OPPOSITION No B 2 584 764

easyGroup Ltd, 10 Ansdell Street, Kensington, London W8 5BN, United Kingdom (opponent), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative)

a g a i n s t

Brainbox (Μπρεϊνμποξ) Πληροφορικη – Ανωνυμοσ Εταιρια, Θερμαϊκού 2-4, 55133 Θεσσαλονίκη, Greece (applicant).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 584 764 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 773 213 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 773 213. The opposition is based on, inter alia, European Union trade mark registration No 10 735 561. The opponent invoked Article 8(1)(b) and 8(5) 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 10 735 561.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 12: Vehicles; vehicle parts and fittings; apparatus for locomotion by land, air or water.

Class 16: Paper, cardboard and goods made from these materials; printed matter; photographs; stationery; packaging materials; printed publications; books, manuals, pamphlets, newsletters, albums, newspapers, magazines and periodicals; tickets, vouchers, coupons and travel documents; identity cards; labels and tags; posters, postcards, calendars, diaries; teaching and instructional materials.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; real estate agency services; building society services; banking; stockbroking services; financial services provided via the internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information; financial services for the purchase of vehicles; financial services relating to motor vehicles; insurance services relating to motor vehicles; insurance services relating to motor vehicles; lease purchase financing of vehicles; hire purchase financing of vehicles; provision of finance for the purchase of motor vehicles; secured loans to fund the provision of bailment of motor vehicles; secured loans to fund the provision of contract hire of motor vehicles.

Class 37: Building construction; repair; installation services; maintenance and repair of computer hardware; painting and decorating; cleaning services; vehicle maintenance and repair services; arranging for the maintenance of motor land vehicles; maintenance and repair of land vehicles; maintenance and repair of vehicles; provision of information relating to the maintenance of vehicles; refurbishment of vehicles; repair of accident damage to vehicles; repair of land vehicles; repair of vehicles; repair services relating to vehicles; service stations for the maintenance of vehicles; service stations for the repair of vehicles; servicing of vehicles; washing of vehicles.

Class 39: Transport; packaging and storage of goods; travel arrangement; travel information; provision of car parking facilities; transportation of goods, passengers and travelers by air, land, sea and rail; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travelers by land and sea; airline services; baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; rental and hire of aircraft, vehicles and boats; chauffeur services; taxi services; bus services; coach transport services; rail services; airport transfer services; airport parking services; aircraft parking services; escorting of travelers; travel agency services; tourist office services; advisory and information services relating to the aforesaid services; information services relating to transportation services, travel information and travel booking services provided on-line from a computer database or the Internet.

Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotel services; hotel reservation services; hotel services for the provision of facilities for exhibitions and conferences.

The contested goods and services are the following:

Class 6: Metal bicycle locks; bicycle parking installations of metal; support stands [structures] of metal for bicycles; bicycle sheds [structures] of metal.

Class 19: Bicycle parking installations, not of metal; bicycle sheds [structures] of non-metallic materials.

Class 42: Science and technology 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 goods in Classes 6 and 19

The contested goods are all accessories for bicycles, namely locks as well as storage solutions and parking stands. They are usually sold in shops where bicycles are sold. Indeed, consumers who are interested in buying bicycles may be interested in bicycle locks or in bike stand racks. Thus, since they use the same distribution channels and users, the contested goods are similar to a low degree to the opponent’s vehicles in Class 12.

Contested services in Class 42

The contested science and technology services cover among other services, those related to the development, analysis, protection of different technological and computer systems (e.g. computer system analysis, computer virus protection services). As these services may be related to technological systems and computer systems, they may coincide in their general purpose with the opponent’s maintenance and repair of computer hardware in Class 37, namely ensuring the proper functioning of the technical equipment. They also target the same end consumers. Moreover, it is common in the field of information technology for the same or related (authorised) undertakings to provide scientific and technological analysis, design and installation, as well as maintenance services. Therefore, the services under comparison are found to be similar.

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 goods found to be similar to a low degree are directed at the public at large. The degree of attention is considered here to be average. The services found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise, such as those looking for specific technological or scientific solutions. In this case, the degree of attention may vary from average to higher than average depending on the specific purposes and/or prices of the relevant services.

3. The signs

EASYBUS
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). This applies by analogy to international registrations designating the European Union. 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 ‘EASY’ and other terms of the signs are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on, for instance, the Spanish-speaking part of the public, where English is not widely understood.

