Judgments nº T-106/19 of Tribunal General de la Unión Europea, April 29, 2020

• Resolution Date: April 29, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-106/19

(EU trade mark - Opposition proceedings - Application for EU figurative mark ABARCA SEGUROS - Earlier EU word mark ABANCA - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-106/19,

Abarca - Companhia de Seguros SA, established in Lisbon (Portugal), represented by J. Pimenta and Á. Pinho, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by G. Schneider, J. Crespo Carrillo and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Abanca Corporación Bancaria, SA, established in Betanzos (Spain), represented by M. Aznar Alonso, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 November 2018 (Case R 1370/2018-2), relating to opposition proceedings between Abanca Corporación Bancaria and Abarca - Companhia de Seguros,

THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli, President, S. Frimodt Nielsen and C. Iliopoulos (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on20 February 2019,

having regard to the response of EUIPO lodged at the Court Registry on 24 May 2019,

having regard to the response of the intervener lodged at the Court Registry on 21 May 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 15 November 2016, the applicant, Abarca - Companhia de Seguros SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the figurative sign with a colour claim (pink: Pantone 486 C; light blue: Pantone 283 C; light green: Pantone 374 C; black: Pantone black C) as reproduced below:

3 The services in respect of which registration was sought are in Class 36 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 to the following description: ‘Insurance agencies; insurance underwriting, including bail bonding; bail bonding services; warranty services; insurance underwriting and appraisals and assessment for insurance purposes; administration of insurance portfolios; administration of insurance claims; administration of insurance business; administration of group insurance plans; administration of insurance plans; insurance agency and brokerage; consulting and information concerning insurance; insurance consultancy; financial consultancy and insurance consultancy; reinsurance consultancy; service insurance contracts; brokerage; reinsurance brokerage; insurance premium rate computing; insurance studies; brokerage of non-life insurance; insurance brokerage for property; transport insurance brokerage; brokerage of casualty insurance; providing information relating to insurance premium rate computing; providing reinsurance information; providing online information about reinsurance from a computer database or the internet; providing online information about insurance from a computer database or the internet; providing information relating to life insurance brokerage; providing insurance information; insurance guarantees; reinsurance information; insurance information; credit risk insurance; insurance of credit risks (factoring); reinsurance; reinsurance of claim settlements; claim adjustment for non-life insurance; provision of annuities; computerised processing of insurance claims; reinsurance of processing claims; provision of information relating to insurance and financial services; arranging of annuities; arranging of life insurance; arranging of insurance; life assurance brokerage; insurance brokerage; insurance investigations; health insurance; banking insurance; accident insurance; mortgage banking insurance; insurance for businesses; insurance for property owners; insurance for third party liability; medical insurance; marine insurance; mortgage insurance; life insurance; travel insurance; private health insurance; time and cost overrun risk insurance; time and cost completion risk assurance; home contents insurance; commodities insurance; professional indemnity insurance; insurance of buildings; credit insurance; aviation insurance; insurance against loss of credit; brokerage advisory services relating to insurance; insurance brokerage consultancy and information; insurance and financial information and consultancy services; financial guarantee assessment services; advisory services relating to life assurance; advisory services relating to insurance claims; advisory services relating to insurance contracts; financial advisory services relating to life insurance; consultancy services relating to insurance; annuity services; reinsurance actuarial services; variable insurance investment services; variable annuity investment services; insurance premium financing services; medical insurance brokerage services; consultancy and brokerage services relating to life insurance; consultancy and brokerage services relating to travel insurance; consultancy and brokerage services relating to vehicle insurance; consultancy and brokerage services relating to accident insurance; actuarial consulting and advisory services; insurance services relating to credit; insurance services relating to contingency planning; insurance services relating to pension funds; insurance subrogation; processing of insurance claims; real estate services; lending against securities; provision of prepaid cards and tokens; financial and monetary services and banking; fundraising and sponsorship; financial appraisal services; consultancy, advice and information relating to the aforesaid services’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2017/29 of 13 February 2017.

5 On 12 May 2017, the intervener, Abanca Corporación Bancaria, SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the trade mark applied for in respect of all the services in Class 36 referred to in paragraph 3 above, except for ‘real estate services’.

6 The opposition was based on the EU word mark ABANCA, registered on 2 February 2016 under number 12674081 for services in Class 36 corresponding to the following description: ‘Insurance services; finance services; monetary affairs; credit leasing; debt collection agencies: banking, information (financial -); credit & debit card services’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 By decision of 16 May 2018, the Opposition Division refused to register the trade mark applied for in respect of all the contested services referred to in paragraph 5 above, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

9 On 16 July 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.

10 By decision of 22 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs relating to the proceedings before the Opposition Division and before the Board of Appeal.

11 In essence, the Board of Appeal found that the relevant public was made up of the general public and professionals, whose attention varies from average to high (paragraph 21 of the contested decision). Furthermore, as regards the relevant territory, the Board of Appeal took the view that it was that of the European Union (paragraph 17 of the contested decision). However, it decided, as did the Opposition Division, that it was necessary, in essence, to assess whether there was a likelihood of confusion with regard to the Swedish and Danish-speaking parts of the relevant public (paragraph 18 of the contested decision). Moreover, the Board of Appeal found that the services in question were identical and referred, in essence, to the findings made in that regard by the Opposition Division (paragraphs 22 and 23 of the contested decision). As regards the visual and aural comparison of the marks at issue, the Board of Appeal concluded that they were similar to an average degree (paragraphs 31 and 32 of the contested decision). On the other hand, it considered that it was not possible to make a conceptual comparison of the marks at issue because they had no meaning for the Swedish and Danish-speaking parts of the relevant public (paragraphs 33 and 46 of the contested decision). Finally, the Board of Appeal took the view that, in the present case, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 and therefore dismissed the applicant’s appeal (paragraphs 48 and 49 of the contested decision).

Forms of order sought

12 The applicant claims that the Court should:

- totally alter the contested decision;

- consequently, accept the registration of the trade mark applied for;

- order the other parties to pay the costs of the present proceedings as well as those incurred before the Opposition...