OPPOSITION DIVISION
OPPOSITION No B 2 772 542
Panaventura S.L., Bravo Murillo 297, Portal 10, 1º Dcha, 28020 Madrid, Spain
(opponent), represented by Gonzalez Vacas, S.L., Sagasta, 4, 28004 Madrid, Spain
(professional representative)
a g a i n s t
Société Air France, Société Anonyme, 45 rue de Paris, 95747 Roissy Charles de
Gaulle, France (applicant), represented by Cabinet Meyer & Partenaires, Espace
Européen de l'Entreprise 2 rue de Dublin, 67300 Schiltigheim, France (professional
representative).
On 10/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 772 542 is partially upheld, namely for the following
contested services:
Class 37: Cleaning and servicing of audio and video apparatus and
equipment, in particular provided on board aeroplanes or within
airports; repair of security locks; installation, upkeep and repair of
fire warning devices; upkeep, servicing, cleaning, washing and
repair of all kinds of safety and security equipment, in particular on
board aeroplanes, within airports or in airport zones; upkeep,
servicing, maintenance, repair, renovation, transformation and
equipping of vehicles, and air vehicles, and fittings therefor;
cleaning and upkeep of electric and electronic equipment and
apparatus, namely screens, display screens; cleaning and upkeep
of electric and electronic equipment and apparatus, namely
headphones, touchscreen tablets, apparatus for lighting purposes,
terminals and apparatus for connection to telecommunications
networks, in particular provided on board aeroplanes or inside
airports; construction and renovation of buildings, airport
infrastructures, airports, air terminals, warehouses, garages, car
parks, and airport roads or runways; supervision (direction) and
coordination of the construction of buildings of all kinds; sealing
(building- ); insulating (building -)
Class 42: Technical inspections of vehicles and in particular of air vehicles;
technical assistance services in airport engineering; engineering
drawing; material testing; computer system design; consultancy in
the field of computers; conversion of data and computer programs
(except physical conversion); conversion of data or documents
from physical to electronic media; creation, management,
servicing, hosting and updating of websites, in particular in the
field of the construction, servicing, overhaul and maintenance of
air vehicles and parts therefor; creation, management, servicing,
hosting and updating of websites, in particular in the field of
cleaning and washing air vehicles and parts therefor; creation,
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management, maintenance, hosting and updating of websites, in
particular in the field of the repair, renovation, transformation or
fitting out of air vehicles and parts therefor; creation, management,
servicing, hosting and updating of websites, in particular in the
field of the construction, servicing, overhaul and maintenance of
aeronautic, avionic, hydraulic and pneumatic equipment; creation,
management, servicing, hosting and updating of websites, in
particular in the field of the cleaning and washing of aeronautic,
avionic, hydraulic and pneumatic equipment; creation,
management, maintenance, hosting and updating of websites, in
particular in the field of the repair, renovation, transformation or
fitting out of aeronautic, avionic, hydraulic and pneumatic
equipment; creation, management, servicing, hosting and
updating of websites, in particular in the field of the construction,
servicing, overhaul and maintenance of airports or airport
infrastructure; creation, management, servicing, hosting and
updating of websites, in particular in the context of the cleaning
and washing of airports or airport infrastructure; creation,
management, maintenance, hosting and updating of websites, in
particular in the field of the repair, renovation, transformation or
fitting out of airports or airport infrastructure; creation,
management, maintenance, hosting and updating of websites
offering services for sharing and exchanging information in the
field of the evaluation and dissemination of aeronautic innovation;
creation, management, servicing, hosting and updating of
websites facilitating the creation of and access to discussion
forums, virtual gatherings or virtual meetings; creation,
management, maintenance, hosting and updating of websites
facilitating the creation and operation of an internet platform
constituting a virtual community for the sharing or exchange of
information; duplicating computer programs; hosting computer
sites [web sited]; installation of software, software packages,
computer databases; rental of computer software, software
packages, computer databases; updating of software, software
packages, computer databases; development (design) of
computer software, software packages, computer databases;
maintenance of computer software, software packages, computer
databases; computer rental; computer programming; design,
development and technical management of computer networks or
telecommunications networks; recovery of computer data;
meteorological information and analysis; technical project studies;
surveying; mechanical research; services of technical and
scientific experts in the field of robotics; research, and
development and professional consultancy, technical or scientific
consultancy in the field of robotics; technical trials and conducting
