iGo My Mobility | Decision 2201336 - DG International Holdings Limited v. Christian Maertins

Date Published: Sep 25, 2017

OPPOSITION No B 2 201 336

DG International Holdings Limited, Unit 1, Mill Hill Industrial Estate, Flower Lane, London NW7 2HU, United Kingdom (opponent), represented by CSY ST Albans, 45 Grosvenor Road, St. Albans, Hertfordshire AL1 3AW, United Kingdom (professional representative)

a g a i n s t

Christian Maertins, Winsstraße 58, 10405 Berlin, Germany (applicant), represented by SNP Schlawien Partnerschaft mbB, Kaiser-Joseph-Str. 260, 79098 Freiburg, Germany (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 201 336 is partially upheld, namely for the following contested services:

Class 38: Telecommunications; telecommunication; transmission of messages; providing access to telecommunications services.

Class 39: Arranging of car hire; car parking; travel reservation; transport reservation; reservation and booking of seats on transport.

2. European Union trade mark application No 11 596 781 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 all the services of European Union trade mark application No 11 596 781. The opposition is based on European Union trade mark registrations No 8 511 628, No 6 360 151, No 9 492 315 and No 9 490 475. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

PRELIMINARY REMARKS

On the right to file opposition

The notice of opposition was initially filed with an indication of ‘multiple opponents’, namely DG International Holdings Limited, Design Go Limited and DG Capital Limited. The opposition was based on European Union trade mark registrations No 8 511 628, No 6 360 151, No 9 492 315 and No 9 490 475, and United Kingdom trade mark registrations No 1 384 840, No 1 384 841 and No 1 384 842. Some of the earlier rights are owned by DG International Holdings Limited; some by DG International Holdings Limited and Design Go Limited; and one by Design Go Limited.

It was indicated by the opponent in its submissions along with the notice of opposition (12/06/2013) that ‘DG International Holdings Limited’ is the parent company of both Design Go Limited and DG Capital Limited, and so Design Go Limited and DG Capital Limited own some of the trade mark rights on which the opposition is based and are permitted to use the GO/ GO TRAVEL trade marks by DG International Holdings Limited. […] DG Capital Limited and Design Go Limited also permit DG International Holdings Limited to use the GO/ GO TRAVEL trade marks and the companies are owners of the goodwill in the GO trade marks’.

However, pursuant to Rule 15(1) EUTMIR, a notice of opposition may be entered on the basis of one or more earlier right, provided that these earlier rights belong to the same proprietor or proprietors. As it was further elaborated by the First Board of Appeal in Decision of 11/10/2000, R 623/1999-1, Emultech, (§ 16)

Whereas it is clear from the wording of Rule 15(1) IR that an opposition may be entered on the basis of ‘one or more earlier marks’ and of ‘one or more earlier rights’, no provision in Title II of the IR, which contains the rules governing the procedure for opposition, provides for the possibility of a plurality of parties, each claiming an earlier right in his own name, entering one and the same opposition.

Respectively, the Office accepts multiple opponents (either natural or legal persons) in the following cases:

if they are co-owners of the earlier mark or right;
if the opposition is filed by the owner or co-owner of an earlier mark or right together with one or more licensees of these earlier marks/rights.

The opponents did not send any evidence as to prove that there is a licence (contractual) relationship between them regarding the rights on which the opposition was initially based.

Pursuant to Rule 15(1) and Rule 17(4) EUTMIR, with a letter dated 21/04/2017, the Office requested that the opponents specify which of the ‘multiple opponents’ would continue the opposition proceedings as the opponent in this case, as well as to indicate the trade mark (s), owned by that opponent, to be used as basis for the opposition proceedings. The opponents were given a deadline until 26/06/2017 to submit the requested information. On 26/06/2017, within the time limit, an answer was submitted, specifying that the opponent on behalf of which the proceedings should continue is DG International Holdings Limited. It is, therefore, considered that this is the opponent in the present proceedings.

2) On the basis of the opposition

With the letter, dated 26/06/2017, the opponent states that the trade marks on which the opposition should be considered based are European Union trade mark registrations No 8 511 628, No 6 360 151, No 9 492 315 and No 9 490 475 and United Kingdom trade mark registrations No 2 527 746, No 2 563 013, No 2 563 014 and No 2 524 615.

According to Article 41(1)(a) EUTMR, the proprietors of earlier marks referred to in Article 8(2) EUTMR as well as licensees authorised by the proprietors of those trade marks may give notice of opposition (on the grounds of Article 8(1) and 8(5) EUTMR) to registration of a European Union trade mark application, within a period of three months following the publication of the application.

The notice of opposition has to be filed in writing and must contain, in order to be admissible, the indications and elements laid down in Rule 15(1), (2) (a)-(c) EUTMIR (inter alia, a clear identification of the earlier mark or earlier right on which the opposition is based). Furthermore, it must be noted that the opponent can only complete or extend the notice of opposition, on its own initiative, during the three-month opposition period following the publication of the European Union trade mark application concerned.

However, the earlier United Kingdom trade mark registrations No 2 527 746, No 2 563 013, No 2 563 014 and No 2 524 615 have not been invoked as a basis of opposition within the opposition period. Only after the period elapsed, namely with a submission dated 18/11/2015, the opponent claimed that the opposition is also based on these earlier rights.

Later on, with a letter dated 19/05/2016, the opponent claimed that (in addition to the marks mentioned in the notice of opposition and listed in the ‘Reasons’ section above and the above four UK marks) the opposition is based on additional UK trade mark registrations (only the four listed above, however, are owned by the opponent in the present proceedings) and submitted excerpts from the UK IPO database for these earlier UK trade marks. With the same letter (dated 19/05/2016) the opponent claimed that there exists a ‘family of marks’ with the word element ‘GO’ without explicitly listing however the rights, which are claimed to constitute ‘family of marks’.

It is noted that since the UK trade marks No 2 527 746, No 2 563 013, No 2 563 014 and No 2 524 615 were not claimed as a basis of the opposition during the three-month opposition period and, as indicated above, the opposing party cannot extent the basis of the opposition once the opposition period has expired, the opposition must be rejected as inadmissible, as far as it is based on these United Kingdom trade mark registrations.

