AS TRAVEL | Decision 2493958 - DIARIO AS, S.L. v. S.C. AS TRAVEL S.R.L.

Date Published: Sep 26, 2017

OPPOSITION No B 2 493 958

Diario AS, S.L., Valentín Beato, 44, 28037 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

S.C. AS Travel S.R.L., Calea Victoriei nr. 81, sector 1, Bucarest, Romania (applicant) represented by S.C. Weizmann Ariana & Partners Agentie De Proprietate Intelectuala S.R.L.  str. 11 IUNIE, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucharest, Romania (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 493 958 is partially upheld, namely for the following contested services:

Class 35:         Promotion [advertising] of travel, tourism; advertising services on the tourism industry; organizing exhibitions for advertising purposes; Organization of trade fairs for advertising purposes; Organizing fashion shows for promotional purposes; Direct mail for offers regarding tourism and travel offers; Updating of advertising materials in the field of tourism, on travel; Marketing in tourism; Marketing research in the field of tourism; Marketing studies related to tourism services; Radio commercials about tourist and travel services; Brokerage sales promotions in tourism; TV commercials on travel and vacations, in tourism.

Class 41: Providing amusement services; Organizing and supporting colloquiums; Organizing and supporting conferences; The organization and support of congresses; The organization and support of seminars; Information about possibilities of entertainment; Organizing exhibitions for cultural or educational purposes, in the tourism field; Celebrations planning [entertainment]; Ticket agency services [entertainment].

2.        European Union trade mark application No 13 350 368 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 13 350 368 namely against all the services in Classes 35 and 41. The opposition is based on the following earlier rights:

1. European Union trade mark registration No 11 570 876  

2. Spanish trade mark registration No 2 809 129    

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible as far as the earlier Spanish trade mark registration No 2 809 129 is concerned given that it was registered more than five years prior to the relevant date mentioned above. The earlier European Union trade mark is not subject to use requirement.

The contested application was published on 26/12/2014. The opponent was therefore required to prove that the earlier Spanish trade mark was put to genuine use in Spain from 26/12/2009 to 25/12/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 35: Advertising agency services, broadcasting advertisements and advertising material.

Class 41: Publishing services, editing texts, sports club activities, education and entertainment.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 28/04/2016, within the deadline set by the Office to submit evidence of use of the earlier trade mark according to Rule 22(2) EUTMIR, the opponent submitted evidence of use. The evidence filed consists of the following:

• Book of 40 anniversary of ‘AS’, in Spanish, containing important publications of the magazine summarising relevant sports events between 1967 and 2007. An example of a newspaper cover:

• Document signed by the general manager of ‘Diario AS, SL’, reporting on the investment on advertising and publicity in the trade mark ‘AS’ during 2009-2014.

• Around 100 invoices issued by the opponent for ‘insertion of advertisements in the sports newspaper’ to various clients in Spain, for amounts ranging from EUR 3000 to EUR 240 000 between July 2010 and December 2014. The mark   is displayed at the top of each invoice, in much bigger font and central position, separately from the opponent’s name and address on the top left.

• Over 120 invoices issued by different suppliers to the opponent, for amounts ranging from EUR 10 000 to EUR 120 000, among other things for ‘concepts’, ‘inserts’, ‘agency fees’. According to the opponent some invoices are issued by a media group for inserts in the programme of TV channels. In lack of further explanations the role of this evidence is difficult to establish.

• Screenshots of Spanish-language articles from masdeporte.as.com, as.com, dated 14-15/12/2014.

• Around 50 screenshots of Spanish-language newspaper articles from online sources such as deportes.elpais.com, cadenaser.com, feb.es, antena3.com, telecinco.es dated around 15/12/2014 about the ‘2014 AS Awards’.

• Newspaper articles about meetings organised by AS, such as:

• Eight newspaper clippings dated in 2014-2016 entitled by the opponent ‘Meetings With Aces’ (according to the opponent ‘AS’ means ‘ACE’ in Spanish);

• Eighteen newspaper clippings dated in 2009-2014 about the ‘Forum AS’ and the ‘forum Fernandiz AS’.

• Newspaper clippings about ‘discussions in Donostiarra Roaster’.

• Dossier prepared by the opponent regarding the eighth edition of the ‘AS Awards, 2014’.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, the invoices and their self-explanatory character, also given that they are filed together with the opponent’s handwritten translations, the Opposition Division considers that there is no need to request a translation.

It is furthermore true, as the applicant argues, that the declaration signed by the opponent’s general manager has limited probative value; however, this piece of evidence will not be assessed in isolation from the rest of the evidence filed.

