R+ | Decision 2574310 - Lufthansa AirPlus Servicekarten GmbH v. RESTALIA GRUPO DE EURORESTAURACIÓN, S.L.
Date Published: Sep 25, 2017
OPPOSITION No B 2 574 310
Lufthansa AirPlus Servicekarten GmbH, Dornhofstraße 10, 63263 Neu-Isenburg, Germany (opponent), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative)
a g a i n s t
Restalia Grupo de Eurorestauración, S.L., Avenida de Europa, 19, Edificio 2, Planta 3ª, Oficinas A-B, E-28224 Pozuelo de Alarcón, Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative).
On 31/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 574 310 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 751 797, namely against all the services in Classes 35, 38 and 39. The opposition is based on European Union trade mark registration No 11 077 583. The opponent invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARK
In the notice of opposition, filed on 07/09/2015, the opponent indicated that the opposition was based on European Union trade mark registrations No 11 077 583, No 2 335 693 and No 1 691 864. On 12/05/2016, in accordance with Article 42(2) and (3) EUTMR, the applicant requested that the opponent submit proof of use of European Union trade mark registrations No 2 335 693 and No 1 691 864. On 19/09/2016, the opponent withdrew European Union trade mark registrations No 2 335 693 and No 1 691 864 as bases for the opposition and maintained the opposition only insofar as it was based on European Union trade mark registration No 11 077 583, which was not subject to the use obligation. Therefore, the opposition is considered and proceeds on the basis of this one earlier right.
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 the following:
Class 9: Data-processing equipment and computers; computer software and hardware; computer programs recorded on data carriers, in particular for invoice and payment processing and for travel planning and travel costs processing; software products for e-commerce, home banking, card billing systems and the internet; online computer systems comprising data processing equipment and computers; databases (software); card readers and apparatus for recording, transmission or reproduction of sound, images and computer data.
Class 35: Billing for others; professional business and organisational consultancy; professional business project management in the fields of claims management, warnings and general book-keeping and account management; business management, business administration and office functions; electronic commerce provider services on the internet, namely order placement, delivery and invoice management within the framework of e-commerce, and arranging of contracts for others for the purchase and sale of goods; arranging and concluding commercial transactions, for others, via electronic ordering platforms; professional business project management for the development of bonus, service and credit card programmes; presentation of goods and services, bonus, service and credit card programmes as part of advertising and marketing measures and events; organisational and professional business monitoring of bonus, service and credit card programmes; invoice management, in particular cashless and cash-based billing, including collating and statistical evaluation of data on the aforesaid invoice management; compiling, updating, grooming, organisation and systemising of data in computer databases; providing of information on the internet in the field of business management; conducting and billing, for others, including via the internet, accountancy services; services relating to book-keeping and business administration for monitoring and conducting claims management; including all the aforesaid services provided online and via the internet, via databases.
Class 36: Financial services, including financial services of credit card companies; issuing of credit, service and bonus cards with payment functions; financial services for running credit, service and bonus card programmes; financial consultancy relating to the running and management of credit, service and bonus card programmes; debt recovery in the framework of claims management; providing of information via the internet in the field of financial services; financial services for conducting payment and billing transactions and for financial brokerage; including all the aforesaid services provided online and/or via the internet, via databases; rental of automatic cash dispensers, bank statement printers and money counting apparatus, in particular for use with credit, service and bonus cards (included in class 36);rental of card payment apparatus, in particular for use with credit, service and bonus cards.
Class 37: Installation and maintenance of readers and hardware for service card systems.
Class 38: Electronic transmission of invoices; telecommunications and electronic data transmission, in particular the transmission of data, images and documents between and via computer terminals and computer networks, as well as via the internet; providing access to data in computer databases and computer networks and on the internet; collection and delivery of messages.
Class 42: Computer programming; online provider services, namely the rental and maintenance of storage space for websites for others (hosting), electronic data storage services (information technology), rental of computer capacity for data processing; computer programming, technical consultancy and technical project management in connection with invoicing, for others; installation and maintenance of credit card and bonus card systems (software); rental of data readers, in particular for reading credit, service and bonus cards.
