OPPOSITION No B 3 037 572

Isango! Limited, TUI Travel House, Crawley Business Quarter, Fleming Way, RH10 9QL, Crawley, United Kingdom (opponent), represented by Polopatent, Dr. Fleming, 16, 28036, Madrid, Spain (professional representative)

a g a i n s t

YGO, Baznicas iela 8 – 22, 1010, Riga, Latvia (applicant), represented by Jacques Lavergne, 8, Port Saint Sauveur, 31000, Toulouse, France (professional representative).

On 22/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 037 572 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 256 901 for the word mark ‘Yiango’, namely against all the services in Class 41. The opposition is based on European Union trade mark registration No 6 474 738 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 39: Travel services; booking agency services for travel; travel agency; travel reservation services; package holiday services for arranging travel; arranging excursions for tourists; provision of travel data; travel ticket reservation services; tour organising; tour operating; tourist agency services [travel], tourist office services [travel], travel agency services for arranging holiday travel; arranging of flights, of terrestrial methods of travel, of travel by sea, and of travel by inland waterways; arranging the transportation of passengers and luggage by land, sea, rail, inland waterways and air; arranging cruises and tours; escorting of travellers; sight seeing services; vehicle rental information; vehicle rental.

Class 41: Booking of seats for shows; booking of tickets or the like to enable individuals or parties to partake in entertainment events; entertainment information; amusement and entertainment services.

The contested services are the following:

Class 41: Services provided by a franchiser, namely personnel training; providing of training; practical training and demonstration; workshops (arranging and conducting of -) [training]; arranging and conducting of conferences, congresses, seminars and colloquiums; organisation of exhibitions for cultural and/or educational and/or entertainment purposes; organisation of competitions for cultural and/or educational purposes; providing of information relating to education and/or culture; providing of information relating to education and/or culture on computer networks.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

Some of the contested services are identical or similar to the services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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

The degree of attention is considered to be average.

c) The signs

	Yiango
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 word element of the earlier mark ‘isango’, which is stylised in bold lower case letters, each depicted in a different colour, has no meaning for the relevant public and is, therefore, distinctive. The ‘!’ symbol will be understood as an exclamation mark, that is, a punctuation mark usually used after an interjection or exclamation to indicate strong feelings or high volume (shouting), or to show emphasis, and that often marks the end of a sentence. It does not play an independently distinctive role within the earlier mark because it merely refers to the verbal elements that precede it. Since the public does not normally perceive punctuation marks as an indication of origin, this element must be seen as, at most, weakly distinctive.

The contested sign consists of a single word ‘Yiango’, which has no meaning for the relevant public and is, therefore, distinctive. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the contested sign is depicted in title case.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in their endings, ‘ango’. However, they differ in their initial letters, which are ‘is’ in the earlier mark and ‘yi’ in the contested sign. They further differ in the stylisation of the verbal elements of the earlier mark and in the ‘!’ symbol in the earlier mark which, although not particularly distinctive, will also be perceived by the public and contribute to further distinguishing visually between the signs.

The signs are both composed of six letters. The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

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 their last letters ‛ango’. However, the pronunciation differs in their initial letters, which are ‘is’ (vowel-consonant) in the earlier mark and ‘yi’ (letter ‛y’-vowel) in the contested sign. This difference also has an impact on the word stress. A further differing element is the exclamation mark placed at the end of the earlier mark. This will lead the public to read the verbal element of the earlier mark with more emphasis, especially towards the end of the sign.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 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.

e) 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).

In the present case, the services at issue target both the public at large and business customers with specific professional knowledge or expertise; however, the degree of attention is considered average. The signs are visually and aurally similar to a low degree, as they coincide in their last letters ‘ango’ and differ in their first letters (and their sound) ‘is/yi’. Further differences are perceived in the stylisation of the earlier mark and its exclamation mark at the end of the verbal element that will make the relevant public perceive it with more emphasis, as already explained in section c) above. A conceptual comparison is not possible.

It is highly unlikely that the relevant consumer could confuse the trade marks or believe that the services applied for come from the same undertaking merely on the basis of the slight elements of similarity set out above. The clearly perceptible differences between the signs would not be overlooked by the relevant customer, even if they were used for identical services.

Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent refers to previous decisions of the Office and of the Board of Appeal to support its arguments, such as Decision B 2 606 344, 13/10/2016 –CEBION / EUBION and Decision of 10 of October 2006 – R 161/2006-1 –INZONE / MIZONE. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, because the signs are not comparable. Firstly, in both cited cases the signs under comparison were word marks; secondly, phonetically they had been considered as having a very similar intonation and rhythm.

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

Keeva DOHERTY

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.