OPPOSITION No B 2 781 287

Masabi Ltd., 37 Bevenden Street, London N1 6BH, United Kingdom (opponent), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative)

a g a i n s t

Cooltra Motosharing, S.L., Reina Cristina 2, 2-2, 08003 Barcelona, Spain  (applicant), represented by Laia Torrents Homs, C. Provenza 286, 2° 1ª, 08008 Barcelona, Spain  (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 781 287 is partially upheld, namely for the following contested goods and services:

Class 9:          Software and applications for mobile devices, namely, for use in vehicle sharing services; computer software applications [downloadable], namely, for use in vehicle sharing services; application software for mobile devices, namely, for use in vehicle sharing services; software for application and database integration for use in vehicle sharing services; application software for cloud computing services; computer databases; computer software for database management; computer software for creating searchable databases of information and data; software for GPS navigation systems; software for satellite positioning systems; website development software; computer software, namely, for use in vehicle sharing services.

Class 39:          Rental of means of transportation; motorcycle rental; hiring of vehicle accessories, arranging and booking of tourist visits; passenger road transport, travel agency services; accompanying travelers; chauffeur services.

2.        European Union trade mark application No 15 460 215 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 460 215 namely against all the goods and services in Classes 9 and 39. The opposition is based on, inter alia, European Union trade mark registration No 15 081 615. 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 15 081 615.

1. The goods and services

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

Class 9:        Downloadable software in the nature of mobile applications for purchasing and displaying tickets; downloadable software in the nature of mobile applications providing information relating to transportation and third-party discounts; downloadable software in the nature of mobile applications for ticketing management and verification; downloadable software in the nature of mobile applications for processing electronic payments.

Class 39:        Arranging tickets for train, bus and other forms of public transport; booking of tickets for train, bus and other forms of public transport; booking of tickets for travel; booking of travel tickets; information services relating to transport timetables; information services relating to travel; issuing of tickets for travel; on-line transportation reservation and travel ticket reservation services; providing an on-line searchable computer database featuring information on travel; providing travel information to travelers regarding fares, timetables and public transport; provision of computerised travel information; provision of information on matters relating to travel; provision of information relating to travel routes; provision of information relating to travel; provision of travel information; ticket booking services for travel; ticket reservation services for travel; ticketing services for travel; travel and transport information and advisory services; travel information services; travel ticket reservation service; management of travel ticketing for others; providing check-in services.

Class 42:        Providing temporary use of non-downloadable computer software for providing data analytics, business analytics and for collecting and analyzing data; providing temporary use of non-downloadable computer software for mobile ticketing management; providing temporary use of non-downloadable computer software for retrieving, tracking, reporting, analyzing, testing, measuring and managing data and customer interactions; software as a service (SAAS) services featuring software for mobile ticketing management.

The contested goods and services, after a limitation requested on 28/11/2016, are the following:

Class 9:        Software and applications for mobile devices, namely, for use in vehicle sharing services; computer software applications [downloadable], namely, for use in vehicle sharing services; application software for mobile devices, namely, for use in vehicle sharing services; software for application and database integration for use in vehicle sharing services; application software for cloud computing services; computer databases; computer software for database management; computer software for creating searchable databases of information and data; contents gauges; GPS transmitters and receivers; global positioning instruments; software for GPS navigation systems; software for satellite positioning systems; website development software; computer software, namely, for use in vehicle sharing services.

Class 39:         Rental of means of transportation; motorcycle rental; hiring of vehicle accessories, arranging and booking of tourist visits; passenger road transport, travel agency services; accompanying travelers; chauffeur services; global positioning system navigation services; vehicle tracking by computer or GPS; vehicle location services; location of motorcycles.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The relevant factors relating to the comparison of the goods or services includes, 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 Class 9

The contested software and applications for mobile devices, namely, for use in vehicle sharing services; computer software applications [downloadable], namely, for use in vehicle sharing services; application software for mobile devices, namely, for use in vehicle sharing services; software for application and database integration for use in vehicle sharing services; application software for cloud computing services; computer databases; computer software for database management; computer software for creating searchable databases of information and data; software for GPS navigation systems; software for satellite positioning systems; website development software; computer software, namely, for use in vehicle sharing services are identical as they include as a broader category or overlap (to the extent that the contested goods can provide information relating to transportation) with, or are at least similar to the opponent’s downloadable software in the nature of mobile applications providing information relating to transportation.

The contested contents gauges are measuring apparatus. The contested GPS transmitters and receivers; global positioning instruments consist of or include a navigational system using satellite signals to fix the location of a radio receiver on or above the earth's surface. These goods are dissimilar to the opponent’s goods and services in Classes 9, 39 and 42, which respectively consist of software with various purposes, transportation services and software-related services. Admittedly some GPS systems include software; however the mere fact that a certain product can be composed of several components does not establish automatic similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61), if the other criteria to find similarity are not met. These goods and services have different nature and are not typically found in the same trade channels. Moreover, the contested goods and the opponent’s goods and services have different purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other.

