OPPOSITION No B 2 830 696

Shape13

OPPOSITION DIVISION

OPPOSITION No B 2 830 696

easyGroup Ltd, 168 Fulham Road, London SW10 9PR, United Kingdom (opponent), represented by Kilburn & Strode LLP, Laapersveld 75, 1213 VB, Hilversum, Netherlands (professional representative)

a g a i n s t

2L Multimedia Société par Actions Simplifiée, Park Nord, Les Pléïades, 74370 Metz Tessy, France (applicant), represented by Mark & Law, 7 rue des Aulnes - Bâtiment B, 69410 Champagne au Mont d'Or, France (professional representative).

On 03/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 830 696 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 15 801 913 Shape1 . The opposition is based on the following nine earlier rights:

1. European Union trade mark registration No 15 591 639 for the word mark ‘EASYEVERYTHING’ (hereinafter ‘Earlier mark 1’);

2. European Union trade mark registration No 14 920 391 for the word mark ‘EASYGROUP’ (hereinafter ‘Earlier mark 2’);

3. European Union trade mark registration No 14 920 383 for the figurative mark Shape2 (hereinafter ‘Earlier mark 3’);

4. European Union trade mark registration No 11 535 961 for the figurative mark Shape3 (hereinafter ‘Earlier mark 4’);

5. European Union trade mark registration No 10 584 001 for the word mark ‘EASYJET’ (hereinafter ‘Earlier mark 5’);

6. European Union trade mark registration No 10 583 111 for the word mark ‘EASYGROUP’ (hereinafter ‘Earlier mark 6’);

7. European Union trade mark registration No 9 802 646 for the word mark ‘EASYGYM’ (hereinafter ‘Earlier mark 7’);

8. European Union trade mark registration No 9 220 799 for the figurative mark Shape4 (hereinafter ‘Earlier mark 8’);

9. European Union trade mark registration No 8 680 126 for the word mark ‘EASYFOOTBALL’ (hereinafter ‘Earlier mark 9’);

In relation to all Earlier marks the opponent invoked Article 8(1)(b) EUTMR. In relation to Earlier marks 2, 3, 5, 6, and 7, the opponent invoked additionally Article 8(5) EUTMR.

1. REPUTATION — ARTICLE 8(5) EUTMR

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

Therefore, the grounds for 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: 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.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

According to the opponent, for Earlier marks 2 and 5 the claim as indicated in the Notice of Opposition is the European Union and the United Kingdom, in relation to some of the goods and services for which these marks are registered, while for the other earlier marks - Earlier marks 3, 6, and 7 listed above (in the section REASONS) – the claim is of a reputation in the United Kingdom, in relation to some of the goods and services for which they are registered.

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

In the present case, the contested trade mark was filed on 02/09/2016. However, the contested trade mark has a priority date of 14/04/2016. 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 and/or the United Kingdom 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, namely:

Earlier mark 2 ‘EASYGROUP’

Class 35: Advertising, marketing and publicity services; dissemination of advertising, marketing and publicity materials; business organisation, business administration and business management services, business information services, auctioneering services, office functions, promotional services; import-export agency services, business and management consultancy, assistance and advice; purchasing and demonstration of goods for others; retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes, cosmetics, non-medicated toilet preparations, perfumes, fragrances, colognes and scents, soaps and cleaning preparations, shampoos, conditioners, moisturisers, tooth cleaning preparations', depilatory preparations, sun-screening and tanning preparations, anti-perspirants, deodorisers and deodorants, sunglasses, personal stereos, MP3 players, CD players, apparatus for playing music and video recordings, jewelry, stones, watches, clocks, books, magazines,

newspapers, stationery, calendars, diaries, purses, umbrellas, parasols briefcases, purses, wallets, pouches and handbags; luggage, suitcases, travelling sets, sports bags, bike bags, backpacks, games and playthings, playing cards, gymnastic and sporting articles, toys; gymnastic and sporting articles, model airplanes, scooters, teddy bears, balls; commercial administration of the licensing of the goods and services of others; advice relating to business management; advice relating to business organisation; business advice; business management advice.

Class 41: Education; providing of training; sporting and cultural activities; fitness instruction and tuition; group fitness and exercise classes; personal training services; provision of gymnasium facilities; gymnasium services relating to body building; gymnasium services relating to weight training; life coaching services; education relating to nutrition; provision of educational information relating to fitness, exercise, diet, health and nutrition; entertainment services; entertainment information services; health club services; gymnasium services; gymnasium club services; nutrition coaching; weight management coaching; organisation of sports competitions; physical education services; providing sports facilities; provision of recreation facilities; rental of sports equipment; rental of tennis courts; arranging and conducting workshops; advisory, consultancy and information services relating to all the aforesaid services.

Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotel services; hotel reservation services; hotel services for the provision of facilities for exhibitions and conferences; room hire services; management of hotels and restaurants; provision of exhibition facilities and amenities; provision of facilities and amenities all for conferences, seminars and banquettes; reservation services for all the aforesaid services.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; hairdressing salons; aromatherapy services; health care; health spa services; physical therapy; physiotherapy; sauna services; solarium services; health assessment and health risk assessment services; provision of medical referral services; fitness testing services; counselling services relating to health, fitness, diet and nutrition; provision of weight control and weight reduction programmes.

Earlier mark 3 ‘ Shape5

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

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

Earlier mark 5 ‘EASYJET’

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

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

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

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

Earlier mark 6 ‘EASYGROUP’

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

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

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

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

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

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

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

Class 44: Physical, mental and emotional healthcare.

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

Earlier mark 7 ‘EASYGYM’

The opposition is directed against services in Classes 35, 38, 41, 42, and 45, the full list of which are set out at Section 2.1 a) below.

