OPPOSITION No B 2 754 441

Liberty Express, C.A., C/ Los Laboratorios, Edificio Ofinca Piso 4, Oficinas 41 y 42, Los Ruices, Caracas, Venezuela (opponent), represented by David Muñoz de los Reyes, c/ Felipe IV, 8 4º izq, 28014 Madrid, Spain (professional representative)

a g a i n s t

Ustica Lines S.P.A., Via Giuseppe Serraino Vulpitta, 5, 91100 Trapani (TP), Italy (applicant), represented by Racheli S.R.L., Viale San Michele del Carso, 4, 20144 Milano, Italy (professional representative)

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 754 441 is partially upheld, namely for the following contested services:

Class 39: Marine transport; river transport; passenger transport; transport by ferry; boat transport; barge transport; freight [shipping of goods]; freighting; boat rental; shipbrokerage; pleasure boat transport.

2.        European Union trade mark application No 15 460 835 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 460 835 .

The opposition is based on European Union trade mark registration No 15 346 951.

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The opponent indicated in the Notice of Opposition that the opposition was directed against part of the services for which the contested sign referred to above was applied. However, following this indication, the opponent listed the entire list of services for which the sign had been applied.

In order to overcome the contradictory information contained in the notice of opposition, the Opposition Division will proceed assuming the opposition is directed against all the services for which contested sign is applied, since all of them were listed.

 

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 35: Advertising and marketing, namely advertising, marketing and promotion of the goods and services of others, via global computer networks, and/or computer applications; incentive award programmes for promoting the sale of goods and/or services of others; customer loyalty services and customer club services for commercial, promotional and advertising purposes; online trading, namely operation of online markets for buyers and sellers of goods and services; providing of business information relating to goods and/or services, and evaluation and classification of the aforesaid goods and services, and of the purchasers and sellers of the aforesaid goods and/or services; seeking, compilation, systemisation, processing and providing of information for others; research, studies and analysis in connection with markets, business, advertising campaigns and market trends; professional business advice and consultancy, including business searches, planning, start-ups, organisation, management and direction, advertising campaigns and market trends; management assistance for franchised businesses; retailing and/or wholesaling, in shops and/or via global computer and communications networks, of foodstuffs and beverages, perfumes, cosmetics, articles for personal care, cleaning and beauty, household cleaning and detergents, photographic cameras, television sets, household electrical appliances, jewellery; retailing and/or wholesaling, in shops and/or via global computer and communications networks, of clocks and watches, printed matter and publications, leatherware, namely handbags, luggage, wallets and belts, clothing, footwear and headgear, furniture, household items, works of art, playthings, gymnastic and sporting articles.

 

Class 39: Rental of storage containers; storage, packaging and transport of goods: postal and courier services.

The contested services are the following:

Class 39: Marine transport; river transport; passenger transport; transport by ferry; boat transport; barge transport; freight [shipping of goods]; freighting; boat rental; arranging of cruises; shipbrokerage; pleasure boat transport.

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.

The contested services in Class 39 marine transport; river transport; transport by ferry; boat transport; barge transport; freight [shipping of goods]; freighting; boat rental include, are included in, or overlap with, the opponent’s transport of goods, since the transport of goods of the opponent can be made in all the different ways specified by the contested services (by river or sea, by ferry or boat, etc.) and the contested services cover the transport of both, passengers and goods. Regarding the broad categories of the contested services including the opponent´s services, since the Opposition Division cannot dissect them ex officio, they are considered identical to the opponent’s services.

Transport services (e.g. by boat or ferry) often fulfil a double function, since they can be hired for transporting both passengers and goods at the same time
(e.g. travellers willing to take their cars with them while they travel on a ferry, or companies transporting cars within a ferry, for export or import purposes).

The contested passenger transport; shipbrokerage; pleasure boat transport are similar to an average  degree to the opponent´s transport of goods, since these services can coincide in nature and purpose, can be complementary and might be directed at the same consumers.

The contested arranging of cruises consist of the services around the organization (logistics) of cruises. These are dissimilar to the opponent´s services in Classes 35 and 39, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition with each other, are not directed at the same consumers and are not likely to be offered by the same kind of companies.

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 both, the general public and professionals.

The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of purchase and their price, as well as of the impact or consequences that such services may bring. Such variation in the degree of attention depends also on the characteristics of the services purchased.

Some of the services herein involved are of high prices for the general public and not being frequently purchased (e.g. boat rental), or can have a big impact on companies´ logistics (e.g. shipbrokerage). In such scenarios, a high level of attention is expected to be paid. In relation to other services, such as the boat transport when it consists of small inexpensive trips (e.g. in small boats in river channels or in inland waterways), an average degree of attention is likely to be paid, since these services are not necessarily of high prices.

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

Most of the elements in the signs 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 English-speaking part of the public.

The earlier mark is formed by the elements “Liberty Express” in big letters, by the words “Ecommerce Logistics” in much smaller size and positioned below, and by two figurative elements, namely waves and an airplane.

The contested sign is formed (from left to right) by the depiction of a seahorse, followed by the words “LIBERTY” and “lines”, each of them in a different colour and typeface.

The term “LIBERTY” included in the signs is used in English to refer to the freedom of living or acting in the desired way.

The word “Express” of the earlier mark is used in English to indicate, inter alia, that something is very fast. It is frequently used to refer to a kind of services that are provided faster than usual or to refer to actions delivered in a fast way (e.g. transport of people or delivery of goods).

The word “Ecommerce” is used in English to refer to the business of buying and selling goods and services on internet and “Logistics” is the English word used to refer to the careful organization of a complicated activity, so that it happens in a successful and effective way (See Cambridge Dictionary). Therefore, the expression “Ecommerce Logistics” of the earlier mark is perceived by the public referred to above as the organization of the sales made through internet (e.g. the transport of the goods sold).

