Turkiye Garanti Bankasi v OHMI - Card & Finance Consulting (bonus & more) (Judgment) [2015] EUECJ T-33/13 (05 February 2015)

Judgment Background to the dispute On 19 April 2010, Card & Finance Consulting GmbH filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). The trade mark in respect of which registration was sought is the figurative sign reproduced below: The services in respect of which registration was sought are, inter alia, in Classes 35, 36, and 42 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 35: ‘Advertising; business management services; business administration; office functions; operating bonus systems; advertising by means of customer loyalty schemes; devising and handling of bonus schemes; dissemination of advertisements; computerised file managing; systematic ordering of data in computer databases; collating of data in computer databases; online advertising in computer networks; sales promotion (for others); storecard services’; – Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs’; – Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; upgrading of computer software; Computer software consulting; consultancy in the field of computers; provision of search engines for the Internet; restoration of computer dates’. The Community trade mark application was published in Community Trade Marks Bulletin No 117/2010 of 29 June 2010. On 23 September 2010, the applicant, Türkiye Garanti Bankasi AS, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, against registration of the mark applied for in respect of the services referred to in paragraph 3 above. The opposition was based on the earlier international figurative mark, registered on 19 December 2006 under the number 931921, having effect in the Benelux countries, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Greece, Spain, France, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovenia, Slovakia, Finland, Sweden and the United Kingdom, as reproduced below: The services covered by that mark, are in, inter alia, Classes 35, 36 and 42, and correspond, for each of those classes, to the following description: – Class 35: ‘Office functions; secretarial services, document reproduction, photocopying, typing services, word processing, compilation of information into computer databases, systematization of information into computer databases, telephone answering services, arranging newspaper subscriptions, rental of office machines and equipment, rental of vending machines; import and export agencies; business management of performing artists; expertise services for evaluation of industrial and commercial goods, auctioneering’; – Class 36: ‘Insurance services; accident life, fire, health and marine insurance underwriting, insurance investigation, actuary services, insurance consultancy; financial and monetary affairs; banking, financial management, financial analysis, financial sponsorship, financial information, factoring, leasing, issuance of credit cards for shopping by instalment, exchanging money; real estate affairs, real estate brokers, apartment house management services; real estate appraisal services; antique money appraisal, antique appraisal, jewellery appraisal, art appraisal; customs brokerage’; – Class 42: ‘Scientific and industrial examination, research services; engineering services; scientific research and development services (for third persons), chemical research services, mining expertise services, geological research services, oil field surveys, material and product testing services, meteorological services, engineering consultancy services, architectural services, technical project work services, mapping services, land examination and measurement services, landscaping services, city planning services, consultancy services concerning environmental protection, underwater examination services, quality control services, testing of road performance of vehicle services; computer programming services, computer software design services, computer software care services, consultancy services in the field of computer hardware, computer database creation services, computer data recovery services, computer data correction services, computer system analysis services, computer consultancy services, computer rental services, reproduction of computer programs services, installation of computer software services; design services; legal research services, copyright management services, consultancy services concerning industrial property; consultancy services in the field of trademark, patent and industrial design; graphic art design services, services determining authenticity of works of art’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009. On 8 August 2011, the Opposition Division partially upheld the opposition for part of the services in Classes 35, 36 and 42 covered by the mark applied for, corresponding, for each of those classes, to the following description: – Class 35: ‘Office functions; business management services; systematic ordering of data in computer databases; collating of data in computer databases; business administration; computerized file managing; operating bonus schemes; devising and handling of bonus schemes; storecard services’; – Class 36: ‘Insurance; financial affairs; monetary affairs; real estate affairs’; – Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; upgrading of computer software; Computer software consulting; consultancy in the field of computers; provision of search engines for the Internet; restoration of computer dates’. On 15 September 2011, Card & Finance Consulting filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation (EC) No 207/2009, against the Opposition Division’s decision. By decision of 12 November 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM upheld the appeal, finding that, given the differences between the signs at issue, there was no likelihood of confusion in this case within the meaning of Article 8(1)(b) of Regulation No 207/2009, without there being any need to analyse the cumulative condition relating to the similarity or the identical nature of the services concerned. