OPPOSITION No B 2 747 148

Corporacion Empresarial Vectalia, Sociedad Anónima, Avda. de Denia, 155, 03015 Alicante, Spain (opponent), represented by Perez Segura Abogados, Plaza San Cristóbal, 2-2º, 03002 Alicante, Spain (professional representative)

a g a i n s t

Vectorys, Société par Actions Simplifiée, ZI La Palun, 13722 Marignane Cedex, France (applicant), represented by Bonnaffons & Andre, 35 Rue Paradis, 13001 Marseille, France (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 747 148 is upheld for all the contested services, namely:

Class 39: Transport; packaging and storage of goods; transportation information; rental of garages and parking spaces; rental of vehicles, boats and horses; freight forwarding; transport organisers; customs brokerage; loading and unloading of ships; warehousing, storage, packaging and wrapping of goods; transport of goods by road, transport agents; warehouse management.

2.        European Union trade mark application No 15 294 341 is rejected for all the contested services. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 15 294 341 , namely against some of the services in Class 39. The opposition is based on European Union trade mark registration No 9 896 821. 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 services

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

Class 39: Transport; packaging and storage of goods; travel arrangement.

The contested services are the following:

Class 39: Transport; packaging and storage of goods; transportation information; rental of garages and parking spaces; rental of vehicles, boats and horses; freight forwarding; transport organisers; customs brokerage; loading and unloading of ships; warehousing, storage, packaging and wrapping of goods; transport of goods by road, transport agents; warehouse management.

Contested services in Class 39

The contested transport; packaging and storage of goods; storage, packaging of goods are identically covered by the opponent´s list of services.

The contested transportation information is frequently offered as part of the transport services, in order to provide users with materials (general or specific) about a matter or services, such as the availability and specific routes of transport, the ways in which it can be carried out (e.g. by airplane, by boat or by road) the prices of the services, etc. Therefore, this contested service is included in the opponent´s transport services, and they are identical.

The contested rental of garages and parking spaces is frequently offered in relation to the storage of a particular kind of goods, namely vehicles. This contested service is therefore covered by the opponent´s broad category of storage of goods, and they are identical.

The contested rental of vehicles, boats and horses is covered by the opponent´s transport services. These services are therefore identical.

The contested freight forwarding; transport organisers; loading and unloading of ships; transport of goods by road, transport agents are identical to the opponent´s transport services, either because they are covered by the opponent´s broad category of services (i.e. usually offered as part of the transport services), or because they overlap.

The contested warehousing; warehouse management are covered by the opponent´s storage of goods, since warehouses are one kind of storerooms where goods can be kept. These services are therefore identical.

The contested wrapping of goods is identical to the opponent´s packaging of goods, since they can be used as synonyms for referring to the same services.

The contested customs brokerage, when classified under Class 39, is related to transport services. It consists of a profession that involves the ‘clearing’ of goods through customs barriers for importers and exporters (usually businesses), as part of their transport. This involves the preparation of documents and/or electronic submissions, the calculation and payment of taxes, duties and excises, and facilitating communication between government authorities and importers and exporters.

Custom brokers may be employed by or affiliated with transport companies, as well as with freight forwarders, independent businesses, or shipping lines, importers, exporters, trade authorities, and customs brokerage firms.

Therefore, although their commercial origins might not be exactly the same, companies that offer the opponent’s transport services work closely with companies that carry out the contested customs brokerage. The services are complementary and they can target the same relevant public for the same purpose. Consequently, these services are similar.

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 (all found to be identical or similar) are directed at both, the public at large and at business customers with specific professional knowledge or expertise.

Some of the services are not of high prices, and the choice of consumers does not necessarily have a significant impact for them (e.g. rental of parking spaces). In relation to these kinds of services, an average degree of attention is deemed to be paid by consumers purchasing them.

However, part of the services involved can be expensive and/or does not constitute frequent purchases and/or can have a significant impact for consumers, for instance in relation to their businesses (e.g. loading and unloading of ships). In relation to these kinds of services, a high degree of attention is deemed to be paid by consumers purchasing them.

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs consist of invented terms that, for a significant part of the public, have no concept. Some examples of the consumers that will have said perception are the German-speaking, Bulgarian-speaking, Hungarian-speaking, Slovak-speaking, and French-speaking consumers.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking, Bulgarian-speaking, Hungarian-speaking, Slovak-speaking, and French-speaking consumers.

