Snow Miles | Decision 2715400 - Deutsche Lufthansa AG v. Third Realm Ltd, operating as Pure Organisation
Date Published: Oct 1, 2017
OPPOSITION No B 2 715 400
Deutsche Lufthansa AG, Von-Gablenz-Str. 2-6, 50679 Köln, 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
Third Realm Ltd operating as Pure Organisation, N Shah & Co, 470a Green Lanes, London, N13 5PA, United Kingdom (applicant).
On 21/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 715 400 is upheld for all the contested services, namely:
Class 35: Loyalty scheme services.
Class 39: Organization of holidays.
2. European Union trade mark application No 15 174 972 is rejected for all the contested services. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 174 972, namely against all the services in Classes 35 and 39. The opposition is based on, inter alia, international trade mark registration No 783 324 designating Denmark, France, Finland and Italy. 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 international trade mark registration No 783 324 designating, inter alia, Denmark and Finland.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 16: Vouchers for travel, publication, printed matter, stationery.
Class 35: Advertising; operation of a bonus system for the use of planes, of hotels, of rented cars and of credit cards.
Class 41: Entertainment, instruction, education.
Class 43: Hotel reservations.
The contested services are the following:
Class 35: Loyalty scheme services.
Class 39: Organization of holidays.
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 loyalty scheme services include, as a broader category, or overlap with the opponent’s operation of a bonus system for the use of planes, of hotels, of rented cars and of credit cards. 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 organization of holidays is similar to the opponent’s hotel reservations, as they can have the same producers, end users and distribution channels.
- 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 are directed at the public at large.
The degree of attention may vary from average to higher than average, for example for the services in Class 35.
- The signs
miles | Snow Miles |
Earlier trade mark | Contested sign |
The relevant territories are Denmark and Finland.
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 verbal element ‘MILES’, which the signs have in has no meaning for the relevant public and is, therefore, distinctive.
The same applies to the verbal element ‘SNOW’ of the contested sign, which has no meaning for the relevant public and is, therefore, distinctive.
Where both marks are registered as word marks, the typeface used is immaterial. Differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate.
Visually, the signs coincide in the verbal element ‘MILES’. However, they differ in the verbal element ‘SNOW’ of the contested mark.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the syllables /MILES/ or /MI/LES/, present identically in both signs. The pronunciation differs in the sound of the additional element /SNOW/ of the contested mark, which has no counterpart in the earlier sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for 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.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and 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 contested services are partly identical and partly similar to the opponent’s services and target the public at large. The degree of attention may vary from average to higher than average, for example for the services in Class 35.
The signs have been found to be visually and aurally similar on account of the coinciding verbal element ‘MILES’, which forms the entire earlier mark and is included as an independent distinctive element in the contested sign.
The differences are confined to the first verbal element of the contested mark, ‘SNOW’.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
The fact that the entire earlier mark is entirely included in the contested sign and has an independent distinctive role in its composition may lead the public to believe that the goods and services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 31 and 32).
In the present case, the fact that the coinciding element (the entire earlier mark) is neither dominant nor placed in the first/top position in the contested sign does not play a decisive role. Although it is true that more attention is usually paid to the beginning of a mark, where the contested trade mark incorporates the earlier mark it is not very important whether the contested trade mark incorporates the earlier mark as its first or second element. The protection against likelihood of confusion applies in both directions: the owner of the earlier mark is protected not only against the contested trade mark being understood as referring to its goods and services but also against its mark being taken as referring to the applicant’s goods and services.
Considering all the above, there is a likelihood of confusion, including the likelihood of association, on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 783 324 designating, inter alia, Denmark and Finland. It follows that the contested trade mark must be rejected for all the contested services.
As earlier international trade mark registration No 783 324 designating, inter alia, Denmark and Finland leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other territories designated under international trade mark registration No 783 324 or the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Cristina CRESPO MOLTO | Francesca DINU | Janja FELC |
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.