DECISION

of the Fourth Board of Appeal

of 24 July 2019

In case R 223/2019-4

eSky Group IP Sp. z o.o.
ul. Wołoska 22 02-675 Warszawa Poland	Applicant / Appellant

represented by Michał Jędrzejewski, ul. Rogalińska 1/44, 01-206 Warszawa, Poland

v

Gerhard Gröpel
Alte Straβe 106 94034 Passau Germany	Opponent / Defendant

represented by ADVOTEC. PATENT- UND RECHTSANWÄLTE, Bahnhofstr. 5, 94315 Straubing, Germany

APPEAL relating to Opposition Proceedings No B 2 957 168 (European Union trade mark application No 16 731 333)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), L. Marijnissen (Rapporteur) and C. Bartos (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 16 May 2017, eSky Group IP Sp. z o.o. (‘the applicant’) sought to register the figurative mark in turquoise, white, dark blue, blue and light pink

as a European Union trade mark for services in Classes 36, 39 and 43 including the following:

Class 39 - Travel arrangement; Tour organising; Booking of seats for travel and sale of tickets for land, sea and air transport; Booking of seats for travel tours; Transport brokerage; Sightseeing [tourism].

2. On 14 September 2017, Gerhard Gröpel (‘the opponent’) filed a notice of opposition based on earlier international registration designating the European Union No 1 242 560 for the figurative mark in black and white

registered on 23 December 2014 for goods and services in Classes 25, 39 and 41 including the following:

Class 39 - Arranging of travel tours; travel reservation; booking of seats for travel; none of the aforementioned services relating to energy.

3. The grounds for opposition were those laid down in Article 8(1)(b) EUTMR. The opposition was directed against the services as specified in paragraph 1 above and based on those as specified in the previous paragraph.

4. By decision of 29 November 2018, the Opposition Division upheld the opposition for all the contested services in Class 39, rejected the application for these services and ordered the applicant to bear the costs.

5. It reasoned that the conflicting services were identical. They were directed at the public at large and at travel professionals. The degree of attention of the general public would be average; since this public was more prone to confusion, the examination proceeded taking their level of attention into account. The signs were visually similar to an average degree as they both contained a tilted letter ‘e’ placed within surrounding circular lines. Aurally they were identical as they coincided in the sound of the letter ‘e’. The reference to the same letter ‘e’ also resulted in a conceptual identity. The distinctiveness of the earlier mark was normal. It concluded that there was a likelihood of confusion.

6. On 29 January 2019, the applicant filed a notice of appeal, followed by its statement of ground on 29 March 2019. It requests that the Board annul the contested decision in its entirety.

7. It argues that the level of attention for the services will be higher than average, both for the professional public and the public at large, as travelling involves a financial burden and a high level of stress. The fact that the conflicting signs have a stylised letter ‘e’ in common is not enough to conclude that they are similar. From a visual point of view the marks are totally different. The conceptual similarity remains neutral as neither of the signs has any meaning. The inherent distinctiveness of the earlier mark is weak as it consists of one letter and the design used is very unimaginative and non-distinctive. Also use of the colour black is very common. The visual similarity between the signs is, as a general rule, more important, taking into account the kinds of services at issue. Oral sales of the services are exceptional or may even not take place at all. There would be no likelihood of confusion.

8. In his response received on 14 June 2019, the opponent requests that the Board dismiss the appeal and order the applicant to bear the costs of the proceedings.

9. He argues that the conflicting services are identical. Nowadays, most travel transport is generated for business purposes, regular holidays, visiting friends and family etc. Booking seats and buying tickets is not an un-proportional investment for a considerable amount of consumers. Business trips, especially, are done on a routine basis. The level of attention of the public at large is average. Both marks are dominated by the letter ‘e’ which, as such, has no meaning in relation to the services at issue. In both marks the letter has an average degree of distinctiveness. Its tilted position and the surrounding circles cannot go unnoticed. In both marks it concerns an unusual graphic representation. The marks are visually similar at least to an average degree, aurally and conceptually they are identical. The inherent distinctiveness of the earlier mark is normal: The letter ‘e’ is not descriptive for any of the earlier services. There would be a likelihood of confusion, even taking into account a higher level of attention of the relevant public.

