before the Opposition Division and before the Board of Appeal.

11 In essence, the Board of Appeal found that the relevant public was made up of the general public and professionals, whose attention varies from average to high (paragraph 21 of the contested decision). Furthermore, as regards the relevant territory, the Board of Appeal took the view that it was that of the European Union (paragraph 17 of the contested decision). However, it decided, as did the Opposition Division, that it was necessary, in essence, to assess whether there was a likelihood of confusion with regard to the Swedish and Danish-speaking parts of the relevant public (paragraph 18 of the contested decision). Moreover, the Board of Appeal found that the services in question were identical and referred, in essence, to the findings made in that regard by the Opposition Division (paragraphs 22 and 23 of the contested decision). As regards the visual and aural comparison of the marks at issue, the Board of Appeal concluded that they were similar to an average degree (paragraphs 31 and 32 of the contested decision). On the other hand, it considered that it was not possible to make a conceptual comparison of the marks at issue because they had no meaning for the Swedish and Danish-speaking parts of the relevant public (paragraphs 33 and 46 of the contested decision). Finally, the Board of Appeal took the view that, in the present case, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 and therefore dismissed the applicant’s appeal (paragraphs 48 and 49 of the contested decision).

– order the other parties to pay the costs of the present proceedings as well as those incurred before the Opposition Division and before the Board of Appeal of EUIPO.

15 EUIPO and the intervener raise a plea of inadmissibility with regard to the action in its entirety in so far as the applicant has not sought the annulment of the contested decision. Furthermore, as regards the first head of claim, to the effect that the contested decision should be altered, EUIPO contends that, if the Court were to reach the conclusion that the Board of Appeal had erred in finding that there is a likelihood of confusion, it should analyse whether there is such a likelihood for the parts of the relevant public other than the Swedish and Danish-speaking parts, even though the Board of Appeal did not carry out such an analysis. In accordance with case-law, the Court’s power to alter decisions does not confer on it the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Finally, EUIPO and the intervener take the view that the second head of claim is inadmissible on the ground, in essence, that the Board of Appeal and, a fortiori, the Court do not have jurisdiction to hear an application for registration of an EU trade mark.

16 As regards the plea of inadmissibility directed against the action in its entirety, it is sufficient to note that, by the first and second heads of claim, and as is clear from its pleadings, the applicant necessarily seeks not only the alteration of the contested decision, but also the annulment thereof, which, moreover, can be inferred from the presentation of the applicant’s single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 (see, to that effect, judgment of 27 February 2014, Advance Magazine Publishers v OHIM — Nanso Group (TEEN VOGUE), T‑509/12, EU:T:2014:89, paragraph 16).

17 Thus, contrary to what is submitted by EUIPO and the intervener, the present action is admissible in so far as it seeks the annulment of the contested decision.

18 The plea of inadmissibility directed against the action in its entirety, raised by EUIPO and the intervener, must therefore be rejected.

19 Furthermore, it should be noted that the power of the General Court to alter decisions under Article 72(3) of Regulation 2017/1001 is limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (see, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72). Thus, in the review carried out by the General Court under Article 72(3) of Regulation 2017/1001, it may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds set out in Article 72(2) of that regulation (see, to that effect, judgment of 30 April 2019, Lupu v EUIPO — Et Djili Soy Dzhihangir Ibryam (Djili DS), T‑558/18, not published, EU:T:2019:268, paragraph 38 and the case-law cited).

20 In the present case, it is therefore necessary to carry out, in the first place, a review of the assessment made by the Board of Appeal and, consequently, to examine the complaints made by the applicant for the purposes of obtaining the annulment of the contested decision. It is only in the second place that, if necessary, the admissibility of the first and second heads of claim will be analysed.

21 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, in that the Board of Appeal wrongly found that there is a likelihood of confusion.

22 EUIPO and the intervener contend that the single plea should be rejected and the action dismissed in its entirety.

23 Under Article 8(1)(b) of Regulation 2017/1001, 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, the 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

24 According to settled 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 identified (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33, and the case-law cited).