Therefore, the opposition is considered based on the earlier European Union trade mark registrations No 8 511 628, No 6 360 151, No 9 492 315 and No 9 490 475 in regard to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR.

3) On the claim for ‘family of marks’

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office (the substantiation period).

On 25/06/2013 the opponent was given two months, commencing after the ending of the cooling-off period, to submit further facts, evidence and arguments in support of its opposition (the substantiation period), namely until 30/10/2013. On 04/01/2016 (after a suspension of the proceedings), the opponent was given a new time limit until 19/03/2016, to file the abovementioned material. After the request by the opponent the time limit was extended and finally expired on 19/05/2016. With its submission on 19/05/2016, within the time limit, the opponent claimed the existence of a ‘family of marks’ and submitted evidence of use.

Therefore, as the claim for a ‘family of marks’ was made within the substantiation period (and taking into account that the opponent did not explicitly list the relevant marks that allegedly form its ‘family of marks’), the Opposition Division will further consider in its examination of this claim the UK trade mark registrations No 2 527 746, No 2 563 013, No 2 563 014 and No 2 524 615 as well as the earlier EUTM trade mark registrations listed in the ‘Reasons’ section above, as these are the rights owned by the opponent of the present proceedings. The claim for a ‘family of marks’ will be further addressed in section ‘Likelihood Of Confusion – Article 8(1)(b) EUTMR’ (‘part e) Global assessment, other arguments and conclusion’).

The Opposition Division will first proceed with the examination of the opposition on the basis of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims that its earlier rights on which the opposition is based have a reputation in the European Union.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met:

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 22/02/2013. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponents has claimed reputation (which are all the goods and services the marks are registered for), namely:

European Union trade mark registration No 8 511 628 ‘GO’:

Class 35: Retail services connected with the sale of plasters, materials for dressings, disinfectants, preparations for destroying vermin, fungicides, herbicides, bandages, dressings, plasters, medicines, insecticides, wristbands, leg bands and bean bands all impregnated with insecticides and/or insect repellents, wristbands for alleviating motion sickness, safes, padlocks, keys, rings, holders and chains for keys, coat hangers, locks incorporating straps, hand tools and implements hand-operated, cutlery, side arms, razors, apparatus for photographic, weighing, measuring, signalling, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, calculators, electric smoothing irons, radios, radios incorporating clocks, electrical insect repelling apparatus, spectacles, eye shades, eye masks for protection; containers and wallets for holding recordings on compact disks, or other storage media, electrical plugs, fittings and adapters for electrical plugs, personal alarms, spring balances, spectacle cases, cases, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, bathplugs, dryers, hair dryers, electric fans, electric kettles, electric torches, jewellery, horological and chronometric instruments, paper, cardboard and goods made from these materials, printed matter, book binding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, instructional and teaching material except apparatus, plastic materials for packaging, printers' type, printing blocks, flexible pipes, not of metal, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, laundry bags, harness straps and belts, elasticated straps and cords, all for luggage, folding cases, shoulder bags, backpacks, holdalls, beach bags, shoe bags, holsters, money belts, money bags, pouches, purses, wallets, credit card holders, saddle bags adapted for use with briefcases, luggage label holders, luggage labels and luggage tags, bandoliers, wheels and combinations of wheels and straps, all for use with cases, boxes and bags, sun shades, camera cases, travel garment covers, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, pillows, inflatable pillows, travel pillows, cushions, inflatable cushions, footstools, pouffes, containers, containers for liquids, jewel cases, household or kitchen utensils and containers, combs and sponges, brushes, brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass except glass used in building, glassware, porcelain and earthenware, small utensils, bottles and portable containers for household use, combs and sponges, cleaning materials and instruments, shoe cloths, glassware, hardware and hollowware, drinking vessels, collapsible drinking vessels, coolers, coolant blocks, cool bags, cool sleeves and bags for surrounding bottles, brushes, clothes brushes, hair brushes, pillboxes, pill pouches, cosmetic bags, cosmetic containers, toothbrushes, toothbrush covers and containers, non-electric kettles, aerosol containers, cases, ropes, string, nets, awnings, tarpaulins, sacks and bags, padding and stuffing materials except of rubber or plastics, textiles and textile goods, bed and table covers, clothing, footwear, headgear, games, beach games, playing cards, alcoholic beverages, tobacco, smokers' articles, matches.

European Union trade mark registration No 6 360 151 ‘GO’:

Class 5: Dental cement and fillers; blood for medical purposes; blood plasma; semen for artificial insemination; surgical implants (living tissues).

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; ironmongery, small items of metal hardware; safes; ores; padlocks, keys; rings; holders and chains for keys; coat hangers; locks incorporating straps; all included in Class 6.

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9: Magnetic data carriers, recording discs, weighing apparatus and instruments, calculators; electric smoothing irons; radios; radios incorporating clocks; electric insect-repelling apparatus; spectacles; eye shades; eye masks for protections; containers and wallets for holding recordings on compact discs; audio cassette tapes or other storage media; travel plugs; personal alarms incorporating lights; spring balances; spectacles cases; cases including in class 9; parts and fittings for all the aforesaid goods.

Class 11: Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; bathplugs; dryers; hair dryers; electric fans; electric kettles; portable torches; travel torches; torches for outdoor and camping use; parts and fittings for all aforesaid goods.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; 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 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18: Frames for umbrellas or parasols; handbag frames; horseshoes; nose bags [feed bags]; umbrella covers; umbrella handles; umbrella or parasol ribs; umbrella rings; umbrella sticks; walking cane handles; parts and fittings for leather and imitations of chain mesh purses; net bags for shopping; sun shades; wheels and combinations of wheels and straps, all for use with cases; boxes and bags; travel garment covers; holsters; folding cases; bandoliers, all for use with cases, boxes and bags; sun shades; backpacks; money belts; holdalls; shoe bags; camera cases; money bags; sling bags for carrying infants; slings for carrying infants; shopping bags; wheeled shopping bags; all included in Class 18.

