Travel Guardian | Decision 2671553
Date Published: Sep 25, 2017
OPPOSITION No B 2 671 553
Guardian News & Media Limited, Kings Place, 90 York Way, London N1 9GU, United Kingdom (opponent), represented by CMS Cameron Mckenna Nabarro Olswang, Cannon Place, 78 Cannon St, London EC4N 6AF, United Kingdom (professional representative)
a g a i n s t
Travel Guardian Co. Ltd, 3rd Floor, 29-8 Hancheon-ro 76na-gil Seongbuk-gu, Seoul 02781, Republic of Korea (applicant), represented by Gevers & Ores, 41 avenue de Friedland, 75008 Paris, France (professional representative).
On 11/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 671 553 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 764 435 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 764 435. The opposition is based on European Union trade mark registrations No 11 311 768 ‘THE GUARDIAN’ and No 11 311 784 ‘MEDIA GUARDIAN’, and the well-known mark in the UK ‘THE GUARDIAN’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 registration No 11 311 768.
- The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 9: Computer programmes; computer software; application software; software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information a local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks or other communications or telecommunications networks; software to users to transmit, upload, post or by other electronic means publish or communicate messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content via a local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks or other communications or telecommunications networks; software downloadable for computer, telephone, mobile phone or other hand held device downloadable from a local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks or other communications or telecommunications networks; software providing internet links to entertainment and/or general information; software providing the listener/viewer of radio programmes, television programmes or streamed content, cinematographic films or other audio and/or visual entertainment content, with internet links to related goods, services, media and/or information; software enabling the viewer of audio, visual and/or audiovisual entertainment or other optical media and/or other entertainment, media or information content, to access offers and/or competitions, interactive entertainment, media and/or information content, and/or retailers of goods and services; software enabling the viewer of audio, visual and/or audiovisual entertainment or other optical media and/or other entertainment, media or information content, to access offers and/or competitions, interactive entertainment, media and/or information content, and/or retailers of goods and services via a computer, telephone, mobile phone or other hand held device via local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks or other communications or telecommunications network; computer data published by electronic means; CD ROMs; CDIs; DVD’s; videotapes and cassettes; recording discs; cassettes; compact discs; optical discs; memory sticks, magnetic data carriers, and other electronic data storage devices; mouse mats; electronic publications (downloadable) provided online services via a local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks or other communications or telecommunications network; books or periodicals in the form of electronic publications; publications in electronic form; digital music (downloadable) provided from via a local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks or other communications or telecommunications network; computer discs and tapes; media for storing information, data signals, images and sound; machine readable media; cinematographic films; photographic films; cinematographic films or photographic films all prepared for exhibition; computer programs and computer software for use in the fields of news, current affairs, financial services, broadcasting, advertising, marketing, public relations, publishing, and new media; computer data in the nature of electronic text, audio, video and image files published by electronic means in the fields of news, current affairs, financial services, broadcasting, advertising, marketing, public relations, publishing, and new media; publications in electronic form, including, electronic books, newspapers, magazines, journals, catalogs, manuals, pamphlets, leaflets, and newsletters, all in the fields of news, current affairs, financial services, broadcasting, advertising, marketing, public relations, publishing, and new media; electronic books, periodicals and newspapers, on-line publications, downloadable electronic competitions, audio and video tapes and disks, encoded cards, sound recording and sound reproducing apparatus and instruments, computer software, electronic publications provided online via a local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks or other communications or telecommunications network; digital imaging devices and digital signal processors; apparatus for recording, transmission and reproduction of sound images; data processing equipment and computers; computer software for publishing of information in the field of news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion that may be downloaded from a global computer network; electronic games; electronic games downloadable from the internet via a local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks or other communications or telecommunications network; parts and fittings for all the aforesaid goods; all of the aforesaid excluding apparatus and equipment relating to pet animals.
