OPPOSITION No B 3 049 965

Extracover Limited, 40 Bowling Green Lane, EC1R 0NE London, United Kingdom (opponent), represented by Abel & Imray, 20 St. Andrew Street, EC4A 3AG London, United Kingdom (professional representative)

a g a i n s t

Share The City, srl, Via Gian Giacomo Mora 12, 20123 Milano, Italy (applicant)

On 11/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 965 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 647 009 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 647 009 (figurative mark). The opposition is based on the following earlier rights:

1. United Kingdom trade mark registration No 3 275 688 for the figurative mark (earlier mark 1);

2. United Kingdom trade mark registration No 3 275 165 for the word mark ‘zego’ (earlier mark 2);

3. German trade mark registration No 302 017 238 853 for the word mark ‘ZEGO’ (earlier mark 3);

4. European Union trade mark registration No 16 610 321 for the word mark ‘Zego’ (earlier mark 4).

The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier rights.

EARLIER UK RIGHTS

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registrations No 3 275 688 and No 3 275 165 (earlier marks 1 and 2) no longer constitute valid bases for the opposition.

The opposition must therefore be rejected as far as it is based on these earlier rights.

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 European Union trade mark registration No 16 610 321 ‘Zego’ (earlier mark 4).

a) The goods and services

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

Class 9: Computer software for the collection of positioning data; computer software for the compilation of positioning data; computer software for the dissemination of positioning data; computer software for the processing of positioning data; computer software for the transmission of positioning data; global positioning systems for use with bicycles; vehicle tracking systems.

Class 36: Accident insurance underwriting; assessing and processing insurance claims; insurance claim settlements; insurance underwriting services; transit insurance underwriting; underwriting; underwriting relating to transport insurance; insurance underwriting; accident insurance; administration of group insurance; administration of insurance claims; arranging of insurance; administration of group insurance plans; administration of insurance plans; brokerage; consultancy and brokerage services relating to vehicle insurance; insurance brokerage; insurance for vans; insurance services for the protection of drivers; insurance services relating to goods in transit; insurance services relating to motor vehicles; motor insurance brokerage; processing of insurance claims; transit insurance brokerage; transport insurance brokerage.

The contested goods and services are the following:

Class 9: Computer software for use in providing multiple user access to a global computer information network; software; computer software for organizing and viewing digital images and photographs.

Class 38: Communication by computer; telecommunication services; mobile telephone communication services; providing access to databases; providing multiple-user access to a global computer network; providing online forums; providing access to platforms and portals on the internet; providing access to information via data networks; providing access to an internet discussion website; provision of telecommunications access to databases and the internet; provision of access to data on communication networks; providing user access to portals on the internet; providing access to e-commerce platforms on the internet; provision of access to an electronic marketplace [portal] on computer networks; electronic messaging; providing telecommunication channels for teleshopping services; telecommunications routing and junction services; message sending.

Class 39: Provision of information relating to road transport; transportation information; providing transport and travel information via mobile telecommunications apparatus and devices; providing information relating to the planning and booking of travel and transport, via electronic means; traffic information; tracking of passenger vehicles by computer or via GPS; services for the provision of information relating to motor transport; transport brokerage; freight and transport brokerage; vehicle rental; passenger vehicle hire; escorting of travellers; transportation logistics; arranging of travel tours; booking of transport via global computer networks; reservation services for transportation by land; planning and booking of travel and transport, via electronic means; chauffeur services; transportation check-in services; vehicle transport services; passenger transport; passenger cargo services; transport of persons and goods by land, air and water; transport of travellers; transport; minibus transport services; transport services; car pooling services; car sharing services.

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 9

The contested software includes, as a broader category, several of the opponent’s goods in Class 9, such as computer software for the collection of positioning data. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested computer software for use in providing multiple user access to a global computer information network; computer software for organizing and viewing digital images and photographs share some commonalities with the opponent’s computer software (for the collection, compilation, dissemination, processing, transmission) of positioning data. The opponent’s software is designed to determine accurate locations using signals received from selected satellites. It is not uncommon in this field for images to be captured and later uploaded/downloaded via the internet, which is closely related to the software protected under the contested sign. Therefore, these goods have the same nature and may coincide in their distribution channels, relevant public and producers. These goods are therefore considered at least similar to a low degree.

Contested services in Class 38

The contested services in this class are all in the field of telecommunication, mainly consisting of the electronic transmission of information and data, providing access to computerised, electronic and online databases and to websites, and providing online services. They are considered similar to the opponent’s goods in Class 9, which includes different computer software related to positioning data, frequently used in telecommunications for transmitting data and information about positioning. They usually coincide in their purpose, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 39

The contested tracking of passenger vehicles by computer or via GPS are services that are used to find the location of vehicles at any given moment. The opponent’s vehicle tracking systems in Class 9 commonly use GPS technology for locating vehicles. Consequently, the producer/provider of these goods and services may coincide. The relevant public and distribution channels are also the same. Moreover, the opponent’s goods may be complementary to the contested services, as they can be mandatory for receiving the service or they might be in competition. Therefore, they are considered at least similar.

