OPPOSITION No B 2 482 712

easyGroup Ltd, 10 Ansdell Street, Kensington, London W8 5BN, United Kingdom (opponent), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative)

a g a i n s t

NXO Expansion, 30 Cours Albert 1er, 75008 Paris, France (applicant), represented by Marchais Associes, 4 avenue Hoche, 75008 Paris, France (professional representative).

On 10/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 482 712 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 217 311. The opposition is based on the following earlier rights:

1. European Union trade mark registration No 11 535 961 for the figurative mark (hereinafter ‘Earlier Mark 1’);

2. European Union trade mark registration No 10 583 111 for the word mark ‘EASYGROUP’ (hereinafter ‘Earlier Mark 2’);

3. European Union trade mark registration No 10 584 001 for the word mark ‘EASYJET’ (hereinafter ‘Earlier Mark 3’);

4. European Union trade mark registration No 2 835 197 for the word mark ‘EASY.COM’ (hereinafter ‘Earlier Mark 4);

5. European Union trade mark registration No 10 735 496 for the word mark ‘EASYHOTEL’ (hereinafter ‘Earlier Mark 5’);

6. European Union trade mark registration No 10 735 561 for the word mark ‘EASYBUS’ (hereinafter ‘Earlier Mark 6’);

7. European Union trade mark registration No 6 780 241 for the word mark ‘EASYWORKROOMS’ (hereinafter ‘Earlier Mark 7’);

8. European Union trade mark registration No 5 230 644 for the word mark ‘EASYOFFICESPACE’ (hereinafter ‘Earlier Mark 8’);

9. European Union trade mark registration No 3 112 935 for the word mark ‘EASYTELECOM’ (hereinafter ‘Earlier Mark 9’);

10. European Union trade mark registration No 2 907 509 for the word mark ‘EASYOFFICE’ (hereinafter ‘Earlier Mark 10’);

11. European Union trade mark registration No 2 671 097 for the word mark ‘easyInternetCafe’ (hereinafter ‘Earlier Mark 11’);

12. European Union trade mark registration No 10 735 553 for the word mark ‘EASYCAR’ (hereinafter ‘Earlier Mark 12’);

13. European Union trade mark registration No 2 610 160 for the word mark ‘EASYGROUP’ (hereinafter ‘Earlier Mark 13’);

14. European Union trade mark registration No 3 090 958 for the figurative mark ( hereinafter ‘Earlier Mark 14’);

15. European Union trade mark registration No 11 624 376 for the figurative mark (hereinafter ‘Earlier Mark 15’);

16. European Union trade mark registration No 3 784 477 for the figurative mark

(hereinafter ‘Earlier Mark 16’);

17. European Union trade mark registration No 4 300 901 for the figurative mark (hereinafter ‘Earlier Mark 17’);

In relation to the Earlier marks 4, 7, 8, 9, 10, 11, 12, 13, 14, 15, the opponent invoked Article 8(1)(b) EUTMR. In relation to the Earlier marks 1, 2, 3, 5, 6, 16 and 17 the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

The opponent initially based its opposition also on non-registered trade marks ‘easyGroup’, ‘easyJet’ and ‘easyMobile’ used in the course of trade in the United Kingdom, in relation to which it invoked Article 8(4) EUTMR. In its observations, filed on 10/01/2017, however, the opponent explicitly withdrew Article 8(4) EUTMR as a basis of the present opposition. Therefore, the opposition will not be examined insofar as that ground was claimed.

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 11 535 961 which is registered for the services in the same Classes as the contested mark.

1. Likelihood of confusion with regard to the EUTM No 11 535 961 (Earlier mark 1)

1. The goods and services

Class 9: Telecommunications apparatus and instruments; telephones and mobile telephones and accessories including handsets, headsets, headphones, battery chargers, stands, cases for mobile phones and hands-free devices; audio speakers; software; application software; computer game software; mobile phone software; magnetic or encoded cards; smart cards; optical, measuring, signalling, controlling or teaching apparatus and instruments; apparatus for recording, transmission, processing and reproduction of sound, mechanisms for coin operated apparatus; data processing equipment; parts and fittings for all the aforesaid.

Class 37: Installation, repair and maintenance services; repair and maintenance of telecommunications equipment and instruments; installation, maintenance and repair of telecommunications systems, apparatus and instruments.

Class 38: Telecommunications; broadcasting and message transmission services; mobile and fixed line communications services; telephone connection services; transmission of data, images, documents, messages and software via communications networks; providing access to data, images, documents, messages and software via communications networks; providing user access to the internet; rental of telecommunications apparatus and instruments; information, advisory and consultancy services in relation to all the aforesaid services.

Class 42: Scientific and technological services and research and design relating thereto; design and development of telecommunications apparatus and equipment; design and development of computer hardware and software; computer programming services; information, advisory and consultancy services in relation to all the aforesaid services.

The contested services are the following:

Class 37: Installation and maintenance of telecommunication and computer equipment and networks; technical consultancy in the field of computer network and telecommunications network maintenance.

Class 38: Telecommunication; consultancy services within the data communication area, the satellite communication area and the telecommunication area; IP-telephony (Internet Protocol telephony).

Class 42: Computer and telecommunications network development, namely designing computer networks and telecommunications network, for others; technical consultancy in the field of computer network and telecommunications network development; remote monitoring of computer systems.

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

The term ‘namely’, used in the applicant’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.

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 37

The contested installation and maintenance of telecommunication are identically contained in both lists of services.

The contested installation and maintenance of computer equipment and networks computer equipment and networks overlap with the opponent’s installation, maintenance and repair of telecommunications systems, apparatus and instruments. The services are identical.

The contested technical consultancy in the field of computer network and telecommunications network maintenance are similar to the opponent’s installation, maintenance and repair of telecommunications systems, apparatus and instruments as they can coincide in the same provider, end user and they can be complementary.

