General Court: "real estate services" are not similar to "financial and banking services"
In Bankia SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-323/14, September 17 2015), the General Court has held that "real estate services" and "financial and banking services" are not similar.
The marks in conflict in this case were as follows:
Applicant Bankia SA (Spain)
Opponent Banco ActivoBank (Portugal)
The Opposition Division of OHIM upheld Banco ActivoBank's opposition to the registration of the figurative mark BANKIA in respect of "insurance services; financial affairs; financial analysis; monetary affairs; banking business; home banking; stockbrokerage and stock exchange quotations; fund management and capital investments; real estate appraisal; deposits of valuables; issuing of credit and debit cards; trustee services; mutual fund creation and investment; mortgage lending; online banking, financial, monetary, insurance services via telecommunication networks (including mobile telephones), data transmission networks and global computer communications networks" in Class 36 of the Nice Classification.
Bankia SA filed an appeal with OHIM. Banco ActivoBank also appealed, to the extent that the opposition had been rejected in respect of "real estate services; real estate administration; real estate services via telecommunication networks (including mobile telephones), data transmission networks and global computer communications networks" in Class 36.
The Second Board of Appeal of OHIM dismissed the claims of the applicant but partially upheld those of Banco ActivoBank, thus upholding the opposition in respect of "real estate services". According to the board, these constitute a broad category of services designating any services relating to real estate. Consequently, they include real estate appraisal, which is similar to the "financial services" of the earlier mark.
Bankia took the case to the General Court. The latter upheld the appeal, but only in part. Specifically, it annulled the board's decision only to the extent that the latter had upheld the appeal of Banco ActivoBank with respect to "real estate services". In this regard, the reasoning of the General Court was as follows:
- Financial and banking services do not have the same nature, the same intended purpose or the same method of use as real estate services. On the one hand, financial services are provided by financial institutions for the purposes of managing their clients’ funds and consist of, among other things, the holding of deposited funds, the remittance of funds, the granting of loans or the performance of various financial operations, whereas real estate services are connected with a property, particularly with the lease, purchase, sale or management of such a property. Further, real estate services are not, in principle, provided on the same premises as financial services.
- Real estate services are provided by separate branches of financial institutions, so that financial activities remain separate from any real estate activities.
- Even though financial and banking services may be necessary for the use of real estate services, they are not so necessary that consumers will consider the same undertaking to be responsible for the financial services and the real estate services. On the contrary, 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 board had thus erred in finding "real estate services" to be similar to "financial and banking services".
In its conclusions, the General Court perceived that there was a clear separation between those two categories of services. What may perhaps have been overlooked, however, is that as a result of the serious global crisis that has affected the real estate sector in recent years, banks have at times come to perform the functions of a real estate agency when selling properties obtained through foreclosure or at auction, usually creating a specialised subsidiary bank for this purpose.
Fernando Ilardia, Elzaburu, Madrid
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