of technical tests and technical and scientific checks on
equipment, apparatus and installations in the field of robotics;
computer virus protection services; computer system installation
analysis; quality control; urban planning; interior design, fitting out
and arrangement of cabins or cockpits inside aeroplanes;
technical or technological services for the modernisation or
transformation of cabins or cockpits inside aeroplanes;
architecture; graphic arts designing; consultancy relating to
building and interior decoration of aeroplanes, and in particular
their interior cockpits; consultancy relating to the fitting out and
Decision on Opposition No B 2 772 542 page: 3 of 15
arrangement of aeroplanes, and in particular their interior cockpits;
technical or technological consultancy relating to the
modernisation or transformation of aeroplanes, and in particular
their interior cockpits; consultancy in the field of energy-saving;
drafting of plans for the building and decorating of aeroplanes, in
particular the interior cockpits thereof; drafting of plans relating to
the fitting out and arrangement of aeroplanes and in particular
their interior cockpits; drafting of plans relating to the
modernisation or transformation of aeroplanes and in particular
their interior cockpits; construction drafting, decoration and fitting
out of buildings or airport infrastructure; drafting of plans for the
modernisation or transformation of buildings or airport
infrastructure; research in the field of environmental protection;
research and development for others; styling (industrial design);
statistical information in the field of the evaluation and
dissemination of aeronautics infrastructure.
2. European Union trade mark application No 15 482 821 is rejected for all the
above services. It may proceed for the remaining services.
3. Each party bears its own costs.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the services of European Union trade
mark application No 15 482 821. The opposition is based on Spanish trade mark
registration No 3 077 474. 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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Apparatus and instruments scientific, nautical, optical instruments, of
weighing, measuring, of signalling, of control (inspection) of teaching:
Decision on Opposition No B 2 772 542 page: 4 of 15
apparatus and instruments of accumulation, regulation and control of
the electricity; apparatus for recording, transmission or reproduction of
sound and images; magnetic supports of record; vending machines;
equipment of processing of information and computers.
Class 10: Apparatus and instruments surgical, medical, odontologic and
veterinary, like that instruments like their members, eyes, and artificial
teeth; orthopaedic articles.
Class 35: Service of wholesale and minor in establishments and in it world
networks of all kinds of devices and systems destined for the artificial
intelligence, applicable to labours domesticates and home automation;
services of import and export.
Class 37: Services of installation, maintenance and repair of devices and systems
of control of vigilance.
Class 39: Transport storage and distribution of all kinds of devices and intelligent
systems.
Class 42: Scientific and technological services; services of analysis and
investigation in these areas; design and development of software and
hardware.
Class 45: Safety services for the protection of possessions and persons.
The contested services are the following:
Class 37: Providing of information relating to the servicing, overhaul,
maintenance, cleaning, washing, repair, renovation, transformation and
fitting out of air vehicles, parts therefor or airport infrastructure; upkeep,
servicing, maintenance, cleaning, washing, repair, renovation,
transformation and equipping of vehicles, and air vehicles, and fittings
therefor; upkeep, servicing, maintenance, cleaning, washing and repair
of motors and engines for aeroplanes, and aeronautical, avionic,
hydraulic or pneumatic apparatus, equipment, machines or parts;
construction, upkeep, cleaning and renovation of buildings, airport
infrastructures, airports, air terminals, warehouses, garages, car parks,
and airport roads or runways; aeronautical construction, maintenance,
purification, renovation, transformation, fitting out or arrangement of
cabins, cockpits or holds of aeroplanes; upkeep and cleaning of floors,
surfaces, seats, chairs, shelves, storage lockers, luggage
compartments, ashtrays, refuse bins and video screens, in particular on
board aeroplanes or within airports; cleaning and maintaining toilet
facilities; supervision (direction) and coordination of the construction,
upkeep, servicing, maintenance, cleaning, washing, repair, renovation,
transformation or equipping of all kinds of vehicles and fittings therefor,
or buildings of all kinds; vehicle service stations, namely supply of fuel
and maintenance of vehicles, in particular air vehicles; de-icing and
snow clearance for roads or airport runways, vehicles and in particular
air vehicles; cleaning and maintenance of head-rests, pillows, cushions,
covers, sheets, towels, table linen or bath linen, in particular provided
on board aeroplanes or within airports; maintenance, cleaning and
repair of leather, textiles or all kinds of coverings; cleaning and servicing
Decision on Opposition No B 2 772 542 page: 5 of 15
of audio and video apparatus and equipment, in particular provided on