The contested services are the following:
Class 35: Advertising; business management; business administration; office functions; procurement for others (purchasing) of foodstuffs and beverages; business representation services; wholesaling and retailing in shops and/or via global telematic networks of foodstuffs, beverages and clothing; franchising, namely consultancy and assistance in the management, organisation and promotion of business relating to commercial or industrial business operation and/or management assistance; business consultancy in relation to franchising; business consultancy relating to franchising; administration of the business affairs of franchises.
Class 38: Telecommunication services.
Class 39: Transport; packaging and storage of goods; travel arrangement; transport, distribution, packaging and storage of foodstuffs and beverages of all kinds.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of services in Class 35 and the opponent’s list of services in Classes 35 and 42 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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
Business management, business administration and office functions are identically contained in both lists of services.
The contested franchising, namely consultancy and assistance in the management, organisation and promotion of business relating to commercial or industrial business operation and/or management assistance; business consultancy in relation to franchising; business consultancy relating to franchising are included in the broad category of the opponent’s professional business and organisational consultancy. Therefore, they are identical.
The contested administration of the business affairs of franchises is included in the broad category of the opponent’s business administration. Therefore, they are identical.
The contested business representation services consist of the development of market segments and relationships by commercial agents. They are included in the broad category of the opponent’s business management. Therefore, they are identical.
The contested procurement for others (purchasing) of foodstuffs and beverages is the acquisition of particular goods from an external source. Procurement involves the process of selecting vendors, establishing payment terms, strategic vetting, selection, negotiating contracts and the actual purchasing of goods, often through a tendering or competitive bidding process. The process is used to ensure that the buyer receives goods, services or works at the best possible price, when balancing quality, quantity, time and location. Corporations and public bodies often define processes intended to promote fair and open competition for their business while minimising risk, such as exposure to fraud and collusion. For example, businesses often have set procedures for calling for tenders and evaluating proposals. Issues in procurement include identifying the needs of customers and suppliers, choosing and preparing tools and processes for communicating with suppliers, preparing requests for proposals and requests for quotations, and setting policies for evaluating proposals, quotes and suppliers. In the light of the above, the contested services and the opponent’s business management are similar, since they have the same general purpose of contributing to the smooth running of a company, and their end users are the same, despite their nature and provider being different.
The contested advertising 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. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.
Business management services are 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 services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.
When comparing business management with advertising, advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they are similar to a low degree. Therefore, the contested advertising is considered similar to a low degree to the opponent’s business management.
The contested wholesaling and retailing in shops and/or via global telematic networks of foodstuffs, beverages and clothing consists of the sale of goods to consumers from fixed locations or through global telematics networks. The opponent’s services in Class 35 deal with helping businesses in achieving certain goals and objectives. The mere fact that some of the opponent’s services refer to electronic commerce management is not enough to create the necessary link between the contested services and the opponent’s services. They differ in their nature, purpose and relevant public. Moreover, they relate to different types of business offered by different companies in different field of activities. Therefore, they are dissimilar.
The same is true of the opponent’s remaining goods and services in Classes 9, 36, 37, 38 and 42, since they are clearly different in their nature, purpose and relevant consumers from the contested services. They are not complementary or in competition with each other and are unlikely to be provided by the same undertakings. Therefore, the contested wholesaling and retailing in shops and/or via global telematic networks of foodstuffs, beverages and clothing are also considered dissimilar to the opponent’s goods and services in Classes 9, 36, 37, 38 and 42.
