OPPOSITION No B 3 038 133

El Corte Inglês, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

My Guide Network Limited, 71-75 Shelton Street, Covent Garden, London WC2H 9JQ, United Kingdom (applicant), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 25/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 038 133 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 454 018 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 454 018 for the figurative mark , namely against all the goods and services in Classes 16 and 39, and some of the services in Class 43. Subsequently, the Office reopened the examination on absolute grounds of the trade mark application and, as a consequence, the mark was refused registration for some of the contested goods and services in Classes 16 and 39, and for all the services in Class 43.

The opposition is based on Portuguese trade mark registration No 564 808 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.

1. The goods and services

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

Class 16: Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 39: Transport; packaging and storage of goods; travel arrangement.

Following the applicant’s limitation of the list of the goods and services on 28/05/2019 and the above-mentioned partial refusal, the contested goods and services are the following:

Class 16: Coupons; vouchers; paper; cardboard; stationery; pens; pencils; binders; notebooks; postcards; all these goods to be used through a network of professionals in the tourist and travel businesses.

Class 39: Packaging and storage of goods; all these services to be used through a network of professionals in the tourist and travel businesses.

Contested goods in Class 16

The contested coupons; vouchers; postcards; all these goods to be used through a network of professionals in the tourist and travel businesses are included in the broad category of, or overlap with, the opponent’s printed matter. Therefore, they are identical.

The contested paper; all these goods to be used through a network of professionals in the tourist and travel businesses is included in the broad category of, or overlap with, the opponent’s paper. Therefore, they are identical.

The contested cardboard; all these goods to be used through a network of professionals in the tourist and travel businesses is included in the broad category of, or overlap with, the opponent’s cardboard. Therefore, they are identical.

The contested stationery; pens; pencils; binders; notebooks; all these goods to be used through a network of professionals in the tourist and travel businesses are included in the broad category of, or overlap with, the opponent’s stationery. Therefore, they are identical.

Contested services in Class 39

The contested packaging and storage of goods; all these services to be used through a network of professionals in the tourist and travel businesses are included in the broad category of, or overlap with, the opponent’s packaging and storage of goods. Therefore, they are identical.

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 goods and 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 is considered average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 Portuguese public is generally aware that the verbal element ‘EL’ of the earlier mark is the Spanish (singular masculine) definite article, equivalent of the English article ‘the’, and, since it has a merely syntactic function and defines the noun that follows it, will not pay much attention to it.

The element ‘GUIDE’, that the signs have in common, is meaningless for a substantial part of the Portuguese public. It is not a basic English term and it is sufficiently far from the Portuguese equivalent word, ‘GUIA’, so there is no reason for consumers to establish a connection. Therefore, contrary to the applicant’s arguments, it is normally distinctive from the perspective of the relevant public.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘GUIDE’ is meaningless and, therefore, it is normally distinctive.

The applicant argues that the element ‘GUIDE’ is descriptive for the goods and services covered by the earlier mark. The applicant claims that the EUIPO has refused registration of trade marks consisting of or containing the element ‘GUIDE’ due to its descriptive character. In support of its argument the applicant enclosed various refusals of applications for European Union trade marks under Article 7(1) EUTMR including the element ‘GUIDE’ (some confirmed by the Board of Appeal) issued by the EUIPO. In this regard the Opposition Division points out that the earlier mark is a Portuguese trade mark registration and, therefore, the distinctiveness of the earlier mark has to be analysed from the point of view of the relevant Portuguese-speaking consumers. As explained above, ‘GUIDE’ is meaningless for the majority of the Portuguese public. Therefore, this applicant’s argument has to be considered unfounded.

Further, in its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ’GUIDE’. In support of its argument the applicant refers to several trade mark registrations, such as EUTMs and Portuguese trade marks.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ’GUIDE’. Under these circumstances, the applicant’s claims must be set aside.

As regards the figurative device in the earlier mark, it will be perceived as a triangle. It is distinctive for the goods and services at issue.

