YELLOW | Decision 2604158
Date Published: Sep 25, 2017
OPPOSITION No B 2 604 158
Yello Strom GmbH, Siegburger Straße 229 (Torhaus), 50679 Cologne, Germany (opponent), represented by Lichtenstein, Körner & Partner MBB, Heidehofstr. 9, 70184 Stuttgart, Germany (professional representative)
a g a i n s t
SPA Air Services SPRL, Rue d'Abhooz, 31, 4040 Herstal, Belgium (applicant), represented by Philippe Partoune, Avenue des Bouleaux 30, 4053 Embourg, Belgium (professional representative).
On 13/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 604 158 is partially upheld, namely for the following contested services:
Class 37: Repair, servicing and maintenance of vehicles and apparatus for locomotion of persons by air; all the above mentioned services expressly exclude services to vehicles and apparatus for freight transportation.
Class 39: Transport of passengers by air; transport brokerage; air hostess services (escorting travellers); provision of aircraft; loaning and rental of aeroplanes; professional consultancy in the field of air transport; piloting services; all the above mentioned services are only for transportation of persons to the exclusion of freight transport or energy transport.
Class 41: Flying instruction.
2. European Union trade mark application No 14 436 968 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 14 436 968. The opposition is based on European Union trade mark registrations No 2 782 944 and No 6 404 057. 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 services
The services on which the opposition is based are the following:
- European Union trade mark registration No 2 782 944:
Class 37: Building construction, repair and installation services; installation, maintenance, servicing, renovation, modernising, extension, conversion, remediation and repair of waste water and fresh water installations, conduits and other installations for the supplying or drainage thereof, sanitary facilities, heating installations and parts therefor, technical equipment, household appliances, electronic entertainment apparatus and information technology equipment, and photovoltaic installations, supply lines (including for gas and electricity), buildings and parts therefor; craft services; technical services for installations, in particular construction, assembly, maintenance, servicing and repair services; services for detecting functional defects (including by means of remote diagnosis) in household and garden appliances and devices, for transmitting data relating to these functional defects and for rectifying these functional defects; repair of mobile phones; network management, namely installation and maintenance of network systems, installation services for house automation; caretaker services, namely maintenance, safeguarding and care of residential buildings and industrial buildings.
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.
- European Union trade mark registration No 6 404 057:
Class 37: Construction of power stations, in particular hydroelectric power stations, nuclear power stations, coal power stations, gas and steam turbine power stations; construction, maintenance and upkeep of electric street lighting; energy management, namely the construction, management and maintenance of energy generation and distribution installations; creation, installation and operation of distribution and transport networks; construction of waste treatment installations; maintenance of sewage and fresh water installations; technical services for installations, namely construction, assembly, maintenance, servicing and repair services; repair services, namely the repair of technical apparatus and household appliances; installation services; building construction.
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.
Class 41: Staff training; education; providing of training; entertainment; sporting and cultural activities.
The contested services after a limitation filed by the applicant on 10/06/2016 are the following:
Class 37: Repair, servicing and maintenance of vehicles and apparatus for locomotion of persons by air; all the above mentioned services expressly exclude services to vehicles and apparatus for freight transportation.
Class 39: Transport of passengers by air; transport brokerage; rental of parking spaces for aeroplanes; air hostess services (escorting travellers); provision of aircraft; loaning and rental of aeroplanes; professional consultancy in the field of air transport; piloting services; all the above mentioned services are only for transportation of persons to the exclusion of freight transport or energy transport.
Class 41: Flying instruction.
An interpretation of the wording of the applicant’s lists of services, as well as, the opponent’s lists of services is required to determine the scope of protection of these services.
The term ‘in particular’ and ‘including’, 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, 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 opponent’s list of services, and the term ‘all the above mentioned services expressly exclude services’ and ‘to the exclusion of’ used in the applicant’s list of services, to show the relationship of individual services with a broader category, are exclusive and restrict 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.
