OPPOSITION No B 2 688 425

Germanwings GmbH, Germanwings-Straße 2, 51147 Köln, Germany (opponent), represented by Dompatent von Kreisler Selting Werner – Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)

a g a i n s t

Boomerang media, LLC, Vojkova cesta 63, 1000 Ljubljana, Slovenia (applicant).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 688 425 is upheld for all the contested services.

2.        European Union trade mark application No 14 729 909 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 729 909. The opposition is based on German trade mark registration No 30 572 209. The opponent invoked Article 8(1)(b) 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.

1. The services

The services on which the opposition is based are the following:

Class 35:        Development of bonus systems as customer loyalty measures for marketing purposes for the use of aircraft, hotels, rented cars and credit cards; advertisement for bonus systems for marketing purposes for the use of aircraft, hotels, rented cars and credit cards; providing online information about marketing, marketing research; compiling and updating data in data bases; all aforementioned services with the exception of such services that are related to sports, sports activities and sporting goods of any kind.

Class 38:        Telecommunications; telephone services via hotline; providing access to a data network; operation of a platform for a customer loyalty program in a computer network, e.g. in the Internet; providing access to data bases; leasing access to a computer network; all aforementioned services for a customer program for frequent flyers.

Class 41:        Education and training in the context of a customer program for frequent flyers, arranging and organization of entertainment events for customer loyalty purposes within the framework of bonus systems for the use of aircraft, hotels, rented cars and credit cards; providing online information about bonus, advertising, customer loyalty and/or premium programs.

The contested services are the following:

Class 35:        Provision of advertising space, time and media; Advertising, marketing and promotional consultancy, advisory and assistance services; Advertisement for others on the Internet; Production of advertising material; Direct marketing; Response advertising; Advertising agencies; Pay per click advertising; Banner advertising; Arrangement of advertising; Bill-posting; Preparation of advertisements; Production of sound recordings for marketing purposes; Promoting the goods and services of others; Compilation of advertisements for use on the internet; Online advertisements; On-line advertising on a computer network; Digital advertising services; Brand creation services (advertising and promotion); Product sampling; Provision of an on-line marketplace for buyers and sellers of goods and services.

Class 38:        Computer communication and Internet access; Audiovisual communication services; Digital communications services; Delivery of messages by audiovisual media; Delivery of messages by electronic media; Electronic transmission and retransmission of sounds, images, documents, messages and data; Transmission of information for business purposes; Transmission of short messages; Transmission of short messages [SMS], images, speech, sound, music and text communications between mobile telecommunications devices.

Class 41:        Publication of texts in the form of electronic media; Publication of leaflets; Publication of posters; Audio and video production, and photography; Organising of competitions [entertainment] by telephone; Arranging of visual entertainment; Exhibition of video films; Audio-visual display presentation services for entertainment purposes.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 services in Class 35

The contested provision of advertising space, time and media; advertising, marketing and promotional consultancy, advisory and assistance services; advertisement for others on the internet; production of advertising material; direct marketing; response advertising; advertising agencies; pay per click advertising; banner advertising; arrangement of advertising; bill-posting; preparation of advertisements; production of sound recordings for marketing purposes; promoting the goods and services of others; compilation of advertisements for use on the internet; online advertisements; on-line advertising on a computer network; digital advertising services; brand creation services (advertising and promotion); product sampling are advertising, marketing and promotional services which are either identical to, as they include as a broader category, or overlap with, the opponent’s development of bonus systems as customer loyalty measures for marketing purposes for the use of aircraft, hotels, rented cars and credit cards; all aforementioned services with the exception of such services that are related to sports, sports activities and sporting goods of any kind or at least similar to them, because they can have the same purpose, providers and distribution channels and target the same relevant public.

The contested provision of an on-line marketplace for buyers and sellers of goods and services is a specialised service essentially concerned with providing a platform facilitating transactions between buyers and sellers. Therefore, this service is similar to at least a low degree to the opponent’s providing online information about marketing; all aforementioned services with the exception of such services that are related to sports, sports activities and sporting goods of any kind, as they can have the same providers and distribution channels and target the same relevant public.

