OPPOSITION No B 3 066 385

DG International Holdings Limited, Unit 1, Mill Hill Industrial Estate, Flower Lane, London NW7 2HU, United Kingdom (opponent), represented by Marks & Clerk LLP, 15 Fetter Lane, London EC4A 1BW, United Kingdom (professional representative)

a g a i n s t

Travel Media Sverige AB, Kungsgatan 84, SE-112 27 Stockholm, Sweden (applicant), represented by Groth & Co. KB, Birger Jarlsgatan 57 B, SE-113 56 Stockholm, Sweden (professional representative).

On 30/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 385 is partially upheld, namely for the following contested goods and services:

Class 9: Bags adapted for laptops; eyewear; spectacle cases; battery-operated motion actuated theft alarms for luggage; balancing apparatus; solar battery chargers; computer mouses; webcams; keyboards; chargers for electric batteries; headphones; portable computers; notebook computers; cell phones.

Class 18: Casual bags; all-purpose carrying bags; luggage; carry-on bags; wallets; backpacks; carrying cases; wallets; luggage tags; straps for luggage; suitcases; wheeled bags; attaché cases; attaché cases; casual bags; valises; handbags; duffel bags; shoulder bags; bumbags; Boston bags; satchels; sport bags; travelling bags; garment carriers; garment bags for travel; travel garment covers; cosmetic cases sold empty; cosmetic bags sold empty; shoe bags for travel; shaving bags sold empty; travel cases; credit card holders (wallets); card cases [notecases]; business card cases; music cases; key cases; suitcase handles; straps for handbags; shoulder straps; umbrellas; frames for umbrellas or parasols; metal parts of umbrellas; telescopic umbrellas; umbrella handles; umbrella covers; umbrella sticks.

Class 35: Retail services in relation to bags; retail services in relation to umbrellas; retail services in relation to luggage.

2. European Union trade mark application No 17 924 115 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 924 115 , namely against all the goods and services in Classes 9, 18 and 35. The opposition is based on, inter alia, European Union trade mark registration No 9 490 475 . 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.

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 9 490 475.

1. The goods and services

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

Class 3: Dentifrices; cobblers’ wax; shoemakers’ wax; tailors’ wax.

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; fuel for use in barbecues; portable fuel; fire starters; candles and wicks for lighting; parts and fittings for all the aforesaid goods.

Class 5: Dietetic substances adapted for medical use, food for babies; material for stopping teeth, dental wax; preparations for destroying vermin; herbicides; dental cement and fillers; insecticides; wristbands, leg bands and head bands all impregnated with insecticides and/or insect repellents; wristbands for alleviating motion sickness; blood for medical purposes; blood plasma; semen for artificial insemination; surgical implants [living tissues].

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; padlocks, keys; rings; holders and chains for keys; coat hangers; locks incorporating straps; metal climbing equipment; karabiners; crampons; hooks; ice nails; metal pegs; pitons of metal; rope thimbles of metal; metal ropes; metal tent pegs; all included in Class 6.

Class 7: Electric hand implements for use in cooking; electric hand implements for use in barbeque cooking.

Class 8: Hand tools and implements (hand-operated); cutlery; cutlery sets; razors; penknives; mallets.

Class 9: Magnetic data carriers, recording discs, weighing apparatus and instruments, calculators; electric smoothing irons; radios; radios incorporating clocks: electrical insect-repelling apparatus; spectacles; eyewear; sunglasses; goggles for sports; eye shades; eye masks for protection; protective bags and cases for eyewear; containers and wallets for holding recordings on compact disks; audio cassette tapes or other storage media; electrical plugs; fittings and adapters for electrical plugs; personal alarms incorporating lights; spring balances; spectacle cases; cases included in Class 9; protective clothing for use in sports and outdoor activities; compasses, binoculars, cameras; camera bags; parts and fittings for all the aforesaid goods; camera cases; foil survival blankets.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; dryers; hair dryers; electric fans; electric kettles; torches; electric torches; lanterns; parts and fittings for all aforesaid goods.

