MONABANQ SA fails to prevent registration of MANO.BANK by Lithuanian bank
– MONABANQ SA opposed the registration of Mano bankas’ figurative mark MANO.BANK based on its earlier MONABANQ marks
– The overall impression created by the marks was found to be different
– The visual and semantic differences between the marks were sufficient to outweigh the slight phonetic similarity
On 1 August 2019 AB “Mano bankas”, a specialised bank in Lithuania, applied for the registration of the national figurative trademark MANO.BANK (No 2019 1292) (depicted below) for “insurance; financial affairs; monetary affairs; real estate affairs; savings bank services; banking; banking services related to cash deposits; credit bureau services; financial loan services; insurance services relating to credit” in Class 36:
On 26 November 2019 MONABANQ SA, a bank established in France which provides various banking services, filed an opposition (No PNZ-799) with the Appeals Division against the registration of MANO.BANK in Lithuania based on its earlier EU trademarks:
– the word mark MONABANQ (Registration No 005368097)
– the figurative mark MONABANQ (Registration No 005601224)
– the figurative mark MONABANQ (Registration No 018064036)
The earlier marks were registered for goods and services in various classes, including services in Class 36 such as:
insurance, financial affairs, monetary affairs, real estate affairs, credit services, issuing of travellers’ cheques and letters of credit, financial services providing payment facilities, debt collection agencies, saving banks, consultancy relating to financial management, research and obtaining financial loans; financing services, credit services and renewable money lending services, whether or not associated with the use of a bank card or cheque book; automatically renewed credits and loans, whether or not associated with the use of a bank card or cheque book; leasing; credit card services, insurance and reinsurance services in fields of all kinds; insurance underwriting and finance by telephone.
MONABANQ stated that the opposed trademark had been applied for in breach of Articles 8(1)(2) and 8(1)(3) of the Law on Trademarks of the Republic of Lithuania, since it was confusingly similar to its earlier trademarks because:
– the verbal element ‘mano.bank’, which was dominant in the mark, was similar to MONABANQ visually, phonetically and semantically, and the figurative element was used for decoration only; and
– the services covered by the compared marks in Class 36 were identical or similar.
Finally, MONABANQ argued that the opposed trademark could take unfair advantage of, or be detrimental to, the distinctive character of its earlier trademarks, which have a reputation in France and, therefore, in the European Union.
In response to the opposition, Mano bankas stated that each trademark should be protected in the form in which it is registered, meaning that all the elements of the opposed mark and the impression given by those elements were protected. The figurative element was equally as important as the verbal element ‘mano.bank’ and was not negligible. The compared marks differed visually and phonetically, while the marks could not be compared semantically since the earlier marks consisted of the invented word ‘monabanq’. If an earlier EU trademark is not known in the member state in which a later trademark is used, the use of the later mark cannot, in principle, take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.
On 3 July 2020 the Appeals Division refused the opposition and declared that the opposed mark met the requirements for registration based on the following arguments:
– One of the fundamental principles of the legal protection of trademarks is that of territoriality. The owner has exclusive rights to the trademark and may enforce these rights only where the trademark is protected in accordance with the procedure established by the legal acts of that state. Here, the opposition had been filed against an application for a Lithuanian trademark. Therefore, the similarity of the marks and the likelihood of confusion should be assessed from the point of view of the average Lithuanian consumer.
– The compared marks created different overall impressions. The earlier word mark MONABANQ consisted only of the word element ‘monabanq’, which determined the overall impression of this mark. In contrast, the distinctive character of the opposed mark was determined by both the verbal and the figurative elements, and a striking graphical element consisting of stylised triangles was placed at the beginning of the mark, which is considered to be the most noticeable place. Further, the opposed mark consisted of a combination of two words, ‘mano’ (‘my/mine’ in English) and ‘bank’, which directly described the services in Class 36. When comparing the mark MANO.BANK and the word mark MONABANQ visually, it was noticeable that the earlier mark consisted of only one word, whereas the opposed mark gave the impression of a longer mark consisting of a larger number of elements. In addition, the opposed mark begins with a distinctive graphical element, which is not present in the earlier mark.
– When comparing the opposed mark with the figurative MONABANQ marks visually, it was acknowledged that the repetition of the same letters and the number of verbal elements in the marks was not sufficient to render them visually similar, as the other components were completely different (ie, different colours and graphical elements). In addition, some Lithuanian consumers would perceive the element ‘bank’ as not distinctive and would pay attention to the different elements (ie, the bright graphical element and the Lithuanian word ‘mano’).
– The compared marks had a certain level of phonetic similarity due to the repetition of some letters. However, as the different letters ‘O’ and ‘A were placed at the beginning, the first syllables, [mo-na] and [ma-no], would be pronounced differently.
– Semantically, the first element ‘mano’ in MANO.BANK was a Lithuanian word with a clear meaning. The descriptive word ‘bank’ refers to banking activities. In contrast, the mark MONABANQ would be perceived by the average Lithuanian consumer as an artificial word with no specific meaning. MONABANQ’s arguments regarding the unambiguous perception of the element ‘banq’ as a reference to a bank were questionable and unfounded. There was no evidence that Lithuanian consumers would undoubtedly perceive ‘banq’ as referring to a bank, especially when such word is not the correct French word for ‘bank’ (‘banque’). Given that semantic similarity may be an independent criterion for the evaluation of similarity between marks and that semantic differences can counteract visual and phonetic similarities, it was concluded that the compared marks were not semantically similar.
– Since the compared trademarks were not confusingly similar, the comparison of the services for which the trademarks were registered was irrelevant.
– The enhanced distinctive character of the earlier mark was to be taken into account in assessing whether the similarity of the marks or the goods/services was sufficient to create a likelihood of confusion. Pursuant to the Lithuanian case law, “trademark awareness does not in itself presuppose the similarity of the later mark”. Thus, the higher distinctive character of the earlier mark did not, in itself, offset the fact that the marks were not similar.
– Financial services are specialised services that may have important financial consequences for their users. Therefore, the consumers’ level of attention will be rather high when choosing such services.
– Given that the overall impression created by the marks was different, that there were significant visual differences between the marks, and that the opposed mark had a clear meaning for Lithuanian consumers, the visual and semantic differences were sufficient to outweigh the slight phonetic similarity, especially given that the relevant public is very attentive and well informed.
– In order to analyse the reputation claim, it was necessary for the marks to be at least similar. In the absence of similarity between the marks, the assessment of the arguments and evidence submitted by MONABANQ concerning the reputation and high distinctive character of its earlier mark was not legally relevant.
The Appeals Division thus rejected the opposition as unfounded.
The term to appeal the decision of the Appeals Division will expire on 3 October 2020. If no appeal is filed, the decision will become final.
This article first appeared on WTR Daily, part of World Trademark Review, in September, 2020. For further information, please go to www.worldtrademarkreview.com