Contested services in Class 38
The contested telecommunication services include, as a broader category, the opponent’s telecommunications and electronic data transmission, in particular the transmission of data, images and documents between and via computer terminals and computer networks, as well as via the internet. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
Contested services in Class 39
The contested transport; packaging and storage of goods; travel arrangement; transport, distribution, packaging and storage of foodstuffs and beverages of all kinds are mainly services for transporting people or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily related to such transport. They also cover services relating to the packaging of goods and services relating to the storing of goods in a warehouse or other building for their preservation or guarding. These services are provided by specialist transport companies whose business has no relevant similarities to the opponent’s services in Classes 35, 36, 37, 38 and 42, which are not related to any transport, packaging or storage activities. The contested services are also not similar to the goods in Class 9 that could be transported, packed or stored. The contested services have clearly different purposes from the opponent’s goods and services. They are neither complementary nor in competition with each other. Furthermore, they are not provided by the same undertakings and do not have the same distribution channels. Therefore, they are dissimilar.
- 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 or similar (to different degrees) are directed partly at the public at large (e.g. telecommunication services in Class 38), whose degree of attention will be higher than average, as these services are not purchased or contracted on a regular basis and they may be relatively expensive, and partly at business consumers with specific professional knowledge and expertise, such as companies seeking assistance in how to be successful, take advantage of business opportunities or promote the launch or the sale of their goods and services (e.g. business management, advertising services in Class 35). Due to the degree of sophistication and the cost of some of the business-related services, their infrequent purchase and the serious and long-term impact they may have on the purchaser’s business, the relevant public’s degree of attention in relation to these services will also be higher than average.
- The signs
AirPlus CardControl | |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark, ‘AirPlus CardControl’.
The contested sign is a figurative mark consisting of the letter ‘R’ followed by the sign ‘+’, depicted in a slightly stylised typeface.
The element ‘AirPlus’ of the earlier mark will be perceived by the relevant public as composed of two words, ‘Air’ and ‘Plus’. Both words are clearly recognisable because their first letters are in upper case. The word ‘Air’ of the earlier mark will be understood as referring to the Earth’s atmosphere, because it exists as such in the relevant language (e.g. in English and French), because it is very close to the equivalent in the official language (e.g. ‘aire’ in Spanish and ‘aria’ in Italian) or because it is a very basic English word, commonly used throughout the European Union with this meaning. The word ‘Plus’ will be perceived by at least part of the relevant public as referring to ‘indicating or involving addition; involving positive advantage or good’ (information extracted from Collins Dictionary on 17/07/2017 at https://www.collinsdictionary.com). The distinctiveness of the word ‘Air’ is considered average, since it does not describe or allude to any characteristic of the relevant services. The word ‘Plus’ refers to ‘Air’ but is a banal laudatory term, commonly used in the business sector, and therefore is less distinctive than ‘Air’. However, the combination ‘AirPlus’, when taken as a whole, does not convey any particular meaning in relation to the relevant services and is, therefore, distinctive.
The element ‘CardControl’ of the earlier mark will be perceived by the relevant public as composed of two words ‘Card’ and ‘Control’. ‘Card’ will be understood as meaning, inter alia, ‘a rectangular piece of plastic, issued by a bank, company, or shop, which you can use to buy things or obtain money’, and ‘Control’ will be understood as meaning, inter alia, ‘to regulate (financial affairs); to examine and verify (financial accounts)’ (information extracted from Collins Dictionary on 17/07/2017 at https://www.collinsdictionary.com), either because they are commonly known basic English words or because they have close equivalents in the official languages (e.g. ‘carte’ and ‘controle’ in French; ‘Karte’ and ‘Kontrolle’ in German; ‘kaart’ and ‘controle’ in Dutch; ‘kort’ and ‘kontroll’ in Swedish). The opponent refers to the Boards of Appeal decision of 11/09/2014, R 564/2014-1, CardControl, refusing registration of the opponent’s mark ‘CardControl’ as descriptive of the same goods and services as those of the earlier mark, or similar ones, in support of its argument that the element ‘AirPlus’ is the only distinctive element of the earlier mark. The Opposition Division agrees with the opponent that the element ‘CardControl’ will be perceived as referring to the monitoring of cards in the financial services sector and, therefore, is descriptive for the relevant services in Classes 35 and 38, which relate to financial business management. Therefore, the element ‘AirPlus’ is considered the most distinctive element of the earlier mark.