Contested services in Class 39

The contested travel agency services overlap with the opponent’s transport advisory services due to the fact that travel agencies can provide a wide range of services, including transport advisory services. Therefore, these services are identical.

The contested rental of means of transportation; motorcycle rental; hiring of vehicle accessories concern the rental of vehicles and accessories therefor and may be used in travel or during tours and sightseeing. The contested arranging and booking of tourist visits; passenger road transport; accompanying travelers; chauffeur services consists of arranging some aspects of travel, including transport and sightseeing. Therefore, they are closely linked to the opponent’s arranging tickets for train, bus and other forms of public transport; travel and transport advisory services. Moreover, they target the same consumers and can be provided by the same undertakings. Furthermore, consumers wishing to arrange transport might decide to book or rent, for example, a vehicle by themselves instead of delegating the responsibility to a transport company. In that sense, some of the relevant services can also be in competition. Therefore, the services are considered similar.

The contested global positioning system navigation services; vehicle tracking by computer or GPS; vehicle location services; location of motorcycles allow customers to locate vehicles by means of information technology devices. These services are dissimilar to the opponent’s goods and services in Classes 9, 39 and 42 that have already been defined above. These goods and services have a different nature. In particular, the contested services and the goods in Class 9, even if they may refer to the same technology (GPS), cannot have the same nature and method of use by definition, since one concerns services and the other goods. Moreover, the contested services and the opponent’s goods and services can also have different purposes and are not typically found in the same trade channels. They do not have the same suppliers or producers. They are not complementary to or in competition with each other.

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 and services found to be identical or similar are directed at the public at large. The degree of attention is average.

3. The signs

JUSTRIDE
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 marks are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-, Spanish- and Bulgarian-speaking parts of the public.

The earlier mark is the word mark ‘JUSTRIDE’, which has no meaning for the relevant public and is, therefore, distinctive. As a general rule, when a sign is registered as a word mark, it is the word as such that is protected and not its written form.

The contested sign is a figurative mark consisting of the words ‘JUST RIDE’ in slightly stylised blue upper case letters. Being meaningless, the word element is distinctive. The exclamation mark that follows the words is used to show that it is an emphatic declaration and will be attributed little, if any, trade mark significance.

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 stylisation of the contested sign has limited significance in the present comparison.

The marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word elements ‘JUSTRIDE’/’JUST RIDE’. They differ in the space between the fourth and fifth letter of the contested signs and in elements of secondary importance (i.e. the fact that one is a one word mark and the other a two words figurative mark, their representation and stylisation and the exclamation mark of the contested sign).  

Therefore, the signs are visually highly similar.

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 ‘JUSTRIDE’/’JUST RIDE’, present identically in both signs.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory and the exclamation mark of the contested sign does not convey any specific meaning. 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 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 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.

5. Global assessment, other arguments and conclusion

The contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The degree of attention of the general public is average, and the earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally highly similar, because they both contain the distinctive words ‘JUSTRIDE’/’JUST RIDE’. The marks differ in the stylisation and additional exclamation mark of the contested sign, which are not sufficient to distract the attention of average consumers from the distinctive word element or to have a significant impact on their imperfect recollection of the signs because they have limited significance for the reasons explained above. Therefore, these differences – even considered together with the fact that the contested sign is constituted by two words and the earlier mark by one word – are not sufficient to overcome the fact that the earlier mark is identically reproduced in the contested sign or to render the signs sufficiently different that a likelihood of confusion on the part of the relevant public can safely be excluded. Considering that the verbal element in each sign is meaningless, the conceptual aspect has no bearing on the present comparison.

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 applicant, in its observations of 25/04/2017 argued that the applicant and the opponent produce goods and services that have different applications and refer to different markets. The Opposition Division observes that likelihood of confusion means a probability of confusion on the part of the relevant consumer and does not require actual confusion. As expressly confirmed by Case-law, it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69). As a consequence, the present assessment is based only on the relevant Law (mainly the EUTMR) and the General Court and Court of Justice Case-law, while the facts (in any case not proven) put forward by the applicant cannot be taken into consideration. Hence, this claim must be set aside.

Considering the foregoing and, above all, the fact that the differences between the signs are confined to non-distinctive or secondary elements and aspects, the Opposition Division finds that there is a likelihood of confusion on the part of the French-, Spanish- and Bulgarian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 15 081 615. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar 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.

The opponent has also based its opposition on the following earlier trade mark:

• United Kingdom trade mark registration No 2 641 093,’JustRide’.

Since this mark is essentially identical to and covers a narrower scope of goods and services than European Union trade mark registration No 15 081 615, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Clara IBÁÑEZ FIORILLO

Orsola LAMBERTI

Michele M. BENEDETTI-ALOISI

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.