The trademark was filed by PENNYLANE, a corporation established under the laws of the French Republic (the "Applicant"). The application was published for oppositions on November 12, 2023, and received one opposition filed on February 12, 2024 by Mastercard International Incorporated on (a) Likelihood of confusion, (b) Unfair advantage and detriment to distinctiveness or repute. the opponent was represented by T MARK CONSEILS and proceedings were handled in English, and the oppositon was dismissed by the Euorpean Union Intellectual Property Office with decision issued February 12, 2024
The application was filed in French, and French was also language of all opposition proceedings (English was selected as the second language).
Goods And Services
The mark was filed in class 9 with following description of goods:
Equipment and instruments for recording, Apparatus and instruments used in the transmission, apparatus and instruments for reproducing, Apparatus for processing and Instruments for the processing, in relation to the following goods: Sound, images, documents or Data
Coin-operated mechanisms
Cash registers
Calculating devices
Computers and computer peripherals
Checking (supervision) apparatus and instruments
Apparatus for electronic payment processing
Data retrieving devices
Data processing equipment and accessories (electrical and mechanical)
Card reading equipment
Smart card readers
Card readers for credit cards
Invoicing machines
Accounting machines
Servers for web hosting
Electronic payment terminals
Payment terminals
Money sorting and dispensing devices
Computer software applications, downloadable
Mobile apps
Computer software, recorded
Software and applications for mobile devices
Computer software
Software for smartphones
Software for tablet computers
Downloadable software
Computer programs, downloadable
Computer programs, downloadable
Encoded charge cards
Encoded, magnetic and smart cards
Banking cards [encoded or magnetic]
Credit cards
Cash cards [encoded]
Downloadable mobile applications for the transmission of data
Fraud detection software in relation to the following fields: Finance, book keeping or Taxation
Financialmanagement computer software
Software for treasury management
Search marketing software
Cloud server software
Interactive computer software enabling exchange of information
Software and software applications for electronic processing and exchange, in relation to the following fields: Headed note paper, Invoicing data, Transactions and Paying
Software for the analysis of business data
Computer software to enable searching and retrieval of data
Software for the recovery of data related to banking, or supplier invoices or customer invoices
Computer software relating to the handling of financial transactions
Banking software
Computer software relating to financial history
Computer software designed to estimate costs
Reporting software
Software for facilitating data extraction from documents by character recognition
Software for facilitating the extraction of accounting entries from digitised documents
Office software
Collaborative software
E-commerce and e-payment software
Computer e-commerce software to allow users to perform electronic business transactions via a global computer network
Data communications software
Computer communication software to allow customers to access bank account information and transact bank business
Compiler software
Accounting software
Business management software
Data and file management and database software
Human resources management software
Downloadable computer software for the transmission of data
Business performance management [BPM] software
Customer relation management [CRM] software
Electronic mail and messaging software
Instant messaging software
Document digitisation software [scanning]
Payment software
E-payment software
File sharing software
Salary payment software
Payroll preparation software
Enterprise resource planning [ERP] software
Decision-making software
Software for debt recovery
Factoring software
Software for facilitating secure credit card transactions
Dashboard software
Computer programmes for data processing
Computer software for invoice management and Software for managing quotes or late payment reminders
Document management software
Software for managing expense forms
Invoicing software
Software for creating electronic invoicing
Software and software applications for invoice dematerialisation
Software for optical character recognition
Personal computer application software for document control systems
Tax preparation software
Software for preparing quotes, invoices or late payment reminders
Software for arranging online transactions
Hardware for processing electronic payments to and from others
Software for the processing of business transactions
Software for card readers
Computer software for use as an application programming interface (API)
Software for integration of applications and databases
Databases
Electronic databases recorded on computer media
Data storage programs
Data processing programs
Computer programmes relating to financial matters
Computer programs for use in trading stocks and bonds
Computer programs for project management
Computer programs used for electronic cash register systems
Electronic publications, downloadable.