In order to determine the marks’ 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 12/07/2019 the opponent submitted the following evidence:

Exhibit 1:

A Witness Statement of 04/08/2017, signed by Sir Stelios Haji-Ioannou, the founder and director of easyGroup. In the Witness Statement, Mr Haji-Ioannou states the following:

- easyJet was the first sign of the EASY family of brands and was registered even before the establishment of the EasyJet airline company in 1995;

- the company easyGroup was incorporated in the year 2000 with the aim of establishing a group of companies which trade under the ‘easy’ brand, following the success of EasyJet which he had established;

- since the year 2000, easyGroup has secured about 1 000 trade mark registrations and 2500 domain names around the world, including ‘EASY’, ‘EASY.COM’, ‘EASYJET’, ‘easy4men’ and ‘EASYGYM;

- up to 70 million passengers were being flown by EasyJet every year (since 1995 until 31/01/2017) and in 2014 the total number of passengers flown across the easyJet network was 64,8 million and the airline operated 675 routes, 399 of which were to or from the United Kingdom.

- the opponent also provides a table containing the turnover figures for ‘easyJet’ and information about the www.easyjet.com website visitors. The annual turnover for ‘easyJet’ is claimed to be £3.45 billion in 2011, £3.85 billion in 2012, £4.36 billion in 2013 and £4.25 billion in 2014;

- by the year 2000 easyJet has been listed as a business ‘Superbrand’ by Business Superbrands Council and the easyGroup has been mentioned in several magazines;

- there has been a significant press coverage and media attention for the brands EasyJet and easyGroup and also for other brands such as easyEverything (chain of internet cafes), easyRentacar, easy.com, easyValue, easyHotel, easyGym, easyCruise, etc.

- information about store openings in various European cities, advertisement investment, turnover for other easy brands (such as easyEverything), information about users of the easy.com website and hotel openings;

Exhibit 2:

- extract from November 2017 of the opponent’s website http://corporate.easyjet.com, in which it is stated that ‘over the last 21 years EasyJet has built Europe’s leading short-haul airline’, they are present on 132 airports, 31 countries and operate on 802 routes.

- copies of EasyJet annual reports (September 2016, September 2015, September 2014 and September 2013), showing the number of passengers that used easyJet (i.e. 73.1 million in 2016 and 68.6 million in 2015), seats flown, company’s revenues, etc.

- www.scotsman.com: article of 16/05/2017, in which it is reported that ‘easyJet is seeking for more pilots at its Edinburgh and Glasgow bases as part of Scotland’s largest airline’s biggest recruitment drive to date’.

- www.eventmagazine.ca: article of 25/04/2017, which reports about EasyJet intention to ‘bring an immersive theatre experience to London’.

- www.telegraph.co.uk: article of 16/05/2017 reporting on the EasyJet intention to ‘add more seats in locations its competitors are retrenching from’.

- www.independent.co.uk: article of 14/02/2017 reporting about the success of the founder of EasyJet, Mr. Sir Stelios Haji-Ioannou, who ‘created an airline that would grow to eclipse local rivals such as ……., and overtake …. in passenger numbers…’. The article also states that ‘on average day in 2017, EasyJet carries more than 200,000 passengers across Europe’.

- www.worldtravelawards.com: article reporting that the company EasyJet received an award for ‘Europe’s Leading Low-Cost Airline’ in 2013 and award history showing that EasyJet won the same prize in the years 2002, 2004 and 2009-2014.

- an extract from an unknown source from July 2015, mentioning the founder of EasyJet company and its activities in Greece.

- www.telegraph.co.uk: article of 11/06/2016 mentioning budget airline easyJet and its plans to set up a separate European business.

- www.travel.aol.co.uk: article of 08/10/2016, mentioning EasyJet (British low-cost carrier) as ‘Europe’s best low-cost airline’ in a poll of 16,000 travellers (with more than six in ten UK passengers backing EasyJet, based on customer service and overall flying experience). The article also mentions that ‘online travel agent eDreams.co.uk polled travellers across ten countries (UK, Spain, Germany, Italy, France, Portugal, Sweden, Denmark, Finland and Norway) and found that in addition to being voted the UK’s number one low-cost airline, EasyJet was also the favoured no-frills airline across the continent, taking more than 22% of the votes across Europe.

- www.unicef.org.uk: article mentioning the ‘Change for Good’ partnership launched in 2012 between EasyJet, the UK biggest airline and Unicef. According to the article, EasyJet has raised 7 million Pounds to support Unicef vaccination programmes.

- illegibly-sourced online news article of 10/10/2016 reporting that ‘easyJet takes top spot in eDreams poll of best cost airlines’ (eDreams quizzed travellers on their preferred budget carrier). The article mentions that ‘more than a fifth of 16,000 travellers – 22% - named EasyJet as the favourite low-cost European airline’.

- www.campaignlive.co.uk: article of 06/06/2014 reporting that EasyJet won five prizes at 2014 Marketing Society Awards, among others the Grand Prix for its ‘Europe’s by easyJet’ campaign.

- www.theguardian.com: article of 17/11/2015 mentioning that EasyJet profits hit a record for fifth consecutive year. It also mentions that EasyJet is the second biggest airline present in France.

- www.standard.co.uk: article of 30/06/2016 mentioning that EasyJet boss received an award for the personality of the year and article of 26/10/2016, mentioning airline company EasyJet and its plans to launch new routes from the UK airport Heathrow.

- www.buyingbusinesstravel.com: an article from August 2014, reporting about a 2014 Business Travel Awards event in which the company EasyJet won ‘Best Short-Haul Airline’ award.

- www.independent.co.uk: article of 17/07/2014, reporting that EasyJet is the second best low-cost airline for cheap flights according to Skytrax World Airline Awards which is based on feedback from travellers in over 160 cities, who review over 200 airlines in the world’s largest airline passenger satisfaction survey. According to the article, EasyJet operates over 200 aircraft on 600 domestic and international routes and it is the second biggest low-cost airlines in Europe.