Class 12: Bikes; bicycles; mountain bikes; boats, dinghies and rafts.

Class 14: Horological and chronometric instruments; watches; clocks; parts and fittings for all the aforesaid goods.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding 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 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials; plastics in extruded form for use in manufacture; semi-finished plastics materials for use in further manufacture; stopping and insulating materials; flexible non-metallic pipes.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; laundry bags; harness straps and belts; elasticated straps and cords, all for luggage; folding cases; shoulder bags, backpacks, holdalls, beach bags, shoe bags, holsters; money belts, money bags; pouches, purses, wallets, credit card holders; saddle bags adapted for use with briefcases; luggage label holders, luggage labels and luggage tags; bandoliers, wheels and combinations of wheels and straps, all for use with cases, boxes and bags; sun shades; travel garment covers; rucksacks; backpacks; rucksack liners; parts and fittings for all the aforesaid goods; all included in Class 18.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; sleeping bags; sleeping mats; pillows; inflatable pillows; travel pillows; cushions; inflatable cushions; tent pegs (not of metal); mattresses for camping; portable kitchens; camping furniture; footstools; pouffes; containers; containers for liquids; jewel cases; mirrors; cases included in Class 20; parts and fittings for all aforesaid goods; bathplugs.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; small utensils, bottles and portable containers for household use; combs and sponges; cleaning materials and instruments; shoe cloths; glassware; hardware and hollowware; travel bottles; vacuum flasks; insulated coffee mugs; insulated travel mugs; platic travel mugs; drinking vessels; collapsible drinking vessels; coolers; coolant blocks; cool bags; cool sleeves and bags for surrounding bottles; crockery; crockery sets; brushes; clothes brushes; hair brushes; pillboxes; pill pouches; cosmetic bags; cosmetic containers; toothbrushes; toothbrush covers and containers; non-electric kettles; aerosol containers; cases included in Class 21; parts and fittings for all aforesaid goods; bottle openers.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials; washing lines.

Class 24: Textiles and textile goods, not included in other classes; towels; bed and table covers.

Class 25: Clothing, footwear, headgear; clothing, footwear and headgear for sports and outdoor pursuits.

Class 28: Games, beach games, playing cards; articles and equipment for use in sports activities and outdoor pursuits; camping mallets.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; prepared and cooked meals.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.

Class 33: Alcoholic beverages (except beers).

Class 34: Tobacco; smokers’ articles; matches.

