YELLOW BOATS | Decision 2766403

Date Published: Sep 25, 2017

OPPOSITION No B 2 766 403

Yello Strom GmbH, Siegburger Straße 229 (Torhaus), 50679 Köln, Germany (opponent), represented by Lichtenstein, Körner & Partner MBB, Heidehofstr. 9, 70184 Stuttgart, Germany (professional representative)

a g a i n s t

Schibsted Sverige AB, 105 17, Stockholm, Sweden (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative)

On 20/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 766 403 is upheld for all the contested services.

 

2.        European Union trade mark application No 15 287 543 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 287 543 . The opposition is based on the following earlier rights:

• European Union trade mark registration No 6 404 057 ‘yello’ (word mark)
• European Union trade mark registration No 2 782 944 ‘yello’ (word mark)

The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier rights.

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.

1. The services

The services on which the opposition is based are the following:

• Services of European Union trade mark registration No 6 404 057:

Class 36: Financial services; financial consultancy in the energy sector; venture capital investments; commercial and technical building management; insurance; financial affairs, monetary affairs; real estate affairs.

Class 39: Transport; providing transport networks for distributing energy; distribution of electrical energy; technical services for operating distribution networks; distribution of energy, in particular electricity; heating (local and long-distance heating) as well as provision for others of electricity and heating (local and long-distance heating); electricity distribution; collection, storage, dumping, transport and destruction of waste; supplying of fresh water; sewage disposal; shipping; road haulage; packaging and storage of goods; travel arrangement; distribution of electricity, gas and heating, in particular to industry.

• Services of European Union trade mark registration No 2 782 944:

Class 39: Transport and logistics in the transport sector; removal services, in particular rental of removal vehicles, providing furniture packers, assembly and disassembly of furniture; logistics services with regard to removals; delivery of goods of all kinds; collection and repair of mobile phones.

Class 45: Personal and social services rendered by others to meet the needs of individuals; housekeeping services in private households; caretaker services, namely security services in residential buildings and industrial buildings; security services for the protection of property and individuals; Services in the field of home security; security guard and alarm services; key cutting.

The contested services are the following:

Class 36: Charitable fund raising; organising of charitable collections.

Class 39: Boat transport; rescue operations [transport]; transportation logistics; rescue, recovery, towing and salvage; rescue of ships in distress.

Class 45: Rescue of people; safety, rescue, security and enforcement services.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘in particular’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces 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 opponent’s list of services 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.

Contested services in Class 36 Charitable fund raising; organising of charitable collections fall in the opponent´s broad category of financial services in Class36. These services are therefore identical.

Contested services in Class 39 Boat transport is covered by the opponent´s broad category of transport in Class 39. These services are therefore identical.

The contested Transportation logistics is identical to the opponent´s logistics in the transport sector in Class 39, albeit with a slightly different wording.

The contested Rescue operations [transport] falls under the opponent´s broad category of transport since the contested services are specified to be related to transportation, despite the rescuing purpose of the operations it refers to. These services are therefore identical.

The contested Rescue, recovery, towing and salvage; Rescue of ships in distress imply the transportation of whatever is rescued/recovered/towed/salvaged to a safe place. These contested services are necessarily connected to transport services. Therefore, they overlap with the opponent´s transport in the same class, and are therefore considered identical.

Contested services in Class 45 Rescue of people; safety, rescue, security and enforcement services consist of security services for the physical protection of tangible property and individuals. The opponent´s security services for the protection of property and individuals are identical to these contested services, since they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

2. 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 are directed at both the general public and professionals or business customers. The attention paid by them during the purchase of the services is deemed to vary from average to higher than average, depending on their characteristics.

For the services that constitute expensive or are infrequent purchases or involve people´s health or security (e.g. rescue of ships in distress or rescue services) and for services that can involve significant sums of money or can have important consequences for business (e.g. transportation logistics), a higher than average degree of attention is likely to be paid.

Other services, such as boat transport which can be for leisure purposes and is not necessarily expensive, an average degree of attention is likely to be paid.

3. The signs

yello
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier marks are identical. For reasons of simplicity, both earlier marks will hereinafter be referred to in singular.

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 Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, since this part of the public will not attribute concepts to the words in the marks.