All the documents are in Spanish. The addresses on the invoices also show that the place of use is Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period, or slightly thereafter.

The invoices for advertisements provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used as registered, for example, in the 40 anniversary brochure and on the invoices.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

In the present case, the Opposition Division considers that, taking into all the relevant factors and requirements, the evidence reaches the threshold required to show use of the mark in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark.

The applicant rightly argues that the opponent did not prove use of the mark for advertising agency services. An advertising agency handles all the marketing and advertising aspects of a business, usually including strategic planning, production, creativity, and innovations as well as interactive marketing services via the internet. The evidence falls short of proving such activities were carried out by the opponent.

There is no evidence submitted as regards editing texts (for third parties) education and entertainment. As regards sports club activities, there are only a few newspaper articles which may be indicative, but no information was given on the extent of these activities.

The invoices, however, prove use of the mark for the distribution of advertising material, as a service provided for third parties for remuneration, in the opponent’s newspaper. In this sense, the translation provided by the opponent in Class 35, ‘broadcasting’ is somewhat misleading because it appears to imply transmission by telecommunication, whereas it is clear that the medium used was the opponent’s own newspaper. However, the opponent’s original certificate contains the term ‘difusión’, which is almost identical to the English term ‘diffusion’ and therefore the true nature of the services, notably dissemination of advertising via newspapers, can be identified without particular effort. It is also clear that the opponent has been actively publishing the sport newspaper ‘AS’ for decades.

It is therefore considered that the opponent has shown genuine use of the trade mark for the following services:

Class 35: Broadcasting advertisements and advertising material

Class 41: Publishing services

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

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:

European Union trade mark registration No 11 570 876

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Data media (Magnetic -); Phonograph records, Compact disc, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Software for computers; Downloadable music and image files; Downloadable publications. 

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Printed publication; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 41: Education; Providing of training; Entertainment; Services having the basic aim of the entertainment of people; Sporting and cultural activities; Editing of texts (except publicity texts); Publication of books, journals and magazines; On line publication of electronic books,  journals and magazines;  News reporter services;  Production of radio and television programmes.

Spanish trade mark registration No 2 809 129:

Class 35: Broadcasting advertisements and advertising material

Class 41: Publishing services

The contested services, after a limitation requested by the applicant, are the following:

Class 35: Promotion [advertising] of travel, tourism; advertising services on the tourism industry; organizing exhibitions for commercial or advertising purposes; Organization of trade fairs for commercial or advertising purposes; Organizing fashion shows for promotional purposes; Direct mail for offers regarding tourism and travel offers; Updating of advertising materials in the field of tourism, on travel; commercial information and advice for customers [consumer advice company] in the field of tourism; Professional business consultancy in the field of tourism; Business information in the field of tourism; Investigations business; Business management and organization consultancy in the field of tourism; Support for business management in tourism; Business management consultancy in the field of tourism; Business management for hotels; Business consultancy organization in the field of tourism; Marketing in tourism; Marketing research in the field of tourism; Marketing studies related to tourism services; Commercial information agencies in the field of tourism; Presentation of goods in communication media for commercial purposes related to the tourism industry; Brokerage procurement [purchasing goods and services for other businesses] in tourism; Radio commercials about tourist and travel services; Brokerage sales promotions in tourism; TV commercials on travel and vacations, in tourism.

Class 41: Providing amusement services; Organizing and supporting colloquiums; Organizing and supporting conferences; The organization and support of congresses; The organization and support of seminars; Information about possibilities of entertainment; Organizing exhibitions for cultural or educational purposes, in the tourism field; Celebrations planning [entertainment]; Ticket agency services [entertainment].

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 promotion [advertising] of travel, tourism; advertising services on the tourism industry; organizing exhibitions for advertising purposes; Organization of trade fairs for advertising purposes; Organizing fashion shows for promotional purposes; Direct mail for offers regarding tourism and travel offers; Updating of advertising materials in the field of tourism, on travel; Marketing in tourism; Marketing research in the field of tourism; Marketing studies related to tourism services; Radio commercials about tourist and travel services; Brokerage sales promotions in tourism; TV commercials on travel and vacations, in tourism are all services with advertising purpose, which links these services to the opponent’s broadcasting advertisements and advertising material. These services target the same professional consumers seeking to promote their activities, and they can be offered by the same or related undertakings. Therefore, these services are similar.

This link, however, cannot be established with the remaining contested services, which relate to business management, organisation, consultancy, brokerage. Such services are provided by professional business consultants, and involve activities such as business research and appraisals, cost price analysis and organisation consultancy, and any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to allocate financial and human resources efficiently, how to improve productivity, how to increase market share, etc. These services have nothing in common with the opponent’s goods and services in Classes 9, 16, 35 and 41 as they will be provided by distinct undertakings. They are neither strictly complementary nor are they in competition. They are dissimilar.

