OPPOSITION No B 2 942 962

Travel Service a.s., K Letišti 1068/30, 16008 Praha 6, Czech Republic (opponent), represented by Simona Hejdová, Koliště 13a, 602 00 Brno, Czech Republic (professional representative)

a g a i n s t

Fuji Corporation, 19 Chausuyama, Yamamachi, Chiryu-shi, 472-8686 Aichi, Japan (applicant), represented by Sipara Limited, Unit 1 Rochester House, Eynsham Road, Farmoor OX2 9NH, United Kingdom (professional representative)

On 14/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 942 962 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 432 916. The opposition is based on, inter alia, European Union trade mark registration No 5 792 932. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

The signs in dispute are the following:

Earlier trade mark (No 5 792 932)	Contested sign

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based, namely European Union trade mark registrations No 5 792 932, No 10 092 906, No 3 650 595 and No 9 566 233 as well as Czech trade mark registration No 301 433.

The date of filing of the contested application is 03/03/2017. The opponent was therefore required to prove that all the trade marks on which the opposition is based were put to genuine use in the European Union and in the Czech Republic respectively from 03/03/2012 to 02/03/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were all registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the services on which the opposition is based. For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the proof of use concerning European Union trade mark registration No 5 792 932. In the case of this earlier mark, it is based on the following services:

Class 37: Airplane maintenance and repair, repair and maintenance of electronical goods.

Class 39: Air transport, transport brokerage, transport of goods and persons by railway, ship and aeroplane, arranging of all kind of tours, services relating to the storing of goods, rescue of persons, quarded transport of money and valuables, ambulance transport, transportation information, booking of seats for travel, rental of aeroplanes, packaging and delivering of goods, none of this services to be rendered by car.

Class 41: Editing activity, publication of text, books, journals, on-line electronic publication of text, books, journals; interpretations, translations, teaching and instruction of flying personnel, cabin crew for travellers accompaniment and ground crew.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 08/11/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 13/01/2018 to submit evidence of use of the earlier trade marks (as well as any further facts, evidence and arguments to substantiate the opposition). At the request of the opponent, this time limit was extended until 13/03/2018. On 09/03/2018 and 12/03/2018, within the time limit, the opponent submitted arguments and evidence of use (and reputation).

The evidence to be taken into account is the following:

• 2011:

• a screenshot from the website Gliding.cz with a news flash dated 28/07/2011 and featuring the below logo (together with the logos of other brands) at the top of the page:

• 2012:

• two undated pictures of the following outdoor billboards both placed next to a motorway:

• two screenshots from the website iDNES.cz dated February and March 2012 respectively where the following two phrases have been translated into English ‘SmartWings introduces regular connection to Athens’ and ‘Two connections per week from Mošnov to Paris’. Both articles also include the following picture:

• a screenshot from an unknown website (which according to the opponent is www.seznam.cz) showing an article dated 27/10/2012 and featuring a banner advertisement referring to ‘SMARTWINGS’ and stating, inter alia, ‘cheap tickets’ and ‘Praha - Paříž / Praha - Řím’;

• 2013:

• two screenshots from the website iDNES.cz dated March and June 2013 respectively where it is stated that the opponent (Travel Service) and CSA (Czech Airlines) have concluded an agreement on sharing flights;

• an extract from www.seznam.cz dated 13/05/2013 as well as undated screenshots from Novinky.cz and an unknown website respectively, all showing a banner advertisement for ‘SMARTWINGS’ flights;

• a screenshot of an undated e-mail from seznam.cz featuring a banner advertisement to the right for ‘SMARTWINGS’ flights;

• an audio file in Czech in which ‘SMARTWINGS’, ‘Dubai’ and ‘www.smartwings.com’ are mentioned and which the opponent indicates is a ‘Radio Impuls’ advertisement from 2013;

• an advertisement for ‘SMARTWINGS’ flights published in Sparta Praha’s official club magazine dated 09/04/2013 which, according to the Wikipedia extract submitted, is a football club based in Prague and the most successful club in the Czech Republic;

• a screenshot from an unknown website including a picture dated 17/07/2014 of a Slavia Praha football player with a ‘SMARTWINGS’ logo on the football shirt, a screenshot from Slavia Praha’s website including a picture dated 17/07/2013 of a woman wearing a Slavia Praha football shirt with a ‘SMARTWINGS’ logo which, according to the Wikipedia extract submitted, is also a football club based in Prague and the second most successful club in the Czech Republic;

• 2014:

• two undated pictures of the following outdoor billboard placed next to a motorway and an urban road respectively:

• a screenshot from the Wayback Machine dated 20/07/2014 of the website www.fcslovanliberec.cz showing a ‘SMARTWINGS’ logo together with seven other brands mentioned to be their ‘partners’, a screenshot from FC Slovan Liberec’s website including a picture dated 25/07/2014 showing a group of players boarding a ‘SMARTWINGS’ aeroplane, an undated picture from FC Slovan Liberec’s photo gallery of a football match where a ‘SMARTWINGS’ logo is shown in the background on one of the banners surrounding the football pitch as well as a Wikipedia extract indicating that FC Slovan Liberec is a football club based in Liberec and one of the most successful clubs in the Czech Republic;

• an undated screenshot from Golf.cz but which includes a mention of ‘Golf.cz Tour 2014 - Albatross’ and an undated screenshot from www.idnes.cz, both featuring a banner advertisement of ‘SMARTWINGS’ flights;

• a screenshot from Novinky.cz with an article dated 11/09/2014 mentioning that ‘SmartWings will fly to Dubai six times per week’ and including a picture of a ‘SMARTWINGS’ aeroplane;

• screenshots from iSport.cz, mf.cz and TTG Czech The Business of Selling Travel with mentions of the tennis tournament ‘SmartWings Open 2014’ dated 30/03/2014, 12/05/2014 and 04/05/2014 respectively, copy of one undated page from an unknown newspaper or magazine mentioning the same tournament, copy of an advertisement for ‘smartWings Open 2014’ also featuring a ‘SMARTWINGS’ logo, a few pictures from the tournament showing advertising banners with ‘SMARTWINGS’ logos around the tennis courts;

• copies of documents concerning the Internet Effectiveness Awards 2014 showing that www.smartwings.cz won the first prize in the category ‘tourism, transport’ for its new booking system for flight ticket sales;

• 2015:

• four undated pictures of the following outdoor billboards placed next to different motorways/urban roads:

• a screenshot from an unknown website concerning the golf tournament ‘Albatross Open’ mentioning ‘Colourful Tour Albatross by SmartWings – warning start from 7:30!!!’ and including a picture of a ‘SMARTWINGS’ logo and mentioning the date 05/07/2015;

• a screenshot from an unknown website and a screenshot from Youtube.cz concerning the tennis tournament ‘SmartWings Open 2015’;

• an audio file in Czech mentioning ‘SMARTWINGS’ and which the opponent indicates is a ‘Radio Impuls’ advertisement between March-May 2015 and a video clip with a ‘SMARTWINGS’ commercial in Czech and which the opponent indicates is a TV spot from 2015;

• a Wikipedia extract about the 2015 UniCredit Czech Open, a professional tennis tournament played in Prostějov, Czech Republic between 01/06-07/06/2015 together with some undated pictures showing ‘SMARTWINGS’ banners and advertising on and around a tennis court;

• a copy of the opponent’s internal annual report 2015 indicating the opponent’s total revenue for each of the years between 2010 and 2015 (ranging from around 9.3 million in 2010 to around 16.5 million in 2015 indicated to be in thousands of CZK) and also indicating, inter alia, ‘charter revenue’ (ranging from around 6.5 million in 2010 and 7.6 million in 2015), ‘scheduled flights revenue’ (ranging from around 1.5 million in 2010 and 4.2 million in 2015), ‘wet & dry lease revenue incl. services’ and ‘aircraft lease’. The report also states, inter alia, that the revenues realized under the ‘SmartWings’ trademark have grown most dynamically and that they were growing faster than other revenues from charter carriage. The report also includes a table with ‘Advertising Costs’ of the trade mark ‘SmartWings’ for each year between 2009 and 2015 (ranging from around 40 000 in 2009 and 25 000 in 2015 but not expressly indicated to be in thousands of CZK);

• 2016:

• copy of a signed business and media service agreement between the opponent and BigMedia, spol. s r.o. concerning the provision of 33 advertising spaces on different motorways/roads in the Czech Republic between 01/03/2016 and 31/03/2016 together with four undated pictures of different outdoor billboards featuring ‘SMARTWINGS’, seven further undated pictures of different outdoor billboards featuring ‘SMARTWINGS’ which the opponent claims are from May and September 2016 respectively;

• screenshots from akcie.cz, m.zive.cz (both undated), The Telegraph (dated 31/10/2016), finanz.ru and Top News (in Russian) all featuring a banner advertisement for ‘SMARTWINGS’ flights;

• a screenshot from iDNES.cz with an article dated 05/04/2016 indicating that ‘SmartWings’ is starting a new line to Emirates, from Ostrava directly to Dubai;

• copies of different articles from the newspapers: Lidové Noviny (dated 2016), Mladá Fronta Dnes (dated 17/05/2016 and 19/05/2016 respectively) featuring advertisements for ‘SMARTWINGS’ flights;

• four undated screenshots from Novinky.cz featuring banner advertisements for ‘SMARTWINGS’ flights;

• undated pictures showing advertisements for ‘SMARTWINGS’ flights in different subways which the opponent claims are Prague metro ads from December 2016;

• copy of a binding order signed by the opponent for a ‘Smart Wings’ campaign on the radio channel ‘Frekvence 1’ to be broadcast eight times a day on eight different days between 11/05/2016 and 20/05/2016 together with two audio files in Czech in which ‘SMARTWINGS’ is mentioned and indicated to be for ‘Frekvence 1’ and ‘Radio Impuls’ respectively;

• a Wikipedia extract about the 2016 J&T Banka Prague Open, a professional tennis tournament played in Prague, Czech Republic between 25/04/2016-30/04/2016 together with some pictures showing ‘SMARTWINGS’ logos featured on the banners around a tennis court and a copy of the tournament poster including a ‘SMARTWINGS’ logo together with other brands sponsoring the tournament;

• a copy of the opponent’s internal annual report 2016 with similar indications as those outlined above but for each year between 2011 and 2016. This report also includes a footnote explaining that ‘Charter revenue includes even the revenue generated by Business Jet (aerotaxi)’ and that ‘Scheduled Flights revenue includes even the revenue generated by sales of flight tickets for shared flights’;

• 2017:

• two undated pictures of outdoor billboards featuring advertisements for ‘SMARTWINGS’ flights;

• pictures of three different undated articles in Czech from unknown newspapers featuring advertisements for ‘SMARTWINGS’ flights and a screenshot from Blesk.cz including the date ‘22 květen 2017’ and featuring a banner advertisement for ‘SMARTWINGS’ flights;

• an undated picture of a golf course with a ‘SMARTWINGS’ advertisement;

• a Wikipedia extract about Hockey Club Sparta Praha, a Prague based Czech ice hockey team playing in the Czech Extraliga, together with undated pictures from a Sparta Praha home game showing ‘SMARTWINGS’ logos featured along the side above the ice hockey rink stands;

• a screenshot from the website iDNES.cz dated 25/09/2017 featuring a banner advertisement for ‘SMARTWINGS’ flights;

• documents and pictures from the tennis tournament 2017 J&T Banka Prague Open, a professional tennis tournament played in Prague between 01/05-06/05/2017 together with, inter alia, some pictures showing ‘SMARTWINGS’ logos featured on the banners around the tennis courts;

• a screenshot from the marketing website summary of www.smartwings.com between 01/01/2017-19/12/2017 indicating around 1.4 million users and 2.4 million sessions. Around 1 million sessions are indicated to be from the Czech Republic;

• a screenshot from the website Novinky.cz with an article dated 16/01/2017 stating inter alia that, according to a spokesman of Travel Service, last year Travel Service transported almost 6.3 million passengers, nearly 2 million of which under the brand ‘SmartWings’;

• undated pictures showing advertisements for ‘SMARTWINGS’ flights in different subways which the opponent claims are Prague metro ads from May and June 2017;

• four undated screenshots from unknown websites featuring banner advertisements for ‘SMARTWINGS’ flights;

• copies of two orders signed by the opponent for a ‘Smart Wings’ commercial to be placed on TV channels with measured audience by TV Nova s.r.o. between the dates 15/11/2017-30/11/2017 and 01/12/2017-17/12/2017 respectively together with a video clip featuring a ‘SMARTWINGS’ commercial in Czech;

• Miscellaneous:

• two extracts from www.smartwings.com dated 02/03/2018 with information about ‘SMARTWINGS’ and stating, inter alia, that it is a brand for regular flights with the base at the Airport Prague and that during the year, flights to more than forty popular destinations throughout and outside Europe are offered with departures from Prague, Brno and Ostrava and a list of destinations including mostly different countries and cities in the European Union as well as an extract showing a map of Europe with ‘SMARTWINGS’ destinations;

• an extract from www.ch-aviation.com dated 02/03/2018 indicating, inter alia, that ‘Travel Service acquired further stakes in CSA, bringing its stake up to almost 98%’, that ‘Travel Service's operations – through its ACMI/charter unit and its seat-only business smartwings – are almost twice the size of CSA's’, and that, ‘according to ch-aviation capacity data, Smart Wings makes up 10.8% of the Czech market in terms of scheduled seat capacity, while CSA makes up 17.4%’;

• an extract from www.digitalnewsreport.org dated 01/03/2018 with information about the Czech media landscape originating from a Digital News Report 2017 and indicating the weekly usage of different media brands, inter alia, media brands ‘Used last week’ as follows (TV, Radio and Print): TV Nova news (33%), Mlada Fronta Dnes (21%), Blesk (18%), Radio Impuls news (15%), Frekvence 1 news (11%) and as follows (online): Seznam.cz (45%), iDnes.cz (43%), Noviky.cz (33%), Blesk.cz (15%) as well as a copy of the Digital News Report 2017 issued by Reuters Institute for the Study of Journalism;

• a decal with a ‘SMARTWINGS’ aeroplane design designed for a cut-down Minicraft;

• a copy of the full extract of the commercial register for Travel Service, a.s. dated 09/03/2018;

• an undated screenshot from the opponent’s ‘Travel Service / SmartWings’ LinkedIn profile showing 3.374 followers;

• an undated extract from the opponent’s Travel Service website indicating that ‘SmartWings’ is the opponent’s brand for regular flights;

• an undated Google image search for ‘SmartWings’ with pictures of ‘SmartWings’ branded aeroplanes;

• screenshots from the Wayback Machine showing that the www.smartwings.com website has been saved 798 times between 2004 and 2018 and the www.travelservice.aero website 457 times during the same period;

• an extract from Wikipedia dated 01/03/2018 with information about ‘SmartWings’;

• extracts from https://who.is/whois showing that the opponent is the registrant of the websites www.smartwings.com (first registered on 15/02/2003) and www.travelservice.aero; and

• an undated PDF document with information about Travel Service and its company profile including an indication that ‘SmartWings’ is used for scheduled flights.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The evidence filed by the opponent does not show any use of ‘SMARTWINGS’ for any of the services covered by the earlier trade mark in Classes 37 and 41 and the evidence furnished by the opponent is therefore clearly insufficient to prove that the earlier trade mark has been used for any of the services covered in these classes.

However, even if part of the evidence is undated or otherwise outside the relevant time period, part of the evidence is also dated from all the relevant years between 2012-2017 and show at least some use of ‘SMARTWINGS’ (including in the form as registered by the earlier mark) for passenger flights to different destinations in the European Union as shown in particular by the opponent’s advertisements in different media, including in newspapers, on-line on different websites, on the radio and during different sports tournaments. There are also different newspaper articles referring to new flight lines to be offered by the opponent under the ‘SMARTWINGS’ brand. Therefore, even if the opponent did not submit any invoices or other official accounting documents and even if the only evidence concerning the commercial volume (and advertising expenditure) of ‘SMARTWINGS’ in relation to passenger flights originate from the opponent itself, the Opposition Division still considers that the evidence submitted in its entirety is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory, that is to say that the use made of the earlier mark was not merely token use for the sole purpose of preserving the rights conferred by the mark but rather with a view to create or preserve an outlet for the relevant services.

In view of the above, the evidence submitted is sufficient to show genuine use of the earlier mark at least in relation to some of the services covered in Class 39, such as air transport. Nevertheless, since it cannot change the outcome reached below, the Opposition Division will proceed on the assumption that the earlier mark has been genuinely used for all the services covered in Class 39, which is the best light in which the opponent’s proof of use can be seen:

Class 39: Air transport, transport brokerage, transport of goods and persons by railway, ship and aeroplane, arranging of all kind of tours, services relating to the storing of goods, rescue of persons, quarded transport of money and valuables, ambulance transport, transportation information, booking of seats for travel, rental of aeroplanes, packaging and delivering of goods, none of this services to be rendered by car.

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.

As mentioned above, the opposition is based on more than one earlier trade mark but the Opposition Division will first examine the opposition in relation to the opponent’s European Union trade mark No 5 792 932.

1. The goods and services

The services on which the opposition is based and for which genuine use has been assumed are the following:

Class 39: Air transport, transport brokerage, transport of goods and persons by railway, ship and aeroplane, arranging of all kind of tours, services relating to the storing of goods, rescue of persons, quarded transport of money and valuables, ambulance transport, transportation information, booking of seats for travel, rental of aeroplanes, packaging and delivering of goods, none of this services to be rendered by car.

The contested goods are the following:

Class 7: Machine tools; motors and engines [except for land vehicles]; machine coupling and transmission components [except for land vehicles]; automatic electronic parts mounting apparatus for automatically mounting electronic parts such as IC chips on printed circuit boards; automatic electronic parts insertion machines for putting electronic parts in printed circuit boards; dispensers for printed boards; adhesive curing equipment for printed boards; soldering machines for printed boards; semiconductor manufacturing apparatus; plasma surface treatment apparatus for semiconductor substrates; plasma cleaning apparatus for semiconductor substrates; surface adhesion improving treatment apparatus using plasma for semiconductor substrates, metal, glass, rubber, synthetic resin, semiconductor electronic parts, eyeglass lenses, optical instrument parts, automobile parts, cutting tools and solar cells; hydrophilic nature improving treatment apparatus using plasma for semiconductor substrates, metal, glass, rubber, synthetic resin, semiconductor electronic parts, eyeglass lenses, optical instrument parts, automobile parts, cutting tools and solar cells; plasma cleaning apparatus for semiconductor substrates, metal, glass, rubber, synthetic resin, semiconductor electronic parts, eyeglass lenses, optical instrument parts, automobile parts, cutting tools and solar cells; oxide film removing apparatus using plasma for semiconductor substrates, metal, semiconductor electronic parts and metallic automobile parts; plasma etching apparatus for semiconductor materials; residue removing apparatus using plasma for use in semiconductor substrate manufacturing process; metallic surface hardening treatment apparatus using plasma for improving abrasion resistance of cutting tools; surface finishing treatment apparatus using plasma for easier forming of prosthesis coating over the ceramic material surfaces of junctions of artificial bones or joints during their manufacturing process; automated small parts assembly equipment; automated assembly machinery for fuel cells, solar cells and other secondary batteries; automated assembly instruments for metallic parts, automobile parts, electric parts and other mechanical parts; electronic circuit card assembly equipment; electronic circuit assembly equipment; automated assembly equipment for medical instruments; industrial robots.

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 7

The contested goods in Class 7 essentially consist of different machines and machine tools, motors and engines, as well as components and parts therefor and industrial robots whereas the opponent’s services in Class 39 essentially consist of services of transport of goods and persons, services relating to the storing and packaging of goods as well as rental of aeroplanes.

The opponent merely claims without any further explanations or arguments that the goods and services in conflict are very closely connected due to their manufactures/providers and the relevant distribution channels.

However, the opponent’s transport services whereas of goods and/or persons are provided by specialist transport companies whose business is not the manufacture of goods. Furthermore, even if some of the contested goods, such as motors and engines [except for land vehicles] include aeroplane motors and engines, such goods are not manufactured by the same undertakings as those providing airline transportation services or rental of aeroplanes and the contested goods and the opponent’s services do not target the same relevant public or share the same distribution channels. Likewise, the opponent’s packaging and storage services consist of services whereby a third party company’s merchandise is packed and kept in a particular place for a fee and are provided by companies whose business is not the manufacture of the goods they package and store and they also target a different public through different distribution channels.

As a result, the contested goods in Class 7 and the opponent’s services in Class 39 do not have the same nature or purpose; they do not target the same relevant public or share the same distribution channels. Furthermore, they are not complementary to each other or in competition and they do not coincide in their usual commercial origin. Therefore, they are dissimilar.

2. 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 goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

For reaching the above conclusion, it has been assumed that genuine use has been sufficiently proven for all of the services covered in Class 39 since the documents submitted by the opponent as evidence of use at least relate, to some extent, to services in this class. Since the outcome is that there is no likelihood of confusion even assuming that the earlier mark has been genuinely used in relation to all of the services in Class 39, which is the best light in which the evidence of use may be considered, there is no need to proceed to undertake a more thorough assessment of the evidence of use to determine exactly to which services in this class it may relate.

The opposition is also based on the following earlier rights all covering essentially the same or a narrower scope of protection of services in Classes 37, 39 and 41:

• European Union trade mark registration No 10 092 906 for the figurative mark ;

• European Union trade mark registration No 3 650 595 for the figurative mark ;

• European Union trade mark registration No 9 566 233 for the word mark ‘SMARTWINGS’; and

• Czech trade mark registration No 301 433 for the word mark ‘SmartWings’.

Even assuming that the evidence of use show that all these earlier marks have been genuinely used in relation to all of the services they cover in Class 39 which, as explained above, is the best light in which the evidence of use may be considered, no likelihood of confusion exists since the opponent’s services in Class 39 are dissimilar to the contested goods in Class 7 for the reasons set out above. Consequently, as one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled also in relation to these earlier rights, the opposition must be rejected insofar it is based on this article.

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 above-mentioned 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, all the earlier trade marks, namely European Union trade mark registrations No 5 792 932, No 10 092 906, No 3 650 595 and No 9 566 233 as well as Czech trade mark registration No 301 433, have a reputation in the European Union and in the Czech Republic respectively.

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 03/03/2017. 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 in the Czech Republic respectively prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation which are the same, or essentially the same, as those listed above in section a) of this decision in Classes 37, 39 and 41.

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.

The evidence submitted by the opponent to prove the reputation of the earlier trade marks is the same as that submitted to prove use of the earlier marks and has already been listed above under proof of use. Reference is made to that summary of the evidence.

As already mentioned above, none of the evidence submitted relates to any of the services concerned in Classes 37 and 41 and reputation can thus clearly not be established for any of those services.

As regards the services in Class 39, the evidence mainly refers to airline transportation services. However, even if the evidence submitted was considered sufficient to prove genuine use of the earlier mark(s), at least in relation to air transport in Class 39, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that any of the earlier trade marks acquired a reputation, whether in the European Union or in the Czech Republic, not even in relation to such services.

In this respect, even if the evidence shows some use of ‘SMARTWINGS’ for passenger flights to different destinations in the European Union in advertisements in different media, including in newspapers, on-line on different websites, on the radio and during different sports tournaments, and even if there is at least some evidence from different years, the extent and intensity of use of the earlier marks in relation to such services and the opponent’s promotional efforts in relation to the same is unclear on the basis of the evidence submitted. All the pictures of advertisements on outdoor billboards (and on subway trains) are undated and even if the opponent claims that they originate from different years, this is not supported by the other evidence submitted. There is only one copy of a signed business and media service agreement showing that such advertisements were purchased to be available at 33 places in the Czech Republic during one month in March 2016. As regards the advertising made during different sports events and in collaboration with different sports clubs, no attendance figures have been provided or any arguments and evidence to confirm the intensity and duration of the opponent’s collaborations with these clubs. Likewise, even if the opponent has submitted evidence from different internet websites and different years showing banner advertisements of ‘SMARTWINGS’ flights, there is no information or evidence to confirm the intensity or duration of any such advertisements. In this respect, the Opposition Division notes that even if some advertising banners on internet websites may be static many are also often visible for only a few seconds before they switch to other advertising banners and they may also only be featured for shorter periods of time. Furthermore, even if the opponent has submitted different audio files which it claims are commercials that have been broadcast on different occasions and by different radio stations, there is only one copy of a binding order showing that one of the commercials had been ordered to be broadcast eight times a day on eight different days in May 2016. As regards the video clip with a ‘SMARTWINGS’ commercial in Czech which the opponent indicates is a TV spot from 2015, the extent and duration of any broadcast of this commercial to consumers is unclear and the copies of two orders signed by the opponent for a ‘Smart Wings’ commercial to be placed on TV channels with measured audience concern the dates 15/11/2017-30/11/2017 and 01/12/2017-17/12/2017 respectively, which are both outside the relevant date prior to 03/03/2017. Moreover, even if some of the articles submitted indicate that ‘SmartWings’ lines to certain new destinations were to be started, they only concern the opponent’s intentions to start such lines but do not prove the intensity or frequency of use by consumers in relation to the same. Therefore, even if the material described above show some use of the trade mark from different years it still provides little information on the commercial volume of such use and does not provide any indication of the degree of recognition of the trade mark by the relevant public.

The level of knowledge required for the purposes of Article 8(5) EUTMR cannot be defined in the abstract, but should be evaluated on a case-by-case basis, taking into account not only the degree of awareness of the mark, but also any other fact relevant to the specific case, that is, any factor capable of giving information about the performance of the mark in the market.

Therefore, information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation, as for example when the opponent submits internal memoranda or tables with data and figures of unknown origin. In this respect, the Opposition Division notes that the annual reports submitted by the opponent do not consist of official accounting documents issued by third party auditors but of internal reports including data and figures of unknown and unverified origin and are therefore of little probative value on their own. Furthermore, various documents indicate that ‘SMARTWINGS’ have been used in relation to the opponent’s scheduled flights but it is not clear from the breakdown of the revenue in the annual reports what percentage of the revenue for scheduled flights could be attributed to flights sold under the ‘SMARTWINGS’ brand since those figures are also held to include revenue from the opponent’s shared flights with CSA (in relation to which, according to an extract from the website iDNES.cz, the opponent concluded an agreement on in 2013). As regards the tables with advertising costs also included in the annual reports and held to be related to the trade mark ‘SmartWings’, they are not indicated to be in thousands of CZK (as is the case with the revenue figures listed) and would therefore, if interpreted as such, actually be very low. However, even if it may be assumed that also these figures are meant to show the advertising costs in thousands of CZK, there is no information as to the relevant territory to which those costs relate, e.g. whether they concern advertising costs of the trade mark only in the Czech Republic or if they also include advertising costs of the trade mark in any other territories to which the opponent arranges scheduled flights under the ‘SmartWings’ brand. Moreover, even if there is one article from Novinky.cz indicating that the opponent had transported nearly 2 million passengers under the ‘SmartWings’ brand during 2016, the article also indicates that this information originates from a spokesman of the opponent. As a result, even if included in a third party article, it still concerns information deriving directly from the opponent itself. The Opposition Division also notes that even if there is an extract from www.ch-aviation.com indicating that, according to ch-aviation capacity data, ‘SmartWings’ makes up 10.8% of the Czech market in terms of scheduled seat capacity, it refers to seat capacity but not necessarily market share and the extract is also dated 02/03/2018, i.e. one year after the relevant time for proving reputation.

Consequently, since the evidence concerning revenue and advertising expenditure does not provide a clear picture of the sales volumes and promotional costs related to the earlier marks and also originates from the opponent itself and since the other evidence submitted, despite showing some use and promotion of the earlier marks, is insufficient to show the commercial dimension and intensity of such use and advertising, the evidence in its entirety does not show that the trade marks are known by a significant part of the relevant public whether in the European Union or in the Czech Republic in relation to any of the services covered in Classes 37, 39 and 41 as claimed.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a 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 the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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

Begoña URIARTE VALIENTE

Sam GYLLING

Sandra IBAÑEZ

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.