OPPOSITION No B 2 539 495

Société Internationale de Télécommunications Aéronautiques, Avenue des Olympiades 2, 1140 Evere, Belgium (opponent), represented by Marks & Clerk LLP, 90 Long Acre, London WC2E 9RA, United Kingdom (professional representative)

a g a i n s t

Pošta Slovenije d.o.o., Slomškov trg 10, 2000 Maribor, Slovenia (applicant), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative).

On 19/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 539 495 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 13 620 216. The opposition is based on European Union trade mark registrations No 186 577 , No 2 266 930 ‘SITATEX’ and No 9 955 221 ‘SITA CREATE SUCCESS.TOGETHER’, and United Kingdom trade mark registration No 1 353 728 ‘SITA’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

SUBSTANTIATION-earlier United Kingdom trade mark registration No 1 353 728

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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 shall 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) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the evidence filed by the opponent consists of an extract from the database of the United Kingdom Intellectual Property Office, dated 16/09/2014. The extract shows that earlier United Kingdom trade mark registration No 1 353 728 was filed on 03/08/1988 and registered on 22/10/1990. It also indicates that the renewal date is 03/08/2015.

On 29/06/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to substantiate the earlier right and submit further material, namely until 03/11/2015. Following a request by the opponent, the Office extended the time limit until 03/01/2016.

According to the certificate submitted by the opponent, the registration of earlier United Kingdom trade mark registration No 1 353 728 was due to expire on 03/08/2015. The time limit for substantiation of the earlier right expired on 03/01/2016. Therefore, according to Rule 19(2)(a)(ii) EUTMIR, the opponent had to submit renewal certificates for the earlier right on or before 03/01/2016.

The opponent did not submit any further evidence concerning the substantiation of the earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

Therefore, the Opposition Division will proceed with the examination of the opposition in regard to the other earlier rights on which the opposition is based.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claimed that its earlier rights European Union trade mark registrations No 186 577 , No 2 266 930 ‘SITATEX’ and No 9 955 221 ‘SITA CREATE SUCCESS.TOGETHER’ are reputed in the European Union for all the goods and services, covered by the registrations.

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 shall 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.

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 abovementioned 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 trade marks have a 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 06/01/2015. Therefore, the opponent was required to prove that the trade marks 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, which are all the goods and services the earlier marks are registered for, namely:

For the earlier EUTMR No 186 577:

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); printers' type; printing blocks.

Class 35: Advertising and business services.

Class 38: Services in relation to telecommunications and the transmission of all categories of data necessary to the operation of air transport undertakings and organisations whose principal activity is in the field of air transport.

Class 42: Surveying; drawing up specifications and functional analyses in the field of telecommunications and data processing.

For the earlier EUTMR No 2 266 930:

Class 9: Telecommunications apparatus and equipment including apparatus for telecommunications transmission; common user terminal equipment, computer programs, computer hardware and software; instruction manuals and publications in electronic format sold as a unit; electrical, electromechanical apparatus, equipment, instruments, devices and units for recording, transmitting, reproducing and processing information; peripherals or information carriers or media associated with such processing including magnetic tapes and ribbons, perforated tapes and ribbons; all of the aforementioned relating to operations and processes for the airlines, airports, aerospace, freight, tourism and travel industries, governmental, intergovernmental and statutory enterprises and authorities, airline reservations, car rentals, automatic hotel room and accommodation availability and reservations; electronic systems relating to airline reservation systems, car rental systems, automatic hotel room and accommodation availability and reservation systems.

Class 35: Services for electronic and mechanical recording of information and records; management of computerized files and operations; business management assistance; commercial or industrial management assistance, computerized location and tracking of luggage, freight and goods; office machine and equipment rental; statistical information; consultancy services in this class including business consultancy services designed to improve the efficiency of operations and processes for the airlines, airports, aerospace, freight, tourism and travel industries, governmental, intergovernmental and statutory enterprises and authorities, airline reservations, car rentals, automatic hotel room and accommodation availability and reservations; services for the integration, storage and processing of data and information by telecommunications, Internet, facsimile, telex, telephone, telegram, electronic, computer, cable, radio, radiopaging, teleprinter, teleletter, electronic mail, television, microwave, laser beam or satellite communications means; services for the integration, provision or display of information for business purposes from a computer-stored data bank.

