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THURSDAY, 17 SEPTEMBER 2015
General Court: Bankia v. Banky

In Case T-323/14, the General Court reviewed the following opposition between Spanish and Portuguese banks

Bankia (Spain)

Banco ActivoBank (Portugal) - Opponent

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BANKY

Classes 9, 16, 35, 36, 38, 41 and 45 related to financial and banking affairs

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

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.

The Board of appeal partially upheld the Opposition Division's decision. The relevant public is Portuguese and consists of the general public and professionals with a high level of attention.

Secondly, the BoA confirmed the Opposition Division’s findings in respect of services, except with regard to ‘real estate services’. Those services constitute a broad category of services designating any services relating to real estate which include real estate appraisal services, which are similar to the ‘financial services’ of the earlier mark.

According to the OD, 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 BoA therefore concluded that those services shared distribution channels, end-users and also providers and that, consequently, they are similar.

Thirdly, as regards the comparison of the signs, visually and conceptually, the signs are similar and , phonetically, they are highly similar. Although 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, the element ‘bank’, although allusive, had a weak distinctive character in respect of the services in question.

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 is 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.

Finally, as regards the alleged reputation of “BANKIA” is is not relevant in the context of relative grounds for refusal since the highly distinctive character of a sign is relevant only in respect of the earlier mark and not the later mark.

 

The General Court annulled the BoA's decision on the following grounds regarding the comparison of services : 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.

 

Thus, as the Opposition Division noted, 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.

It follows that, as the applicant claims, the BoA 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.

Posted by: Laetitia Lagarde @ 14.18
Tags: General court, confusion, banky, bankia,
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