The earlier mark is the word mark ‘EASYBUS’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

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, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). With respect to the word ‘EASYBUS’, due to the fact that the element ‘BUS’ has a clear meaning for the Spanish-speaking public, as it refers to ‘a large motor vehicle which carries passengers’, the public will separate this element from the remaining part, ‘EASY’. Furthermore, as a word mark, the sign could be used with ‘EASY’ in lower case and ‘BUS’ in capital letters or vice versa, thus reinforcing the splitting of the sign.

The term ‘BUS’ is descriptive for the relevant goods in Class 12, namely vehicles, as it refers to the nature of these goods.

Even though ‘easy’ is a rather common English word, it is unlikely to be understood by a significant part of the Spanish consumers.

The contested sign is a figurative mark consisting of the large verbal elements ‘easyBike’ depicted in stylised black and red letters. Underneath appear the words ‘Brainbox Bike Sharing Technology’ in much smaller fairly standard black letters. All these verbal elements are preceded by a white bicycle enclosed in a red circle.

The words ‘easyBike’ and the figurative element are the most dominant elements, as they stand out compared to the remaining word elements ‘Brainbox Bike Sharing Technology’.

The word element ‘Technology’ will be associated by a part of the relevant public with the equivalent word in Spanish ‘tecnología’, given its grammatical resemblance with the English word in question. Bearing in mind that the relevant goods and services are technology related, this element is weak, as it alludes to the nature of these goods and services.

Likewise, as the relevant goods and services are science and technology services as well as accessories for bicycles, the depiction of a bicycle is considered as descriptive.

Visually, the signs coincide in the sequence of letters ‘EASYB’. The marks differ for the earlier mark in the verbal element ‘US’ and, for the contested sign, in the letters ‘IKE’, in the descriptive stylised bicycle and in the secondary verbal sequence ‘Brainbox Bike Sharing Technology’, with the last term being weak. The contested sign is also slightly stylised and in two colours.

It has also to be recalled that the common distinctive element ‘EASY’ will be individualised in each sign, since the following term ‘BUS’ (descriptive for vehicles) will be recognized in the earlier mark and since the following part ‘Bike’ in the contested sign will be perceived as an independent unit due to a different colour and a capital initial letter.

In addition, more than the beginning of the conflicting marks is identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

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

Aurally, the pronunciation of the signs coincides in the sound of the impacting first letters ‛EASYB’, present identically in both signs. The pronunciation differs in the sound of the remaining last letters ‛US’ / ‘IKE’ and in the sound of the less dominant verbal elements ‘Brainbox Bike Sharing Technology’, which are unlikely to be pronounced in view of their secondary position.

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 meaning of the coinciding verbal element ‘easy’ will not be understood by a sufficient part of the Spanish public. Therefore, neither of the signs has a meaning as a whole.

However, the verbal element ‘BUS’ of the earlier mark and the depiction of a bicycle in the contested sign, despite being weak for most of the goods and services, convey related concepts. Indeed, both are vehicles and means of locomotion.

Finally, part of the Spanish relevant public may understand the less dominant and weak element ‘Technology’.

In the light of the above, there is a low degree of conceptual similarity between 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 goods and 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 the descriptive element ‘BUS’ (for some goods) in the mark as stated above in section c) of this decision.

5. 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 contested goods and services are similar to different degrees to the opponent’s goods and services. The degree of attention may vary from average to higher than average.

The signs are visually and aurally similar to an average degree and conceptually lowly similar. The similarity results mainly from the coinciding distinctive, individualised and first element ‘EASY’. It even extends to the following common letter ‘B’. Moreover, both signs convey a similar concept of a vehicle.

The differences are not particularly prominent and are mainly confined to weak, descriptive or less dominant elements.

In addition, account should be taken of the normal degree of distinctiveness of the earlier mark and 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).

Based on all the foregoing, it is considered that the undeniable coincidences between the signs have a decisive impact. Taken together with the similarity (and even low similarity) of the goods and services, it is likely that the public will believe that these goods and services come from the same undertaking or economically linked undertakings. It is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). For instance, the signs may be perceived as two variations of a same mark which are linked to different types of vehicles (Bus / bicycles).

These findings apply even with a possible higher level of attention for the relevant services. It has also to be recalled that 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).

Therefore, the Opposition Division considers that the marks convey similar overall impressions and that 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.

The applicant refers to a previous decision from the Greek Trade Mark Administrative Committee to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings, since the relevant goods and services are different and the signs in conflict are not clearly identified. Moreover, the applicant did not provide a copy of the decision in the language of the proceedings, namely English. In summary, there is clearly not enough information on the factual and legal background of this national case.

In the light of the above, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 735 561. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right ‘EASYBUS’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Sonia MEHANNEK

Steve HAUSER

Martina GALLE

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.