Class 38: Communication services; electronic communication services; telecommunication services; broadcasting services; television, satellite television, cable television, subscription television, interactive and radio broadcasting and communication services; broadcasting and transmission of films, television, interactive, radio, music, audio, video, DVD’s and games; providing access to digital music web sites on the internet; transmission of sound and/or pictures; communication utilising computers; telecommunication of information (including web pages), computer programs and any other data; computer aided transmission of messages and/or images; transmission/sending of news; news agency services; message sending; electronic mail services; providing access to online information and/or communication services; provision of information about communication and/or broadcasting by electronic media; providing access to and leasing access time to computer databases or online information; Providing information relating to the fields of broadcasting, electronic transmission of media, and communications; providing access to on-line information and communication services; provision of information about communication and/or broadcasting by electronic media; broadcasting services, namely, electronic media services, namely, mobile media and entertainment services in the nature of electronic transmission of entertainment media content; computer aided transmission of messages and/or images; electronic message sending for others; electronic communication services, namely, communication by electronic computer terminals; telecommunication access services; providing multiple user access to a global information network; providing multiple user access to a global computer information network for accessing information in the fields of news, current affairs, financial services, broadcasting, advertising, marketing, public relations, publishing and new media; Computer aided transmission of data messages and images, communications by computer terminal, electronic mail, news agencies, services for the transmission, provision or display of information from a database, communications services for the provision or display of information relating to matter contained in or covered by a newspaper from a database; mobile media and entertainment services; providing Internet chat room services; Internet chat room services in the fields of information relating to news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, broadcasting, communications, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion via Internet connectivity; providing multiple user access to a global computer information network for the transfer and dissemination of information relating to news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, broadcasting, communications, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion; Providing access to information via telephone, provision of information via a secure telephone line, electronic message collection services, all relating to a personal dating service using IVR (Interactive Voice Response) telephony; Providing online chat rooms and electronic bulletin boards for registered users for transmission of messages covering general interest, classified, virtual community, social networking, photo sharing and transmission of photographic images; providing online bulletin boards for transmission of messages among users in the field of general interest; providing online discussion groups for transmission of messages among users in the field of general interest; providing online interactive bulletin boards for transmission of messages among computer users concerning information on a wide variety of topics of general interest to the public; providing on-line forums and discussion groups for transmission of message among computer users; providing online bulletin boards for transmission of messages for users of dating services and social networking sites; electronic communication services and data transmission services, namely, the transmission of data and information via Internet connectivity and the distribution of data and information to third parties via Internet connectivity; computer aided transmission of messages and/or images; communication utilizing computer terminals; telecommunication services, namely, enabling users to transmit messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content via a local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks or other communications or telecommunications networks; all the aforesaid services also provided online from a computer database or from the internet; information, advice and consultancy services relating to the aforesaid services; information, advice and consultancy services relating to the aforesaid services provided online via a local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks or other communications or telecommunications network; operating chat rooms; leasing of access time to computer databases
The contested goods and services are the following:
Class 9: Computer software for providing user location information via satellite and communication mechanism; downloadable smart phone application (software) for providing user location information via satellite and communication mechanism; computer software applications, downloadable for providing user location information via satellite and communication mechanism; smart phone application (software) for providing user location information via satellite and communication mechanism.
Class 38: Providing user location information via satellite and communication mechanism; providing user access to a global computer network for location-based social networking service (SNS); operation of local area networks.
Contested goods in Class 9
The contested computer software for providing user location information via satellite and communication mechanism; downloadable smart phone application (software) for providing user location information via satellite and communication mechanism; computer software applications, downloadable for providing user location information via satellite and communication mechanism; smart phone application (software) for providing user location information via satellite and communication mechanism are included in the broad category of the opponent’s computer software. Therefore, they are identical.
Contested services in Class 38
The contested providing user location information via satellite and communication mechanism; providing user access to a global computer network for location-based social networking service (SNS); operation of local area networks are included in the broad category of the opponent’s telecommunication services. 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, as regards the goods and services in Classes 9 and 38, the relevant consumer who is part of the general public will decide to purchase certain goods and services covered by the marks in question – in particular those which are expensive or aim to meet a particular technological need such as the design and development of computer software – on the basis of previously gathered information. In those circumstances, the level of attention of the relevant consumer will be higher than average for those goods and services. On the other hand, such a level of attention may decrease in respect of other goods and services covered by those marks, such as smart phone applications, which constitute goods for mass consumption and which do not necessarily require particular technical knowledge and may be of relatively little monetary value. In those circumstances, the relevant public will thus have an average level of attention (27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27).
