OPPOSITION No B 2 634 270

The Republic Of Cyprus, Ministry of Finance, Michalaki Karaoli street and Grigori Afksentiou street, 1439 Nicosia, Cyprus (opponent), represented by Cocalis & Partners Law Firm, Solonos 14, 10673 Athens, Greece (professional representative)

a g a i n s t

Nikolaos Tsamopoulos, egnatia 108, 55535 Thessaloniki, Greece (applicant), represented by Vasilis Mantzikas, 68, Solonos Str., 106 80 Athens, Greece (professional representative).

On 12/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 634 270 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 648 216 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 648 216 for the word mark ‘U S Cyprus Airways’. The opposition is based on, inter alia, the following earlier marks:

 European Union trade mark registration No 2 729 473, for the figurative mark .

 Cyprus trade mark registration No 44 471, for the figurative mark .

The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR in relation to the above earlier rights.

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

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

a) The goods and services

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

EUTM No 2 729 473

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 39: Transport; packaging and storage of goods; travel arrangement.

Cyprus trade mark registration No 44 471

Class 33: Alcoholic beverages.

The contested goods and services, after a partial limitation followed by an absolute ground examination, are the following:

Class 16: Printed matter; stationery and educational supplies; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; disposable paper products; books; blank forms; appointment books.

Class 39: Arrangement of travel to and from hotels; airport check-in services; ground support passenger handling services; airport passenger shuttle services between the airport parking facilities and the airport; loading and unloading of airplanes.

Class 43: Hotels; services for providing food and drink.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 goods in Class 16

The contested printed matter; books are identically contained or included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested stationery and educational supplies; blank forms; appointment books are identically contained, included in, or overlap with the opponent’s stationery. They are identical.

The contested disposable paper products are included in the broad category of the opponent’s paper, cardboard and goods made from these materials, not included in other classes. Therefore, they are identical.

The contested bags and articles for packaging, wrapping and storage of paper, cardboard or plastics are at least similar to the earlier plastic materials for packaging (not included in other classes). These goods coincide in their method of use, as well as in their distribution channels and relevant publics to the extent that they serve the same purpose, namely packaging. While some of the goods have the same nature, for instance the packaging materials of plastic, the remaining goods(those of paper and cardboard) are in competition with the opponent’s goods since they may represent eco-friendly alternatives of packaging, i.e. paper versus plastic.

Contested services in Class 39

The contested loading and unloading of airplanes overlap with the opponent’s packaging and storage of goods. Therefore, they are identical.

The contested arrangement of travel to and from hotels; airport passenger shuttle services between the airport parking facilities and the airport; airport check-in services are included in or at least overlap with the earlier mark’s travel arrangement. Therefore, they are identical.

The contested ground support passenger handling services are similar to the opponent’s transport since these services may be complementary to them. Furthermore, they may coincide in distribution channels, as well as in their providers.

Contested services in Class 43

The contested hotels are similar to the opponent’s travel arrangement (of Class 39) to the extent that they coincide in their providers (i.e. travel agencies), relevant public and distribution channels.

The contested services for providing food and drink are similar to a low degree to the opponent’s alcoholic beverages of Class 33 of the earlier national trade mark to the extent that these goods may coincide in their providers/producers, as well as in their distribution channels. Indeed, the Court has established that there is a certain complementary relationship between such goods and services to the extent that alcoholic beverages may be produced and distributed on the premises of the venues providing drinks (17/03/2015, T‑611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T‑213/09, Yorma’s, EU:T:2011:37, § 46).

b) Relevant public — degree of attention

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large, as well as at business customers with specific professional knowledge or expertise, to the extent that professional transport and packaging services in Class 39 are concerned.

The public’s degree of attentiveness may vary from low to above the average, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. In particular, it would be low in relation to some of the goods in Class 16 that may be frequently purchased and have a rather low price; by contrast, it will be above average in relation to services such as travel arrangement or transport since these may be related to significant investment by the purchaser, for which a greater degree of reliability will be sought.

c) The signs

EUTM No 2 729 473 CY TM No 44 471	U S Cyprus Airways
Earlier trade marks	Contested sign

The relevant territories are the European Union for the earlier EUTM and Cyprus for the remaining sign.

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, for reasons of procedural economy, the Opposition Division will focus the comparison of the signs on the Greek-speaking part of the public, to the extent that this is the relevant public in relation to the national earlier right examined above.