Class 20: Mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; pillows; inflatable pillows; travel pillows; cushions; inflatable cushions; footstools; pouffes; containers; containers for liquids; jewel cases; mirrors; cases included in Class 20; parts and fittings for all aforesaid goods.

Class 21: Pillboxes; pill pouches; cosmetic bags; cosmetic containers; toothbrush covers and containers; parts and fittings for all aforesaid goods; nest eggs, artificial; poultry rings; rings for birds.

Class 22: Bands, not of metal, for wrapping or binding; ladder tapes for venetian blinds; strips for tying-up vines; wrapping or binding bands, not of metal.

Class 25: Fittings of metal for shoes and boots; hat frames [skeletons]; heelpieces for boots and shoes; heelpieces for stockings; heels; non-slipping devices for boots and shoes; ready-made linings [parts of clothing]; shirt yokes; tips for footwear and welts for boots and shoes.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.

Class 33: Alcoholic beverages (except beers).

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 40: Treatment of materials.

Class 43: Services for providing food and drink; temporary accommodation.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

European Union trade mark registration No 9 492 315 :

Class 3: Dentifrices; cobblers’ wax; shoemakers’ wax; tailors’ wax.

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; fuel for use in barbecues; portable fuel; fire starters; candles and wicks for lighting; parts and fittings for all the aforesaid goods.

Class 5: Dietetic substances adapted for medical use, food for babies; material for stopping teeth, dental wax; preparations for destroying vermin; herbicides; dental cement and fillers; insecticides; wristbands, leg bands and head bands all impregnated with insecticides and/or insect repellents; wristbands for alleviating motion sickness; blood for medical purposes; blood plasma; semen for artificial insemination; surgical implants [living tissues].

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; padlocks, keys; rings; holders and chains for keys; coat hangers; locks incorporating straps; metal climbing equipment; karabiners; crampons; hooks; ice nails; metal pegs; pitons of metal; rope thimbles of metal; metal ropes; metal tent pegs; all included in Class 6.

Class 7: Electric hand implements for use in cooking; electric hand implements for use in barbeque cooking.

Class 8: Hand tools and implements (hand-operated); cutlery; cutlery sets; razors; penknives; mallets; camping mallets.

Class 9: Magnetic data carriers, recording discs, weighing apparatus and instruments, calculators; electric smoothing irons; radios; radios incorporating clocks: electrical insect-repelling apparatus; spectacles; eyewear; sunglasses; goggles for sports; eye shades; eye masks for protection; protective bags and cases for eyewear; containers and wallets for holding recordings on compact disks; audio cassette tapes or other storage media; electrical plugs; fittings and adapters for electrical plugs; personal alarms incorporating lights; spring balances; spectacle cases; cases included in Class 9; protective clothing for use in sports and outdoor activities; compasses, binoculars, cameras; camera bags; camera cases; foil survival blankets; parts and fittings for all the aforesaid goods.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; bathplugs; dryers; hair dryers; electric fans; electric kettles; torches; electric torches; lanterns; parts and fittings for all aforesaid goods.

Class 12: Bikes; bicycles; mountain bikes; boats, dinghies and rafts.

Class 14: Horological and chronometric instruments; watches; clocks; parts and fittings for all the aforesaid goods.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding 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 17: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding 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 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; laundry bags; harness straps and belts; elasticated straps and cords, all for luggage; folding cases; shoulder bags, backpacks, holdalls, beach bags, shoe bags, holsters; money belts, money bags; pouches, purses, wallets, credit card holders; saddle bags adapted for use with briefcases; luggage label holders, luggage labels and luggage tags; bandoliers, wheels and combinations of wheels and straps, all for use with cases, boxes and bags; sun shades; travel garment covers; rucksacks; backpacks; rucksack liners; parts and fittings for all the aforesaid goods; all included in Class 18.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; sleeping bags; sleeping mats; pillows; inflatable pillows; travel pillows; cushions; inflatable cushions; tent pegs (not of metal); mattresses for camping; portable kitchens; camping furniture; footstools; pouffes; containers included in class 20; containers for liquids; jewel cases; mirrors; cases included in Class 20; parts and fittings for all aforesaid goods.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; small utensils, bottles and portable containers for household use; combs and sponges; cleaning materials and instruments; shoe cloths; glassware; travel bottles; vacuum flasks; insulated coffee mugs; insulated travel mugs; platic travel mugs; drinking vessels; collapsible drinking vessels; coolers; coolant blocks; cool bags; cool sleeves and bags for surrounding bottles; crockery; crockery sets; brushes; clothes brushes; hair brushes; pillboxes; pill pouches; cosmetic bags (fitted); cosmetic containers; toothbrushes; toothbrush covers and containers; non-electric kettles; aerosol containers; cases included in Class 21; bottle openers; parts and fittings for all aforesaid goods.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials; washing lines.

Class 24: Textiles and textile goods, not included in other classes; towels; bed and table covers.

Class 25: Clothing, footwear, headgear; clothing, footwear and headgear for sports and outdoor pursuits.

Class 28: Games, beach games, playing cards; articles and equipment for use in sports activities and outdoor pursuits.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; prepared and cooked meals.

Class 33: Alcoholic beverages (except beers).

Class 34: Tobacco; smokers' articles; matches.