25 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks 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, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

26 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, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

27 In paragraph 17 of the contested decision, the Board of Appeal found, in essence, that the relevant public for the purposes of assessing the likelihood of confusion was that of the European Union. In paragraph 18 of the contested decision, nevertheless, it cited the case-law according to which, for an EU trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see judgment of 16 July 2014, Endoceutics v OHIM — Merck (FEMIVIA), T‑324/13, not published, EU:T:2014:672, paragraph 21 and the case-law cited). In the present case, the Board of Appeal therefore decided to follow the approach taken by the Opposition Division consisting of restricting the assessment of the likelihood of confusion to the Swedish and Danish-speaking parts of the relevant public for which the earlier mark ABANCA and the word element ‘abarca’ of the mark applied for have no meaning. Finally, in paragraph 21 of the contested decision, the Board of Appeal found that the services at issue are directed at both the public at large and at professionals and that, accordingly, the level of attention will vary from average to high.

28 There are no grounds on which those assessments may be called into question; moreover, they are not disputed by the parties.

29 In paragraph 23 of the contested decision, the Board of Appeal endorsed the findings of the Opposition Division relating to the identity of the services at issue. Those findings were not contested by the parties in the present action. In any event, there is nothing in the file to call those findings into question.

30 As a preliminary point, the signs to be compared are, on the one hand, the earlier trade mark ‘ABANCA’, which is made up solely of the word element ‘abanca’, and, on the other, the trade mark applied for ABARCA SEGUROS, which is a figurative mark made up of the word elements ‘abarca’ and ‘seguros’, as well as a figurative element representing a flying bird. The word element ‘abarca’, written in slightly stylised capital letters and in a black font, is above the word element ‘seguros’, which is written in capital letters and in an ordinary black font smaller in size than the word element ‘abarca’. Furthermore, the figurative element in the form of a bird coloured pink, light blue and light green blue is on the right-hand side of the sign, above the last letter of the word element ‘abarca’.

31 The global assessment of the likelihood of confusion in relation to 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. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the overall assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

32 The 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 of 12 June 2007, OHIM v Shaker, C‑334/05 P, 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. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components of the mark are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43).

33 In paragraphs 28 to 32 of the contested decision, the Board of Appeal found that the marks at issue are visually and aurally similar to an average degree, on the ground that, in essence, the earlier mark appears in an almost identical form in the first part of the mark applied for, which is also the visually dominant part of that mark. As regards the conceptual similarity between the marks at issue, in paragraph 33 of the contested decision, the Board of Appeal found that it is neutral, as those marks have no meaning for the Swedish and Danish-speaking parts of the relevant public.

34 In the present case, the applicant disputes the Board of Appeal’s assessment concerning the similarity of the marks at issue. In the applicant’s view, first, the Board of Appeal did not properly assess the distinctive and dominant elements of the mark applied for. Second, it assessed the similarity of the marks at issue without taking into account the overall impression created by them. When considered as a whole, those marks are completely different.

36 For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered (see judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).

37 Furthermore, where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements can be said to have only a low, or even very low, distinctive character. Most often, it will be possible to conclude that those elements have distinctive character only as a result of their combination with the other elements of the mark. Owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by the mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see paragraph 32 above).

38 In paragraphs 27 and 28 of the contested decision, the Board of Appeal stated that the mark applied for is made up of a visually dominant word element, namely the word ‘abarca’, an element which takes up a negligible portion of the mark, the word ‘seguros’ and a figurative element in the form of a bird which has a secondary position within the sign and could be perceived as a decorative background element by the Swedish and Danish-speaking parts of the relevant public.

39 Furthermore, in paragraph 27 of the contested decision, the Board of Appeal found that the word elements ‘abarca’ and ‘seguros’ have no meaning for the relevant Swedish and Danish-speaking parts of the relevant public and therefore are distinctive.

40 The applicant disputes those assessments. First, it argues that, in the mark applied for, the word element ‘seguros’ has ‘the same impact’ as the word element ‘abarca’, as it is highly distinctive in relation to the services at issue and is written in capital letters. Second, the figurative element of the mark applied for is also ‘eye-catching’ in view of its colours and configuration.

42 First, it should be noted, as observed by the Board of Appeal, that the word element ‘abarca’ is visually dominant in view of its large size and its central position within the sign (see paragraph 28 of the contested decision).