board aeroplanes or within airports; vehicle breakdown assistance, in
particular for air vehicles; providing of information relating to the
upkeep, servicing, maintenance, cleaning, washing or repair of all kinds
of vehicles and fittings therefor, and aeronautical, avionic, hydraulic or
pneumatic apparatus, equipment or parts, airports, airport
infrastructures or all kinds of buildings; disinfection of all kinds of
vehicles or buildings; cleaning of tableware, dishes, cutlery, glasses,
glassware; installation, upkeep and repair of fire warning devices;
equipping, transformation and modernisation (renovation) of vehicles, in
particular aeroplanes; painting, interior and exterior; vulcanization of
tyres (repair); vehicle polishing; rebuilding machines that have been
worn or partially destroyed; rebuilding engines that have been worn or
partially destroyed; rustproofing, anti-rust treatment for vehicles;
upkeep, servicing, cleaning, washing and repair of all kinds of safety
and security equipment, in particular on board aeroplanes, within
airports or in airport zones; cabinet making (repair); maintenance and
restoration of furniture; scaffolding; sealing (building- ); insulating
(building -); hire of building machinery; machinery installation,
maintenance and repair; painting, interior and exterior, plastering,
plumbing; repair of security locks; paper hanging; cleaning and upkeep
of electric and electronic equipment and apparatus, namely screens,
display screens, travel information terminals, terminals for dispensing
travel tickets or passes; cleaning and upkeep of electric and electronic
equipment and apparatus, namely headphones, touchscreen tablets,
plugs, sockets and other contacts (electric connections), apparatus for
lighting purposes, household electrical appliances, terminals and
apparatus for connection to telecommunications networks, in particular
provided on board aeroplanes or inside airports.
Class 42: Technical inspections of vehicles and in particular of air vehicles;
technical assistance services in airport engineering; engineering
drawing; material testing; computer system design; consultancy in the
field of computers; conversion of data and computer programs (except
physical conversion); conversion of data or documents from physical to
electronic media; creation, management, servicing, hosting and
updating of websites, in particular in the field of the construction,
servicing, overhaul and maintenance of air vehicles and parts therefor;
creation, management, servicing, hosting and updating of websites, in
particular in the field of cleaning and washing air vehicles and parts
therefor; creation, management, maintenance, hosting and updating of
websites, in particular in the field of the repair, renovation,
transformation or fitting out of air vehicles and parts therefor; creation,
management, servicing, hosting and updating of websites, in particular
in the field of the construction, servicing, overhaul and maintenance of
aeronautic, avionic, hydraulic and pneumatic equipment; creation,
management, servicing, hosting and updating of websites, in particular
in the field of the cleaning and washing of aeronautic, avionic, hydraulic
and pneumatic equipment; creation, management, maintenance,
hosting and updating of websites, in particular in the field of the repair,
renovation, transformation or fitting out of aeronautic, avionic, hydraulic
and pneumatic equipment; creation, management, servicing, hosting
and updating of websites, in particular in the field of the construction,
servicing, overhaul and maintenance of airports or airport infrastructure;
creation, management, servicing, hosting and updating of websites, in
Decision on Opposition No B 2 772 542 page: 6 of 15
particular in the context of the cleaning and washing of airports or
airport infrastructure; creation, management, maintenance, hosting and
updating of websites, in particular in the field of the repair, renovation,
transformation or fitting out of airports or airport infrastructure; creation,
management, maintenance, hosting and updating of websites offering
services for sharing and exchanging information in the field of the
evaluation and dissemination of aeronautic innovation; creation,
management, servicing, hosting and updating of websites facilitating
the creation of and access to discussion forums, virtual gatherings or
virtual meetings; creation, management, maintenance, hosting and
updating of websites facilitating the creation and operation of an
internet platform constituting a virtual community for the sharing or
exchange of information; duplicating computer programs; hosting
computer sites [web sited]; installation of software, software packages,
computer databases; rental of computer software, software packages,
computer databases; updating of software, software packages,
computer databases; development (design) of computer software,
software packages, computer databases; maintenance of computer
software, software packages, computer databases; computer rental;
computer programming; design, development and technical
management of computer networks or telecommunications networks;
recovery of computer data; meteorological information and analysis;
technical project studies; surveying; mechanical research; services of
technical and scientific experts in the field of robotics; research, and
development and professional consultancy, technical or scientific
