OPPOSITION No B 2 634 320

The Republic of Cyprus,  Ministry of Finance, Michalaki Karaoli street and Grigori Afksentiou street, 1439 Nicosia, Cyprus (opponent), represented by Cocalis & Psarras, Solonos 14, 10673  Athens, Greece (professional representative)

a g a i n s t

Νικολαοσ Τσαμοπουλοσ, Εγνατια 108 Πυλεα, 55535, Θεσσαλονικη, Greece (applicant).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 634 320 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 681 431 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 681 431. The opposition is based on, inter alia, European Union trade mark registration No 2 729 473 and Cyprus trade mark registration No 44 471. The opponent invoked Article 8(1)(a) and (b), 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2 729 473 and Cyprus trade mark registration No 44 471.

1. The goods and services

The goods on which, inter alia, the opposition is based are the following:

European Union trade mark registration No 2 729 473

Class 16:         Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 36:         Insurance; financial affairs; monetary affairs; real estate affairs.

Class 39:         Transport; packaging and storage of goods; travel arrangement.

Cyprus trade mark registration No 44 471

Class 33:         Wines, alcoholic beverages, liqueurs.

The contested goods and services are the following:

Class 16:         Printed matter; Stationery and educational supplies; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Disposable paper products; Books; Blank forms; Appointment books.

Class 39:         Reservation services for transportation by air; Tour operating and organising; Transportation of passengers by airship; Arranging of air travel; Arrangement of travel to and from hotels; Arrangement of transportation of passengers by aircraft; Providing information about travel, via the Internet; Provision of travel information by computer; Provision of transport for passengers by air; Travel booking agencies; Air travel services; Airport check-in services; Ground support passenger handling services; Airport passenger shuttle services between the airport parking facilities and the airport; Booking agency services for airline travel; Loading and unloading of airplanes; Transportation and delivery of goods; Transport of freight by air; Delivery of messages [courier].

Class 43:         Hotels; Services for providing food and drink.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 16

Printed matter; stationery and educational supplies are identically contained in both lists of goods (including synonyms).

The contested books; blank forms; appointment books are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested bags and articles for packaging, wrapping and storage of plastics, are included in the broad category of the opponent’s  plastic materials for packaging (not included in other classes). The goods are identical.

The contested bags and articles for packaging, wrapping and storage of paper, cardboard  are similar in purpose, methods of use to the opponent’s plastic materials for packaging (not included in other classes). The goods can be in competition, have the same distribution channels and user. The goods are similar.

The opponent’s goods made from these materials [Paper], not included in other classes and the contested disposable paper products  coincide in their nature. Their purpose, in the broadest sense, may also be the same. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

Contested services in Class 39

The contested transportation of passengers by airship; provision of transport for passengers by air; air travel services; airport passenger shuttle services between the airport parking facilities and the airport; transportation and delivery of goods; transport of freight by air; delivery of messages [courier] are included in the broad category of, or overlap with, the opponent’s Transport. Therefore, they are identical.

The contested reservation services for transportation by air; tour operating and organising; arranging of air travel; arrangement of travel to and from hotels; arrangement of transportation of passengers by aircraft; providing information about travel, via the internet; provision of travel information by computer; travel booking agencies; booking agency services for airline travel are included in the broad category of, or overlap with, the opponent’s travel arrangement. Therefore, they are identical.

The contested airport check-in services; ground support passenger handling services; loading and unloading of airplanes are services closely connected to the opponent’s transport services, which include also air travel services. The services are therefore highly complementary and can coincide in their origins, relevant public and distribution channels. The services are similar. 

Contested services in Class 43

The contested hotels services are similar to a low degree to the opponent’s real estate affairs as they have the same purpose. They also coincide in the user.

The contested services for providing food and drink are similar to a low degree to the opponent’s alcoholic beverages as they can coincide in producer and distribution channels. Furthermore they are complementary.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to various degrees are directed at the public at large and at  customers with specific professional knowledge or expertise.

The degree of attention will be average for the goods and ranging from average to higher than average depending on the nature of the services.