Class 35: Retail services connected with the sale of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, suntan lotion, sunblock, shower gel, shampoo, dentifrices, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, fuel for use in barbecues, portable fuel, fire starters, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, plaster kits, first aid kits, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, bandages, dressings, plasters, medicines, dental cement and fillers, insecticides, wristbands, leg bands and head bands all impregnated with insecticides and/or insect repellents, wristbands for alleviating motion sickness, hand steriliser kits, common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal not included in other classes, ores, padlocks, keys, rings, holders and chains for keys, coat hangers, locks incorporating straps, metal climbing equipment, karabiners, crampons, hooks, ice nails, metal pegs, pitons of metal, rope thimbles of metal, metal ropes, metal tent pegs, electric hand implements for use in cooking, electric hand implements for use in barbeque cooking, hand tools and implements (hand-operated), cutlery, cutlery sets, razors, penknives, bottle openers, mallets, magnetic data carriers, recording discs, weighing apparatus and instruments, calculators, electric smoothing irons, radios, radios incorporating clocks, electrical insect-repelling apparatus, spectacles, eyewear, sunglasses, goggles for sports, eye shades, eye masks for protection, protective bags and cases for eyewear, containers and wallets for holding recordings on compact disks, audio cassette tapes or other storage media, electrical plugs, fittings and adapters for electrical plugs, personal alarms incorporating lights, spring balances, spectacle cases, cases included in Class 9, protective clothing for use in sports and outdoor activities, compasses, binoculars, cameras, camera bags, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, bathplugs, dryers, hair dryers, electric fans, electric kettles, torches, electric torches, lanterns, bikes, bicycles, mountain bikes, boats, dinghies and rafts, horological and chronometric instruments, watches, clocks, paper, cardboard and goods made from these materials, not included in other classes, printed matter, book binding 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, leather and imitations of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, laundry bags, harness straps and belts, elasticated straps and cords, all for luggage, folding cases, shoulder bags, backpacks, holdalls, beach bags, shoe bags, holsters, money belts, money bags, pouches, purses, wallets, credit card holders, saddle bags adapted for use with briefcases, luggage label holders, luggage labels and luggage tags, bandoliers, wheels and combinations of wheels and straps, all for use with cases, boxes and bags, sun shades, camera cases, travel garment covers, rucksacks, backpacks, rucksack liners, parts and fittings for all the aforesaid goods, furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, sleeping bags, sleeping mats, foil survival blankets, pillows, inflatable pillows, travel pillows, cushions, inflatable cushions, tent pegs (not of metal), mattresses for camping, portable kitchens, camping furniture, footstools, pouffes, containers, containers for liquids, jewel cases, mirrors, cases included in Class 20, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware not included in other classes, small utensils, bottles and portable containers for household use, combs and sponges, cleaning materials and instruments, shoe cloths, glassware, hardware and hollowware, travel bottles, vacuum flasks, insulated coffee mugs, insulated travel mugs, plastic travel mugs, drinking vessels, collapsible drinking vessels, coolers, coolant blocks, cool bags, cool sleeves and bags for surrounding bottles, crockery, crockery sets, brushes, clothes brushes, hair brushes, pillboxes, pill pouches, cosmetic bags, cosmetic containers, toothbrushes, toothbrush covers and containers, non-electric kettles, aerosol containers, cases included in Class 21, washing lines, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes), padding and stuffing materials (except of rubber or plastics), raw fibrous textile materials, textiles and textile goods, not included in other classes, towels, bed and table covers, clothing, footwear, headgear, clothing, footwear and headgear for sports and outdoor pursuits, games, beach games, playing cards, articles and equipment for use in sports activities and outdoor pursuits, camping mallets, meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, prepared and cooked meals, agricultural, horticultural and forestry products and grains not included in other classes, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, alcoholic beverages (except beers), tobacco, smokers' articles, matches.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 40: Treatment of materials.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

European Union trade mark registration No 9 490 475 :

Class 3: Dentifrices; cobblers’ wax; shoemakers’ wax; tailors’ wax.

Class 7: Electric hand implements for use in cooking; electric hand implements for use in barbeque cooking.

Class 8: Hand tools and implements (hand-operated); cutlery; cutlery sets; razors; penknives; mallets.

Class 9: Magnetic data carriers, recording discs, weighing apparatus and instruments, calculators; electric smoothing irons; radios; radios incorporating clocks: electrical insect-repelling apparatus; spectacles; eyewear; sunglasses; goggles for sports; eye shades; eye masks for protection; protective bags and cases for eyewear; containers and wallets for holding recordings on compact disks; audio cassette tapes or other storage media; electrical plugs; fittings and adapters for electrical plugs; personal alarms incorporating lights; spring balances; spectacle cases; cases included in Class 9; protective clothing for use in sports and outdoor activities; compasses, binoculars, cameras; camera bags; parts and fittings for all the aforesaid goods; camera cases; foil survival blankets.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; dryers; hair dryers; electric fans; electric kettles; torches; electric torches; lanterns; parts and fittings for all aforesaid goods.

Class 12: Bikes; bicycles; mountain bikes; boats, dinghies and rafts.

Class 14: Horological and chronometric instruments; watches; clocks; parts and fittings for all the aforesaid goods.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials; plastics in extruded form for use in manufacture; semi-finished plastics materials for use in further manufacture; stopping and insulating materials; flexible non-metallic pipes.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; sleeping bags; sleeping mats; pillows; inflatable pillows; travel pillows; cushions; inflatable cushions; tent pegs (not of metal); mattresses for camping; portable kitchens; camping furniture; footstools; pouffes; containers; containers for liquids; jewel cases; mirrors; cases included in Class 20; parts and fittings for all aforesaid goods; bathplugs.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; small utensils, bottles and portable containers for household use; combs and sponges; cleaning materials and instruments; shoe cloths; glassware; hardware and hollowware; travel bottles; vacuum flasks; insulated coffee mugs; insulated travel mugs; platic travel mugs; drinking vessels; collapsible drinking vessels; coolers; coolant blocks; cool bags; cool sleeves and bags for surrounding bottles; crockery; crockery sets; brushes; clothes brushes; hair brushes; pillboxes; pill pouches; cosmetic bags; cosmetic containers; toothbrushes; toothbrush covers and containers; non-electric kettles; aerosol containers; cases included in Class 21; parts and fittings for all aforesaid goods; bottle openers.

Class 24: Textiles and textile goods, not included in other classes; towels; bed and table covers.

Class 25: Clothing, footwear, headgear; clothing, footwear and headgear for sports and outdoor pursuits.

Class 28: Games, beach games, playing cards; articles and equipment for use in sports activities and outdoor pursuits; camping mallets.

