An elemental lesson
Roberto Pescador reflects on the comparison of signs in Bankia. T-323/14, Bankia SA v OHIM, CJEU, General Court, 17 September 2015.
T-323/14, Bankia SA v OHIM, CJEU, General Court, 17 September 2015
The General Court has partially upheld the Board of Appeal’s decision in the opposition brought by Banco ActivoBank (the “Opponent”) against an application by Bankia SA (the “Applicant”) for the mark BANKIA (figurative) on the basis of an earlier Portuguese mark for the word BANKY. However, the Court overturned the Board’s decision with regards to “real estate services”, considering these to be dissimilar to the “financial services” covered by the earlier mark.
This decision is interesting for two reasons: in relation to, first, the comparison of signs and, second, the comparison of “real estate services” and “financial services”, both in class 36.
Sign comparison
The Applicant argued that the word element BANK in both the earlier mark and the application was essentially descriptive of the services and, therefore, greater weight should be given to the remaining elements of the marks (IA and Y), which, it argued, were sufficiently different to avoid a likelihood of confusion.
Not surprisingly, the Court agreed with the view of the Opposition Division and Board of Appeal, namely that, merely because an element of a composite trade mark has weak distinctive character, this does not necessarily mean that element cannot be the dominant part of the sign; 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.
The Court also agreed with the Opposition Division and Board of Appeal that the average consumer would not break down the respective signs separating the word “bank” from the rest of the signs. On that basis, it concluded that the respective signs were highly similar phonetically and had a certain degree of visual and conceptual similarity.
The Court also rejected the Applicant’s argument that the mark applied for had a highly distinctive character on account of the reputation it had acquired through use. The Court rightly reminded the Applicant that, although a highly distinctive character would be relevant in the context of absolute grounds for refusal or invalidation of a mark, it is irrelevant in the context of relative grounds (other than in relation to the earlier mark).
Service comparison
The Court, however, disagreed with the Board of Appeal in relation to its finding that real estate services and financial services were similar. The Court stated that the different nature, intended purpose, and method of use of the respective services meant that they were dissimilar. It also refuted the Board of Appeal’s finding of complementarity: such services are usually provided by separate branches of financial institutions, so that financial activities are separate from any real estate activities, and it could not be argued that consumers looking for a property would turn to a financial institution.
Useful guidance
This decision, although not ground-breaking, provides useful guidance for potential conflicts based on earlier rights, as it clarifies, first, the potential relevance of elements with a low level of distinctiveness within a sign and, second, the relationship between financial services and other services covered under the same class.
Roberto Pescador is a Senior Trade Mark Attorney at King & Wood Mallesons
Roberto is a qualified Trade Mark Attorney and a Spanish-qualified lawyer, and has extensive experience in trade marks.