OPPOSITION No B 2 630 898
Alpitour S.P.A., Via Ernesto Lugaro 15, Torino, Italy (opponent), represented by Studio Torta S.P.A., Via Viotti, 9, 10121 Torino, Italy (professional representative)
a g a i n s t
Aero Bravo International B.V., Kromme Spieringweg 476, 2141AP Vijfhuizen, The Netherlands (applicant), represented by Abcor B.V., Frambozenweg 109/111, 2321 KA Leiden, The Netherlands (professional representative).
On 21/06/2017, the Opposition Division takes the following
1. Opposition No B 2 630 898 is partially upheld, namely for the following contested services:
Class 39: Airline services; arranging of air transport; transportation and delivery services by air, road, rail and sea; airline services for the transportation of passengers
2. European Union trade mark application No 14 592 381 is rejected for all the above services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 592 381, namely against all the services in Class 39. The opposition is based on Italian trade mark registration No 1 590 199. The opponent invoked Article 8(1)(b) EUTMR.
Initially, the opposition was also based on international trade mark registration No 1 187 379 designating the European Union. However, in its observations of 08/02/2017, the opponent clearly limits the basis of the opposition, which is therefore now based only on Italian trade mark registration No 1 590 199.
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 services
The services on which the opposition is based are the following:
Class 39: Travel and holidays activities arrangement.
The contested services are the following:
Class 39: Packaging and storage of goods; advisory services relating to the packing of goods; advisory services relating to the storage of goods; bonded storage; goods warehousing; packaging articles for transportation; packaging articles to the order and specification of others; provision of warehousing services and facilities; providing information relating to warehousing services; providing information about temporary storage services; rental of storage facilities; storage; storage of commercial goods; storage of vehicle parts; storage of goods in warehouses; storage of goods in transit; storage of goods; storage of freight; warehousing of parts; warehouse storage; storage services for aircraft; airline services; arranging of air transport; transportation and delivery of goods; advisory services relating to the distribution of goods; arranging transportation of goods; delivery of parts to grounded aircraft via airplane; information services relating to the transportation of goods; distribution [transport] of goods by air; distribution [transport] of goods by road; distribution [transport] of goods by sea; forwarding of goods; forwarding agency services; transportation and delivery services by air, road, rail and sea; storage and delivery of goods; airline services for the transportation of passengers; airline services for the transportation of goods; airline services for the transportation of cargo.
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.
The applicant argues that the parties have different fields of activity in which the services cannot be seen to be very similar. According to the applicant, it offers services for commercial airlines and provides support to the technical departments of airlines, whereas the opponent is active in the business of holiday resorts. 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 directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, this argument of the applicant has to be set aside.
The opponent’s services travel and holidays activities arrangement consist in planning a trip and doing the necessary so that all the relevant aspects are duly taken care of. These services usually include booking transport and hotels and defining itineraries. They are usually rendered by travel agencies/tour operators in the business of selling travel products, such as flight tickets, package holidays or temporary accommodation.
The contested airline services; arranging of air transport; transportation and delivery services by air, road, rail and sea; airline services for the transportation of passengers and the opponent’s travel and holidays activities arrangement are considered similar to a high degree, as they all refer to transportation of people. These services have a similar purpose. They target the same public and have the same distribution channels. Furthermore, they are complementary.
The remaining contested services, namely packaging and storage of goods; advisory services relating to the packing of goods; advisory services relating to the storage of goods; bonded storage; goods warehousing; packaging articles for transportation; packaging articles to the order and specification of others; provision of warehousing services and facilities; providing information relating to warehousing services; providing information about temporary storage services; rental of storage facilities; storage; storage of commercial goods; storage of vehicle parts; storage of goods in warehouses; storage of goods in transit; storage of goods; storage of freight; warehousing of parts; warehouse storage; storage services for aircraft; transportation and delivery of goods; advisory services relating to the distribution of goods; arranging transportation of goods; delivery of parts to grounded aircraft via airplane; information services relating to the transportation of goods; distribution [transport] of goods by air; distribution [transport] of goods by road; distribution [transport] of goods by sea; forwarding of goods; forwarding agency services; storage and delivery of goods; airline services for the transportation of goods; airline services for the transportation of cargo, all concern storage, packaging or transport of goods. Although the opponent’s services also involve travel arrangements, these have a different purpose and satisfy different needs as, unlike the contested services, they are intended for people and not goods. Therefore, they also target a different public and are not usually rendered by the same kind of companies as the applicant’s services. These services are therefore dissimilar.
- 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 similar to a high degree are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention can vary from average to high as the services may involve higher costs.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- The signs
Earlier trade mark
The relevant territory is Italy.
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 sign is figurative and is composed of a fairly large word, ‘BRAVO’, in orange, preceded by a slightly larger figurative element which can resemble the sun. Above the word ‘BRAVO’ is a much smaller word, ‘VILLAGGI’. As claimed in the registration certificate, the sign is depicted in blue and orange.
The contested sign is a word mark, ‘AERO BRAVO’.
The element ‘BRAVO’, present in both signs, will be associated with applause or an interjection meaning ‘well done!’. As this element is laudatory, its distinctiveness is considered limited.
The Italian word ‘VILLAGGI’ of the earlier sign means ‘villages’. Bearing in mind that the relevant services are travel-related services, this element is non-distinctive for these services, as it can indicate their characteristics, such as the destination.
The element ‘AERO’ of the contested sign will be associated with a prefix indicating an airport or aeroplane. Bearing in mind that the relevant services are transport-related services, this element is non-distinctive for at least some of the services, as it indicates a means of transport, such as air transport.
The figurative element of the earlier sign can resemble a sun for at least a part of the public. With respect to the services in question, it is a banal element often used by travel agents to advertise holidays.
The contested sign has no elements that could be considered clearly more dominant than other elements.
The element ‘VILLAGGI’ of the earlier sign is written in relatively small letters and, therefore, this word is less eye-catching than the other elements, which dominate the contested sign.
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).
Visually, the signs coincide in the somewhat weak element ‘BRAVO’, which is also one of the dominant elements of the earlier sign. However, they differ in the non-distinctive element ‘VILLAGGI’ and the graphic representation of the earlier sign, as well as in the non-distinctive, at least for some of the contested services, element ‘AERO’ of the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the word ‛BRAVO’, present identically in both signs, which, although weak, is a co-dominant element of the earlier sign. The pronunciation differs in the sound of the non-distinctive word ‛VILLAGGI’ of the earlier sign and in the sound of the word ‘AERO’ of the contested mark, which is also non-distinctive for at least some of the services.
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. The figurative element of the earlier sign can be associated by at least a part of the public with a sun. The signs taken as a whole have no meaning; nevertheless, they will be associated with a similar meaning on account of the word ‘BRAVO’. The signs are conceptually similar to an average degree, as they coincide in their most distinctive verbal element, namely ‘BRAVO’.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 a non-distinctive or weak element in the mark as stated above in section c) of this decision, as, when taken as a whole, the sign has no clear meaning.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
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.
In the present case, the services are partly similar to a high degree and partly dissimilar and the attentiveness may vary from average to high. The earlier mark has a normal degree of distinctiveness.
Even though the coinciding element ‘BRAVO’ is of limited distinctiveness, there is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects and the elements that the signs have in common constitute independent components in both signs.
In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘BRAVO’. In support of its argument the applicant refers to some trade mark registrations in Italy and the European Union.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘BRAVO’. Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration.
Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
It follows from the above that the contested trade mark must be rejected for the services found to be similar to a high degree 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.
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
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.