Class 33: Alcoholic beverages (except beers).

Class 34: Tobacco; smokers' articles; matches.

Class 35: Retail services connected with the sale of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, suntan lotion, sunblock, shower gel, shampoo, dentifrices, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, fuel for use in barbecues, portable fuel, fire starters, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, plaster kits, first aid kits, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, bandages, dressings, plasters, medicines, dental cement and fillers, insecticides, wristbands, leg bands and head bands all impregnated with insecticides and/or insect repellents, wristbands for alleviating motion sickness, hand steriliser kits, common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal not included in other classes, ores, padlocks, keys, rings, holders and chains for keys, coat hangers, locks incorporating straps, metal climbing equipment, karabiners, crampons, hooks, ice nails, metal pegs, pitons of metal, rope thimbles of metal, metal ropes, metal tent pegs, electric hand implements for use in cooking, electric hand implements for use in barbeque cooking,; hand tools and implements (hand-operated), cutlery, cutlery sets, razors, penknives, bottle openers, mallets, magnetic data carriers, recording discs, weighing apparatus and instruments, calculators, electric smoothing irons, radios, radios incorporating clocks, electrical insect-repelling apparatus, spectacles, eyewear, sunglasses, goggles for sports, eye shades, eye masks for protection, protective bags and cases for eyewear, containers and wallets for holding recordings on compact disks, audio cassette tapes or other storage media, electrical plugs, fittings and adapters for electrical plugs, personal alarms incorporating lights, spring balances, spectacle cases, cases included in Class 9, protective clothing for use in sports and outdoor activities, compasses, binoculars, cameras, camera bags, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, bathplugs, dryers, hair dryers, electric fans, electric kettles, torches, electric torches, lanterns, bikes, bicycles, mountain bikes, boats, dinghies and rafts, horological and chronometric instruments, watches, clocks, paper, cardboard and goods made from these materials, not included in other classes, printed matter, book binding 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, leather and imitations of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, laundry bags, harness straps and belts, elasticated straps and cords, all for luggage, folding cases, shoulder bags, backpacks, holdalls, beach bags, shoe bags, holsters, money belts, money bags, pouches, purses, wallets, credit card holders, saddle bags adapted for use with briefcases, luggage label holders, luggage labels and luggage tags, bandoliers, wheels and combinations of wheels and straps, all for use with cases, boxes and bags, sun shades, camera cases, travel garment covers, rucksacks, backpacks, rucksack liners, parts and fittings for all the aforesaid goods, furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, sleeping bags, sleeping mats, foil survival blankets, pillows, inflatable pillows, travel pillows, cushions, inflatable cushions, tent pegs (not of metal), mattresses for camping, portable kitchens, camping furniture, footstools, pouffes, containers, containers for liquids, jewel cases, mirrors, cases included in Class 20, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware not included in other classes, small utensils, bottles and portable containers for household use, combs and sponges, cleaning materials and instruments, shoe cloths, glassware, hardware and hollowware, travel bottles, vacuum flasks, insulated coffee mugs, insulated travel mugs, plastic travel mugs, drinking vessels, collapsible drinking vessels, coolers, coolant blocks, cool bags, cool sleeves and bags for surrounding bottles, crockery, crockery sets, brushes, clothes brushes, hair brushes, pillboxes, pill pouches, cosmetic bags, cosmetic containers, toothbrushes, toothbrush covers and containers, non-electric kettles, aerosol containers, cases included in Class 21, washing lines, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes), padding and stuffing materials (except of rubber or plastics), raw fibrous textile materials, textiles and textile goods, not included in other classes, towels, bed and table covers, clothing, footwear, headgear, clothing, footwear and headgear for sports and outdoor pursuits, games, beach games, playing cards, articles and equipment for use in sports activities and outdoor pursuits, camping mallets, meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, prepared and cooked meals, agricultural, horticultural and forestry products and grains not included in other classes, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, alcoholic beverages (except beers), tobacco, smokers' articles, matches.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 40: Treatment of materials.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 19/05/2016 the opponents submitted the following evidence:

Email correspondence, originating from 11 different email addresses (senders), which appear to be business partners of the receivers of the emails (one of them having email extension design-go.com). In the emails it is stated by the senders that: the ‘Company’ (as well as ‘Design Go’ in some of the emails) has been known in the travel industry as ‘Go’; that the company in question has always had the word ‘GO’ in its name; or that the ‘GO Travel Products’ have been sold in the stores of the person sending the email or that ‘Go Design’ has been used as a supplier of ‘Travel accessories’; some of the emails mention trading with the ‘Company’/ ‘Design Go’ for a number of years. One of the email senders (claimed that he ‘was publishing/editing Mountain Ear’) refers to knowing ‘the company more familiarly as “Go” whether in the context of travel or outdoor accessories’, without further specification what these accessories might be. There is no indication in the emails whether information about the ‘company’ or its products has been made available to the public through publications or other means of disseminating information;
A catalogue, entitled ‘travel products 2013’, depicting the following sign at the front page and on some of the following it pages. The sign also appears on some of the products, depicted in the catalogue, such as ‘body wallet’, flight socks, digital scale, secure lock, ‘eye mask’, ‘heated mug’.
A photograph, depicting a booth with the signs ‘Accessories’ for what appear to be some backpacks and travel pillows (the visible part of the goods). The following signs appear on the booth and .
Certificates of UK trade mark registrations No 1 384 840, No 1 384 841, No 1 384 842, No 1 384 843, No 2 163 188, No 2 563 013, No 2 563 014, No 2 524 615, No 2 649 748, No 2 527 746, on some of which the opponent bases its claim for a ‘family of marks’ (which will be addressed further below under section ‘Likelihood Of Confusion – Article 8(1)(b) EUTMR’ (‘part e) Global assessment, other arguments and conclusion’).

