OPPOSITION No B 2 984 378

British Airways Plc, Waterside (HB A3), P.O. Box 365, Harmondsworth, UB7 0GB, United Kingdom (opponent), represented by Maucher Jenkins, 26 Caxton Street, London, SW1H 0RJ, United Kingdom (professional representative)

a g a i n s t

CEC LDA, Av Dr. Moreira Sousa 593 H, 4415-383 Pedroso, Portugal (applicant).

On 11/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 984 378 is upheld for all the contested services.

2. European Union trade mark application No 16 990 509 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 990 509 . The opposition is based on, inter alia, European Union trade mark registration No 13 474 127 . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 13 474 127.

1. The services

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

Class 35: Advertising, marketing and promotional services for airlines; advertising, organisation, promotion, operation, supervision and management of frequent flier programs; information, advice and assistance relating to the aforesaid services.

The contested services are the following:

Class 35: Secretarial services; business secretarial services; secretarial and clerical services; company office secretarial services; provision of initial company secretarial services on company formation; business management consultancy; business organization consultancy; consultancy relating to business analysis; assistance and consultancy relating to business management and organisation; business management consultancy and advisory services; business management and enterprise organization consultancy.

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 secretarial services; business secretarial services; secretarial and clerical services; company office secretarial services; provision of initial company secretarial services on company formation are similar to the opponent’s assistance relating to the aforesaid services [advertising, organisation, promotion, operation, supervision and management of frequent flier programs]. The purpose of these contested services is to assist third parties in operating and running their business or in making improvements to their business through secretarial services (e.g. shorthand and typing, compiling information into a computer databases and invoicing), personnel recruitment, payroll preparation and strategic commercial business planning and/or tax preparation, for example. These services are intended to help companies with the performance of business operations. The same applies to the opponent’s services. Therefore, the services are similar in nature and purpose. They may have similar methods of use and they have the same origins and users.

The contested business management consultancy; business organization consultancy; consultancy relating to business analysis; assistance and consultancy relating to business management and organisation; business management consultancy and advisory services; business management and enterprise organization consultancy are similar to a low degree to the opponent’s advertising services, as these services have the same purpose. They usually also have the same producer and relevant public.

This is because advertising is an essential tool in business management, as it makes the business itself known in the market and it is also part of the area of business consulting. The purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in his or her advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin.

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 similar to various degrees are directed at business customers with specific professional knowledge or expertise. Their degree of attention is considered to vary from average to high, depending on the exact nature of the services and the financial input that they require.

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 is a figurative mark that consists of the words ‘on business’ written over two lines. The element ‘on’ is written in rather ordinary lower case bold letters; the letter ‘o’ is slightly stylised, namely it is interrupted by a vertical white line through the middle of the letter. Below the element ‘on’ is the slightly smaller word ‘business’ in standard lower case letters.

The contested sign is a figurative mark that also contains the elements ‘On’ and ‘Business’. The element ‘On’ is depicted in white letters against a red rectangular background; the first letter ‘O’ resembles the ‘on button’ that is commonly seen on electronic devices and thus this letter reinforces the meaning of the word ‘On’. The verbal element ‘Business’ is written in a rather standard grey typeface. Underneath the word ‘Business’ is the much smaller verbal element ‘soluções empresariais’. The Portuguese-speaking part of the public will perceive this expression as meaning ‘business solutions’ (information extracted from Collins Dictionary on 27/11/2018 at www.collinsdictionary.com). This element is non-distinctive for this part of the public in relation to the relevant business-related services, as it merely refers to the nature of these services. For the rest of the public, the verbal element ‘soluções empresariais’ has no meaning and therefore it is distinctive to an average degree.

Due to its size and position, the element ‘On Business’ is the dominant element of the contested sign.

Visually, the signs coincide in the verbal elements ‘On Business’. The signs differ in the red rectangular background and stylisation of the contested sign, as well as in the stylisation of the letter ‘O’ in both signs; however, these differing elements are rather decorative in nature and so are not able to distract the consumer’s attention from the words ‘On Business’. Moreover, the signs differ in the verbal element ‘soluções empresariais’ in the contested sign, which is placed in a secondary position and has no counterpart in the earlier mark. Taking into account that the verbal element ‘soluções empresariais’ of the contested sign will have less impact, as it is clearly subordinate to the dominant element ‘On Business’ and is also non-distinctive for part of the public, the signs are considered visually similar to at least 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 elements ‘On Business’, present in both signs. However, the signs differ in the pronunciation of the verbal element ‘soluções empresariais’ in the contested sign, which has no counterpart in the earlier mark.

Taking into account that the verbal element ‘soluções empresariais’ will have less impact than the other elements of the contested sign (for the reasons explained above), the signs are aurally highly similar.

Conceptually, the element ‘business’ will be understood by the relevant public as meaning, inter alia, ‘commercial activity; a commercial operation or company’ (information extracted from Oxford English Dictionary on 20/11/2018 at https://en.oxforddictionaries.com). Despite its being an English word, it is considered that, as the relevant public is made up of professional consumers, this basic English word will be understood due to its extensive and widespread use in the business world throughout the relevant territory. The element ‘on’ may be perceived as an English preposition and is very commonly seen together with the word ‘business’. Moreover, the relevant consumer may, as well as understanding the concept of each element separately, also grasp the meaning of the expression ‘on business’ as a whole, namely in the sense of ‘doing business’ or ‘working’.

As the secondary, and also non-distinctive (for part of the public), element ‘soluções empresariais’ of the contested sign will not create any significant conceptual differences for any of the public (either the non-Portuguese-speaking public or the Portuguese-speaking public), the signs are conceptually highly similar.

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 in relation to the concepts conveyed by the elements ‘on’ and ‘business’, when taken as a whole, the earlier mark, ‘on business’, alludes to the business-related nature of the services in question; therefore, the distinctiveness of the earlier mark must be seen as low for all the relevant services.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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 services covered are from the same or economically linked undertakings.

The services are similar to various degrees and they target business customers with specific professional knowledge or expertise.

The marks are visually similar to at least an average degree (depending on the part of the public considered), aurally highly similar and conceptually highly similar. The signs coincide in the elements ‘On Business’, which constitute the earlier mark in its entirety and are dominant in the contested sign. Moreover, there is a clear conceptual link between the marks. Although the stylisation, colours and additional verbal element of the contested sign create some differences between the signs, they are not capable of outweighing the abovementioned commonalities. Therefore, it is highly conceivable that the relevant consumers will confuse the marks or alternatively perceive the contested sign as a sub-brand or variation of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In addition, account must 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for all the contested services, even for those found to be similar to a low degree, as the obvious similarities between the signs offset the low degree of similarity between the services.

As earlier European Union trade mark registration No 13 474 127 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Rasa BARAKAUSKIENE

Erkki MÜNTER

Birgit FILTENBORG

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.