Contested services in Class 41

Providing amusement services is included in the opponent’s entertainment services and therefore the services are identical. 

Information about possibilities of entertainment; celebrations planning [entertainment]; ticket agency services [entertainment] are similar to the opponent’s entertainment services given that they coincide in purpose, service providers and target public.

Organizing and supporting colloquiums; organizing and supporting conferences; the organization and support of congresses; the organization and support of seminars; organizing exhibitions for cultural or educational purposes, in the tourism field are similar to the opponent’s education services given that their purpose is developing the mental faculties. These services can be expected to be provided by the same undertakings.

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 similar are directed at the public at large (services in Class 41) and at business customers with specific professional knowledge or expertise (services in Class 35).

The degree of attention will vary from average to high depending on the expertise of the relevant public or the terms and conditions of the purchased services.

3. The signs

ES TM EU TM
Earlier trade marks	Contested sign

 

The relevant territory is the European Union and Spain.

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 in conflict are figurative. The earlier marks consist of the term ‘as’ written in standard white lower case font in front of a grey (ES mark) and red (EU TM) background respectively. The contested mark consists of the term ‘AS TRAVEL’ written in fairly standard black capital font and a figurative element consisting of red dots and a curving line.

The differing element ‘travel’ is an English term, meaning to go, move, or journey from one place to another [Online Collins Dictionary at http://www.collinsdictionary.com/]. Consequently, as far as the earlier European Union trade mark is concerned, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

‘Travel’, in the context of education, advertising, entertainment services is a non-distinctive element since it refers to the subject matter of the services. The term is nevertheless meaningless in Spanish and its distinctiveness is normal in this language.

The contested mark’s figurative element is merely decorative and does not transmit any particular concept.

‘AS’ may be perceived as the English term equivalent to while; when; at the time that. It also means ‘ace’ in Spanish. The term has no direct meaning in relation to the goods and its distinctiveness is normal.

Visually, the signs coincide in ‘AS’, i.e. all the letters of the earlier marks. Although the term is written in lower case in the earlier marks and upper case in the contested mark, none of the fonts used in the marks depart significantly from standard. They differ in ‘TRAVEL’, an element which is non-distinctive for the English-speaking public.

It is of particular importance that the signs coincide in ‘AS’ which is the contested sign’s initial element, also the only element of the earlier signs. This is because the first part of the sign is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgments of 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Therefore, depending on the perception of the descriptive meaning of the word ‘TRAVEL’, the signs are visually similar to a medium degree for the English and a low degree for the Spanish-speaking relevant public.

Aurally, the signs coincide in the sound of the letters ‘A-S’, i.e. all the sounds of the earlier marks. They differ in the sound of ‘TRAVEL’.

Therefore, depending on the perception of the descriptive meaning of the word ‘TRAVEL’, the signs are aurally similar to a high degree (for the English-speaking public) and to a medium degree (for the Spanish-speaking public).

Conceptually, the signs are highly similar. For the English-speaking public they coincide in the concept of ‘while’/‘when’ and the difference in ‘TRAVEL’ has limited impact given its non-distinctive character. For the Spanish-speaking public the signs coincide in the concept of ‘ace’.

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 marks

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 claimed that the earlier trade marks enjoy enhanced distinctiveness. However, the opponent only did so when filing the evidence of use, which was after the deadline given to provide facts, evidence and arguments in support of the opposition, which expired on 23/10/2015. This claim, therefore, cannot be taken into account.  

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The signs coincide visually, aurally and conceptually in the element ‘AS’, which is the only element of the earlier sign and the initial element of the contested sign.

The difference in the contested sign lacks distinctiveness for the English-speaking public, while it is distinctive for the Spanish-speaking public. The figurative element has a mere decorative role.

Irrespective of whether or not the descriptive meaning of ‘TRAVEL’ is recognised by the relevant public, the coinciding element ‘AS’ will have the most impact on consumers in the contested mark given its initial position and distinctive character. The above mentioned differences are not sufficient to enable the relevant public to safely distinguish between the signs in the context of identical or similar services.

The applicant filed various pieces of evidence with regard to prior use of the mark applied for. In this context it should be noted that the right to an EUTM begins on the date when the EUTM application is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking public and the English-speaking public in relation to the opponent’s earlier European Union trade mark. 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 partly well-founded on the basis of the opponent’s Spanish and European Union trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the services found to be similar 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.

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

Mark KING

Marianna KONDAS

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.