OPPOSITION No B 3 082 981

Deutsche Bahn AG, Potsdamer Platz 2, 10785 Berlin, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft Mbb - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Charles Andre S.A.S., Zone Industrielle de Gournier, 26200 Montelimar, France (applicant), represented by Patricia Dufaud, Zone Industrielle de Gournier, 26200 Montelimar, France (professional representative).

On 26/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 981 is partially upheld, namely for the following contested services:

Class 35: All the contested services in this class.

Class 39: All the contested services in this class.

2. European Union trade mark application No 18 012 804 is rejected for all the above 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 18 012 804, RAILNET FLEET. The opposition is based on, inter alia, European trade mark registration No 15 739 006, DB AUTOMOTIVE RAILNET. 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 15 739 006.

a) The goods and services

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

Class 35: Clerical services; cost price analysis.

Class 39: Tracking of passenger or freight vehicles by computer or via GPS; information services relating to the location of goods; transport; freight forwarding; transport brokerage; storage and delivery of goods; wrapping and packaging services; arrangement of transportation; transport of money and valuables; transportation information; storage information; transport reservation.

The contested goods and services are the following:

Class 12: Railway carriages.

Class 35: Vehicle fleet (business management of a -) [for others].

Class 37: Maintenance, servicing and repair of vehicles; vehicle maintenance and repair.

Class 39: Railway truck rental; rental of means of transportation; vehicle rental; rental of transport vehicles; rental of railway vehicles; rental of goods vehicles.

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 12

The contested goods in this class are dissimilar to the opponent’s goods. They have different natures and do not follow the same method of use. They are not in competition, nor do they share the same distribution channels. Finally, they are usually produced and provided by different companies.

According to the opponent, the contested railway carriage is a sub-category of vehicles and, thus, similar to the opponent’s various transport and transport brokerage services in Class 39. This allegation cannot be upheld. Goods and services have different natures and cover different needs. The goods and services under comparison have different providers/producers, distribution channels and methods of use. The relevant public will not think that the contested goods have the same origin as the opponent’s services simply because railway carriages are necessary for some forms of transport. This factor alone is insufficient for finding similarity.

Contested services in Class 35

The contested vehicle fleet (business management of a -) [for others] are business assistance and management services. They can coincide in the purpose of helping to run a business with the opponent’s clerical services and cost price analysis. They usually coincide in providers and share the same distribution channels. Furthermore, they can target the same relevant public. Therefore, they are similar to at least a low degree.

Contested services in Class 37

All the contested services in this class are dissimilar to all the opponent’s services. They do not have the same method of use, are neither complementary nor in competition, and do not share the same distribution channels. Finally, they are usually produced and provided by different companies. Indeed, there is no evidence provided by the opponent that it is common practice on the relevant market for the provider of the contested services to also provide storage and delivery of goods, or clerical services.

Contested services in Class 39

All the contested services are included in the broad category of the opponent’s transport services. Therefore, they are identical.

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

The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

c) The signs

DB AUTOMOTIVE RAILNET	RAILNET FLEET
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 element ‘RAILNET’ is meaningless and, therefore, distinctive in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-speaking part of the public.

The earlier mark is a word mark – ‘DB AUTOMOTIVE RAILNET’. Consequently, it does not have a dominant element.

The element ‘DB’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element ‘AUTOMOTIVE’ in the earlier mark will be understood by the relevant public as relating to cars and other vehicles. This is because there is a close equivalent in the official language, such as автомобилен (transliterated avtomobilen; translated automotive), and автомобил (translated avtomobil; car; automobile). Bearing in mind that the relevant services are or might be related to transportation services or vehicle fleets, this element is weak for these services.

The contested sign is a word mark – ‘RAILNET FLEET’. Consequently, it does not have a dominant element.

The element ‘FLEET’ in the contested sign has no meaning for the relevant public and is, therefore, distinctive.

Visually and aurally, the signs coincide in the distinctive word element ‘RAILNET’. However, they differ in their respective additional elements – the distinctive ‘DB’ and the weak ‘AUTOMOTIVE’ in the earlier mark, and the distinctive ‘FLEET’ in the contested sign.

Although the common word ‘RAILNET’ has a different position in each of the conflicting signs, and the rest of the words do not coincide, this element plays an independent distinctive role in both signs.

Therefore, the signs are visually and aurally similar to a below average degree.

Conceptually, although the public in the relevant territory may perceive some meaning in the weak element ‘AUTOMOTIVE’ of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs 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) 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.

e) Global assessment, other arguments and conclusion

The contested services in Classes 35 and 39 are partly identical and partly similar to varying degrees to the opponent’s services. The contested goods and services in Classes 12 and 37 are dissimilar to the opponent’s services. The relevant public’s degree of attention may vary from average to high. The signs are visually and aurally similar to a below average degree and conceptually not similar. Moreover, the conceptual difference resulting from the word ‘AUTOMOTIVE’ is not very significant because this element is weak.

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).

The signs coincide in their distinctive element ‘RAILNET’, which causes a below average degree of visual and aural similarity. Due to the absence of any distinctive concepts or dominant elements in the signs to outweigh their overall similarities, a likelihood of confusion exists.

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. Therefore, even if consumers notice the differences, they might still consider that the relevant services originate from economically linked undertakings. It is plausible that consumers might associate the conflicting signs, due to the presence of the distinctive word ‘RAILNET’ in both of them. This is so even for services which are similar to at least a low degree, despite the fact that some of the services target the professional public that might display a degree of attention that varies from average to high.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services cannot be successful.

The opponent has also based its opposition on European Union trade mark registration No 15 738 776 for the word mark ‘DB RAILNET’.

Since this mark covers a narrower scope of services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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

Justyna GBYL

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

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.