OPPOSITION No B 3 060 060

Star S.p.A., Viale Italia 100, 26900, Lodi, Italy (opponent), represented by Dott. Franco Cicogna & C. S.r.l., Via Visconti di Modrone 14/A, 20122 Milan, Italy (professional representative)

a g a i n s t

Spyder Rent S.L., Can Sanç 13, 07001 Palma, Spain (applicant), represented by Clarke Modet Y Cía. S.L., Rambla de Méndez Núñez 21-23, 5º A-B, 03002 Alicante, Spain (professional representative).

On 18/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 060 is partially upheld, namely for the following contested services:

Class 39: Transport.

2. European Union trade mark application No 17 900 605 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 900 605 for the figurative mark . The opposition is based on European Union trade mark registration No 5 596 226 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 services

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

Class 39: Transport and storage of goods; transport of travellers; services provided by companies operating stations or bridges used for transport purposes; rental of transport vehicles; marine towing, unloading, operating harbours and quays and salvage of endangered ships and their cargo; operating airports; packaging goods, before forwarding; information relating to travel and the transport of goods provided by intermediaries or tourist agencies; information services relating to tariffs, timetables and means of transport; checking vehicles and goods before transshipment.

The contested services are the following:

Class 35: Advertising, marketing and promotional services.

Class 39: Transport.

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 services in Class 35

The contested advertising, marketing and promotional services have nothing relevant in common with the opponent’s services in Class 39. These are services related to the transport and storage of goods, which could render them similar in terms of the ‘Canon’ criteria. They have clearly different natures and purposes and they are neither complementary to nor in competition with each other. Furthermore, they do not originate from the same undertakings and their distribution channels are normally different. Therefore, contrary to what the opponent contends, the contested services in this class are dissimilar.

Contested services in Class 39

The contested transport includes, as a broader category the opponent’s transport of travellers. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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.

The opponent’s transport of travellers targets solely the general public, while the contested transport can target both the general public and professionals in the medical sector. Therefore, since the public for these services (found to be identical) overlaps (i.e. the public at large) this is the only public likely to confuse the trade marks in question (see, by analogy, 14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81).

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

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 contested sign is a figurative mark that includes core elements of the earlier sign (albeit depicted in a different manner), those being the word element ‘STAR’ and the star device. The differences between the signs arise mainly from the layout of their figurative elements and the verbal element ‘ELECTRIK’ of the contested sign, which clearly play a secondary role within the overall impression. The other additional verbal element ‘GENUINE MOTOR’, will be disregarded by consumers due to its very small, barely readable letters and secondary position within the mark giving it a negligible character. Therefore, it will not be considered in the comparison.

The General Court has already held that ‘STAR’ (included in both signs) is part of the basic English vocabulary generally known by a large part of the public in the European Union. Accordingly, the General Court has held that the English word ‘STAR’ is generally understood as a laudatory term that emphasises quality, or as a reference to a star or a famous person (15/02/2017, T‑568/15, 2 START 2S (fig.) / ONE STAR (fig.) et al., EU:T:2017:78, § 72; 07/07/2015, T‑521/13, A ASTER / A-STARS, EU:T:2015:474, § 45, 48). However, although this word has a certain laudatory character, the Opposition Division considers that in the present case, it does not materially affect its distinctiveness in relation to the relevant services (transport related) and that, in any case, it remains the (more) distinctive element in both signs.

The additional element ‘ELECTRIK’ of the contested sign, which is a misspelling of the English word ‘electric’, refers, in the context of transport services, inter alia, to ‘an electric - powered by electricity- train or other vehicle’. Its meaning will be understood by the majority of the relevant public, either because it is similar to equivalent words in the relevant languages, for example, ‘elektrický’ in Czech, ‘elektrisks’ in Latvian, ‘eléctrico’ in Spanish. In addition, as it is a rather basic English word, it will be widely understood throughout the relevant territory. Bearing in mind the relevant services are transport services, this element is weak as it may allude to the characteristic of the means of transport used (e.g. electric trains or cars).

As regards the figurative elements, such as the stylisation and the star device, account must be 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). In the present case, the verbal elements of the signs, particularly the common element ‘STAR’ will definitely have a greater impact than the rest of the elements of the signs due to its size and central position. This is also true of the depiction of the stars, which in essence reinforces the concept of the common verbal element.

Neither of the signs has elements that could be considered clearly more dominant (visually eye-catching) than the other elements. However, in the contested sign, the differing element ‘ELECTRIK’ clearly plays a secondary role due to its smaller size and position.

Visually, the signs coincide in the word ‘STAR’, which is the most distinctive element and has the greatest impact, as well as in the presence of a star. However, the signs differ in the way these elements are depicted, in the differing figurative elements (e.g. graphic stylisations and backgrounds), and in the additional verbal element of the contested sign ‘ELECTRIK’. This will however, have a reduced importance due to it being less distinctive and/or indeed playing a secondary role, as explained above.

Therefore, the signs are visually similar to a below average 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 the letters ‘STAR’, present identically in both signs. However, the pronunciation differs in the additional word of the contested sign ‘ELECTRIK’, which is less distinctive and secondary.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concept of ‘STAR’, reinforced by the star device, and they differ in the concept of ‘ELECTRIK’ which in addition to being less distinctive, has a secondary role in the overall impression given by the sign. Therefore, the signs are conceptually highly 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 laudatory connotations arising from its word element does not materially affect its distinctiveness for the relevant services. As a consequence, the distinctiveness of the earlier mark must be seen as normal.

5. 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 contested services are partly identical and partly dissimilar. They overlap in the public at large, whose degree of attention may vary from average to high. However, account is taken of the fact that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). The distinctiveness of the earlier mark is normal.

The signs are visually similar to a below average degree, and aurally and conceptually highly similar on account of the coinciding element ‘STAR’, which is the most important and distinctive element of the signs, for the reasons given above. The differences between the signs (e.g. figurative elements and the additional word ‘ELECTRIK’) reside in elements with less distinctive character and with a reduced impact on consumer perception. As a result, these differing elements are not sufficient to safely exclude a likelihood of confusion between the marks in question, in relation to the identical goods.

Moreover, 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 undertaking or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines or to endow a trade mark with a new, fashionable image. In the present case, although the relevant public may detect certain visual and aural differences between the conflicting signs, the likelihood that the public may perceive the contested sign as a restyling of the earlier mark is very real.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. 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 these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michele M. BENEDETTI - ALOISI

Birgit FILTENBORG

Andrea VALISA

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.