Class 35: Retail services connected with the sale of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, suntan lotion, sunblock, shower gel, shampoo, dentifrices, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, fuel for use in barbecues, portable fuel, fire starters, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, plaster kits, first aid kits, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, bandages, dressings, plasters, medicines, dental cement and fillers, insecticides, wristbands, leg bands and head bands all impregnated with insecticides and/or insect repellents, wristbands for alleviating motion sickness, hand steriliser kits, common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal not included in other classes, ores, padlocks, keys, rings, holders and chains for keys, coat hangers, locks incorporating straps, metal climbing equipment, karabiners, crampons, hooks, ice nails, metal pegs, pitons of metal, rope thimbles of metal, metal ropes, metal tent pegs, electric hand implements for use in cooking, electric hand implements for use in barbeque cooking,; hand tools and implements (hand-operated), cutlery, cutlery sets, razors, penknives, bottle openers, mallets, magnetic data carriers, recording discs, weighing apparatus and instruments, calculators, electric smoothing irons, radios, radios incorporating clocks, electrical insect-repelling apparatus, spectacles, eyewear, sunglasses, goggles for sports, eye shades, eye masks for protection, protective bags and cases for eyewear, containers and wallets for holding recordings on compact disks, audio cassette tapes or other storage media, electrical plugs, fittings and adapters for electrical plugs, personal alarms incorporating lights, spring balances, spectacle cases, cases included in Class 9, protective clothing for use in sports and outdoor activities, compasses, binoculars, cameras, camera bags, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, bathplugs, dryers, hair dryers, electric fans, electric kettles, torches, electric torches, lanterns, bikes, bicycles, mountain bikes, boats, dinghies and rafts, horological and chronometric instruments, watches, clocks, paper, cardboard and goods made from these materials, not included in other classes, printed matter, book binding 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, leather and imitations of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, laundry bags, harness straps and belts, elasticated straps and cords, all for luggage, folding cases, shoulder bags, backpacks, holdalls, beach bags, shoe bags, holsters, money belts, money bags, pouches, purses, wallets, credit card holders, saddle bags adapted for use with briefcases, luggage label holders, luggage labels and luggage tags, bandoliers, wheels and combinations of wheels and straps, all for use with cases, boxes and bags, sun shades, camera cases, travel garment covers, rucksacks, backpacks, rucksack liners, parts and fittings for all the aforesaid goods, furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, sleeping bags, sleeping mats, foil survival blankets, pillows, inflatable pillows, travel pillows, cushions, inflatable cushions, tent pegs (not of metal), mattresses for camping, portable kitchens, camping furniture, footstools, pouffes, containers, containers for liquids, jewel cases, mirrors, cases included in Class 20, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware not included in other classes, small utensils, bottles and portable containers for household use, combs and sponges, cleaning materials and instruments, shoe cloths, glassware, hardware and hollowware, travel bottles, vacuum flasks, insulated coffee mugs, insulated travel mugs, plastic travel mugs, drinking vessels, collapsible drinking vessels, coolers, coolant blocks, cool bags, cool sleeves and bags for surrounding bottles, crockery, crockery sets, brushes, clothes brushes, hair brushes, pillboxes, pill pouches, cosmetic bags, cosmetic containers, toothbrushes, toothbrush covers and containers, non-electric kettles, aerosol containers, cases included in Class 21, washing lines, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes), padding and stuffing materials (except of rubber or plastics), raw fibrous textile materials, textiles and textile goods, not included in other classes, towels, bed and table covers, clothing, footwear, headgear, clothing, footwear and headgear for sports and outdoor pursuits, games, beach games, playing cards, articles and equipment for use in sports activities and outdoor pursuits, camping mallets, meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, prepared and cooked meals, agricultural, horticultural and forestry products and grains not included in other classes, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, alcoholic beverages (except beers), tobacco, smokers’ articles, matches.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 40: Treatment of materials.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

The contested goods and services are the following:

Class 9: Bags adapted for laptops; eyewear; spectacle cases; battery-operated motion actuated theft alarms for luggage; balancing apparatus; chargers for mobile phones; solar battery chargers; computer mouses; webcams; keyboards; chargers for electric batteries; headphones; portable computers; notebook computers; cell phones.

Class 18: Casual bags; all-purpose carrying bags; luggage; carry-on bags; wallets; backpacks; carrying cases; wallets; luggage tags; straps for luggage; suitcases; wheeled bags; attaché cases; attaché cases; casual bags; valises; handbags; duffel bags; shoulder bags; bumbags; Boston bags; satchels; sport bags; travelling bags; garment carriers; garment bags for travel; travel garment covers; cosmetic cases sold empty; cosmetic bags sold empty; shoe bags for travel; shaving bags sold empty; travel cases; credit card holders (wallets); card cases [notecases]; business card cases; music cases; key cases; suitcase handles; straps for handbags; shoulder straps; umbrellas; frames for umbrellas or parasols; metal parts of umbrellas; telescopic umbrellas; umbrella handles; umbrella covers; umbrella sticks.

Class 35: Retail services in relation to bags; retail services in relation to umbrellas; advertising, marketing and promotional consultancy, advisory and assistance services; loyalty, incentive and bonus program services; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; presentation of goods on communication media, for retail purposes; provision of commercial information; provision of information and advice to consumers regarding the selection of products and items to be purchased; provision of on-line business and commercial information; business assistance relating to franchising; publicity and sales promotion services; on-line advertising on a computer network; management advisory services related to franchising; search engine marketing services; product marketing; providing business information in the field of social media; organisation and conducting of product presentations; services with regard to product presentation to the public; organization, operation and supervision of sales and promotional incentive schemes; organisation, operation and supervision of customer loyalty schemes; business management advisory services relating to franchising; retail services in relation to luggage; sales promotion.