Contested services in Class 37
When comparing the contested repair, servicing and maintenance of vehicles and apparatus for locomotion of persons by air; all the above mentioned services expressly exclude services to vehicles and apparatus for freight transportation to the opponent’s earlier right 1) repair and installation services, the nature can be considered the same, the purpose is also the same in the broadest sense of the word, i.e. that they ‘mend something broken’, as regards repair, and that they ‘fit or put a piece of equipment so that is ready to be used’, as regards installation, and to that extent these services are considered similar to a low degree, but in the absence of an express limitation by the opponent clarifying the vague term (repair and installation services), it cannot be assumed that they are provided by the same companies, that their methods of use coincide, that they share the same distribution channels or that they are in competition or complementary. The same remarks are valid for the contested servicing of vehicles and apparatus for locomotion of persons by air (all the above mentioned services expressly exclude services to vehicles and apparatus for freight transportation) and the opponent’s earlier right 1) repair and installation services, which are closely correlated as they coincide in their nature and purpose. Therefore, for the same reasons stated above, they are also considered to be similar to a low degree.
Contested services in Class 39
The contested transport of passengers by air; the above mentioned services are only for transportation of persons to the exclusion of freight transport or energy transport is included in the broad category of the opponent’s transport covered by the earlier right 1). Therefore, they are identical.
The contested air hostess services (escorting travellers); the above mentioned services are only for transportation of persons to the exclusion of freight transport or energy transport are closely related with the opponent’s earlier right 2) travel arrangement. These services are usually provided by the company organising travel to the travellers, thus the provider and the public targeted are the same. Moreover, these services are offered simultaneously through the same channels; they are also complementary to each other, therefore they are considered similar to a high degree.
The contested transport brokerage; the above mentioned services are only for transportation of persons to the exclusion of freight transport or energy transport are auxiliary and supporting services to the opponent’s transport protected by the earlier right 1). They are similar in their purposes, target the same consumers and will be expected to be marketed or provided by the same undertakings. Therefore, these services are similar to a high degree.
The contested provision of aircraft; loaning and rental of aeroplanes; professional consultancy in the field of air transport; piloting services; all the above mentioned services are only for transportation of persons to the exclusion of freight transport or energy transport, are services which can be considered auxiliary and supporting services to the opponent’s earlier right 2) transport. They are usually provided by companies from the air transport sector to the transport (air) operators, thus the provider and the businesses targeted are the same. Moreover, these services are offered simultaneously through the same channels, due to their relation to the air transportation, high cost and specialised nature of these services, they are usually offered by specialised air services providers. They, serve the same end purpose such as flights operating, and thus are complementary to each other. Therefore, they are considered similar.
The contested rental of parking spaces for aeroplanes (the above mentioned services are only for transportation of persons to the exclusion of freight transport or energy transport) are specialised services rendered by the providers of facilities for air transport operators, and therefore as such they target different public than those of the opponent’s services in Classes 37, 39 and 41 covered by the earlier rights 1) and 2) respectively. Therefore, they have different purposes and distribution channels, and they have no commonalities as regards remaining factors, such as complementarity or being in the competition witch each other. Therefore they are dissimilar.
Contested services in Class 41
The contested flying instruction are included in the broad category of the opponent’s earlier right 2) providing of training. 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 identical or similar to various degrees are directed at the public at large (e.g. providing of training) and professionals in the air transport and transportation sector (e.g. repair, servicing and maintenance of vehicles and apparatus for locomotion of persons by air; all the above mentioned services expressly exclude services to vehicles and apparatus for freight transportation; or travel arrangement). Some of the services at issue are specialised services directed at business customers with specific professional knowledge or expertise in the transport sector.
The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services.
- The signs
yello |
|
Earlier trade marks | 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The sequence of the letters ‘YELLO’, which all the signs have in common, is not meaningful; however the contested sign ‘YELLOW’ as a whole is meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier marks are word marks consisting of the word ‘yello’. In the case of word marks, it is the word as such which is protected, and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters.
The contested sign consists of the word ‘YELLOW’ written in grey standard upper case letters, above which is a device in the shape of an aeroplane wing in gold-yellow with the shape of an aeroplane taking off inside which is shaded in white.