Class 38: Services for the transmission of data and information by telecommunications, Internet, facsimile, telex, telephone, telegram, electronic, computer, cable, radio, radiopaging, teleprinter, teleletter, electronic mail, television, microwave, laser beam or satellite communications means; message collection and transmission services; services for the transmission of information for business purposes from a computer-stored data bank; on-line information services relating to telecommunication operations and processes for airlines, airports and aerospace, freight, tourism and travel industries, governmental, intergovernmental and statutory enterprises and authorities; services for the transmission of voice and data between linked computer networks; business services being the systemization, integration and networking of communications.

Class 42: Computer services in this class including computer programming and programming for the integration of computer systems; computer systems analysis; computer rental; electronic equipment rental; technical research; consultancy services in this class including consultancy relating to the design and installation of computer services requiring a high degree of technical expertise and qualification, consultancy in the field of computer hardware and software; engineering services including engineering studies; drawing up of specifications and functional analysis for the airlines, airports, aerospace, freight, tourism and travel industries, governmental, intergovernmental and statutory enterprises and authorities, airline reservations, car rentals, automatic hotel room and accommodation availability and reservations.

For the earlier EUTMR No 9 955 221:

Class 9: Communications apparatus and instruments; equipment relating to operations and processes for the airlines, airports, aerospace, freight, tourism and travel industries, and airline reservations, check-in, boarding control and ticketing namely, computer terminals, computer operating programs, computer hardware, computer software, computer software for use in the operation of airline passenger departure control systems, computer software for database access, weighing apparatus, namely, scales, and instruction manuals and publications in electronic form sold with all of the above as a unit; electronic systems comprised primarily of computers and computer peripherals for airline reservations, air travel check-in and boarding control, electronic ticketing, and electronic communications with airline reservation systems and databases; computer software, computer hardware, hardware systems associated with verification, identification and authentication; readers and reading apparatus and instruments; computer terminals; computer programs; computer memories; computer interfaces; microprocessors; modems; part and fittings for all the aforesaid goods.

Class 35: Business services; outsourcing services; providing office and business management services and information compilation, storage and retrieval services in the field of air transport and travel, for others; services relating to operations and processes for the airlines, airports, aerospace, freight, tourism and travel industries, and airline reservations, check-in, boarding control, and ticketing in the nature of records management services, namely, document indexing for others, data processing services, computerised database management, providing statistical information for business and commercial purposes, business management consultation services designed to improve the efficiency of operations and processes for the airlines, airports, aerospace, freight, tourism and travel industries, governmental, intergovernmental and statutory enterprises and authorities, and airline reservations, computerised word processing services, namely, the integration and processing of data and information through telecommunications, and providing an on-line computer database featuring trade information in the field of aviation, airline passenger management, and air travel; customer services in the field of air travel, airport baggage and passenger check-in services, and travel management; computerised information retrieval services; advice, information and consultancy relating to all the aforesaid services.

Class 38: Telecommunication services in the nature of transmission of data, electronic data transfer services, network services, all relating to computerised information retrieval systems; communication services relating to the provision of on-line electronic data transmission facilities for the communication and distribution of information, images and electronic messages by computerised databases; data communications and bulletin board services; distribution services for data, images and electronic messages by any means of communication; services relating to operations and processes for the airlines, airports, aerospace, freight, tourism and travel industries, and airline reservations, check-in, boarding control, and ticketing in the nature of electronic transmission of messages and data, electronic transmission of data and documents via computer terminals for business purposes from a computer-stored data bank and electronic, electric, and digital transmission of voice, data images, signals and messages; electronic messaging services relating to airline reservations, air travel check-in and boarding controls, electronic ticketing, and communication with airline reservation systems and databases, namely, electronic queuing services; advice, information and consultancy relating to all the aforesaid services.

Class 39: Transportation and travel services; booking and reservations services for transportation and travel; airline seat inventory information services; providing travel reservations and ticketing services for others; computerised travel directory services for the travel industry; provision of travel and transport information on an interactive display; reservation and booking of travel and transportation; provision of travel and flight information including flight delays, cancellations and flight or gate changes; logistics services; tracking and monitoring the transportation, distribution and delivery of goods; co-ordination services relating to all of the aforesaid; advice, information and consultancy relating to all the aforesaid services.