The contested provision of information relating to road transport; transportation information; providing transport and travel information via mobile telecommunications apparatus and devices; providing information relating to the planning and booking of travel and transport, via electronic means; traffic information; services for the provision of information relating to motor transport are information services relating to transport and travel. Measuring people’s everyday movements is an important task in very different live spheres such as transportation, taxation and public administration. It is usually measured using travel diaries or questionnaires, and more recently with GPS or other tracking technologies. Therefore the opponent’s computer software related to positioning data in Class 9 are complementary to these services. Moreover, the producer/provider and distribution channels of these goods and services may coincide. Therefore, they are considered similar.

The remaining contested services in this class mainly cover travel services, the transport of goods and passengers and the rental of vehicles. The opponent’s insurance services in Class 36 (e.g. accident insurance underwriting; insurance services for the protection of drivers; insurance services relating to goods in transit), as claimed by the opponent, are usually offered at the time of hiring the contested services.

For instance, insurance services are usually procured when renting a car, and car rental companies are usually in a position to provide vehicle insurance as part of their services. The connection is so close that the public may assume that these services are provided by the same or related undertakings. The same applies to travel services. The public is aware that providers of travel arrangements and reservations may also provide travel insurance, which includes travelling for holidays or sports.

Therefore, these services are similar as they coincide in their distribution channels and consumers and have a certain degree of complementarity.

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 goods and services found to be identical or similar to varying degrees are directed at the public at large (e.g. computer software for organizing and viewing digital images and photographs) and at business customers with specific professional knowledge or expertise (e.g. freight and transport brokerage).

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

c) The signs and distinctiveness of the earlier mark

Zego
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 verbal element ‘Zego’ in both signs has no meaning for the relevant public and is, therefore, distinctive.

Since the opponent did not make any particular claim in relation to the distinctiveness of the earlier mark, and it has no meaning in relation to the goods and services involved, it is deemed to be normal.

The figurative elements and aspects of the contested sign (the human figure inside the car, the stylisation of the letters and the colours) have different levels of distinctiveness. The depiction of the car is at least weak in relation to some of the relevant goods and services, such as the products referring to transport or vehicles, (e.g. car pooling services; car sharing services in Class 39), while it has an average degree of distinctiveness for the other goods and services (e.g. computer software for organizing and viewing digital images and photographs in Class 9). The stylisation of the letters and the colours are purely decorative.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in their sole verbal element (and sound) ‘Zego’. They differ visually in the figurative elements and aspects of the contested sign.

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 because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the differing figurative elements and aspects of the contested sign will have a reduced impact on the overall perception of the sign.

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

Conceptually, although the verbal elements of the trade marks have no meaning for the public in the relevant territory, the contested sign evokes a concept through its figurative element (a person driving a car). Since the earlier mark will not be associated with any meaning, the signs are not conceptually 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) 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).

The goods and services are identical or similar to varying degrees. They target the public at large as well as professionals, with a degree of attention that varies from average to high.

The signs are visually similar to an average degree, aurally identical and conceptually not similar. The earlier mark has a normal degree of distinctiveness.

Both signs contain, as their only verbal element, the same single distinctive word ‘Zego’. For the reasons given in section c), the differences identified between the signs, namely the figurative elements and aspects of the contested sign, have a limited impact on the average consumer. Therefore, the coinciding verbal element ‘Zego’, (the only element in the earlier mark) is the element with the most weight in the contested sign.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In fact, it is common practice, on the relevant market, for undertakings to make variations of their trade marks by, for example, altering the typeface or colours, or adding figurative elements to them, to denote new product lines, or to endow their trade mark with a newer, more fashionable image. Moreover, consumers are well accustomed to marks being stylised and embellished with logos and other devices.

Therefore, when encountering the conflicting signs, the relevant public will mentally register that they coincide in the verbal element ‘Zego’ and perceive the contested sign as a new version of the earlier mark, or vice versa.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

In application of the interdependence principle mentioned above, likelihood of confusion cannot be excluded even for the contested goods found to be similar to a low degree to the opponent’s goods and services, since the coincidences between the marks are clearly sufficient to outweigh the low degree of similarity of those goods.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 610 321. It follows that the contested trade mark must be rejected for all the contested goods and services.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Inés GARCÍA LLEDÓ

Sofía SACRISTÁN MARTÍNEZ

Mª del Carmen SUCH SÁNCHEZ

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.