OPPOSITION No B 2 543 489

Europe Plein Air - E.P.A. SA à directoire et conseil de surveillance, 7 Chemin du Môle, 30220 Aigues Mortes, France (opponent), represented by Desbarres & Staeffen, 18, avenue de l’Opéra, 75001 Paris, France (professional representative)

a g a i n s t

Fratelli Dionisi S.R.L., Viale Cavallotti, 153, 63822 Porto San Giorgio (FM), Italy (applicant), represented by Isea S.R.L., Via G. Carducci, 6, 62012 Civitanova Marche (MC), Italy (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 543 489 is partially upheld, namely for the following contested services:

Class 39: Escorting of travellers; motor coach rental; organisation of trips; arranging of excursions; arranging of cruises; booking of seats for travel; travel reservation; transport reservation; transport of travellers; sightseeing [tourism].

Class 43: Hotel reservations; hotels; accommodation bureaux [hotels, boarding houses].

2. European Union trade mark application No 14 091 714 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 091 714. The opposition is based on European Union trade mark registration No 2 211 159 and on French trade mark registration No 3 046 175. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION of the earlier French trade mark registration No 3 046 175

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 notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 02/09/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 07/01/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier French trade mark No 3 046 175.

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 earlier French mark registration No 3 046 175.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The opponent was informed on 24/03/2016 that, since earlier right No 3 046 175 was not substantiated within the time limit, this earlier right will not be taken into account.

According to Article 42(2) and (3) EUTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

In the present case the contested trade mark was published on 27/05/2015.

Earlier trade mark No 2 211 159 was registered on 28/02/2014. Therefore, the request for proof of use is inadmissible because it concerns a mark which, at the date of publication of the contested trade mark, had not been registered for at least five years.

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

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

1. The goods and services

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

Class 16: Printed matters intended for advertising and promoting activities related to holidays, namely holidays villages, camping, caravanning, and related to trade use of holidays activities, namely holiday villages, camping, caravanning.

Class 39: Travel arrangement; booking of seats for travel related to holidays villages, camping, caravanning.

Class 42: Services for providing food and drink; temporary accommodation.

The contested services are the following:

Class 35: Provision of an on-line marketplace for buyers and sellers of goods and services; demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; hotel management for others; organisation of promotions using audiovisual media; promotion [advertising] of travel; on-line advertising on a computer network; advertising services relating to the travel industries; advertising services relating to hotels.

Class 39: Escorting of travellers; motor coach rental; organisation of trips; arranging of excursions; arranging of cruises; booking of seats for travel; travel reservation; transport reservation; transport of travellers; sightseeing [tourism].

Class 43: Hotel reservations; hotels; accommodation bureaux [hotels, boarding houses].

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Furthermore, when comparing both specifications of services, it should be noted that some of the opponent’s services, namely temporary accommodation, were previously (in the 7th edition of the Nice Classification) classified in Class 42, whereas in the current (i.e. 10th) edition these kinds of services are classified in Class 43.

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 35

The contested demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; organisation of promotions using audiovisual media; promotion [advertising] of travel; on-line advertising on a computer network; advertising services relating to the travel industries and advertising services relating to hotels, are different forms of providing advertising services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.

Consequently, the abovementioned contested services are dissimilar to the opponent’s services in Classes 39 and 42, even though all services relate to travel or temporary accommodation.

The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising, such as printed matter, flyers and catalogues in Class 16. These goods and services are considered dissimilar. Therefore, the abovementioned contested services are also dissimilar to the opponent’s goods in Class 16.

The contested hotel management for others is dissimilar to the opponent’s services in Classes 39 and 42. Indeed, they have different purposes (management services provide business assistance, whereas the opponent’s services provide transport and accommodation), are not in competition and target different groups of consumers (management services target professional customers, whereas the opponent’s services target end-consumers). In addition, the consumer searching for transport or excursions will in all certainty not address their queries to a hotel management company (31/03/2011, R 974/2010-1, Hei Hotels & Resorts, § 22).

The opponent’s goods in Class 16 are printed materials with a very specific purpose, namely advertising and promoting holiday activities. The contested hotel management for others are services intended to support the operations of a hotel. These goods and services therefore have different natures and purposes and target different groups of consumers. As a result, the contested hotel management for others is dissimilar to the opponent’s goods in Class 16.

The contested provision of an on-line marketplace for buyers and sellers of goods and services are very specific commercial trading services with the aim of providing an electronic space for commercial purposes. These services are even further removed from the opponent’s goods and services. Therefore, they are dissimilar.

Contested services in Class 39

The contested booking of seats for travel includes, as a broader category, the opponent’s booking of seats for travel related to holiday villages, camping, caravanning. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services. Therefore, they are identical.

The contested escorting of travellers; motor coach rental; organisation of trips; arranging of excursions; arranging of cruises; travel reservation; transport reservation and transport of travellers and sightseeing [tourism] overlap with the opponent’s travel arrangement. Therefore, they are identical.

Contested services in Class 43

The contested hotel reservation; hotels and accommodation bureaux [hotels, boarding houses] are included in the broad category of the opponent’s temporary accommodation. Therefore, they 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 services found to be identical are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-speaking part of the relevant public.