Contested services in Class 38

Telecommunication is identically contained in both lists of services.

The contested consultancy services within the data communication area, the satellite communication area and the telecommunication area are identically included in the opponent’s consultancy services in relation to all the aforesaid services [Telecommunications; broadcasting and message transmission services; mobile and fixed line communications services; telephone connection services; transmission of data, images, documents, messages and software via communications networks; providing access to data, images, documents, messages and software via communications networks; providing user access to the internet; rental of telecommunications apparatus and instruments].

The contested IP-telephony (Internet Protocol telephony) are included in the broad category of telecommunications. The services are identical.

Contested services in Class 42

The contested computer and telecommunications network development, namely designing computer networks and telecommunications network, for others overlap with the opponent’s design and development of telecommunications apparatus and equipment. The services are identical.

The contested technical consultancy in the field of computer network and telecommunications network development are identically included in the opponent’s consultancy services in relation to all the aforesaid services [Scientific and technological services and research and design relating thereto; design and development of telecommunications apparatus and equipment; design and development of computer hardware and software; computer programming services].

The contested remote monitoring of computer systems are included in the opponent’s development of telecommunications apparatus and equipment. The services are identical.

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 goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, as some of the services are highly specialised and infrequent purchases.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is 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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a figurative mark, consisting of the slightly stylised letters ‘easyMobile’, in white, on an orange rectangular background. The letters are in lower case, except for the letter ‘M’, which is in upper case.

The contested mark is figurative mark composed of the word ‘easy’ and the word ‘conversation’ in a slightly bolder typeface. Above these verbal elements, a blue figurative element composed of several symbols (namely five speech bubbles, a symbol for wireless connection, a symbol for ‘home’, a mobile phone, a symbol for computer, a globe and a symbol ‘@’) appear.

The word ‘EASY’ included in both marks is a basic English word which means ‘not requiring much labour or effort; not difficult; simple’. This word is likely to be understood by the relevant professional public of the services concerned in the whole territory of the European Union (See Decision of 21/02/2017, R 2048/2015-2, §60). This element is laudatory as it alludes to the quality of offered services. It is considered to be weak for the relevant services in question.

The element ‘Mobile’ will be perceived as, inter alia, ‘having freedom of movement’, ‘movable’, ‘portable’ or as an abbreviation for ‘mobile phone’ (information extracted from Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/mobile_1) in English. It can be reasonably assumed, given that it is a basic English word and that this term is extensively used in the field of telecommunication, that the element ‘mobile’ will be understood by the relevant public as referring to mobile communication. Bering in mind the relevant services, this element is considered to be non-distinctive in relation to the relevant services in Classes 37, 38 and 42.

The element ‘conversation’ is the interchange through speech of information, ideas, etc; spoken communication in English and French. Since this word is very close to the equivalent words in some of the official languages in the relevant territories (i.e. ‘Konversation’ in German, ‘conversación in Spanish, ‘conversazione’ in Italian, French, ‘konveryace’ in Czech, ‘konverzacija’ in Slovene, ‘conversa’ in Portuguese), it is reasonable to assume that a part of the relevant public will understand the foreign word. Bearing in mind that some of the services are related to communications, it is considered that this element is weak for this part of the public for the relevant services. However, for the other part of the public, such as Polish, Danish, Finish it has no meaning and is considered to be distinctive.

For a part of the public, that understands the word ‘conversation’ of the contested mark, the figurative element included in the contested mark just reinforces the descriptiveness of the verbal part ‘conversation’. For the remaining part of the public, this element is however distinctive.

The marks have no elements that could be considered more dominant than other elements.

Visually and aurally, the signs coincide in ‘easy’. However, they differ in ‘mobile’ of the earlier mark and ‘Conversation’ of the contested mark. They also differ in the figurative elements of the marks, including the colours.

The signs are visually similar to a low degree considering the weakness of the word they have in common, namely ‘EASY’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The signs are considered conceptually similar to a low degree, as they coincide in the weak element ‘EASY’.

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.

According to the opponent, the earlier trade mark has enhanced distinctiveness and reputation for all the goods and services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 18).

On 10/01/2017 the opponent submitted the following evidence:

• A witness statement of 07/08/2013, signed by Mr Paul David Griffiths, the Finance Controller for easyGroup. According to the Witness Statement the company easyGroup was incorporated in 2000 with the aim of establishing a group of companies which trade under the ‘easy’ brand, following the success of easyJet. According to the witness statement, since 2000, easyGroup has secured about 1 000 trade mark registrations around the world, including ‘EASY’, ‘EASY.COM’, ‘EASYJET’, ‘EASYCAR’, ‘EASYBUS’, ‘EASYOFFICE’, ‘EASYHOTEL’ and ‘EASYMONEY’. The opponent, easyGroup, has also established numerous businesses that operate or have operated under the ‘easy’ brand. These include businesses operating in a range of fields under the trade marks that are invoked as the basis of the present opposition, for example ‘easyCar’, ‘easyBus’ and ‘easyHotel’. The witness statement states that easyJet operates like a travel agency, allowing people to book flights and, in addition, to arrange travel-related services, for example car hire, accommodation, airport parking and travel insurance, as well as allowing people to obtain travel information and destination guides. The witness statement makes numerous references to the evidence, some of which was, however, not submitted by the opponent in the present proceedings, such as customer and industry awards won by EASYJET.

• Exhibit 5: Extracts from previous EUIPO opposition decisions regarding the opponent’s earlier marks.

• Exhibit 6: An extract from the Waybackmachine’ (an internet site which stores websites from the past) showing the Internet hits related sites such as easyJet.com, easyCar.com and easyHotel.com.

