OPPOSITION No B 2 743 162

Smiles S.A., Alameda Rio Negro, 585-2º andar, Bloco B, Barueri, São Paulo, Brazil (opponent), represented by Elzaburu, S.L.P., Miguel Ángel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Alvics, via privata Giovo 40/B, 16038 Santa Margherita Ligure, Italy (applicant), represented by Bagrat Verdiyan, Naardenská 666/7, 162 00 Prague, Czech Republic (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 743 162 is partially upheld, namely for the following contested services:

Class 35:        Advertising, marketing and promotional services; Providing consumer product advice.

Class 39:        Rental of vehicles, in particular automobiles and lorries; Organization of holidays; Arranging of holiday transport; Arranging of holiday transport; Arranging travel tours; Operating of tours; Services for the arranging of tours; Arranging of sightseeing tours and excursions; Organizing and arranging travel.

2.        European Union trade mark application No 15 286 801 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 some of the services of European Union trade mark application No 15 286 801, namely against all the services in Classes 35 and 39. The opposition is based on European Union trade mark registrations No 9 039 678 and No 11 858 263. The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 039 678.

1. The services

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

Class 35:        Mileage program for air transportation.

Class 39:        Air transportation activities.

The contested services are the following:

Class 35:        Advertising, marketing and promotional services; Providing consumer product advice; Provision of an on-line marketplace for buyers and sellers of goods and services; Mediation of trade business for third parties; Procurement of contracts [for others]; Procurement of contracts for others relating to the sale of goods; Mediation of contracts for purchase and sale of products.

Class 39:        Rental of vehicles, in particular automobiles and lorries; Rental of parking places and garages for vehicles; Rental of vehicle roof racks; Organization of holidays; Arranging of holiday transport; Arranging of holiday transport; Arranging travel tours; Operating of tours; Services for the arranging of tours; Arranging of sightseeing tours and excursions; Organizing and arranging travel.

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

The term ‘in particular’, used in the applicant’s list of services, indicates that the specific 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 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 35

The contested marketing services include, as a broader category, the opponent’s mileage program for air transportation. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The opponent’s mileage program for air transportation is a structured marketing strategy designed to encourage customers to continue to use the services of air travelling. They are highly similar to the contested advertising and promotional services since they have the same public, providers and distribution channels. Furthermore, they have a similar nature and purpose (promoting client’s goods or services) as the opponent’s services.

The contested providing consumer product advice is a specialised service concerned with providing support to clients and consumers. This service is similar to a low degree to the opponent’s mileage program for air transportation as they can have the same providers and distribution channels and target the same relevant public.

The contested provision of an on-line marketplace for buyers and sellers of goods and services; mediation of trade business for third parties; procurement of contracts [for others]; procurement of contracts for others relating to the sale of goods; mediation of contracts for purchase and sale of products do not share any points in common with the opponent’s services in Classes 35 and 39 since they will not be provided by the same companies, through the same channels or aimed at the same consumers. They are not in competition with each other or complementary either. Therefore, the services at issue are dissimilar.

Contested services in Class 39

A vehicle is ‘a general term for: anything by means of which people or goods may be conveyed, carried, or transported; a receptacle in which something is or may be placed in order to be moved’ (information extracted from Oxford English Dictionary on 21/06/2017 at http://www.oed.com/). The contested rental of vehicles, in particular automobiles and lorries overlap with the opponent’s air transportation activities. Therefore, they are identical.

The contested organization of holidays; arranging of holiday transport; arranging of holiday transport; arranging travel tours; operating of tours; services for the arranging of tours; arranging of sightseeing tours and excursions; organizing and arranging travel are services that involve organising and preparing the different aspects of a trip (e.g. making reservations and bookings). They are similar to a high degree to the opponent’s air transportation activities, as they all refer to transportation of people. These services have a similar purpose. They target the same public and have the same distribution channels. Furthermore, they are complementary.

A garage is ‘a building where a car is kept, built next to or as part of a house’ (information extracted from Cambridge Dictionary on 21/06/2017 at http://dictionary.cambridge.org/dictionary/english/garage). The contested rental of parking places and garages for vehicles; rental of vehicle roof racks are services provided for land vehicles unlike the opponent’s services in Class 39, which focus on aircraft. The contested services and the opponent’s services have a different nature, purpose and method of use. They do not have the same suppliers. They are not complementary to or in competition with each other. Therefore, contrary to the opponent’s argument, the contested services are dissimilar to all of the opponent’s services in Classes 35 and 39.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical or similar are directed at the public at large. However, some of the services in question (in Class 35) are directed at business customers with specific professional knowledge or expertise.

Taking into consideration the business-related nature of some of the services and their potential impact on consumers’ businesses, the degree of attention is considered to vary from average to high.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). 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 elements ‘Smiles’ of the earlier trade mark and ‘smile move simply’ of the contested sign are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English speaking part of the public.

The word ‘smile’ of the contested sign will be perceived as ‘a pleased, kind, or amused facial expression, typically with the corners of the mouth turned up and the front teeth exposed’ (information extracted from English Oxford Living Dictionaries on 21/06/2017 at https://en.oxforddictionaries.com/definition/smile). The word ‘Smiles’ of the earlier trade mark will be perceived as the plural of ‘smile’. Both words are considered to have a normal degree of distinctiveness for the services in question.

The words ‘move simply’ are a laudatory slogan whose function is to give information or motivational indications vis-à-vis the services for which registration is sought and to which the public will not pay as much attention as the other elements of the contested sign. This slogan and/or promotional message is less distinctive. Moreover, due to its size and position, the word ‘smile’ is the dominant element of the contested sign.

The figurative elements and stylisation of the earlier mark and contested sign have a very limited impact on the consumer’s perception given that, 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).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning because of the distinctive element ‘smile’, and taking into account the presence of the additional concept of the contested sign ‘move simply’, which is less distinctive, the signs are considered similar to a high degree.

Aurally, the pronunciations of the signs coincide in the sound of the phoneme sequence ‛smile’, present identically at the beginning of each sign. The only difference results from the fact that the earlier mark ends with the sound of the letter ‘s’, while the contested sign ends with the sound of the less dominant and distinctive phrase ‘move simply’, which is also less likely to be pronounced due to its size and position.

Therefore, the signs are aurally highly similar.

Visually, the signs coincide in the sequence of their first five letters, ‘smile’. However they differ in the last letter ‘s’ in the earlier sign and in the less dominant and distinctive words ‘move simply’ in the contested sign. The signs also differ in their stylisation and figurative elements, although these differences have a limited impact on the perception of the marks, as noted above.

Consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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.

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

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent 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.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

In the present case, the services at issue are partly identical or similar to various degrees and partly dissimilar, and they target the public at large and business customers with a degree of attention that may vary from average to high.

The conflicting signs are conceptually and aurally similar to a high degree and visually similar to an average degree. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness.

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).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17.

Consequently, the relevant public, when encountering the signs in relation to the services at issue, is likely to confuse the trade marks or make a connection between the conflicting signs and assume that the services (including those that are similar to a low degree) come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 039 678. 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 varying 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.

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

• European Union trade mark registration No 11 858 263 for the word mark ‘SMILES SHOPPING’, based on services in Classes 35 and 39.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains the additional word ‘SHOPPING’ which is not present in the contested trade mark. Moreover, this earlier mark does not cover a broader scope of services than the earlier mark that has already been compared. Therefore, the outcome cannot be different and no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Richard BIANCHI

Carlos MATEO PÉREZ

Lucinda CARNEY

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.