The mark was filed in class 35 with following description of goods:
Advertising
Business management, organisation and administration of commercial affairs
Office functions
Document reproduction
Business management assistance
Business auditing
Accountancy, book keeping and auditing
Business management and organization consultancy
Administration of business payroll for others
Economic forecasting analysis for business purposes
Financial auditing
Compilation of information into computer databases
Book-keeping
Administrative accounting
Cost accounting
Accountancy services provided through computer software
Bookkeeping for electronic funds transfer
Accountancy advice relating to taxation
Advice on tax preparation
Accounting consultation
Tax preparation
Compilation of statistics
Opinions and Expert reports, in relation to the following fields: Trade, Finance, Book-keeping and Taxation
Invoicing
Rental of electronic point of sale (EPOS) equipment
Computerised accounting
Tax planning [accountancy]
Business management for freelance service providers
Preparation of documents relating to taxation
Electronic invoice preparation
Payroll preparation
Preparing business reports
Economic forecasting
Assistance and information services, in relation to the following fields: Commercial management, Book-keeping or Taxation
Employment agency services
Tax filing services
Records management services, namely, document indexing for others
Purchasing services
Human resources management and recruitment services
Sales management services
Computerized file management
Advertising, marketing and promotional services
Statistical analysis and reporting services for business purposes, for financial purposes and For accounting or tax purposes
Data entry and data processing
Administrative support and data processing services
Business efficiency expert services
Book-keeping
Tax preparation
Administrative processing of purchase orders
Data processing, systematisation and management
Salary payment management.
The mark was filed in class 36 with following description of goods:
Financial, monetary and banking services
Insurance services
Real estate affairs
Real estate services
Invoice automation and verification services
Acceptance of bill payments
Financial investment analysis and stock research
Financial analysis
Issuance of credit and debit cards
Issuing payment means
Collection of payments
Financial evaluation
Tax and financial assessments and valuations
Financial management
Financial management relating to banking
Rental, hire and lease of equipment for processing financial cards
Financial banking
Credit card payment processing
Tax planning [not accounting]
Financial forecasting
Conducting of financial transactions
Processing payments made by charge cards
Reclamation of outstanding debts
Automated banking services relating to charge card transactions
Paperless electronic banking services
Banking and financing services
Taxation consultancy services [not accounting]
Bank card, credit card, debit card and electronic payment card services
Payment card services
Bankers clearing house services
Trusteeship
Provision of tax advice [not accounting]
Financial planning and investment advisory services
Financing and loan services
Debt recovery and factoring services
Management of credit card services
Payment administration services
Bill payment services
On-line bill payment services
Electronic commerce payment services
E-wallet payment services
Electronic transfer of virtual currencies
Financial planning services
Loan and credit, and lease-finance services
Treasury services
Business credit verification services
Financial appraisal services
Processing payments made by charge cards
Processing of electronic payments
Processing of payments for banks
Cash and foreign exchange transactions
Financial transfers and transactions, and payment services
Providing, in relation to the following goods: Financial information and Banking information
Bank account and savings account services, Securities brokerage account services, Current account facilities, Paperless electronic checking account services
Mutual funds
Capital investment
Capital management
Raising of financial capital
Support services and Information services, in relation to the following fields: Financial management.
The mark was filed in class 38 with following description of goods:
Telecommunication services
Online document delivery via a global computer network
Providing user access to computer programmes in data networks
Communication services, namely, electronic transmission of data and documents among users of computers
Data broadcasting services
Telecommunication services provided via platforms and portals on the Internet and other media
Electronic transmission services
Transmission of data and information by computer and electronic communication means
Electronic transmission of mail and messages
Computer aided transmission of messages
Signal transmission for electronic commerce via telecommunication systems and data communication systems
Electronic transmission of instant messages and data
Providing access to databases
Transmission of database information via telecommunications networks
Providing of online discussion forums or websites for the transmission of messages, comments and multimedia content between computer users
Providing of access to an online collaborative platform for storing, processing, transmitting and sharing data and information, in relation to the following fields: book keeping, Taxation, Management, Law, Social consultancy and Payroll
Broadcasting services
Broadcasting of audiovisual and multimedia content via the Internet.
