OPPOSITION No B 3 003 152

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 3 003 152 is upheld for all the contested services.

2. European Union trade mark application No 16 997 124 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 16 997 124 ‘ON BUSINESS’. 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, inter alia, on which the opposition is based are 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: Business secretarial services; company office secretarial services; secretarial and clerical services; provision of initial company secretarial services on company formation; business management consulting; business organisation consulting; consultancy relating to business analysis; assistance and consultancy relating to business management and organisation; business management and enterprise organization consultancy; business management consultancy and advisory services.

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 business secretarial services; company office secretarial services; secretarial and clerical 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 the operation and running of their businesses or to make improvements to their businesses through, for example, secretarial services (e.g. shorthand and typing, the input of information into computer databases, invoicing), personnel recruitment, payroll preparation and strategic commercial business planning and/or tax preparation. These services are intended to help companies in running their businesses. The same applies to the opponent’s services. Therefore, the services are similar in nature and purpose. They may use similar methods and have the same origins and users.

The contested business management consulting; business organisation consulting; consultancy relating to business analysis; assistance and consultancy relating to business management and organisation; business management and enterprise organization consultancy; business management consultancy and advisory services are similar to a low degree to the opponent’s advertising services, as they have the same purpose. They usually have the same providers 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 encompassed in the field of 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 commitment that they imply.

3. The signs

	ON BUSINESS
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).

Visually, the signs coincide in all their verbal elements. However, they differ in the slight stylisation of the earlier sign, which has a purely decorative nature and is so simple that it will not distract the consumer’s attention from the words it merely serves to embellish. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of all their verbal elements, ON BUSINESS, present identically in both signs.

Therefore, the signs are aurally identical.

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). Bearing in mind the relevant professional consumer, it is considered that 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 as a word very commonly seen together with the word ‘business’. Moreover, the relevant consumer may, aside from understanding the concept of each element separately, also grasp the meaning of the expression ‘on business’ as a whole in the sense of ‘doing business’ or ‘working’.

In either case, the marks evoke the same concept and are therefore identical.

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 and, 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 a 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 (see, to that effect, 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.

As concluded above, the contested services in Class 35 are similar to various degrees to the opponent’s services and they target business customers with specific professional knowledge or expertise.

The marks under comparison are visually highly similar and aurally and conceptually identical. They coincide in all their verbal elements, meaning that the contested sign is totally included in the earlier trade mark. Even taking into consideration the stylisation of the earlier mark, there is nothing that truly sets the marks apart or that would allow them to be distinguished from one another.

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, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 474 127.

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 the earlier right 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.