OPPOSITION No B 2 156 464

Phillips 66 Company, P.O. Box 4428, Houston, Texas TX 77210, United States of America (opponent), represented by Sipara Limited, Seacourt Tower, Third Floor, West Way, Oxford OX2 0JJ, United Kingdom (professional representative)

a g a i n s t

Jets (Bournemouth) Limited, Building 332, South East Sector Bournemouth International Airport, Hurn Dorset BH23 6SE, United Kingdom (applicant), represented by Zirngibl Rechtsanwälte Partnerschaft mbB, Brienner Str. 9, 80333 München, Germany (professional representative).

On 26/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 156 464 is upheld for all the contested services, namely:

Class 37:        Vehicle service stations [refuelling and maintenance].

2.        European Union trade mark application No 11 327 764 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 327 764, namely against some of the services in Class 37. The opposition is based on European Union trade mark registration No 2 820 405. 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 37:        Vehicle services station services; vehicle lubrication, maintenance, cleaning and repair services; anti-rust treatment for vehicles; vehicle tyre fitting and repair; vehicle washing services; vehicle upholstery services.

The contested services are the following:

Class 37:        Vehicle service stations [refuelling and maintenance].

The contested vehicle service stations [refuelling and maintenance] are included in the broader category of the opponent’s vehicle services station services. 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 in relation to maintenance of commercial transport vehicles. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the contracted services.

3. The signs

JET
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 word ‘JET(S)’ is 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 the English-speaking part of the public such as the United Kingdom, Ireland and Malta.

The earlier mark is the English word ‘JET’ which will be understood as, inter alia, an aircraft powered by one or more jet engines. As the relevant services can be intended for jet aircrafts, the distinctiveness of the word ‘JET’ is low.

The contested sign comprises a very slightly stylised word ‘JETS’ in white letters against a blue shape, and a four-pointed star. The sign’s figurative elements are commonplace shapes used in trade and marketing. Being entirely decorative and non-distinctive on their own, the public will perceive them as mere carriers of the sign’s verbal element.

The contested sign’s figurative elements are incapable of establishing any conceptual difference between the signs. Since the word ‘JETS’ is the plural form of the sole word comprising the earlier mark, it is considered that the signs are conceptually highly similar, despite the low distinctiveness of the concept that the signs have in common.  

Whilst the earlier mark has no identifiable components, the verbal element ‘JETS’ of the contested sign, by virtue of its size and central position, is the most eye-catching element.

Visually and aurally, the signs coincide in the letters/sounds ‘JET’. They differ in the letter/sound ‘S’ of the contested sign, however, on account of the inconspicuous position of the additional letter/sound it may pass unnoticed by the relevant public.

Although there is a certain visual difference resulting from the figurative elements of the contested sign, being non-distinctive they have a very low impact on the sign’s overall impression. 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).

Therefore, the signs are highly similar both visually and aurally, despite the low distinctiveness of the common word ‘JET(S)’.  

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the services in question.

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). The interdependence principle is of a particular importance in the present case, since the services in question are identical.

The striking similarity between the signs results from the fact that, from the perspective of the English-speaking part of the public, the contested sign features a verbal element which is highly similar, on all levels, to the sole element of the earlier mark.

Admittedly, the distinctiveness of the word ‘JET(S)’ is low. In this regard, account must be taken of the fact that a finding that an element that the marks have in common has a low degree of distinctive character does not automatically prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark and the elements that the marks have in common must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark or a coinciding element with a low degree of distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, as explained in section c) of this decision, the differences between the signs are confined to aspects of a secondary importance. 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).

The signs do not contain any element capable of counteracting the striking similarity between them, even where the public’s degree of attention is enhanced. 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 interdependence principle, there is a likelihood of confusion on the part of the English-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 2 820 405. It follows that the contested trade mark 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

Michele M. BENEDETTI ALOISI

Solveiga BIEZA

Julie GOUTARD

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.