OPPOSITION No B 3 087 597

Hotelbeds Spain, S.L.U., Complejo Mirall Balear, Camí de San Fangos, 100 - Torre A, 5ª planta, 07007 Palma de Mallorca, Spain (opponent), represented by Polopatent,
Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

inCruises UG, Haus Donk 2, 47918 Tönisvorst, Germany (applicant).

On 05/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 597 is partly upheld, namely for all the contested services in Class 39 (in its entirety).

2. European Union trade mark application No 18 035 211 is rejected for all the above services. It may proceed for the remaining services in Class 35.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services (in Classes 35 and 39) of European Union trade mark application No 18 035 211 (word mark: ‘inCruises’). The opposition is based on European Union trade mark registration No 4 285 541 (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.

a) The services

The services in Classes 39 and 43 on which the opposition is based are the following:

Class 39: Shipping of passengers and goods; packaging, storage and warehousing of goods; delivery of goods; freight forwarding; transport brokerage; cargo loading and unloading; haulage services, logistics and distribution; shipping agents' services; shipping agents; transportation and storage information; consultancy relating to transport, logistics and distribution; services of a travel agency.

Class 43: Services provided by persons or establishments whose aim is to prepare food and drinks for consumption, as well as providing accommodation, board and meals in hotels, boarding houses and other establishments that provide temporary lodging; booking accommodation for travellers, provided mainly by travel agencies or brokers.

The contested services in Classes 35 and 39 are the following:

Class 35: Advertising, marketing and promotional services; Marketing services in the field of travel; Promotion [advertising] of travel; Advertising in the field of tourism and travel.

Class 39: Agency services for arranging travel; Booking agency services for travel; Transport of travellers; Coach transport; Transport of passengers by air; Transport of travellers by land; Transport of travellers by car; Transport of travellers by taxi; Transport of travellers by tram; Transport of travellers by road; Transportation of passengers by coach; Passenger train transport; Escorting of travellers; Booking of seats for travel; Booking of travel through tourist offices; Booking agency services relating to travel; Tourist travel reservation services; Computerised information services relating to travel; Provision of travel information by computer; Travel agency services, namely arranging transportation for travellers; Services for the booking of travel; Services for arranging the transportation of travellers; Operating of tours; Tour operating and organising; Tour conducting; Travel information; Timetable enquiry services relating to travel; Cruise ship services; Supplying tickets to enable holders to travel; Arranging the escorting of travellers; Arranging of transportation for travel tours; Sightseeing, tour guide and excursion services; Travel arrangement; Organization of travel and boat trips; Organisation of holiday travel; Arranging of transport and travel; Planning, arranging and booking of travel; Planning, arranging and booking of travel by electronic means; Planning and booking of travel and transport, via electronic means; Travel agents services for arranging travel; Travel and passenger transportation; Tour operator services for the booking of travel; Tour reservation services; Reservation and booking of seats for travel; Travel reservation and booking services; Reservation of berths for travel; Reservation of seats for travel; Reservation services for travel by land; Travel reservation; Seat reservation services for travellers; Booking of tickets for travel; Transportation of travellers' baggage; Arranging and booking of travel for package holidays; Arranging and booking of travel; Travel arrangement and reservation services; Organizing and arranging travel; Arranging travel tours as a bonus program for credit cards customers; Provision of cruises in yachts; Issuing of tickets for travel; Providing information relating to travel and transport, via electronic means; Providing information about travel, via the Internet; Providing information relating to the planning and booking of travel and transport, via electronic means; Providing cruise ships for travel; Providing online information relating to travel.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 different advertising and marketing services (in the field of tourism and travel) consist of providing others with assistance in the sale of their services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

The services of the earlier trade mark in Class 39 are in particular shipping of passengers and goods and services related thereto, such as packaging, storage and warehousing of goods; delivery of goods; freight forwarding; transport brokerage; cargo loading and unloading.

Class 43 of the earlier trade mark essentially contains services that are provided by persons or companies whose purpose is to prepare food or beverages for consumption, as well as services consisting in the provision of accommodation or accommodation and meals by hotels, guest houses or other companies that ensure the accommodation of guests.

All the services of the earlier trade mark in Classes 39 and 43 on the one hand and the contested services in Class 35 on the other hand have different natures and purposes. Furthermore, these contested services are neither complementary to nor in competition with the opponent’s services. Their distribution channels, public, supplier and methods of use are also different. Consumers would not assume that these services come from the same undertaking or economically linked undertakings. The fact, that the contested services refer to tourism and travel is for the above cited reasons not sufficient to judge them as similar. Therefore, they are dissimilar.