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Almost all of the submitted email correspondence appears to originate from trading partners and/or other persons/entities that appear to have a commercial relation with the receiver(s). Even if the latter are employees of the opponent (or another company economically connected to it), these emails do not provide information about the recognition that the signs may receive by the relevant public. There is no reference on what the awareness of the end consumer about the earlier signs in relation to the relevant goods/ services could be. Even though some of the emails refer to working with the ‘company’ for a number of years or using it as a supplier of ‘Travel accessories’, there is no data on the possible recognition of the earlier signs by the end consumer (the purchaser of these ‘accessories’). Moreover, there is no specification what the accessories might be. The latter applies, as well, for the email sent from the person who ‘was publishing/editing Mountain Ear’ and claimed to know the company ‘in the context of travel or outdoor accessories’. Furthermore, there is no indication that this information about the ‘company’ is published or in any way disseminated as to bring awareness about the earlier marks in relation to the relevant goods or services.

The rest of the evidence (a catalogue and a photograph) appears to originate from the opponent. Even though these documents cannot be disregarded, they need to be supported by additional evidence from an independent party, such as statements from a chamber of commerce, evidence of the opponent’s participation in trade fairs and exhibitions, statements from customers, independent press articles published in specialised literature, surveys, etc.

The catalogue and the photograph do not provide any information in regard to any actual commercialization or turnover. There is no indication to whom (how many people) the catalogue was circulated or where and to what extent the booths exhibiting the signs listed above are spread in the relevant territory and related to the trade of the relevant goods and services under the opponent’s signs. It follows that the evidence does not indicate the sales volumes, the market share of the trade marks or the extent to which the trade marks have been promoted. Therefore, no conclusion could be drawn about the market share of the marks or the recognition of the signs by the relevant public. The evidence submitted does not show whether there is any degree of awareness of the relevant public in regards to the earlier signs. Even though long presence on the market (which could possibly be a result from continuous business relations) is a factor in favour of finding reputation, this is not the case here, as the evidence does not suffice to prove the recognition of the signs by the public at any time. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation. For the sake of completeness, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use either.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

Since the opposition was rejected on the ground of Article 8(5) EUTMR, the Opposition Division will further proceed with the examination on the other ground invoked by the opponents, namely 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 goods and services

The goods and services on which the opposition is based are already listed above in Section ‘Reputation – Article 8(5) EUTMR’, subsection ‘a) Reputation of the earlier trade marks’ and reference is made to that listing.

The contested services are the following:

Class 35: Advertising; Business management; Business administration; Office functions; Updating of advertising material; Rental of advertisement space and advertising material; Administrative processing of purchase orders; Computerized file management; Systemization of information into computer databases; The bringing together, Systematisation and verification of data in computer databases; Market research and analysis; Advertising, promotion and marketing services; Television advertising; Publication and updating of publicity texts; Searches in computer data files (for others); Business information, business inquiries; Public relations; Outsourcing services [business assistance]; Price comparison services; Production of advertising films; Systemization of information into computer databases; Arranging subscriptions to telecommunication services for others; Telemarketing services; Writing of publicity texts; Rental of advertising time on communication media; Rental of advertisement space and advertising material; Publicity columns preparation; Demonstration of goods for advertising purposes; Dissemination of advertising matter (flyers, pamphlets, prospectuses and samples).

Class 38: Telecommunications; Telecommunication; Providing portals on the Internet; Communications services via the Internet; Electronic bulletin board services [telecommunications services]; Providing internet chatrooms; Communications by computer; Landline and mobile telephone services; Sending and reception of messages by means of global computer networks; Transmission of messages and images; Transmission of digital files; Providing access to databases; Providing access to telecommunications services.

Class 39: Arranging of car hire; Vehicle rental; Courier services [messages or merchandise]; Car parking; Travel reservation; Transport reservation; Railway transport; Transportation information; Transport brokerage; Traffic information; Advisory services relating to transport; Transport; Reservation and booking of seats on transport; Transport of persons; carting services.

Class 42: Updating of computer software; Computer software design; Consultancy services relating to computer software; Computer software rental services; Design, maintenance, development and updating of computer software; Computer programming; Research and development of new products for the benefits of others; Research in the field of environmental protection; Data conversion of computer programs and data [not physical conversion]; Technical project studies.

It is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 services in this class cover a large variety of services such as advertising (e.g. advertising; television advertising), which consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity; business management, which are services usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The contested services, furthermore, include office functions services (e.g. office functions; computerized file management; systemization of information into computer databases), which are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. The contested services in this class also include business administration services, which consist of organising people and resources efficiently so as to direct activities toward common goals and objectives.

There is no point of contact between the opponent’s goods and services and the contested services that could raise a level of similarity between them. The opponent’s goods and services include a large variety of goods and services, such as dentifrices, waxes used in the shoe and clothes production and repair (Class 3); industrial oils and greases (Class 4); a variety of pharmaceutical preparations (Class 5); metals and goods made thereof (Class 6); electric implements (Class 7); tools (Class 8); a variety of data carriers, apparatus and instruments (Class 9); a variety of apparatus, such as for lighting, cooking, ventilating (Class 11); bikes and boats (Class 12); horological and chronometric instruments (Class 14); paper, cardboard and certain goods made of those materials, as well as office requisites (Class 16); different materials used in manufacture, such as rubber, gum (Class 17); a variety of goods made of leather or imitation thereof and parts and fittings, including for umbrellas, as well as equipment for horses (Class 18); furniture and parts thereof, as well as goods used for home decoration (Class 20); small, hand-operated utensils and apparatus for household and kitchen use (Class 21); bands and tapes for a variety of purposes (Class 22); textile and textile goods (Class 24); clothing, footwear, headgear and parts and fittings for clothing and footwear (Class 25); games and sports articles and equipment (Class 28); foodstuffs (Class 29); live animals and plants as well as foodstuffs for animals (Class 31); alcoholic beverages (Class 33); tobacco and smoker’s articles (Class 34); retail services for a variety of goods; financial and insurance services (Class 36); treatment of materials (Class 40); services for providing food and drinks and temporary accommodation (Class 43); medical, veterinary, beauty services (Class 44). The contested services have nothing in common with the opponent’s goods and services. They differ in nature, purpose and method of use. They originate from different providers and are distributed through different channels. Furthermore, they are neither complementary, nor in competition. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. It follows that the contested advertising; business management; business administration; office functions; updating of advertising material; rental of advertisement space and advertising material; administrative processing of purchase orders; computerized file management; systemization of information into computer databases; the bringing together, systematisation and verification of data in computer databases; market research and analysis; advertising, promotion and marketing services; television advertising; publication and updating of publicity texts; searches in computer data files (for others); business information, business inquiries; public relations; outsourcing services [business assistance]; price comparison services; production of advertising films; systemization of information into computer databases; arranging subscriptions to telecommunication services for others; telemarketing services; writing of publicity texts; rental of advertising time on communication media; rental of advertisement space and advertising material; publicity columns preparation; demonstration of goods for advertising purposes; dissemination of advertising matter (flyers, pamphlets, prospectuses and samples) are all dissimilar to the opponent’s goods and services.

