OPPOSITION No B 2 969 379

Easy Market S.p.A., S.S. Consolare, 51/C, 47924 Rimini, Italy (opponent), represented by Francesca Caricato, Viale delle Rimembranze, 45, 21047 Saronno, Italy (professional representative)

a g a i n s t

(R) Evolution Voyages Cmj Label Travel, 92 cours Vitton, 69006 Lyon, France (applicant).

On 23/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 969 379 is partially upheld, namely for the following contested services:

Class 39: Rental of means of transportation, travel and passenger transportation, sightseeing, tour guide and excursion services, escorting of travellers, travel agency, consultancy for travel planning of routes, coordinating travel arrangements for individuals and for groups, tour conducting, travel information, providing information relating to travel and transport, via electronic means, providing travel information via global computer networks, providing tourist travel information, via the internet, providing online information relating to travel, providing information about booking business travel, via the internet, provision of data relating to the transportation of passengers, provision of transport for passengers by water, provision of transport for passengers by land, provision of transport for passengers by air, arranging the escorting of travellers, arranging of tours and cruises, organisation of trips, arranging of tours by bus, tour organising, arrangement of travel to and from hotels, arranging of passenger transport, tour operating and organising, planning, arranging and booking of travel by electronic means, arranging for travel visas, passports and travel documents for persons traveling abroad, booking of sea passages, booking of rail tickets, reservation of air transportation, booking of tickets for travel, reservation of coach transport, provision of tourist travel information, travel and tour ticket reservation service, reservation services for bus transportation, travel and transport reservation services, transport of travellers by land.

Class 41: Providing information about cultural activities, provision of recreation information, information relating to cultural activities, providing information on entertainment through computer networks, information about entertainment and entertainment events provided via online networks and the internet; organisation of recreational activities, organising events for entertainment purposes.

2. European Union trade mark application No 16 929 821 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

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 16 929 821 . The opposition is based on European Union trade mark registration No 15 439 995  and Italian trade mark registration No 302016000050689. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

Italian trade mark registration No 302016000050689

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party on its own motion within the time limit specified for submitting the original document.

In the present case, the evidence filed by the opponent to substantiate its earlier Italian trade mark registration consists of a copy of certificate issued by the Italian national office. Apart from the fact that this certificate does not contain the representation of the mark in question, it is not in the language of the proceedings, and no translation was provided either.

On 16/10/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to substantiate the earlier rights and submit further material. This time limit expired on 21/02/2018.

According to Article 7(5) EUTMDR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded as far as it is based on this earlier mark.

The Opposition Division will proceed taking into consideration the only remaining earlier right, namely European Union trade mark registration No 15 439 995.

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 services

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

Class  39: Booking of seats (travel), rental of transport vehicles, travel courier services, travel agency, travel arrangement, travel information, provision of tours, planning of journeys, tour reservation services, travel consultancy, escorting of travellers, escorting of travellers, travel courier services, travel agency services relating to travel by omnibus, chartering of vehicles for travelling, agents for arranging travel, travel information, provision of information relating to travel routes, organisation of holiday travel, arranging of travel by coach, arranging of travel by coach, organising of foreign travel, travel and transport reservation services, tour operating and organising, travel booking agencies, booking of tickets for travel, issuing of tickets for travel, supplying tickets to enable holders to travel, travelling trunks rental, transportation of travellers' baggage, arranging the escorting of travellers, services for arranging the transportation of travellers, transport of travellers by taxi, transport of travellers by tram, holiday travel reservation services, arranging of tours and cruises, reservation services for airline travel, transport of travellers by land, transport of passengers by air, ticketing services for travel, itinerary travel advice services, arranging of overseas travel for cultural purposes, arranging and booking of travel for package holidays, planning and booking of travel and transport, via electronic means, arranging airline tickets, cruise tickets and train tickets, booking of rail tickets, travel ticket reservation services, travel and tour ticket reservation service, operating of tours, arranging and booking of tours, providing vehicles for tours and excursions, delivery of food by restaurants, providing information relating to car rental services, arranging car hire as part of package holidays, arranging of excursions, services for the arranging of excursions for tourists, tour guide services, providing information to tourists relating to excursions and sightseeing, arranging of excursions, day trips and sightseeing tours, package holiday services for arranging travel, travel agency services for arranging holiday travel.

