OPPOSITION No B 2 732 439

Ibercondor Barcelona, S.A., Nàpols, 282-286, 08025 Barcelona, Spain (opponent), represented by Canela Patentes y Marcas, S.L., Girona, 148 1-2, 08037 Barcelona, Spain (professional representative)

a g a i n s t

NSC Holding GmbH & Cie. KG, Van-der-Smissen-Straße 9, 22767 Hamburg, Germany (applicant), represented by Ince & Co Rechtsanwälte und Solicitors, Große Elbstr. 47, 22767 Hamburg, Germany (professional representative).

On 06/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 732 439 is upheld for all the contested services.

2.        European Union trade mark application No 15 292 675 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 292 675,. The opposition is based on, inter alia, European Union trade mark registration No 2 794 980, ‘IBERCONDOR’. 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 European Union trade mark registration No 2 794 980.

1. The services

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

Class 39:        Transport, packaging and storage of goods; air transport of goods, aeronautical transport of goods, warehouse rental (storage), rental of storage containers, transport by boat and by automobile, rental of boats and automobiles, freight brokerage, transport brokerage, shipbrokerage, storage of goods, loading and unloading of goods, freighting, storage and transport information, delivery of parcels; excluding transport of persons.

The contested services are the following:

Class 39:        Marine transport; Ship chartering; Freighting; Freight and transport brokerage; Freight [shipping of goods].

Freighting, freight and transport brokerage; freight [shipping of goods]   are identically contained in both lists of services (including synonyms).

The contested marine transport and ship chartering are included in the broad category of, or overlap with, the opponent’s transport. 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 and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

IBERCONDOR
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘CONDOR’ is meaningful in certain territories, for example, in Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark is a word mark, consisting of the verbal element ‘IBERCONDOR’, which has no particular meaning as such in the relevant territory. However, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, a majority of the relevant public will be able to split the mark in the letters ‘IBER’, referring, inter alia, to (natives of) the Iberian Peninsula or, in Catalan, meaning Iberian (information extracted from Collins Spanish-English Dictionary on 25/08/2017 at https://en.wiktionary.org/wiki/iber). ‘CÓNDOR’, in Spanish, is the name of a large South American bird. Therefore, the mark as a whole will be perceived as a condor from Iberia, or an Iberian condor.

The contested mark is a figurative mark, consisting of the word ‘CONDOR’ in white standard letters on a light blue coloured field with the small white italicized letters ‘NSC’ on the top right corner. Above the letters ‘O’ and ‘R’ is a figurative element of a small representation of a large bird, also in white, with its wings folded out. Underneath this verbal element is the white letters ‘SERVICE’ present on a field identical to the one above, but in navy blue. At the bottom right of this field is a small, barely perceptible figurative element of three lines above what resembles the letter ‘V’.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, there are two minor elements, the letters ‘NSC’ on top right and the figurative element on lower right, that are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

The element ‘CONDOR’ of the earlier mark will be understood as the bird, condor, by the relevant part of the public, as described above. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive. The element ‘IBER’ will be associated with the Iberian Peninsula. Bearing in mind that the relevant services are related to transport and freight services, this element is weak for these services, since it may serve to designate the geographical origin of the services concerned.

In the contested sign, the element ‘CONDOR’ and the figurative element with the representation of the large bird above this word (which reinforces this meaning) will be associated with the bird condor, and are distinctive for the relevant services. The word element ‘SERVICE’ (which will be understood in the meaning of service because it is close to the Spanish equivalent ‘servicio’) only characterizes that services are performed and is therefore non-distinctive. Furthermore, the other figurative elements (the blue fields) in the mark are of a purely decorative nature, therefore less distinctive.

The verbal elements ‘CONDOR’ and ‘SERVICE’, together with the blue fields, are the dominant elements in the contested sign, as they are the most eye-catching.

Visually, the signs coincide in the verbal element ‘CONDOR’, which is distinctive for the relevant services. However, they differ in the first four letters ‘IBER’ of the earlier mark and the letters ‘SERVICE’ of the contested sign, which are weak or non-distinctive elements (as described above). They also differ in the figurative element of a bird and in the less distinctive background elements of the contested mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CONDOR’, present identically in both signs, which is distinctive. The pronunciation differs in the sound of the letters ‛IBER’ of the earlier sign, which are weak, and in the sound of the word ‘SERVICE’ of the contested sign, which is non-distinctive.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the sematic content conveyed by the marks. As both signs will be associated with the meaning of ‘condor’, the signs are conceptually highly 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 services in question from the perspective of the Spanish-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods and 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).

It must be borne in mind that the relevant public are professionals, as well as the general public. The degree of attention is deemed to vary from average to high.

The contested services are identical to the services for which the earlier mark is registered.

The conflicting signs are visually and aurally similar to an average degree and conceptually highly similar, to the extent that they coincide in the distinctive verbal element ‘CONDOR’. The difference between the marks refers to non-distinctive, weak or secondary elements and aspects.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 European Union trade mark registration No 2 794 980. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right ‘IBERCONDOR’ 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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Plamen IVANOV

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.