Contested services in Class 38

The contested telecommunications; telecommunication; transmission of messages; providing access to telecommunications services are services directed to providing the means to allow one person to talk to another over a long distance; transmitting messages from one person to another; and placing one person in aural or visual communication with another (radio and television) and providing the modern communication means required for this. The opponent’s radios in Class 9, covered by the earlier EUTM No 6 360 151 are goods which, inter alia, are devices permitting both transmission and reception of radio signals for two-way communications. Therefore, there is a complementarity between these goods and services and although their nature is different, they share purpose and distribution channels and target the same public. It follows that these are similar.

The same, however, does not apply to the remaining contested services, namely providing portals on the Internet; communications services via the internet; electronic bulletin board services [telecommunications services]; providing internet chatrooms; communications by computer; landline and mobile telephone services; sending and reception of messages by means of global computer networks; transmission of images; transmission of digital files; providing access to databases. Even though, these are services which in general allow the communication between one person and another or transmission of messages, these are done via different than the opponent’s radios means. For instance, the contested communications services via the Internet would use Internet as means for transmitting messages. Therefore, there is no complementarity between the opponent’s goods and the remaining contested services and they will not have the same distribution channels. They do not coincide in nature or method of use and even though in general their purpose is conveying information, this would not be enough for finding similarity. Furthermore, the end consumer would not consider them originating from one and the same producer/provider. It follows that these are dissimilar.

As far as the remaining dissimilar services and the rest of the opponent’s goods and services in other classes are concerned (briefly referred to above in Class 35 comparison), these have nothing in common. They differ in nature, purpose and method of use. They originate from different providers and are distributed through different channels. Furthermore, they are neither complementary, not in competition. It follows that these are dissimilar.

Contested services in Class 39

The contested arranging of car hire; car parking; travel reservation; transport reservation; reservation and booking of seats on transport are similar to the opponent’s temporary accommodation in Class 43, covered by the earlier EUTM No 6 360 151. These are services that could originate from one and the same provider, e.g. a hotel that offers to its customers arranging of different transportation for one purpose or another, such as arranging picking up from the airport and travelling to different places of interest; arranging the hiring of means of transportation; or parking the cars of the guests of the hotels. The services in comparison have the same distribution channels and target public.

However, the contested vehicle rental; courier services [messages or merchandise]; railway transport; transport brokerage; traffic information; transportation information; advisory services relating to transport; transport; transport of persons; carting services are usually provided by a company different than the one offering the opponent’s services in Class 43. For instance: transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B, when the transport of persons is related to moving people between two given points; and the vehicle rental is offering cars for amount of time; courier services [messages or merchandise] are related to delivering messages, mail and packages. The contested services are usually provided by companies specified in ensuring transport or rent-a-car companies and so are the services related to providing information and advice on that matter.

Therefore, there is no point of contact between these remaining contested services and the rest of the opponent’s goods and services either. Even though some of the opponents’ s goods could be a subject of transport (or means of transportation), this is not enough for finding a similarity, as the provider of the transport does not manufacture and sell the goods that are transported (or used for transport). The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar to the opponent’s goods. They furthermore have different nature, method of use and purpose with the rest of the opponent’s services. It follows that these are dissimilar.

Contested services in Class 42

The contested updating of computer software; computer software design; consultancy services relating to computer software; computer software rental services; design, maintenance, development and updating of computer software; computer programming; research and development of new products for the benefits of others; research in the field of environmental protection; data conversion of computer programs and data [not physical conversion]; technical project studies are not similar to any of the opponent’s goods or services. Some of the opponent’s goods, e.g. weighing apparatus and instruments, calculators in Class 9, could be a subject and/or result of some of the contested services, e.g. research and development of new products for the benefits of others. However, these would not be provided by the same producer/provider and would not be directed to the same end user. Usually the company who manufactures the opponent’s goods is the end consumer of the contested services. Furthermore, the goods and services differ in nature, purpose, method of use and distribution channels.

There is no similarity between the contested services and the rest of the opponent’s goods and services, either. Apart from being different in nature, they have different purpose, method of use and distribution channels. They are, furthermore, neither complementary nor necessarily in competition and they are distributed through different channels. It follows that the contested services are dissimilar to the opponent’s goods and services.

Since all the goods and services found to be similar are covered by the earlier EUTM No 6 360 151, the assessment of a likelihood of confusion will continue on the basis of that earlier mark.

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 and services found to be similar are directed at the public at large, but also at professionals, such as some entities looking for specific telecommunication solutions for their business. The degree of attention may vary from average to higher than average depending on the specialised nature of the goods and services, their purpose, the frequency of purchase and their price.