The mark was filed in class 41 with following description of goods:
Teaching
Training
Arranging and conducting of workshops [training], Arranging and conducting of seminars, Organising and conducting webinars, Arranging and conducting of colloquiums, Arranging and conducting of conferences or Arranging and conducting of congresses
Courses (Training -) relating to banking
Courses (Training -) relating to accountancy
Training courses in strategic planning relating to advertising, promotion, marketing and business
Provision of training courses in relation to the following fields: businessmanagement, Financial administration, book keeping or Taxation
Services for the publication of newsletters
Bookkeeping instruction
Training in the use of data processing programs
Providing online newsletters, in relation to the following fields: businessmanagement, Financial administration, book keeping or Taxation
Publication of electronic books and periodicals on the Internet
Training services concerned with the use of computer software
Providing online electronic publications, not downloadable
Providing online electronic publications, not downloadable in relation to the following fields: businessmanagement, Financial administration, book keeping or Taxation.
The mark was filed in class 42 with following description of goods:
Scientific and technological services and research and design relating thereto
Quality control and authentication services
Design and development of computer hardware and software
Computer software consultancy
Smartphone software design
Design of computer machine and computer software for commercial analysis and reporting
Design and development of software for inventory management
Design, development, programming, installation, updating and maintenance of computer software
Development and creation of computer programmes for data processing
Software development, programming and implementation
Engineering services in relation to the following fields: Informatics or Software
Providing temporary use of non-downloadable software
Providing online, non-downloadable software
Providing temporary use of on-line non-downloadable software for processing electronic payments
Electronic data storage
Hosting of databases
Hosting of databases
Server hosting
Rental of computer software
Rental of database management software
Rental of financial management software
Software as a service [SaaS]
Providing temporary use of on-line non-downloadable software for the management of information
Providing temporary use of on-line non-downloadable software for the transmission of data or Providing temporary use of on-line non-downloadable software for the transmission of information
Providing temporary use of non-downloadable software for analyzing financial data and generating reports
Digitization of documents [scanning]
Platform as a service [PaaS]
Computer platform as a service [PaaS] for storing, processing, transmitting and sharing data and information in relation to the following fields: Accounting, Taxation, Management, Law, Social advice and Payroll
Infrastructure as a Service [IaaS]
Programming of computer software for reading, transmitting and organising data
Programming of software for inventory management
Programming of software for importing and managing data
Recovery of computer data
Software as a service [SaaS], for use in the following fields: financialmanagement, Business data analysis, Recovery of data, Handling of financial transactions, conducting of banking operations, Accounting, Taxation, Commercial management, Management of supply of personnel, Management of employee salaries, Digitization of documents [scanning], Processing of payments, Record management, managing expense claims, making out invoices, E-commerce
Providing temporary use of online non-downloadable software for financial management, Providing temporary use, In connection with the following goods: Online non-downloadable software for business data analysis, data recovery, financial transaction management, banking, accounting, tax operations
Providing temporary use of online non-downloadable software for business management, Providing temporary use of online non- downloadable software for the management of human resources, Providing temporary use, In connection with the following goods: Online non-downloadable software for salary payment management, document digitisation [scanning], payment processing, document management, management of expense forms, billing, e-commerce
Providing temporary use, In connection with the following goods: Online non-downloadable software for electronic processing and exchange of commercial documents, data on invoices, transactions and payment
Providing temporary use, In connection with the following goods: Online non-downloadable software for invoice dematerialisation
Providing temporary use, In connection with the following goods: Online non-downloadable software for optical character recognition
Providing temporary use ON-LINE, In connection with the following goods: non-downloadable software for use as application programming interfaces (API)
Providing temporary use ON-LINE, In connection with the following goods: Non-downloadable software for application and database integration
Rental of computer database software
Providing temporary use of on-line non-downloadable software, for use in the following fields: financialmanagement, Business data analysis, Recovery of data, Handling of financial transactions, conducting of banking operations, Accounting, Taxation
Providing temporary use of on-line non-downloadable software, for use in the following fields: Commercial management, Management of supply of personnel, Management of employee salaries, Digitization of documents [scanning], Processing of payments, Record management, managing expense claims, making out invoices, E-commerce
Design, development, maintenance, Updating or Reconstitution, In connection with the following goods: Computer databases.
The mark was filed in class 45 with following description of goods:
Legal services
Licensing of computer software [legal services]
Legal advice, in relation to the following fields: Finance, Trading, Taxation, Accounting or Human resources