OPPOSITION DIVISION
OPPOSITION No B 2 818 485
Travel Blue Limited, Magnolia House, Spring Villa Park, 11 Spring Villa Road,
Edgware, Middlesex HA8 7EB, United Kingdom (opponent), represented by Markus
Borbach, Corneliusstr. 18, 60325 Frankfurt a.M., Germany (professional
representative)
a g a i n s t
Max Power International Trading Co. Ltd., Flat/Rm 1501 and 1503b, 15/F Cable Tv
Tower, 9 Hoi Shing Road, Tsuen Wan Nt, Hong Kong Special Administrative Region
of the People’s Republic of China (applicant), represented by Guy Delhaye, 2 rue
Gustave de Clausade, 81800 Rabastens, France (professional representative).
On 09/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 818 485 is partially upheld, namely for the following
contested goods:
Class 18: Bags; bags for sports; travelling trunks; briefcases; handbags; trunks
(luggage); backpacks; pocket wallets; valises; school bags; travelling sets
(leatherware); travelling bags; suitcases; business card cases; shopping bags;
key cases; tool bags, empty.
2. European Union trade mark application No 15 791 635 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 791 635 for the figurative mark . The opposition
is based on European Union trade mark registration No 401 596 for the word mark
TRAVEL PLUS. The opponent invoked Article 8(1)(b) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
Decision on Opposition No B 2 818 485 page: 2 of 7
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
The goods on which the opposition is based are the following:
Class 18: Wallets, money belts, waist bags, holdalls, luggage, luggage straps, tote
bags, rucksacks.
Class 20: Inflatable pillows.
Class 25: Sleeping masks, rainwear.
The contested goods are the following:
Class 18: Bags; bags for sports; travelling trunks; briefcases; handbags; trunks
(luggage); backpacks; pocket wallets; leather, unworked or semi-worked; valises;
school bags; travelling sets (leatherware); travelling bags; umbrellas; suitcases;
business card cases; shopping bags; key cases; harness fittings; walking sticks; tool
bags, empty.
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 backpacks are synonymous with the opponent´s rucksacks, and
therefore identical.
The contested pocket wallets are included in the opponent´s wallets, and they are
therefore identical.
The contested travelling trunks; briefcases; trunks (luggage); valises; travelling bags;
suitcases are included in the opponent’s luggage. Therefore, they are identical. The
contested bags include the opponent´s waist bags, and they are therefore identical.
The contested goods bags for sports; handbags; school bags; shopping bags; tool
bags, empty are similar to the opponent’s waist bags, since they have the same
nature (they are all types of bags), intended purpose (to carry things), method of use
(items are deposited within the bag and it is lifted from the floor by its handles or
straps). They may also be in competition with each other, since the possession of
one type of bag could obviate the need for another. They will also normally share the
same distribution channels, relevant public and be produced by the same
undertakings.
Decision on Opposition No B 2 818 485 page: 3 of 7
Insofar as the opponent’s luggage may also be made of leather, and since luggage
and travelling sets (leatherware) encompass all sorts of suitcases and bags for
travelling, it is considered that these goods are identical.
The contested business card cases; key cases are similar to the opponent´s wallets,
since they are all pocket-sized cases for holding money and plastic cards, business
cards or keys. They have the same nature (they are small cases, often made of
leather or a similar material) and purpose (to hold small items such as money, cards
or keys), they have same distribution channels, are normally sold in the same sales
outlets and produced by the same undertaking. The method of use (to fill them with
money, cards or keys and carry them in one´s pocket or bag) is also the same.
The remaining goods, namely, leather, unworked or semi-worked; umbrellas; harness
fittings; walking sticks are not similar to any of the goods covered by the earlier mark.
The opponent´s argument that leather, unworked or semi-worked is similar to the
opponent’s goods in class 18, as all these goods can be and very often are made of
leather, is not sufficient for a finding of similarity, since leather, unworked or semi-
worked is aimed primarily at a professional public, and has a different nature (raw
material) and purpose (to provide the basic component from which leather items are
made) to those of the goods covered by the earlier mark (finished items whose
purpose is to stow and transport objects, aid sleep or provide protection against the
rain). These goods normally have a different origin and are sold through different
distribution channels. There is also no competitive relationship between them. In
addition, the opponent´s goods can also be manufactured with materials other than
leather, unworked or semi-worked and, therefore, the public would not assume that
those goods are offered by the same manufacturers.
The opponent´s argument that umbrellas are highly similar to rainwear (class 25), as
both products protect from the rain is likewise not sufficient to outweigh the
differences in the nature of the goods, their different distribution channels, sales
outlets, producers, and method of use. Even taking into account that these goods
could be considered to be in competition with each other, since consumers would
normally purchase either an umbrella or rainwear but not both, there are not sufficient
points in common for a finding of similarity. The contested goods are not
complementary in the sense that use of one is indispensable for the use of the other,
nor, as mentioned above, do they share method of use, usual origin or trade
channels, or have any other point in common.