• An extract from the internet site www.cityam.com regarding the EASYJET founder, Sir Stelios Haji-Ioannou.

• A copy of an article from The Financial Times from 26/06/2014 regarding the expansion of easyHotel.

• An article from www.managementtoday.co.uk from 18/08/2014 titled ‘Stelios wants to shake up the car rental market (again) with EasyCar Club’.

• An extract from Wikipedia with a biography of Sir Stelios Haji-Ioannou.

• An internal, unsigned document showing Easyjet plc revenues for 2013 and 2014. The revenues refer to the relevant services rendered under the EasyJet brand.

• An article from www.theguardian.com from 04/08/2013 with regard to the opening of a pilot easyFoodstore site in Croydon.

• An article from www.dailymail.co.uk about the mark easyGym, which, however, is not a basis of the opposition.

• An article from www.telegraph.co.uk from 23/05/2014 which states: ‘Sir Stelios launched the budget hotel chain in 2004 under his easyGroup umbrella brand. The business now has 19 hotels, 17 of which are franchises, spread from Edinburgh to Johannesburg and Dubai including seven hotels in London. The “super budget” hotel company confirmed it has secured a 50-year agreement with Stelios for use of the “easy” branding’.

• An article from www.telegraph.co.uk from 03/02/2006 entitled ‘EasyPizza next move for Stelios’, which states: ‘The Easy Group believes the same no-frills model it used to lower the cost of flights will work in the pizza delivery business’.

• An article from www.telegraph.co.uk from 22/08/2009, which states, inter alia, that ‘Stelios Haji-Ioannou, the transport to pizza delivery entrepreneur, is set to expand easyBus after snapping up a disused factory site in London to serve as the bus company’s depot’. Further, it also states that ‘easyBus currently transports around 1m passengers each year’.

• An article from www.theguardian.com from 23/10/2014, which states ‘Stelios Haji-Ioannou’s easyGroup has successfully launched sub-brands from property to pizza to gyms, and the company is currently expanding into the grocery category. The common denominator of their offering in each sector is value’.

• An article from www.telegraph.co.uk from 01/09/2005 entitled ‘Fifty lessons: brand new changes’, which forms part of a series in which senior business figures share their experiences. The submitted article is written by Stelios Haji-Ioannou and states, inter alia, ‘So the theory is that, if you’re using an easyInternet café today, you are more likely, when thinking about your next travel trip, to book an easyJet flight, rent an easyCar, or stay in an easyHotel. Though each company has separate shareholders, they appear to be under the common brand, and therefore common values’.

• An article from Reuters, dated 06/01/2005, which states ‘Haji-Ioannou founded EasyJet, Europe’s second biggest budget airline, in 1995 and following its huge success extended the “easy” brand to a range of no-frills businesses. Including car rental, consumer credit, leisure music, pizza and men’s grooming products’.

Assessment of the evidence

In relation to the witness statement, it should be noted that the probative value of statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish reputation, since such statements have to be considered as having less probative value than evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

In the present case, many facts mentioned in the affidavit are not backed up by other independent evidence. Therefore, its probative value is diminished accordingly.

The press articles submitted prove that there was some media coverage of the services marketed under various earlier trade marks. However, they mainly refer to the opening of new businesses under the easyGroup umbrella.

Although the opponent submits various press articles, they relate to the marks ‘EASYJET’, ‘EASYHOTEL’, ‘EASYCAR’ and do not mention the earlier mark .

As a result, the evidence does not demonstrate that the earlier mark is known by a significant part of the relevant public in the European Union. Therefore, the Opposition Division concludes that the opponent failed to prove that the earlier mark is reputed or even have acquired enhanced distinctive character in the relevant territories with regard to the goods and services for which the opponent claims reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on their distinctiveness per se. In the present case, the earlier mark has a meaning as a whole for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as lower than average in relation to telecommunication services.

5. 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).

In the present case it has been considered that the contested services are partially identical and partially similar (to various degrees). The level of attention of the relevant public is high.

The signs are visually, aurally and conceptually similar to a low degree, as they coincide in the weak element ‘EASY’, which will be understood throughout the relevant territory.

Even though the differing elements are not particularly distinctive, they significantly contribute to differentiate the signs. Bearing in mind the low distinctiveness of the word ‘EASY’, the relevant public will be inclined to focus on the further (word and figurative) elements of the signs in order to discern the commercial origin of the relevant services (see, by analogy, 30/10/2012, R 2270/2011-5, EASYSTORE, EASY et al., § 26; 02/03/2009, R 1538/2007-2, EASY LIVING / EASY et al., § 40). The distinctive character of both marks lies in the combination of their respective elements, for which the visual differences created by their further elements cannot be ignored. Indeed, although generally the consumer pays more attention to the beginning of a mark than to the end, when the beginning element is weak, he/she will equally pay attention to the remaining elements (19/11/2014, T-138/13, Viscotech / Viscoplex, EU:T:2014:973, § 69 and the case-law cited therein).

Considering all the above, the Opposition Division finds that the differences between the marks counterbalance the similarities between them. The consumers who are in this case specialised consumers will be able to safely distinguish the signs. The differences are, therefore, enough to exclude any likelihood of confusion on the part of the public, including the risk that consumers believe that the contested goods come from the same or from economically linked undertakings as the goods offered by the opponent.

According to the principle of interdependence a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that some of the goods are identical cannot, in this case, compensate for the differences identified between the signs.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on this earlier right.