Class 43: Running restaurants, bars, trattorias, canteens, catering and hotels, information relating to hotels, booking of accommodation for travellers, reservation of rooms for travellers, travel agencies for arranging accommodation, travel agency services for booking restaurants, travel agency services for booking temporary accommodation, accommodation bureaux [hotels, boarding houses], delicatessens [restaurants], restaurant information services, take-out restaurant services, restaurants, restaurant reservation services, tourist restaurants, cafés, serving food and drink in restaurants and bars, providing food and drink in restaurants and bars, arranging of accommodation for holiday makers, rating holiday accommodation, arranging of accommodation for holiday makers, arranging of accommodation for holiday makers, arranging of accommodation for holiday makers, arranging of accommodation for holiday makers, tourist homes, holiday camp services [lodging], temporary accommodation provided by dude ranches, services for reserving holiday accommodation, providing temporary accommodation in holiday homes, booking agency services for holiday accommodation, providing temporary accommodation in holiday flats, temporary accommodation services provided by holiday camps, rental of temporary accommodation in holiday homes and flats, reservation of temporary accommodation in the nature of holiday homes, hotels, hostels and boarding houses, holiday and tourist accommodation.

The contested services are the following:

Class 35: Dissemination of advertising matter, dissemination of advertising via online communications networks, dissemination of advertisements via the internet, organisation of exhibitions and events for commercial or advertising purposes, shows (conducting business -), planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes, design of advertising brochures, marketing services in the field of travel, promotion [advertising] of travel, magazine advertising, advertising in the field of tourism and travel, online advertisements, advertising via electronic media and specifically the internet.

Class 39: Rental of means of transportation, travel and passenger transportation, sightseeing, tour guide and excursion services, escorting of travellers, travel agency, consultancy for travel planning of routes, coordinating travel arrangements for individuals and for groups, tour conducting, travel information, providing information relating to travel and transport, via electronic means, providing travel information via global computer networks, providing tourist travel information, via the internet, providing online information relating to travel, providing information about booking business travel, via the internet, provision of data relating to the transportation of passengers, provision of transport for passengers by water, provision of transport for passengers by land, provision of transport for passengers by air, arranging the escorting of travellers, arranging of tours and cruises, organisation of trips, arranging of tours by bus, tour organising, arrangement of travel to and from hotels, arranging of passenger transport, tour operating and organising, planning, arranging and booking of travel by electronic means, arranging for travel visas, passports and travel documents for persons traveling abroad, booking of sea passages, booking of rail tickets, reservation of air transportation, booking of tickets for travel, reservation of coach transport, provision of tourist travel information, travel and tour ticket reservation service, reservation services for bus transportation, travel and transport reservation services, transport of travellers by land.

Class 41: Providing information about cultural activities, provision of recreation information, information relating to cultural activities, providing information on entertainment through computer networks, information about entertainment and entertainment events provided via online networks and the internet, organisation of recreational activities, organising events for entertainment purposes.

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.

It is also to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested services in Class 35

The contested services in this class, as listed above, consist of advertising, promoting and marketing services as well as design and dissemination of related publications. The essential purpose of these services is to promote the launch and/or sale of goods and services, to reinforce a client’s position in the market and to acquire competitive advantage through publicity. These services are provided by specialist companies which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet.

The opponent’s services in Class 39 are travel-related services while those in Class 43 are aimed at offering restaurant/accommodation services which are typically provided by specialized travel agencies and restaurants/hotels, respectively.

On the basis of the fundamental differences between their purposes, it can be concluded that these services do not have the same providers or distribution channels and their relevant publics are also different. Furthermore, there is neither complementarity nor competition between them. Consumers would not think that they came from the same undertaking or economically linked undertakings. Therefore, these services are dissimilar.

Contested services in Class 39

The contested rental of means of transportation is de facto identical to the opponent’s rental of transport vehicles.

The remaining contested services in this class, as listed above, coincide or overlap with the opponent’s broad services, in particular with booking of seats (travel), travel arrangement, travel information, provision of tours, planning of journeys, tour reservation services, travel consultancy. These services are, therefore, identical.

