Word switch wasn’t smart enough for UBS

Wealthkernel v UBS (WEALTHSMART v UBS SMARTWEALTH) – O-094/18

This was a UK opposition brought by WealthKernel Limited against an application for the mark UBS SMARTWEALTH filed by UBS Group AG. The application covered a range of financial and banking services in class 36. Wealthkernel relied on a UK registration for the marks WEALTHSMART and WEALTH SMART registered for services in class 36, including: “ Investment by electronic means; investment advisory services; investment brokerage; investment fund services; investment management services; investment; investment advice.” These services are very much specialist financial services. The opposition was based on S.5(2)(b) (likelihood of confusion). In the assessment of similarity of the services, the Hearing Officer found that the services were either identical, or similar to varying degrees. The services “services of a custodian bank” were only considered similar to a low degree. The Hearing Officer found that the average consumer of financial services could comprise the general public, as well as traders and investors etc. An above average or reasonably high degree of attention would be given to the selection of these services, given their nature and importance, depending on the group of consumer. One of the most interesting aspects of this case was the line of argument ventured around the similarity of marks. Whilst it is usual for the reputation of the Opponent in the earlier marks to be taken into account when assessing a likelihood of confusion, the question here was whether or not the Applicant’s reputation in UBS, in relation to financial services, had an impact on whether or not the marks were similar. The Applicant filed evidence to show that the UBS element had a reputation in relation to a range of financial services. They argued that this, coupled with the differences between SMARTWEALTH and WEALTHSMART (the one being a reversal of the words in the other), was enough to render the marks dissimilar (particularly on a conceptual level). The Opponent, meanwhile, argued that the Applicant’s reputation in UBS was limited to specialist financial services and would therefore bear no relevance to consumers of ordinary financial services. The Hearing Officer found that, whilst the reputation of UBS might be a factor relevant to whether or not a likelihood of confusion exists, it was not the correct approach to consider it in the context of whether or not the marks were similar. The Hearing Officer’s reasoning here was based on the decision in Ravensburger AG v OHIM in which the CJEU found that the reputation of the earlier mark should only be taken into account when assessing the likelihood of confusion, not similarity, the logic being that if the marks are not similar, there is no need to go on to consider the reputation of the earlier marks at all. The Hearing Officer recognised that the cited case referred to the reputation of the earlier marks rather than of the later mark. Nevertheless, the Hearing Officer confirmed that the same test applies in this case because it would not be logical if the reputation of the later mark could be taken into account as a factor in the similarity test when the reputation of the earlier mark cannot be. The Hearing Officer went on to find a medium degree of visual similarity between the marks on the basis that, although the contested mark contains the letters UBS at the start of the mark, the SMARTWEALTH element dominates the mark and retains an independent role within it. The SMARTWEALTH and WEALTHSMART elements are composed of the same visual elements, albeit in reverse. The marks were found to be aurally similar to a low degree due to the different pronunciation but conceptually similar to a high degree because, although the words WEALTH and SMART are reversed, they would convey the same meaning to the consumer. Taking into account the overall similarity of the marks, and the similarity of the services, the Hearing Officer concluded that there was a likelihood of indirect confusion and the Opposition succeeded against all services in class 36, bar “services of a custodian bank”. The practical take home from this case is the discussion around the inclusion of a well known house mark in the Applicant’s mark, and whether or not this is sufficient to distinguish the marks. In this case, the conclusion was that it was not. It is well established in case law that the inclusion of a house mark will not always be enough to avoid a finding of likelihood of confusion when the remaining element retains an independent role within the mark and is sufficiently similar (or identical) to the earlier mark. This case serves as a reminder of this, and that, even when you might think that your mark is far enough away from an earlier mark, because it includes additional elements, such as your distinctive house-brand, this may not be the case.

Would you like to read more articles like this?