43 Second, the applicant does not dispute the Board of Appeal’s assessment that the word element ‘seguros’ has no meaning for the Swedish and Danish-speaking parts of the relevant public and, therefore, is distinctive (see paragraph 27 of the contested decision). However, the applicant claims that that word element is highly distinctive.

44 First of all, it must be noted that the applicant has not provided any arguments or evidence in support of that claim.

45 Next, there is no rule establishing that the lack of a conceptual link between a component of a mark and the goods or services which it covers automatically confers on that component a high degree of inherent distinctiveness (order of 16 May 2013, Arav v H.Eich and OHIM, C‑379/12 P, not published, EU:C:2013:317, paragraph 71).

46 Thus, in the absence of any other evidence put forward by the applicant or included in file, the argument alleging that the word element ‘seguros’ is highly distinctive, which is not substantiated, must be rejected.

47 Finally, although the distinctiveness of an element of a sign must be taken into account in order to determine whether that element is dominant (see, to that effect, judgment of 25 March 2010, Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 65 and the case-law cited), the fact remains that size and colour are also intrinsic parts of the element at issue which must be taken into account for the purposes of that analysis and, as an ancillary point, the relative position of the various components within the arrangement of the mark (see, to that effect, judgment of 20 May 2014, Argo Group International Holdings v OHIM — Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraphs 35 and 36 and the case-law cited). In view of its size and its central position within the mark applied for, the Board of Appeal was right to find that the word element ‘abarca’ is visually dominant, in particular when compared with the word element ‘seguros’.

48 That finding is not called into question by the fact that the word element ‘seguros’ is written in capital letters, a point also put forward by the applicant. First, the word ‘seguros’ is written in an ordinary font, which cannot therefore either convey an immediate and lasting impression which members of the relevant public may retain, or make it possible for the applicant’s services to be distinguished from those of the other providers on the market (see, by analogy, judgment of 27 October 2016, Caffè Nero Group v EUIPO (CAFFÈ NERO), T‑37/16, not published, EU:T:2016:634, paragraph 42). Second, the word element ‘abarca’ is also written in capital letters, but these are much larger than those of the word element ‘seguros’ and in a slightly stylised font.

49 The applicant has therefore not demonstrated that the element ‘seguros’ has ‘the same impact’ as the word ‘abarca’ or, therefore, that the Board of Appeal erred in finding that only the word ‘abarca’ is visually dominant.

50 Third, the applicant disputes, in essence, the Board of Appeal’s assessment that the figurative element of the mark applied for has a secondary position in the comparison of the marks at issue. The applicant claims that that element is ‘eye-catching’ in view of its colour and configuration.

51 In that regard, it should be noted, as observed by the Board of Appeal, (paragraph 28 of the contested decision), that where a trade mark is composed of verbal and figurative elements, the former are, in principle, considered more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by quoting their name than by describing the figurative element of the trade mark (judgments of 14 July 2005, Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37, and of 31 January 2012, Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, not published, EU:T:2012:36, paragraph 38).

52 The Board of Appeal therefore did not err in finding, in essence, that the figurative element of the mark applied for is less decisive than the word element ‘abarca’ for the purposes of comparing the marks at issue.

53 The applicant’s argument that the colour and configuration of the figurative element make it ‘eye-catching’ cannot invalidate the above finding. First, the figurative element is on the right-hand side of the trade mark applied for, that is, in a visually secondary position when compared with the word element ‘abarca’, which is in the centre of the sign.

54 Second, in view of the considerations set out in paragraphs 51 to 53 above, the mere colouring of the figurative element of the mark applied for cannot be sufficient to make it visually dominant when compared with the word element ‘abarca’.

55 The applicant has therefore not demonstrated that the Board of Appeal erred in the identification of the distinctive and dominant elements of the mark applied for.

56 In paragraph 31 of the contested decision, the Board of Appeal found that the marks at issue are visually similar to an average degree because the earlier mark appears in almost identical form in the first word element of the mark applied for, which is also the visually dominant element of the latter. For the Board of Appeal, that conclusion regarding similarity was not called into question by the differences between the marks at issue, namely the fourth letter of the word elements ‘abarca’ and ‘abanca’, the word element ‘seguros’ and the figurative element of the mark applied for.

