OPPOSITION No B 2 895 152

easyGroup Ltd, 10 Ansdell Street, Kensington, W8 5BN, London, United Kingdom (opponent), represented by Kilburn & Strode LLP, Lacon London 84 Theobalds Road, WC1X 8NL, London, United Kingdom (professional representative)

a g a i n s t

Easy Fast Track, 455 promenade des Anglais, 06200, Nice, France (applicant), represented by Melinda Gaglioti, 48 Avenue Jean Médecin Le Regina, 06000, Nice, France (professional representative).

On 04/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 895 152 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 336 422 (figurative mark). The opposition is based on the following earlier trade marks:

1. European Union trade mark registration No 10 584 001 for the word mark ‘EASYJET’ (hereinafter ‘Earlier Mark 1’);

2. European Union trade mark registration No 10 583 111 for the word mark ‘EASYGROUP’ (hereinafter ‘Earlier Mark 2’);

3. European Union trade mark registration No 9 220 799 for the figurative mark  (hereinafter ‘Earlier Mark 3’);

4. European Union trade mark registration No 14 770 705 for the word mark ‘EASYAIR’ (hereinafter ‘Earlier Mark 4’);

5. European Union trade mark registration No 14 920 383 for the figurative mark (hereinafter ‘Earlier Mark 5’);

6. European Union trade mark registration No 16 119 844 for the word mark ‘easyGo’ (hereinafter ‘Earlier Mark 6’);

7. European Union trade mark registration No 16 084 022 for the word mark ‘easyKiosk’ (hereinafter ‘Earlier Mark 7’);

8. European Union trade mark registration No 14 995 781 for the word mark ‘EASYAIRPORTTRANSFERS’ (hereinafter ‘Earlier Mark 8’);

9. European Union trade mark registration No 15 000 326 for the word mark ‘EASYTRANSFERS’ (hereinafter ‘Earlier Mark 9’);

10. European Union trade mark registration No 14 995 765 for the word mark ‘EASYAIRPORTS’ (hereinafter ‘Earlier Mark 10’).

In relation to the Earlier Marks 3, 4, 5, 6, 7, 8, 9 and 10 the opponent invoked Article 8(1)(b) EUTMR. In relation to the Earlier Marks 1 and 2 the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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.

1. Reputation of the earlier trade marks

According to the opponent, the Earlier Marks 1 and 2 have reputation in the European Union and the United Kingdom in relation to some of the services for which they are registered.

Reputation implies a knowledge threshold that 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 08/02/2017. 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 the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Earlier Mark 1 ‘EASYJET’

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.

Earlier Mark 2 ‘EASYGROUP’

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.

The opposition is directed against the following goods and services:

Class 9: Computer software applications, downloadable; Mobile apps; Downloadable applications for use with mobile devices; Downloadable mobile applications for the management of data; Downloadable mobile applications for the management of information; Downloadable mobile applications for the transmission of information; Downloadable mobile applications for the transmission of data; Software; Software and applications for mobile devices.

Class 35: Arranging subscriptions to Internet services; Administration of frequent flyer programs; Loyalty, incentive and bonus program services; Administration of consumer loyalty programs; Provision of an on-line marketplace for buyers and sellers of goods and services; Business management; Business administration; Airport administration services; Subscriptions to telecommunications database services; Subscription to an information media package; Mediation and conclusion of commercial transactions for others.

Class 39: Scheduled passenger airline services; Airport services; Air transportation services featuring a frequent flyer bonus program; Providing transport and travel information via mobile telecommunications apparatus and devices.

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

On 30/11/2017 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 outlines the history of the ‘easy’ trade marks and states, among others, 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.

• 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 and annual turnover.

• The easyGroup has founded many other EASY businesses, i.e. trade mark registrations around the world, including ‘easyInternetCafe’, ‘easyCar’, ‘easyBus’, ‘easyCinema’, ‘easyMoney’, ‘easyCruise’, ‘easyProperty’ and ‘easyValue’, ‘easyPizza’, ‘easyGym’, etc.

Exhibit 2: several print-outs from different webistes:

• undated extract from 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 (November 2016, November 2015, September 2015 and September 2013), showing the number of passengers that used easyJet (i.e. 73, 1 million in 2016 and 68,8 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 Stellos 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.

• an extract from an unknown source from July 2017, mentioning the founder of EasyJet company and its activities in Greece.

• www.telegraph.co.uk: article 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-fills 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.

• www.campaignlive.co.uk: 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 Grand Prix for its ‘Europe’s by easyJet’ campaign.

• www.theguardian.com: article of 17/11/2015 mentioning that EasyJet profits hit 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 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 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 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.

• 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.com: an extract mentioning that EasyJet passengers were first to see UNICEF’s virtual reality film (which was a result of 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.).

