OPPOSITION No B 2 983 826

Fare Guenther Fassbender GmbH, Stursberg II 12, 42899 Remscheid, Germany (opponent), represented by Beyer Patent- und Rechtsanwälte, Am Dickelsbach 8, 40883 Ratingen, Germany (professional representative)

a g a i n s t

Travelmate Robotics Inc., 723 South Casino Center Blvd, NV 89101 Las Vegas, United States of America (applicant), represented by Dehns, Theresienstr. 6-8, 80333 Munich, Germany (professional representative).

On 14/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 983 826 is upheld for all the contested goods.

2. European Union trade mark application No 16 989 113 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 989 113 for the word mark ‘TRAVELMATE ROBOTICS’. The opposition is based on German trade mark registration No 30 121 473 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

The Opposition Division notes that the opponent submitted evidence to prove use of the earlier mark used for the purposes of comparison. On this point, it should be highlighted that the Opposition Division does not inquire ex officio whether the earlier mark has been used. Such examination takes place only when the EUTM applicant makes an explicit request for proof of use. In the current proceedings no such request was made. In fact no submissions of any sort were made by the applicant. Consequently in the absence of such a request the issue of proof of use is not relevant and it is therefore not necessary to examine the evidence.

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.

a) The goods

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

Class 18: Backpacks.

The contested goods are the following:

Class 18: Self-moving robotic suitcases, luggage and carryalls.

For the sake of completeness, it must be mentioned that the opponent has translated the goods of the earlier mark, namely ‘Rucksäcke, soweit in Klasse 18 enthalten’ into the language of the proceedings as ‘backpacks’. The translation was written in handwriting on the copy of the excerpt from the German trade mark register. The Office accepts handwritten text on the copies of the original certificates (or equivalent documents) giving the meaning of the various entries in the language of the proceedings, provided of course that they are complete and legible. The handwritten text provided by the opponent in the present case is legible. Also, ‘backpacks’ is a correct translation of ‘Rucksäcke’. The addition ‘soweit in Klasse 18 enthalten’ means ‘as far as contained in class 18’. This addition is missing in the handwritten text but it is not necessary to determine the earlier mark’s scope of protection which, in any event, remains the same Therefore, it is irrelevant that the opponent omitted the addition in the translation.

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.

The contested self-moving robotic suitcases, luggage and carryalls all refer to bags for travelling. They serve the same purpose as the opponent’s backpacks. Both are used to transport the personal belongings of someone who travels, thus they share the same purpose. Moreover, they have the same nature. They are usually made out of the same material and can be used in a very similar manner, namely be opened and closed (predominantly with a zip) and filled with personal belongings. They are often found in the same retail outlets and target the same public. Consumers looking for suitcases, luggage and carryalls will expect to find backpacks in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both suitcases, luggage and carryalls and backpacks. Therefore, the goods are highly similar.

b) Relevant public — degree of attention

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

In the present case, the goods found to be highly similar are directed at the public at large.

The degree of attention is average.

c) The signs

	TRAVELMATE ROBOTICS
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 verbal element ‘Travelmate’ and a figurative element consisting of the stylised letter T and a rhombus or diamond shaped geometric element behind the letter T. A very small R in a circle is found at the lower right bottom of the figurative element.

The letter T in the figurative element is stylised to some extent but still easily recognisable. It refers to the first letter of the verbal element ‘Travelmate’. The relevant consumers will therefore assume that T stands for the verbal element and focus their attention on the latter. The diamond shape is a basic geometric design which is commonplace and therefore of low distinctiveness.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the public will focus more on the verbal element ‘Travelmate’ in the earlier mark. In addition, in the present case, the figurative element of the earlier mark is considerably smaller than the verbal element. Besides, as mentioned above, the letter T in the figurative element represents the first letter of the verbal element and is thus less likely to be retained by the relevant consumers.

The earlier mark features the registered trade mark symbol (®). However, this is not part of the mark as such but informs the public that the trade mark is registered, consequently given this informative function it will not be taken into account in the comparison of the signs (28/01/2016, R 617/2015-1, ORANGE (fig.) / ORANGE (fig.), para. 40). In addition, the R in a circle is so small that the relevant consumers will barely perceive it. It is therefore negligible anyway.

The common element ‘TRAVELMATE’ is not meaningful in the relevant territory. Although German-speaking consumers have a fairly high level of English the term ‘TRAVELMATE’ is a combination of two English terms which are not entirely common terms and even less common as part of the conjunction. German-speaking consumers in the relevant territory will not understand it. It is thus distinctive.

The element ‘ROBOTICS’ of the contested sign will be understood by the relevant public as a basic English word meaning ‘of the nature of a robot; of or relating to robots’ (information extracted from Oxford English Dictionary at https://oed.com/view/Entry/166642?rskey=jMAYeD&result=1&isAdvanced=false#eid on 11/08/2020). Moreover, this word is very close to the equivalent word in the official language in the relevant territory, namely the German word ‘Roboter’ and will also for this reason be understood by the public of the relevant territory. It describes a characteristic of the goods, namely that the suitcases, luggage and carryalls protected by the contested sign are robotic in the sense that they move themselves. The element ‘ROBOTICS’ thus lacks distinctiveness.

Visually, the signs coincide in the normally distinctive verbal element ‘TRAVELMATE’. They differ in the verbal element ‘ROBOTICS’, which, however, has no distinctiveness.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TRAVELMATE’, present identically in both signs. The pronunciation differs in the sound of the letters ‛ROBOTICS’ of the contested mark, which has no counterpart in the earlier sign. That said, the latter has no distinctiveness, as mentioned above, and thus carries no weight in the comparison of the signs.

Even though the earlier mark also contains the letter ‘T’ within its figurative element, this will be perceived as a reference to the first letter ‘T’ of the verbal element ‘TRAVELMATE’ so that it is not likely to be pronounced.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘ROBOTICS’ of the contested sign as explained above, it is not sufficient to establish any conceptual difference, as it is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal element ‘TRAVELMATE’, which has no meaning, in neither of the signs. As mentioned above, the letter ‘T’ within the figurative element of the earlier mark will be understood as a reference to the first letter ‘T’ of the verbal element ‘TRAVELMATE’. Thus, even though the letter ‘T’ could convey the concept of a letter by itself, in this case it will be merely perceived as emphasising the initial letter of ‘TRAVELMATE’. Consequently, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

d) 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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods are highly similar. The signs are visually and aurally highly similar. The conceptual aspect does not influence the global assessment.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

As the signs are visually and aurally similar to a high degree, the earlier trade mark is distinctive to an average degree and the goods are all highly similar, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR despite the figurative element in the earlier mark. The differences between the signs are confined to non‑distinctive or secondary elements. Therefore, the opposition is upheld in its entirety.

As a consequence, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 121 473. It follows that the contested trade mark must be rejected for all the contested goods.

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, 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

Martin MITURA

Christian STEUDTNER

María del Carmen COBOS PALOMO

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.