Trade mark decision

BL Number

O/136/05

Decision date

18 May 2005

Hearing officer

Mr D Landau

Mark

CITYBOND

Classes

36

Applicant

Citybond Holdings Plc

Opponent

Citibank NA & Citicorp

Opposition

Sections 3(1)(b) & (c), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(1)(b) & (c): - Opposition failed. Section 5(2)(b): - Opposition failed. Section 5(3): - Opposition failed. Section 5(4)(a): - Opposition failed.

Section 5(2)(b): - Opposition failed.

Section 5(3): - Opposition failed.

Section 5(4)(a): - Opposition failed.

Points Of Interest

• The opponent appealed the Hearing Officer's decision in respect of the Section 5 grounds. In his decision dated 7 July 2006 (BL O/197/06) the Appointed Person allowed the appeal in part and ordered restriction of the applicant's specification.

Summary

The mark in suit was advertised with a specification reading “Insurance services, travel insurance services, insurance brokerage, insurance consultancy; travel bonding; but not including sealed contract services provided by the City of London”.

The opponent is a major financial institution, its main marks being CITIBANK and CITICORP. It claimed that the mark in suit was not distinctive in the context of Section 3; that it was similar to its marks CITIBANK and others and that it had a reputation in such marks in respect of identical and similar services, which supported its grounds under Sections 5(2)(b), 5(3) and 5(4)(a). The opponent filed extensive evidence to show that it had a reputation in a range of marks such as CITYBANK and CITICORP from 1976, CITIPHONE BANKING, CITICARD; CITIWEB; CITIBANK DIRECT ACCESS and CITIBANK PC BANKING from 1997. CITYBANK has been used in relation to travel insurance from 1997. The opponent also filed survey evidence in an effort to show the likelihood of confusion but this evidence was poorly focused and was found to be of no assistance to the opponent.

The applicant also filed evidence to show that the name Citybond Financial Planning Limited was first adopted in 1985. The name was changed to Citybond Financial Plc in 1990 and to Citybond Holdings Plc in 2002. The firm acts as a scheme manager for travel insurance, which it develops, working with travel insurance underwriters. The CITYBOND mark has been used in a number of contexts over the years such as CITYBOND Travel Insurance, CITYBOND Insurance Brokers, CITYBOND Suretravel etc. Advertising and promotion of the mark has been in the travel and tourist industries. It has some 2.1%-2.8% of the travel insurance market and the agency network employs some 2000 agents.

Under Section 3(1)(b) & (c) the Hearing Officer considered the mark in suit in relation to the services at issue and concluded that while both the words CITY and BOND may be descriptive, the combination was distinctive and acceptable in the context of Section 3. The Hearing Officer noted that the opponent had filed no evidence to support its claim of non-distinctiveness.

Under Section 5(2)(b) the Hearing Officer noted that the opponent’s marks such as CITIBANK, CITICORP, CITIPHONE, CITICARD etc were all registered for specifications which included “insurance” so identical services were at issue. In comparing the respective marks the Hearing Officer noted that the opponent claimed the benefit of a family of CITI marks and it was accepted that the opponent had a reputation in this element of its marks. However, under Section 5(2)(b) the mark in suit had to be compared with each of the opponent’s marks and the Hearing Officer considered that the opponent’s best case rested on their CITIBANK mark.

In comparing the respective marks CITIBANK and CITYBOND the Hearing Officer noted the distinctive element CITI in the mark CITIBANK and he considered that this variation in spelling was a major visual difference in the two marks. Also while CITI and CITY were conceptually similar the elements BANK and BOND were very different. Overall the Hearing Officer considered that the respective marks were not similar and that the opponent failed on the Section 5(2)(b) ground.

In view of his decision under Section 5(2)(b) that the respective marks CITIBANK and CITYBOND were not similar, and the fact that the applicant had been using its trade mark since 1985, the Hearing Officer found that the opponent also failed on the Section 5(3) ground.

The opponent also failed on the Section 5(4)(a) ground - Passing Off. In the absence of any acceptable evidence relating to confusion, the Hearing Officer’s decision under Section 5(2)(b) that the respective marks were not confusingly similar, effectively decided the matter. However, the Hearing Officer noted that as regards the relevant dates, the opponent had not proved a reputation in its mark CITIBANK in the UK by 1985 when the applicant first used its marks. Also at the date of application, October 1997, the opponent had only entered the insurance field at that time and it had no significant reputation in its mark in relation to insurance services.