The earlier mark is a figurative mark, composed of the verbal element ‘yelloh VILLAGE’ in standard yellow letters, followed by an exclamation mark in blue and green, all placed on a red oval background. The verbal element ‘VILLAGE’, in upper case letters, is smaller and is placed below the letters ‘oh’ of ‘yelloh’, which is in lower case. Finally, at the top left-hand side of the sign is the verbal element ‘CAMPING VILLAGES’, in even smaller standard white upper case letters.

The contested sign is a figurative mark composed of the verbal element ‘hello VILLAGE’ underlined by a curved line. The verbal element ‘hello’ is depicted in standard italic letters in blue, magenta, green and yellow and the verbal element ‘VILLAGE’ is located below the verbal element ‘hello’ in blue upper case letters.

The applicant claims that the element ‘yelloh’ will be associated with the English word ‘yellow’, since it is a very basic English word to designate a colour. However, this element is not similar to the equivalent word in the official language of the relevant territory, Hungarian, which is sárga (information extracted from Origo Sztaki Szótár on 30/08/2016 at http://szotar.sztaki.hu/en/search?dict=eng-hun-sztaki-dict&fromlang=eng&tolang=hun&flash=&E=1&vk=&in_form=1&searchWord=yellow&M=1&P=0&C=1&T=1). In addition, the Opposition Division considers that it is not likely that the average Hungarian consumer will associate the element ‘yelloh’ with a word in a foreign language, even though it is English. Consequently, the verbal element ‘yelloh’ of the earlier mark will be perceived by the relevant part of the public as meaningless.

Similarly, the English words ‘VILLAGE’, present in both signs, and ‘CAMPING VILLAGES’, in the earlier sign, will be perceived as meaningless by the relevant part of the public, since they are not basic English words, nor are they similar to the equivalent words in Hungarian, falu and község (information extracted from Origo Sztaki Szótár on 30/08/2016 at http://szotar.sztaki.hu/en/search?fromlang=eng&tolang=hun&searchWord=village&langcode=en&u=0&langprefix=en%2F&searchMode=WORD_PREFIX&viewMode=full&ignoreAccents=0).

On the other hand, the word ‘hello’ of the contested mark is a very basic English word that will be easily understood by the relevant part of the public, that will use it as an expression of greeting (information extracted from Origo Sztaki Szótár on 30/08/2016 at http://szotar.sztaki.hu/en/search?searchWord=hello&fromlang=hun&tolang=eng&outLanguage=eng).

Therefore, both signs are composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature that will be perceived as commonplace and banal elements rather than elements indicating the commercial origin of the services. Therefore, the verbal elements are more distinctive than the figurative elements.

Finally, the verbal element ‘yelloh! VILLAGE’ in the earlier mark is the dominant element as it is the most eye-catching. The contested sign has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘ello’ and ‘VILLAGE’, placed in a similar position in both signs. Furthermore, both signs are composed of bright colours and standard letters. However, they differ in the first letters of the central element, ‘y’/‘h’ and in the letter ‘h’ and the exclamation mark at the end of the earlier sign, which have no counterparts in the contested mark. They also differ in the additional verbal element of the earlier sign ‘CAMPING VILLAGES’, although this is depicted in smaller letters. Finally, they differ in their figurative elements, such as the combination of colours and the red oval of the earlier mark, which are nevertheless less distinctive elements.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone, § 24; 13/12/2011, R 53/2011‑5, Jumbo, § 59).

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ELLO’ and ‘VILLAGE’, present identically in both signs. The pronunciation differs in the sound of the letters ‘Y’/‘H’ placed at the beginning of the central verbal element of the signs. The signs differ in the additional verbal element ‘CAMPING VILLAGES’ of the earlier mark, which will probably be disregarded by the public when pronouncing the earlier sign because of its secondary position and size. Indeed, according to the Court ‘[a] mark which includes several words will generally be abbreviated orally to something easier to pronounce’ (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75). Finally, the signs differ in the last letter of the dominant element of the earlier sign; however, the letter H at the end of a word is usually silent and will not be pronounced by the public. Similarly, the additional figurative elements of the contested sign are of no relevance when assessing the aural similarity.

Therefore, the signs are aurally highly similar.

Conceptually, as stated above, while the public in the relevant territory will perceive the contested mark as ‘an expression of greeting’, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As stated above, some of the services are identical and target the public at large with an average degree of attention. The signs are visually similar to an average degree, aurally highly similar and not conceptually similar. Indeed, the signs coincide in four out of five or six letters of the central verbal element of the signs – which is the most dominant element of the earlier sign – as well as in the verbal element ‘VILLAGE’, all of these being distinctive for the relevant part of the public and placed in a similar position in both marks. Finally, both marks use similar bright colours and have a similar structure.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Consequently, taking into account the normal degree of distinctiveness of the earlier mark and the identity between the services, the Opposition Division considers that, in spite of the differences in the word elements, there is a likelihood of confusion because the similarities are overwhelming.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Hungarian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Peter QUAY

Marta ARTEAGA IñIGO

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.