Class 42: Technical consultation, research and development, design services, software and firmware installation services, integration services and technical support services; services relating to the use of a computer database and the leasing/rental of a computer database; computer services, namely, creating indexes of information, sites and other resources available regarding travel information on computer networks; computer time sharing; services relating to operations and processes for the airlines, airports, aerospace, freight, tourism and travel industries, and airline reservations, check-in, boarding control, and ticketing specifically computer services for others, namely, computer programming and integration of computer systems and networks, computer rental services, computer consultation services featuring the design of computers and computer services requiring a high degree of technical expertise and qualifications, consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others, technical support services, namely, troubleshooting of computer hardware and software problems, and engineering services; advice, information and consultancy relating to the all of the aforesaid services.

Class 45: Security and verification services; security services for the protection of property and individuals; security services for the protection of passengers; airport security services; airline passengers security services; security services relating to access control, airport security, border control and identification; passenger screening services; security checking; airport safety services; airline passenger safety services; screening of individuals; inspection and monitoring of property and individuals; strategic planning for passenger identification, verification, authentication and screening; passport control services; identity validation, verification and authentication services; provision of verification, identification and authentication facilities; safety management services; advice, information and consultancy relating to all the aforesaid services.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 04/01/2016 (within the prescribed deadline), the opponent submitted the following evidence:

• Five documents entitled ‘SITA Group Activity Report’, for the years 2010-2014, and four documents, entitled ‘SITA Group Consolidated Financial Statements’, for the years 2010-2012 and 2014. The following sign: is placed on the first and some of the other pages of all documents. The Reports largely refer to ‘SITA’ as a company name or the name of a group of companies. The Reports further provide information on the commercial activities of the company (Group) during the respective year, which mostly point to services related to airport communications.

For instance, in the Report from 2010, it is claimed that the company (Group) is ‘the world’s leading provider of air transport industry networking, air-ground communications, government solutions, airport infrastructure and cargo IT services. The following figures are further claimed:

• ‘11% growth for SITA’s newer “transformation” services, which include high value-added communications and infrastructure services.

• 46% growth for SITA’s voice services, reflecting the move towards unified communications, which brings together voice, data and video’.

According to the same Report, a highlight in the company’s activity is ‘SITA’s ATI Cloud-designed for the global air transport industry’. The Report also refers to a number of communication platforms and services, such as ‘SITA Messaging Services’ (explained to be ‘transport community’s messaging services’); ‘SITA Airport Hub’ (‘cuts communication costs and delivers better services levels by using shared infrastructure’); ‘SITA E-Commerce’ (‘processed in excess of 2,6 million bookings online in 2010’). The same Report also refers to ‘SITATEX’ in regard to a communication platform service.

The Reports further refer to different airports where the services are provided. For instance, the Report from 2013 refers to airports in France, London (UK), Rome (Italy), Germany, etc. The same Report states that: over 150 airlines are using ‘SITA’s Horizon Portfolio’ (where ‘Horizon E-commerce’ is explained to be ‘new e-commerce and merchandising platform for passenger sales over airline web sites’) and that 126 million passengers were boarded in 2012 and 13 500 aircrafts use SITA’s aircraft communications services. The report also states that there are 98.2% ‘survey respondents absolutely satisfied, very satisfied or satisfied with SITA’s services’. However, there is no information on who has performed the survey, how many respondents were asked, the questions that were asked and the method of evaluating/ calculating the gathered data.

The reports also give some information about awards given to the company (Group). For instance the Report, dated 2014, lists, inter alia: ‘IT Company of the Year, 2015, for the second time in four years, Air Transport News’ and ‘Best Airport IT Service provider 2014, Emerging markets Airport Awards’.

The ‘Consolidated Financial Statements’ provide information on the financial performance of the Group. For instance, for 2011, the following information is given: ‘SITA Group generated turnover of US$ 1.517 billion’; ‘the Group’s capital expenditure on capitalized development costs amounted to USD82.0 million’; the number of employees is stated to be ‘over 5 000 people worldwide’. For 2012, the ‘Statements’ claims that the Group is present in approximately 200 countries and territories through subsidiaries and branches and that ‘the underlying passenger volumes grew by 3.8% to 126 million Passengers Boarded and E-tickets issued increased by 11% to 143 million’. In the same document in its ‘Investment and Capital Expenditure’ part, it is stated that ‘an additional 50 migrations were completed in the year- and Voyager- which is in its final stages of development’