2. Likelihood of confusion with regard to EUTM No 10 583 111 ’EASYGROUP’ (Earlier mark 2), No 10 584 001 ‘EASYJET’ (Earlier mark 3) and No 2 835 197 ‘EASY.COM’ (Earlier mark 4)

6. The goods and services

Earlier mark 2

Class 3: Preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes; cosmetics; non-medicated toilet preparations; perfumes, fragrances, colognes and scents; soaps and cleaning preparations; shampoos, conditioners, moisturisers and rinses; tooth cleaning preparations; depilatory preparations; sun-screening and tanning preparations; polishing preparations, dentifrices, bleaching preparations, hair lotions, anti-perspirants, deodorisers and deodorants, cotton wool; essential oils; preparations and substances for use in massage and aromatherapy.

Class 9: Communications, photographic, measuring, signalling, checking, scientific, optical, nautical, life-saving and surveying apparatus and instruments; consumer domestic electrical and electronic apparatus and instruments, namely, audio disc players, audio disc recorders, compact disc players, compact disc recorders, radio tuners, audio receivers, MP3 players, audio amplifiers, audio speakers, headphones, earphones, microphones, plasma display panel televisions, liquid crystal display televisions, television receivers, liquid crystal displays, liquid crystal display projectors, DVD players, DV recorders, video cameras, digital still cameras, cameras, mobile phones, audio players for automobile use, radio receivers for automobile use, web cameras, car navigation apparatus, battery chargers; computer software, hardware and firmware; computer games software; apparatus, instruments and media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting and retrieving publications, text, signals, software, information, data, code, sounds and images; audio and video recordings; audio recordings, video recordings, music, sounds, images, text, publications, signals, software, information, data and code provided via telecommunications networks, by online delivery and by way of the Internet and the world wide web; sound and video recordings; sound and video recording and playback machines; coin freed apparatus; televisions and television games apparatus and instruments; photographic and cinematographic films prepared for exhibition; photographic transparencies, electronic publications(downloadable); educational and teaching apparatus and instruments; electronic, magnetic and optical identity and membership cards; sunglasses and sunvisors; mouse mats; protective clothing and headgear; parts and fittings for all the aforesaid goods.

Class 12: Scooters, bicycles, vehicles, apparatus for locomotion by land, air or water; parts for land, air or water locomotion apparatus.

Class 16: Printed matter and publications; wrapping and packaging; books, manuals, pamphlets, newsletters, albums, newspapers, magazines and periodicals; tickets, vouchers, coupons and travel documents; identity cards; labels and tags; posters, postcards, calendars, diaries, photographs, gift cards and greeting cards; teaching and instructional materials; stationery, artists' materials, writing instruments, brochures, travel document folders, guide books, travellers cheques, badges, promotional and advertising material, signs of paper or cardboard.

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; handbags, rucksacks, purses; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing for animals.

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings; toys; gymnastic and sporting articles; decorations for Christmas trees, model aeroplanes, scooters, teddy bears, balls, golf balls; playing cards; arcade games.

Class 29: Meat; fish; poultry; edible oils and fats; eggs; milk and milk products; jellies; jams; game; meat extracts; compotes.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread and pastry; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces; condiments; spices; confectionery; ices; chocolate; fruit sauces.

Class 31: Agricultural, horticultural and forestry products and grains; live animals; fresh fruits ; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32: Mineral and aerated waters; beers; non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages; wines; spirits; liqueurs; cocktails.

Class 35: Advertising, marketing and publicity services; dissemination of advertising, marketing and publicity materials; business organisation, business administration and business management services, business information services, auctioneering services, office functions, promotional services; import-export agency services, business and management consultancy, assistance and advice; purchasing and demonstration of goods for others; retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes, cosmetics, non-medicated toilet preparations, perfumes, fragrances, colognes and scents, soaps and cleaning preparations, shampoos, conditioners, moisturisers, tooth cleaning preparations', depilatory preparations, sun-screening and tanning preparations, anti-perspirants, deodorisers and deodorants, sunglasses, personal stereos, MP3 players, CD players, apparatus for playing music and video recordings, jewelry, stones, watches, clocks, books, magazines, newspapers, stationery, calendars, diaries, purses, umbrellas, parasols briefcases, purses, wallets, pouches and handbags; luggage, suitcases, travelling sets, sports bags, bike bags, backpacks, games and playthings, playing cards, gymnastic and sporting articles, toys; gymnastic and sporting articles, model airplanes, scooters, teddy bears, balls; commercial administration of the licensing of the goods and services of others; advice relating to business management; advice relating to business organisation; business advice; business management advice.

Class 36: Financial and insurance services; monetary affairs, banking, banking services, real estate affairs; advice and consultancy relating to the aforesaid services.

Class 38: Communication, telecommunication, broadcasting and message transmission services; provision of access to the Internet; Internet service providers; advisory and consultancy services relating to all the aforesaid; including, but not limited to, all the aforesaid services provided via telecommunications networks, by online delivery and by way of the Internet and the world wide web; leasing access time to a computer database, Internet café services, namely renting and leasing access time to a computer database.

Class 39: Transportation of goods, passengers and travellers by air; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travellers by land and sea; airline services; bus transport services, car transport services, coach services, baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; rental and hire of aircraft, vehicles and boats; aircraft parking services; aircraft fuelling services, travel reservation and travel booking services provided by means of the world wide web, information services concerning travel, including information services enabling customers to compare prices of different companies; travel agency and tourist office services; advisory and information services relating to the aforesaid services; information services relating to transportation services, including information services provided on-line from a computer database or the Internet.

Class 41: Information relating to entertainment and education, provided on-line from a computer database or the Internet; entertainment services provided on-line from a computer database or the Internet; educational information provided on-line from a computer database or the Internet; entertainment services, education services, publishing services, production, editing and rental of sound and video recordings and films, organising games and competitions, rental of toys and apparatus for the playing of games; providing training.