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

Eyewear; spectacle cases are identically contained in both lists of goods.

The contested balancing apparatus are apparatus for weighing, such as those with a central pivot, beam, and two scales, and are included in the broad category of, or overlap with, the opponent’s weighing apparatus. Therefore, they are identical.

Since computers are calculating machines (devices that accept input from a user, perform calculations or edit that input, and provide an output to the user), the contested portable computers; notebook computers overlap with the opponent’s calculators. Therefore, they are identical.

The contested webcams are video cameras connected to a computer, allowing their images to be seen by internet users and are included in the broad category of the opponent’s cameras. Therefore, these goods are identical.

The contested bags adapted for laptops overlap with the broad category of the opponent’s cases included in Class 9. Therefore, they are identical.

The contested battery-operated motion actuated theft alarms for luggage are similar to the opponent’s personal alarms incorporating lights because they have the same nature (alarms) and purpose (protection/signalling). Furthermore, they can coincide in distribution channels, end user and producer.

The contested cell phones are not only intended to serve as telephones but also satisfy various needs of modern consumers. Among their basic features, they serve as a digital camera. Therefore, cell phones are considered similar to the opponent’s cameras. They target the same relevant public and may be distributed through the same channels.

The contested headphones are similar to a low degree to the opponent’s radios as they have the same producers, relevant public and distribution channels.

The opponent’s games in Class 28 include gaming equipment (autonomous computerised electronic games and parts and fittings) and are therefore similar in producer, end users and distribution channels to the contested computer mouses; keyboards.

The contested solar battery chargers; chargers for electric batteries are similar to a low degree to the opponent’s cameras because they usually have the same producer, relevant public and distribution channels. Batteries, including solar and electric, are essential for supplying cameras with the power they need to function therefore battery chargers are also necessary for cameras.

However, the contested chargers for mobile phones are incompatible with the opponent’s cameras therefore the considerations regarding the contested solar battery chargers; chargers for electric batteries are not applicable to the contested chargers for mobile phones. Therefore, they are dissimilar to all the opponent’s goods and services, as they differ in nature, producers/providers and purpose. Furthermore, they are neither in competition nor complementary.

Contested goods in Class 18

Wallets (listed twice); backpacks; luggage tags; shoulder bags; travelling bags; travel garment covers; umbrellas are identically contained in both lists of goods.

The contested straps for luggage overlap with the opponent’s elasticated straps and cords, all for luggage. Therefore, they are identical.

The contested suitcase handles are included in the broad category of the opponent’s parts and fittings for all the aforesaid goods (e.g. travelling bags). Therefore, they are identical.

The contested straps for handbags; shoulder straps are included in the broad category of the opponent’s parts and fittings for all the aforesaid goods (e.g. shoulder bags). Therefore, they are identical.

The contested telescopic umbrellas are included in the broad category of the opponent’s umbrellas. Therefore, they are identical.

The contested frames for umbrellas; metal parts of umbrellas; umbrella handles; umbrella covers; umbrella sticks are included in the broad category of the opponent’s parts and fittings for all the aforesaid goods (umbrellas). Therefore, they are identical.

The contested frames for parasols are included in the broad category of the opponent’s parts and fittings for all the aforesaid goods (parasols). Therefore, they are identical.

The contested casual bags (listed twice); all-purpose carrying bags; luggage; carry-on bags; carrying cases; suitcases; wheeled bags; attaché cases (listed twice); valises; handbags; duffel bags; bumbags; Boston bags; satchels; sport bags; garment carriers; garment bags for travel; cosmetic cases sold empty; cosmetic bags sold empty; shoe bags for travel; shaving bags sold empty; travel cases; credit card holders (wallets); card cases [notecases]; business card cases; music cases; key cases are intended for carrying a variety of items. Therefore, they are similar to at least an average degree to the opponent’s travelling bags. These goods coincide in nature, general purpose (carrying things) and method of use. They can be produced by the same companies and are sold to the same public through the same distribution channels as all may be used for travelling.

