In the late 90s, a Portuguese bank called BIG entered the market and started offering brokerage services, which it gradually expanded to retail banking services.
In the aftermath of the financial crisis of 2008, the Portuguese bank BPN was nationalised by the Portuguese Government. In 2012, its remnants were bought by the Angolan bank BIC, which merged with the former and started operating in Portugal under the name BIC.
This resulted in two different banks operating under the names BIG and BIC. Confused? So were the Portuguese courts.
BIC’s first EU trademark was filed in 2008, which matured to registration. However, in 2012, BIC filed applications in Portugal for a trademark and a logotype and BIG pursued court proceedings claiming there was a likelihood of confusion.
In 2017, the court ruled in favour of BIG and agreed that the names were confusingly similar. BIC was ordered to change its trade mark and it changed it to EUROBIC.
Following the court's decision, 14 applications for EUROBIC were filed before the Portuguese IP Office and EUIPO, including a word mark. Oppositions filed by BIG bank soon followed against the newly applied trade marks.
The first decision issued by EUIPO’s Opposition Division was in favour of BIG. However, EUIPO’s First Board of Appeal (BOA) reversed the decision and ruled in favour of EUROBIC, concluding that there was no likelihood of confusion.
BIG bank appealed to the EU’s General Court (EGC). In its decision in March 2022 (case T125/21), the EGC sided with the owner of EUROBIC, rejecting the likelihood of confusion claim.
The EGC's decision marked the apogee of a 14-year legal quarrel between these two banks and could signal an end to the disputes, which are still ongoing before the national courts. While the autonomy of national/European Union trademarks is a staple of the system and divergent decisions are possible to an extent, it is also true that the legal reasoning behind the evaluation of likelihood of confusion is largely harmonised. A different decision is not expected.
The first takeaway from Part I is that actual confusion in the market does matter. BIG brought to the attention of the courts several cases where clients mistakenly visited one bank’s agency thinking it was the other.
Secondly, the EGC should not be seen as an omniscient narrator but more like a character that only partakes from Part II onwards, considering that it dismissed the links to Part II, as successfully made by BIG in Part I.
Furthermore, it is worth noting that the relevant public for the banking sector can be either a consumer or a professional audience with a high level of attention. This is supported by previous case law which claims that banking services are not contracted daily and can have a big impact on the financial situation of the consumer. Thus, consumers are more likely to pay attention to smaller differences between the signs.
The crux of Part II was analysing the degree of distinctiveness of the signs. While the terms BANCO (bank in Portuguese) and EURO were deemed of lower distinctiveness, the court stressed that it would not fall logically that BIC was the dominant element of the sign. Thus, the court stated that elements with lower distinctiveness should still be considered when assessing the likelihood of confusion, considering that they would still “attract the attention of the relevant public because of [their] length and position at the beginning of that mark”.
This methodological step meant that the subsequent comparison made by the court found a lower degree of similarity between the signs (BANCO BIG vs EUROBIC), which meant that the likelihood of confusion was not found.
This departed from the initial decision by the Opposition Division which found that while the words BANK and EURO were distinctive to a low degree, it would, however, conclude them to be aurally similar to an average degree.
This case is interesting from a legal point of view as it allows us to draw much clearer lines between what is – and what isn’t – acceptable under the likelihood of confusion test.
In most cases, where the likelihood of confusion is found to exist, companies choose to rebrand to a completely different trade mark. Following the ruling in Part I, the rebrand from BIC to EUROBIC was remarkably similar and something that very few companies could risk attempting.
A few reasons might explain this risky decision, including the legal peculiarities of the banking trade marks and the commercial need for the Portuguese EUROBIC bank to crossover clients from its office in Angola, which is still called BIC.
As shown by the EGC, the determination of the relevant public and the degree of attention is crucial in determining the outcome of the decision in specialised sectors such as banking.
Additionally, the case is a poignant reminder that non-distinctive elements cannot simply be ruled out from the likelihood of confusion analysis, as the prefix EURO was to a large extent sufficient to overcome the initial refusal in Part I and early Part II. It also reminds us that the comparison of signs is to be made with strong independence from the remaining criteria.
Interestingly, the decision ends up overemphasising the generic word BANK (as BIG is not the owner of a standalone word mark BIG) and the descriptive prefix EURO.
The irrelevance of Part I during the remainder of the proceedings highlights the complexities of crossing over between national and European trade mark systems and the well-established conditions for determining the likelihood of confusion. However, a different outcome could have been reached if the court had admitted the analysis of Article 8(5) of the EU Trade Mark Regulation or if bad faith was claimed in Part II, something that could yet happen in a Part IV dispute under Article 59 (1)(b).
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, any other of its practitioners, its clients, or any of its or their respective affiliates. This article is for general information purposes only and is not intended to be and should not be taken as legal advice. Please contact the author(s) if you have any questions about this article.
João Francisco Sá is a trade mark and patent attorney at Inventa. He is based in Lisbon, Portugal.