Class 42: Meteorological information services; consultancy, development, advice, analysis, design, evaluation and programming services relating to computer software, firmware, hardware and information technology; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; hosting, creating and maintaining websites for others; consultancy and advice relating to the evaluation, choosing and implementation of computer software, firmware, hardware, information technology and of data-processing systems; rental of computer software, firmware and hardware; provision of information relating to technical matters and information technology; scientific and technological services and research and design relating thereto, industrial analysis and research services; including but not limited to, all the aforesaid services provided via telecommunications networks, by online delivery and by way of the Internet and the world wide web; provision of access to computers.

Class 43: Provision of temporary accommodation; provision of food and drink; catering; hotel, restaurant, café and bar services; hotel management and reservation services; nursery, kindergarten and creche services; hotel services for the provision of facilities for exhibitions; providing facilities for exhibitions and conferences.

Class 44: Physical, mental and emotional healthcare.

Class 45: Security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals all relating to dating, marriage, and/or religion; investigation services, escorting (social) services; funeral services; advising services relating to intellectual property licensing; intellectual property licensing services; licension of computer software, firmware and hardware; provision of information relating to legal matters and intellectual property; legal services.

Earlier mark 3

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; deodorants for personal use; preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes; cosmetics; non-medicated toilet preparations; shampoos and conditioners; moisturisers; sun-screening and tanning preparations.

Class 8: Hand tools and implements; cutlery; electric and non electric razors.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, supervision, life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs;  mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; computer hardware and firmware; computer software; software downloadable from the Internet; downloadable electronic publications; compact discs; computer games software; sunglasses; clothing for protection against injury, accident, irradiation or fire; navigation apparatus for vehicles; educational and teaching apparatus and instruments; electronic, magnetic and optical identity and membership cards; sunvisors; cases for spectacles; parts and fittings for all the aforesaid goods.

Class 12: Vehicles; apparatus for locomotion by land, air or water; motors and engines for land vehicles; airplanes; vehicle body parts and transmissions; vehicle parts, parts for land, air or water locomotion apparatus; bicycles and spare parts thereof (included in this class), golf carts and baby carriages; scooters and spare parts; bike bags.

Class 14: Precious metals and their alloys and goods made of or coated with these materials not included in other classes; jewelry, precious stones; watches, clocks, chronometric instruments, and horological instruments; cases for all the aforesaid goods.

Class 16: Paper, cardboard and goods made from these materials; printed matter; photographs; stationery; packaging materials; printed publications; books, manuals, pamphlets, newsletters, albums, newspapers, magazines and periodicals; tickets, vouchers, coupons and travel documents; identity cards; labels and tags; posters, postcards, calendars, diaries; teaching and instructional materials.

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; handbags, rucksacks, purses; briefcases, wallets, pouches and handbags; luggage; suitcases; travelling sets; sports bags; backpacks; umbrellas, parasols and walking sticks; parts and fittings for all the aforesaid goods.

Class 25: Clothing, footwear, headgear.

Class 28: Gymnastic and sporting articles.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Fresh fruits, seeds; nuts.

Class 32: Beers; mineral and aerated waters; non-alcoholic drinks; fruit drinks and fruit juices; syrups for making beverages.

Class 33: Alcoholic beverages; wines; spirits and liqueurs; cocktails.

Class 34: Cigarettes; cigars; tobacco; tobacco products; smokers' articles; lighters; matches.

Class 35: Advertising; business management; business administration; office functions; operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; provision of business information; retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes, cosmetics, non-medicated toilet preparations, perfumes, fragrances, colognes and scents, soaps and cleaning preparations, shampoos, conditioners, moisturisers, tooth cleaning preparations', depilatory preparations, sun-screening and tanning preparations, anti-perspirants, deodorisers and deodorants, sunglasses, personal stereos, MP3 players, CD players, apparatus for playing music and video recordings, jewelry, stones, watches, clocks, books, magazines, newspapers, stationery, calendars, diaries, purses, umbrellas, parasols briefcases, purses, wallets, pouches and handbags, luggage, suitcases, travelling sets, sports bags, bike bags, backpacks, games, playing cards, gymnastic and sporting articles, gymnastic and sporting articles, scooters; marketing and publicity services; dissemination of advertising, marketing and publicity materials.

Class 36: Insurance; financial services; real estate agency services; banking; issuing of tokens of value; provision of financial information, monetary affairs; foreign exchange services; advice and consultancy relating to the aforesaid services.

Class 38: Telecommunications; provision of access to the Internet; providing user access to the Internet; advisory and arrangement services relating to all the aforesaid, including, but not limited to, all the aforesaid services provided via telecommunications networks, by online delivery and by way of the Internet; broadcasting of radio and television programmes; electronic transmission of announcements; services in connection with teleconferences.

Class 39: Transport; packaging and storage of goods; travel arrangement; travel information; provision of car parking facilities; transportation of goods, passengers and travelers by air, land, sea and rail; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travelers by land and sea; airline services; baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; rental and hire of aircraft, vehicles and boats; chauffeur services; taxi services; bus services; coach services; rail services; airport transfer services; airport parking services; aircraft parking services; escorting of travelers; travel agency services; tourist office services; advisory and information services relating to the aforesaid services; information services relating to transportation services, travel information and travel booking services provided on-line from a computer database or the Internet.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; information relating to entertainment and education, provided on-line from a computer database or the Internet; entertainment services provided on-line from a computer database or the Internet; educational information provided on-line from a computer database or the Internet; organising games and competitions, rental of games and playthings.

Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotel services; hotel reservation services; hotel services for the provision of facilities for exhibitions and conferences.

Earlier mark 4

Class 36: Financial and insurance services; monetary affairs, banking, banking services, real estate affairs; advice and consultancy relating to the aforesaid services.

Class 38: Email services.

Class 42: Information relating to entertainment and education, provided on-line from a computer database or the Internet; entertainment services provided on-line from a computer database or the Internet; educational information provided on-line from a computer database or the Internet; entertainment services, education services, providing training.