• A document entitled ´Sitatex Online´, dated 2011, apparently originating from the opponent (indicated that it is SITA copyright) with the following sign placed on the first page. The text refers to message (mail) submission type of services, as it states that ´SITATEX´ offers a secure and cost-efficient operational mail solution that simplifies how air transport industry professionals collaborate and exchange information. It is further explained that the electronic exchange of messages ´supports airline commercial activities, aircraft operations and maintenance, passenger, baggage and cargo handling, as well as the transmission of data to governments´;

• Press clips:

  • an article from ´International airport review´, dated 30/11/2011, entitled ´20 000 users of SITATEX offered new cost-effective web-based service´ and which indicates that the author of the text is ‘SITA’. It is stated that ´Users of SITATEX currently exchange over 800 million industry-standard operational messages every year to more than 20 000 recipients across the air transport industry. […] the ground-breaking community service, SITATEX Online, is delivered using a software-as-a-service model, as part of SITA’s cloud strategy, making the solution simple and cost-effective to implement and operate’. It is further explained that ‘[p]rovided as a software-as-a-services (SaaS), SITATEX Online is device and operating system independent’. Finally, the article states that ‘SITA’s community messaging services are used by more than 800 airlines, 700 airports and 250 airfreight customer worldwide’;

  • an excerpt from ‘Airport suppliers’, entitled ‘Information and communication technology (ICT) provider for the air transport industry’, which refers to the above quoted article, as the text of the latter is inserted in its entirety. It is stated that ‘SITA is the number one ICT provider of integrated IT business solutions and communication services for the air transport industry’ and that ‘SITA works closely with every sector of the air transport community, innovating, developing and managing business solutions over the world’s most extensive network, complemented by consultancy in the design, deployment and integration of IT solutions’. The following sign is depicted on the side;

  • two articles from ‘Airport Technology Market & Customer Insight’, dated 30/11/2011, one entitled ‘New Cost-Effective Web-Based Service Offered to 20 000 Users of SITATEX’ and containing the same text as that listed above, also indicating that the text is ‘by SITA’; and the second article from the same source is entitled ‘SITA unveils web/based messaging platform for air transport industry’, dated 01/12/2011, containing the same type of information about the launch of ‘a web-based version of the messaging platform Sitatex Online’;

  • a printout, which refers to ‘International Airport Antwerp’ (www.itce.be) as a source. The printout bears the title ‘ITCE Completes delivery of SITATEX on its virtual platform for a highly secured governmental organisation’. It is mentioned in the text that ‘[w]ith a solution offered by ITCE, the SITATEX TypeB messages can now be highly securely accessed anywhere and anytime’ and it also refers to ‘ITCE hosted solution in combination with SITA’s SITATEX and TypeB Messaging’, thus giving information that the text concerned a service which combines the efforts of ‘ITCE’ (the source of the text) and the opponent;

  • a printout from ‘Airport technology Update’ (AviationPros.com). It states, inter alia, that ‘AvFinity’ has announced that it was selected as a preferred partner of ‘SITA’s operation-critical communications solutions to the air transport community in North America’;

• An undated printout, the source of which is unclear. It bears the headline ‘The biggest airline software and IT products database’. It gives some technical specifics for ‘SITATEX Software Developer Kit by SITA’;

• Non-translated documents entitled: ‘Tecnologia Inteligente, Aeroportos Mais Inteligentes’ (in Portuguese). The documents bear a copyright symbol for 2015 and 2016; ‘Transformando La Operación De Compañías Aéreas En Los Aeropuertos Usando Medios Moviles´ (in Spanish), dated 2010; ´A Conexão de 25 Minutos´ (in Portuguese), dated 2012; ´Eventos Deportivos Mundiales´ (in Spanish), dated 2011; ´Eventos Esportivos Mundiaais´ (in Portuguese), dated 2012; ´Conferenza SITA-Universita´ Di Bologna´ (in Italian), dated 2012; ´Reinventar Um Aeroporto Movimentado Para A Copa Do Mundo´ (in Portuguese), dated 2015; ´O Hub Da Sua Escolha´ (in Portuguese), dated 2012; ´Pasajeros Complacidos. Aeropuerto Exitoso.´ (in Spanish), dated 2016; ´Visão Compartilhada, Responsabilidade Compartilhada´ (in Portuguese), dated 2012; ´Tecnología Inteligente Para Aeropuertos Más Inteligentes´, dated 2015; and an excerpt from a newspaper ´Behörden Spiegel´ in German, dated 2011. Some of the pages of the documents contain the following signs or ;

• several pages in different languages (Portuguese, French, Italian, Spanish, Russian) without clear indication of the source/ some of them appear to be from internal document of the company (such as reports).