57 The applicant complains that the Board of Appeal, in essence, examined the visual similarity of the marks at issue without carrying out an overall assessment of those marks. According to the applicant, the overall impression created by those marks is different.

59 Contrary to what is claimed by the applicant, the Board of Appeal carried out an overall visual assessment of the marks at issue. In paragraph 31 of the contested decision, it was careful to point out that the marks at issue differ in the fourth letter of the word elements ‘abarca’ and ‘abanca’, the word element ‘seguros’ and the figurative element of the mark applied for, while concluding that those differences did not call into question the finding that those marks are visually similar in view of the fact that the earlier mark appears in almost identical form in the first part of the mark applied for, namely the dominant element ‘abarca’.

60 In that regard, it should be noted, as observed by the Board of Appeal, that the fact that the only word element of the earlier mark is almost identical to the visually dominant element of the mark applied for, namely the word element ‘abarca’, is sufficient, in the present case, to establish a visual similarity between the marks at issue. The word elements ‘abanca’ and ‘abarca’ have the same structure and have five out of six letters in common. Furthermore, the effect of the similarity between those two word elements in the visual comparison of the marks at issue is all the greater because the word element ‘abarca’ is at the beginning of the mark applied for, that is, in the most visible part of the sign (see, to that effect, judgments of 14 July 2015, SELENIUM-ACE, T‑312/03, EU:T:2005:289, paragraph 41, and of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51).

61 Lastly, the Board of Appeal did not err in finding that the differences between the marks at issue do not call into question the conclusion regarding the visual similarity of those marks.

62 First, the difference between the word elements ‘abarca’ and ‘abanca’ lies only in one of six letters, namely the fourth letter. Thus, the initial part of those two word elements, which is the part to which consumers normally attach more importance (see judgment of 18 September 2012, Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 40 and the case-law cited), is identical, as is the final part of those word elements, namely the syllable ‘ca’.

63 Second, it is apparent from paragraphs 47 and 48 above that the word element ‘seguros’, although distinctive, is written below the distinctive and dominant word element ‘abarca’ and in a font size significantly smaller than the latter. Consequently, it cannot be ruled out that part of the relevant public will not take it into account, given that, in that regard, the average consumer only rarely has the chance to make a direct comparison between different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

64 Third, it is apparent from paragraphs 51 to 54 above that the Board of Appeal did not err in finding that the figurative element of the mark applied for is in a position that is visually secondary to the word element ‘abarca’ for the purposes of the comparison of the marks at issue, because consumers, in principle, will pay greater attention to the word elements than to the figurative element of composite marks (see, to that effect, judgments of 14 July 2005, SELENIUM-ACE, T‑312/03, EU:T:2005:289, paragraph 37, and of 31 January 2012, LA VICTORIA DE MEXICO, T‑205/10, not published, EU:T:2012:36, paragraph 38).

65 In view of the foregoing, the applicant has not demonstrated that there are errors in the Board of Appeal’s assessment of the visual similarity between the marks at issue. Although that visual similarity does not appear to be of a particularly high degree in the overall visual impression created by the marks at issue, it is nevertheless sufficiently marked to be perceived by at least part of the relevant public (see, to that effect, judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 84).

66 In paragraph 32 of the contested decision, the Board of Appeal noted that the marks at issue are pronounced in the same way as regards the sound of the letters ‘a’, ‘b’, ‘a’, ‘c’ and ‘a’, and differently as regards the sound of the fourth letter of the word elements ‘abarca’ and ‘abanca’, that is, as regards the sounds of the letters ‘r’ and ‘n’, respectively, and the sound of the word element ‘seguros’. Furthermore, the Board of Appeal stated that the relevant public would remember the mark applied for as ‘abarca’, as consumers tend to shorten the signs and mention only their dominant elements. The Board of Appeal therefore found that there is an average degree of aural similarity between the marks at issue.

67 The applicant disputes, in essence, that there is any aural similarity between the marks at issue. In its view, the Board of Appeal assessed the aural similarity between those marks without carrying out an overall assessment of them.

