OPPOSITION No B 3 023 325

United Parcel Service of America, Inc., 55 Glenlake Parkway, NE, 30328 Atlanta, United States of America (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative)

a g a i n s t

ULS Havayollari Kargo Tasimacilik Anonim Sirketi, Çobançesme Mevkii, 29 Ekim Caddesi, No:16, 34197 Yenibosna – Istanbul, Turkey (applicant), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative).

On 17/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 023 325 is rejected in its entirety.

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

REASONS

The opponent filed an opposition, initially against all the goods and services of European Union trade mark application No 17 373 002 for the figurative mark , and later on, limited it to all the goods and services in Classes 12 and 39. The opposition is based on Benelux trade mark registration No 150 688 for the word mark ‘UPS’, in relation to which the opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

The applicant argued that the opponent failed to submit a complete translation into English or at least a translation of the specification of the services of the earlier mark and, therefore, the opposition should be rejected as inadmissible.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought. It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

According to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

At the same time, according to the practice of the Office, when the entire original document is in the language of the proceedings except for the list of goods and services, there will be no need to provide a complete translation following the structure of the original document. In this case, it is acceptable if only the goods and services on which the opposition is based have been translated separately in the notice of opposition, or in documents attached thereto or submitted later within the time limit to substantiate the opposition.

On 26/09/2018 the opponent submitted an official printout from the Benelux Office for Intellectual Protection concerning its earlier mark. This document is nearly entirely in the language of the proceedings. The only parts that were not in that language were the list of the services and the status of the earlier mark. However, as the opponent also relied on on-line substantiation, the fact that the earlier mark is registered was confirmed, in the language of the proceedings, in TMview. As regards the list of services, the opponent provided a translation of this list in the notice of opposition and, later, in its observations of 26/09/2018.

Therefore, the Opposition Division finds that the earlier Benelux trade mark registration No 150 688 has been sufficiently substantiated.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the services invoked, which is the best light in which the opponent’s case can be considered.

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 and services

According to the opponent, the services protected by the earlier mark in Class 39 are transport of packages, letters, documents and other papers. However, the mark is registered in Dutch for transport van pakjes, brieven, documenten en andere stukken. The correct translation of these services is: transport of parcels, letters, documents and other goods. Therefore, the Opposition Division will consider these services for the comparison below:

Class 38: Transmission of messages, letters, documents and other texts via telex or via other (electronic) ways.

Class 39: Transport of parcels, letters, documents and other goods.

As noted above, in its observations of 26/09/2018 the opponent expressly limited the scope of the opposition by excluding the services in Class 37. Consequently, following this restriction, the contested goods and services are the following:

Class 12: Vehicles for locomotion by air and their parts, other than their motors and engines.

Class 39: Land, water and air transport services; rental of land, water or air vehicles; arranging of travel tours; travel reservation; issuing of tickets for travel; courier services (messages or merchandise).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 12

The opponent argues that the contested vehicles for locomotion by air and their parts, other than their motors and engines are similar to some extent to the opponent’s services in Class 39, since they are complementary.

However, according to case-law, complementarity requires a close connection between goods, in the sense that one is indispensable or important for the use of the other, so that consumers may think that the same undertaking is responsible for both (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 48). Such a connection cannot be established in the present case. The mere fact that the opponent’s transport services are often performed through use of various types of vehicles is not sufficient for establishing complementarity or, indeed, any degree of similarity between them. Therefore, the Opposition Division agrees with the applicant that these goods and services are not complementary.

The opponent’s services are provided by specialist transport companies whose business is not the manufacture and sales of vehicles. The nature of the opponent’s transport services lies in the moving of goods from one location to another. Such transports are not offered by vehicle manufacturers. The transport services are neither in competition nor interchangeable with the manufacture and sales of vehicles or their parts (17/10/2016, R 6/2016‑4, SnappCar / Snapcar, § 10). Therefore, these goods and services are dissimilar.

The contested goods are also dissimilar to the opponent’s services in Class 38. The opponent did not provide any argumentation as to why these goods and services should be considered to be similar. They have nothing in common, as they very clearly differ in nature, purpose, methods of use. They are offered by different manufacturers/providers, target different end users and are distributed through different channels. In addition, they are neither in competition nor complementary.