Contested services in Class 35

The contested retail services in relation to umbrellas are identical to the opponent’s retail services connected with the sale of umbrellas, despite the slight differences in the wording.

The contested retail services in relation to bags; retail services in relation to luggage are identical to the opponent’s retail services connected with the sale of travelling bags because the goods covered by the contested retail services overlap with the broad category of the goods covered by the opponent’s retail services.

The contested advertising, marketing and promotional consultancy, advisory and assistance services; loyalty, incentive and bonus program services; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; presentation of goods on communication media, for retail purposes; provision of commercial information; provision of information and advice to consumers regarding the selection of products and items to be purchased; provision of on-line business and commercial information; business assistance relating to franchising; publicity and sales promotion services; on-line advertising on a computer network; management advisory services related to franchising; search engine marketing services; product marketing; providing business information in the field of social media; organisation and conducting of product presentations; services with regard to product presentation to the public; organization, operation and supervision of sales and promotional incentive schemes; organisation, operation and supervision of customer loyalty schemes; business management advisory services relating to franchising; sales promotion are intended to provide assistance to businesses by promoting their products, as well as improving their market share or their functioning. They are rendered by specialised undertakings such as advertising agencies or business consultants. They are dissimilar to the opponent’s retail services of various goods in Class 35, which consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop, which are rendered by specialised retail outlets. The aforementioned services are different in nature, purpose and origin. They are offered through different channels to different consumers and are neither complementary nor in competition.

Moreover, all contested services mentioned in the previous paragraph also differ from the opponent’s other services in Classes 36, 40 and 44; as well as from the opponent’s goods in Classes 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 22, 24, 25, 28, 29, 31, 33 and 34 since they are different in nature, purpose and methods of use. In particular, advertising is fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. The same applies to the comparison of advertising with goods that can be used as a medium for disseminating advertising. Moreover, they have different origins and are not complementary nor in competition, so consumers would not be led to believe that they were manufactured or rendered by the same company. They target different publics and are not distributed or offered through the same channels. Therefore, they are dissimilar.

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 or similar to varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise.

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

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘GO’ of the earlier mark is likely to be understood by the relevant public as the English word ‘go’, meaning ‘moving or leaving’ (information extracted on 30/03/2020 from Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/go), even by those consumers who have a minimal knowledge of English as it is a basic English word that is commonly used (11/09/2014, R 1479/2013-2, GO TRAVEL (FIG: MARK) / & GO, § 32). Moreover, the Courts have decided on various occasions that the average consumer in the European Union as a whole can be deemed to understand certain basic English words (21/01/2010, T‑309/08, G Stor, EU:T:2010:22, § 32; 16/01/2008, T‑112/06, Idea, EU:T:2008:10, § 69; 03/03/2004, T‑355/02, Zirh, EU:T:2004:62, § 46). Bearing in mind that part of the relevant goods and services relate to goods used when travelling, that is, when ‘on the go’ (e.g. spectacle cases in Class 9; travelling bags in Class 18, retail services connected with the sale of travelling bags in Class 35), this element is weak.

The element ‘TRAVEL’ of the earlier mark and the element ‘TRAVELLER’ of the contested sign will be associated by the English-speaking part of the public with the activity of travelling. These elements allude to the characteristics of the relevant goods in Classes 9 and 18, that is, the goods are designed especially for travelling. In the context of the relevant services in Class 35, the elements ‘TRAVEL’ and ‘TRAVELLER’ may allude to the field in which these services are provided or that the services are provided in connection with travel activities or the goods are intended for travelling. Therefore, the distinctiveness of both elements is weak for the relevant goods and services.

