The Court of Appeal (Inferior Jurisdiction) (the "Court") presided by Mr
The facts in this case were as follows:
On the
The Appellant lodged another opposition with the Comptroller on the
In view of this decision, the Appellant appealed the Comptroller's decision before the Court on the
1) The Similarity of Services
The Appellant argued that, in analysing the similarity of the services offered, the following should also be taken into consideration: the nature of the services, the aim of the services, and whether they are in competition with each other. They held that the likelihood of confusion exists where the consumer assumes that the services covered by both marks are the same, or that the undertakings are economically linked. Given that the services offered by the Appellant and 'BNF BANK p.l.c.' are identical, the differences between the marks in question must also be high. In turn, the Defendant maintained that 'BNF BANK p.l.c.' has been operating in
2) The Relevant Public
Despite the alleged similarity between the services offered by the respective parties, the Defendant held that according to EU jurisprudence, the likelihood of confusion can be diminished by the high degree of attention of the relevant public and the negligible degree of similarity between the respective marks. Reference was made to 'Canon Kabushiki Kaisha v.
The Defendant held that the average consumer in question is considered to be well informed and attentive, given that the services offered by the parties are of a specialized nature, and may have important financial consequences for them. Therefore, where the marks are similar to a low degree, and the relevant public shows a high degree of attention, any overlap that may exist between the services provided under the respective brands, will have much less significance in the course of the full evaluation of the brands in question.
3) The Visual, Phonetic and Conceptual similarity
The Appellant maintained that the general impression made by the different marks, in view of their visual, phonetic, and conceptual similarity, was not taken into consideration by the Comptroller in reaching his decision. They proceeded to argue that the Comptroller should have analysed the similarity of the marks by comparing their dominant elements, which in its opinion were 'BFF and 'BNF' respectively. As such, the terms 'banking group', 'a bank like no other' and 'academy' are elements that the consumer is likely to see as decorative or descriptive in relation to the services offered by them.
In relation to the visual, phonetic and conceptual similarity of the marks, the Defendant held that, as per guidelines issued by the EUIPO: "The key elements for determining the overall phonetic impression of a trade mark are the syllables and their particular sequence and stress." Here, 'BFF' is made up of two verbal elements, while 'BNF' is made up of a one three-letter acronym. The Defendant also made reference to 'SABEL BV v
4) The Distinctive Character
Whilst the Appellant believed that it had presented evidence to the Comptroller which showed the distinctive character of the marks throughout the
On a final note, the Defendant pointed out that the contested mark only constitutes a rebranding of its previous mark 'BANIF BANK' and that 'BNF Bank p.l.c.', which makes use of the disputed mark, has been licensed to operate in
The Court's considerations:
The Court started by considering the Appellant's argument that the distinctive acronyms 'BFF' and 'BNF' should be the elements primarily compared; and that the words 'banking group', 'a bank like no other' and 'academy' are negligible in the general perception of the marks. However, the Court did not share the same view, and it maintained that excluding these terms from its analysis would not lead to an appropriate and fair result. Moreover, the word 'BANK' which follows 'BNF' is written using the same font and size, in such a way that the disputed mark must be evaluated in its entirety. This led the Court to recognize that there is a substantial difference between 'BFF', where there is no reference to the service offered under the mark, and the mark 'BNF BANK', where the word 'BANK' makes the clear connection as to the service offered by the party.
The Court also recognized that whilst the main difference between the marks rests in the different middle letter, this cannot lead to confusion amongst the relevant public, given that the services offered by the parties are of a specialized nature, and may have important financial consequences for them. It also held that, even if some of the services offered by the Appellant and Defendant are identical or similar in nature, the marks are distinct from one another, and do not create any confusion amongst the relevant public.
For these reasons, the Court proceeded to deliver its judgement by rejecting the Appellant's appeal and confirming the appealed decision in its entirety. All judicial expenses were to be borne by the Appellant.
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