The signs

GO iGo My Mobility

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 elements of the signs are meaningful for a part of the relevant public, for example the English-speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The word ‘GO’ of the earlier mark will be understood as the English word ‘go’ in the meaning of ‘to move or proceed, esp. to or from a point or in a certain direction’ (information extracted from http://dictionary.reverso.net/english-definition/go). As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The contested sign consists of the sequence of elements ‘iGo My Mobility’, which as a whole does not relate to an existing phrase in English. The element ‘iGo’ in the contested sign is likely to be seen by the relevant part of the public as a juxtaposition between the pronoun ‘I’ (which refers to the speaker or the writer) and the word ‘go’ with the meaning already specified above and as a whole the element is likely to be seen as referring to the physical movement of the speaker. Furthermore, the letter ‘i’ placed before ‘Go’, could be perceived as a reference to ‘Internet’, as an ever more popular means of (electronic) communication. The use of a letter ‘i’ (usually a lower case) as a prefix to indicate that something is Internet related has become so prevalent in recent years that, even when the term following the ‘i’ (such as ‘Go’) is not normally used in this context, some will perceive the prefix ‘i’ as meaning that ‘iGo’ (or the sign as a whole) is somehow Internet related.

Following from what has been said above and bearing in mind that the relevant services are ‘telecommunications and services related to arrangement of transportation’, the element ‘iGo’ is considered weaker than average for part of these services, namely for all the relevant services in Class 39, as it alludes to their purpose, namely to ensure the movement of a person to certain direction or from one spot to another. Furthermore, it follows from what has been said for the prefix ‘i’ in the element ‘iGo’ that it would be generally related to goods/services offered or traded through Internet. Therefore, it is considered to be weak for all the relevant services of the contested sign, as far as they could all be offered through the means of Internet.

The elements ‘My Mobility’, taken as a whole, could be perceived by the relevant part of the public as referring to the capacity of the speaker/writer to move physically from one place to another, due to the concept of ‘mobility’ (‘the ability to move physically’) and ‘my’ (‘of, belonging to, or associated with the speaker or writer’). It is, therefore, considered that these elements in combination further complement the meaning of the element ‘iGo’, as they are generally referring to the notion of movement (and ability to do so) of the speaker in a certain direction or from one place to another. Bearing in mind that the relevant services are ‘telecommunications and services related to arrangement of transportation’, this element is weaker than average for part of these services, namely for all the relevant services in Class 39, as it alludes to their purpose, namely to ensure the movement of a person to certain direction or from one spot to another.

Therefore, conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks/the elements (and parts thereof). Both signs coincide in the concept of ‘go’, which is the only element of the earlier mark and it is recognisable in the element ‘iGo’ of the contested sign, where the concept of the latter element is further complemented by the one conveyed by the elements ‘My Mobility’.

Taking into account the above and bearing in mind the limited distinctiveness of the elements (and parts thereof) of the contested sign (for at least a part of the relevant services), it is considered that the sings are conceptually similar to an average degree.

Visually and aurally, the signs coincide in the sequence (and the sound of) ‘GO’, which forms the entire earlier mark. The signs differ in the letter (and the sound of) ‘i’, as well as in the elements (and the sounds of) ‘My Mobility’ of the contested sign, the differing elements (and a letter) being of a limited distinctiveness at least for a part of the relevant services.

Bearing in mind that the signs coincide in the only element ‘GO’ of the earlier mark, which for this sign is of a normal distinctiveness and keeping into account the limited distinctiveness of the elements (parts thereof) of the contested sign for at least part of the relevant services, it is considered that the signs are visually and aurally similar to an average degree.

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 trade mark has a reputation and enjoys a high degree of distinctiveness as result of its intensive use in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(5) EUTMR, where it has been established that the evidence does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness (or reputation) through its use.

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 and services in question from the perspective of the English-speaking 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.

The contested services are partly similar and partly dissimilar to the opponent’s goods and services. The degree of attention may vary from average to higher than average when choosing the relevant goods and services.

The signs coincide in the only element ‘GO’ of the earlier mark, which will furthermore be recognised by the relevant part of the public as a meaningful word in the contested sign. It is also noted that the earlier mark has an average degree of distinctiveness, while in the contested sign the element ‘iGo’ has a limited distinctiveness for some of the relevant services. However, the rest of the elements of the contested sign, namely ‘My Mobility’ are also of a limited distinctiveness for the same services, while the prefix ‘i’ in the element ‘iGo’ would be perceived as referring to the commercialisation via Internet of all the relevant services. The signs are linked on a visual and aural level on the basis of the shared element (sequence) ‘GO’, whose shared concept, is furthermore complemented in the contested sign by the meaning of the elements ‘My Mobility’. Therefore, due to the additional prefix ‘i’ and the elements ‘My Mobility’ in the contested sign and bearing in mind the concept they convey, it is likely that the relevant public may consider the contested sign as a new line of services marked with the opponent’s sign and configured in a different way, and offered via the means of Internet.

Considering the visual and aural similarity between the signs, based on the element ‘GO’ and the conceptual link between them, as explained above, it is concluded that the relevant part of the public may believe that the goods and services found to be similar come from the same undertaking or economically linked undertakings even when the level of attention is higher than average.

In its observations, the applicant argues that no likelihood of confusion exists and refers to previous decisions of the Court of Justice of the European Union (such as 12/01/2006, C-361/04 P, Picasso, EU:C:2006:25 and 13/09/2007, C-234/06 P, Il Ponte Finanziaria v. OHIM, EU:C: 2007:514). However, the case law quoted by the applicant is not applicable in the case at issue as the trade marks in these cases have different visual, aural and conceptual characteristics, not comparable to the ones of the marks in the case at issue. Therefore, the applicant’s arguments have to be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 6 360 151. 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.

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

For the sake of completeness the Opposition Division will address the argument brought by the opponents that there exists a ‘family of marks’ or ‘marks in a series’ with the same word element ‘GO’. In regard to this claim the opponents submits further certificates of UK trade mark registrations, already listed above (under section Preliminary Remarks). In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponents. The argument would be relevant in cases when a level of similarity is found between the contested services and the opponent’s goods and services. However, there is no need to assess this argument, as the remaining contested services are found to be dissimilar to the opponent’s goods and services. In this case even the existence of a family of marks, would render the same outcome of the present proceedings.

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

André Gerd Günther BOSSE

Irina SOTIROVA

Natascha GALPERIN

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.

iGo My Mobility | Decision 2201336 - DG International Holdings Limited v. Christian Maertins

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