- an extract from an unknown source of 04/08/2014, reporting on ‘Airport team up with easyjet as lead sponsors for Manchester Pride’ during the Big Weekend, where easyJet is predicted to fly around 10,000 passengers into Manchester – many of them expected to attend the Big Weekend.

- www.statistics.com: an extract showing number of passengers uplifted by Easyjet Airline Company Ltd. in the United Kingdom from 2008 to 2015.

- www.fundraising.co.uk: an extract of 28/10/2016 mentioning that EasyJet passengers were first to see UNICEF’s virtual reality film (which was a result of an EasyJet and UNICEF partnership).

- www.independent.co.uk: an article of 04/11/2015, mentioning that several commissioners called for patrol cars to carry advertising from brands such as EasyJet as a way of alleviating the impact of the budget cuts.

- www.ft.com: an article of 24/01/2017, reporting on EasyJet future plans to expand its capacity by 9 % over the financial year to September 30.

- An extract from Wikipedia, providing information about the EasyJet company (its history, business strategy, destinations, services, sponsorship, etc.).

- Extract from Wikipedia showing an entry for ‘easyJet’ and its history, business strategies, services, sponsorships, etc.

- An extract from the opponent’s website, showing the Route Map with EasyJet departure airports.

Exhibit 3: Documents showing final financial results for ‘easyHotel plc’ for the year ended 30/09/2016 (dated 29/11/2016), the year ended 30/09/2015 (dated 09/12/2015) and the year ended 30/09/2014 (dated 09/12/2014) for easyHotel plc, the owner of super budget branded hotels.

Exhibit 4:

- www.mirror.co.uk, of 23/09/2015, reporting that the easyProperty online estate agency established by the budget airline company EasyJet is launching its own online business serving property-hunters. The new venture easyProperty is an online estate agency business.

- www.news.sky.com of 07/12/2015, reporting that Toscafound is investing into easyProperty in return for a stake of 15% in easyProperty.

- www.telegraph.co.uk of 08/12/2015, reporting that easyProperty has raised 25 million Pounds to take on estate agent rivals.

- www.cityam.com containing an interview with Sir Stelios Haji-Ioannou, who created the airline company EasyJet, reporting that EasyGroup is extending its brand into other sectors.

- www.standard.co.uk of 09/03/2015 reporting on easyProperty plans.

Exhibit 5: An extract from www.mirror.co.uk of 08/02/2016, reporting on the most powerful people in the British food and drink industry. The article mentions, among others, in 99^th place, Sir Stelios Haji-Ioannou, who established the easyFoodstore with a range of food and drinks.

Exhibit 6: A document showing a list of all easyCoffee shops in central London and in other UK locations.

Exhibit 7: Pictures of an easyKiosk flyer with prices for several different drinks.

Exhibit 8:

- www.businesscloud.co.uk: an article of 22/12/2017 mentioning the easyCar club that was trialled in London in 2013 and went national in 2014. According to the article, the platform has more than 100,000 members and more than 10,000 cars.

- www.journalism.co.uk: press release of 30/08/2017, reporting that easyCar defines the top 20 cheapest car hire destinations in Europe (with locations in Alicante, Tenerife, Malaga, Birmingham and Manchester rounding out the top five).

www.businessinsider.com: an article of 13/06/2017 reporting that easyGroup is looking to take over BlaBla Car with its new ridesharing service.

- www.managementtoday.co.uk: an article of 18/08/2014 providing the news that ‘the man behind the distinctive shade of orange Sir Stelios Haji-Ioannou is planning to establish peer to peer rental platform EasyCar Club’.

- www.theguardian.com: an article of 08/02/2014 reporting that EasyCar Club started to offer a peer-to peer car club for those looking to make some extra income by landing their car to the neighbours.

Exhibit 9:

- www.eliberico.com: article of 28/10/2015 in Spanish, concerning the opponent's earlier trade mark easyBus and the services provided under this mark;

- www.cnn.com: undated article mentioning easyBus as an alternative to travel from Gatwick airport;

- https://travel.fanpage.it: article of 28/10/2015 in Italian mentioning easyBus services;

- www.latribune.fr: an article of 28/09/2016 in French, mentioning the earlier mark easyBus and the services provided under this trade mark;

- www.shropshirestar.com: article of 16/01/2017, reporting on easyBus franchise launched in the UK;

- www.telegraph.co.uk: an article of 17/07/2013, reporting on easyBus service that operates from London Earl’s Court/West Brompton to Gatwick;

- www.turystyka.wp.pl: an article of 31/10/2013 in Polish;

- www.leparisien.fr: article in French dated 14/05/2015 concerning the earlier mark easyBus.

Exhibit 10:

- A Witness Statement of 04/04/2017 of Mr Christopher Griffin, Chief Executive of the Museum of Brands, attesting that the ‘easy’ brand is famous and that it has, since the start, been more expansive than ‘easyJet’ alone and covers a diverse range of products and services.

In relation to the witness statement of Sir Stelios Haji-Ioannou (Exhibit 1), it should be noted that the probative value of statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish reputation, since such statements have to be considered as having less probative value than evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the said witness statement are supported by the other items of evidence.

The remaining evidence mainly consists of several print-outs from different websites. This evidence demonstrates that the commercial activity of the opponent is in providing budget airline services under a trade mark ‘EASYJET’ (since the year 2000 or even before). The evidence also shows that the trade mark ‘EASYJET’ frequently appeared and was mentioned in online newspapers. For example, according to the articles taken from the websites www.travel.aol.co.uk and www.campaignlive.co.uk ‘EASYJET’ was rated as ‘Europe’s best low-cost airline’ in a poll of 16,000 travellers. Some of the articles also mention ‘EASYJET’ as the second best low-cost airline for cheap flights (www.independent.co.uk). Also the remaining press releases and publications referring to the earlier mark ‘EASYJET’ give some indirect information of the opponent’s investments and its promotional, communication and marketing strategies and there are also some references to the awards that ‘EASYJET’ has received (i.e. article from www.worldtravelawards.com).