Class 43: Temporary accommodation; provision of food and drink; catering; hotel, restaurant, café and bar services; hotel management and reservation services; nursery, kindergarten and creche services; hotel services for the provision of facilities for exhibitions; providing facilities for exhibitions and conferences.

The contested services are the following:

Class 37: Installation and maintenance of telecommunication and computer equipment and networks; technical consultancy in the field of computer network and telecommunications network maintenance.

Class 38: Telecommunication; consultancy services within the data communication area, the satellite communication area and the telecommunication area; IP-telephony (Internet Protocol telephony).

Class 42: Computer and telecommunications network development, namely designing computer networks and telecommunications network, for others; technical consultancy in the field of computer network and telecommunications network development; remote monitoring of computer systems.

Some of the contested services are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.

7. 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 assumed to be identical are specialised services which are directed at business customers with specific professional knowledge or expertise. The degree of attention is higher than average.

8. The signs

2.EASYGROUP EASYJET EASY.COM
Earlier trade marks	Contested sign

The relevant territory is 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).

In case of the marks composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In this sense, although it may not be expected that the average consumer has a particular knowledge of a foreign language, this is a flexible rule (see, by analogy, 03/09/2009, C-394/08 P, Zipcar, EU:C:2009:334, § 51) and the knowledge of foreign terms by the relevant public should be assessed on a case by case basis, being hereby particularly pertinent as to whether the words in question in the foreign language are very close to the equivalent words in the official language of the relevant territory.

Bearing this in mind, the Opposition Division considers that both the words ‘EASY’, ‘GROUP’ and ‘JET’ are likely to be understood by the relevant public of the services concerned in the whole territory of the European Union.

Therefore, it is reasonable to assume that the earlier marks ‘EASYGROUP’ (Earlier Mark 2) and ‘EASYJET’ (Earlier mark 3) are a combination of the English word ‘EASY’ with the English words ‘GROUP’ and ‘JET’.

The earlier mark 4 is a word mark ‘EASY.COM’.

As explained above in section c) of this decision, the word ‘easy’ is likely to be understood by the relevant public of the services concerned in the whole territory of the European Union. This element is laudatory as it alludes to the quality of offered services. It is considered to be weak for the relevant services in question.

The element ‘GROUP’ of the Earlier Mark 2 is, inter alia, a business term used to refer to an association of companies. The word ‘GROUP’ has identical or very similar equivalents in many languages of the European Union. Therefore, this element is devoid of any distinctive character in relation to all of the relevant services as it merely designates that the goods and services are provided by a group of people/business entities.

The element ‘JET’ of the Earlier Mark 3 will be understood as referring to an aircraft as it is widely used in international commerce. As it is not descriptive, allusive or otherwise weak, it is distinctive for the relevant services at hand.

The element ‘.com’ of the Earlier mark 4, it is a commonly used term in domain names; it merely indicates that a person or a business has presence (website) on the internet. This element is considered to be non-distinctive for all the relevant services at hand.

The contested mark is figurative mark composed of the words ‘easy’ and ‘conversation’, the meaning of which has already been explained above.

The earlier marks are all word marks and have no elements that could be considered clearly more dominant than other elements. Also, in case of the contested mark, there is no element that could be considered more dominant than other elements.

Visually and aurally, the signs coincide in the word ‘easy’. However, they differ in the words ‘GROUP’ (Earlier Mark 2), ‘JET’ (Earlier Mark 3) and ‘COM’ (Earlier mark 4). The marks also differ in the word ‘conversation’ and in the figurative element of the contested mark.

Considering the weakness of the common word ‘EASY’ and the difference in the additional elements of the marks, the signs are visually similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The signs are considered conceptually similar to a low degree, as they coincide in the weak element ‘EASY’.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

9. Distinctiveness of the earlier marks

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 2 and 3 have a reputation and are well known in connection with all the goods and services for which they are registered.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 18).

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above, under point d) of this decision.

As seen above under point d), the press articles submitted by the Opponent prove that there was some media coverage of the services marketed under the trade marks ‘EASYHOTEL’, ‘EASYCAR’ and ‘EASYJET’. However, the articles mainly refer to the opening of new businesses under the ‘easyGroup’ umbrella or to the success of the budget airline ‘easyJet’. It cannot be assumed that all trade marks mentioned in the articles have a reputation just because they appear therein. In other words, the fact that the earlier marks are mentioned in press does not indicate that the marks have a reputation in the market. The publications do demonstrate that the earlier marks are present in the market but they do not indicate the degree of recognition by the relevant public, if the marks are recognised by the relevant public or what the position of the marks is on the market.

Therefore, the Opposition Division concludes that the opponent failed to prove that the earlier marks are reputed or even have acquired enhanced distinctive character in the relevant territories with regard to the goods and services for which the opponent claims reputation.

Consequently, the assessment of the distinctiveness of the earlier marks 2 and 3 will rest on their distinctiveness per se. The same applies to the Earlier Mark 4, in relation to which the opponent did not explicitly claim that it is particularly distinctive by virtue of intensive use or reputation.

In the present case, neither of the earlier trade marks has a meaning as a whole for any of the relevant 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, despite the presence of a weak element in the marks as stated above in section c) of this decision.

10. Global assessment, other arguments and conclusion

The signs are visually, aurally and conceptually similar to a low degree, as they coincide in the weak element ‘EASY’, which will be understood throughout the relevant territory.

Considering all the above, the Opposition Division finds that the differences between the marks counterbalance the similarities between them. The average consumer will be able to safely distinguish the signs. The differences are, therefore, enough to exclude any likelihood of confusion on the part of the public, including the risk that consumers believe that the contested services come from the same or from economically linked undertakings as the goods offered by the opponent.