Contested services in Class 38

The contested computer communication and Internet access; audiovisual communication services; digital communications services; delivery of messages by audiovisual media; delivery of messages by electronic media; electronic transmission and retransmission of sounds, images, documents, messages and data; transmission of information for business purposes; transmission of short messages; transmission of short messages [SMS], images, speech, sound, music and text communications between mobile telecommunications devices overlap with the opponent’s telecommunications; all aforementioned services for a customer program for frequent flyers. Therefore, they are considered identical.

Contested services in Class 41

The contested organising of competitions [entertainment] by telephone; arranging of visual entertainment; exhibition of video films; audio-visual display presentation services for entertainment purposes overlap with the opponent’s arranging and organization of entertainment events for customer loyalty purposes within the framework of bonus systems for the use of aircraft, hotels, rented cars and credit cards. Therefore, they are identical.

The contested audio and video production, and photography are similar to the opponent’s arranging and organization of entertainment events for customer loyalty purposes within the framework of bonus systems for the use of aircraft, hotels, rented cars and credit cards, as they have the same purpose and they can have the same providers and relevant public.

The contested publication of texts in the form of electronic media; publication of leaflets; publication of posters are similar to a low degree to the opponent’s education and training in the context of a customer program for frequent flyers, as they can have the same 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 services found to be identical or similar are mainly directed at the public at large. However, some of the services in question (in Class 35) are directed at business customers with specific professional knowledge or expertise.

Taking into consideration the business-related nature of some of the services and their potential impact on consumers’ businesses, the degree of attention is considered to vary from average to high.

3. The signs

Boomerang-Club
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier right is a word mark composed of the words ‘Boomerang’ and ‘Club’.

The contested sign is a figurative element consisting of a stylised black boomerang followed by the word ‘Boomerang’.

The public in the relevant territory will perceive the English word ‘Boomerang’ in both signs, due to its proximity to the German equivalent, ‘Bumerang’, as meaning ‘a curved piece of wood which comes back to you if you throw it in the correct way’ (information extracted from Duden Online Dictionary). In the contested mark, the meaning of boomerang is reinforced by a stylised black figurative boomerang. In relation to the relevant services, this word element and figurative element have no meaning and are, therefore, distinctive.

The public in the relevant territory will perceive the word ‘CLUB’ in the earlier sign as referring, inter alia, to a group or association of people with common aims or interests (information extracted from Duden Online Dictionary), and this element is a commonly used marketing term. The relevant public is likely to perceive it as referring to a customer loyalty or affiliation programme provided specifically by a given undertaking for its customers. Bearing in mind the relevant services, it is considered that this element is of limited distinctiveness.

Visually, the signs coincide in the distinctive word ‘Boomerang’. However, they differ in the stylised depiction of a boomerang in the contested sign and in the word ‘Club’ in the earlier mark, which is, however, of limited distinctiveness.

Therefore, the signs are visually similar to a higher than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛BOO-ME-RANG’, which appears in both signs and is distinctive. The pronunciation differs in the word ‛CLUB’ of the earlier sign, which has no counterpart in the contested mark and is of limited distinctiveness.

Therefore, the signs are aurally highly similar.

Conceptually, both marks will be associated with the concept of a ‘BOOMERANG’, as defined above. The word ‘CLUB’, present in the earlier sign, is of limited distinctiveness.

Therefore, the signs are conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an element of limited distinctiveness in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical or similar to various degrees and the signs are visually similar to a higher than average degree and aurally and conceptually highly similar.

The signs have the distinctive element ‘BOOMERANG’ in common. This element is the only word in the contested sign and is reinforced by a stylised boomerang. In the earlier sign, the element ‘CLUB’ appears after the distinctive element that the signs have in common and is of limited distinctiveness.

Bearing in mind the foregoing, the Opposition Division considers that the fact that the marks contain the same distinctive element, despite the additional word of the earlier sign and the figurative element of the contested sign, is likely to lead consumers to believe that the identical and similar services in question (including those that are similar to a low degree) originate from the same manufacturer or related manufacturers.

Therefore, there is a likelihood of confusion on the part of the public and the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 572 209. It follows that the contested trade mark must be rejected for all the contested services.

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

Arkadiusz GORNY

Jorge ZARAGOZA GOMEZ

Denitza STOYANOVA-VALCHANOVA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.