69 First of all, contrary to what is claimed by the applicant, it is apparent from paragraph 32 of the contested decision that the Board of Appeal found that the marks at issue are aurally similar after duly noting the differences and similarities between them (see paragraph 66 above). The applicant’s argument that there was no overall assessment of the marks at issue must therefore be rejected.

70 Next, it should be noted that, according to case-law, the average consumer will more readily refer to goods or services by citing the name rather than the figurative element of the mark (see, to that effect, judgment of 22 May 2008, NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited). The Board of Appeal therefore did not err in disregarding the figurative element of the mark applied for for the purposes of the aural comparison of the marks at issue.

71 Finally, it should be noted, as observed by the Board of Appeal, that the aural difference arising from the pronunciation of the word element ‘seguros’ is not decisive because, first, the average consumer will tend to abbreviate a mark comprising a number of terms in order to make it easier to pronounce and, second, that consumer generally takes more note of the beginning of a sign than of its end (see, to that effect, judgment of 24 February 2016, Tayto Group v OHIM — MIP Metro (REAL HAND COOKED), T‑816/14, not published, EU:T:2016:93, paragraph 76).

72 In the light of the foregoing, in spite of the aural differences between the marks at issue, referred to in paragraph 66 above, the Board of Appeal was right to find that, on account of the presence, at the start of the mark applied for, of the word ‘abarca’, which is pronounced in almost exactly the same way as the single word element of earlier mark, there is some aural similarity between the two signs taken as a whole (see, to that effect, judgment of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 123).

73 In paragraph 33 of the contested decision, the Board of Appeal took the view that the conceptual comparison of the marks at issue is neutral as they have no meaning for the Swedish and Danish-speaking parts of the relevant public. In paragraph 46 of the contested decision, it added that a conceptual comparison of the marks at issue could not be carried out.

74 The applicant does not dispute that the mark applied for has no meaning for the Swedish and Danish-speaking parts of the relevant public. However, it claims that the Board of Appeal erred in finding that the earlier mark has no meaning for those parts of the relevant public. According to the applicant, the public in the European Union is familiar with all the translations of the word ‘bank’. The applicant therefore claims that the Swedish and Danish-speaking parts of the relevant public would identify the word ‘bank’ in the earlier mark ABANCA.

75 In that respect, it is sufficient to note that the applicant has not submitted any evidence to demonstrate that the Swedish and Danish-speaking parts of the relevant public would understand, first, that the earlier mark includes the word ‘banca’ and, second, that that word is a translation of the word ‘bank’.

76 The applicant has therefore not demonstrated that the Board of Appeal erred in finding that the earlier mark has no meaning for the Swedish and Danish-speaking parts of the relevant public.

77 Furthermore, according to case-law, the conceptual comparison between marks is neutral when they have no meaning for the relevant public (see, to that effect, judgment of 27 February 2014, Advance Magazine Publishers v OHIM — López Cabré (VOGUE), T‑229/12, not published, EU:T:2014:95, paragraph 47 and the case-law cited).

78 Consequently, having taken the view that the figurative element of the mark applied for could be perceived as a decorative background element by the Swedish and Danish-speaking parts of the relevant public (see paragraph 38 above), the Board of Appeal did not err in finding that, for those parts of the relevant public, the conceptual comparison of the marks at issue is neutral.

79 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 (see, to that effect, judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 17, and of 6 October 2005, Medion,C‑120/04, EU:C:2005:594, paragraph 26).

80 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the signs, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

81 In paragraph 48 of the contested decision, after noting, first, that there is an overall impression of similarity between the marks at issue, second, that the services at issue are identical and, third, the normal degree of distinctiveness of the earlier mark, the Board of Appeal found that, in the present case, there is a likelihood of confusion at least for the Swedish and Danish-speaking parts of the relevant public, including those showing a higher level of attention.

82 The applicant disputes that finding on the grounds, first, that the marks at issue, assessed as a whole, are not similar and, second, that the earlier mark has a low degree of distinctiveness.

83 First, it should be recalled that Board of Appeal did not err in finding that the marks at issue are visually and aurally similar to an average degree (see paragraphs 65 and 72 above) and that the comparison of those marks is conceptually neutral, at least for the parts of the relevant public for whom the figurative element of the mark applied for is a decorative element (see paragraph 78 above). Furthermore, the earlier mark appears in almost identical form in the first word element of the mark applied for, which is also the dominant element of that mark (paragraph 46 of the contested decision).

