The image above is a collage of screenshots from the websites of Standard Bank and Barclays Bank showing that both banks have banking products/services branded with the identical words: “Prestige Banking”. In this connection, readers of this blog will no doubt have come across the advertisement of the application for registration of Trade Mark Application (T.M.A) Number 79424 “PRESTIGE BANKING” (WORDS) by Barclays Bank PLC on pages 10-12 of the August 2015 Industrial Property Journal. As a result, this blogger reckons that the stage is set for Standard Bank to oppose the registration of this mark by Barclays Bank, if it so wishes.
In this regard, Standard Bank would also wish to consider the recently published ruling of the Registrar of Trade Mark in the matter referenced as In Re TMA No. 79424 “BARCLAYS PRESTIGE BANKING”, EX PARTE HEARING., 6th February 2015. In this ex parte hearing, Barclays appeared before the Registrar to challenge the latter’s decision to reject Barclays’ applications for “BARCLAYS PRESTIGE BANKING” (WORDS) and “PRESTIGE BANKING” (WORDS) for being similar to the mark SMA NO. 2976 “PRESTIGE PLAN” (WORDS AND DEVICE) in the name of the Standard Bank of South Africa with respect to services of a similar description and character as those in respect of which the applications by Barclays had been made. A copy of the ruling is available here.
In her ruling, the Registrar revoked the Refusal Notice issued by the Registry of Trade Marks relating to the objection to registration of the Barclays’ marks T.M.A No. 79424 “BARCLAYS PRESTIGE BANKING” (WORDS) and T.M.A No. 79425 “PRESTIGE BANKING” (WORDS) in international classes 35 and 36. By so ruling, Barclays’ applications were allowed to proceed to publication subject to Barclays’ amendment of its applications to include a disclaimer of the word “BANKING” with respect to each of the applications separately and apart from the mark as a whole.
Standard Bank would be interested to note the Registrar’s finding that the marks owned Standard are similar visually, aurally and conceptually to those by Barclays. In addition, the Registrar makes it clear that her present ruling will have no bearing on any subsequent ruling by the Registrar if the mark is opposed:
“The Applicants [Barclays] should note that these proceedings and the subsequent ruling are not a bar to any opposition proceedings that may be filed under the provisions of the Trade Marks Act once the mark is duly published in the Industrial Property Journal. In the event that opposition proceedings are filed, the Registrar of Trade Marks shall consider the proceedings on their own merit, in accordance with the provisions of the Trade Marks Act.”
This blogger will keep readers updates on the developments in this matter.