Consumers will perceive the terms in both signs as meaningless. The only concept grasped in them is the one deriving from the five-sided flag depicted in the contested mark.

The earlier mark has no element more distinctive or dominant (visually eye-catching) than others.

The contested sign is formed by the distinctive terms “YELLOW BOATS” and by a five-sided yellow flag depiction with a lower than average distinctive character.

As indicated by the opponent, the flag is a common ornamental element. It is of lower than average distinctive character due to the fact that this element is frequently used in trade marks, acting as a mere frame for other elements, and not being useful for consumers trying to identify the commercial origin of the services. In addition, in relation to the boat-related contested services (e.g. boat transport) the lower than average degree of distinctiveness is also motivated by the fact that five-sided flags are frequently used in maritime environments. Lastly, part of the services involved relate to security or rescue (e.g. Rescue operations [transport]). In this regard, it must be noted that the yellow colour of the flag is often used for security reasons, in order to make certain things or people more visible in potentially dangerous situations.

The contested sign has no element more dominant (visually eye-catching) than others. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

For these different reasons, in this case the words “YELLOW BOATS” will have stronger impact on the consumer than the depiction of a flag in which these words are contained.

Visually, the signs coincide in the sequence of letters “y-e-l-l-o”. The marks differ in the letter “W” of “YELLOW”, in the word “BOATS”, and in the flag depiction of the contested mark.

The coinciding sequence of letters constitutes the entire earlier mark and the beginning of the contested sign. Therefore, the earlier mark is visually entirely contained in the contested sign.

In addition, as argued by the opponent, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and, when the text is in different lines, from up to down. This makes the word “YELLOW” in the contested sign (the initial part) the one that first catches the attention of the reader. Accordingly, the coinciding sequence of letters “y-e-l-l-o” is the part of the contested sign where consumers will first focus their attention, adding relevance to this coincidence between the marks also for this reason.

According to the analysis above, it can be considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters “y-e-l-l-o”, present identically in both signs.

The pronunciation differs in the sound of the letters “w” and “b-o-a-t-s” of the contested mark, which have no counterparts in the earlier sign.

The coinciding sounds constitute the entire earlier mark, which is therefore aurally entirely contained in the contested one, being the first part read and pronounced. The differing “W” causes a small aural impact, since it does not constitute a strong sound or alter the number of syllables between “ye/llo” and “ye/llow”. In addition, the word “BOATS” is pronounced in the last place.

The signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the concept of a flag in the contested mark, the earlier has no meaning for the Spanish-speaking consumers. Since one of the signs will not be associated with any meaning, the signs 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.

4. 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 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.

5. Global assessment, other arguments and conclusion

The services compared in section a) have been considered to be identical.

The signs are visually and aurally similar to an average degree, and not conceptually similar. However, the conceptual difference between the marks resides in an element that is of lower than average distinctive character, and therefore its impact is reduced. Consumers will not focus on such element in order to identify the commercial origin of the services.

As explained above, the impact of the coinciding elements “yello” in the signs is increased due to the different reasons described in detail in the previous sections (e.g. the greater impact of verbal elements over figurative elements when the sign contains both of them, and the fact that the coincidences are found at the beginning of the contested sign, namely where the attention of consumers is focused). In addition, it must be noted that said coincidences constitute the entire earlier mark, which is visually and aurally perceived as entirely contained in the contested mark.

The attention paid by consumers during the purchase of the services is deemed to vary from average to higher than average. 

The average consumer of the category of services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, and according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

Based on the principle of imperfect recollection, the consumers might believe that the conflicting services come from the same or economically-linked undertakings. Also having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the identity of the services, outweigh their dissimilarities and may induce at least part of the public to believe that the conflicting services come from the same or economically-liked undertakings.

Even if part of the public might pay a higher than average degree of attention during the purchase of the services involved, the fact that the signs share significant similarities, together with the fact that similar signs cover identical services, might lead consumers to think that those services come from the same or economically-linked undertakings. Accordingly, even if the level of attention might be higher than average in relation to some of the services involved, this will not be enough as to avoid such confusion and/or association under the present circumstances.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registrations.

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 registrations No 2 782 944 and No 6 404 057. It follows that the contested trade mark must be rejected for all the contested services.

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

Lucinda CARNEY

María del Carmen SUCH SANCHEZ

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.