Contested services in Class 39

The contested land, water and air transport services include, as broader categories, or overlap with, the opponent’s transport of parcels, letters, documents and other goods. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested courier services (messages or merchandise) overlap with the opponent’s services in the same class. Therefore, they are identical.

The contested arranging of travel tours; travel reservation; issuing of tickets for travel are similar to at least a low degree to the opponent’s services in the same class. They have a somewhat similar purpose, as they aim at transportation of either an object or a person from one place to another. Both types of services involve some travel/transport arrangements, including issuing of travel/transport documentation. The target public may coincide and it would not be unusual to see the same undertakings providing all these services (by analogy 18/01/2016, R 3107/2014-1, BEPOST / ePOST (fig.) et al, § 36; 20/02/2018, T-118/16, BEPOST /ePOST (fig.) et al., EU:T:2018:86, § 34).

However, the contested rental of land, water or air vehicles is dissimilar to the opponent’s transport of parcels, letters, documents and other goods. The opponent did not provide any argumentation as to why it considers these services to be similar. They differ in their purpose and methods of use, and they target largely different end users. They are offered through different channels and, as companies involved in the transport of goods usually do not provide vehicle rental services, they are normally provided by different undertakings. In addition, they are neither in competition nor complementary. The same applies, all the more, to the opponent’s services in Class 38 that are even further apart from the contested services. All in all, they are all dissimilar.

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 or similar to at least a low degree are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention is average.

c) The signs

UPS
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 contested trade mark is a figurative mark composed of two verbal elements and a figurative element. The verbal element ‘ULS’ is portrayed in a grey upper-case typeface in italics, below which is the word ‘Technik’ in a smaller but otherwise similar typeface in title case. The large figurative element is in the shape of a curved line in orange and grey. The stylisation of the verbal elements is largely decorative and distinctive to at most a low degree. The figurative element is an abstract geometrical form with no concept; it is inherently distinctive to an average degree.

The verbal element ‘ULS’ of the contested sign is meaningless in the relevant territory and, therefore, inherently distinctive to an average degree. The word ‘Technik’ will be immediately understood by the German-speaking part of the public as a noun with a meaning equivalent to the English word ‘technique’, namely ‘[a] way of carrying out a particular task, especially the execution or performance of an artistic work or a scientific procedure’, or ‘technology’, namely ‘[t]he application of scientific knowledge for practical purposes, especially in industry’ (information extracted from Duden Dictionary and Lexico Dictionary on 03/07/2019 at www.duden.de/rechtschreibung/Technik; www.lexico.com/en/definition/technique; www.lexico.com/en/definition/technology). These meanings will most likely be understood by the remaining part of the relevant public, considering that their word equivalents in Dutch (‘techniek’ or ‘technologie’) and French (‘technique’ or ‘technologie’) are quite similar (information extracted from Dict.com on 03/07/2019 at www.dict.com). Bearing in mind the above, the inherent distinctiveness of ‘Technik’ for the contested services must be seen as low, at most.

The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than the other elements. At the same time, account is taken of the fact that 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). Therefore, in the present case, the relevant public will perceive the verbal elements of the contested sign, and of those primarily the letters ‘ULS’, as the main identifier of commercial origin of the contested services.

The earlier trade mark is a word mark composed of the single verbal element ‘UPS’. In word marks, it is the word as such which is protected; therefore, it is irrelevant if the sign appears in upper- or lower-case letters, or in a combination thereof.

Although the letters ‘UPS’ could be associated with certain meanings in English (see Lexico Dictionary), these meanings could not result in any degree of conceptual similarity between the signs. Instead, they would make the marks even more far apart from each other on the conceptual level. Therefore, the Opposition Division will focus on the part of the public for which ‘UPS’ is meaningless and inherently distinctive to an average degree, as this is the best case scenario for the opponent.

It is important to note that the earlier mark is composed of only three letters and therefore it is a very short mark. According to case-law, the shorter a sign, the more easily the public is able to perceive all its single elements. Therefore, small differences in short words may frequently lead to a different overall impression (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39).

