• Banco Finantia opposed the mark FINASTA in Classes 35 and 36 based on the earlier mark BANCO FINANTIA, also covering services in Classes 35 and 36
• The Opposition Division noted that the overlapping element of the earlier mark was weak
• The differences between the signs would not go unnoticed, especially by the highly attentive consumer

Lithuanian company AB Invalda INVL, an asset management group, has defended its EU word mark FINASTA in opposition proceedings filed by Portuguese bank Banco Finantia SA (Opposition Nо B 3 150 256).

Background

On 17 May 2021 Invalda applied for registration of the EU word mark FINASTA (No 018472953) for services in Classes 35 and 36. On 9 July 2021 Banco Finantia filed an opposition with the EUIPO against all the services covered by the FINASTA mark based on its earlier EU figurative trademark depicted below (Registration No 17693185), registered for services in Classes 35 and 36:

The opposition was based on Article 8(1)(b) of Regulation 2017/1001.

Decision

The EUIPO’s Opposition Division rejected the opposition in its entirety, thus allowing the registration of the EU trademark FINASTA (No 018472953).

Having examined the compared services in Classes 35 and 36, the Opposition Division stated that the contested services were partly identical or similar to varying degrees, and partly dissimilar. As the compared services might be expensive or have important financial and/or commercial consequences, the Opposition Division admitted that the degree of attentiveness of the public, which consisted of the public at large and professionals, was relatively high.

As regards the compared signs, the Opposition Division indicated that the earlier sign BANCO FINANTIA (figurative) contained the verbal element ‘banco’, which is weak because the word ‘banco’ means ‘bank’ in Portuguese and Spanish. Moreover, that word has similar equivalents in other languages (‘banca’ in Italian, ‘banque’ in French, ‘bank’ in English, German and Polish, ‘banka’ in Croatian, Slovenian, Slovak and Latvian, and ‘bankas’ in Lithuanian). Therefore, at least part of the public might easily understand the meaning of the verbal element ‘banco’ in relation to the services in question. In other languages, the equivalent term significantly differed, such as ‘pank’ in Estonian. However, the Opposition Division assessed the signs from the perspective of the public for whom the verbal element ‘banco’ is meaningful and descriptive, since this was the most advantageous scenario for the opponent.

As regards the verbal element ‘Finantia’, the Opposition Division stated that it was weak because it had the same root as the word ‘finance’, with similar equivalents in most of the relevant languages. Considering the relevant services, it concluded that ‘Finantia’ would be perceived as referring to ‘finance’.

The earlier mark’s figurative element was found distinctive to a normal degree, as it was not a basic shape and had no meaning for the relevant services.

The Opposition Division further considered that the contested sign’s verbal element ‘Finasta’ would generally be perceived as a fanciful, meaningless word and, therefore, as distinctive to a normal degree. Nevertheless, it could not be excluded that part of the public might perceive the verbal component ‘fin’ as a reference to finance, at least in the context of financial services. Therefore, the element ‘fin’ would have a very limited distinctive character in respect to finance-related activities or institutions. The remaining component, ‘asta’, would remain fanciful and distinctive to a normal degree.

Having considered the distinctiveness and impact of the signs’ components, the Opposition Division stated that the signs were visually similar to a low degree, aurally similar to a below-average degree and either conceptually dissimilar or similar to a low degree.

However, a likelihood of confusion was denied, taking into account all the factors relevant to the opposition – first of all the impact of the components that are non-distinctive or weak. According to settled case-law, if trademarks have identical parts that are weak or devoid of distinctive character, the differences between the signs are to be given more importance in the overall assessment of the signs.

The Opposition Division noted that the overlapping element of the earlier mark was weak. This element would be perceived as a whole, as a reference, misspelling or variation of the word ‘finance’, whereas in the contested sign, the word ‘Finasta’ would be generally perceived as fanciful, and some consumers could grasp the component ‘fin’ as referring to finance. This circumstance affected the overall impression and the way the signs were perceived and led, conceptually, to either a conceptual dissimilarity, or toa slight similarity based on a meaning of ‘finance’, which is essentially descriptive and cannot be monopolised.

The Opposition Division indicated that, although the compared signs coincided visually and aurally in a large number of letters/sounds of the verbal elements, there were significant differences in the second part of the signs, ‘ntia’ and ‘sta’, that were readily perceptible and determinative in the overall impression produced. Besides, the earlier mark also included the verbal element ‘banco’ in the first place, despite its descriptive nature, and a distinctive figurative element in the form of a logo.

The high degree of attention paid by the relevant public further prevented any likelihood of confusion between the compared marks as the differences established by the Opposition Division would not go unnoticed. On the contrary, these differences would neutralise the similarities and make the overall impressions between the signs sufficiently distinguishable in the minds of the relevant public.

The Opposition Division further stated that this absence of a likelihood of confusion would equally apply a fortiori to the part of the public that would not perceive a meaning in ‘banco’ or, if perceived, not in such a clear and descriptive way. This was because this element would have a greater capacity to indicate commercial origin, which would increase the differentiating impact of this element within the overall impression created by the signs, rendering the signs less similar.

Considering all the above, there was no likelihood of confusion on the part of the public. Therefore, the opposition was rejected.

The term to appeal this decision expired on 10 September 2024. As no appeal was filed, the decision became final and the contested trademark was registered.

AAA Law represented AB Invalda INVL in this case.

This article first appeared in WTR Daily, part of World Trademark Review, in October 2024. For further information, please go to www.worldtrademarkreview.com