consultancy in the field of robotics; technical trials and conducting of
technical tests and technical and scientific checks on equipment,
apparatus and installations in the field of robotics; computer virus
protection services; computer system installation analysis; quality
control; urban planning; interior design, fitting out and arrangement of
cabins or cockpits inside aeroplanes; technical or technological services
for the modernisation or transformation of cabins or cockpits inside
aeroplanes; architecture; graphic arts designing; consultancy relating to
building and interior decoration of aeroplanes, and in particular their
interior cockpits; consultancy relating to the fitting out and arrangement
of aeroplanes, and in particular their interior cockpits; technical or
technological consultancy relating to the modernisation or
transformation of aeroplanes, and in particular their interior cockpits;
consultancy in the field of energy-saving; drafting of plans for the
building and decorating of aeroplanes, in particular the interior cockpits
thereof; drafting of plans relating to the fitting out and arrangement of
aeroplanes and in particular their interior cockpits; drafting of plans
relating to the modernisation or transformation of aeroplanes and in
particular their interior cockpits; construction drafting, decoration and
fitting out of buildings or airport infrastructure; drafting of plans for the
modernisation or transformation of buildings or airport infrastructure;
research in the field of environmental protection; research and
development for others; styling (industrial design); statistical information
in the field of the evaluation and dissemination of aeronautics
infrastructure.
An interpretation of the wording of the list of goods and services is required to
determine their scope of protection.
Decision on Opposition No B 2 772 542 page: 7 of 15
The term ‘in particular’ and ‘relating to’, used in the applicant’s list of services,
indicate that the specific services are only examples of items included in the category
and that protection is not restricted to them. In other words, they introduce a non-
exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride,
EU:T:2003:107).
However, the term ‘namely’, used also in the applicant’s list of services to show the
relationship of individual services with a broader category, is exclusive and restricts
the scope of protection only to the specifically listed services.
As a preliminary remark, it is to be noted that according to Article 33(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 services in Class 37
The systems and devices of control and vigilance typically include different electric
and electronic apparatus and equipment such as audio/video (for instance screens,
headphones), fire warning, lighting devices, security locks and other machinery.
Therefore, the contested cleaning and servicing of audio and video apparatus and
equipment, in particular provided on board aeroplanes or within airports; repair of
security locks; installation, upkeep and repair of fire warning devices; upkeep,
servicing, cleaning, washing and repair of all kinds of safety and security equipment,
in particular on board aeroplanes, within airports or in airport zones; upkeep,
servicing, maintenance, repair, renovation, transformation and equipping of vehicles,
and air vehicles, and fittings therefor overlap with the opponent’s services of
installation, maintenance and repair of devices and systems of control of vigilance.
Therefore, they are identical.
Systems and devices of control and vigilance can be generally found in many
infrastructures and vehicles of different nature, for instance airports, airplanes, etc.
where the control of people in secure zones and the aircrafts in the airspace is vital.
Companies involved in the provision of such services can also complement their
offering with additional services linked to the maintenance and repair of the systems,
its devices, apparatus and components such as cleaning and washing services.
Therefore, the contested cleaning and upkeep of electric and electronic equipment
and apparatus, namely screens, display screens; cleaning and upkeep of electric
and electronic equipment and apparatus, namely headphones, touchscreen tablets,
apparatus for lighting purposes, terminals and apparatus for connection to
telecommunications networks, in particular provided on board aeroplanes or inside
airports are similar to the opponent’s services of installation, maintenance and repair
of devices and systems of control of vigilance since they have the same nature and
purpose. They can coincide in the providers delivering those services who can offer
them via the same distribution channels to the same relevant public.
Also, the contested construction and renovation of buildings, airport infrastructures,
airports, air terminals, warehouses, garages, car parks, and airport roads or
runways; supervision (direction) and coordination of the construction of buildings of
all kinds; sealing (building- ); insulating (building -) belong to the broader categories
Decision on Opposition No B 2 772 542 page: 8 of 15
of building construction and building maintenance and repair. These contested
services in most of the occasions require technical project studies, covered by the
opponent’s broader category scientific and technological services in Class 42.