The first letter of the verbal element ‘GUIDE’ in the contested sign is stylised. It reproduces a typical ‘location symbol’ used nowadays in maps. In relation to the goods and services of the contested sign, it is distinctive.

The first verbal element, ‘MY’, of the contested sign is a basic English word, namely it is a possessive determiner indicating that something belongs to or associates to the speaker and it merely introduces the following word (‘GUIDE’). As such, the consumer will not pay much attention to this element.

The green square background and the straight line at the bottom of the earlier mark, as well as the black rectangular label including the thin broken line underlining the verbal elements in the contested sign, are unable to convey any message that can be remembered by consumers and will accordingly not be seen by them as an indication of the commercial origin of the goods and services at issue (12/09/2007, T-304/05, Pentagon, EU:T:2012:271, § 22). Therefore, these elements are considered to have reduced distinctiveness.

Furthermore, 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).

Neither sign has an element that could be considered clearly more dominant (visually eye-catching) than others.

Visually, the signs coincide in the distinctive verbal element ‘GUIDE’. The signs differ in their first verbal elements, ‘EL’ in the earlier mark and ‘MY’ in the contested sign. They also differ in their figurative elements and the colours, which, however, have less impact on the consumer’s perception since, as noted above, consumers tend to focus on the verbal elements of signs.

The applicant argues that the signs differ in their beginnings where consumers’ attention is focused. The Opposition Division points out that this difference refers to the definite article in the earlier mark and the pronoun in the contested sign, which both determine the verbal element ‘GUIDE’ that follows and, therefore, they play a subordinate role as compared to the element ‘GUIDE’ in both signs. Therefore, this difference is only minimal. In any event, account has to be taken of the fact that the second word of the earlier mark is included in its entirety in the contested mark in the same position and as an independent distinctive element. Therefore, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛G-U-I-D-E’, present identically in both signs. The coinciding component is distinctive. The pronunciation differs in the sound of two letters ‛E-L’ of the earlier mark and ‘M-Y’ in the contested sign, of ancillary character.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the dissimilar meanings of the element ‘EL’ in the earlier mark and ‘MY’ in the contested sign. Therefore, conceptually the signs are 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.

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. In the present case, the earlier trade mark has no meaning for the goods and services in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to established case-law, the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

The contested goods and services are identical to the opponent’s goods and services. They target the public at large and professionals. The public’s degree of attention will be average. The earlier mark is considered to enjoy a normal degree of inherent distinctiveness. The signs are visually and aurally similar to an average degree, and conceptually, the signs are not similar. Indeed, the contested sign reproduces the element ‘GUIDE’ of the earlier mark, which is distinctive from the perspective of the relevant public. The differences between the signs are limited to the ancillary verbal elements in both signs, namely ‘EL’ in the earlier mark and ‘MY’ in the contested sign. As regards the figurative elements of both signs, they will have a lesser impact than the verbal element ‘GUIDE’ since, as explained above in section c) of this decision, when signs consist of both verbal and figurative components, the verbal element usually has a stronger impact on the consumer than the figurative component.

Therefore, in an overall assessment, taking into account that the distinctive verbal element of the earlier mark is contained in the contested sign as a distinctive verbal element, it is reasonable to assume that when encountering the contested sign in relation to identical goods and services, consumers are likely to confuse the marks and believe that these goods and services come from the same undertaking or, as the case may be, economically linked undertakings.

The applicant refers to previous decisions of the Office to support its arguments. 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 applicant are not relevant to the present proceedings given that, as established above, the common element of the signs, ‘GUIDE’, in the present proceedings is distinctive from the perspective of a significant part of the relevant public as it does not describe the goods and services or a characteristic of the goods and services.

Considering all the above, there is a likelihood of confusion on a substantial part of the Portuguese public. Given that a likelihood of confusion for only part of the public in the relevant territory is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 564 808. It follows that the contested trade mark must be rejected for all the contested goods and 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 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, 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

Lucinda CARNEY

Marzena MACIAK

Eva Inés PÉREZ SANTONJA

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.