Exhibit 3: A picture showing a depiction of ‘easyKiosk’ trade mark.

Exhibit 4: A witness statement of 04/04/2017, signed by Mr Paul David Griffiths, the Chief Executive of the Museum of Brands. In the Witness Statement, Mr Paul David Griffiths attests the fame of the ‘easy’ brand which commenced with the launch of the airline ‘easyJet’ in 1995 and covers a diverse range of products and services. According to Mr Griffiths the widespread licencing of the mark ‘easy’ into fields as diverse as travel, retail, foodstuffs, gyms and estate agency has led to the recognition of the mark easyGroup.

Exhibit 5 includes: A print out from www.google.co.uk, showing different entries for the wording ‘fast track’.

In relation to the witness statements (Exhibi1 and Exhibit 4), 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 declaration are supported by the other items of evidence.

The remaining evidence consists of several print-outs from different websites. This evidence does show that the commercial activity of the opponent is providing budget airline services under a trade mark ‘EASYJET’ (since the year 2000 or even before). The evidence also clearly shows that the trade mark ‘EASYJET’ continuously 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 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 allow the Opposition Division to conclude that the earlier trade mark ‘EASYJET’ 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 a consolidated 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 reputation 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 reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods/services in question, the relevant consumers, etc.

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

Consequently, the opponent has demonstrated that its trade mark ‘EASYJET’ enjoyed reputation in the European Union, and in the United Kingdom respectively on the filing date of the 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 the Earlier Mark 2 ‘EASYGROUP’ has also acquired a reputation in the relevant territories with regard to the services for which the opponent claims reputation. The articles taken from different websites do demonstrate that the earlier mark is present in the market but they do not indicate the degree of recognition by the relevant public, if the mark is recognised by the relevant public or what the position of the mark is on the market. On the basis of the documents submitted, the Opposition Division concludes that the opponent failed to prove that the earlier mark ‘EASYGROUP’ is reputed in the relevant territories with regard to the services for which the opponent claims reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that Earlier Mark 2 has 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 this earlier mark.

The examination of the present opposition will continue on the grounds of Article 8(5) EUTMR only on the basis of the Earlier Mark 1.

2. The signs

EASYJET
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 the part of the relevant public (i.e. English and French speaking part of the public). For this part of the public, the element ‘JET’ is therefore non-distinctive in relation to the relevant services at hand. For the remaining part of the public, the word ‘JET’ has no meaning and it is considered to be distinctive.

The word ‘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 word ‘EASY’ may laud the services concerned (13/05/2015, T-608/13, easy Air-airtours, EU:T:2015:282, § 38 and 57), it is considered to be non-distinctive.

In relation to the contested mark, the Opposition Division is of the opinion, that for the reason explained above, the relevant consumer will break it down into elements ‘EASY’, ‘FAST’ and ‘TRACK’, which suggest specific meanings. The word ‘EASY’ has the meaning explained above and the considerations mentioned above on the distinctiveness of the word ‘EASY’ are equally applicable here, i.e. this element lacks any ability to function as a badge of origin for the relevant goods and services. The word ‘FASTRACK’ is a clear combination or a misspelling of the words ‘FAST’ and ‘TRACK’ which can be expected to be understood by at least the English speaking part of the relevant public as referring to ‘a route or method which provides for more rapid results than usual’. In relation to the relevant goods and services, this word could mean that the services are provided more rapidly than usual. Therefore, this element is considered to be descriptive at least for the English speaking part of the public as it gives information that the relevant goods and services are speeded up for customers. For the part of the public that is not familiar with English language, the element ‘FASTRACK’ is meaningless and therefore distinctive.

Furthermore, the English speaking part of the public will also understand the combination ‘easyfastrack’ as a whole as referring a simple (easy) route or method which provides for more rapid results than usual. Therefore, this element as a whole has a low degree of distinctiveness for the mentioned public.

The contested mark also includes a figurative element composed of three black stripes and an arrow pointing to the right which would only be regarded as a decorative element. In relation to this figurative element, it also has to be noted that 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).

The marks have no elements that could be considered more dominant than other elements.

Visually and aurally, the signs coincide in the element ‘EASY’. However, they differ in the word ‘JET’ of the earlier mark and the word ‘FASTRACK’ and the figurative element of the contested mark.

Given that the common element ‘easy’ is considered to be non-distinctive, the relevant public will be inclined to focus on the remaining verbal and, visually, also figurative elements of the signs. Although in the present case, at least for the part of the public, the differing elements are not distinctive either, they still contribute to differentiating the signs. 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.

Since the common element ‘easy’ is non-distinctive, the conceptual similarity created by this element cannot be given too much weight and the semantic differences of the other verbal elements ‘JET’ and ‘FASTRACK’ (albeit also non-distinctive for a part of the public only) also play a differentiating role. Therefore, the signs are conceptually similar to a very low degree.

