OPPOSITION No B 2 732 280

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 2 732 280 is partially upheld, namely for the following contested services:

Class 39:

Arrangement of transportation of passengers by aircraft; computerised reservation services relating to the carriage of passengers; arranging of air transport; arranging of passenger transport; reservation of air transportation; arrangement of transportation of passengers by ships; booking of seats for transportation by air; reservation services for transportation by air; services for arranging transportation by air; reservation of berths for travel; planning and booking of travel and transport, via electronic means; airline ticket reservation services.

2.        European Union trade mark application No 15 303 795 is rejected for all the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 303 795. 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 goods and services are the following:

Class 16:	Inflight magazines; printed tickets; passenger tickets.
Class 35:	Providing advertising space in periodicals, newspapers and magazines; advertising in periodicals, brochures and newspapers; magazine advertising.
Class 39:	International air freight shipping services; air courier services; airline transport; arrangement of transportation of passengers by aircraft; transport of passengers by air; airline services for the transportation of goods; airline and shipping services; airline services for the transportation of cargo; computerised reservation services relating to the carriage of passengers; computerised information services relating to the carriage of passengers; air transport; transport of money; shipping of documents; transport of travelers; transportation of luggage; transportation by air of baggage; transportation of travellers' baggage; turbojet airplane transport; freight ship transport; arranging of air transport; arranging transportation of goods; transportation services for the injured; arranging of passenger transport; ambulance transport; overnight transportation of letters by air; distribution [transport] of frozen semen; reservation of air transportation; ocean shipping; transport of freight by air; guarded transport of valuables; air transport of valuables; arranging the transportation of parcels by air; arrangement for the transportation of works of art; cruise ship transport services; arrangement of transportation of passengers by ships; distribution [transport] of goods by air; booking of seats for transportation by air; provision of transport for passengers by air; air cargo transport; providing information relating to air transport; consultancy in the field of air transport; international ocean freight shipping services; computerised distribution planning relating to transportation; transportation information; ground transportation relating to the aviation industry; reservation services for transportation by air; services for arranging transportation by air; transportation of mechanics to grounded aircraft via airplane; reservation of berths for travel; providing transportation to the elderly or handicapped persons [charitable services]; planning and booking of travel and transport, via electronic means; charitable services, namely, providing transportation to the elderly or handicapped persons; providing information relating to travel and transport, via electronic means; airline ticket reservation services.

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).

However, the term ‘namely’, used in the applicant’s lists of services in Class 39 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 28(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 goods in Class 16

The opponent’s goods in Class 20 are basically furniture of different kinds and have nothing relevant in common with the contested goods inflight magazines; printed tickets; passenger tickets. 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. Therefore, inflight magazines; printed tickets; passenger tickets 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.

First of all, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, namely movables or real estate. Services, on the other hand, consist of the provision of intangible activities. Although in some cases there is a clear connection between goods and services, usually due to a strong interdependent, complementary relationship, this is not in the present case, given that the opponent’s services do not actually concern inflight magazines; printed tickets or passenger tickets. The fact that, for example, such inflight magazines may be developed by making use of, for instance, electronic desktop publishing services is a too tenuous link to determine any degree of similarity. Even though, companies delivering publishing services can also provide printed matter, in the present case, the companies rendering electronic desktop publishing services are specialised, using computer programs and other electronic means, in the development, design, edition of any content that could be later published online, in TV or, eventually printed as the case maybe. It is therefore an earlier and different activity in nature to that of publishing. Moreover, the aforementioned inflight magazines; printed tickets or passenger tickets could also be produced without making use of electronic desktop publishing services, and as such they are not complementary. Therefore, the contested inflight magazines; printed tickets; passenger tickets are also dissimilar to all the opponent’s services in Classes 41 and 43.