Contested services in Class 39

The contested agency services for arranging travel; booking agency services for travel; escorting of travellers; booking of seats for travel; booking of travel through tourist offices; booking agency services relating to travel; tourist travel reservation services; computerised information services relating to travel; provision of travel information by computer; travel agency services, namely arranging transportation for travellers; services for the booking of travel; services for arranging the transportation of travellers; operating of tours; tour operating and organising; tour conducting; travel information; timetable enquiry services relating to travel; supplying tickets to enable holders to travel; arranging the escorting of travellers; arranging of transportation for travel tours; sightseeing, tour guide and excursion services; travel arrangement; organization of travel and boat trips; organisation of holiday travel; arranging of transport and travel; planning, arranging and booking of travel; planning, arranging and booking of travel by electronic means; planning and booking of travel and transport, via electronic means; travel agents services for arranging travel; passenger transportation; tour operator services for the booking of travel; tour reservation services; reservation and booking of seats for travel; travel reservation and booking services; reservation of berths for travel; reservation of seats for travel; reservation services for travel by land; travel reservation; seat reservation services for travellers; booking of tickets for travel; arranging and booking of travel for package holidays; arranging and booking of travel; travel arrangement and reservation services; organizing and arranging travel; arranging travel tours as a bonus program for credit cards customers; provision of cruises in yachts; issuing of tickets for travel; providing information relating to travel and transport, via electronic means; providing information about travel, via the internet; providing information relating to the planning and booking of travel and transport, via electronic means; providing cruise ships for travel; providing online information relating to travel; transport of travellers; coach transport; transport of passengers by air; transport of travellers by land; transport of travellers by car; transport of travellers by taxi; transport of travellers by tram; transport of travellers by road; transportation of passengers by coach; passenger train transport are at least similar to the opponent’s services of a travel agency. They coincide in purpose, distribution channels, public and supplier.

The contested travel transportation; transportation of travellers' baggage are included in the broad category of the opponent’s haulage services. Therefore, they are identical.

The contested cruise ship services overlap with the opponent’s shipping of passengers and goods. 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 services found to be identical/similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the services purchased.

c) The signs

	inCruises
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 elements ‘CRUISES’ are not meaningful 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 Spanish-speaking part of the public such as Spain. This leads to a normal degree of distinctiveness of this common element, because it is not comprehensible. It would be different for the English-speaking public as it would refer to at least a couple of services in Class 39 and, therefore, ‘CRUISES’ could not be taken into account in a relevant manner as a non-distinctive element.

The contested sign is a word mark, which is protected in all typefaces. The earlier trade mark is a figurative sign. It consists of the word ‘INTERCRUISES’ on the top of the mark, written a bit bigger, followed by the word combination on the bottom ‘SHORESIDE & PORT SERVICES’, written smaller. On the left is the depiction of a kind of a logo with a wave motion in it that separates the upper darker part from the lower lighter part.

The word element ‘inter’, which is the beginning word element of the earlier trade mark, is a relatively common prefix. It can be the short form of ‘international’ or in its original meaning of ‘between, mutually’ as a descriptive note business relationships between two companies in use. For example, with ‘interbank’ the relationship between several credit institutions expressed and ‘intercompany’ and ‘interfirm’ are used for ‘inter-company, intra-group’. In Spanish language, also the word ‘intercambio’ is a common term. According to the judgment of the General Court ECLI:EU:T:2015:120, 27/02/2015, ‘INTERFACE/ Interfog’, paragraph 45,46, this element has only a low degree of distinctiveness. The same applies for the common prefix of the contested sign ‘in’ according to the ‘Real Academia Española’.

The common element ‘CRUISES’ of both signs and the additional word ‘SHORESIDE’ of the earlier trade mark have no meaning for the relevant public and are, therefore, distinctive.

The additional word elements of the earlier trade mark ‘PORT SERVICES’ are very similar to the Spanish words ‘PUERTO’ and ‘SERVICIOS’. Therefore, they will be understood by the Spanish-speaking public. For the services in Class 39, they are non-distinctive referring to the place where these services are offered.

Since the figurative elements of the earlier trade mark in their entireties are not too basic, they are distinctive to a certain degree. However, it has to be taken into account that the services in Class 39 can refer to the sea, which is why the stylized wave shown is not particularly distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

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).

Visually, the signs differ in the above cited figurative elements of the earlier trade mark. The different distinctive element of the earlier trade mark ‘SHORESIDE’ cannot be taken into account to an increased degree according to its much smaller size. The word combination ‘PORT SERVICES’ cannot be taken into account in a relevant manner being non-distinctive, which also applies for the visual similar elements ‘IN’ and ‘INTER’. The signs coincide in their common element ‘CRUISES’, even depicted slightly different in the earlier trade mark. Therefore, the signs are visually similar to an average degree.

Aurally, the figurative elements will not be pronounced. In the earlier trade mark, the second line ‘SHORESIDE & PORT SERVICES’ will not be spoken by the relevant public because of its smaller size compared with the word element above ‘INTERCRUISES’. Since ‘INTERCRUISES’ and the contested sign ‘inCruises’ only differ in three additional letters ‘TER’ of the earlier trade mark, they are aurally similar at least an above average degree.

Conceptually, all the elements of both signs are either weak/non-distinctive or meaningless. Therefore, the outcome of the conceptual comparison is neutral.

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 some non-distinctive/weak elements in the mark, as stated above in section c) of this decision.

a) Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested services are partly identical/similar and partly dissimilar.

According to Article 8(1)(b) EUTMR, similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are partly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in regard to those goods.

Taking into account the average degree of visual similarity, the above average degree of aural similarity, the neutral outcome of conceptual similarity, the normal distinctiveness of the earlier trade mark and the identity/similarity of the services, there is, even for the public with a high degree of attention, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This applies even more so, when the degree of attention of the public is only average.

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

The applicant has not filed any observations.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

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

Astrid WABER

Peter QUAY

Martin EBERL

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.