LUUP | Decision 2734211
Date Published: Sep 25, 2017
OPPOSITION No B 2 734 211
Miles & More GmbH, Main Airport Center (MAC), Unterschweinstiege 8, 60549 Frankfurt/Main, Germany (opponent), represented by Dompatent von Kreisler Selting Werner - Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)
a g a i n s t
Luup Holdings Limited, 124 Archbishop Makarios III Larnaca, 7550 Larnaca, Cyprus (applicant), represented by Cloch Solicitors, Standard Buildings, 94 Hope Street, Glasgow G2 6PH, United Kingdom (professional representative).
On 17/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 734 211 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 283 997. The opposition is based on European Union trade mark application No 14 099 931 and German trade mark registration No 302 015 037 638. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark application No 14 099 931.
- The services
The services on which the opposition is based are the following:
Class 35: Arranging and conducting of incentive and customer loyalty programs; Operation of bonus systems in connection with the use of flights, hotels, rental cars, service stations and credit cards.
Class 36: Credit card transactions for processing cashless payments in service stations, hotels, for travel bookings and booking of rental cars; Issuing of identity cards for payment of services, in particular for airline, hotel, service station and car rental services.
The contested services are the following:
Class 36: Payment processing services.
The contested payment processing services overlap with the opponent’s credit card transactions for processing cashless payments in service stations, hotels, for travel bookings and booking of rental cars insofar as both categories include cards that can be used for payments. Therefore, they are identical.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the services found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise.
The degree of attention is high, since such services in Class 36 are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010-1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874, dismissed).
- The signs
Loop | |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is the word mark ‘Loop’, which, for part of the public (e.g. the English-speaking part), will be understood as ‘the round or oval shape formed by a line, string, etc., that curves around to cross itself; any round or oval-shaped thing that is closed or nearly closed; a piece of material, such as string, curved round and fastened to form a ring or handle for carrying by’ (information extracted from Collins English Dictionary at www.collinsdictionary.com on 05/07/2017). It is distinctive for the relevant services for this part of the public, as well as for the part of the public that will not understand the word (e.g. the Estonian- and Lithuanian-speaking parts of the public).
The contested sign is a figurative mark consisting of the word ‘LUUP’, written in blue upper case letters, and a fanciful figurative element depicting a blue semicircle and a yellow curved triangle. The public will not perceive any meaning in the figurative element and it is therefore distinctive. For the Estonian-speaking part of the public, the word ‘LUUP’ will be understood as a magnifying glass, while the rest of the public will not perceive any meaning in this word. In any case, for both parts of the public, the word ‘LUUP’ has a normal degree of distinctiveness for the relevant services. With regard to the dominance of the elements, both components have the same visual impact and therefore no element can be considered more dominant than the other.
The contested sign includes the registered trade mark symbol, ‘TM’. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.
Visually, the signs coincide in the letters ‘L**P’. However, there are several noticeable differences between the signs. They differ in their middle letters, ‘OO’ in the earlier mark and ‘UU’ in the contested sign. The signs also differ in the figurative aspects of the contested sign, namely the stylisation of the verbal element, the figurative element, as described above, and the colours of the sign. Account has to be taken of the fact that the middle letters are different. In addition, the figurative element at the beginning of the contested sign creates an additional difference in the overall impressions of the signs.
Although the verbal elements of the signs consist of four letters, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).
Therefore, the signs are visually similar to a low degree.
Aurally, in English and other languages, the pronunciation of the double letter ‘OO’ of the earlier mark is similar to the pronunciation of the double letter ‘UU’ of the contested sign. Given that the figurative element of the contested sign will not be pronounced, for the part of public that speaks these languages, the pronunciation of the signs is similar to a high degree.
For the part of the public that speaks languages where there is a greater difference between the pronunciations of the double letters mentioned above, the signs are aurally similar to at least an average degree.
Conceptually, although part of the public in the relevant territory will perceive the meaning of the earlier mark or the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, for this part of the public, the signs are not conceptually similar.
Neither of the signs has a meaning for the rest of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.
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 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
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the services are identical. In the best-case scenario for the opponent, the signs are visually similar to a low degree, aurally similar to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs.
Although the signs coincide in some letters, in terms of the overall impressions created by the marks, because of the different middle letters of the signs and the stylisation, the figurative element and the colours in the contested sign, the differences prevail.
While it cannot be determined that the marks are short signs where even small differences are easily noticeable, the signs are not very long: both the verbal elements consist of only four letters. Consequently, it is considered that the fact that they differ in one double letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.
Account has to be taken to the fact that the degree of attention is high because of the nature of the services. Another relevant factor is that nowadays it is an accepted fact that financial services will almost always involve the visual perception of trade marks because literature will be involved, either when the selection process is under way or at the point of purchase. The aural perception of the marks will, therefore, matter considerably less in the purchasing process than the visual perception. Therefore, there is no likelihood of confusion, since the significant differences between the signs are clearly perceptible and are sufficient to exclude any likelihood of confusion between the marks, even for identical services.
A likelihood of confusion can be safely excluded when two conflicting signs, albeit containing or consisting of some of the same letters, are stylised in a sufficiently different way or contain a sufficiently different figurative element, so that their different overall graphical depictions outweigh the verbal element that they have in common. In such cases, it is only when the contested trade mark gives a sufficiently different visual impression that a likelihood of confusion can be safely ruled out (10/05/2011, T-187/10, G, EU:T:2011:202, § 60). This is the case here, as there are noticeable differences in the verbal elements of the signs and because of the additional figurative element of the contested sign, which has at least the same weight as the sign’s verbal element and must also be taken into account.
Therefore, and contrary to the opponent’s arguments, the differences between the signs are sufficient to avoid a likelihood of confusion. The public will not think that the signs come from the same undertaking or economically linked undertakings.
This absence of a likelihood of confusion applies equally to the part of the public for which the pronunciation of the letters ‘OO’ is less similar to that of the letters ‘UU’ and either the word ‘LOOP’ or the word ‘LUUP’ is understood. This is because, as a result of this different pronunciation and because the signs are not conceptually similar, that part of the public will perceive the signs as being even less similar.
Considering all the above, the opposition must be rejected.
The opponent has also based its opposition on the following earlier trade mark:
- German trade mark registration No 302 015 037 for the word mark ‘LOOP’ for Classes 35 and 36.
Since this mark is identical to the one that has been compared and the services on which the opposition is based are very similar, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.
For the sake of completeness and with regard to the applicant’s claim that the earlier marks are subject to opposition proceedings, as it has been concluded that no likelihood of confusion exists between the conflicting signs, for the interest of the parties, the Opposition Division proceeds to issue the present decision. The result would be the same regardless of the final decision on the registration of the earlier marks on which the opposition is based.
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
Marta GARCÍA COLLADO | Jorge ZARAGOZA GOMEZ | Richard BIANCHI |
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.