The word ‘AIRWAYS’ will be understood by most of the relevant public as a reference to ‘a defined corridor that connects one specified location to another at a specified altitude, along which an aircraft that meets the requirements of the airway may be flown’. When connected with the word ‘Cyprus’ (which will be generally known by consumers for its international use in common parlance), the entire expression forming the marks will be associated with the geographical origin of the goods/services in question. The expression ‘Cyprus Airways’ as such is considered to have a lower distinctive character in relation to services broadly related to transport and travel arrangement (Class 39), as it directly indicates that the services in question are provided by an airline company originating from Cyprus. In addition, this element may be allusive to the services in Class 43 (covered by the contested application) as it suggests that these services are provided by a company supplying the aviation industry. As a result, the impact of this expression is somewhat limited when assessing the likelihood of confusion between the marks at issue with respect to the above services. Moreover, the additional letters ‘U S’ of the contested sign may be seen as a general reference to the ‘United States’, especially in connection with the abovementioned services, since consumers are usually exposed to companies from different countries bearing the names of said countries. Consequently, this element also has somewhat lower than normal distinctiveness to the extent it may refer to a destination of travel and the services thereof.

However, the above verbal elements are neither descriptive nor allusive in relation to the remaining goods and services and may be considered to have a normal level of distinctiveness in relation to them. Lastly, even if some of the terms forming the marks convey no meaning at all for the relevant consumers (e.g. airways), they will still remain distinctive in relation to all the goods and services.

As regards the figurative components in the earlier marks (the fanciful device referred to by the opponent as a ‘flying mouflon’), although in the opinion of the Opposition Division they evoke no clear concept and are attributed with a normal degree of distinctiveness as a whole, these elements will still be paid less attention than the verbal elements composing the signs. Indeed, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually and aurally, the signs coincide in the verbal elements ‘Cyprus Airways’ and differ in the additional two letters ‘U S’ in the contested sign, as well as in the figurative components of the earlier marks, respectively. Taking into account the degree of distinctiveness of the elements forming the marks, and their impact within the signs as explained above, it is considered that the marks are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning produced by their coinciding parts and the additional elements that the signs bear will either convey no clear concept or will be given less weight due to their lower distinctive character, as discussed above, the signs are conceptually similar at least to an average degree.

d) Distinctiveness of the earlier marks

The opponent claimed that the earlier trade marks enjoy some recognition, inter alia, among the Cypriot public and provided some evidence, in particular the annual report of Cyprus Airways (1987), entitled ‘40 years of services 1947-1987’ (Exhibit 35), accompanied by a reasoned statement elaborating on the alleged reputation of the earlier mark. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. The distinctiveness of the earlier marks must be seen as normal, despite the presence of elements with lower than average distinctiveness in relation to some of the services, as addressed in section c) above.

e) Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar to varying degrees and the degree of attention of the relevant public will vary between low and above average for the reasons mentioned above. The earlier marks enjoy a normal degree of distinctiveness as a whole.

Overall, the signs are visually, aurally and conceptually similar at least to an average degree, on account of the coinciding verbal part ‘Cyprus Airways’.

In general, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, despite the finding that the coinciding parts of the marks have somewhat limited distinctiveness in relation to the services in Classes 39 and 43, this cannot itself outweigh the similarities established between the signs. The figurative elements of the earlier marks will, nevertheless, be paid less attention by consumers and the additional verbal part ‘U S’ of the contested sign will be of an equally low level of distinctiveness for the same services.

Finally, it must also be considered that due to the specific nature of the aviation industry, historically, only ‘flag carriers’ (usually one per country) were given sovereign state by the government for international operations. Consumers are therefore accustomed to associate other corresponding marks, with slight modifications, with the sole airline in question. It cannot be ruled out that the relevant public may believe that the contested sign is a variation of the earlier marks based on the same core element (the coinciding verbal element) because the differences between the signs are confined to less-distinctive elements or secondary aspects (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Finally, 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).

Therefore, considering all the above, there is a likelihood of confusion on the part of the Greek-speaking part of the public. 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. This conclusion also applies to the contested goods and services which have been found to be similar to a low degree, despite the higher than average degree of attention paid. This is because the similarity between the signs is sufficient to lead to a likelihood of confusion in relation to those goods and services which only have a low degree of similarity.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 729 473 and Cyprus trade mark registration No 44 471. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier rights examined above lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268), nor the alleged ‘family of trade marks’ claimed by the opponent.

Furthermore, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(5) EUTMR, including to assess whether the earlier marks enjoys an enhanced distinctiveness as the outcome would be the same. For the sake of completeness, the Opposition Division notes that the signs are obviously not identical and Article 8(1)(a) EUTMR in not applicable in this case.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Manuela RUSEVA

María Clara IBÁÑEZ FIORILLO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.