OPPOSITION No B 2 681 099

TUI Spain, S.L., Calle Mesena, 22, 28033 Madrid, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

The Aqua Enterprise Company, 4, Urikura, Kisarazu-shi, Chiba 2920007, Japan (holder), represented by Riccardo Ciullo, Carrer de Calaf, 27, 1-1, 08021 Barcelona, Spain (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 681 099 is partially upheld, namely for the following contested services:

Class 39:        Providing information of vessel services; providing flight information; travel guide and escort services; travel booking agency services [excluding those for lodging]; providing information relating to travel time by computer system, in particular providing information relating to a predicted time for moving from one point to another by computer system [including departure, passage or arrival time or elapsed travel time of pedestrians]; providing information relating to train services by computer system; providing information relating to bus services by computer system; providing information relating to flights by computer system; providing information relating to vessel services by computer system; providing information relating to fares, transfers or timetables of trains, vehicles, vessels or aircrafts by computer system; providing information relating to travel time by computer system [including departure, passage or arrival time or elapsed travel time of pedestrians].

2.        International registration No 1 254 401 is refused protection in respect of the European Union for all of the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 254 401, namely against all the services in Class 39. The opposition is based on Spanish trade mark registration No 3 077 617. 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 39:        Travel agency services.

The contested services, after a limitation made by the holder on 18/01/2017, are the following:

Class 39:        Providing road and traffic information; providing information of vessel services; providing flight information; providing information on successive order of paths; travel guide, escort and courier services; travel booking agency services [excluding those for lodging]; providing information relating to travel time by computer system, in particular providing information relating to a predicted time for moving from one point to another by computer system [including departure, passage or arrival time or elapsed travel time of pedestrians]; providing information relating to street traffic by computer system; providing information relating to road congestion by computer system; providing information relating to train services by computer system; providing information relating to bus services by computer system; providing information relating to flights by computer system; providing information relating to vessel services by computer system; providing information relating to fares, transfers or timetables of trains, vehicles, vessels or aircrafts by computer system; providing information relating to streets or roads by computer system [including routes or travel distances of pedestrians]; providing information relating to travel time by computer system [including departure, passage or arrival time or elapsed travel time of pedestrians].

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The terms ‘in particular’ and ‘including’, used in the holder’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

In its observations, the holder argues that the conflicting signs are actually used for different services. More specifically, it states that the core business of the holder, a high-tech company based in Japan, is the prediction of travel time through electronic applications, which has nothing in common with the traditional travel agency services provided by the opponent. However, the Opposition Division notes that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the holder’s argument must be set aside.

The contested travel guide and escort services; travel booking agency services [excluding those for lodging] are all related to either accompanying travellers or travel arrangement. The opponent’s travel agency services are services offered by travel agencies whose aim is to help consumers in the preparation and planning of their travels or trips and doing the necessary work so that all the relevant aspects are duly taken care of. These services usually include booking accommodation, reservation of train/coach/plane tickets, guided tours, etc. They also consist in providing information about journeys as well as on tariffs, timetables and methods of transport. It is apparent from the above that the contested services are included in the broad category of the opponent’s services and are, therefore, identical.

The contested providing information of vessel services; providing flight information; providing information relating to travel time by computer system, in particular providing information relating to a predicted time for moving from one point to another by computer system [including departure, passage or arrival time or elapsed travel time of pedestrians]; providing information relating to train services by computer system; providing information relating to bus services by computer system; providing information relating to flights by computer system; providing information relating to vessel services by computer system; providing information relating to fares, transfers or timetables of trains, vehicles, vessels or aircrafts by computer system; providing information relating to travel time by computer system [including departure, passage or arrival time or elapsed travel time of pedestrians] all refer to the provision of travel information, which is, as mentioned above in the description of the opponent’s services, included in the opponent’s travel agency services. Since the contested services are included in the broad category of the opponent’s services, they are identical.