Therefore, they are complementary, coincide in distribution channels and target the
same relevant public. As such they are similar to a low degree.
As regards the remaining contested services providing of information relating to the
servicing, overhaul, maintenance, cleaning, washing, repair, renovation,
transformation and fitting out of air vehicles, parts therefor or airport infrastructure;
cleaning, washing of vehicles, and air vehicles, and fittings therefor; upkeep,
servicing, maintenance, cleaning, washing and repair of motors and engines for
aeroplanes, and aeronautical, avionic, hydraulic or pneumatic apparatus, equipment,
machines or parts; upkeep and cleaning of buildings, airport infrastructures, airports,
air terminals, warehouses, garages, car parks, and airport roads or runways;
aeronautical construction, maintenance, purification, renovation, transformation,
fitting out or arrangement of cabins, cockpits or holds of aeroplanes; upkeep and
cleaning of floors, surfaces, seats, chairs, shelves, storage lockers, luggage
compartments, ashtrays, refuse bins and video screens, in particular on board
aeroplanes or within airports; cleaning and maintaining toilet facilities; supervision
(direction) and coordination of the construction, upkeep, servicing, maintenance,
cleaning, washing, repair, renovation, transformation or equipping of all kinds of
vehicles and fittings therefor; supervision (direction) and coordination of the upkeep,
servicing, maintenance, cleaning, washing, repair, renovation, transformation or
equipping of buildings of all kinds; vehicle service stations, namely supply of fuel and
maintenance of vehicles, in particular air vehicles; de-icing and snow clearance for
roads or airport runways, vehicles and in particular air vehicles; cleaning and
maintenance of head-rests, pillows, cushions, covers, sheets, towels, table linen or
bath linen, in particular provided on board aeroplanes or within airports;
maintenance, cleaning and repair of leather, textiles or all kinds of coverings; vehicle
breakdown assistance, in particular for air vehicles; providing of information relating
to the upkeep, servicing, maintenance, cleaning, washing or repair of all kinds of
vehicles and fittings therefor, and aeronautical, avionic, hydraulic or pneumatic
apparatus, equipment or parts, airports, airport infrastructures or all kinds of
buildings; disinfection of all kinds of vehicles or buildings; cleaning of tableware,
dishes, cutlery, glasses, glassware; equipping, transformation and modernisation
(renovation) of vehicles, in particular aeroplanes; painting, interior and exterior;
vulcanization of tyres (repair); vehicle polishing; rebuilding machines that have been
worn or partially destroyed; rebuilding engines that have been worn or partially
destroyed; rustproofing, anti-rust treatment for vehicles; cabinet making (repair);
maintenance and restoration of furniture; scaffolding; hire of building machinery;
machinery installation, maintenance and repair; painting, interior and exterior,
plastering, plumbing; paper hanging; cleaning and upkeep of electric and electronic
equipment and apparatus, namely travel information terminals, terminals for
dispensing travel tickets or passes; cleaning and upkeep of electric and electronic
equipment and apparatus, namely plugs, sockets and other contacts (electric
connections), household electrical appliances, in particular provided on board
aeroplanes or inside airports they have no commonalities with the opponent’s
services in Classes 35, 37, 39, 42 and 45. They are of different nature, have different
purpose. They are not provided by the same companies, do not coincide in
distribution channel and do not target the same relevant public. Furthermore they are
not complementary or in competition with each other, as such they are dissimilar.
As regards the aforementioned remaining contested services and the opponent’s
goods in Classes 9 and 10, first of all, by their nature goods are generally dissimilar
to services. This is because goods are articles of trade, wares, merchandise, or real
Decision on Opposition No B 2 772 542 page: 9 of 15
estate. Their sale usually entails the transfer of title in something physical, i.e.
movables or real estate. Services, on the other hand, consist of the provision of
intangible activities. Though in some cases there is a clear connection between
goods and services usually due to a strong interdependent, complementary
relationship this is not the case at hand given that the contested services are
generally related to the air navigation industry and the opponent’s goods do not
actually have any commonality with them. The fact that some of those goods may be
used in the provision of some of those services is a too tenuous link to determine any
degree of similarity. Therefore, the remaining contested services are also dissimilar to
all the opponent’s goods.