The device in the contested sign will be associated by the relevant public with an aeroplane, therefore bearing in mind that the services in question refer to air transportation, it must be considered as a non-distinctive element in relation to all the services of the contested sign.
The contested sign has no elements that could be considered more dominant (visually eye-catching) than other elements.
The word ‘yello’ forming the earlier marks does not exist as such in English. However, as it will be pronounced in the same way as the English word ‘yellow’ a part of the relevant public may perceive it as a misspelling of the mentioned word ‘YELLOW’ contained in the contested sign which refers to a type of a colour. Both elements ‘yello’ in the earlier marks, and ‘YELLOW’ in the contested sign have no meaning in relation to the relevant services, and all are therefore of normal distinctiveness.
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).
Visually, the signs coincide in the sequence of the letters ‘yello(*)’. However, they differ in additional letter ‘W’ of the word ‘YELLOW’ in the contested sign. The signs also differ in the figurative elements of the contested sign in the form of the device in aeroplane wing shape with depiction of an aeroplane taking-off.
Therefore, as the letters ‘yello’ constituting the earlier marks are included in the contested sign, and the figurative elements of the contested sign are non-distinctive, the signs are visually similar to a high degree.
Aurally, the word ‘yello’ of the earlier marks, without the letter ‘w’ at the end, when verbalised, does not sound any different to the word ‘YELLOW’ of the contested sign. Therefore, they are pronounced identically as two syllables (15/09/2015, R 2877/2014-4, ULTRA YELLOW / YELLO, § 26; 23/11/2016, B2462094, YELLOW BRAND PROTECTION; 08/03/2016, B2509761, YELLOW auto).
Therefore, the signs are aurally identical.
Conceptually, to the vast majority of the relevant English-speaking public the term ‘yello’ of the earlier marks will be associated with the colour yellow on account of the identical pronunciation to the word ‘yellow’. Therefore these signs will be perceived as conceptually highly similar to the contested sign. However, the signs differ in the concept of an aeroplane contained in the device of the contested sign which, as previously stated, for the services in question, is non-distinctive.
For the part of the public that may not see any meaning in the word element ‘yello’ of the earlier marks, since they will not be associated with any meaning, but this public will perceive the concept of an aeroplane in the contested sign, 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.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.
- Global assessment, other arguments and conclusion
Likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That assessment implies some interdependence between the relevant factors, and in particular a similarity between the signs and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the signs, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18, 19).
The contested services are found partly identical, partly similar to various degrees and partly dissimilar to the services covered by the earlier rights. The earlier marks are of normal distinctiveness. The services target the public at large and professionals whose level of attention may vary from average to high.
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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).
The contested sign is considered visually highly similar, and aurally identical to the earlier marks ‘yello’ as they are fully included in the contested sign. The contested sign differs only in the last letter ‘w’ which in the circumstances of the present case cannot outweigh all the similarities found. However, the contested sign contains the figurative elements of the device of the aeroplane wing shaded in gold-yellow with depiction of an aeroplane taking-off which is considered to be non-distinctive, hence it has very limited impact on the overall impression created by the marks. Moreover, the concept of the word ‘YELLOW’ is reinforced by the gold-yellow colouring of the device contained in the contested sign.
From the conceptual point of view for part of the public that will not see any meaning in the word element ‘yello’, the signs are not conceptually similar. Nevertheless, for the vast majority of the relevant public, the signs are also highly similar, since the earlier marks ‘yello’ will be associated with yellow colour, and this word constitutes the only word element in the contested sign. Furthermore, particular account is taken of the verbal elements in the figurative marks when both the verbal and figurative elements are considered. Thus the difference in the non-distinctive figurative elements of the contested sign will not deflect the consumer’s attention from the element ‘yello’ coinciding in all signs. This leads to a likelihood of confusion on the part of the public.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registrations No 2 782 944 and No 6 404 057. 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.
It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to various degrees to those of the earlier trade marks.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Francesca CANGERI SERRANO | Birgit FILTENBORG | Andra VALISA |
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.