As regards the contested sign, contrary to the opponent’s assessment, the current practice of the Office is that single letters convey concepts. The public in the relevant territory will perceive the letter ‘R’ in the contested sign as a letter of the Latin alphabet (see, for example, 08/05/2012, T-101/11, G, EU:T:2012:223, § 56). The distinctiveness of the letter ‘R’ is seen as normal, since it does not directly describe or allude to any characteristics of the relevant services. As regards the sign ‘+’, the same reasoning applies as is set out above in relation to the word ‘Plus’.
In its observations, the opponent claims that the element ‘AirPlus’ is the dominant element of the earlier mark. However, according to the Office’s practice, word marks have no dominant elements, since they are written in standard typeface and have no elements that could be considered visually outstanding in the overall composition of the mark because of their size, position, dimensions and/or colours. Therefore, neither the earlier mark nor the contested sign has any element that could be considered more dominant (visually eye-caching) than other elements.
Visually, the signs differ in all aspects: the earlier mark is an 18-letter word mark and the contested sign is a figurative mark composed of a single stylised letter ‘R’ and the sign ‘+’. Even taking into account that the element ‘CardControl’ of the earlier mark is descriptive, the signs under comparison are visually very different. Therefore, the signs are not visually similar.
Aurally, the pronunciation of the distinctive element of the earlier mark, ‘AirPlus’, and the contested sign, ‘R+’, is similar in some official languages of the European Union, such as Dutch, English and German. However, the pronunciation differs in the sound of the letters ‘CardControl’ of the earlier mark, which has no counterpart in the contested sign.
The opponent focuses its arguments on the phonetic similarity between the contested sign ‘R+’ and the element ‘AirPlus’ of the earlier mark. However, the similarity must be assessed considering the marks under comparison as a whole, bearing in mind their distinctive and dominant elements. Although the element ‘CardControl’ of the earlier mark is considered descriptive, it is not negligible and still constitutes a significant part of the opponent’s mark. The relevant consumers will indeed pay less attention to this descriptive element, but it will nonetheless be referred to orally and cannot be disregarded. Therefore, the earlier mark will be pronounced in four words, ‘Air’, ‘Plus’, ‘Card’ and ‘Control’, whereas the contested sign will be pronounced in two, ‘R’ and ‘plus’. As the coinciding element ‘Plus’ is weak and the differing element ‘CardControl’ in the contested sign is also non-distinctive, the signs are considered aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs overlap only in a laudatory element, ‘Plus’, and the remaining elements convey different concepts. Therefore, the signs are conceptually similar to a low degree for the part of the public that understands ‘Plus’. For the rest of the public, they are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the element ‘AirPlus’ of the earlier trade mark has no particular meaning for any of the services in question from the perspective of the public in the relevant territory. Despite the presence of the non-distinctive element ‘CardControl’, as stated above in section c) of this decision, the distinctiveness of the earlier mark, ‘AirPlus CardControl’, when taken as a whole, must be seen as normal.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
As indicated above, the contested services are partly identical, partly similar (to different degrees) and partly dissimilar to the opponent’s goods and services, and they target the public at large and business consumers with a higher than average degree of attention. The degree of distinctiveness of the earlier mark is average.
The signs are not visually similar. The signs are aurally similar to the extent that the first element of the earlier mark, ‘AirPlus’, and the contested sign will be pronounced similarly by at least part of the relevant public. The signs are also conceptually similar to a low degree, as they have in common the element ‘+’/‘Plus’, having the same meaning for part of the public. However, the aural and (limited) conceptual similarities cannot counteract the fact that the marks in question are visually dissimilar. The significant differences between the marks clearly outweigh the similarities and a likelihood of confusion can safely be excluded even in relation to identical services.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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
Lena FRANKENBERG GLANTZ | Rasa BARAKAUSKIENE | Jessica LEWIS |
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.