Contested services in Class 42
The contested technical inspections of vehicles and in particular of air vehicles;
technical assistance services in airport engineering; engineering drawing; material
testing; technical project studies; surveying; mechanical research; services of
technical and scientific experts in the field of robotics; research, and development
and professional consultancy, technical or scientific consultancy in the field of
robotics; technical trials and conducting of technical tests and technical and scientific
checks on equipment, apparatus and installations in the field of robotics;
meteorological information and analysis; quality control; urban planning; architecture;
technical or technological services for the modernisation or transformation of cabins
or cockpits inside aeroplanes; technical or technological consultancy relating to the
modernisation or transformation of aeroplanes, and in particular their interior
cockpits; consultancy in the field of energy-saving; drafting of plans relating to the
modernisation or transformation of aeroplanes and in particular their interior cockpits;
drafting of plans for the modernisation or transformation of buildings or airport
infrastructure; research in the field of environmental protection; research and
development for others; statistical information in the field of the evaluation and
dissemination of aeronautics infrastructure are included in the broad categories of the
opponent’s scientific and technological services. Therefore, they are identical.
The contested computer system design; development (design) of computer software,
software packages, computer databases; computer programming are included in the
broad categories of, or overlap with, the opponent’s design and development of
software and hardware. Therefore, they are identical.
The contested conversion of data and computer programs (except physical
conversion); conversion of data or documents from physical to electronic media;
consultancy in the field of computers; creation, management, servicing, hosting and
updating of websites, in particular in the field of the construction, servicing, overhaul
and maintenance of air vehicles and parts therefor; creation, management, servicing,
hosting and updating of websites, in particular in the field of cleaning and washing air
vehicles and parts therefor; creation, management, maintenance, hosting and
updating of websites, in particular in the field of the repair, renovation, transformation
or fitting out of air vehicles and parts therefor; creation, management, servicing,
hosting and updating of websites, in particular in the field of the construction,
servicing, overhaul and maintenance of aeronautic, avionic, hydraulic and pneumatic
equipment; creation, management, servicing, hosting and updating of websites, in
particular in the field of the cleaning and washing of aeronautic, avionic, hydraulic
and pneumatic equipment; creation, management, maintenance, hosting and
updating of websites, in particular in the field of the repair, renovation, transformation
or fitting out of aeronautic, avionic, hydraulic and pneumatic equipment; creation,
management, servicing, hosting and updating of websites, in particular in the field of
the construction, servicing, overhaul and maintenance of airports or airport
Decision on Opposition No B 2 772 542 page: 10 of 15
infrastructure; creation, management, servicing, hosting and updating of websites, in
particular in the context of the cleaning and washing of airports or airport
infrastructure; creation, management, maintenance, hosting and updating of
websites, in particular in the field of the repair, renovation, transformation or fitting
out of airports or airport infrastructure; creation, management, maintenance, hosting
and updating of websites offering services for sharing and exchanging information in
the field of the evaluation and dissemination of aeronautic innovation; creation,
management, servicing, hosting and updating of websites facilitating the creation of
and access to discussion forums, virtual gatherings or virtual meetings; creation,
management, maintenance, hosting and updating of websites facilitating the creation
and operation of an internet platform constituting a virtual community for the sharing
or exchange of information; duplicating computer programs; hosting computer sites
[web sited]; installation of software, software packages, computer databases;
computer rental; rental of computer software, software packages, computer
databases; updating of software, software packages, computer databases;
maintenance of computer software, software packages, computer databases;
recovery of computer data; design, development and technical management of
computer networks or telecommunications networks; computer virus protection
services; computer system installation analysis are services typically offered by
providers in the industry of design and development of software and hardware.
Therefore, they can coincide in providers, distribution channel and method of use.
They target the same relevant public, are typically offered in combination with or
might be even complementary (for instance, offering the installation, updating,
maintenance or hosting of a software or website recently designed and developed for
the client company). Therefore, they are similar to the opponent’s design and
development of software and hardware.