All these facts and evidence enable the Opposition Division to conclude that the earlier trade mark ‘EASYJET’ (earlier mark 5) has been subject to long-standing and intensive use, at least in the United Kingdom and that it was generally known in the relevant market sector, and enjoyed an established position among the leading airlines on the filing date of the EUTM application. Although the evidence does not refer to all the countries of the European Union, the European Court of Justice has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (06/10/2009, C-301/07 ‘PAGO’, EU:C:2009:611, § 29 and 30). Therefore, the Opposition Division acknowledges that a reputation that has been proven in the United Kingdom is sufficient for concluding that the earlier trade mark also has a reputation in the European Union.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark ‘EASYJET’ enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of enhanced distinctiveness and reputation.

However, the evidence does not succeed in establishing that the trade mark ‘EASYJET’ has a reputation for all the goods and services on which the opposition is based, and for which reputation was claimed for that earlier mark. The evidence only refers to transportation of passengers and travelers by air; airline services whereas there is not a sufficient reference to the remaining goods and services for which the opponent has claimed a reputation.

Consequently, the opponent has demonstrated that its trade mark ‘EASYJET’ (word mark) enjoyed a reputation and also, therefore, enhanced distinctiveness in the European Union on the filing date of the contested EUTM application, in relation to transportation of passengers and travelers by air; airline services in Class 39.

However, the evidence does not succeed in establishing that Earlier mark 2 ‘EASYGROUP’, Earlier mark 3 Shape6 , Earlier mark 6 ‘EASYGROUP’, or Earlier mark 7 ‘EASYGYM’ also have acquired a reputation in the relevant territory with regard to the goods and services for which the opponent claims reputation. In Exhibit 1, Mr Maji-Ioannou mentions that there has been significant press coverage and media attention for the brand ‘easyGroup’. However, none of these articles has actually been submitted. Therefore, these claims are left unsupported by further objective evidence. Under these circumstances, the Opposition Division is in no position to assess the degree of recognition of ‘EASYGROUP’ by the relevant public. In regards to Earlier marks 3 and 7, the evidence does not indicate if and to what degree either such relevant mark is recognised by the relevant public or what market position the mark possesses. Therefore, the Opposition Division concludes that the opponent has failed to prove that any one of Earlier marks 2, 3, 6, and 7 is reputed in the relevant territory with regard to the goods and services for which the opponent claims reputation.

As stated 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 Earlier marks 2, 3, 6, or 7 have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on those earlier marks.

The examination of the present opposition will continue on the grounds of Article 8(5) EUTMR only on the basis of Earlier mark 5 ‘EASYJET’.

b) The signs

EASYJET

Shape7

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).

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

The earlier mark is the word mark ‘EASYJET’. Even though the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 30). Therefore, it is reasonable to assume that, even if the earlier mark as a whole does not have any meaning for the public in the relevant territory, the element ‘JET’, included in the earlier mark will be perceived with a meaning ‘a jet-propelled aircraft’ by part of the relevant public, i.e. at least by the English-, German- and French-speaking part of the public. For this part of the public and for the relevant services in Class 39, this element is considered to be non-distinctive while for another part of the public such as a substantial part of the Bulgarian, Czech and Polish-speaking public, as it has no meaning in relation to the relevant services, it is considered to be distinctive to an average degree.

The component ‘EASY’ included in the earlier mark is a basic English word which means ‘not requiring much labour or effort; not difficult; simple’ and is likely to be understood by the relevant public of the services concerned in the whole territory of the European Union. This finding has been confirmed by the Boards of Appeal in case 21/02/2017, R 2048/2015-2, § 59 and § 60. As the component ‘EASY’ may be laudatory of the fact that the services concerned are simple and easy to use (13/05/2015, T-608/13, easy Air-airtours, EU:T:2015:282, § 38 and 57), it is considered to be non-distinctive.

The contested figurative sign consists of the verbal element ‘easyflirt’, with ‘easy’ in pink lettering and ‘flirt’ in black lettering such that the relevant public will perceive the contested sign as comprising the distinct components ‘easy’ and ‘flirt’. The said stylised elements will be perceived as being primarily decorative in nature and so play a secondary role in such perception.

In light of what has been stated above, the relevant public will perceive the component ‘easy’ of the contested sign given that it is meaningful across the European Union. For the reasons stated above, this component is non distinctive of the relevant services.

The component ‘flirt’ refers, in English, to acting flirtatiously, that is, playing with other’s affections, usually amorously (information extracted from Collins English Dictionary on 18/11/2020 at https://www.collinsdictionary.com/dictionary/english/flirt). This meaning will also be understood by another part of the relevant public for which the corresponding word in the local language is closely similar to this English word (e.g. ‘flirter’ in French, ‘Flirten’ in German, ‘flirtare’ in Italian, ‘flirtear’ in Spanish) while being meaningless for another part (e.g. for the Hungarian-speaking public).

As this component alludes to the nature or purpose of the contested services in Class 45 (which are marriage and dating services), it is weakly distinctive of them for part of the relevant public while being normally distinctive for another part thereof. In contrast, this component bears no reference to the other contested services and so is distinctive of them.

As both components that comprise the contested sign are meaningful for the part of the relevant public for which ‘flirt’ is understood, the Opposition Division considers that, for this part, the combination of these two words also has a unitary meaning, namely a simple way to flirt, in which the component ‘easy’ qualifies, as an adjective, the word ‘flirt’, whether or not the latter functions here as a verb or a noun, such that the focus of attention is directed at the word ‘flirt’.