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order OHIM to pay the costs. OHIM contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. The applicant argues, in essence, that the Board of Appeal erred in law, first, by finding that there was no similarity between the signs at issue, even though a visual and phonetic similarity results from the identical beginning of the two signs, comprising the word element ‘bonus’, which, in so far as it is understood by the relevant public, reinforces, conceptually, that similarity and, second, by failing to carry out any comparison of the services concerned, even though they are in part identical and in part similar. Accordingly, the Board of Appeal erred in finding that there was no likelihood of confusion in this case. OHIM disputes the applicant’s arguments, contending, in essence, that the visual, phonetic and conceptual differences between the signs at issue found by the Board of Appeal outweigh their common element ‘bonus’, which has only a weak distinctive character in respect of the services concerned. Therefore, according to OHIM, the Board of Appeal correctly concluded that, since those signs were not similar, the first of the cumulative conditions of Article 8(1)(b) of Regulation No 207/2009, was not satisfied and that, consequently, the opposition had to be rejected. According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not 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 trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark. Furthermore, under Article 8(2)(a)(iii) of Regulation No 207/2009, earlier trade marks means trade marks registered under international arrangements, which have effect in a Member State, with a date of application for registration that is earlier than the date of application for registration of the Community trade mark. According to settled case-law, the risk that the public may 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 goods or services in question and 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 covered (see judgment of 9 July 2003 in 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). 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, EU:T:2009:14 , paragraph 42 and the case-law cited). It is in the light of those principles that the assessment by the Board of Appeal of the likelihood of confusion between the signs at issue must be examined. The relevant public According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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, EU:T:2007:46 , paragraph 42 and the case-law cited). In paragraph 9 of the contested decision, the Board of Appeal correctly stated that the services at issue were directed at both the general public and business customers. Consequently, in order to compare the signs at issue, the Board of Appeal could not limit its analysis to only part of the relevant public merely by stating, in paragraph 16 of the contested decision, that the target public consisted of professionals who will devote an elevated degree of attention to the signs in question. Furthermore, it must be observed that, according to the case-law, the level of attention of the relevant public must be taken into account for the purpose of a global assessment of the likelihood of confusion (see order of 15 January 2010 in Messer Group v Air Products and Chemicals , C‑579/08 P, EU:C:2010:18, paragraph 51 and the case-law cited). Accordingly, the Board of Appeal was wrong to take into account, in paragraph 16 of the contested decision, the level of attention of a part of the relevant public for the purposes of assessing the similarity of the signs at issue. As regards the relevant territory, the Board of Appeal correctly found, in paragraph 11 of the contested decision, that it was necessary to assess the likelihood of confusion in the countries where the earlier international mark has effect, listed in paragraph 6 above, which is not disputed by the parties. The comparison of the signs The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs in question, must be based on the overall impression given by them, bearing in mind, in particular, their distinctive and dominant components. The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation 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 (see judgment of 12 June 2007 in OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 35 and the case-law cited). It is also apparent from the case-law that two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011 in Annco v OHIM — Freche et fils (ANN TAYLOR LOFT) , T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited). Visually, the Board of Appeal held, in paragraphs 14 to 17 of the contested decision, that the signs were different, despite their common word element ‘bonus’, on account of, first, the differences in other word elements, namely, ‘more’ and ‘net’ and, second, their respective figurative elements, conferring on the signs a different structure and overall impression. It is undisputed that the word ‘bonus’ is the common word element of both signs, since each is composed of two word elements. That word element, placed at the beginning of both signs and composed of five letters, is the longest of the word elements in the signs at issue. Furthermore, even if the word element ‘bonus’ were not regarded as the dominant element in the overall impression of the signs at issue, it could not be described as a negligible element. It is true, as OHIM correctly pointed out, that there are significant visual differences resulting from differences of colours, of sizes and of positions in the figurative elements of the signs at issue. However, these differences cannot completely counteract the similarity resulting from their common word element ‘bonus’. In those circumstances, the signs at issue cannot be held to be visually different overall as the Board of Appeal nevertheless found them to be in paragraph 17 of the contested decision. The signs have, at the very least, a certain degree of visual similarity. Phonetically, the Board of Appeal stated, in paragraph 18 of the contested decision, that, despite the fact that their first two syllables ‘bo’ and ‘nus’ are pronounced identically, the signs were different due to the different pronunciation of their latter syllables, namely, ‘and’ and ‘more’ in the case of the mark applied for and ‘net’ in the case of the earlier mark. In that regard, suffice it to observe, as the Board of Appeal itself found, that the