Descriptive
The problem is that the words Capital Markets are purely descriptive or generic for financial services. Under trademark law, you can’t, in principle, lay a claim on these types of descriptive terms. They should remain available to other financial service providers. But don’t the Spaniards own two European trademark registrations?
Distinctive element
It’s true; they have two valid trademark registrations. The European Trademark Office accepted these because a distinctive element was added to the descriptive word Capital Markets in both registrations. In the case of the wordmark, this is the letters CM, and in the case of the logo, it is the device element that makes the trademark distinctive. That’s the reason these trademarks could therefore be registered. Had the Spaniards applied for the wordmark Capital Markets without additions, the registration would undoubtedly have been refused for being too generic.
Sufficient difference
Therefore, the two registrations by the Spaniards don’t ensure an exclusive claim to the words Capital Markets in themselves. They only provide protection for the whole, including the letters CM or the image elements. If you add the new Portuguese Capital Markets logo to that, there is sufficient differentiation, and there is no risk of confusion, according to the European trademark office EUIPO.
Bas Kist
