GO International | Decision 2578469 - VRG LINHAS AÉREAS S.A v. ASFINAG European Toll Service GmbH
Date Published: Oct 1, 2017
OPPOSITION No B 2 578 469
VRG Linhas Aéreas S.A., Praça Senador Salgado Filho s/n-Térreo Área Pública, Entre os Eixos 46-48/O-P, Sala de Gerência, Rio de Janeiro, Brasil (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, España (professional representative)
a g a i n s t
Asfinag European Toll Service GmbH, Rotenturmstraße 5-9, 1010 Wien, Austria (applicant), represented by Michaela Siegwart, Cerha Hempel Spiegelfeld Hlawati Rechtsanwälte GmbH, Parkring 2, 1010 Wien, Austria (professional representative).
On 25/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 578 469 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 13 791 397, namely against all the services in Class 39. The opposition is based on European Union trade mark registration No 9 186 123. 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.
- The services
The services on which the opposition is based are the following:
Class 39: Air transportation of passengers and freight; freight services, namely, freight ship transport; transportation services, namely, transportation and loading of luggage; and aircraft piloting.
The contested services are the following:
Class 39: Customer related transport services, i.e. traffic information services, traffic management services and safety information services excluding any kind of transport services.
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.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services. The term ‘namely’, used in the opponent’s list of services, and the expression ‘i.e.’, used in the applicant’s list, to show the relationship of individual goods and services with a broader category, are exclusive and restrict the scope of protection only to the specifically listed services.
The contested services cover a variety of activities that target the users of transport services and relate to information and traffic management, whereas the earlier mark covers transport services themselves. There is a connection between these services to the extent that they target the same end users and may be provided by the same companies. Therefore, they are similar to a low degree.
- 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 to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is average.
- 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).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The earlier mark consists of the verbal element ‘GOL’ in stylised red letters, which is superimposed on a grey letter ‘O’. The expression ‘Linhas aéreas inteligentes’ is placed underneath this element. This expression means ‘intelligent airlines’ in Portuguese and will also be easily understood by other parts of the public, such as the Spanish- and French-speaking parts, because the linguistic equivalents in these languages are similar. For this part of the public, this expression is non-distinctive for the relevant services, which are all transport services, including air transport. The element ‘GOL’ is likely to be understood by the relevant public as ‘goal’ (a point scored in some sports, such as football and hockey, when a player gets the ball into the goal area), since the word is the same in several languages (e.g. Spanish, Portuguese, Italian and Romanian), is very similar (‘goal’ in English or ‘gól’ in Slovakian) and is commonly used throughout the relevant territory. This element is distinctive for the relevant services. ‘GO(O)L’ is the dominant element of the mark as it is the most eye-catching, due to its size and position.
The contested mark consists of the word ‘GO’ in grey and yellow upper case letters on a blue background. The verbal element ‘International’ is placed underneath in smaller standard blue letters on a grey background. The element ‘GO’ means ‘travel or move to another place’ in English and will be understood by a part of the public. Since the relevant services relate to transport, this element is weak for this part of the public. For another part of the public, this element will be meaningless and therefore distinctive. However, the word ‘International’ is a basic English and French word that will be understood by all the relevant public. This word indicates the worldwide scope of the services and is therefore non-distinctive. Because of its position and size, ‘GO’ is the dominant element.
The Opposition Division will first examine the opposition in relation to the part of the public for which ‘Linhas aéreas inteligentes’ is non-distinctive and ‘GO’ is meaningless, as this is the best scenario for the opponent. For this public, ‘GO(O)L’ and ‘GO’ are therefore the most distinctive elements of the signs.
The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.
Visually, the signs coincide in the letters ‘GO’, which are present in the dominant and most distinctive element of both signs. However, they differ in the additional letters ‘(O)L’ of the earlier mark, the typefaces, colours and layouts of the marks and the additional verbal elements, although these have a limited degree of distinctiveness, as explained above.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘GO’, present identically at the beginnings of both signs. The pronunciation differs in the sound of the additional letter ‘O’ (in the unlikely case that it is pronounced) and the letter ‘L’ of the earlier mark, which have no counterparts in the contested mark, and the additional verbal elements of the signs.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark will be associated with ‘goal’ and the remaining elements, ‘Linhas aéreas inteligentes’, are non-distinctive. The contested sign encompasses only the concept of ‘International’ for the relevant public and is also non-distinctive. As the signs will be associated with dissimilar meanings, the signs are not conceptually similar.
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.
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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).
In the present case, the services are similar only to a low degree. The signs are visually and aurally similar only to a low and an average degree, respectively. They coincide in two letters placed at the beginning of the most distinctive and dominant elements of the marks, where they are more likely to catch consumers’ attention. However, these elements are rather short (three/four and two letters). The fact that they differ in the two additional letters in the earlier mark (‘OL’) is a relevant factor to consider, because, in short signs, small differences are less likely to go unnoticed. The additional letters in the earlier mark, and especially the letter ‘L’, will certainly be noticed by consumers, particularly because they confer a clear meaning on this verbal element. These differences together with the additional verbal elements (‘Linhas aéreas inteligentes’ and ‘International), even though they are not distinctive, and the graphic differences between the marks contribute to reduce the similarities resulting from two letters, even though they are placed at the beginnings of the signs.
In view of the above, the Opposition Division is of the opinion that the differences between the signs offset their similarities and that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
This absence of likelihood of confusion applies equally to the part of the public for which the expression ‘Linhas aéreas inteligentes’ in the earlier mark is not understood and also for the part of the public that will understand ‘GO’ in the contested sign. In the first scenario, the expression ‘Linhas aéreas inteligentes’ will be distinctive and will therefore result in additional visual and aural differences between the marks, whereas, in the second scenario, the coinciding element, ‘GO’, will be considered weak for the relevant services. Therefore, those parts of the public will perceive the signs as even less similar.
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
Sandra IBAÑEZ | Begoña URIARTE VALIENTE | Frédérique SULPICE |
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.