OPPOSITION No B 2 732 157

Natascha Bonnermann, Knaackstraße 28, 10405 Berlin, Germany (opponent), represented by Zimmermann & Partner Patentanwälte mbB, Josephspitalstr. 15, 80331 München, Germany (professional representative)

a g a i n s t

Loso Sp. z o.o., Sobieszyńska 21, 02-764 Warsaw, Poland (applicant).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 732 157 is partially upheld, namely for the following contested services:

Class 39:

Food delivery services; arranging of air transport; porterage; reservation of air transportation; arranging of passenger transport; arrangement of transportation of passengers by aircraft; arranging transport for business users; reservation services for transportation by air; services for arranging transportation by air; reservation of berths for travel; travel and transport reservation services; planning and booking of travel and transport, via electronic means; providing information relating to the planning and booking of travel and transport, via electronic means; airline ticket reservation services; travel and tour ticket reservation service; reservation services for airline travel; computerised reservation services relating to the carriage of passengers; computerised reservation services for travel; priority boarding, check-in, seating and reservation services for frequent air travellers; booking of seats for travel; booking of tickets for travel; seat reservation services for travellers; booking of seats for transportation by air; arranging and booking of travel; booking of airport parking; booking of seats for air travel; booking of travel through tourist offices; computerised information services relating to travel reservations; booking and arranging of access to airport lounges.

Class 43:

Temporary accommodation reservations; booking of hotel accommodation; reservation of tourist accommodation; booking of hotel rooms for travellers; booking of temporary accommodation via the internet; making hotel reservations for others.

2.        European Union trade mark application No 14 972 483 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 14 972 483. The opposition is based on European Union trade mark registration No 10 635 852. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 20:	Furniture, in particular tea trolleys, benches, beds, flower stands, flower-stands, sideboards, wagons (dinner -) (furniture), furniture shelves, towel cabinets, coat-stands, furniture of metal, furniture made of wood, furniture made of plastic, doors for furniture, screens, room dividers, shelves for filing-cabinets [furniture], tea-trolleys, cupboards, carts for computers, seating, tables, wall chests, bar tables, stepstools.
Class 41:	Education; providing of training; entertainment; sporting and cultural activities; in particular club services; television entertainment; film production; organising, arranging and conducting of conference, congresses, concerts, electronic desktop publishing and/or workshops; party planning services and conducting parties; radio entertainment; arranging, organising and conducting of entertainment shows; organisation of exhibitions for cultural or educational purposes; event management.
Class 43:	Providing of food and drink and temporary accommodation; in particular rental of temporary accommodation and meeting rooms; providing of food and drink for guests; hotels; bars.

The contested services are the following:

Class 35:	Retail services in relation to food cooking equipment; retail services in relation to heating equipment; retail services in relation to cooling equipment.
Class 39:	Transport; food delivery services; transportation of containers; sewage transportation; air transport; transportation by air of baggage; guarded transport of goods; transport brokerage; arranging of air transport; arranging of baggage transfer; porterage; reservation of air transportation; arranging of passenger transport; transport of travellers; transport of freight by air; transport of passengers by air; passenger cargo services; arrangement of transportation of passengers by aircraft; chartering of vehicles for transportation; shipping agency services for arranging the transportation of goods; distribution [transport] of goods by air; provision of transport for passengers by air; arranging transport for business users; advisory services relating to the tracking of goods in transit; ground transportation relating to the aviation industry; reservation services for transportation by air; services for arranging transportation by air; courier services for the transportation of cargo; airline services for the transportation of goods; airline and shipping services; reservation of berths for travel; travel and transport reservation services; collection, transport and delivery of goods, documents, parcels and letters; planning and booking of travel and transport, via electronic means; air transportation services featuring a frequent flyer bonus program; providing transport and travel information via mobile telecommunications apparatus and devices; providing information relating to the planning and booking of travel and transport, via electronic means; airline transport; airline services for the transportation of cargo; airline ticket reservation services; travel and tour ticket reservation service; reservation services for airline travel; computerised reservation services relating to the carriage of passengers; computerised reservation services for travel; priority boarding, check-in, seating and reservation services for frequent air travellers; booking of seats for travel; booking of tickets for travel; seat reservation services for travellers; booking of seats for transportation by air; arranging and booking of travel; booking of airport parking; booking of seats for air travel; booking of travel through tourist offices; computerised information services relating to travel reservations; booking and arranging of access to airport lounges.
Class 43:	Temporary accommodation reservations; booking of hotel accommodation; reservation of tourist accommodation; booking of hotel rooms for travellers; booking of temporary accommodation via the internet; making hotel reservations for others.

