OPPOSITION No B 3 063 896

CFM International S.A., 2, boulevard du Général Martial Valin, 75015 Paris Cedex 15, France (opponent), represented by Virginie Chevalier, Rond-Point René Ravaud - Réau, 77550 Moissy-Cramayel, France (professional representative)

a g a i n s t

Leonardo S.p.A., Piazza Monte Grappa 4, 00195 Roma, Italy (applicant), represented by Akran Intellectual Property Srl, Via del Tritone 169, 00187 Roma, Italy (professional representative).

On 05/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 896 is upheld for all the contested services.

2. European Union trade mark application No 17 932 912 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 932 912 for the word mark ‘LEAP2020’. The opposition is based on European Union trade mark registration No 15 780 935 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, inter alia, the following:

Class 35: Consultancy relating to organisation, administrative and business management and business consultancy in connection with industrial manufacturing in industrial or commercial companies that own an aircraft fleet; consultancy relating to administrative management of pools of engines, systems, equipment and parts for aircraft; compilation and statistical studies of data relating to the management of a pool of systems, equipment and parts for aeronautical vehicles and spacecraft, and to the management of maintenance of a fleet of aircraft; compilation of information into computer databases; database management and compilation; business data analysis, compilation, systemisation, management and processing; mining of statistical data of a business and commercial nature; providing of statistical information of a business and commercial nature in a computer database; providing (drawing up) of statistical data; business project management services for construction projects; all the aforesaid services being used in and/or intended for the field of aeronautics and space.

The contested services are the following:

Class 35: Procurement services.

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.

The contested procurement services are similar to at least a low degree to the opponent’s business project management services for construction projects; all the aforesaid services being used in and/or intended for the field of aeronautics and space. Procurement is the sourcing and purchasing of goods and services for business use. Individual businesses set procurement policies that govern their choice of suppliers, products and the methods and procedures that are going to be used to communicate with their suppliers. For example, businesses often have set procedures for calling for tender and evaluating proposals. Issues in procurement include: identifying the needs of customers and suppliers, choosing and preparing tools and processes to communicate with suppliers, preparing requests for proposals and requests for quotations, and setting policies for evaluating proposals, quotes and suppliers. In light of the above the services in question have some points of contact since they have the same general purpose of contributing to the smooth running of a company and the end-users are the same, despite their natures and producers being different (05/02/2014, R 1546/2013-2, Intimes Watch (fig.) / swatch et al., § 26; 11/09/2013, R 1244/2012-2, Northwood Professional Forest Equipment (fig.) / Norwood, § 31).

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be similar to at least a low degree are directed at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness is high as these are highly specialised, expensive services.

3. The signs

	LEAP2020
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 common verbal element ‘LEAP’, present in both signs, and the verbal element ‘TOGETHER’ in the earlier mark are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Even when signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break them down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). It follows that the relevant consumer will dissect the contested sign into the components ‘LEAP’ and ‘2020’.

Moreover, the symbol ‘˄’ in the earlier mark is likely to be perceived by the public as a stylisation of the letter ‘A’, thus resulting in perception of the word ‘LEAP’ in this sign, since this is a word with a clear meaning for the public of relevance, which, as noted above, tends to look for elements suggesting a meaning for them.

The verbal element ‘LEAP’ in both signs means ‘a large jump’ (extracted from Cambridge Dictionary at https://dictionary.cambridge.org on 16/10/2019). It has no direct meaning for the relevant services and is, therefore, distinctive.

The number ‘2020’, present in both signs, is likely to be understood as a reference to the year 2020. As it has no direct meaning for the services in question, it is distinctive.

The verbal element ‘TOGETHER’ in the earlier mark, means ‘with each other’ (extracted from Cambridge Dictionary at https://dictionary.cambridge.org on 16/10/2019). It has no direct meaning for the relevant services and is, therefore, distinctive.

The figurative element of the earlier mark being a very bright red ribbon with a stylized (yet recognizable) flying airplane will be associated with aviation. Bearing in mind that the relevant services are related to aeronautics and space, this element is weak for the relevant opponent’s services.

The figurative element and the verbal element ‘LEAP’, both present in the earlier mark, are the two dominant elements as they are the most eye-catching. These elements are depicted in red and much larger than the other verbal elements which are written in grey being less visible. Furthermore, the verbal element ´LEAP´ is depicted in bold.

Additionally, it should be noted 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). This principle is fully applicable in the case at hand, where moreover the figurative device is of weak distinctiveness. In this vein, upon taking into account the distinctiveness factor and the positioning and size of all elements of the earlier sign, it is considered that the verbal element ‘LEAP’ in it is the most influential element. Nevertheless, even though the remaining verbal elements are clearly secondary in terms of their positioning, size and colour representation, they are clearly noticeable and will have certain impact in the overall perception of the sign.

Visually, the signs coincide in the verbal element ‘LEAP’ and the number ‘2020’. However, they differ in the figurative element of the earlier mark and its additional verbal element ‘TOGETHER’.

Therefore, taking into account the above explanations concerning the size and position of the earlier trade mark’s verbal and figurative elements as well as their distinctiveness, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LEAP’, present identically in both signs. They can also coincide in pronouncing ´2020´, if the public will read this element of the earlier mark. The pronunciation differs in the sound of the letters ‛TOGETHER’, if pronounced, of the earlier sign, which have no counterparts in the contested sign.

Therefore, the signs are aurally similar at least to an average degree, where the possible variations regarding the pronunciation of the elements ‘2020’ and ‘TOGETHER’ of the earlier mark, as explained above, are taken into account.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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 a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (Recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

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 services covered are from the same or economically linked undertakings.

Furthermore, 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).

In the present case, the contested services have been found similar to at least a low degree to the opponent’s services. The relevant public is the professional public whose degree of attention is high. The signs are visually and conceptually similar to an average degree and aurally similar to at least an average degree. The distinctiveness of the earlier mark is normal.

The contested sign is entirely included in the earlier mark. The signs differ in some elements of the earlier mark, that is, the figurative element which is weak and the verbal element ‘TOHETHER’, the latter being secondary in the comparison due to its size and position. What is particularly striking is that both elements of the contested sign, which are normally distinctive for the services at issue, namely ‘LEAP’ and ‘2020’, are present in the earlier mark. To that end, the order in which the public will perceive the verbal elements of the earlier mark is not of major significance.

Taking into account all of the above, the differences are not sufficient to outweigh the significant similarities and to exclude likelihood of confusion even for a professional public showing a high degree of attention.

The applicant refers to previous decisions of the Office to support its arguments, namely B 3 049 825 (25/04/2019) and B 2 974 866 (23/04/2019). 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 as they concern different factual circumstances, such as trade marks where the coinciding elements had a reduced level of distinctiveness.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 780 935. It follows that the contested trade mark must be rejected for all the contested 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

Teodora TSENOVA-PETROVA

Michal KRUK

Helen Louise MOSBACK

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.