Visually and aurally, the signs coincide in the component/sound ‘EASY’ being the first verbal component of both signs. However, they differ in the component/sound ‘JET’ of the earlier mark and the component/sound ‘flirt’ of the contested sign. In addition, visually speaking, the signs differ also with respect to the stylised elements of the contested sign which, however, have merely a secondary impact as explained above.

Given that the common component ‘easy’ is non-distinctive, the public under analysis will be inclined to focus on the remaining said verbal components of the signs. Although the said verbal component ‘JET’ is non-distinctive for the part of the relevant public, and the word ’flirt’ is weakly distinctive of some of the relevant services for part of the relevant public, nevertheless they all still contribute to differentiating the signs to some extent.

Consequently, the signs are visually and aurally similar to a low degree.

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

The common component ‘EASY’ is non-distinctive because of its meaning and, therefore, the public will not stop at this element especially as the remaining (differing) elements are depicted on the same line as ‘EASY’ being conjoined with it in the earlier word mark (depicted in the same size and typeface in the contested sign) such that the relevant public will be inclined to focus on the remaining meaningful verbal element of each of the signs. Given its non-distinctive character the component ‘EASY’ can trigger only a very low degree of semantic similarity between the signs, which is not increased by the remaining elements of the signs (and is even diminished where both ‘JET’ and ‘flirt’ or one of these terms have a meaning).

Therefore, the signs are conceptually similar at most to a very low degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As stated above, the earlier mark ‘EASYJET’ is reputed and the signs are similar to a low degree on a visual and aural level, and being semantically similar to a very low degree. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the signs have a low degree of visual and aural similarity, and a very low level of conceptual similarity, as they share the element ‘EASY’. However, this does not mean that the relevant public under analysis is likely to establish a link between them. When consideration is given to the contested services – none of which is close to the opponent’s transportation of passengers and travelers by air; airline services in Class 39 such as to constitute a factor in support of the finding of a link - it is clear that the similarities between the signs in dispute relate to an element which is non-distinctive. As has been shown above, the common component ‘EASY’ will be understood throughout the relevant territory as referring to something ‘simple’ and laudatory of all the services concerned. It will therefore be perceived as a non-distinctive element (13/05/2015, T-608/13, easy Air-airtours, EU:T:2015:282, § 38 and 57), which cannot identify the commercial origin of the services at issue. Instead, it indicates that the services offered are easy to use or easy to access. In any case the reputation only applies to the sign ‘EASYJET’ as a whole, not to the component ‘EASY’ which is non-distinctive.

Therefore, in view of the non-distinctive character of ‘EASY’, the similarities between the contested sign and the earlier mark are unlikely to bring the earlier trade mark to the mind of the average consumer. The component ‘EASY’ indicates a characteristic shared by a wide range of goods and services which means that the consumer is more likely to associate it with the specific feature of the services that it describes rather than with another mark (30/04/2009, C-136/08 P, ‘Camelo’). Moreover, the signs under comparison contain additional elements which account for visual, aural and also conceptual differences ( at least for part of the relevant public).

Taking into account, and weighing up, all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public under analysis will make a mental connection between the signs in dispute, that is to say establish a ‘link’ between them.

Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

The Opposition Division continues with the examination of the opposition under Article 8(1)(b) EUTMR.

2.1 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 continue to examine the opposition in relation to the opponent’s Earlier mark 8 ‘ Shape8 .

a) The services

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

Class 39: Transportation of goods, passengers and travellers by air, land and sea; transport of luggage, freight, personal effects and equipment; baggage handling services; cargo handling and freight services; provision of parking facilities and reservation of parking spaces; rental and hire of aircraft, vehicles and boats; taxi and private transfer of passengers services; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travellers by land, sea and air; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; travel arrangement; travel agency and tourist office services; reservation of flights, car hire, parking , holiday packages, ski holidays, ski equipment and passes; advisory and information services relating to the aforesaid services; information services relating to transportation services, including information services provided on-line from a computer database or the Internet.

Class 43: Temporary accommodation; provision of food and drink; catering, hotel, restaurant, café and bar services; temporary accommodation, hotel, hostel and apartment reservation services; waiting room services including the provision of airport lounges and access thereto; provision of information and advice relating to temporary accommodation.

The contested services are the following:

Class 35: Advertising; On-line advertising on a computer network; Arranging subscriptions to telecommunication services for others; Computerised file management; Web site traffic optimisation; Updating and maintenance of data in computer databases; Compilation of information into computer databases; Systemization of information into computer databases; Business management; Business administration; Writing of publicity texts; Publication of publicity texts on communications media of all kinds; Exhibitions for commercial or advertising purposes; Rental of advertising time on communication media; Rental of advertising space; Dissemination of advertising matter; Direct mail advertising (flyers, prospectuses, posters, leaflets, printed matter, samples); Public relations services; Online services, namely management of a client database as a web platform, for dating sites and discussion forums; Online services, namely management of a client database as a web platform, for data comparison and searching.

Class 38: Telecommunications; Communications by cellular phones; Providing of messages and information via radio, television, telephone networks, including call centres, text message services, and on data networks, in particular the Internet; Providing platforms and portals on the Internet; Providing of discussion forums and forums via the internet or via mobile telephone networks; Providing of discussion forums and forums via the internet or via mobile telephone networks; Providing of access to dating sites via the internet or via mobile telephone networks; Providing of access to dating and discussion clubs via the internet or via mobile telephone networks; Management of discussion forums and forums via the internet or via mobile telephone networks; Providing of access to information for others, via the internet or via mobile telephone networks; Providing access to data in computer networks; Providing of access to information on the internet, for others (online service); Communications by computer terminals; Radio broadcasting, communications by telegrams or by telephone; Electronic mail; Message sending; Computer-aided transmission of messages and images; Telephone services; Leasing access time to a computer database; Leasing access time to databases; Electronic dissemination of books, newspapers, periodicals and comic books online; Online dissemination of texts (other than publicity texts) in all forms, including electronic and digital publication; Online dissemination of all kinds of audio or visual media, recordings of sound and/or images, multimedia; Dissemination of multimedia programmes.