An interpretation of the wording of the list of goods and services is required to determine their scope of protection.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 35

Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue consist in furniture and the contested services are retail services in relation to food cooking equipment; retail services in relation to heating equipment; retail services in relation to cooling equipment. Therefore, the contested services are dissimilar to all the opponent’s goods.

The opponent’s services in Class 41 are mainly services rendered by persons or institutions in the development of the mental faculties of persons, as well as services intended to entertain or to engage the attention. In particular, these services consist of education, services having the basic aim of the entertainment, amusement or recreation of people (e.g. sporting activities), and presentation of works of visual art or literature to the public for cultural or educational purposes. The opponent’s services in Class 43 are hotel and bar services, temporary accommodation and provision of food.

Considering the above, the contested retail services in relation to food cooking equipment; retail services in relation to heating equipment; retail services in relation to cooling equipment are also dissimilar to all the opponent’s services. They have no relevant points of contact with those services of the opponent. They have different natures, purposes and methods of use. They are not complementary and are not in competition with each other. Moreover, they are not likely to be produced by the same undertakings, they are distributed through different sales channels and they target different end users.

Contested services in Class 39

The contested food delivery services are services commonly offered in combination with the opponent’s providing of food in Class 43 for instance fast-food restaurants or take-aways. Therefore, they have the same commercial origin and distribution channels, and target the same relevant public. Consequently, they are similar.

The contested arranging of air transport; porterage; reservation of air transportation; arranging of passenger transport; arrangement of transportation of passengers by aircraft; arranging transport for business users; reservation services for transportation by air; services for arranging transportation by air; reservation of berths for travel; travel and transport reservation services; planning and booking of travel and transport, via electronic means; providing information relating to the planning and booking of travel and transport, via electronic means; airline ticket reservation services; travel and tour ticket reservation service; reservation services for airline travel; computerised reservation services relating to the carriage of passengers; computerised reservation services for travel; priority boarding, check-in, seating and reservation services for frequent air travellers; booking of seats for travel; booking of tickets for travel; seat reservation services for travellers; booking of seats for transportation by air; arranging and booking of travel; booking of airport parking; booking of seats for air travel; booking of travel through tourist offices; computerised information services relating to travel reservations; booking and arranging of access to airport lounges are all services commonly offered by companies involved in providing of temporary accommodation, for instance hotels and similar undertakings, which typically deliver such services (arranging and/or organising travels) as direct or added value services to help their guests and foster customer loyalty. Therefore, the aforementioned contested services have the same commercial origin and distribution channels as the opponent’s providing of temporary accommodation, and target the same relevant public. Consequently, they are similar.

By contrast, the contested transport; transportation of containers; sewage transportation; air transport; transportation by air of baggage; guarded transport of goods; transport brokerage; arranging of baggage transfer; transport of travellers; transport of freight by air; transport of passengers by air; passenger cargo services; chartering of vehicles for transportation; shipping agency services for arranging the transportation of goods; distribution [transport] of goods by air; provision of transport for passengers by air; advisory services relating to the tracking of goods in transit; ground transportation relating to the aviation industry; courier services for the transportation of cargo; airline services for the transportation of goods; airline and shipping services; collection, transport and delivery of goods, documents, parcels and letters; air transportation services featuring a frequent flyer bonus program; providing transport and travel information via mobile telecommunications apparatus and devices; airline transport; airline services for the transportation of cargo are mainly transport, courier and travel information services, which, considering the previous definitions of the opponent’s goods and services, are dissimilar to all the opponent’s goods and services. They have nothing in common with those goods and services of the opponent. They have different natures, purposes and methods of use. They are not complementary or in competition with each other. Moreover, they are not likely to be produced by the same undertakings, they are distributed through different sales channels and they target different end users.

