OPPOSITION No B 2 378 902

Bluebus, 9, boulevard Marius et René Gruau, 53940 Saint-Berthevin, France (opponent), represented by Ernest Gutmann – Yves Plasseraud S.A.S., 3, rue Auber, 75009 Paris, France (professional representative)

a g a i n s t

Douroazul – Sociedade Marítimo-Turística S.A., Rua de Miragaia número 103, 4050-387 Porto, Portugal (applicant), represented by Rita Gomes, Rua de Miragaia número 103, 4050-387 Porto, Portugal (professional representative).

On 18/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 378 902 is upheld for all the contested services.

2.        European Union trade mark application No 12 723 292 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 723 292. The opposition is based on the following marks:

• international trade mark registration No 1 106 020 designating the European Union, ;
• international trade mark registration No 1 142 937 designating the European Union, ;

• French trade mark registration No 113 801 576, ‘BLUEBUS’.

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.

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 international trade mark registration No 1 106 020 designating the European Union.

1. The services

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

Class 39:         Transportation services; vehicle rental services; fleet management; arranging of tours; travel and tour information service; vehicle reservation; storage of data and information by electronic and computer means, cable, radio, e-mail, television, laser beam, satellite and terrestrial digital networks; distribution services for newspapers, parcels and newsletters.

The contested services are the following:

Class 39:         Bus transport; Passenger coach services; Pleasure boat transport; Travel and passenger transportation; Transport of passengers by air; Barge transport; Sightseeing [tourism]; Sightseeing, tour guide and excursion services; Road transport services for passengers; Travel and passenger transportation.

Contested services in Class 39

The opponent’s transportation services consist in moving goods or people from one place to another by various means of transportation by land, air， space or water. The contested bus transport; passenger coach services; pleasure boat transport; travel and passenger transportation; transport of passengers by air; barge transport; road transport services for passengers; travel and passenger transportation are included in the broad category of the opponent’s transportation services. Therefore, they are identical.

The contested sightseeing [tourism]; sightseeing, tour guide and excursion services overlap with the opponent’s arranging of tours and, therefore, they are identical.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

	BUSY BLUE BUS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public to take into consideration the potential impact of the meaning of the verbal elements in the marks in relation to the contested services for this part of the public.

The earlier sign is a figurative mark consisting of the word ‘BLUEBUS’ depicted in fairly standard upper case letters. It has no dominant components.

The contested mark consists of more than one component. However, since it is a word mark, it contains no elements that could be considered clearly more eye-catching than others. There is a distinction, however, between the different distinctive characters of its verbal elements.

As regards the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, the relevant public will perceive the earlier mark as a compound expression consisting of the words ‘BLUE’ and ‘BUS’, which are also present in the contested sign.

The expression ‘BLUE BUS’, taken as a whole, will be associated with a large blue vehicle designed to carry passengers. Whereas the name of the colour does not describe or allude to any of the characteristics of the services in question, and is distinctive, the word ‘BUS’ is descriptive in relation to some of the services in question, as it refers to and indicates, for example, the means of transport. In relation to the remaining services, which are not provided by buses, the distinctiveness of the word ‘BUS’ is lower than average because of the close connection between bus transport and transport by sea or air.

The word ‘BUSY’ in the contested sign is an adjective describing the enhanced intensity of an activity. It is often used in relation to the means of transportation and, therefore, is weak in relation to the relevant services.

Visually and aurally, the signs coincide in the word element(s) ‘BLUEBUS’, even though these words are conjoined in the earlier mark and appear as separate elements in the contested sign. The signs differ in the element ‘BUSY’, which has no counterpart in the earlier mark. However, considering the reduced distinguishing capacity of this differing element and the fact that the earlier mark is entirely included in the contested sign, the signs should be seen as similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The word ‘BUSY’ in the contested sign will be perceived as a qualifier of the expression ‘BLUE BUS’. Moreover, this element is weak. Therefore, the signs are conceptually similar to an average degree.

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 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The distinctiveness of the word ‘BUS’ is limited, which affords a lower than average scope of protection to the earlier mark as a whole. In this regard, account must be taken of the fact that a finding that an element that the marks have in common has a low degree of distinctive character does not automatically prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark and the elements that the marks have in common must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark or a coinciding element with a low degree of distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, the services are identical. The marks are similar overall to an average degree, as they have the expression ‘BLUE BUS’ in common and differ only in the weak element of the contested sign, ‘BUSY’. When encountering the conflicting signs, it is likely that consumers will perceive the contested sign as a variation of the earlier mark. It is a common practice nowadays for companies to make small variations of their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products, or to create a modernised version of the mark.

Considering all the above, there is a likelihood of confusion on the part of the English-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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 106 020 designating the European Union.

As earlier international trade mark registration No 1 106 020 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the 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).

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

Solveiga BIEZA

Arkadiusz GORNY

Ana MUÑIZ RODRÍGUEZ

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.