The Court of Appeal (Inferior Jurisdiction) (the "Court") presided by Mr Justice Lawrence Mintoff on the 22 March 2023, in the case "Banca Farmafactoring S.p.A vs. The Comptroller of Industrial Property & JUD IP Limited" upheld the Comptroller of Industrial Property's (the "Comptroller") decision to reject the objection lodged by Banca Farmafactoring S.p.A (the "Appellant") towards the registration of 'BNF Bank' as a trade mark under Class 36 of the Nice Classification, which caters for services rendered in financial and monetary affairs.
The facts in this case were as follows:
On the 27 June 2019, the Appellant presented an opposition to the European Union Intellectual Property Office (the "EUIPO") towards the registration of 'BNF Bank' as an EU trade mark on the basis of Article 8(1)(b) of 'Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark' (the "EUTMR"). This article holds that the proprietor of an earlier trade mark can oppose the registration of a trade mark on the basis that it is similar to an earlier trade mark and that there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The earlier trade marks which were sought to be protected by the Appellant included: 'BFF', 'BFF BANKING GROUP', 'BFF a bank like no other', 'BFF A BANK LIKE NO OTHER' and 'BFF ACADEMY'.
The Appellant lodged another opposition with the Comptroller on the 29 July 2019, wherein it opposed the registration of such trade mark on the basis of Article 6(1)(b) of the 'Trademark Act', being the local equivalent to Article 8(1)(b) of the EUTMR. In turn, 'JUD IP Limited' (the "Defendant"), representing 'BNF BANK p.l.c.' replied on the 23 December 2019 and asked the Comptroller to reject this opposition on the basis that it was unfounded. The Comptroller proceeded to reject the Appellant's opposition, as it held that the trade marks were not identical or similar and do not cover services which are identical or similar.
In view of this decision, the Appellant appealed the Comptroller's decision before the Court on the 14 May 2021, on the basis that the Comptroller failed to consider the below factors when determining the probability of confusion between the different marks.
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 Malta since 2008, and it enjoys a reputation as one of the leading banks in the field of retail and commercial banking services in Malta, consequently being well known to the Maltese consumer. In contrast, the Appellant has no presence in Malta and are not authorised to offer banking services in Malta.
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. Metro-Goldwyn-Mayer Inc.' (Case C-39/97), decided on the 29 September 1998, wherein the 'interdependence principle' was explored. According to this principle, the analysis of the likelihood of confusion rests on a number of elements, such as the recognition of the mark in the market, the association that can be made between the previous mark and the contested mark, the degree of similarity between the marks, and the degree of similarity between the services in question.
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 Puma AG', (Case C-251/95), decided on the 11September 1997, wherein the Court of Justice held that the appreciation of the marks must be a full one, due to the consumer perceiving the brand as a whole. The disputed mark rightly creates the impression of a financial institution because of the word 'BANK', but the same cannot be said of the Appellant's marks.
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 European Union, due to their extensive use in the European Financial Market; the Defendant once again argued that the Appellant's institutions do not have a presence in Malta and do not offer their services in Malta.
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 Malta since March 27, 2007, and is one of six core domestic banks in Malta. It therefore contends that the relevant public cannot associate the Appellant's mark with the contested mark.
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.
This article was first published on The Malta Independed on 31/05/2023.
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