OPPOSITION No B 2 793 852

Compagnie du Ponant, 408, Avenue du Prado, 13008 Marseille, France (opponent), represented by Myriam Angelier, 3, Place Félix Baret, 13006 Marseille, France (professional representative)

a g a i n s t

Ibrahim Rifat Edin, Tahlisiye Yolu, Kupeste Sokak, Eski Tahlisiye Binasi, no:1, Kisirkaya Köyü, Kilyos, Sariyer-Istanbul, Turquie (applicant), represented by Silex IP, Poeta Joan Maragall 9,b Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 793 852 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 15 555 964, namely against some of the services in Class 39. The opposition is based on European Union trade mark registration No 12 850 079, ‘LE LEVANT’. 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 12: Vehicles for locomotion by waterway, apparatus for maritime locomotion; boats, ferries, ships, cruisers, yachts, rowing boats, speedboats; trailer hitches for boats, ferries, ships, cruisers, yachts, rowing boats, speedboats; ferry hulls, ships, rowing boats, speedboats; hooks, masts, oars, paddles (for boats); steering gears for boats, ferries, ships, cruisers, yachts, rowing boats, speedboats; disengaging gears for boats, ferries, ships, cruisers, yachts, speedboats; launch ramps for boats; pontoons.

Class 41: Training, education, entertainment; leisure services; sporting and cultural activities; arranging and conducting of conferences, colloquiums, workshops, congresses, seminars (education or entertainment); publication of books, magazines and texts (other than publicity texts); rental of films, sound recordings, reservation of show seats; reporter and photographic reporting services; videotaping.

The contested services are the following:

Class 39: Transport; packaging and storage of goods; travel arrangement; land, water and air transport services; rental of land, water or air vehicles; arranging of tours; travel reservation; issuing of tickets for travel; car parking; garage rental; boat storage; rescue operations for vehicles and goods; storage, wrapping and packaging of goods.

As a preliminary remark, it should be noted that the opponent 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).

Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested transport; land, water and air transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. The services differ from the opponent’s goods and services in Classes 12 and 41 in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, despite the opponent’s arguments, they are dissimilar.

The opponent refers to a Board of Appeal decision stating that transport services are similar to vehicles. However, account should be taken of the fact that in a more recent case (17/10/2016, R 0006/2016-4, SnappCar / Snapcar, § 10-11) the Board of Appeal stated that these goods and services are dissimilar.

The contested packaging and storage of goods; boat storage; storage, wrapping and packaging of goods are services whereby a company’s merchandise is packed and kept in a particular place for a fee. Those services are not similar to the opponent’s goods in Class 12 that could be packed or stored. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels and are not in competition. Therefore, these services are dissimilar to the opponent’s goods, despite the decision cited by the opponent. Other judgments and decisions confirm this dissimilarity (07/02/2006, T-202/03, Comp USA, EU:T:2006:44, § 27-32; 22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 32; 07/01/2013, R 1006/2012-G, PIONONO, § 38).

Packaging and storage of goods; boat storage; storage, wrapping and packaging of are also dissimilar to the opponent’s services in Class 41. These services do not have the same purpose. They are neither complementary nor in competition and  are not rendered by the same companies.

According to the Nice Classification, Class 39 includes mainly services for the transport of people, animals or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport. In addition, the services of a travel agency that involve the arrangement of travel are in Class 39, while other services provided by a travel agency are in other classes, such as the issuance of travellers’ cheques in Class 36 and making arrangements for lodging or meals while travelling in Class 43. Therefore, the contested travel arrangement; arranging of tours; travel reservation; issuing of tickets for travel in Class 39 either directly relate to travel (tourist travel reservation services; provision of tourist travel information; booking of travel through tourist offices) or should be interpreted, in the light of the rationale of the Nice Classification, as relating to transport and traveling (providing information to tourists relating to excursions and sightseeing; tour guide services; services for the arranging of excursions for tourists). Although a travel agency that arranges transport for excursions and sightseeing for tourists normally also provides information about and arranges tickets to museums, concerts, theatres, amusement parks, etc., this is not sufficient to find the contested services in Class 39 similar to those of the opponent in Class 41. The contested services in Class 39 have different natures, purposes and methods of use from the opponent’s services in Class 41, namely education; entertainment, amusement park services; sporting activities; cultural activities; arranging and providing cultural events. They are neither in competition nor complementary. Moreover, they have different commercial origins. Therefore, they are dissimilar.

The opponent based its reasoning on two decisions stating that travel agency services are similar to some services in Class 41. Nevertheless, account should also be taken of the fact that a more recent decision (31/05/2017, No B 2 635 301) found these services dissimilar.

The contested travel arrangement; arranging of tours; travel reservation; issuing of tickets for travel are also dissimilar to the opponent’s goods in Class 12 and to the opponent’s remaining services in Class 41. They do not have the same nature, purpose or method of use. They are not in competition or complementary. These goods and services are not manufactured/rendered by the same companies and their distribution channels are different.

The contested rental of land, water or air vehicles; car parking; garage rental are services the purpose of which is to provide a secure place for the storage of vehicles. These goods and the opponent’s goods and services in Classes 12 and 41 have different natures, purposes and methods of use. They do not have the same distribution channels and are not in competition or complementary. Therefore, they are dissimilar.

As regards the decision mentioned by the opponent, a recent decision of the Board of Appeal confirms the dissimilarity between these services and the goods in Class 12 (17/10/2016, R 0006/2016-4, SnappCar / Snapcar, § 12).

The contested rescue operations for vehicles and goods are dissimilar to the opponent’s goods and services in Classes 12 and 41. These contested services are provided by specialist companies whose business is not to manufacture or sell the goods that are the subject of the rescue operations (even the opponent’s vehicles in Class 12). These goods and services are neither complementary nor in competition. The services differ from the opponent’s goods and services in Classes 12 and 41 in terms of their nature, purpose and method of use. Moreover, they do not have the same distribution channels.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Benoit VLEMINCQ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.