OPPOSITION No B 2 591 777

CF&S Estonia AS, 12, Ahtri Str, 10151 Tallinn, Estonia (opponent), represented by Dingli & Dingli – Law Firm, 18/2 South Street, Valletta 1102, Malta (professional representative)

a g a i n s t

Overseas Group SA, Suichapa 268 8th Floor, Buenos Aires 1008, Argentina (applicant), represented by Oficina Ponti SLP, Consell de Cent 322, 08007 Barcelona, Spain (professional representative).

On 18/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 591 777 is partially upheld, namely for the following contested services:

Class 39:        Transport of goods, expressly not including persons; Transport logistics relating to national and international cargo; Unloading (cargo); Freight agents; Freight (transport of goods); Delivery of goods.

2.        European Union trade mark application No 14 450 449 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 450 449, namely against all the services in Class 39. The opposition is based on European Union trade mark registration No 11 685 021. The opponent invoked Articles 8(1)(a) and (b) and Article 8(5) EUTMR.

PRELIMINARY REMARKS

In its observations of 21/03/2016, the opponent claims that the contested application has characteristics that constitute absolute grounds for refusal under Article 7(1)(b) and (c) and 7(2) EUTMR and, accordingly, the contested EUTM application does not meet the requirements to be registered.

The Opposition Division does not question the validity of the registration of the earlier mark, as this cannot be done within the framework of the current opposition proceedings in which the relative grounds for refusal are examined.

Therefore, the opponent’s argument must be dismissed.

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 arrangement.

The contested services (after limitation) are the following:

Class 39:        Transport of goods, expressly not including persons; Packaging and storage of goods, Transport logistics relating to national and international cargo; Warehousing; Unloading (cargo); Freight agents; Freight (transport of goods); Traffic information; Storage and delivery of goods.

The applicant requested to narrow the scope of protection of its trade mark by adding the expression ‘of goods, expressly not including persons’ after ‘transport’.

 

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

The term ‘expressly not including persons’, used in the applicant’s list of services, indicates that the specific services do not refer to transport of persons.

Although the applicant has expressly excluded from its specification some of the services (after limitation, i.e. transport of goods, expressly not including persons) which are of interest to the opponent, still the fact remains that in both cases the kind of the services is the same (transport) and the same type of undertaking, that is, a travel/transport company, can be responsible for the provision of the respective services.

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 opponent’s travel arrangement is a service related to organising the movement of people from one place to another, which consists in planning the trip and booking and making reservations for hotels, restaurants, local travel, etc.

The contested services, namely transport of goods, expressly not including persons and delivery of goods, are similar to a low degree to the opponent’s travel arrangement. The services involve moving goods from one place to another using any means of transport. These services are provided by specialised companies that may be the same as those that supply the opponent’s services of travel arrangement. Moreover, the services can be complementary and they target the same public.

The contested unloading (cargo); freight agents and freight (transport of goods) are similar to a low degree to the opponent’s travel arrangement. The contested services involve liaison between a client that needs shipping or transport services and an authorised motor carrier that will perform such movement or transport of goods. Although the contested services concern goods, whereas the opponent’s travel arrangement concerns persons and goods, it is not uncommon for these services to be provided by the same companies in the transport sector, since both sets of services concern in some way the organisation of the movement or transport of something/someone over a distance and have a similar purpose to that extent. They can also be complementary and have the same distribution channels. Moreover, they coincide in their end users.

The contested transport logistics relating to national and international cargo are similar to a low degree to the opponent’s travel arrangement. The contested services are related to the process of planning, implementing and controlling procedures for efficient and effective transport or movement from one location to another. These services have the same purpose as the opponent’s travel arrangement. Moreover, they can coincide in end users and distribution channels.

The contested packaging and storage of goods, warehousing and storage of goods are dissimilar to the opponent’s travel arrangement. The contested services merely refer to the services whereby goods are packed and kept in a particular place in exchange for a fee. The services under comparison do not have the same purpose, are not in competition nor are they complementary to each other and they are not provided by the same undertakings that offer the opponent’s travel arrangement.

The contested traffic information is dissimilar to the opponent’s travel arrangement. The contested services allow obtaining information about road conditions such as traffic congestion, detours, and traffic collisions. The reports help drivers anticipate and avoid traffic problems. They concern mainly road and air traffic. The services under comparison do not have the same purpose. They are not in competition nor are they complementary to each other and they are not provided by the same undertakings.

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 similar to a low degree are directed at the public at large, as well as at business customers with specific professional knowledge or expertise in the field of transport. The degree of attention may vary from average to high, depending on the value of the transported goods.

3. The signs

CFS
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 a word mark, ‘CFS’. These letters will be meaningless for the majority of the relevant public. However, a minority might perceive them as the abbreviation for ‘Container Freight Station’ (information extracted from Business Dictionary on 12/04/2017 at www.businessdictionary.com/definition/container-freight-station-CFS.html). In any case, these letters are distinctive for the relevant services (travel arrangement in Class 39). As it is a one word sign it has no element that could be considered more dominant (visually eye-catching) or more distinctive than other elements.

The contested sign is a figurative mark composed of a tilted dark-blue oval containing three lines in lighter-blue that start at the centre and extend towards the left. Below there is a dark-blue acronym ‘CFS’ in a cursive font. The verbal element ‘CFS’ is the dominant element of the contested sign, due to its position, size and colour, while the other figurative elements are secondary, due to their figurative and rather decorative character.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

As regards the distinctiveness of the verbal element, ‘CFS’, these letters will be meaningless for the majority of the public and will be associated by only a small part of the public with ‘Container Freight Station’. Therefore, in relation to the relevant services, these letters will be distinctive for this part of the public for whom it will be meaningless. The verbal element ‘CFS’ will be descriptive for another part of the public, as it could inform consumers that the services are or are related to merchandise transport and/or logistics services.

The analysis below will be carried out with regard to the part of the public that will not

perceive the letters ‘CFS’, contained in both marks, as the abbreviation for ‘Container

Freight Station’, since this is the part most likely to be confused.

Visually, the signs coincide in ‘CFS’. However, they differ in some figurative elements that are present in the contested sign as described above.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CFS’, present identically in both signs (the figurative elements of the contested sign won’t be pronounced).

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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, that it those for whom the expression ‘CFS’ will be meaningless. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (20/09/1998, C-39/97, Canon, EU:C:1998:442, § 17 et seq.).

In the case at issue, the services are partly similar to a low degree and partly dissimilar. The marks are visually highly similar and aurally identical. The entire earlier mark is included in the contested sign as its dominant element. The differing figurative elements of the contested mark, as stated above, have a lesser impact on the consumers and these additional figurative elements play a secondary role in the contested sign.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, and taking into account the abovementioned principle of interdependence and the principle of imperfect recollection, the Opposition Division considers that the coinciding element is sufficient to outweigh the differences between the signs and the fact that the services are similar to a low degree.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to a low 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs (only aurally identical) and the services are obviously not identical.

Therefore, the analysis will continue according to the other ground invoked, namely

Article 8(5) EUTMR, for the services found to be dissimilar.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 21/03/2016 the opponent submitted its letter arguing that the earlier mark is reputed. Although some evidence was attached to the aforesaid letter, it contained no documents concerning the earlier mark’s reputation.  

On 05/12/2016 the opponent was informed that the evidence submitted on 21/03/2016 was incomplete (i.e. 76 pages missing according to the indication in the cover letter). The opponent was invited to submit these missing documents and the time limit expired on 02/01/2017.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Plamen IVANOV

Michal KRUK

Judit NÉMETH

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.