However, the elements ‘TRAVEL’ and ‘TRAVELLER’ will most likely have no meaning for the majority of the Spanish-speaking consumers; therefore, they will have a normal degree of distinctiveness.

Given that the signs coincide in the concepts of their elements ‘TRAVEL’ and ‘TRAVELLER’, which are weak for the English-speaking public, the Opposition Division deems it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, for whom these elements have a normal degree of distinctiveness.

The verbal element ‘GOO’ of the contested sign has no meaning in Spanish and is, therefore, distinctive. Inside each of the letters ‘OO’ of the element ‘GOO’ there is a stylised dot, which makes these two letters resemble eyes. Although the contested sign is composed of several identifiable components, none of them can be clearly considered dominant.

The elements ‘GO’ and ‘TRAVEL’ of the earlier mark are in a framed black square with three rounded corners and a right angle at the top left-hand corner. This figurative element is not distinctive as it is of a decorative nature and merely serves to highlight the information it contains, so the consumers will not attribute any trade mark significance to it.

The verbal element ‘GO’ stands out in the earlier mark due to its central position and size and is, therefore, the dominant part of the sign.

Visually, the signs have a similar structure and layout as they contain two verbal elements each, positioned in two lines (one under the other). The verbal elements differ in their last letters — ‘GO’ v ‘GOO’ and ‘TRAVEL’ v ‘TRAVELLER’. All the letters of the earlier sign’s verbal elements form a significant part of the contested sign’s verbal elements.

The signs differ in the figurative element of the earlier mark, which, as explained above, will barely (if at all) have any impact in the overall impression of the sign. Moreover, the signs differ in the stylised dot positioned in each of the letters ‘OO’ of the element ‘GOO’ of the contested sign, which makes these two letters resemble eyes. However, 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, and contrary to the applicant’s arguments, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs’ first elements, ‘GO’ v ‘GOO’, is almost identical, as the double letters ‘O’ in the contested sign will produce an extended sound of the letter ‘O’. The second elements of the signs, ‘TRAVEL’ of the earlier mark and ‘TRAVELLER’ of the contested sign, will be pronounced [tra-vel] and [tra-veʎ-er], respectively, where the sound [ʎ] of the contested sign is the nasal sound of the double ‘L’. Although the pronunciation of these elements differs in the additional syllable of the contested mark, it is positioned at the end, while the first two syllables are pronounced almost identically.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the element ‘GO’ of the earlier mark is weak, it will be associated with the meaning as explained above, while the contested sign may be associated with the concept of eyes. Therefore, 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.

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 as a whole has no meaning for any of the goods and 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, despite the presence of weak/non-distinctive elements in the mark, as stated above in section c) of this decision.

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).

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.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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).

As established above in section a) of this decision, the goods and services are partly identical, partly similar and partly dissimilar. As identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at the dissimilar goods and services cannot be successful.

The goods and services found to be identical or similar target the general and professional public, whose degree of attention may vary from average to high.

The signs are visually similar to at least an average degree and aurally similar to a high degree. Even if the element ‘GO’ of the earlier mark is weak, the overall impression created by the signs is highly similar, particularly due to their common structure and layout. Although the signs are not similar conceptually, their highly similar overall impression is likely to lead the relevant public, even those who will pay a higher degree of attention (and who will also have to rely on their imperfect recollection of the signs), to confuse the trade marks or believe that the identical or similar goods and services originate from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

The opponent has also based its opposition on European Union trade mark registration No 9 492 315 for the figurative mark .

This mark covers almost the same goods and services, the differences being the additional camping mallets in Class 8, and bathplugs in Class 11, as well as the additional clarification of containers in Class 20: included in Class 20, and of cosmetic bags in Class 21: fitted. However, these additional goods and clarifications of goods are not similar to the goods and services of the contested mark for which the opposition has already been rejected. This is because they have a different nature and purpose, and different distribution channels, producers/providers and methods of use; they are not in competition nor complementary. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Lidiya NIKOLOVA

Marta Maria CHYLIŃSKA

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.