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

With regard to the documents submitted in a language different from the language of the proceedings, it is noted that, pursuant to Rule 19(2)(c), Rule 19(3) and Rule 98 EUTMIR, the evidence that the earlier right has a reputation must be filed in the language of the proceedings or accompanied by a translation within the time limit for substantiation of the earlier right on which the opposition is based. In the case at issue, the opponent was given until 03/01/2016 to substantiate its earlier rights (following the letter of the Office sent to the opponent on 11/11/2015). The opponent did not submit a translation of the articles in question. However, according to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Since the documents that are not in the language of the proceedings are part of the evidence submitted to substantiate the earlier marks with a reputation, it follows that, as a translation was not submitted (neither of a document as a whole nor of a material part of it) within the substantiation deadline, these cannot be taken into account in the present proceedings.

As far as the rest of the evidence is concerned, most of it derives directly from the opponent. The submitted Reports and Statements, even though originating from the opponent, cannot be disregarded, but they need to be supported by additional, independent party evidence, such as statements from the chamber of trade, proof showing the opponent’s participation in trade fairs and exhibitions, statements from customers, independent press articles published in specialised literature, etc.

This is clearly not the case with the submitted press clips, as on some of them it is indicated that they originate from the opponent or they are linked to the text, which originates from the opponent. Furthermore, most of them circulate the same information piece about the launch of the web-based ‘SITATEX’ service. The rest of the submitted press clips appear to originate from companies which offer a combined service with the opponent and thus could not be considered independent sources of information.

Despite showing some use of some of the earlier rights for part of the relevant services (mostly communications in the air transport sector), the evidence does not provide information about the recognition of the earlier signs in relation to these services. The claimed figures of served customers and turnover are not supported by any documents originating from independent sources. Furthermore, there is no clear indication as to what turnover could be attributed to the European Union, being the relevant territory in this case, neither how or whether this turnover is related to use of the specific sign for which the reputation is claimed. Even though, there are some territorial indications, suggesting the European Union (such as different airports in the Member States) most of the figures provided are given in US dollars and they are summarized results from the activities of the company (Group) worldwide. Finally, the provided in some Reports data about customers’ satisfaction figures and given awards is not supported by any other documents, such as the surveys themselves or the award certificates.

The evidence does not indicate the market share of the trade marks or the extent to which the trade marks have been promoted. The financial and operational performance indicators have not been put into the context of the market and competitors in question. It appears that the opponent’s activities are directed at specialist circles in the air transport communications, therefore it cannot be expected that the evidence shows advertisements published on mass media. However, in the absence of hardly any evidence from independent sources, the opponent’s submissions, notwithstanding the fact that they contain audited and publicly available annual reports, are insufficient for establishing that there is at least a certain degree of knowledge of the opponent’s marks in the relevant territory for the goods and services at issue.

As a result, the evidence is insufficient to 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 its trade marks have a reputation. For the sake of completeness, the Opposition Division concludes that the evidence submitted by the opponent does not suffice as to demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use either.

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.

Therefore, the Opposition Division will proceed with the examination of the opposition on the ground of Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 186 577.

1. The goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); printers' type; printing blocks.

Class 35: Advertising and business services.

Class 38: Services in relation to telecommunications and the transmission of all categories of data necessary to the operation of air transport undertakings and organisations whose principal activity is in the field of air transport.

Class 42: Surveying; drawing up specifications and functional analyses in the field of telecommunications and data processing.

The contested goods and services are the following:

Class 9: Ticket dispensers; Answering machines; Cd roms; Readers [data processing equipment]; Electronic agendas; Publications (Electronic -), downloadable; Electronic notice boards; Facsimile machines; integrated circuit cards (smartcards); Coaxial cables; Encoded magnetic cards; Compact discs [audio-video]; Magnetic encoders; Magnetic data carriers; Mechanisms for coin-operated apparatus; Counter-operated apparatus (Mechanisms for -); Meters; Microprocessors; Modems; Computer hardware monitors; monitors ( computer programs); Navigation apparatus for vehicles (on-board computers); Computer operating programs, recorded; fibre (fibre (AM)) optic cables; Optical character readers; Optical discs; Optical data carriers; Letter scales; Cell phones; Processors [central processing units]; Computer peripheral devices; Computer programs (downloadable computer software); Computer software, recorded; Radio pagers; Clocks (time recording devices); Satellite navigational apparatus; Adding machines; Scanners (data processing equipment); Apparatus to check franking; Money counting and sorting machines; Meters; Printers for computers; Magnetic tape units for computers; Video screens; Video telephones; Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; 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, computers; Fire-extinguishing apparatus.

