OPPOSITION No B 2 685 595

Ariana Carmone Trading Limited, 3rd Floor, 207 Regent Street, London W1B 3HH, United Kingdom (opponent)

a g a i n s t

Ariana Exchange Limited, 136 The Broadway, Southall, London UB1 1QN, United Kingdom (applicant).

On 03/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 685 595 is upheld for all the contested services, namely:

Class 36: Money exchange and transfer; Electronic money transfer services; Money transmission services; Cheque cashing services.

Class 43: Travel agency services for booking accommodation; Travel agency services for booking restaurants; Travel agency services for making hotel reservations; Hotel reservation services provided via the Internet; Hotel accommodation reservation services.

2. European Union trade mark application No 14 901 409 is rejected for all the contested services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 901 409, namely against all of the services in Classes 36 and 43. The opposition is based on Benelux trade mark registration No 983 053. The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The services

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

Class 36: Financial services; investment services; fund and asset management; financial management and planning.

Class 43: Hotel services; hotel and guest house rental and reservations; business services for hotels; bar services.

The contested services are the following:

Class 36: Money exchange and transfer; Electronic money transfer services; Money transmission services; Cheque cashing services.

Class 43: Travel agency services for booking accommodation; Travel agency services for booking restaurants; Travel agency services for making hotel reservations; Hotel reservation services provided via the Internet; Hotel accommodation reservation services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 36

The contested money exchange and transfer; electronic money transfer services; money transmission services; cheque cashing services are included in the opponent’s broader category of financial services. The services are, therefore, identical.

Contested services in Class 43

The contested travel agency services for booking accommodation; travel agency services for making hotel reservations; hotel reservation services provided via the Internet; hotel accommodation reservation services either are included in or overlap with the opponent’s hotel and guest house reservations. The services are identical.

The contested travel agency services for booking restaurants are highly similar to the opponent’s hotel and guest house reservations, as they coincide in their nature, both being essentially reservation/booking services. They are normally provided by the same service providers through the same distribution channels; they have the same method of use and require the same tools and expertise, and they target the same end users. Furthermore, they are quite often offered together, even though they are not complementary in a strict sense.

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 or similar to a high degree are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high depending on the particular services in question. For instance, in relation to the services in Class 43, the degree of attention is likely to be average, while in relation to the services in Class 36 it is high, since these are specialised services that may have important financial consequences for the users.

3. The signs

Ariana
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 word mark, ‘Ariana’, and the contested sign is a figurative mark comprising the verbal elements ‘Ariana Travel’ in a stylised navy-blue typescript, a depiction of an aeroplane taking off and leaving a trail in sky blue, and a sequence of what look like Arabic letters. The contested sign also includes the registered trade mark symbol, ®, separated from the sequence of presumably Arabic letters by two vertical lines. The registered trade mark symbol is an informative indication that the sign is purportedly registered and, therefore, this symbol lacks distinctiveness. The same is true of the two vertical lines, which are banal features to which any distinctiveness cannot be attributed.

The verbal element ‘Ariana’, contained in both marks, will be perceived as a female given name. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive. The verbal element ‘Travel’ of the contested sign is commonly used by travel and booking service agencies and will be understood, at least by the Dutch consumers in the relevant territory, who the Court has acknowledged have at least a basic understanding of English (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23). Bearing in mind that the services in Class 43 are normally provided by booking and travel agencies, it is considered that the verbal element ‘Travel’ is not distinctive for these services, at least for the Dutch part of the public. Bearing in mind what has been stated in relation to the common use of this word in relation to the particular services in Class 43, it is highly likely that this word will also be understood by the Belgian and Luxembourgish parts of the public.

The verbal element ‘Travel’ can also be considered weak in relation to some of the services in Class 36, since it is used, for instance, in relation to traveller’s cheques.

The sequence of what look like Arabic letters will be perceived as such, without the average consumer attributing any meaning to it, or simply as an ornamental figurative element.

Neither of the marks has any elements that could be considered clearly more dominant than other elements.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually and aurally, the signs coincide in the distinctive verbal element ‘Ariana’. However, they differ visually and aurally in the verbal element ‘Travel’ of the contested sign, as well as visually in all of the figurative elements of the contested sign, as described above, including the stylisation of the typescript and the colours of the verbal elements.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the concept conveyed by the earlier mark is also conveyed by the contested sign (although together with other concepts), the signs are conceptually similar to at least an average degree.

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 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 services are identical and similar to a high degree. The marks are visually, aurally and conceptually similar on account of the coinciding verbal element ‘Ariana’. The distinctiveness of the earlier mark is average.

The earlier mark, ‘Ariana’, is reproduced in its entirety in the contested sign and can clearly be identified as an individual element in the contested mark. Whether the contested trade mark incorporates the earlier mark as its first or second element (considering also the figurative element depicting an aeroplane in flight) is not a decisive factor in the assessment of likelihood of confusion. What matters is whether the coinciding element (comprising the entire earlier mark) is recognisable as a separate element with an independent distinctive role in the composition of the contested mark. In the present case, this question must be answered in the affirmative. The overall impression produced by the contested sign may lead the public to believe that the services at issue derive from the same company or, at the very least, from companies that are linked economically. Therefore, there is a likelihood of confusion on behalf of the relevant public. This finding cannot be influenced by the possible high degree of attention of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 983 053. It follows that the contested trade mark must be rejected for all the contested services. It may proceed to registration for the remaining, non-contested, services.

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Lena FRANKENBERG GLANTZ

Plamen IVANOV

Natascha GALPERIN

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.