For the parts of the public referred to above, the verbal elements in the marks, ‘vectalia’ and ‘VECTORYS’, are meaningless and of average distinctive character.

The applicant argues that consumers will perceive the beginning of signs “VECT” as a prefix originating from the Latin word “vector”. However, consumers cannot be expected to be familiar with the Latin word “vector” or its meaning, since this term or its abbreviation are not frequently used in any of their languages. Therefore, “vect” is not likely to be attributed a concept, or perceived as an independent element within the marks.

The figurative elements in the marks (i.e. oval shapes in the earlier mark and an oval shape and a line in the contested mark), contrary to the applicant’s argument, are perceived as merely decorative, and are of lower than average distinctive character.

According to the above, the most and only distinctive elements in both marks are the verbal components.

The signs have no element more dominant (visually eye-catching) than others. However, and as argued by the opponent, 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). Therefore, despite the fact that there are no dominant (visually eye-catching) elements in the marks, the verbal components in them do have a stronger impact on consumers.

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. In this line, and as argued by the opponent, it is relevant that the coincidences are found at the beginnings of the marks ‘VECT-’ (see visual and aural comparison below).

Visually, the signs coincide in their beginnings ‘vect-’/‘VECT-’. The verbal elements in the marks are of the same length (eight letters). In both signs the figurative elements contain at least one oval shape, and at least part of them is depicted in green.

The signs differ in ‘alia’ in the earlier mark and ‘ORYS’ in the contested sign. They also differ in colours and typefaces of the verbal components, in the fact that the figurative element of the earlier mark contains three green oval shapes, whereas in the contested mark there is one blue oval shape and one green line crossing through it.

Taking into account the stronger impact of verbal elements, and in particular of their beginnings, where the coincidences are found, also the fact that in this case the differing figurative elements are merely decorative, and the fact that the dissimilarities in the verbal elements are found at their endings, being these the last parts read and pronounced, it is considered that the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory on which the present comparison is focused, the pronunciation of the signs coincides in the sound of the letters ‘vect’, present identically at the beginning of both signs.

The pronunciation differs in the sound of the endings ‘-alia’ and ‘-orys’.  

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

Conceptually, the coincidence in the oval shape is not sufficient to establish any conceptual similarity, as this element is merely decorative, and cannot serve to indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meanings for the parts of the relevant public mentioned above.

Therefore, it can be concluded that the conceptual aspect does not influence the assessment of the similarity of the signs.

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 parts of the public in the relevant territory on which the present comparison is focused. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a figurative element of lower than average distinctive character, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The signs are visually and aurally similar to, at least, an average degree. In this case, for the reasons explained above, the conceptual aspect does not influence the assessment of the similarity of the signs.

The coincidences between the marks are found in their verbal elements, at their beginnings. Their differences are found at the ending of the verbal elements, in their colour and typeface and in the figurative elements.

Taking into account the stronger impact of verbal elements, and in particular of their beginnings, as explained above, and the reduced impact of the differing figurative elements for the reasons explained above, it is considered that the coincidences between the marks are of greater weight than their dissimilarities.

The services (all found to be identical or similar) are directed at both, the public at large and at business customers with specific professional knowledge or expertise. The attention paid by them during the purchase of the services is deemed to vary from average to high.

According to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Based on this, consumers might believe that the conflicting services (all found to be identical or similar) come from the same or economically-linked undertakings.

Also having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the identity and similarity of the services involved, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting services come from the same or economically-linked undertakings.

Even if a high degree of attention was paid during the purchase of some of the services involved, this will not be enough as to avoid such confusion and/or association under the present circumstances.

The applicant argues that the element ‘VECT’ is not distinctive, for being widely used in relation to transport services in Class 39. In support of its argument the applicant refers to some trade mark registrations in the European Union (submitted as Document 1).

In this regard, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘VECT-’. Under these circumstances, the applicant’s claim must be set aside.

The applicant 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, since they refer to different scenarios (i.e. different signs and/or goods and/or services) which lead inevitably to different analysis and outcomes.

Considering all the above, there is a likelihood of confusion on, at least, the
German-speaking, Bulgarian-speaking, Hungarian-speaking, Slovak-speaking, and French-speaking parts 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 9 896 821.

It follows that the contested trade mark must be rejected for all the contested 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.

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin MITURA

María del Carmen SUCH SANCHEZ

Vít MAHELKA

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.