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

3. The ‘link’ between the signs

As seen above, the earlier mark ‘EASYJET’ is reputed and the signs are similar to some extent. 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 certain degree of visual, aural and conceptual similarity as they share the element ‘EASY’ placed at the beginning of both marks. However, this does not mean that the relevant public is likely to establish a link between them. When consideration is given to the goods and services in question (transportation of passengers and travelers by air, airport services), it is clear that the similarities between the signs in dispute relate to an element which is non-distinctive. As it has been shown above, the common word ‘EASY’ will be understood throughout the relevant territory as referring to something ‘simple’ and may laudall the goods and 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 goods and services at issue but, instead, it indicates that the goods and services offered are easy to use of easy to access.

Therefore, in view of the non-distinctive character of the element ‘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 element ‘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 a specific feature of the goods and 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.

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 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 will continue with the examination of the opposition under Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Earlier Mark 1 ‘EASYJET’.

1. The goods and services

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

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 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, 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, playing cards, gymnastic and sporting articles, gymnastic and sporting articles, scooters; marketing and publicity services; dissemination of advertising, marketing and publicity materials.

Class 36: Insurance; financial services; real estate agency services; banking; issuing of tokens of value; provision of financial information, monetary affairs; foreign exchange services; advice and consultancy relating to the aforesaid services.

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.

The contested goods and services are the following:

Class 9: Computer software applications, downloadable; Mobile apps; Downloadable applications for use with mobile devices; Downloadable mobile applications for the management of data; Downloadable mobile applications for the management of information; Downloadable mobile applications for the transmission of information; Downloadable mobile applications for the transmission of data; Software; Software and applications for mobile devices.

Class 35: Arranging subscriptions to Internet services; Administration of frequent flyer programs; Loyalty, incentive and bonus program services; Administration of consumer loyalty programs; Provision of an on-line marketplace for buyers and sellers of goods and services; Business management; Business administration; Airport administration services; Subscriptions to telecommunications database services; Subscription to an information media package; Mediation and conclusion of commercial transactions for others.

Class 39: Scheduled passenger airline services; Airport services; Air transportation services featuring a frequent flyer bonus program; Providing transport and travel information via mobile telecommunications apparatus and devices.

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

Contested goods in Class 9

The contested computer software applications, downloadable are included in the broad term of the opponent’s software downloadable from the Internet. The goods are identical.

The contested software and applications for mobile devices are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested Mobile apps; Downloadable applications for use with mobile devices; Downloadable mobile applications for the management of data; Downloadable mobile applications for the management of information; Downloadable mobile applications for the transmission of information; downloadable mobile applications for the transmission of data are included in the broad category of the opponent’s software downloadable from the Internet. The goods are identical.

The contested software includes, as a broader category the opponent’s computer software. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

The contested business management; business administration are identically contained in both lists of services.

The contested Arranging subscriptions to Internet services; Administration of frequent flyer programs; Loyalty, incentive and bonus program services; Administration of consumer loyalty programs; Provision of an on-line marketplace for buyers and sellers of goods and services; Airport administration services; Subscriptions to telecommunications database services; subscription to an information media package are included in the broad category of, the opponent’s business administration. Therefore, they are identical.

The contested mediation and conclusion of commercial transactions for others are at least similar to the opponent’s business administration as they can have the same nature and purpose, are provided by the same companies, coincide in their distribution channels and the method of use.

Contested services in Class 39

The contested scheduled passenger airline services are included in the broad category of the opponent’s airline services. Therefore, they are identical.

The contested airport services include, as a broader category the opponent’s airport check-in services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested air transportation services featuring a frequent flyer bonus program overlap with the opponent’s transportation of passengers and travelers by air. The services are identical.

The contested providing transport and travel information via mobile telecommunications apparatus and devices are similar to the opponent’s transport, as the services may have the same distribution channels, relevant public and origins. The relevant public may expect companies responsible for various transport services also to provide the necessary information and the option of booking the transport services in question.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

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

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier trade mark ‘EASYJET’ has a reputation in the European Union and the United Kingdom in connection with part of the services for which it is registered, namely for the services in Class 39. 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 concludes that the Earlier Mark 1 ‘EASYJET’ acquired reputation and therefore also a high degree of distinctiveness through use for some of the services in Class 39, namely

However, as regards the remaining relevant goods and services, the distinctiveness of the earlier mark of the earlier mark will rest on its distinctiveness per se. In relation to these goods and services the distinctive character of the earlier mark lies in the combination of its respective elements. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of (for a part of the public) non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services under comparison were found to be partially identical and partially similar. The signs are visually and aurally similar to a low degree and conceptually similar to a very low degree, as they coincide in the non-distinctive element ‘EASY’, which is likely to be understood by the relevant public throughout the relevant territory. The level of attention of the relevant public is considered to be average to high.