According to the principle of interdependence a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that some of the services were assumed to be identical cannot, in this case, compensate for the differences identified between the signs.

Family of marks claim

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘EASY’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

The proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

The opponent must prove that it has used the marks forming the alleged family in the marketplace. For the contested sign to trigger in the consumers’ minds an association with an opponent’s alleged family of marks, the public must be aware that various trade marks with the same characteristics exist. Therefore, the marks forming the alleged family must have been used to such an extent that the relevant public has become familiar with this family of marks as designating the goods and/or services of a particular undertaking.

The evidence submitted by the opponent during the substantiation period in support of its claim for a family of marks mentions some trade marks with the element ‘EASY’. However, the documents do not contain sufficient indications of the extent and time of use of each of these marks. The opponent did not prove that the marks allegedly forming the family are being used, by, for example, submitting invoices or other evidence of commercial transactions that could show the reality of the commercial use of the marks in the relevant territory and that goods bearing these marks were made available to consumers on the market. There is no convincing information demonstrating that consumers are aware that there is a family of marks used in the same fields as those covered by the contested trade mark.

Therefore, the opponent’s argument in relation to the family of marks is not a relevant factor in establishing a likelihood of confusion in the present case.

The opponent refers to various decisions of the Office that confirmed the opponent has a family of marks, i.e decisions of the Opposition Division B 484 008, B 1 001 694, etc.

However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The opponent refers only to the decisions and their outcomes; however, it has not submitted the same material in the present case. Under these circumstances, the Opposition Division bases its findings on only the material submitted in the present proceedings.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent also based its opposition on the following earlier marks:

• European Union trade mark registration No 10 735 496 for the word mark ‘EASYHOTEL’ registered for the goods and services in Classes 16, 39 and 43.

• European Union trade mark registration No 10 735 561 for the word mark ‘EASYBUS’ registered for the goods and services in Classes 12, 16, 36, 37, 39 and 43.

• European Union trade mark registration No 6 780 241 for the word mark ‘EASYWORKROOMS’ registered for the goods and services in Class 16, 35, 38, 39, 42 and 43.

• European Union trade mark registration No 5 230 644 for the word mark ‘EASYOFFICESPACE’ registered for the services 35, 36 and 38.

• European Union trade mark registration No 3 112 935 for the word mark ‘EASYTELECOM’ registered for the goods and services in Classes 9 and 42.

• European Union trade mark registration No 2 907 509 for the word mark ‘EASYOFFICE’ registered for the services in Classes 36, 38, 42 and 43.

• European Union trade mark registration No 2 671 097 for the word mark ‘easyInternetCafe’ registered for the services in Classes 38, 42 and 43.

• European Union trade mark registration No 10 735 553 for the word mark ‘EASYCAR’ registered for the goods and services in Classes 12, 16, 36, 37, 39 and 43.

• European Union trade mark registration No 2 610 160 for the word mark ‘EASYGROUP’ registered for the goods and services in Classes 3, 9, 12, 16, 25, 28, 32, 33, 35, 36, 38, 39, 41, 43 and 45.

These earlier rights are structured in the same manner as the ones which have been already compared, namely the element ‘EASY’ which is followed by another word or expression ‘HOTEL’, ‘BUS’, ‘WORKROOMS’, ‘OFFICESPACE’, ‘TELECOM’, ‘OFFICE’, ‘InternetCafe’, ‘CAR’. These elements are not present in the contested trade mark and they show no stronger visual, aural or conceptual coincidences. Moreover, they cover the same or a narrower scope of goods and services.

The additional elements account for visual, aural, and for the English-speaking part of the public also for conceptual differences between the signs. Therefore, the same findings apply to these earlier marks as to the ones compared above, even under the presumption that the contested services are identical to the ones covered by these earlier marks.

Furthermore, the opponent also based its opposition on the following earlier marks:

• European Union trade mark registration No 3 784 477 for the figurative mark

registered for the goods and services in Classes 9 and 42;

• European Union trade mark registration No 4 300 901 for the figurative mark registered for the goods and services in Classes 9, 38 and 42;

• European Union trade mark registration No 3 090 958 for the figurative mark registered for the goods and services in Classes 3, 6 12, 14, 16, 18, 28, 32, 33, 35, 36, 38, 39, 41, 42, 43, 45;

• European Union trade mark registration No 11 624 376 for the figurative mark registered for the services in Classes 35, 36 and 43.

These earlier marks are even less similar to the contested mark as they contain additional figurative elements which are not included in the contested mark

Therefore, the outcome of the opposition based on the above mentioned earlier trade marks cannot be different. No likelihood of confusion exists with respect to those earlier marks. Therefore, the opposition is also not well founded under Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade marks

According to the opponent, the Earlier Marks 1, 2 and 3 which have already been compared above and the earlier European Union trade mark registrations No 10 735 496 for the word mark ‘EASYHOTEL’ (‘Earlier Mark 5’), No 10 735 561 for the word mark ‘EASYBUS’ (‘Earlier Mark 6’), No 3 784 477 for the figurative mark (‘Earlier Mark 16’), No 4 300 901 for the figurative mark (‘Earlier Mark 17’) have reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 02/10/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation.

The goods and services of the earlier marks 1, 2 and 3 on which the opposition is based have already been enumerated above under the grounds of Article 8(1) EUTMR, section a). Reference is made to those lists, which are equally valid for Article 8(5) EUTMR.

The goods and services of the remaining earlier rights for which reputation was claimed are the following:

Earlier mark 5

Class 16: Paper, cardboard and goods made from these materials; printed matter; photographs; stationery; packaging materials; printed publications; books, manuals, pamphlets, newsletters, albums, newspapers, magazines and periodicals; tickets, vouchers, coupons and travel documents; identity cards; labels and tags; posters, postcards, calendars, diaries; teaching and instructional materials.