Visually, the signs coincide in the letters ‘U*S’. They differ in their second letters, namely ‘P’ and ‘L’, respectively, the graphemes of which are quite distinct. The contested sign differs in its large figurative element, which is of normal distinctiveness and has no counterpart in the earlier mark. It additionally differs in its second word, ‘Technik’, and, very slightly, in the stylisation of its verbal elements. Although the degree of distinctiveness of these elements is low, at most, they will not be entirely disregarded by the relevant public. In particular, the presence of the word ‘Technik’ results in the contested sign being over three times longer than the earlier mark.

Overall, and considering especially the length of the signs’ verbal elements, the Opposition Division finds that they are visually similar to no more than a low degree.

Aurally, the earlier sign ‘UPS’ and the letter sequence ‘ULS’ of the contested sign will not be perceived as single elements, but as combinations of three letters pronounced individually and in sequence, as ‘U-P-S’ and ‘U-L-S’. Irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the vowel ‛U’ and the consonant ‘S’, present identically in both signs, and the sequence they follow. The pronunciation differs in the sound of their middle letters, namely ‘P’ and ‘L’, respectively, which are entirely different in all the relevant languages (e.g. /peː/ in Dutch, /p/ in French, /pʰeː/ in German, /piː/ in English versus /ɛl/ in Dutch, English, French and /ʔɛl/ in German).

The contested sign further differs in the pronunciation of the word ‘Technik’, which, although distinctive to at most a low degree, introduces further differences to the aural perception of the signs. The purely figurative elements of the contested sign, including its stylisation, are not subject to a phonetic assessment.

Therefore, and considering especially the length of the verbal elements of the signs, they are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The contested sign differs from the earlier mark in the concept evoked by the word ‘Technik’, albeit it being at most weak. The remaining elements do not evoke any concepts. Therefore, the marks are conceptually not similar.

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 marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

In its observations of 26/09/2018, the opponent argued generally that the earlier trade mark possessed a high amount of goodwill and reputation worldwide, in relation to all the services on which the opposition is based. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier marks, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In its observations of 26/09/2018, the opponent submitted evidence to prove this claim, namely Exhibit 01, a printout entitled ‘Best Global Brands 2017’ presenting a ranking by Interbrand, where the earlier mark in its figurative form is mentioned under number 29. According to this document, ‘UPS’ is the world’s largest package delivery company, a provider of specialised transportation and logistics services and a leader in the global commerce business. The brand’s value in 2017 was USD 16 387 million, having grown by 7 %.

Additionally, on 25/01/2019, the opponent submitted the following evidence to prove use of the earlier mark, which will also be taken into account.

• Attachment 01: UPS Netherlands and Belgium Fact Sheets 2018, providing some information about the opponent’s history and global activities as well as some facts about its activities in the Netherlands and Belgium.

• Attachment 02: UPS Rates – UPS Air Freight Premium Direct (2018), listing all the countries where the opponent provided this service in 2018.

• Attachment 03: UPS Worldwide Express Freight (2018), listing all the countries where the opponent provided this service in 2018.

• Attachment 04: UPS Healthcare Campus Roermond and UPS healthcare and life-science centre at Amsterdam Schiphol Airport. According to this document, the opponent made substantial investments in 2016 in the field of special storage facilities in the Netherlands.

• Attachment 05: UPS International Alcohol Shipping Guide 2017, providing information on sending alcoholic beverages to and from Luxembourg.

• Attachment 06: Screenshots presenting the country-specific UPS websites.

• Attachment 07: Sample Transit Times for Shipments from the US to Cities Around the Globe (2017).

• Attachment 08: Screenshots from 2018 of the opponent’s website with the time and cost calculator of the opponent’s services.

• Attachment 09: Screenshots from 2018 of the opponent’s website with the opponent’s locations in Belgium, Luxembourg and the Netherlands.

• Attachment 10: A copy of a press release from 2017, according to which the opponent plans to invest EUR 130 million in a new parcel-sorting and delivery centre in Eindhoven (Netherlands), and a copy of another press release from 2016, according to which the opponent plans to invest EUR 4 million in a new parcel-sorting and delivery centre in Lummen (Belgium).

• Attachment 11: Screenshots showing two YouTube videos relating to the opponent, published on 06/02/2018 and 02/03/2018.

