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Bankia and Banky Confusion Yep!

Written by Michael Coyle on 18 September 2015

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The decision can be found here http://curia.europa.eu/juris/document/document.jsf?text=&docid=167923&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=936046

Here is a crash course in how the whole system works....

The applicant, Bankia, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 

as a mark was sought for the above sign claiming the colours brown (Pantone 7533 C) and green (Pantone 382 C):

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, 

– 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 38: ‘Telecommunications services’;

– 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’.

During publication a notice of opposition, was filed pursuant to Article 41 of Regulation No 207/2009, in respect of the registration of the mark applied for in respect of the services in Class 36. 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. The earlier mark covered 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’.

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

The Opposition Division partially upheld the opposition ie first round to BANKY. It 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.

It reached its decision as the element ‘bank’, which appears in both signs, may allude to banks or banking they considered that they had visual, phonetic and conceptual similarities.

Understandably were pissed and appealed. The Second Board of Appeal of OHIM dismissed the appeal and partially upheld the appeal lodged by Banco ActivoBank (Portugal), upholding the opposition in respect of the ‘real estate services’ in Class 36.

It remained pissed and appealed again....

Law

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. 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. 

The signs to be compared are the following:

Earlier mark BANKY

Mark applied for

 

It reviewed established case law and legal principles and agreed that there was no likelihood of confusion and the mark was to proceed to registration. 

What a palaver....sometimes it really does pay to appeal and appeal.....

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