In this regard and for the sake of completeness, it should be added that the fact that the holder has made some amendments to its list of services, namely by adding in particular providing information relating to a predicted time for moving from one point to another by computer system [including departure, passage or arrival time or elapsed travel time of pedestrians to the service providing information relating to travel time by computer system, does not alter the above findings, since the term ‘in particular’ only introduces a non-exhaustive list of examples, as pointed out previously.

The contested providing road and traffic information; providing information on successive order of paths; providing information relating to street traffic by computer system; providing information relating to road congestion by computer system; providing information relating to streets or roads by computer system [including routes or travel distances of pedestrians] allow information to be obtained about, for instance, road conditions, such as traffic congestion, detours and traffic collisions. These reports help drivers anticipate and avoid traffic problems. These services have nothing relevant in common with the opponent’s travel agency services, as described in detail above, which could lead to a similarity between them. Although the relevant public in both cases may be the same, the services do not have the same purpose and are not provided by the same undertakings via the same distribution channels. Furthermore, they are neither in competition nor complementary to each other. Therefore, they are dissimilar. In its submissions, the opponent argues that the abovementioned information services, referring to the deployment of Intelligent Transport Systems (ITS), are intimately connected to the opponent’s travel agency services and are, therefore, highly similar. In this regard, the Opposition Division notes that, although there might be a certain connection between those two segments of the market (i.e. travelling and transport), this link is insufficient in itself to lead to a finding of similarity between the services under comparison, because the relevant public would not expect them to be provided by the same entity and, furthermore, a substantial number of the relevant factors determining the similarity between services differ in the present case, as seen above.

Finally, the remaining courier services are services for the transportation, delivery, packaging and storage of messages, letters, documents or parcels. These services have nothing relevant in common with the opponent’s travel agency services, as described in detail above, which could lead to a similarity between them. They do not have the same purpose, they target different relevant publics and they are not provided by the same undertakings via the same distribution channels. Furthermore, they are not in competition or complementary to each other. Therefore, they are dissimilar.

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 may vary from average to high, depending on the price and frequency of purchase of these services.

3. The signs

	SMARTRA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 mark is a figurative mark consisting of the verbal elements ‘SMART’ and ‘Inspirador’ in a standard yellow typeface on a dark blue rectangular background; the word ‘SMART’ is depicted in bold upper case letters and the word ‘Inspirador’ is in thinner title case letters.

The contested sign is a word sign composed of the word ‘SMARTRA’.

The word ‘SMART’ of the earlier mark and the word ‘SMARTRA’ of the contested sign have no meanings for the relevant public and both are, therefore, distinctive to an average degree in respect of the relevant services.

In its observations, the holder claims that the Spanish public will recognise the meaning of the word ‘SMART’, as it is used in connection with a category of mobile phones, namely smartphones. Furthermore, according to the holder, the understanding of English by the Spanish public has increased substantially lately and also the relevant consumer interested in travelling is reasonably prepared when it comes to the use of English.

However, the Opposition Division is of the opinion that even if Spanish consumers may be accustomed to the use of the word ‘SMART’ in the field of telecommunications and IT, this does not automatically mean that they will perceive a particular link between this word and travel agency services, even considering those interested in travelling. It cannot simply be assumed that the Spanish public knows English (26/09/2012, T-265/09, Le Lancier, EU:T:2012:472, § 65). This principle applies all the more if the word in the relevant language is very different from the English word at issue, as in the present case (the translation of ‘smart’ in Spanish is ‘inteligente’). The holder’s reference to the website http://www.ef.com.es/epi/regions/europe/spain does not show that the average Spanish consumer would have a sufficient level of English to understand the word ‘SMART’. Therefore, the above link and arguments submitted by the holder do not allow any conclusions to be drawn as regards the level of English among average Spanish consumers of the relevant services.

The word ‘Inspirador’ of the earlier mark will be understood as ‘inspiring, inspirational’ by the relevant public (information extracted from Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/spanish-english/inspirador). In view of the nature of the opponent’s services in Class 39, namely travel agency services, this element is allusive for these services, since it indicates that they will merely be focused on giving advice or ideas for travels, trips or holidays to meet customers’ expectations and requirements. Therefore, the distinctiveness of the word ‘Inspirador’ in the context of the relevant services is below average.

