OPPOSITION No B 2 730 490

Maciuca Ionut, Bd Tomis 287, Bl. T12, Sc. C, Et. 5, Ap. 112, Constanta, Romania (opponent), represented by Mariana Iorgulescu, Bd. Aurel Vlaicu 43, 900075 Constanta, Romania (professional representative)

a g a i n s t

Sc Fast Freightlink Srl, Aleea Rozelor nr. 3 Bloc U4, Sc. A, Et. 3, Ap. 14, Iasi, Romania (applicant), represented by Bogdan Alecu, Strada Paducelului 18, 600012 Brasov, Romania (professional representative).

On 07/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 730 490 is upheld for all the contested services, namely:

Class 39:        Packaging and storage of goods; warehouse storage; unloading and repackaging services; wrapping services for baggage protection during travel; labelling services; storage information; parcel storage services; storage of goods; storage of cargo; storage; consultancy services relating to storage; advisory services relating to the storage of goods; advisory services relating to the packing of goods; transportation and storage; subdividing and repackaging of goods; physical storage of electronically-stored data or documents.

2.        European Union trade mark application No 15 119 522 is rejected for all the contested services. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 15 119 522, namely against all the services in Class 39. The opposition is based on trade mark registration No 12 402 061. 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:        Transportation and delivery of goods; transportation logistics; arranging transportation by land, sea, and air.

The contested services are the following:

Class 39:        Packaging and storage of goods; warehouse storage; unloading and repackaging services; wrapping services for baggage protection during travel; labelling services; storage information; parcel storage services; storage of goods; storage of cargo; storage; consultancy services relating to storage; advisory services relating to the storage of goods; advisory services relating to the packing of goods; transportation and storage; subdividing and repackaging of goods; physical storage of electronically-stored data or documents.

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 transportation includes, as a broader category, the opponent’s transportation of goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested unloading services are included in the broad category of the opponent’s transportation logistics and delivery of goods and, therefore, they are considered identical.

The contested packaging of goods, repackaging services, subdividing and repackaging of goods, labelling services are all services that can be described as coordinated systems of preparing goods for transport, warehousing, logistics, sale and end use. To this extent, they are considered similar to the opponent’s transportation logistics and transportation of goods, as these services can have the same providers, distribution channels and end users; although not strictly complementary, they are often provided with transport services as auxiliary services.

Likewise, the contested storage of goods, warehouse storage, storage information; parcel storage services; storage of goods; physical storage of electronically-stored data or documents; storage of cargo; storage are similar to the opponent’s transportation logistics and transport of goods, as they can have the same providers, distribution channels and end users.

The contested consultancy services relating to storage; advisory services relating to the storage of goods; advisory services relating to the packing of goods are linked to the opponent’s transportation logistics and transportation of goods. Indeed, given that the opponent’s services include all activities related to the organisation and logistics of transport (in terms of infrastructure, vehicles and other operations), it can be held that such services can be complementary to consultancy and advisory services related to storage and packaging of goods. They can be provided by the same undertakings through the same distribution channels and can target the same end consumers. Therefore, they are similar.

The contested wrapping services for baggage protection during travel allow people to protect their luggage from loss, theft or damage when travelling. It is true that the nature and intended purpose of these services and the opponent’s transportation logistics and arranging transportation by land, sea, and air are different. However, they can be provided by the same undertakings (e.g. airline companies offering the additional service of wrapping the traveller’s bag) and target the same end consumers through the same distribution channels. Therefore, they are 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 services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise operating, for instance, in the transport and logistics fields. The degree of attention may vary from average to high, depending on the price, specificity and frequency of contracting such services.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

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 coinciding elements ‘FAST FREIGHT’ are not meaningful in certain territories, for example in those countries where English is not understood. This is the case, for instance, for the vast majority of the Bulgarian-, Hungarian- and Romanian-speaking parts of the general public. The Opposition Division will proceed with the evaluation of the decision in relation to these consumers.

The signs in question are complex marks. The earlier mark contains the verbal elements ‘fast’ and ‘freight’ in standard blue lower case letters, between which is placed a figurative element consisting of two red arrowheads pointing to the right within a blue circle on a white background. The contested sign is composed of the verbal elements ‘Fast Freightlink’ in blue title case letters. Above these words, is placed a figurative element composed of ten arrowheads.

The elements ‘FAST’, ‘FREIGHT’ and ‘FREIGHTLINK’, which the signs have in common, have no meaning for the non-English-speaking part of the relevant public and are, therefore, distinctive. Both signs are composed of distinctive verbal elements and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal elements are more distinctive than the figurative elements. Indeed, 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).

The signs have no elements that can be considered visually dominant.

Visually, the signs coincide in the sequence of letters ‘FAST FREIGHT’, which form distinctive elements and are in very similar blue colours. However, they differ in the sequence of letters ‘LINK’ at the end of the contested sign. This difference has little impact when assessing the similarity of the marks, since the consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

In addition, the signs also differ to the extent that the earlier mark depicts two red arrowheads, whereas the contested sign depicts a set of blue and grey arrowheads. However, as explained above, these figurative elements are less distinctive than the verbal elements and their impact in the present assessment will be limited.

Therefore, the signs are similar to an average 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 ‘FAST FREIGHT’, present identically in both signs. The pronunciation differs in the sound of the letters ‘LINK’ of the contested sign, which has no counterpart in the earlier sign. Therefore, they coincide in 11 of 14 letters.

Since the reasoning set out in the visual comparison above (regarding the distinctiveness and the position of the coinciding elements) also applies here, the signs are aurally highly similar.

Conceptually, as discussed above, neither of the signs has a meaning for the public in the relevant territory. However, a part of the public will perceive the figurative elements contained in the signs as arrowheads pointing towards the right, which imply a concept of forward motion or movement.

Account must be taken of the fact that the coinciding concept conveyed by the figurative elements plays a minor role, since the consumer will refer to the signs in question by their verbal elements. Therefore, the signs are conceptually similar to a low degree.

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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The services covered by the trade marks in question are partly identical and partly similar. They target the public at large and the degree of attention will vary from average to high for the reasons given above in section b) of the present decision. The distinctiveness of the earlier mark is normal.

The signs coincide in the words ‘FAST FREIGHT’, which constitute the entire verbal element of the earlier mark and are at the beginning of the contested sign. However, they differ in the letters ‘LINK’ and the figurative elements (the colour, number and setting of the arrowheads), which, as explained above in section c) of this decision, play secondary roles. Therefore, the signs are visually similar to an average degree and aurally similar to a high degree. Conceptually, they are similar to a low degree, since the signs coincide in the concept conveyed by the arrowheads.

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). Furthermore, 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).

In addition, 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. Indeed, 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). In the present case, consumers might think that ‘Fast Freightlink’ is connected with the earlier mark, ‘fast freight’, since they differ only in the letters ‘link’ at the end of the verbal elements and in the depiction of the figurative elements.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian-, Hungarian-, and Romanian-speaking parts of the general 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 12 402 061. It follows that the contested sign must be rejected for all the contested services.

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

Pierluigi M. VILLANI

Birgit Holst FILTENBORG

María Clara IBÁÑEZ FIORILLO

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.