Contested services in Class 35

Considering the previous definitions of the opponent’s goods and services, the contested providing advertising space in periodicals, newspapers and magazines; advertising in periodicals, brochures and newspapers; magazine advertising are dissimilar to all the opponent’s goods and services. They have no relevant points of contact with those goods and 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 arrangement of transportation of passengers by aircraft; computerised reservation services relating to the carriage of passengers; arranging of air transport; arranging of passenger transport; reservation of air transportation; arrangement of transportation of passengers by ships; booking of seats for transportation by air; reservation services for transportation by air; services for arranging transportation by air; reservation of berths for travel; planning and booking of travel and transport, via electronic means; airline ticket reservation services 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 international air freight shipping services; air courier services; airline transport; transport of passengers by air; airline services for the transportation of goods; airline and shipping services; airline services for the transportation of cargo; computerised information services relating to the carriage of passengers; air transport; transport of money; shipping of documents; transport of travelers; transportation of luggage; transportation by air of baggage; transportation of travellers' baggage; turbojet airplane transport; freight ship transport; arranging transportation of goods; transportation services for the injured; ambulance transport; overnight transportation of letters by air; distribution [transport] of frozen semen; ocean shipping; transport of freight by air; guarded transport of valuables; air transport of valuables; arranging the transportation of parcels by air; arrangement for the transportation of works of art; cruise ship transport services; distribution [transport] of goods by air; provision of transport for passengers by air; air cargo transport; providing information relating to air transport; consultancy in the field of air transport; international ocean freight shipping services; computerised distribution planning relating to transportation; transportation information; ground transportation relating to the aviation industry; transportation of mechanics to grounded aircraft via airplane; providing transportation to the elderly or handicapped persons [charitable services]; charitable services, namely, providing transportation to the elderly or handicapped persons; providing information relating to travel and transport, via electronic means 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.

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 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, airline transport and travel arrangement. The degree of attention of the relevant public varies from average to high, as some of the 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’.

According to the case law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T353/04, Curon, EU:T:2007:47, § 74). The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters or a combination of them.

The contested sign is a figurative mark consisting of a figurative device depicting a globe with no continents showing several horizontal lines indicating latitudes and a single vertical line indicating the longitude or the prime meridian. It is followed by the verbal elements ‘Pan’ and ‘Am’ in bold standard typeface. All the elements are depicted in sky-blue colour.

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 10/03/2017 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 all the relevant services found to be similar.

As regards the figurative device depicting a globe of the contested sign, it will be understood by the majority of the relevant public as the outreach of those services which are all airline travel related. This element will be therefore weak for all the relevant services found similar.

The earlier mark as a word mark has no elements that could be considered more dominant than other elements.

The contested sign has no elements that could be considered more dominant than other elements.

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).

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 the verbal elements ‘Pan Am’ found at the beginning of the earlier mark and being the most distinctive element of the contested sign. However, they differ in the verbal element ‘Lounge’, which is present only in the earlier mark and in the figurative device of a globe, which is only present in the contested sign; though, as indicated above, those two differing elements are weak for the relevant services. The signs also differ in the colour and minimal stylisation of the coinciding verbal element of the contested sign.

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

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, considering the previous assertions concerning the semantic content conveyed by the differing elements of the signs, namely the word ‘Lounge’ and the figurative device of a globe, as they will evoke a dissimilar concept despite its weak distinctive character, the signs are not conceptually similar. However, as these two elements have a weak distinctive character, the impact of this aspect in the overall assessment of likelihood of confusion will be 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 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’, at least for the relevant services, in the mark as stated above in section c) of this decision.

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 services are similar and some are dissimilar. The contested goods 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 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 and the figurative device of a globe in the contested sign, both weak. The commonalities are found in their verbal elements. The fact that the marks differ in the additional word ‘Lounge’ and in the figurative device of a globe has a limited impact on the likelihood of confusion because of the lower impact of figurative elements vis-à-vis verbal elements, and their weak distinctive character in relation to the relevant services found similar. Consequently, in accordance with the principles of interdependence and imperfect recollection of the signs, these differences are insufficient to counteract the similarities of the signs and, therefore, there is a likelihood of confusion for those services that are 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 similar to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

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.