Class 35: Secretarial services; Commercial information agencies; Tax preparation; Distribution of samples; Economic forecasting; Photocopying services; Data search in computer files for others; Compilation of information into computer databases; Rental of vending machines; Office machines and equipment rental; Bill-posting; Opinion polling; Direct mail advertising; Publication of publicity texts; Word processing; Rental of advertising space; Rental of advertising time on communication media; Publicity material rental; On-line advertising on a computer network; Arranging newspaper subscriptions for others; Organization of exhibitions for commercial or advertising purposes; Organization of trade fairs for commercial or advertising purposes; Outdoor advertising; Business management assistance; Business appraisals; Business information; Business inquiries; Business surveys; Business organization consultancy; Business management of hotels; Sales promotion for others; Demonstration of goods; Publicity columns preparation; News clipping services; Dissemination of advertising matter; Publicity; Advertising by mail order; Publicity agencies; Publicity; Document reproduction; Systemization of information into computer databases; Telephone answering for unavailable subscribers; Statistical information; Public relations; Transcription of communications [office functions]; Market research; Import-export agency services; Computerised file management; Advertising; Business management; Business administration; Office functions.

Class 38: Electronic mail; Facsimile transmission; Information about telecommunication; Rental of message sending apparatus; Cable television broadcasting; Cellular telephone communication; Communications by computer terminals; Communications by fiber [fibre] optic networks; Rental of facsimile apparatus; Rental of telephones; Rental of telecommunication equipment; Providing user access to global computer networks; Providing telecommunications connections to a global computer network; Paging services by radio, telephone or other electronic communications systems; Message sending; Transmission of telegrams; Transmission of telegrams; Computer aided transmission of messages and images; Satellite transmission; Electronic bulletin board services ( telecommunications services); Telephone services; Communications by telephone; Ticker tape services; Communications by telegrams; Telecommunications routing and junction services; Teleconferencing services; Telex services; News agencies; Wire service; Telecommunications.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Consultancy and advice in the field of computers, computer systems, computer software and design of computer software for business purposes; Computer programming; Leasing, hire and rental of computers, computer systems and computer software; Computer software development.

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

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 assumed to be identical are directed at the public at large, but also at some business customers with specific professional knowledge or expertise, for instance those looking for business management solutions (e.g. business management in Class 35). The degree of attention may vary from average to higher than average depending on the specific price and designated purpose of the respective goods or services.

3. The signs

	PosiTa
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark, consisting of the word ´SITA´, written in blue uppercase letters in a comparatively standard typeface, with the crossbar of the letter ´A´ being prolonged towards the right. For the majority of the relevant public in the relevant territory, for example for the English, French, Italian and Dutch-speaking part of the relevant public, the element has no meaning. For part of the relevant public, for example the Slovenian- and Romanian-speaking part, the element will be associated with the concept of ´sieve(s)´. It follows that the element ´SITA´ has a normal degree of distinctiveness for the relevant goods and services.

The contested sign is a word mark, consisting of the element ´PosiTa´, which has no meaning in the languages spoken nowadays in the relevant territory. The term ‘posita’ itself has a meaning in Latin, namely posita something placed, from pōnere, to put, place. The relevant public is not used to Latin words in the context of the relevant goods and services, and therefore, the element ´PosiTa’ would not be endowed with any particular meaning. It follows that the element ‘PosiTa’ has a normal degree of distinctiveness for the relevant goods and services.

The applicant claims that the earlier mark will be understood in the meaning of ‘Sita- wife of the Hindu god Rama´; or in the meaning of one from a variety of acronyms, such as ‘Society of Information Theory and Its Applications’. It is also claimed that the contested sign will be perceived by the English-speaking public in the meaning of the word ‘posit’ as in ‘postulate’. However, it could not be expected that in regard to the relevant goods and services, the relevant public would associate the earlier sign with the specific religious meaning claimed by the opponent. Furthermore, the applicant provides no evidence that the relevant public would be familiar with the claimed acronyms or that the contested sign will be associated with the word ‘posit’. Therefore, the applicant’s arguments must be set aside.