Class 41: Entertainment; Entertainment information; Micropublishing; Radio entertainment; Television entertainment; Electronic publication of books, newspapers, periodicals and comic books online; Writing of texts, online publication of texts (other than publicity texts) in all forms, including electronic and digital publication; Online publication of all kinds of audio or visual media, recordings of sound and/or images, multimedia; Publication of multimedia programmes; Leisure services; Organisation of clubs and discussion forums; Organisation of discussion clubs, in particular via the internet or via mobile telephone networks.

Class 42: Providing of electronic memory spaces (web spaces) on the internet for personal information and data, in particular images, videos, photographs, texts, publications; Electronic storage of information for others; Electronic data storage; Software design and development; Development of computersoftware application solutions; Rental of application software; Programming of multimedia applications; Providing temporary use of web-based applications; Providing of applications, namely incorporation of client databases into other internet platform services; Development (design), establishment, creation and handling of pages on the internet, including for others; Development (design), creation, maintenance, updating and rental of computer software; Computer programming; Conversion of data and computer programs, except physical conversion; Research and development for others; Online services, namely providing of a web platform for providing access and transmission of client data (information).

Class 45: Marriage agencies; The bringing together of individuals (for social purposes), namely dating clubs; Dating agencies; Dating clubs provided on the Internet and on mobile telephone networks; Dating services; Internet based social networking, introduction and dating services.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s and/or the applicant’s lists of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

The relevant factors relating to the comparison of the services include, inter alia, the nature and purpose of the 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.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, 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.

Contested services in Classes 35, 38, 41, 42, and 45

Each of the contested services in Classes 35, 38, 41, 42, and 45 is dissimilar to the opponent’s services in Class 39 (being essentially transport, baggage, cargo and freight handling, packaging and storage services, travel services, car parking, vehicle rental, aircraft chartering, various kinds of reservation services, tourist office services, and advice and information in relation thereto) and Class 43 (being essentially food and drink provision services and temporary accommodation, including booking and reservation services therefor and advice and information in relation thereto). They differ in natures, purposes and methods of use. Furthermore, they do not coincide in producers or distribution channels and they are not complementary or in competition.

a) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected on the basis of this earlier mark.

2.2 LIKELIHOOD OF CONFUSION

The Opposition Division finds it appropriate to continue to examine the opposition in relation to the opponent’s Earlier mark 5 ‘EASYJET’.

a) The goods and services

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

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

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

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

The contested goods and services are those set out at Section 2.1 above.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s and the applicant’s lists of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

Contested services in Class 35

Advertising; business management; business administration are identically included in both list of services.

On-line advertising on a computer network; writing of publicity texts; Publication of publicity texts on communications media of all kinds; Rental of advertising time on communication media; Rental of advertising space; Dissemination of advertising matter; Direct mail advertising (flyers, prospectuses, posters, leaflets, printed matter, samples); Public relations services are included within the broader categories of, or overlap with, the opponent’s advertising, marketing and publicity services. Therefore, they are identical.

Computerised file management; updating and maintenance of data in computer databases; compilation of information into computer databases; systemization of information into computer databases; online services, namely management of a client database as a web platform, for dating sites and discussion forums; online services, namely management of a client database as a web platform, for data comparison and searching are included within the broader category of the opponent’s office functions. Therefore, they are identical.

The contested web site traffic optimization are services related to marketing strategies and promotional activities intended to build or maintain a customer base and, as such, they are similar to the opponent’s advertising as they have the same purpose and usually coincide in provider and relevant public. Both the contested and the opponent’s services facilitate or encourage the promotion and sale of the client’s goods and services.

The contested arranging subscriptions to telecommunication services for others and the opponent’s business administration both support the day to day operation of businesses. They are similar as they usually coincide in relevant public and provider and they also are somewhat linked in terms of their purpose.

The contested exhibitions for commercial or advertising purposes is similar to the opponent’s advertising as they have the same purpose. They usually coincide in producer and relevant public.

Contested services in Class 38

All of the contested services in this Class (set out above) are identical to the opponent’s telecommunications either because they are identically contained in both lists (including synonyms) or because the opponent’s telecommunications services include the contested services.

Contested services in Class 41

Entertainment; entertainment information are identically included in both lists of services.

The contested radio entertainment; television entertainment; leisure services are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested organisation of clubs and discussion forums; organisation of discussion clubs, in particular via the internet or via mobile telephone networks are broad enough to include cultural subject matter. It follows that these contested terms overlap with the opponent’s cultural activities. Therefore, they are identical.

Computer software, recorded includes publishing software and desktop publishing software specifically intended for editing, layout and publishing of content in an electronic form allowing individuals, businesses, and other organisations to self-publish without the expense of commercial printing. Publishing services include electronic publishing as well as editing of books or magazines that are mostly destined to be read on a screen (e.g. computer, tablet). As a consequence, although these goods and services typically have a different commercial origin, they can serve the same purpose (i.e. editing, layout and publishing in an electronic form) and target the same public, e.g. authors or companies seeking user-friendly publishing solutions. Furthermore, given that an author or company can choose to purchase desktop publishing software and self-publishing, instead of resorting to electronic publishing services, the goods and services at issue are in competition. Therefore, the contested micropublishing; electronic publication of books, newspapers, periodicals and comic books online; online publication of texts (other than publicity texts) in all forms, including electronic and digital publication; online publication of all kinds of audio or visual media, recordings of sound and/or images, multimedia; publication of multimedia programmes and the opponent’s computer software in Class 9 are similar to a low degree.