first two syllables of the two signs at issue are identical. In the light of that finding, it cannot be argued, contrary to what the Board of Appeal held in paragraph 18 of the contested decision, that the signs are phonetically different overall. Those signs have at least an average degree of phonetic similarity due to the identical pronunciation of their first two syllables. Conceptually, the Board of Appeal held, in paragraph 19 of the contested decision, that the signs at issue were not similar. The Board of Appeal stated, in paragraph 20 of the contested decision, that the word ‘bonus’ formed part of the basic English vocabulary understood in all States of the relevant territory and referred to extra and unexpected advantages and benefits. Moreover, in paragraph 21 of the contested decision, it is noted that the ampersand representing the word ‘and’ and the English word ‘more’ of the mark applied for, meaning a large number or greater, also form part of the basic English vocabulary understood by the relevant public. From this fact, according to the Board of Appeal, the word element ‘bonus & more’ will be perceived as designating, inter alia, services allowing advantages and benefits as well as other undefined objects to be obtained. Similarly, the Board of Appeal held that the English word ‘net’ will also be understood by the relevant public as an abbreviation of the term ‘network’ and therefore that the word element ‘bonus net’ of the earlier mark will be perceived as referring to an internet site or a network of people where services are offered which confer an extra and unexpected advantage in addition to what is normally offered. It must be noted that, as the applicant correctly argued, the Board of Appeal’s reasoning is, at the very least, inconsistent. As the parties acknowledge, the word ‘bonus’ is understood by a part of the relevant public established in several Member States whose languages include that term, and especially by the English-speaking public throughout the relevant territory. As stated in paragraph 20 of the contested decision, without it being disputed by the parties, for the part of the relevant public who understand the word ‘bonus’, it conveys a meaning relating, inter alia, to an economic advantage or benefit. Therefore, it is clear that, for the part of the relevant public referred to in paragraph 39 above, there is necessarily a conceptual similarity between the signs at issue. It is true that the word ‘more’ preceded by the ampersand representing the word ‘and’ in the case of the mark applied for and the element ‘net’, in the case of the earlier mark, convey, at least for the English-speaking part of the relevant public, meanings which refer respectively to the concepts of ‘and more’ and ‘network’. However, the signs will be perceived by the relevant public in their entirety, without the different elements being analysed separately. Accordingly, the elements following the word ‘bonus’, to the extent that each one of them will convey a different meaning, will supplement without completely counteracting the meaning of the element ‘bonus’, to which both signs refer, even if that element has only a weak distinctive character with respect to the services covered by the signs in question. Consequently, it cannot be considered that the signs are not conceptually similar as the Board of Appeal nevertheless found in paragraph 19 of the contested decision. The signs at issue have, at the very least, a certain degree of conceptual similarity for a significant part of the relevant public, for whom the common element ‘bonus’ conveys an identical meaning. In view of all of those considerations, the Board of Appeal erred in finding that those signs were different overall, thereby excluding the existence of any similarity between those signs. It must be held, on the contrary, that the signs at issue have a certain degree of similarity. That conclusion cannot be invalidated by OHIM’s argument, relying on the judgment of 14 October 2009 in Ferrero v OHIM — Tirol Milch (TiMi KiNDERJOGHURT) (T‑140/08, EU:T:2009:400 ), that the fact the word ‘bonus’ appears in both signs does not automatically mean that there is a similarity between those signs, taking into account in particular the weak distinctive character of that word in relation to the services at issue, since consumers focus more on other elements of the marks at issue. It must be pointed out that, unlike the facts in the case giving rise to the judgment in TiMi KiNDERJOGHURT , paragraph 44 above ( EU:T:2009:400 ), the word element ‘bonus’, which is common to both signs, retains its autonomy in the signs in question and is not attached to other elements with which it forms a single entity so that it becomes barely perceptible. In addition, as stated in paragraph 30 above, although it was not regarded as the dominant element of the signs at issue, the element ‘bonus’ cannot be regarded as being of secondary importance in relation to other elements of those signs. It follows from the foregoing that the Board of Appeal was wrong to find that, in essence, there is no likelihood of confusion in the present case because the signs at issue are different overall. Given the similarity between the signs at issue, the Board of Appeal should have assessed whether the services covered by those signs were similar or identical and carried out, on that basis, a comprehensive analysis of the existence of a likelihood of confusion. Therefore, the single plea raised by the applicant must be upheld and the contested decision must be annulled in accordance with the form of order sought by the applicant. Costs Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As OHIM has been unsuccessful, inasmuch as the contested decision is annulled, and the applicant has sought an order for costs against it, OHIM must be ordered to bear its own costs and to pay those incurred by the applicant. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1) Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 12 November 2012 (Case R 1890/2011-4). 2) Orders OHIM to bear its own costs and to pay those incurred by Türkiye Garanti Bankasi AS. Frimodt Nielsen Dehousse Collins Delivered in open court in Luxembourg on 5 February 2015. [Signatures] * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII