OPPOSITION No B 2 923 129

Ecolutis, 25 Rue Lenepveu, 49100 Angers, France (opponent), represented by Strato-IP, 63 boulevard de Ménilmontant, 75011 Paris, France (professional representative)

a g a i n s t

Saverio Castellaneta, via Gradoli n. 91, 0189 Roma, Guido Formilli Fendi, via dei Colli della Farnesina n. 76, 00135 Roma and Pierluigi Galassetti, via Fosso del Torrino n. 57, 00144 Roma, Italy (applicants), represented by Luigi Martin, Borgo Ronchini 3, 43121 Parma, Italy (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 923 129 is upheld for all the contested services.

2. European Union trade mark application No 16 521 619 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 services of European Union trade mark application No 16 521 619 for the mark ‘ ’. The opposition is based on European Union trade mark registration No 13 822 077 for the word mark ‘iDVROOM’. The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods and services

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

Class 36: Financial affairs; financial consultancy and information; electronic purse services; issuing and repayment of travellers' cheques and cards used as methods of payment; issuing of, and services relating to, payment cards, credit cards, cash withdrawal cards (the aforesaid cards may be chip cards, magnetic strip cards, magnetic cards or memory cards); payment cards provided via identification devices; electronic payment processing services; financial transaction authorisation and settlement services, payment verification; electronic payment services; insurance; insurance information; vehicle insurance; travel assistance insurance; consultancy services in connection with all the above; remote secure payment services; providing of information relating to the refunding of transport tickets.

Class 39: Organising lifts for travellers; providing of information relating to car sharing; rental or sharing of vehicles; transport; road and railway transport; transport of persons, luggage and goods, in particular by train and bus; transport and travel arrangement services; assistance with transport and travel arrangements; transportation of pet animals; transport of parcels; railway transport; collection, removal, storage, forwarding and delivery of goods, luggage and parcels; loading and unloading cargo; issuing of tickets for travel; issuing of transport papers; travel reservations and bookings; reservation and rental, including online, of travel tickets, in particular by train; booking and reservation of transport; information relating to the booking, issuing, retrieval and exchange of transport documents ; information relating to transport and travel, rail and road transport fares and timetables; information relating to reception services at stations; information relating to traffic conditions; all the aforesaid information may be provided by all communication media, including by telephone or electronic means, including the internet; identification, reservation and rental, including online, of parking spaces and areas, and garages; lending, reservation and rental of vehicles, rail carriages, wagons, lorries, vans, cars, motorcycles and bicycles, freight forwarding; transit services; packaging, packing and wrapping of products, goods and packages; vehicle garages (parking); travel agency services; travel and trip arrangement, including in shared vehicles, by means of car sharing; arranging of excursions; arranging of tours and sightseeing tours; reservation and rental, including online, of travel tickets, in particular by train; escorting of travellers; chauffeur services; taxi transport.

Class 41: Entertainment in the form of the production and broadcasting of programmes in the fields of transport, news, business, current affairs, entertainment and sport; publishing, including publication and electronic and online publication, newspapers, magazines, periodicals, bulletins, newsletters, pamphlets, manuals, guides; publication of texts, other than publicity texts; publishing, including publication and electronic and online publication, newspapers, magazines, periodicals, bulletins, newsletters, pamphlets, manuals, guides; publication of texts, other than publicity texts; operating online electronic publications; lending libraries and loan of periodicals; providing of training; entertainment; musical entertainment; cinematographic and/or video entertainment; radio and/or television and/or data transmission entertainment; entertainment by interactive means or online, including via the internet; lending and rental of sound recordings and/or images, apparatus for recording reproduction and/or dissemination of sound and/or images; production and editing of sound and/or image recordings; sporting and cultural activities; arranging of games, competitions, trade fairs and exhibitions, for educational, training, cultural, sport and/or entertainment purposes; organisation and conducting of seminars and conferences; performances (presentation of live -); arranging and production of concerts, shows, films and cultural events; arranging of meetings and cultural events; party planning (entertainment); organization of balls; providing amusement arcade services; conducting lotteries for others; museum facilities (providing-) presentation, exhibitions); leisure services; booking of seats for concerts, cinema, shows and exhibitions; clubs (entertainment, cultural, sport or education activities); workshops and gymnasiums (health clubs); holiday camp services (entertainment); production, organising and conducting of sporting competitions and events; rental of sports equipment (except vehicles); information, including online, relating to education, cultural, entertainment, sport and leisure activities; all of the aforesaid goods solely relating to the field of transport and travel.

Class 43: Providing of food and drink (food, dishes, snacks, dishes or meals), on site or to take away, including on trains; bars and snack bars, fixed or moving, including on trains; snack-bars; self-service restaurants; catering; organization of banquets and cocktail-parties; rental of table linen, glassware, tableware, chairs, tables, tents and water fountains; booking and rental of meeting rooms and spaces; temporary accommodation; hotel services; room reservation services; hotel accommodation; boarding house bookings; booking of restaurant seats; crèches for children, including on board trains; accommodation for pets, including on trains; information relating to temporary accommodation and restaurants, provided by any means, including by electronic means or online; all of the aforesaid goods solely relating to the field of transport and travel.

The contested services are the following:

Class 36: Insurance services relating to motor vehicles.

Class 39: Car rental; motor vehicle rental; aircraft rental; chartering of watercraft, yachts, ships, boats and water vehicles; chartering of transport; arranging the hire of all means of transport; vehicle location services; arranging travel tours; arrangement of travel to and from hotels; tour reservation services; mediation and rental of means of transport.

Class 43: Booking of hotel accommodation.

Contested services in Class 36

Insurance services relating to motor vehicles (despite the slightly different wording) are identically included in both lists of services in Class 36.

Contested services in Class 39

The contested car rental; motor vehicle rental; aircraft rental; chartering of watercraft, yachts, ships, boats and water vehicles; chartering of transport; arranging the hire of all means of transport; vehicle location services; mediation and rental of means of transport are identical to the opponent’s rental of vehicles, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, these contested services.

The contested arranging travel tours; arrangement of travel to and from hotels; tour reservation services are included in the opponent’s broader category of transport and travel arrangement services. Therefore, these services are identical.

Contested services in Class 43

The contested booking of hotel accommodation are included in the broader category of the opponent’s hotel accommodation services. Therefore, these services are considered identical.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical are directed at the public at large (e.g. motor vehicle insurance services in Class 36, car rental in Class 39 and hotel accommodation booking in Class 43) and at professional customers with specific professional knowledge or expertise (e.g. aircraft rental in Class 39).

The degree of attention may vary from average to high, taking into consideration the price and/or nature of certain services: for instance, the higher rental costs of an air craft and the impact of such services on human safety may result in an increase in the relevant consumer’s degree of attention.

3. The signs

iDVROOM
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common string of letters ‘VROOM’ is meaningful for, inter alia, the English-speaking part of the public in the relevant territory, that will associate it with ‘the roaring noise of a motor vehicle accelerating or travelling at speed’ (cf. Oxford English Dictionary online). To take into account the semantic content of this element in the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public, such as consumers in the United Kingdom, Ireland and Malta.

The earlier mark is (contrary to the applicant’s view that it would concern a figurative mark) a word mark. It consists of the string of letters ‘iDVROOM'. It is to be noted that, in the case of word marks, such as the earlier mark, it is irrelevant whether lower or upper case letters a combination thereof is used, since it is the word as such that is protected.

While it is acknowledged that the earlier mark is composed of one single verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, the public under analysis will perceive in the earlier mark the English words ‘ID’ (‘identification), and ‘VROOM’ which will be perceived as stated above.

Considering that the identification is a requirement to purchase all the services at issue (insurance services, transport rental and travel arrangements or hotel booking all require an ID of the acquirer), ‘iD’ has a limited degree of distinctiveness in relation to these services. As regards the term ‘VROOM’, contrary to the applicant’s view that this element is descriptive, the Opposition Division considers that although it might be perceived by part of the public as somewhat allusive to goods that are the subject matter of part of the services that relate to goods with motors with a certain speed or performance, namely the services in Class 36 (motor vehicle insurance) and to part of the services in 39 (e.g. vehicle location services), it will still not be immediately perceived as a reference to those services in relation to which it has no clear meaning. Therefore, this element is peculiar and fanciful for all the services at issue;it is thus held normally distinctive for all the services.

In this regard, for the sake of completeness, it must be mentioned that the case law in the Shield case (C-283/01 ECLI:EU:C:2003:641, §60) cited by the applicants to support their argument that as an onomatopoeia ‘VROOM’ would be descriptive, is irrelevant, considering that this decision (issued before the Legal Reform entered into force) concerned the valid means of the graphic representation requirement for sound marks but did not give any guidance on the distinctiveness of onomatopoeic terms.

The contested sign is a figurative mark composed of the string of letters ‘VROOMERZ’ depicted in a slightly stylised black (as regards the string of letters ‘VROOM’) and blue (the letters ‘ERZ’) font, in upper case letters and of which the first (‘V’) and last ’Z’) letter are depicted in a somewhat bigger size. In line with the above, the string of letters ‘VROOM’ will be understood and of normally distinctive for all the services at issue. The string of letters ‘ERZ’ is meaningless and thus also of normal distinctiveness.

The minimal stylisation of the letters will be perceived as of a rather decorative nature and is thus of limited distinctiveness.

Finally, the contested sign has no elements that could be considered more dominant (visually eye-catching) than others. However, account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the element ‘VROOM’ in the contested sign will undoubtedly firstly catch the attention of consumers.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to an analogous concept related to ‘the noise of a motor vehicle accelerating or travelling at speed’, conveyed by the common element which is of normal distinctiveness for all the services at stake, the signs are conceptually similar to a high degree. Account must be taken of the fact that the additional term in the earlier mark (‘iD’) is of limited distinctiveness in relation to the services so that it is unable to establish any significant conceptual distance between the signs. The ending ‘ERZ’ in the contested sign will not be associated with any meaning; however, the attention of the relevant public will in any event be more attracted by the first verbal element with the meaning as detailed above rather than by these three last letters of the sign.

Visually, the signs coincide in the string of letters ‘(**)VROOM(***)’ which constitute five out of the seven letters of which the earlier word mark is composed and five out of the eight letters of which the sole verbal component of the contested sign is composed.

The signs differ only in the first two letters of the earlier mark (which however have limited distinctiveness) and in the end letters (‘ERZ’) and the figurative aspects of the contested sign, which, however, as seen above, will have less impact than the verbal component ‘VROOM.

In addition, the common element, which is also the more distinctive element in the earlier mark, forms the beginning of the contested sign and is depicted in another colour (namely in black) than the end letters ‘erz’ (which are depicted in blue). It will also be the element that firstly catches the attention of consumers.

Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the string of five letters ‛V-R-O-O-M’, which will be identical in both signs for the relevant public taken into account. The pronunciation differs in the pronunciation of the first two letters (‘ID’ – which however is of limited distinctiveness) in the earlier mark and the last three letters (‘ERZ’- which however, will have less impact than the beginning term) in the contested sign.

Consequently, also considering that the coinciding element is also the more distinctive element of the earlier mark and the first element in the contested sign, the signs are considered to be aurally similar to at least an average degree.

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark as a whole is normal for all the services at issue.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The services at issue are identical. The signs are visually and aurally similar to at least an average degree and conceptually similar to a high degree.

It is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services (held identical) that it designates, even where the degree of attention is higher than average and/or where it concerns a professional public.

Account must also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Therefore, taking into account the principle of interdependence, despite the differences between the signs, which will not go unnoticed but are, however, incapable of maintaining a sufficient distance between the overall impressions given by the signs, a likelihood of association between the signs cannot be excluded.

In their observations, the applicants argue that the contested services are used for luxury car rental services throughout the European Union, whereas the opponent’s mark would only be used for carpooling services and be directed at a totally different market segment, moreover limited to the French-speaking part of the EU only. Nevertheless, the comparison of the goods or services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

The applicant also referred to previous decisions of the Office to support its arguments that no likelihood of confusion would exist. However, first of all, it must be reminded 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. However, in the previous cases referred to by the applicant are not relevant to the present proceedings. As regards the cited proceedings No B 2 749 854, the decision of 23/01/2018 in that case concerned two figurative marks related to different goods (Classes 29 and 30, different from the services at issue in the present case) and that coincided in a descriptive component (i.e. ‘nature’), as opposed to the case at hand where the coinciding element is of normal distinctiveness; as regards the cited decision in opposition proceedings No B 2 232 851 of 19/10/2017, that case concerned two figurative marks with verbal components of a very different length, moreover related to different (i.e. Class 3) goods and the signs only coincided in three letters, only two of which in the same order. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking general public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 822 077. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, and there is no need to analyse the remaining part of the public.

It follows from the above that the contested trade mark must be rejected for all the contested services.

COSTS

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

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

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

The Opposition Division

Saida CRABBE

Edith VAN DEN EEDE

Francesca CANGERI SERRANO

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.