The opponent has to prove an enhanced distinctiveness of its earlier trade mark on the date of application of the contested sign, namely 20/10/2017. The evidence should refer to the services for which an enhanced distinctiveness was claimed and the territory where the earlier mark is protected, namely Benelux.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to demonstrate that the earlier trade mark acquired a high degree of distinctiveness through use or a reputation.

The Opposition Division notes that many of these documents refer to the opponent’s worldwide situation or its corporate history, such as the fact that the company is headquartered in Atlanta and serves more than 220 countries and territories worldwide. For example, attachment 01 details the opponent’s global revenues, which cannot be transposed to the relevant territory. Moreover, all of the attachments between 01 and 11 originate directly from the opponent; these are fact sheets, price lists, websites, press releases and videos released by the opponent. Consequently, their evidential value must be considered lower than that of the evidence originating from third parties. In addition, some of them (e.g. attachments 02, 03, 05, 08, 09 and 11) are either undated or dated after the date of filing of the contested application.

Although some items of evidence specifically mention Benelux and confirm a relatively longstanding use of the earlier mark there for some of the opponent’s services (e.g. in Belgium and the Netherlands), they do not, even taken as a whole, allow unequivocal conclusions in relation to the earlier mark’s commercial success or recognition by the consumers in this territory. The evidence does not indicate the sales volumes or the market share of the earlier mark or the extent to which the mark has been promoted in the relevant territory. As a result, the evidence does not show that the earlier trade mark is known by a significant part of the relevant public.

Aside from the opponent’s vague statements that the earlier mark ‘is generally known in the relevant market’ and that ‘it enjoys a consolidated position’ in this market, the evidence does not provide any verifiable indication of the degree of recognition of the earlier mark by the relevant public in Benelux. A printout entitled ‘Best Global Brands 2017’ (exhibit 01) presenting the brand’s value and position in 2017 refers to the worldwide situation. It does not allow any conclusions specifically in relation to Benelux, or even to the European Union. In addition, the exact criteria on the selection of the brands are not specified and, therefore, the Office cannot verify them.

Bearing the above in mind, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark has acquired an enhanced degree of distinctiveness in the relevant territory. 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

The contested goods and services are partly identical, partly similar to at least a low degree and partly dissimilar to the opponent’s services. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at dissimilar goods and services cannot be successful. The examination will therefore proceed only for the services that are identical or similar to any degree.

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 that 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).

The signs are visually similar to no more than a low degree and they are aurally similar to a low degree. As explained above in section c) of this decision, the signs are not conceptually similar. The distinctiveness of the earlier trade mark is normal from the perspective of the relevant public, namely the public at large and business customers displaying an average degree of attention.

It is important to recall again that the earlier sign is composed of the string of three letters, ‘UPS’, and it is a short mark. As noted above, small differences in short words may frequently lead to a different overall impression (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39). Therefore, the fact that the earlier mark and the most distinctive verbal element of the contested sign, ‘ULS’, differ in one letter is by itself a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs (23/10/2002, T‑388/00, ELS, EU:T:2002:260), especially given that the graphemes of these letters are visually distinct and they will produce an entirely different sound when pronounced individually as separate letters.

The contested sign also differs from the earlier mark in its remaining elements, in particular its abstract figurative element. This element may have smaller impact on the consumer’s perception than the verbal elements, as explained above, but it is relatively large and inherently distinctive and will, therefore, not remain unnoticed by the public. Moreover, the contested sign differs in its second word, ‘Technik’, making it longer than the earlier mark by seven letters. Despite its (at most) weak distinctive character, it introduces further differences that will help the relevant public differentiate the marks.

Based on an overall assessment of the marks under comparison, the Opposition Division takes the view that the differing elements will enable consumers, even those displaying an average degree of attention, to safely differentiate between them.

According to the principle of interdependence, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion. However, in this case, the fact that some services are identical (while others are similar) cannot compensate for the differences between the signs.

Considering all the above, there is no likelihood of confusion for any part of the relevant public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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, 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

Gueorgui IVANOV

Jakub MROZOWSKI

Patricia LÓPEZ FERNÁNDEZ DE CORRES

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.