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Pronunciation taken into account in CJEU trade mark ruling

The way that a Portuguese consumer would pronounce a word was taken into account in a recent trademark ruling by the Court of Justice of the European Union (CJEU). 23 Sep 2015

The CJEU, Europe's highest court, was ruling on a decision by an Office for Harmonization in the Internal Market (OHIM) board of appeal on possible confusion between a European community figurative trade mark including the word Bankia and an earlier Portuguese word mark for the word Banky.

The court agreed with the board of appeal on the risk of confusion in relation to some services covered by the two trade marks, saying that the marks were visually, phonetically and conceptually similar.

The way that the words would be perceived by the average Portuguese speaker was considered relevant by the CJEU.

"Given that the relevant public consists of Portuguese consumers, the 'bank' element [of the trade marks] will not be perceived as purely descriptive, given the difference in spelling between that element and the Portuguese word 'banco'", the CJEU said.

Spanish bank Bankia had argued that the sounds 'banky' and 'bankia' are phonetically different. However, the CJEU said that as "in so far as it is common ground that the relevant Portuguese public will pronounce the letter 'y' of the earlier mark in the same way as the 'i' in Bankia," the only phonetic difference is in the pronunciation of the letter 'a', the CJEU said

The fact that one word ends in 'y' and one in 'ia' cannot reasonably be seen as "dominating the signs", as the "relevant public will not divide the signs at issue into two separate units, one descriptive and the other distinctive. It will perceive both signs as inseparable units alluding to banking services but which are at the same time invented and fanciful words," the court said.

The CJEU disagreed with the Board of Appeal on one aspect, saying that consumers will not be confused by 'real estate' services' and 'financial and banking' services,

Financial and banking services "do not have the same nature, the same intended purpose or the same method of use as real estate services" and the two are not, as a rule, offered on the same premises, it said

"In principle, real estate services are provided by separate branches of financial institutions" and activities kept separate, the court said.

"While financial and banking services may play a significant role in the purchase of a property, it cannot be inferred from that fact alone that consumers would be led to believe that the same undertaking was responsible for real estate services and financial services. It cannot be claimed that consumers looking for a property turn to a financial institution in order to carry out that task. On the contrary, in such cases, consumers generally turn, first, to a real estate agency to search for a property and, secondly, to a financial institution in order to fund the property transaction," the CJEU said.

It follows, therefore that the board of appeal "erred in finding that there was similarity between the ‘real estate services’ covered by the mark applied for and the ‘financial and banking services’ … covered by the earlier mark," it said.

The OHIM decision is partly annulled and the remainder of the action must be dismissed, the CJEU said.