Class 39: Transport; packaging and storage of goods; travel arrangement; travel information; provision of car parking facilities; transportation of goods, passengers and travelers by air, land, sea and rail; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travelers by land and sea; airline services; baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; rental and hire of aircraft, vehicles and boats; chauffeur services; taxi services; bus services; coach transport services; rail services; airport transfer services; airport parking services; aircraft parking services; escorting of travelers; travel agency services; tourist office services; advisory and information services relating to the aforesaid services; information services relating to transportation services, travel information and travel booking services provided on-line from a computer database or the Internet.

Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotel services; hotel reservation services; hotel services for the provision of facilities for exhibitions and conferences.

Earlier mark 6

Class 12: Vehicles; vehicle parts and fittings; apparatus for locomotion by land, air or water

Class 16: Paper, cardboard and goods made from these materials; printed matter; photographs; stationery; packaging materials; printed publications; books, manuals, pamphlets, newsletters, albums, newspapers, magazines and periodicals; tickets, vouchers, coupons and travel documents; identity cards; labels and tags; posters, postcards, calendars, diaries; teaching and instructional materials.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; real estate agency services; building society services; banking; stockbroking services; financial services provided via the internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information; financial services for the purchase of vehicles; financial services relating to motor vehicles; insurance services relating to motor vehicles; insurance services relating to motor vehicles; lease purchase financing of vehicles; hire purchase financing of vehicles; provision of finance for the purchase of motor vehicles; secured loans to fund the provision of bailment of motor vehicles; secured loans to fund the provision of contract hire of motor vehicles.

Class 37: Building construction; repair; installation services; maintenance and repair of computer hardware; painting and decorating; cleaning services; vehicle maintenance and repair services; arranging for the maintenance of motor land vehicles; maintenance and repair of land vehicles; maintenance and repair of vehicles; provision of information relating to the maintenance of vehicles; refurbishment of vehicles; repair of accident damage to vehicles; repair of land vehicles; repair of vehicles; repair services relating to vehicles; service stations for the maintenance of vehicles; service stations for the repair of vehicles; servicing of vehicles; washing of vehicles.

Class 39: Transport; packaging and storage of goods; travel arrangement; travel information; provision of car parking facilities; transportation of goods, passengers and travelers by air, land, sea and rail; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travelers by land and sea; airline services; baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; rental and hire of aircraft, vehicles and boats; chauffeur services; taxi services; bus services; coach transport services; rail services; airport transfer services; airport parking services; aircraft parking services; escorting of travelers; travel agency services; tourist office services; advisory and information services relating to the aforesaid services; information services relating to transportation services, travel information and travel booking services provided on-line from a computer database or the Internet.

Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotel services; hotel reservation services; hotel services for the provision of facilities for exhibitions and conferences.

Earlier mark 17

Class 9: Electric and electronic apparatus and instruments; telecommunications apparatus and instruments; telephones and mobile telephones and accessories including handsets, battery chargers, stands, hands-free devices, cases adapted for storing mobile telephones; computer hardware and software; optical, measuring, signalling, controlling or teaching apparatus and instruments; apparatus for recording, transmission, processing and reproduction of sound, images or data; machine run data carriers; automatic vending machines and mechanism for coin operated apparatus; data processing equipment; parts and fittings for all of the aforesaid.

Class 42: Rental of access to computers.

Earlier mark 16

Class 9: Electric and electronic apparatus and instruments; telecommunications apparatus and instruments; telephones and mobile telephones and accessories including handsets, battery chargers, stands, hands-free devices, cases adapted for storing mobile telephones; computer hardware and software; optical, measuring, signalling, controlling or teaching apparatus and instruments; apparatus for recording, transmission, processing and reproduction of sound, images or data; machine run data carriers; automatic vending machines and mechanisms for coin operated apparatus; data processing equipment; parts and fittings for all of the aforesaid.

Class 38: Communication, telecommunication, broadcasting and message transmission services; mobile and fixed line telecommunication services; telephone connection services; provision of conference calling facilities; satellite communication services; transmission and reception of data and information; provision of access to the Internet; Internet services, namely, providing user access to the Internet (service providers), providing telecommunications connections to the Internet or databases, telecommunication of information (including web pages), computer programmes and other data; operation of search engines; email services; advisory and arrangement services relating to all the aforesaid; operation, rental and leasing of apparatus, instruments, equipment and components for all of the aforesaid; including, but not limited to, all the aforesaid services provided via telecommunications networks, by online delivery and by way of the Internet and the world wide web.

Class 42: Rental of access to computers.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above, under point d) of this decision. Reference is made to the findings, where it was concluded that the evidence submitted by the opponent does not demonstrate that the Earlier Marks 1, 2 and 3 acquired a high degree of distinctiveness or reputation through their use.

The same conclusion is valid for the earlier marks 5, 6, 16 and 17. As explained above, the evidence, namely the press articles which refer to the company ‘easyJet’ (such as the article stating ‘EasyJet, Europe’s second biggest budget airline, in 1995 and following its huge success extended the ‘easy’ brand to a range of no-frills businesses’, which was published on 06/01/2005) are dated more than 10 years before the date to be taken into consideration in this case, namely 24/07/2015.

There are some references to the earlier marks ‘EASYHOTEL’ and ‘EASYCAR’. The evidence shows that the opponent has a website and occasional presence on media. However, the evidence does not indicate that the opponent has built-up a brand image and enhanced trade mark awareness among the relevant public.

As a result, the evidence does not show the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that the trade marks on which the opposition is based and for which the reputation was claimed have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected also insofar as it is based on this ground.

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

Lars HELBERT

Janja FELC

Francesca CANGERI SERRANO

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.