Easy Asset Management AD v TeamBank AG Nürnberg
TeamBank AG Nürnberg (“TeamBank”) registered an EU trade mark application for the logo mark ‘e@sy Credit’ (shown below) covering “financial affairs, monetary affairs, insurance, real estate affairs, providing transmission of data, information, news, music and images for access via computer and telecommunications networks” in classes 36 and 38, as well as other goods in class 16.
Easy Asset Management AD (“Easy Asset”) sought to invalidate this trade mark registration based upon its earlier Bulgarian trade mark also for an Easy Credit logo (produced below) covering “insurance services, financial services, monetary affairs, real estate affairs and telecommunication services” in classes 36 and 38.
At the first hearing, the EUIPO’s Cancellation Division rejected Easy Asset’s application entirely. It found, in essence, that the marks at issue coincided only in their respective word elements, which it considered were manifestly descriptive of all activity linked to the world of finance, while their figurative elements, in which the distinctive character resides, were unrelated. The Cancellation Division concluded that there was no likelihood of confusion between the marks at issue.
Upon appeal, the Board of Appeal found, that, for the services in Classes 36 and 38 which are identical, there was a likelihood of confusion due to the strong similarity of the signs. In particular, the Board of Appeal noted that the relevant public would focus its attention on the word elements which dominate the two signs at issue, and that neither of those signs was sufficiently stylised to change the overall visual impression. It considered, inter alia, that the earlier mark had to be recognised as having at least a certain level of distinctiveness. Thus there was a likelihood of confusion for the services in classes 36 and 38 but not for the goods in class 16. Unhappy with the decision, TeamBank appealed to the General Court.
The General Court held that there was a likelihood of confusion between the marks, largely due to the strong visual similarity and rejected the argument that the word elements of the marks are descriptive and therefore the word elements should be ignored when an assessment of the overall impression given by the marks is made. The General Court observed that ‘the figurative elements in the earlier mark[s] are of lower importance due to their size, position and purely decorative shape’. They also found that the ‘@’ symbol would be understood and pronounced as the letter ‘a’, and that the marks shared a conceptual meaning even to those members of the public that do not speak English.
For further information on this issue, or for advice on EU trade mark proceedings, please contact our Intellectual Property Group.