84 In view of the foregoing, the Board of Appeal did not err in finding that the differences between the marks at issue are not sufficient to counteract their similarities (paragraph 46 of the contested decision).

85 Second, in paragraph 36 of the contested decision, the Board of Appeal found the earlier mark has no meaning for the Swedish and Danish-speaking parts of the relevant public. According to the Board of Appeal, it is highly unlikely that those parts of the relevant public would associate the earlier mark with the word ‘bank’. In paragraph 39 of the contested decision, the Board of Appeal concluded that the earlier mark therefore has a normal degree of distinctiveness.

86 The applicant claims that the earlier mark has a low degree of distinctiveness because, at the very least, it alludes to the banking services to which it relates.

87 However, for the reasons set out in paragraph 75 above, it is not necessary to call into question the Board of Appeal’s assessment that the earlier mark has no meaning for the Swedish and Danish-speaking parts of the relevant public and therefore has a normal degree of inherent distinctiveness.

88 That conclusion is not invalidated by the applicant’s argument that, since there are a number of trade marks registered for services in Class 36 which contain the word element ‘banca’, such as EU trade marks INFRABANCA (No 6293948), EXTRABANCA (No 7103088), CAMBIABANCA (No 7253503) and BANDENIABANCA (No 9820994), there is no likelihood of confusion in the present case.

89 In that regard, it is sufficient to note that, in principle, the legality of the decisions of Boards of Appeal is assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of those boards (see, to that effect, judgments of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 68 and the case-law cited, and of 13 June 2014, Grupo Flexi de León v OHIM (FLEXI), T‑352/12, not published, EU:T:2014:519, paragraph 32 and the case-law cited). Furthermore, the applicant has neither argued nor, a fortiori, established that the circumstances which justified the registration of EU trade marks INFRABANCA (No 6293948), EXTRABANCA (No 7103088), CAMBIABANCA (No 7253503) and BANDENIABANCA (No 9820994) exist in the present case. Consequently, contrary to what is argued by the applicant, the existence of those marks cannot have any effect on the assessment of whether there is a likelihood of confusion in the present case.

90 Finally, the applicant’s argument that the owner of a distinctive sign cannot require a competitor’s sign to maintain a greater distance in relation to his sign than he has observed himself in relation to existing signs, which is neither substantiated nor sufficiently clear to enable the Court to examine it, must be rejected.

91 Third, in view of the average degree of visual and aural similarity between the marks at issue as well as all the other relevant factors taken into account in accordance with the judgment of 9 July 2003, GIORGIO BEVERLY HILLS (T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited), namely, in the present case, the fact that the services in question are identical and the normal degree of distinctiveness of the earlier mark, the Board of Appeal was fully entitled to find that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. Moreover, it should be noted that there is also a likelihood of confusion for the section of the relevant public which displays a high level of attention, the Board of Appeal having correctly found, in that regard, that the average consumer of the services in question, even if he is a specialist, only rarely has the chance to make a direct comparison between the marks at issue and must place his trust in the imperfect picture of them that he has kept in his mind (paragraph 47 of the contested decision).

92 Since the single plea in law relied on by the applicant, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, is unfounded, the action must be dismissed in its entirety, without it being necessary to rule on the pleas of inadmissibility raised in defence by EUIPO and the intervener in respect of the first and second heads of claim.

93 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

94 Since the applicant has been unsuccessful in its claims, it must be ordered to pay the costs in accordance with the form of order sought by the EUIPO and the intervener, without it being necessary to examine the admissibility of the applicant’s claim that EUIPO and the intervener should be ordered to pay the costs that it incurred in the proceedings before the Opposition Division.

2. Orders Abarca — Companhia de Seguros SA to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Abanca Corporación Bancaria, SA.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Abarca v EUIPO - Abanca Corporacion Bancaria (ABARCA SEGUROS) (EU trade mark - Judgment) [2020] EUECJ T-106/19 (29 April 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T10619.html Cite as: [2020] EUECJ T-106/19

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