ALENA | Decision 2710187
Date Published: Sep 25, 2017
OPPOSITION No B 2 710 187
AENA, S.A., C/ Arturo Soria Nº 109, 28043 Madrid, Spain (opponent), represented by María Covadonga Fernández-Vega Feijoo, C/ Carbonero y Sol, 42 A, 28006 Madrid, Spain (professional representative)
a g a i n s t
Phoenix Reisen GmbH, Pfälzer Str. 14, 53111 Bonn, Germany (applicant), represented by Dr. Schackow & Partner Rechtsanwälte Partg mbB, Domshof 17, 28195 Bremen, Germany (professional representative).
On 13/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 710 187 is upheld for all the contested services, namely:
Class 39: Passenger transport; Escorting of travellers; Booking of seats (travel); Computerised information services relating to travel; Provision of travel information by computer; Services for the booking of travel; Services for arranging the transportation of travellers; Services relating to the provision of travel arrangements; Passenger transport; Operating of tours; Tour operating and organising; Tour conducting; Travel information; Travel information; Cruise ship services; Supplying tickets to enable holders to travel; Passenger transport; Arranging the escorting of travellers; Sightseeing, tour guide and excursion services; Tour operating and organising; Travel arrangement; Organization of travel and boat trips; Organisation of holiday travel; Travel arrangement; Travel agency and booking services; Tour reservation services; Tour reservation services; Travel reservation and booking services; Reservation of berths for travel; Travel arrangement.
Class 43: Temporary accommodation; Hospitality services [food and drink]; Room reservation services.
2. European Union trade mark application No 15 153 828 is rejected for all the contested services. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 153 828, namely against all the services in Classes 39 and 43. The opposition is based on European Union trade mark registration No 11 952 801. The opponent invoked Article 8(1)(b) and 8(5) 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 services
The services on which the opposition is based are the following:
Class 39: Transport, in particular air transport; Travel arrangement.
Class 43: Services for providing food and drink; Cafeterias; Cafés; Bar services; Catering services; Temporary accommodation.
The contested services are the following:
Class 39: Passenger transport; Escorting of travellers; Booking of seats (travel); Computerised information services relating to travel; Provision of travel information by computer; Services for the booking of travel; Services for arranging the transportation of travellers; Services relating to the provision of travel arrangements; Passenger transport; Operating of tours; Tour operating and organising; Tour conducting; Travel information; Travel information; Cruise ship services; Supplying tickets to enable holders to travel; Passenger transport; Arranging the escorting of travellers; Sightseeing, tour guide and excursion services; Tour operating and organising; Travel arrangement; Organization of travel and boat trips; Organisation of holiday travel; Travel arrangement; Travel agency and booking services; Tour reservation services; Tour reservation services; Travel reservation and booking services; Reservation of berths for travel; Travel arrangement.
Class 43: Temporary accommodation; Hospitality services [food and drink]; Room reservation services.
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 opponent’s list of services in Class 39, 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
Contested services in Class 39
Travel arrangement (listed three times in the applicant’s list) is identically contained in both lists of services.
The contested booking of seats (travel); computerised information services relating to travel; provision of travel information by computer; services for the booking of travel; services for arranging the transportation of travellers; services relating to the provision of travel arrangements; operating of tours; tour operating and organising (listed twice); tour conducting; travel information (listed twice); supplying tickets to enable holders to travel; arranging the escorting of travellers; sightseeing, tour guide and excursion services; organization of travel and boat trips; organisation of holiday travel; travel agency and booking services; tour reservation services (listed twice); travel reservation and booking services and reservation of berths for travel are included in the broad category of the opponent’s travel arrangement. Therefore, they are identical.
The contested passenger transport (listed three times); escorting of travellers; cruise ship services are included in the broad category of the opponent’s transport, in particular air transport. Therefore, they are identical.
Contested services in Class 43
Temporary accommodation is identically contained in both lists of services. The same applies to hospitality services [food and drink], which is synonymous with the opponent’s services for providing food and drink.
The contested room reservation services are included in the broad category of the opponent’s temporary accommodation. Therefore, they are identical.
- 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 are directed at the public at large. The degree of attention will be average.
- The signs
ALENA | |
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 earlier mark is a figurative mark composed of a green triangle-like figurative element at the beginning and the meaningless verbal element ‘aena’. 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). Furthermore, the triangle-like figurative element of the earlier mark is a fairly simple shape without any further stylisation or additional elements; therefore, it is less distinctive than the verbal element.
The contested sign is a word mark consisting of a single word, ‘ALENA’. It has no meaning for the relevant public and is, therefore, distinctive.
Visually, the earlier mark consists of four letters and the contested sign consists of five letters. They coincide in all the letters of the earlier mark. Since the contested mark is a word mark, the use of upper case letters is immaterial. The signs differ in the additional letter ‘L’ in the second position of the contested sign and the green triangle-like figurative element, which is, however, less distinctive than the verbal element.
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 signs coincide in the sounds of all the letters of the earlier mark. The lengths and rhythms of the signs are similar, since they differ in only one phoneme.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory, since their word elements are meaningless and the triangle-like figurative element in the earlier mark does not convey any particular concept. Since a conceptual comparison is not possible, 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.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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.
- 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.
In the present case, the services are identical. The signs are visually similar to an average degree and aurally similar to a high degree. Neither of the signs has a meaning for the relevant public.
The signs differ in the figurative element at the beginning of the earlier trade mark, which is less distinctive than the verbal element and may be perceived as a decorative variation of the contested sign, and the letter ‘L’, which may be easily overlooked, especially given that the degree of attention of the relevant public will be average and that 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).
Considering all the above, there is a likelihood of confusion.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 952 801. It follows that the contested trade mark must be rejected for all the contested services.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
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
Zuzanna STOJKOWICZ | Birgit Holst FILTENBORG | Ioana MOISESCU |
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.