With regard to the contested interior design, fitting out and arrangement of cabins or
cockpits inside aeroplanes; consultancy relating to building and interior decoration of
aeroplanes, and in particular their interior cockpits; consultancy relating to the fitting
out and arrangement of aeroplanes, and in particular their interior cockpits; drafting
of plans relating to the fitting out and arrangement of aeroplanes and in particular
their interior cockpits; drafting of plans for the building and decorating of aeroplanes,
in particular the interior cockpits thereof; construction drafting, decoration and fitting
out of buildings or airport infrastructure; graphic arts designing; styling (industrial
design), these are services belonging to a discipline aimed at the creation of interior
spaces which are efficiently set for the running of diverse types of human activities,
being commercially and technically related to architecture, engineering, construction,
art, etc. The earlier mark covers services of design of software and hardware, as well
as scientific and technological services, typically offered by professionals such as
engineers. Those conflicting services share a similar nature insofar as they concern
design activities and might be rendered by the same undertakings. In fact, a project
run by an engineer (for example, the design or/and construction of a building or of the
cockpit of an aeroplane) may include aspects of interior design dealt with by the
engineer himself (or herself) and/or by an architect working in cooperation with the
engineer for the same undertaking. The purpose of those conflicting services is,
therefore, also similar, and a complementary relationship exists between them. These
services are hence similar.
b) 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
Decision on Opposition No B 2 772 542 page: 11 of 15
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 mostly directed
at business customers with specific professional knowledge or expertise in the fields
of aviation, aero navigation industry and airport infrastructure. For instance
engineers, mechanics and other technical staff working for companies in such fields.
The public’s degree of attentiveness will be high due to the sophistication and
specialised nature of the purchased services.
c) The signs
MRObot
Earlier trade mark Contested sign
The relevant territory is Spain.
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).
When assessing the similarity of the signs, an analysis of whether the coinciding
components are descriptive, allusive or otherwise weak is carried out to assess the
extent to which these coinciding components have a lesser or greater capacity to
indicate commercial origin. It may be more difficult to establish that the public may be
confused about origin due to similarities that pertain solely to non-distinctive
elements.
The contested sign is the word mark ‘MRObot’.
In the contested sign, the element ‘ROBOT’ could be dissected and understood by a
part of the public. In Spanish, robot means a machine which is programmed to move
and perform certain tasks automatically. Bearing in mind that the relevant services
relate to apparatus, equipment and services in relation with airports, aircrafts and the
like, and also technical services and IT services, for that part of the public this
element would be non-distinctive or weak since for most of those services may
include robots, be provided through the use of robots or simply can relate to them.
However, other part of the public not identifying the word ‘ROBOT’ in the contested
sign, could perceive it as either ‘MR’ followed by ‘Obot’, or alternatively as the
invented single word ‘MRObot.
Although the letters ‘MR’ of the contested sing are meaningless in
Spanish, it is a basic English word known as the shortening of the ‘title
prefixed to the surname or first name of a man in the English language’ (see
Online Oxford Dictionary http://dictionary.oed.com). Therefore, it will be
understood by the relevant public as such. Consequently, the following
element ‘Obot’ could be perceived as making a reference to a family name
Decision on Opposition No B 2 772 542 page: 12 of 15
due to the presence of ‘MR’ before it. In this case the element ‘Obot’
would have an average degree of distinctiveness and will be the most
distinctive element of the contested sign as the element ‘MR’ would have
a lower than average degree of distinctiveness.
In the second case -no dissection- the contested sign as a whole ‘MRObot’ has no
meaning in Spanish and has an average degree of distinctiveness.
The Opposition Division will first examine the opposition in relation to the part of the
public not perceiving the element ‘ROBOT’ in the contested sign, as the best case
scenario for the Opponent.
The earlier mark consists of the verbal element ‘OBOT’ written in a standard font with
the letters ‘BOT’ in bold. It is preceded by a figurative element of approximately the
same height as the letters. This figurative element consists of a broken circle
intersected in its lower part by two semi-circles.
When signs consist of both verbal and figurative components, as in the earlier mark,
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 latter is particularly important when the
figurative elements are abstract and cannot be associated with any concept by the
relevant public, as is the case here.
The verbal element ‘OBOT’ of the earlier mark has no meaning for the relevant public
and has an average degree of distinctiveness. In the same way, its figurative element
does not convey any particular meaning and has also an average degree of
distinctiveness.
The earlier mark has no elements that could be considered clearly more dominant
than other elements.
Visually, the signs are similar to the extent that they coincide in the letters ‘*OBOT’;
therefore, the verbal element of the earlier sign is totally included in the contested
sign. The signs differ in the first two letters, ‘MR’, of the contested sign and in the
figurative device present only in the earlier mark. The signs also differ in the minimal
stylisation of the verbal element of the earlier mark.