The word “lines” in the contested sign, more specifically its singular form “line”, is used in English to refer to, inter alia, a company that transports people or goods (See Cambridge Dictionary).

The figurative elements in the signs have the concepts of the elements they represent, namely waves and an airplane in the earlier mark, and a seahorse in the contested mark.

Regarding the existence of elements more distinctive than others in the signs, the earlier mark is formed by the distinctive word “Liberty”, and by the non-distinctive verbal elements “Express” and “Ecommerce logistics”, since they refer to the characteristics of the relevant services, namely the time of their provision and their nature and kind, according to the definitions of the concepts given above. The mark also contains figurative elements (i.e. airplane and waves depictions) that are non-distinctive for the services involved, since they are descriptive of their characteristics (e.g. the services can be carried out by sea or by air). Therefore, the most distinctive element in the earlier mark is the word “Liberty”.

The contested mark is formed by the distinctive element “LIBERTY”, and by the non-distinctive term “lines”, since it refers to the characteristics of the relevant services, namely their nature and kind, according to the definition of the concept above. The depiction of a sea horse is of lower than average distinctive character in relation to the relevant services, for being at least allusive of their characteristics (i.e. they are somehow related to the sea). Therefore, also in this sign the most distinctive element is the word “LIBERTY”.

The earlier mark is formed by the co-dominant (visually eye-catching) elements “Liberty Express” and by the less eye-catching elements, namely words “Ecommerce Logistics” and the figurative elements, which, due to their position and smaller size, are of less visual impact.

The contested sign has no element more dominant (visually eye-catching) than others.

As it will be seen in the visual, aural and conceptual comparisons below, the coincidences between the signs rely on the element “Liberty”/”LIBERTY” in the marks.

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 verbal elements in the signs herein compared have a stronger impact on the consumer than their figurative components, being one of them the coinciding term referred to above.

As argued by the opponent, 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 this case, the coincidences between the marks (see comparison below) are found on the first element read and pronounced in the signs, “Liberty”. Accordingly, the coinciding part of the marks is the one that first catches the attention of the reader.

Visually, the signs coincide in the term “Liberty” / “LIBERTY” in both marks. The signs differ in the rest of elements forming them and referred to before
(i.e. “Express”, “Ecommerce Logistics” and airplane and wave depictions in the earlier mark, and in the elements “lines” and seahorse depiction in the contested mark). They also differ in colour and typeface.

The coinciding word “Liberty” / “LIBERTY” referred to above is the most distinctive element in both marks, and one of the co-dominant words in the earlier mark. In addition, as explained above, it is the element first read and pronounced in both signs, and therefore the one that first catches the attention of the reader. It is also of stronger impact than the figurative elements accompanying it.

In this same line, the differences are found on elements that are either non-distinctive, or of lower than average distinctive character and, also some of them, constitute the less eye-catching elements in the marks. As such, their impact is reduced when assessing the similarity of signs.

For all the above, it is considered that the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters “l-i-b-e-r-t-y”, present identically in both signs. The pronunciation differs in the sound of “e-x-p-r-e-s-s”, “E-c-o-m-m-e-r-c-e-l-o-g-i-s-t-i-c-s” in the earlier mark and “l-i-n-e-s” in the contested mark.

For the reasons explained above (i.e. the reasons for a stronger impact of the coinciding term and of reduced relevance of the differing elements) and in case all the verbal elements in the marks are read and pronounced, the marks are considered to be aurally similar to at least an average degree.

However, since all the differing verbal elements are non-distinctive, and some of them are of less visual impact than the coinciding terms, part of the public will omit them when referring to the signs aurally. In such case, the signs would be aurally identical, being both referred to as “liberty”.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. The signs share the concept of “liberty”. They differ in the rest of concepts referred to above.

For the reasons explained above (i.e. the reasons for a stronger impact of the coinciding term and of reduced relevance of the differing elements) it is considered that the signs are conceptually similar to at least an average 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 English-speaking part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements 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).

The services are partly identical, partly similar to an average degree and partly dissimilar. The signs compared are visually similar to an average degree, conceptually similar to at least an average degree, and aurally either similar to at least an average degree or identical, depending on whether consumers pronounce the totality of the signs or only their distinctive elements.

The coinciding element “Liberty”/”LIBERTY” is the most distinctive element in both marks, and one of the co-dominant words in the earlier mark. In addition, it is the element first read and pronounced in both marks, and therefore the one that first catches the attention of the reader. It is also of stronger impact than the figurative elements accompanying it.

The differences between the marks are found on elements that are either non-distinctive, or of lower than average distinctive character and, also some of them, constitute the less eye-catching elements in the marks.

As explained in section b) above, the services found to be identical or similar to a low degree are directed at both, the general public and professionals. For the reasons explained in that same section, the degree of attention paid by them will vary from average to high.

The average consumer of the category of services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, and according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

Based on the principle of imperfect recollection, the consumers might believe that the conflicting services found to be identical or similar come from the same or economically-linked undertakings. Also it is considered that the coincidences between the signs outweigh their dissimilarities and may induce at least part of the public to believe that the conflicting services found to be identical or similar come from the same or economically-liked undertakings.

Accordingly, even if the level of attention might be high in relation to some of the services involved, this will not be enough as to avoid such confusion and/or association under the present circumstances.

Considering all the above, 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 partly well founded on the basis of the opponent’s European Union trade mark registration No 15 346 951. It follows that the contested trade mark must be rejected for all the contested services found to be identical or similar to those of the earlier mark, taking the interdependence principle mentioned above into account.

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.

 

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

María del Carmen SUCH SANCHEZ

Richard BIANCHI

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.