The earlier mark ‘EASYJET’ enjoys enhanced distinctiveness as a result of its intensive use, in relation to transportation of passengers and travelers by air; airline services in Class 39. However, the evidence of reputation submitted by the opponent does not show that also the stand-alone word ‘EASY’ enjoys reputation or enhanced distinctiveness in the perception of the relevant public. For the remaining relevant goods and services the distinctiveness of the earlier mark is deemed to be normal.

Even though the word ‘EASY’ retained an independent role in the contested mark, it is non-distinctive and is therefore reducing the likelihood of consumer reliance on that element as an indication of origin for the goods and services at hand. The differing elements ‘JET’ in case of the earlier mark and ‘FASTRACK’ are not distinctive either (at least for the English speaking part of the public), however they significantly contribute to 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 where an average degree of attention is displayed by the public and in relation to identical goods and services.

For the sake of completeness it has to be noted that, the earlier mark ‘EASYJET’ has already been discussed above under Article 8(5) EUTMR, where no link between the earlier mark and the contested sign could be established, particularly bearing in mind the non-distinctive character of the element ‘EASY’, which is the only element that the marks have in common. The ambit of protection covered by the provisions of Article 8(5) EUTMR is broader than that provided in Article 8(1)(b) EUTMR given that even a remote similarity can be sufficient for the contested sign to bring the opponent’s reputed mark in the mind of the relevant public for the opposition to succeed under Article 8(5) EUTMR. Since the opposition based on the earlier mark ‘EASYJET’ is unsuccessful under Article 8(5) EUTMR, it must also fail under Article 8(1)(b) EUTMR.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘EASY’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, 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 word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which 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.

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’.

The opponent must prove that it has used the marks forming the alleged family in the marketplace. For the contested sign to trigger in the consumers’ minds an association with an opponent’s alleged family of marks, the public must be aware that various trade marks with the same characteristics exist. Therefore, the marks forming the alleged family must have been used to such an extent that the relevant public has become familiar with this family of marks as designating the goods and/or services of a particular undertaking.

The opponent refers to various decisions of the Office that confirmed the family of marks, i.e. decisions of the Opposition Division B 754 418 (of 30/01/2008), B 1 001 694 (of 30/01/2008), B 420 457 (of 13/02/2004) and B 634 024 (of 31/01/2005). It also refers to two articles published in Daily Telegraph and Reuters.

The evidence submitted by the opponent during the substantiation period in support of its claim for a family of marks mentions some trade marks with the element ‘EASY’. However, the documents do not contain sufficient indications of the extent and time of use of each of these marks. The opponent did not prove that the marks allegedly forming the family are being used, by, for example, submitting invoices or other evidence of commercial transactions that could show the reality of the commercial use of the marks in the relevant territory and that goods or services bearing these marks were made available to consumers on the market. There is no convincing information demonstrating that consumers are aware that there is a family of marks used in the same fields as those covered by the contested trade mark.

With respect to the previous decisions, it has to be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The opponent refers only to the decisions and their outcomes. Moreover, the evidence which has been submitted in the mentioned cases is not the same than in the present case and the decisions to which the opponent referred belong to the period between 2004 and 2008, which is way before the publication of the contested mark. Under these circumstances, the Opposition Division bases its findings on only the material submitted in the present proceedings.

In the present case, the opponent failed to prove that it uses a family of ‘easy’ marks. Consequently, the claim of a series of mark 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 must be rejected in its entirety.

The opponent also based its opposition on the Earlier Marks 2, 4, 6, 7, 8, 9 and 10 (listed above in the section REASONS). 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 ‘GROUP’, ‘AIR’ ‘Go’, ‘Kiosk’, ‘AIRTRANSPORTTRANSFERS’, ‘TRANSFERS’ and ‘AIRPORTS’. 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. Moreover, for these marks no enhanced distinctiveness has been proven (EASYGROUP) or claimed (for the remaining earlier marks). The additional elements account for visual, aural, and for at least the English-speaking part of the public also for conceptual differences between the signs. Therefore, the same findings apply to these earlier marks as to the one compared above, even under the presumption that the contested goods and services are identical to the ones covered by these earlier marks.

Furthermore, in relation to the Earlier Marks 3  and 5 , they include the element ‘EASY’, considered to be non-distinctive in relation to all the services at hand, which is followed by the word ‘Flights’ (Earlier Mark 3) and ‘.com’ (Earlier Mark 5) placed against an orange background. The additional elements account for the visual, aural, and where understood also the conceptual differences between the signs. Therefore, the same findings apply to these earlier marks as to the one compared above, even under the presumption that the contested goods and services are identical to the ones covered by these 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 those earlier marks. Therefore, the opposition is also 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Oana-Alina STURZA

Janja FELC

Keeva DOHERTY

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.