OPPOSITION No B 3 049 878

Compañía de Distribución Integral Logista Holdings, S.A.U., C/ Trigo, 39 - Polígono Industrial Polvoranca, 28914 Leganés, Madrid, Spain (opponent), represented by Intecser Consultoría, Calle Goya, 127, 28009 Madrid, Spain (professional representative)

a g a i n s t

Imperial Logistics Group (Pty) Ltd, 10 Skeen Boulevard, Bedfordview, Gauteng, South Africa (applicant), represented by Hansel Henson Limited, 3rd Floor, 8 Bloomsbury Street, London WC1B 3SR, United Kingdom (professional representative).

On 14/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 878 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 17 373 201 for the figurative mark .

The opposition is based on, inter alia, Spanish trade mark registration No 2 182 405 for the word mark ‘LOGISTA’ .The opponent invoked Article 8(1)(b)EUTMR.

DECISION:

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 Spanish trade mark registration as is the one that presents more similarities with the contested sign.

1. The services

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

Class 39: Distribution, transport and warehousing of all kinds of goods and merchandises.

The contested services are the following:

Class 35: Advertising; business management; business administration; office functions; promotion and merchandising services; marketing and research services; brand activation services.

Class 39: Transport; packaging and storage of goods; travel arrangement; transportation, warehousing, distribution and freight management logistics; delivery, forwarding and warehousing services; vehicle rental services; distribution services.

Some of the contested services are identical or similar to 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.

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 identical and similar to various degrees are specialised services directed primarily at business customers with specific professional knowledge or expertise. However, it cannot be completely excluded that some of the services could also be directed at the public at large (e.g, travel arrangement). The degree of attention will vary between average and high (being high for those services that are expensive, are purchased only rarely or have an important impact on the running of the client’s business).

3. The signs

LOGISTA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 verbal element ‘LOGISTA’ included in the earlier mark will be perceived by the relevant public as the person specialised in methods of organization.

The element ‘logistics’ of the contested sign is an English word meaning, inter alia, the activity of organising, distributing or transporting goods/objects/materials. This element will be understood by the relevant public due to the closeness with its Spanish equivalent ‘logística’.

Bearing in mind that the relevant services expressly concern logistics and related activities, both ‘Logista’ and ‘logistics’ are either non-distinctive or weak for these services.

The element ‘Imperial’ of the contested sign is an adjective that means ‘belonging or related to an emperor or empire’ (see RAE at https://dle.rae.es).

Neither of the signs has any element that could be considered more dominant (visually eye-catching) than others.

Visually, the signs coincide in the sequence of letters ‘Logist***’ contained in both marks. Nevertheless, this sequence of letters is depicted in a different way and in different places in the contested sign. In the case of the earlier trade mark, it is a word mark ( it is the word as such that is protected and not its written form) and in the case of the contested sign, it is written over two lines, preceded by the additional verbal element ‘Imperial’ and in slightly stylised way.

Moreover, the marks differ in the respective endings of the elements ‘Logista’ and ‘logistics’, namely ‘-a’ vs ‘-ics’.

Finally, taking into account the overall structure of the marks and the distinctiveness issues discussed above, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /logist***/, present identically in both signs. The pronunciation differs in the sound of their ending letters, namely /-a/ vs /-ics/ and in the sound of the element /imperial/ of the contested mark, which have no counterparts in the earlier sign.

Taking into account the distinctiveness issues in relation to all the elements involved, 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. Although the word ‘logistics’ of the contested sign will evoke the same concept as the element ‘Logista’ of the earlier mark, it is not sufficient to establish any conceptual similarity, as these elements are non-distinctive/weak for the services at issue.

Moreover, the word ‘Imperial’ introduces a concept with no counterpart in the earlier mark, so 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.

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, the distinctiveness of the earlier mark must be seen as low.

5. Global assessment, other arguments and conclusion

The services have been found partially identical or similar to varying degrees and they target both the general and the professional public that will display a degree of attention ranging from average to high.

The degree of distinctiveness of the earlier mark is low.

Admittedly, there is a certain visual, aural and conceptual similarity between the marks on account of the elements ‘LOGISTA’/’LOGISTICS’ however the impact of this similarity is reduced by the fact that both ‘LOGISTA’/’LOGISTICS’ are either non-distinctive or weak for all of the relevant services and for the relevant public.

In view of all the above, taking into account the differing elements of the signs, mainly the verbal element ‘Imperial’ of the contested sign which is distinctive to an average degree and its stylization, with no counterpart in the earlier mark, it is deemed that these are sufficient to safely exclude any risk of confusion between the marks, including a risk of association.

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

The opponent has also based its opposition on the following earlier trade marks:

• -European Union trade mark registration No 1 156 496 for the figurative sign in Classes 35 and 39.

• -Spanish trade mark registration Nº 2 216 329 for the figurative mark in Class 35.

• -Spanish trade mark registration Nº 2 217 872 for the figurative sign for Class 35.

• Spanish trade mark registration Nº 2 217 873 for the figurative sign for Class 35.

• Spanish trade mark registration Nº 2 217 874 for the figurative sign in Class 39.

Since these marks have additional elements (figurative elements and verbal elements), they are even less similar that the one that has been compared in the present decision. Therefore, no likelihood of confusion exists with respect to those services.

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

Alicia BLAYA ALGARRA

Alexandra APOSTOLAKIS

Helen MOSBACK

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.