Visually, the signs coincide in the sequence of letters ‘SITA’, being all the letters of the earlier mark and the last four letters of the contested sign. However, they differ in the blue colour and graphical representation of the earlier mark and in the first two letters, namely ´P-o´ in the contested sign. Furthermore, the signs differ in the length of their verbal elements, while the earlier mark contains four letters; the contested one contains six letters.

The beginnings of the signs are completely different. While the earlier mark starts with the letters ´S-I´, the contest one starts with the letters ´P-o´, placed before the shared sequence of letters. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the differing beginnings are significant for the visual perception of the signs under comparison.

It follows that the signs are visually similar only to a low degree.

Aurally, the pronunciation of the signs at most coincides in the sounds of the sequence of letters ´S-I-T-A´, being all the letters of the earlier mark and the last four letters of the contested sign. For part of the public (such as the Dutch –speaking part, where the letter ´S´ of the earlier mark will be pronounced as [s], while in the contested sign rather as [z]) the signs would coincide in the pronunciation of the last three letters, namely ´ITA´ of both signs. The pronunciation differs in the sounds of the first two letters ´P-o´ of the contested sign, which have no counterparts in the earlier mark; as well as in the light variation of the sound of the letter ‘S’ in both signs for part of the relevant public (such as the Dutch-speaking one). The signs, furthermore, differ in the number of their syllables, while the earlier mark contains two syllables, namely ´SI-TA´, the contested one contains three syllables, namely ´PO-SI-TA´ with the differing syllable ´PO´ in the beginning of the contested sign and thus clearly perceived by the public on the relevant territory. The different number of syllables of the signs in comparison renders them different rhythm and intonation.

It follows that the signs vary from aurally similar to a low degree to an average degree, depending on the respective language.

Conceptually, while part of the public in the relevant territory will perceive the earlier mark in the meaning specified above, the other sign would not be associated with any particular meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

For the majority of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for the majority of the relevant public.

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 a reputation and enjoys a high degree of recognition among the relevant public in the European Union in connection with all the goods and services for which it is 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, where it was concluded that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods and services are assumed to be identical to the goods and services of the opponent. The degree of attention when choosing the relevant goods and services may vary between average and higher than average.

It has been established that the signs visually coincide in the sequence of letters ´SITA´, being all the letters of the earlier mark and the last four letters of the contested sign. However, as it was explained above, the consumers tend to focus on the beginning of the signs, which in the case at issue are entirely different. Furthermore, the additional two letters ‘P-O’ of the contested sign, placed in front of the shared sequence of letters ‘SITA’ are rendering different length of the signs, namely four versus six. This difference is clearly noticeable as the strings of letters in both signs are not particularly long. The aural differences of the signs in comparison, analysed above, are leading to different rhythm and intonation when the signs are communicated orally.

Therefore, the additional letters (syllable) of the contested sign is clearly perceivable and sufficient to exclude any likelihood of confusion between the marks in comparison even for identical goods and services. The different impressions of the signs in comparison are further strengthened by the blue colour and graphical representation of the earlier sign. Finally, the sings could not be linked on a conceptual level.

Therefore, the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered reasonably well informed and reasonably observant and circumspect, might believe that the goods and services assumed to be identical come from the same undertaking or, as the case may be, from economically-linked undertakings.

The opponent has also based its opposition on the following earlier trade marks: European Union trade mark registrations No 2 266 930 ‘SITATEX’ and No 9 955 221 ‘SITA CREATE SUCCESS.TOGETHER’.

The other earlier rights invoked by the opponent are not any more similar to the contested mark than the sign already compared above. This is because they contain additional letters and syllable (‘TEX’) in the case of the earlier EUTMR No 2 266 930 and additional elements (‘CREATE SUCCESS.TOGETHER’) in the case of the earlier EUTMR No 9 955 221, which are clearly differing from the beginning ‘PO’ of the contested sign, not only as letters and sound combinations but also as positions within the sign. It is unlikely that the relevant consumer would dissect the common sequence ‘SITA’ from the contested sign as to associate it with the earlier marks. Therefore, the outcome cannot be different even for identical goods and services; no likelihood of confusion exists with respect to these other earlier rights.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to assess the evidence of use filed by the opponent and listed above.

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

Vanessa PAGE

Eamonn KELLY

Volker MENSING

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.