OPPOSITION No B 3 047 869

China Tours Hamburg GmbH, Wandsbeker Allee 72, 22041 Hamburg, Germany (opponent), represented by Unverzagt Von Have Rechtsanwälte Partnerschaftsgesellschaft MBB, Heimhuder Straße 71, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Hehenberger Inter Time Media, S.L., Calle Orense, número 68, 28020 Madrid, Spain (applicant), represented by Óscar González Fernández, Calle Álvarez de Baena, número 7, bajo, 28006 Madrid, Spain (professional representative).

On 26/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 869 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 163 502 for the figurative mark . The opposition is based on European union trade mark registration No 15 727 175 for the figurative mark  . 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.

a) The services

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

Class 38: Telecommunications; providing access to information on the internet; provision of internet chat rooms; provision of portals on the internet; providing chatlines, chat rooms and forums; electronic mail; forwarding of messages of all kinds to internet addresses (webmessaging); providing of access to offers for goods and services in electronically retrievable databases with interactive access and immediate order placement (telecommunications); providing access to and transmission of information concerning goods and services, texts, drawings, images and videos on the internet.

The contested services are the following:

Class 38: Telecommunication services.

Telecommunication services are identically contained in both lists of services (including synonyms).

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 services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of purchase and their price.

c) 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 common element of the signs, which are both complex marks, is the verbal element ‘CHINA’, depicted in upper-case letters in both signs, even though in different colours – light blue for the earlier mark and red for the contested sign. The country name ‘CHINA’ is understandable without any further mental steps in all the languages of the European Union, inter alia, German, English, Spanish and Portuguese. It is considered that this element is weak for the relevant services, as it may be associated by consumers as an indication that the services are offered by or to Chinese people or that they relate to China or the Chinese language or culture.

As regards the earlier mark, it is further composed of the verbal element ‘INN’, depicted in upper-case light blue letters under the verbal element ‘CHINA’, and of a figurative element placed on the lower right hand side of the verbal element, composed of a hand that holds a baton and a symbol of infinity depicted in multiple colours. The figurative element and the verbal element ‘INN’ have an average degree of distinctiveness in relation to the relevant services, even for the part of the public in the relevant territory that understands the meaning of ‘INN’ as referring to ‘an establishment for the lodging and entertaining of travellers’ (information extracted from the Merriam-Webster Dictionary on 15/02/2019 at https://www.merriam-webster.com/dictionary/inn). The earlier mark has no element that could be considered clearly more dominant than other elements.

With respect to the contested sign, the element ‘CHINA’ is followed by the verbal element ‘FM’, depicted in upper-case red letters, in a slightly smaller font than the element ‘CHINA’. The acronym ‘FM’ stands, throughout the European Union, for ‘Frequency Modulation’. It is related to a common signal used in radio broadcasting. Therefore, in relation to the relevant services, the acronym ‘FM’ will be non-distinctive. Above this verbal element are depicted curved lines in red and yellow; this figurative element has an average degree of distinctiveness. Underneath the verbal elements, ‘CHINA FM’, some Chinese characters are depicted in black. The relevant consumer is unlikely to understand them and will perceive them as a mere reinforcement of the semantic content of the verbal element ‘CHINA’ explained above. The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs only coincide in the weak verbal element ‘CHINA’. However, they differ in the distinctive verbal element ‘INN’ of the earlier mark and in the non-distinctive verbal element ‘FM’ of the contested sign. Moreover, the signs differ in the figurative elements of the signs.

Therefore, the signs are visually similar to a low 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 weak verbal element ‛CHINA’, present identically in both signs. The pronunciation differs in the sound of the distinctive verbal element ‘INN’ of the earlier mark, which has no counterpart in the contested sign, and it further differs in the sound of the non-distinctive verbal element ‘FM’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning due to the coincidence in the weak element ‘CHINA’, the signs are conceptually similar to a low degree.

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 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment 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, and the degree of similarity between the marks and between the goods or services identified (recital 11 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).

In the present case, the services are identical and the degree of attention paid by the relevant public varies from average to high. The distinctiveness of the earlier mark is normal. The signs are visually, aurally and conceptually similar only to a low degree due to the fact that they coincide in the weak verbal element ‘CHINA’.

Taking into account the limited distinctiveness of the common verbal element, the inclusion of additional figurative and verbal elements in each sign results in different overall impressions being created by the trade marks.

Assessment of the similarity between two marks means more than comparing one element of a composite trade mark with another mark. On the contrary, the general rule should be to compare the signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35).

Considering all the above, the Opposition Division considers that the differences between the signs are sufficient to counteract the similarities between them, even for identical services, and that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

José Antonio GARRIDO OTAOLA

Valeria ANCHINI

Michele M. BENEDETTI-ALOISI

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.