3. The signs

EUTM No 2 729 473 CY No 44 471	Kypros airways
Earlier trade marks	Contested sign

The relevant territory is the European Union, including Cyprus.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division finds it appropriate, in the present case, to focus the comparison of the signs on the Greek and Finnish-speaking part of the public for whom the marks contain meaningful elements.

The Court has already confirmed that there is at least a basic understanding of the English language by the general public in the Scandinavian countries, the Netherlands and Finland (judgment of 26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23). The relevant public is familiar with the foreign language concerned.

The word ‘AIRWAYS’ in both marks is understood by the relevant public as referring to the routes that planes can travel along, or in fact to the proper airlines. The word is in common use by the air transportation service providers and the public nowadays, even if their understanding of English is limited, will relate the word with the aviation industry and perceive its meaning therefore. The word ‘AIRWAYS’ in all marks, due to its meaning, is considered weak for all travel related services in Class 39.

The element ‘CYPRUS’ of the earlier mark will be understood as an English word referring to the Republic of Cyprus, or the geographical location, by the relevant public. The word ‘KYPROS’ of the contested mark has the same meaning for the Finnish and Greek consumers.  Those elements can be considered as referring to the origin of the goods and services of all marks, since the public is exposed to airline companies coming from different countries and bearing the name of the country, in case of so called flag carrier or national airline companies, and they are associated with the country therefore. Consequently, the distinctiveness of these elements in both marks is considered to be lower than average.

The device elements of unclear concept in the earlier marks have no specific meaning, despite the contrary allegations of the applicant.  Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The earlier marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in _YPR_S AIRWAYS. The distinctiveness of the different elements in the marks has been explained above. The signs differ in their first letters C/K and fifth letters U/O, and in the colours and device elements, present in the earlier marks respectively.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables KYP-R_S (partially) AIR-WAYS, present in both signs. This is because the first letters C/ K have a similar sound when pronounced.  The pronunciation differs in the sound of the letters U/O on the fifth position. The two word elements in all marks have phonetically similar lengths and rhythms.  The distinctiveness of the different elements in the marks has been explained above.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the air transportation or airlines related to Cyprus, and although having partially lesser degree of distinctiveness than average, the signs are conceptually similar to an average degree since the additional elements that are to differentiate the marks are either only partially of lower distinctive character, or given less weight.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as lower than average for a part of the services in question, namely in Class 39, in the relevant territories. The marks have a normal degree of distinctiveness for the remaining goods and services in relation to which they have no meaning from the perspective of the public in the relevant territories.

5. Global assessment, other arguments and conclusion

The goods and services have been found partially identical and partially similar. The visual, aural and conceptual aspects have been examined.

The earlier signs and the contested sign have been found to be similar to the extent that they have the letter sequence _YPR_S AIRWAYS in common. Aurally the marks differ only in the pronunciation of their fifth letters U/O, since the first CYPR_S/KYPR_S elements have similar pronunciation. The two word elements in all marks have phonetically similar lengths and rhythms and are aurally and visually confusingly similar for the consumer. Furthermore, they have an overwhelming and memorable conceptual link.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’).

The minor dissimilarities of the marks can easily be forgotten, considering the coincidences between them. Furthermore, despite the finding that the marks have a lower degree of distinctiveness in respect of travel services in class 39, it has to be considered that due to the specific nature of the airline industry, where only the ‘flag carriers’, which are usually only one per each country,  are allowed by national authorities to use the name of the country in their name, the consumer is accustomed to that rule and will relate the corresponding marks with the one and only specific airline in question. Therefore, in the present case, the relevant public could therefore believe that the contested sign is a modification, or a mere misspelling of the earlier mark based on the same core element, only in a different language and because the differences between the signs are confined to less-distinctive elements and aspects.

Based on the principle of imperfect recollection, the established similarities between the signs are sufficient to cause at least part of the public in the relevant territory to believe that the conflicting goods and services, which are identical and similar including those found similar to a low degree, come from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Greek and Finnish speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. This conclusion furthermore stands for the contested goods and services which have been found to be similar to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the goods and services which only have a low degree of similarity.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 729 473 and Cyprus trade mark registration No 44 471. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier rights, EUTM No 2 729 473 and CY No 44 471 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Articles 8(1)(a) and 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Birgit FILTENBORG

Erkki MÜNTER

Irina SOTIROVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.