The Opposition Division points out here that as the contested writing of texts is not in the nature of a publishing service, the justification for finding a low degree of similarity with the opponent’s computer software in Class 9, made in the previous paragraph, does not apply to this contested term.

Instead, the contested writing of texts is dissimilar to the opponent’s goods and services in Class 3 (which are essentially household cleaning, polishing, scouring and abrasive products as well as personal care products), Class 9 (i.e. scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, supervision, life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; computer hardware and firmware; computer software; software downloadable from the Internet; downloadable electronic publications; compact discs; computer games software; sunglasses; clothing for protection against injury, accident, irradiation or fire; navigation apparatus for vehicles; educational and teaching apparatus and instruments; electronic, magnetic and optical identity and membership cards; sunvisors; cases for spectacles; parts and fittings for all the aforesaid goods), Class 12 (being essentially apparatus for locomotion by land, air, or water and parts thereof), Class 14 (being essentially jewellery, precious metals and chronometric devices), Class 35 (being essentially a range of business-to-business services including advertising, business management, business administration and office functions as well as retail of various consumer products), Class 38 (essentially telecommunications services), Class 39 (being essentially transport, packaging and storage services, travel services, car parking, and tourist office services), Class 41 (being essentially education, training, entertainment, sporting and cultural services, organising games and competitions, and rental of games and playthings), and Class 43 (being essentially food and drink provision services and temporary accommodation, including booking and reservation services therefor). They differ in natures, purposes and methods of use. Furthermore, they do not coincide in producers or distribution channels and they are not complementary or in competition.

Contested services in Class 42

The contested providing of electronic memory spaces (web spaces) on the internet for personal information and data, in particular images, videos, photographs, texts, publications; electronic storage of information for others; electronic data storage; rental of application software; programming of multimedia applications; providing temporary use of web-based applications; providing of applications, namely incorporation of client databases into other internet platform services; computer programming; conversion of data and computer programs, except physical conversion; online services, namely providing of a web platform for providing access and transmission of client data (information) are similar to the opponent’s telecommunications in Class 38 as they have the same purpose. They usually coincide in producer and distribution channels. Furthermore they are complementary.

The contested software design and development; development of computer software application solutions; development (design), establishment, creation and handling of pages on the internet, including for others; development (design), creation, maintenance, updating and rental of computer software similar to the opponent’s telecommunications in Class 38 as they usually coincide in relevant public and distribution channels. Furthermore they are complementary.

However, the contested research and development for others are dissimilar to all of the opponent’s goods and services in Classes 3, 9, 12, 14, 35, 38, 39, 41, and 43 (already set out above) because they have nothing in common. They are of a different nature, purpose and methods of use. They are neither complementary nor in competition. They do not share the same distribution channels and are provided by different companies.

Contested services in Class 45

The contested Internet based social networking services provide an online platform for the exchange of information, text, images and other online content. These services are related to the opponent’s telecommunications in Class 38 as they serve the same purpose, target the same public, can be provided by the same service provider and are complementary. Therefore, they are similar.

The contested marriage agencies; the bringing together of individuals (for social purposes), namely dating clubs; dating agencies; dating clubs provided on the Internet and on mobile telephone networks; dating services; Internet based introduction and dating services belong to the category of personal or social services and are usually provided by highly specialised undertakings with focus on these particular matters. All these contested services have nothing relevant in common with the opponent’s goods and services in Classes 3, 9, 12, 14, 35, 38, 39, 41, and 43 that have been summarised and referred to in a previous part of the comparison. Indeed, the goods and services above have different natures and purposes, target different consumers using distinct commercial channels and, finally, originate from different undertakings. There is no obvious complementarity relationship that can be established between any of the goods and services and no facts or evidence have been introduced by the opponent to prove otherwise. Consequently, they are dissimilar.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case the goods and services found to be identical or similar (to varying degrees) target the general public, which is reasonably well informed and reasonably observant and circumspect, as well as business professionals.

The relevant public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased/provided.

c) The signs

EASYJET

Shape9

Earlier trade mark

Contested sign

The relevant territory is the European Union.

The signs have already been compared above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which, subject to the next paragraph, are equally valid for Article 8(1)(b) EUTMR.

It should be noted that the coinciding element ‘EASY’ is considered to be non-distinctive in relation to all the relevant services. However, there is a difference as regards the distinctiveness of the differing element ‘JET’ of the earlier mark. While ‘JET’ was deemed non-distinctive in relation to transportation of passengers and travelers by air; airline services in Class 39 (under the grounds of Article 8(5) EUTMR) for part of the relevant public, this cannot be said in relation to the services that have been compared under the grounds of Article 8(1)(b) EUTMR. Therefore, even for the part of the public that will understand the meaning of the word ‘JET’, such as the English-, German- and French-speaking part of the public, this element is considered to be normally distinctive of all the relevant services.

However, this does not change the outcome of the comparison of signs that has already been made under the grounds of Article 8(5) EUTMR, because, even allowing for such findings - that ‘JET’ was non distinctive for part of the relevant public - the degree of similarity under Article 8(1)(b) EUTMR cannot be any higher here, where ‘JET’ is normally distinctive of all the relevant services, such that its capacity to distinguish the signs is greater.

d) 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 ‘EASYJET’ has a reputation in the European Union in connection with part of the goods and services for which it is registered, namely for the goods and services in Classes 12, 35, 38, 39, 41 and 43. 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 in that regard has already been listed and assessed under Article 8(5) EUTMR. The same findings are valid under Article 8(1)(b) EUTMR. Specifically, the Opposition Division has already concluded above that the mark ‘EASYJET’ has acquired a reputation and therefore also a high degree of distinctiveness through use for some of the services in Class 39, namely transportation of passengers and travelers by air; airline services. However, such reputation and enhanced distinctiveness does not extend to or relate to the goods and services in Classes 9, 35, 38 and 41 used in the comparison of goods and services at section a) above even bearing in mind that the threshold of recognition for enhanced distinctiveness is lower than that for a finding of reputation. Moreover, the opponent’s said services in Class 39 are dissimilar to the contested services in Classes 35, 38, 41, 42, and 45 as they do not share relevant trade mark points of contact such as to justify a finding of similarity: they have different purposes, are not in competition, and with different distribution channels and different producers/providers.

