OPPOSITION No B 2 761 172

El Al Israel Airlines Ltd, Ben Gurion Airport, P.O.B. 41, LOD  70150, Israel (opponent), represented by Reddie & Grose Llp, The White Chapel Building 10 Whitechapel High Street, London London E1 8QS, United Kingdom (professional representative)

a g a i n s t

WML Wealth Management Legal Holding Gmbh & Co. KG, Friedrich-List-Str. 3, 01445 Radebeul, Germany (applicant), represented by Riekert & Schmidtke, Am Schießhaus 1, 01067 Dresden, Germany (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 761 172 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 331 168  namely against all the services in Class 39. The opposition is based on International trade mark registration No 1 183 831 designating the European Union, ‘UP’. 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: Transport of people, animals and goods by air and land to and/or from and/or within Israel, the forgoing excluding transportation of cargo, freights, packages, letters, documents, communications, and other printed matter; travel and tourist services, namely travel agency and travel booking services; tours, trips and cruises arranging services; holiday arranging services; tourist information services; all of the aforementioned services (other than transport of people, animals and goods by air) provided in connection with or as an adjunct to transport of people, animals and goods by air and land to and/or from and/or within Israel.

The contested services are the following:

Class 39: Transport; Packaging and storage of goods; Travel arrangement.

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

The term ‘namely’, used in the opponent’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 39

The contested transport; travel arrangement include, as broader categories, or overlap with, the opponent’s transport of people, animals and goods by air and land to and/or from and/or within Israel, the forgoing excluding transportation of cargo, freights, packages, letters, documents, communications, and other printed matter; travel and tourist services, namely travel agency and travel booking services; tours, trips and cruises arranging services; holiday arranging services; tourist information services; all of the aforementioned services (other than transport of people, animals and goods by air) provided in connection with or as an adjunct to transport of people, animals and goods by air and land to and/or from and/or within Israel. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested packaging and storage of goods is similar to the opponent’s transport of goods by air and land to and/or from and/or within Israel. These services refer to the services where a company’s or any other person’s goods are packed and kept in a particular place for a fee, this being a service often provided together with transport. They might be provided by the same undertakings, they have the same channels of distribution and target the same public.

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 and similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high depending on the price or terms and conditions of the delivery of the services.

3. The signs

UP
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 earlier mark is the word mark ’UP’, which will be perceived by the English-speaking part of the relevant public as referring ‘towards a higher place or position.’ (information extracted from Oxford Dictionary on 12/09/2017 at https://en.oxforddictionaries.com/definition/up ).For the rest of the relevant public it has no meaning. In their allegations, both parts agree that the word ‘up’ may be allusive for air transport services, and therefore the mark is weak for these services. However, the allusion to a movement is not descriptive of the services at issue, thus the sign has only a slightly lower than average distinctive character for the English-speaking part of the public which understands its meaning. For the rest of the relevant public, the earlier trade mark as a whole has no meaning in connection with air transport services, therefore, the distinctiveness of the earlier mark must be seen as normal for this part of the public. As regards the remaining services, the earlier mark has no meaning and normal distinctiveness for all the relevant public.

The contested sign is a figurative mark consisting of the verbal element ‘up’ in bold white characters within a black square, the word ‘unitedprint SE’ ( the element ‘unitedprint’ is in bold black characters and the letters ‘SE’ are in a different typescript and will be perceived separately). The word ‘up’ has the meaning above mentioned, but could also be understood as an abbreviation of ‘united print’. The word ‘unitedprint’ has no meaning as a whole, for the non English-speaking part of the public, for which it will be distinctive. The letters ‘SE’ may be understood by a part of the public as the abbreviation for Societas Europaea( European Companies).