Therefore, for the part of the public that would not dissect the contested sign, the
signsare visually similar to an average degree.
For the other part of the public who would perceive it as ‘MR-Obot’, the signs are
visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in all the letters of the earlier mark.
It differs in the first two letters of the contested mark.
For the part of the public, that would perceive the contested sign as a single word,
the presence of the letter ‘M’ and ‘R’ before the letter /r/ in the word ‘ROBOT’ cannot
be pronounced naturally in Spanish. It would be pronounced by spelling the letters or
by trying to pronounce them in sequence, in any case introducing additional differing
elements in the pronunciation.
Decision on Opposition No B 2 772 542 page: 13 of 15
As the coinciding ending is quite rare in Spanish, for this part of the public the signs
are aurally similar to an average degree.
For the part of the public perceiving the contested sign as ‘MR-Obot’, the
pronunciation would differ in these two initial letters, that will be pronounced by the
relevant consumers as “mister”, given that it is general knowledge that
the title ‘MR’ is its abbreviation. The pronunciation will coincide in the remaining
‘OBOT’, which is the most distinctive element of the contested sign.
Therefore, for this part of the public, the signs are aurally similar to a high degree.
Conceptually, for the part of the public that would perceive the contested sign as a
single word, neither of the signs has a meaning for the public in the relevant territory.
Since a conceptual comparison is not possible, the conceptual aspect does not
influence the assessment of the similarity of the signs.
For the other part of the public perceiving the contested sign as ‘MR-Obot’, to the
extent that includes the male title and an invented word, it would be
interpreted as a a reference to a family name.
Therefore, as one of the signs will not be associated with any meaning, the signs are
not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
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.
The contested services are partly identical and similar to varying degrees and partly
dissimilar to the opponent’s goods and services. The degree of attention of the
relevant public will be high when purchasing or contracting them.
Decision on Opposition No B 2 772 542 page: 14 of 15
The coincidences reside in the verbal element of the earlier mark, which is entirely
included in the contested sign. As detailed in section c), verbal elements have a
higher impact on a customer’s perception and recollection of a sign.
As set out in section c) of this decision, a part of the public would perceive the signs
in dispute as invented words, for this part of the public the signs would be aurally and
visually similar to an average degree and the conceptual aspects does not have an
influence. For the other part of the public, who would interpret the contested sign as
‘MR-Obot’, the signs are aurally and visually highly similar. Conceptually they are not
similar.
In its observations, the opponent argues that the contested sign main element has a
low distinctive character given that there are many trade marks that include the term
‘ROBOT’. In support of its argument the opponent refers to a few trade mark
registrations in the European Union.
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of data concerning a register only, it cannot
be assumed that all such trade marks have been effectively used. It follows that the
evidence filed does not demonstrate that consumers have been exposed to
widespread use of, and have become accustomed to, trade marks that include
‘ROBOT’. Under these circumstances, the opponent’s claims must be set aside.
The opponent also refers to previous decisions of the Office to support its arguments.
However, the Office is not bound by its previous decisions as each case has to be
dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that,
according to settled case-law, the legality of decisions is to be assessed purely with
reference to the EUTMR, and not to the Office’s practice in earlier decisions
(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and
outcome should still be duly considered when deciding upon a particular case. In the
previous cases referred to by the opponent, the signs under dispute do not contain
an individual element that exists in the language of the relevant territory. Therefore,
those cases and their outcomes are not relevant to the present proceedings.
Considering all the factors of the case, a likelihood of confusion on the part of the
public not identifying the element ‘ROBOT’ in the contested sign exists, as for this
part of the public, the coinciding element ‘OBOT’ is the verbal and most significant
element of the earlier mark; independently of whether the contested sign is
understood as a single invented word or as ‘MR-Obot’. Therefore, it is considered
that the similarities found cannot be safely outweighed by the existing differences,
even for a public with a high degree of attention.
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). 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).
Decision on Opposition No B 2 772 542 page: 15 of 15
Therefore, the opposition is well founded on the basis of the opponent’s Spanish
trade mark registration No 3 077 474. It follows from the above that the contested
trade mark must be rejected for the services found to be identical or similar (to
different degrees) 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.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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
Rasa BARAKAUSKIENE Fabián GARCIA QUINTO Janja FELC
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.