Therefore, as regards the goods and services of the earlier mark in Classes 9, 35, 38, and 41, which have been found to be identical with, or similar (to varying degrees) to, the services of the contested mark, the distinctiveness of the earlier mark will rest on its distinctiveness per se: the distinctiveness of the earlier mark as a whole must be seen as normal, despite the presence of a non-distinctive element ‘EASY’ in the mark as stated above under point 1 section b) of this decision, taking into account that the other component. ‘JET’, thereof is either meaningless or does not bear a reference to the opponent’s goods or services in question.

e) Global assessment, other arguments and conclusion

The services under comparison were found to be partly identical, partly similar (to varying degrees) and partly dissimilar. For the relevant public, the signs are visually and aurally similar to a low degree and conceptually similar to a very low degree (as found at Section 1, b) above), as they merely coincide in the non-distinctive element ‘EASY’, which is understood by the relevant public throughout the relevant territory. The level of attention of the relevant public is considered to vary from average to high. The earlier mark as a whole has a normal degree of distinctiveness with respect to the goods and services in question, as enhanced distinctiveness has not been proven for such goods and services.

Even though the component ‘easy’ retains an independent role in the contested sign, it is non-distinctive, thereby reducing the likelihood of consumer reliance on that element as an indication of origin for the goods and services at hand. The differing and distinctive component ‘JET’ in case of the earlier mark, the component ‘flirt’ and the stylised elements of the contested sign all together significantly contribute to the overall impression created by the signs. They are clearly perceptible and sufficient to exclude any likelihood of confusion between the signs; this is true even in relation to the identical services.

According to the Guidelines (Guidelines for Examination in the Office, Part C Opposition, Chapter 7, section 2.6) when marks share an element with no distinctiveness, the assessment will focus on the impact of the non-coinciding components on the overall impression of the marks. A coincidence only in non-distinctive components does not lead to likelihood of confusion. However, when marks also contain other figurative and/or word elements that are similar, there will be likelihood of confusion if the overall impression of the marks is highly similar or identical.

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

The argument that there is a ‘family of marks’ must be claimed before the expiry of the time limit set for substantiating the opposition. Evidence supporting such claim must also be submitted within the same time limit. In this regards, the Opposition Division refers to the listing of evidence under section 1.a) of this decision together with the assessment of evidence previously made.

The concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T 194/03, Bainbridge, EU:T:2006:65).

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

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

Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This cannot be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content.

In relation to this second requirement, an assumption of a family of marks on the part of the public requires that the common denominator of the contested application and the alleged earlier family of marks must have a distinctive character, either per se or acquired through use, to allow a direct association between all of these signs. Likewise, there will be no assumption of a family of marks where the further components of the earlier signs have a greater impact in the overall impression of those signs.

As previously stated in this decision, the element ‘EASY’ alone is considered inherently non-distinctive. With regard to the issue of whether this element has acquired distinctiveness, based on the evidence submitted, the Opposition Division considers that there is a degree of recognition on part of the public amounting to reputation for the sign ‘EASYJET’ as a whole, but not to any extent to ‘EASY’ alone. Furthermore, the opponent has not provided sufficient independent and direct evidence indicating that the public perceives the general combination of ‘easy’ together with any additional non-distinctive, weak or even distinctive element as a badge of origin linked to the opponent. Therefore, the Opposition Division finds that the opponent has failed to prove that there is any assumption of a family of marks on part of the public. The opponent has not managed to prove that there exists any distinctive common denominator between the contested sign and the opponent’s marks that enables an association between them.

In the present case, the opponent failed to prove that it uses a family of ‘easy’ marks. Consequently, the claim of a series of marks cannot be accepted and the argument in relation to the family of marks is not a relevant factor in establishing a likelihood of confusion in the present case.

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

The opponent also based its opposition on Earlier marks 1 (‘EASYEVERYTHING’), 2 (‘EASYGROUP)’, 3 ( Shape10 ), 4 ( Shape11 ), 6 (‘EASYGROUP’), 7 (‘EASYGYM’), and 9 (‘EASYFOOTBALL’ ).

These earlier rights are structured in the same manner as the one which has already been compared, namely they are composed of the non-distinctive element ‘EASY’ which is followed by another word or expression such as ‘EVERYTHING’, ‘GROUP’, ‘.com’, ‘Mobile’, ‘GYM’, and ‘FOOTBALL’. These elements are not present in the contested trade mark and they show no stronger visual, aural or conceptual coincidences with the earlier mark that has been compared above.

With respect to these said earlier marks, and having regard to the Guidelines concerning marks that share an element with no distinctiveness referred to above, as the coincidence in ‘EASY’ concerns a non-distinctive component with respect to all the goods and services in question, there can be no likelihood of confusion given that none of these earlier marks contains other figurative or word elements that are similar to the contested sign such as could lead to a finding that the overall impression were identical or highly similar. Moreover, for the sake of completeness, it may be noted also that for these Earlier marks no enhanced distinctiveness has been proven (with respect to ‘EASYGROUP’ and ‘EASYGYM’, see reasons above within the examination of Article 8(5)) or claimed (for the remaining earlier marks).

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

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) 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.

Shape12

The Opposition Division

Catherine MEDINA

Kieran HENEGHAN

María del Carmen

COBOS PALOMO

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.

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