As regards the English-speaking part of the public, it is also true that the word ‘unitedprint’ has no meaning as a whole. However, Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Therefore, the English-speaking part of the relevant public will dissect the contested sign’s element ‘Unitedprint’ into ‘united’ with the meaning of ‘joined together politically, for a common purpose, or by common feelings’ (information extracted from Oxford Dictionary on 12/09/2017 at https://en.oxforddictionaries.com/definition/united) ‘print’ with the meaning of ‘produce (text or a picture) by a printing process’ (information extracted from Oxford Dictionary on 12/09/2017 at https://en.oxforddictionaries.com/definition/print). Neither of the terms has a meaning in relation with the services at issue, and they are therefore distinctive. The letters ‘SE’ will be understood with the above explained meaning, by a part of the public, and are therefore, less distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements. In its observations the opponent argues that the coinciding element ‘UP’ is a dominant element of the mark, positioned at the beginning of the mark, and, therefore, it is the element that will be recalled by the consumer. But the mere fact that the element ‘up’ is the first element in the contested sign is not sufficient to consider it dominant. In the contested sign this element is represented in a similar size letters as the remaining elements and it does not have any striking visual representations. Therefore, the contested mark has no elements more dominant than other elements.

The contested sign has the distinctive elements ‘up’ and ‘Unitedprint’ that are clearly perceptible, thus the contested sign elements ‘up’ and ‘unitedprint’ are more distinctive than the element ‘SE’.

Visually, the signs coincide in the word ‘up’, which is the whole earlier mark and the first verbal element in the contested sign. However, they differ in the stylised script and black square of the element ‘up’ and in the additional verbal elements ‘Unitedprint SE’ in the contested sign, which are composed of 13 letters in total and make a different overall visual impression.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛up’, present identically in both signs. The pronunciation differs in the sound of the letters ‛Unitedprint SE’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are aurally similar to a low degree, only to the extent that they share the word ‘up’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. There is a link as both marks will be associated with the concept of ‘UP’ by the English-speaking part of the public. To that extent the degree of conceptual similarity is deemed as average for the English-speaking part of the relevant public.

Part of the relevant public which do not understand English, may grasp only the meaning of ‘SE’, as European Company, for this part of the public, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the rest of the relevant public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

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 for some of the services in question, namely air transport services in Class 39 for the part of the public which understands English. The mark has a normal degree of distinctiveness for air transport services for the rest of the relevant public for which the mark has no meaning in relation with the services in question. For the rest of the services at issue, the degree of distinctiveness will be normal for the entire relevant public.

5. Global assessment, other arguments and conclusion

The services are partly identical and partly similar.

The earlier mark is a two letters word sign, while the contested mark is a figurative mark composed of three verbal elements (15 letters in total). The signs are visually and aurally similar to a low degree due to the coinciding word ‘UP’ and they differ as the contested sign is composed of three verbal elements and figurative elements (stylised script and square). The signs are conceptually similar for a part of the relevant public and a conceptual comparison is not possible for another part of the relevant public.

Although the signs coincide in the word ‘UP’, this word is short and stylised in the contested sign. In addition, there are sufficient visual and aural differences, due to the long second verbal element of the contested mark, to result in the signs creating significantly different overall visual and aural impact, even for the part of the relevant public that understands the concept of the word ‘UP’, taking also into account that the public’s degree of attentiveness may vary from average to high, and the lower than average distinctiveness of the earlier mark for a part of the relevant public for some of the services.

It is acknowledged, as argued by the opponent, that the coinciding letters ‘UP’ are placed at the beginning of both marks and that consumers generally tend to focus on the first element of a sign when encountering a trade mark. However, this argument cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity between the marks must take account of the overall impression created by them.

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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).

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35).

The Opposition Division considers that the differences between the signs – including the different number and length of verbal elements and the figurative typescript– are sufficient to counteract the low degree of visual and aural similarity as well as the average degree of conceptual similarity (for part of the public) between them, even for identical services and even for public with an average level of attentiveness.

Considering all the above, even for identical and similar services there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Sandra KASPERIŪNAITÉ

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Pedro JURADO MONTEJANO

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.