- The signs
THE GUARDIAN | |
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
As the word ‘GUARDIAN’ in both signs will be understood in Spanish, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.
In Spanish, the word ‘GUARDIAN’, present in both marks, will be seen as ‘one who looks after, protects, or defends’ (information extracted from Real Academia Española at http://dle.rae.es/).
The definite article ‘THE’ in the opponent’s sign could be seen as a banal element. Furthermore, Spanish consumers will understand it, since it is a common and very basic English word denoting the definite article. For this reason, it is largely lacking in distinctive character.
The word ‘Travel’ does not have a meaning in Spanish.
The contested sign does not contain any elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
It follows from the case-law cited below that marks containing or reproducing an element of the other must be considered, at least to that extent, similar (03/07/2003, T-129/01, Budmen, EU:T:2003:184, § 47-50; 04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 40; 18/02/2004, T-10/03, Conforflex, EU:T:2004:46, § 59 et seq.; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 46 et seq.; 06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 54-57; 04/05/2005, T-359/02, Star TV, EU:T:2005:156; 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 49 et seq.; 25/05/2005, T-352/02, PC Works, EU:T:2005:176, § 34 et seq.; 25/05/2005, T-288/03, Teletech Global Ventures, EU:T:2005:177, § 86 et seq.; 22/03/2007, T-322/05, Terranus, EU:T:2007:94, § 35 et seq.; 08/09/2010, T-152/08, Scorpionexo, EU:T:2010:357, § 66 et seq.; 08/09/2010, T-369/09, Porto Alegre, EU:T:2010:362, § 26 et seq.; 20/09/2011, T-1/09, Meta, EU:T:2011:495; 28/09/2011, T-356/10, Victory Red, EU:T:2011:543, § 26 et seq.; 23/05/2007, T-342/05, Cor, EU:T:2007:152; 10/11/2011, T-313/10, Ayuuri Natural, EU:T:2011:653; 15/11/2011, T-434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 55 et seq.). The Office cannot simply ignore such extensive precedent in case-law.
Visually and aurally, the signs coincide in their second element, ‘GUARDIAN’. However, they differ in their first elements, ‘THE’ in the earlier mark versus ‘TRAVEL’ in the contested sign. The word ‘THE’ does not have much impact in the overall impression, given its low distinctive value.
Visually, given that the signs do not contain figurative effects to create a difference between them, the degree of similarity between the signs outweighs the relatively minor differences.
Aurally, the difference in the beginnings of the signs is less significant, bearing in mind the low degree of distinctive character of the word ‘THE’, to which the relevant public will attribute little importance, given that it denotes the definite article and therefore has a low degree of distinctive character, in contrast with the word ‘GUARDIAN’.
Therefore, the signs are visually and aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as meaning one who looks after, protects or defends, that is, a guardian, the signs are conceptually highly 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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, despite the low degree of distinctive character of the word ‘THE’.
- Global assessment, other arguments and conclusion
The Court has set out the essential principle that 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). In the present case, the identical goods and services, coupled with the similarity between the marks, will have to be taken into account when assessing the likelihood of confusion between the marks.
In this case, the absolute identity between the goods and services offsets the lesser degree of similarity between the signs.
Consumers, especially those of the general public in Spain, will believe the marks to belong to the same family, especially bearing in mind that the goods and services are identical. The relevant public is accustomed to seeing different or updated versions of a particular mark and might, in this case, associate the distinctive element ‘GUARDIAN’ found in the conflicting marks, in the belief that they indicate sub-brands of the same undertaking (30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370, § 89). This is supported by the fact that the word ‘GUARDIAN’ appears to be highly unusual for the goods and services. In the Opposition Division’s view, the signs are not so dissimilar that confusion can be avoided, bearing in mind 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).
Bearing in mind the foregoing, the additional word elements ‘THE’ and TRAVEL’ of the marks are not able to counteract the visual similarity, at least to a certain degree, between the signs at issue, resulting from their having the word element ‘GUARDIAN’ in common.
Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 311 768. It follows that the contested trade mark must be rejected for all the contested goods and services.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As earlier European Union trade mark registration No 11 311 768 ‘THE GUARDIAN’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR.
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 | Birgit FILTENBORG | Loreto URRACA LUQUE |
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.