Contested services in Class 43

The contested temporary accommodation reservations; booking of hotel accommodation; reservation of tourist accommodation; booking of hotel rooms for travellers; booking of temporary accommodation via the internet; making hotel reservations for others are all services commonly offered by companies involved in providing of temporary accommodation or hotel services. As such, they are included in the broad categories of, or overlap with, the opponent’s providing of temporary accommodation; hotels. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical and similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise in the fields of, for instance, transport and travel arrangement. The degree of attention of the relevant public varies from average to high, as some of the goods and services concerned are likely, due to their degree of sophistication and their cost, to be the subject of a more careful purchasing decision.

3. The signs

Pan Am Lounge
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a word mark consisting of three words ‘Pan Am Lounge’.

The contested sign is a figurative mark consisting of the two verbal elements ‘PAN’ and ‘AM’ written in blue uppercase letters using a slightly stylised font.

The element ‘Lounge’ is meaningful in certain territories; for example, in those countries where English is understood, it refers to a room where people sit and relax (information extracted from Collins Dictionary on 17/03/2017 at www.collinsdictionary.com).

By contrast, the elements ‘PAN’ and ‘AM’ included in both signs, in spite of also being independently meaningful in certain territories, such as for the Spanish-, Italian- or English-speaking public, will be perceived by the relevant public as a whole as lacking any meaning in the relevant territory. Those elements are, therefore, distinctive.

The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will understand the element ‘Lounge’.

The element ‘Lounge’ in the earlier mark will be understood by the relevant public and, bearing in mind the relevant services, it will be weak for those relevant servicesfound to be identical or similar.

The earlier mark, as a word mark, has no elements that could be considered more dominant than other elements. Equally, the contested sign has no elements that could be considered more dominant than other elements.

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.

Visually, the signs coincide in their verbal elements ‘PAN AM’, found at the beginning of both marks. However, they differ in the verbal element ‘Lounge’, which is present only in the earlier mark and, moreover, is weak for the relevant services. They also differ in the colour and minimal stylisation 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 syllables /PAN AM/, present identically in both signs. The pronunciation differs in the word /Lounge/ of the earlier mark, which has no counterpart in the contested sign and is weak for the relevant services.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘Lounge’ in the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, given that this conceptual difference is due to the presence of a weak element in the earlier mark, at least in relation to all relevant services, its impact is limited.

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, despite the presence of the weak element ‘Lounge’ in the mark for the relevant services as stated above in section c) of this decision.

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5. 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 likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 16).

Some of the contested services are identical and similar and some are dissimilar. The degree of attention of the relevant public may vary from average to high.

As outlined in section c), the signs are visually highly similar and aurally similar to an average degree. Conceptually, the signs are not similar, due to the presence of the element ‘Lounge’ in the earlier mark. The commonalities are found in their distinctive verbal elements. The fact that the marks differ in the additional word ‘Lounge’ has a limited impact on the likelihood of confusion due to the secondary position of this word in the earlier mark and its weak character in relation to the relevant services found to be identical or similar. Consequently, in accordance with the principles of interdependence and imperfect recollection of the signs, the difference of the additional word in the earlier sign is insufficient to counteract the similarities of the signs and, therefore, there is a likelihood of confusion for those services that are identical or similar, even considering the high degree of attention of some consumers. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the 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 10 635 852. 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 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 goods and services cannot be successful.

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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

Ana MUÑIZ RODRIGUEZ

Fabián GARCIA QUINTO

Carmen SÁNCHEZ PALOMARES

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.