The opponent´s arguments that harness fittings are similar to waist bags (class 18),
as both products are sold in shops for horse riding needs, and that walking sticks are
highly similar to rucksacks, money belts, waist bags (class 18) and rainwear (class
25) as all these products are sold in hiking shops, are likewise insufficient as a basis
for a finding of similarity. The mere fact, relied on by the opponent, that these goods
can be sold in the same establishments does not permit any conclusion to be drawn
as regards their similarity, since very different kinds of goods may be found in such
shops, without consumers automatically believing that they have the same origin.
The opponent’s remaining goods in Class 18, 20 and 25 are even further removed
from leather, unworked or semi-worked; umbrellas; harness fittings; walking sticks
and show no link whatsoever with these contested goods. They are therefore
dissimilar.
Decision on Opposition No B 2 818 485 page: 4 of 7
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
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 goods found to be identical or similar are directed at the
public at large, whose degree of attention is considered to be average.
c) The signs
TRAVEL PLUS
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). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The common element “TRAVEL” in the signs is not meaningful in certain territories,
for example, in those countries where English is not understood. Consequently, the
Opposition Division finds it appropriate to focus the comparison of the signs on the
non-English-speaking part of the public such as the German-, Spanish-, Bulgarian-
and Portuguese- part of the public with no knowledge of English.
The earlier mark is a word mark and consists of the word elements “TRAVEL PLUS”.
The contested sign is figurative and consists of the word elements “TRAVEL PLUS”
in sentence case and a slightly figurative typeface with a plus sign (+) in between the
two word elements, slightly overlapping the letter “P”.
The element “TRAVEL” included in the signs has no meaning in relation to the
relevant goods and its distinctiveness is normal.
The word “PLUS” included in the signs and the plus symbol (+) included in the
contested sign will be regarded as describing something positive or something that
has an advantage or added value or quantity. As this word and symbol are widely
Decision on Opposition No B 2 818 485 page: 5 of 7
used to describe an advantage or the good quality of the products, they are
considered to be non-distinctive for all the relevant goods.
As regards the figurative elements of the contested sign (the font and case of the
letters and the plus (+) sign) account must be taken of the fact 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).
The earlier mark, being a word mark, has no elements that could be considered more
dominant (visually eye-catching) than other elements. As regards the contested
mark, the size and position of the elements mean that this mark has no dominant
element either.
Visually, the signs coincide in that they both contain the distinctive verbal element
“TRAVEL” and the non-distinctive verbal element “PLUS”.
The signs differ in the sentence case, slightly figurative typeface, and non-distinctive
plus sign (+) of the contested mark.
Taking into account that the distinctive verbal element of the earlier mark ‘TRAVEL’,
as well as the non-distinctive verbal element “PLUS”, are fully included in the
contested sign, and that the differences between them are non-distinctive (plus sign)
or merely stylistic, the signs are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the verbal elements “TRAVEL”
and “PLUS”. Although the word “PLUS” is non-distinctive, it will probably not be
overlooked altogether when pronouncing the signs. The additional plus sign (+) of the
contested mark will probably not be pronounced. Therefore, the signs are either
identical or aurally similar to a high degree, depending on whether the plus sign (+) of
the contested mark is pronounced or not.
Conceptually, as indicated above, the element “TRAVEL” has no meaning for the
relevant public in the non-English-speaking part of the territory, while the element
“PLUS” and the symbol + will be associated with a meaning. Given that the element
“PLUS” and the symbol + are non-distinctive, consumers will pay more attention to
the distinctive element “TRAVEL” of both signs. Therefore, the signs are conceptually
similar to a low degree since they both refer to the concept of something positive or
something that has an advantage or added value or quantity, although this element is
non-distinctive.
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.
Decision on Opposition No B 2 818 485 page: 6 of 7
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 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 a non-distinctive element in the mark, as stated
above in section c) of this decision.
e) Global assessment, other arguments and conclusion
The contested goods are partly identical, partly similar and partly dissimilar to the
opponent’s goods and they are directed at the public at large. The degree of attention
is average.
The earlier trade mark and the contested sign are visually similar to a high degree,
aurally identical or similar to a high degree depending on whether or not the figurative
element is pronounced, and conceptually similar to a low degree. The similarities
between the signs are on account of the distinctive element “TRAVEL” and the non-
distinctive element “PLUS”, which make up the whole of the earlier mark and most of
the contested sign.
As regards the difference in the figurative element “+” in the contested sign, its
impact is not overwhelming and its role as a trade identifier is rather limited since it is
non-distinctive in any case.
In view of the foregoing and taking into account all the relevant circumstances of the
case, also the interdependence principle between the relevant factors, i.e. that a
lesser degree of similarity between the signs may be offset by a greater degree of
similarity between the goods and/or the services and vice versa (29/09/1998, C
39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that the
signs are sufficiently similar to induce a likelihood of confusion on the part of the
relevant public in relation to identical and similar goods.
Considering all the above, there is a likelihood of confusion on the part of the non-
English-speaking part of the public such as the German-, Spanish-, Bulgarian- and
Portuguese- part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 401 596. It follows that the contested trade mark
must be rejected for the goods found to be identical or similar to those of the earlier
trade mark.
The rest of the contested goods 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 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
Decision on Opposition No B 2 818 485 page: 7 of 7
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Riccardo RAPONI Helen Louise MOSBACK Lucinda CARNEY
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.