Contested services in Class 41

The contested providing information about cultural activities, provision of recreation information, information relating to cultural activities, providing information on entertainment through computer networks, information about entertainment and entertainment events provided via online networks and the internet may be provided by the same undertakings as the opponent’s providing information to tourists relating to excursions and sightseeing in Class 39. In fact, it is rather common that the services of travel agencies are not limited to reservation of hotels and tickets but they also offer information concerning the cultural and entertainment possibilities. In such event, the customers and distribution channels also coincide. Consequently, these services in comparison are similar.

The remaining contested services, namely, organisation of recreational activities, organising events for entertainment purposes have certain points of contact with the opponent’s package holiday services for arranging travel. This is because the contested services in question are often offered as part of package holidays (such as cruises, for example) where a wide range of recreational and entertainment services are also available. Consequently, these services in comparison may share the same distribution channel, customers and essential purpose (entertainment). Therefore, these services are similar.

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 or similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

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 earlier mark consists of the word ‘Revolution’ with three arrows surrounding the mark’s initial letter. The word ‘Revolution’ will be understood throughout most of the relevant territory either because it exists as such (in English and German) or its equivalent is highly similar (‘rewolucja’ in Polish, ‘revolución’ in Spanish, ‘revoluție’ in Romanian, ‘revolutsioon’ in Estonian, ‘revoliucija’ in Lithuanian, for the sake of examples). Since this word does not directly describe or relate to the goods in question, it has an average distinctiveness.

The contested sign consists of the verbal element ‘REVOLUTION VOYAGES’ with the initial letter placed in a circle. While the sign as a whole lacks any meaning, some of the public will recognize the words ‘revolution’ and ‘voyages’ therein. This is because consumers tend to recognize parts of signs which are meaningful to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). With regard to ‘revolution’, reference is made to the findings in the preceding paragraph. The word ‘voyages’ will be understood by the French- and English-speaking public as meaning ‘trip, travel’ and for them, this word is non-distinctive in relation to the relevant services in Class 39 since it directly relates to their nature and purpose. For the remaining part of the public, this word is meaningless and, thus, retains an average degree of distinctiveness.

Furthermore, neither sign has any element that would be visually more dominant than the other ones.

Visually, the signs coincide in the verbal element ‘Revolution’ and also in the fact that the letter ‘R’ is placed inside a circle in both, while they differ in the contested sign’s additional word’ ‘VOYAGES’ as well as the arrows in the earlier mark. The non-verbal parts of the signs are so banal that consumers will pay little attention to them and they will focus on the actual words therein. Accordingly, they will perceive their identical beginnings and that the whole earlier mark is included in the contested sign. Furthermore, the contested sign’s second word is non-distinctive for some of the services, at least from the perspective of part of the public. Even considering that this differing word is distinctive to a part of the public, the fact remains that the signs’ initial ten letters making up a meaningful word coincide. Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‛revolution’, present identically in both signs. The pronunciation differs in the sound of the contested sign’s additional word ‛VOYAGES’. Since the earlier mark is completely included in the contested sign and the earlier mark’s only element comes in first place in the contested sign, the addition of ‘VOYAGES’ is insufficient to offset the significant aural impact of the coinciding word, and this is even more so from the perspective of part of the public to which the differing word is not distinctive. Therefore, the signs are similar at least to an average degree.

Conceptually, reference is made to the above findings in relation to the possible meanings of the signs’ elements. Accordingly, both signs will be associated with the distinctive concept evoked by ‘revolution’ while the additional word in the contested sign will either be meaningless, in which case it plays no role in the conceptual comparison, or it is non-distinctive and, it therefore, has very little impact on consumer perception. Based on all this, the signs are conceptually highly similar.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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 goods and 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).

Account is 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, some of the services are identical or similar, the signs are conceptually highly similar, and they also present average degree of visual and aural similarities. The fact that the only word element in the earlier mark is reproduced in the contested sign must be viewed as an indication of similarity of the signs, as has been confirmed in numerous case-law (10/03/2016, T-160/15, Minicargo, EU:T:2016:137, § 29, for example). The differences between the signs, namely, the additional word in the contested sign and the minor graphic elements are not capable of counteracting the impact of the coinciding word.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ioana MOISESCU

Ferenc GAZDA

Rasa BARAKAUSKIENÉ

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.