Considering the above, the Opposition Division cannot agree with the holder’s assertion that ‘Inspirador’ is distinctive and not weak in relation to travel agency services. The abovementioned allusion has a certain impact on the distinctive character of this element and the holder’s argument must therefore be set aside.

The figurative element of the earlier mark (i.e. the dark blue rectangle) performs only a decorative function within the mark. Furthermore, it is established practice that when signs consist of both verbal and figurative components (as the earlier mark does), 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). Therefore, the figurative element of the earlier mark has only a limited impact on the consumer’s perception.

In terms of dominance, neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements. Nevertheless, the word ‘SMART’ in the earlier mark may be perceived, contrary to the holder’s opinion, as somehow more visually outstanding than the word ‘Inspirador’. This is justified by the fact that it is in yellow bold upper case letters and is at the beginning of the mark, whereas the word ‘Inspirador’ is depicted in thinner title case letters in second position.

In summary, the word ‘SMART’ of the earlier mark is the most distinctive and visually outstanding element of the earlier mark. The contested sign, being composed of a single verbal element, has no element that could be considered more distinctive or more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in their letters/sounds ‘SMART’ and they differ in their remaining letters/sounds, namely ‘Inspirador’ in the earlier mark and ‘RA’ at the end of the contested sign.

Visually, the signs also differ in the stylisation of the verbal elements of the earlier mark. However, this stylisation is not considered particularly overwhelming and will not distract the consumer’s attention from the word it embellishes. The additional visual difference in the figurative element of the earlier mark, namely the dark blue rectangle, will have limited impact, for the above reasons.

Furthermore, it is important to note that the most distinctive and visually outstanding element of the earlier mark, ‘SMART’, corresponds to the initial five letters of the contested sign, ‘SMART**’. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Finally, the fact that the numbers of letters and syllables of the signs are different, as pointed out by the holder, is not sufficient to conclude that there is no phonetic similarity (17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 48).

Therefore, and taking the impact of the particular elements of the signs as described above into account, the signs are visually and aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the word ‘Inspirador’ in the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the relevant services 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 some less distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

As concluded above, the contested services are partly identical and partly dissimilar to the opponent’s services. Those found to be identical target the public at large with a degree of attention that varies from average to high. The earlier mark enjoys a normal degree of inherent distinctiveness for the relevant services.

The signs in dispute are visually and aurally similar to an average degree and conceptually not similar, as explained in detail above in section c) of this decision. This is, in particular, justified by the fact that the initial five letters/sounds of the contested sign, ‘SMART**’, play an independent, distinctive and visually important role at the beginning of the earlier mark, where the consumer’s attention is generally focused. The differences between the signs, as indicated above, are not sufficient to counteract their similarities, also for the following reasons.

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 and services covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable image.

In the present case, although the public in the relevant territory might detect certain visual and aural differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way depending on the type of services that it designates. It is, therefore, conceivable that the relevant public will regard the services designated by the conflicting signs as belonging to two ranges of services coming from the same undertaking.

The holder refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous decisions referred to by the holder, namely B 2 553 165 and B 2 582 529, are not relevant to the present proceedings, for the reasons explained below.

The signs to be taken into account are the following:

Opposition decision	Earlier mark(s)	Contested sign
No B 2 553 165 (opposition rejected in its entirety)	GP,
No 2 582 529 (opposition rejected in its entirety)	CAT	G.C.A.T-LUX

It is apparent from the table above that the decisions referred to by the holder relate to signs that cannot be considered analogous or similar to the signs in the present case. The Opposition Division is of the opinion that the cases referred to by the holder all compare signs that show fewer similarities than in the present case. Consequently, the holder’s argument relating to the previous decisions must be set aside.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the public in the relevant territory and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 077 617.

It follows from the above that the contested sign must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María del Carmen SUCH SANCHEZ

Martin MITURA

Richard BIANCHI

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.