Reasons

10. The appeal is not well founded. The Opposition Division correctly decided that the opposition succeeds on the grounds of Article 8(1)(b) EUTMR for all the contested services in Class 39.

11. According to Article 8(1)(b) EUTMR, upon opposition of the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with or similarity to the earlier trade mark and, cumulatively, the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

12. The earlier mark on which the opposition is based is an international registration designating the European Union. The relevant territory for analysing the likelihood of confusion is the European Union, including all its Member States. The relevant public includes the public at large and the professional public in the travel business.

Comparison of the goods and services

13. Goods and services are identical when they appear with the same wording in both lists of goods and services or when the goods or services of the earlier mark include as a broader category the goods or services of the contested mark. If the goods or services of the earlier mark are covered by a broader category of goods or services than the contested mark is applied for, the conflicting goods and services are identical as well since the Office cannot dissect ex officio this broader category of the applicant’s goods or services (07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 29).

14. As correctly reasoned by the Opposition Division, the conflicting services are identical. The Board explicitly refers to that reasoning which was not contested by the parties and forms an integral part of this decision.

Comparison of the marks

15. The comparison of the conflicting marks shall assess the visual, aural or conceptual similarity of the signs in question, based on the overall impression given by the marks and bearing in mind, in particular, their distinctive and dominant elements (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28).

16. The signs to be compared are:

    Contested mark	Earlier mark

17. The contested figurative mark consists of a tilted bold lower-case letter ‘e’ in dark blue surrounded by one fragmentary circle in the colours turquoise, blue and a small amount of pink.

18. The earlier figurative mark consists of a tilted bold lower-case letter ‘e’ in black surrounded by two uninterrupted circles in black.

19. Visually, the conflicting signs have a very similar structure, namely that of a tilted bold lower-case letter ‘e’ surrounded by a circular line pattern. The marks differ in that the contested mark has one surrounding circle, the earlier mark two; the colours of the contested mark; and the fragments of the circle in the contested mark while the circles in the earlier mark are intact. It follows that the marks are visually similar to an average degree.

20. Aurally, both the earlier sign and the contested sign will be pronounced as the letter ‘e’. The marks are aurally identical.

21. Conceptually, neither the single letter ‘e’, nor the line patterns in which the marks coincide convey a concept. The conceptual comparison of the signs remains neutral.

Overall assessment of the likelihood of confusion

22. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

23. A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular the similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).

24. For the purpose of that global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The level of attention of the relevant consumer is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

25. The level of attention of the relevant general and professional public for the conflicting services in Class 39 varies from average to higher than average.

26. The inherent distinctiveness of the earlier mark is normal. The contested decision correctly reasoned that the applicant had not demonstrated that the distinctiveness of the earlier mark had been weakened, a point which remains undisputed in the appeal.

27. Taking into account the average degree of visual similarity and the aural identity between the signs, the identity of the contested services and the normal inherent distinctiveness of the earlier mark, a likelihood of confusion exists within the meaning of Article 8(1)(b) EUTMR, even taking into account a higher level of attention of the relevant public.

28. The appeal shall be dismissed.

Costs

29. Since the applicant (appellant) is the losing party within the meaning of Article 109(1) EUTMR in this appeal, it must bear the costs incurred by the opponent (defendant) in the appeal proceedings. The Opposition Division correctly decided that the appellant shall bear the costs in the opposition proceedings.

Fixing of costs

30. In accordance with Article 109(1) and (7) EUTMR, Rule 94(7)(d)(i) CTMIR and Article 18(1)(c)(iii) EUTMIR, the Board fixes the amount of representation costs to be paid by the appellant to the defendant with respect to the appeal proceedings at EUR 550 and with respect to the opposition proceedings at EUR 300. In addition, the appellant shall reimburse to the defendant the opposition fee of EUR 320. The total amount is EUR 1 170.

Order

On these grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the appellant to bear the costs of the appeal proceedings;

3. Fixes the amount of costs to be paid by appellant to the defendant for the opposition and appeal proceedings at EUR 1 170.

Signed D. Schennen

Signed L. Marijnissen

Signed C. Bartos

Registrar: Signed H.Dijkema