OPPOSITION No B 3 091 209

Terranova Directorship, S.L., Marqués de Riscal 11 DPC, 28010 Madrid, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Waymo LLC, 1600 Amphitheatre Parkway, 94043 Mountain View, United States of America (applicant), represented by Grünecker Patent- und Rechtsanwälte Partg mbB, Leopoldstr. 4, 80802, München, Germany (professional representative).

On 16/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 209 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 046 011 for the word mark ‘WAYMO ONE’. The opposition is based on, inter alia, international trade mark registration No 1 228 990 designating the European Union 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.

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 international trade mark registration No 1 228 990 designating the European Union.

a) The goods and services

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

Class 39: Travel agency services; organization of travel; organization of excursions; transport of travelers and goods.

The contested goods and services are the following:

Class 9: Downloadable mobile applications for coordinating transportation services; downloadable mobile applications for coordinating, scheduling, booking, and dispatching vehicles for passenger transport and delivery services; computer software and hardware for vehicle coordination, navigation, steering, calibrating, direction, scheduling, booking, dispatching, and management.

Class 39: Transportation services, namely, making reservations and bookings for transportation; transportation services, namely, coordinating the pickup and dropoff of passengers at designated or directed locations; transportation of passengers by vehicle; travel by autonomous vehicles; freighting services; freight transportation by trucks and autonomous vehicles; freight logistics management; transport and delivery of goods; providing a website featuring information regarding autonomous car transportation and delivery services and scheduling transportation services.

Class 42: Providing online software services for transportation services, namely, coordinating, booking, and dispatching autonomous vehicles; research and development into autonomous vehicles.

Some of the contested services are identical or similar to the services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large as well as 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, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	WAYMO ONE
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a figurative mark which consist of the single verbal element that may be perceived as either ‘VAMOS’ (although written with W or with a double ‘V’) or ‘WAMOS’ (21/11/2018, R 2734/2017-4, vamos! (fig.) / WAMOS (fig.) et al. § 24-26).

The term ‘VAMOS’ is meaningful for the Spanish-speaking public and will be understood by the public as one of the conjugations of the Spanish word ir (to go) or as an expression commonly used to exhort (information extracted from Diccionario de la lengua Española de la Real Academia Española at dle.rae.es/vamos?m=form). However, for the rest of the public, it has no meaning.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘VAMOS’ has no meaning as this is the most advantageous scenario for the opponent.

The earlier mark has no meaning for the relevant public and therefore is distinctive.

The element ‘WAYMO’ of the contested sign has no meaning for the relevant public and therefore is distinctive.

The element ‘ONE’ of the contested sign is a basic English word and will be perceived by the relevant public as the number one and is universally understood as such, while it does not designate other meanings. To designate other meanings, such as the uniqueness of a person or thing, the word ‘one’ must be used with other words such as in the expressions ‘the one’, ‘the one and only’ or ‘the only one’ (19/12/2019, T-40/19, THE ONLY ONE by alphaspirit wild and perfect (fig.) / ONE, EU:T:2019:890). As it does not convey any clear information concerning the relevant services, it is not descriptive, allusive or otherwise weak for the relevant goods and services, and therefore has an average degree of distinctiveness.

The typeface of the earlier mark has a less impact than the verbal component.

The earlier marks have no elements that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the letters ‘W-A-*-M-O-*’. However, they differ in the letter ‘S’ of the earlier mark and ‘Y’ of the element ‘WAYMOS’, and the term ‘ONE’ of the contested sign and the typeface of the earlier mark.

Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the sound of the letters ‘W-A-*-M-O-*’. However, they differ in the letter ‘S’ of the earlier mark and ‘Y’, and the term ‘ONE’ of the contested sign. The different length (one word vs two) and ending of the signs as well as the sound of the letter ‘Y’, which is rather striking, will cause a different rhythm and intonation.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will not be associated with a similar (the relevant public will perceive the distinctive word ‘ONE’ in the contested sign) meaning, the signs are conceptually not 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.

e) Global assessment, other arguments and conclusion

The goods and services are assumed to be identical, they are targeted at the public at large as well as at business customers which degree of attention may vary from average to high. The distinctiveness of the earlier mark is normal.

The marks are visually and aurally similar to a low degree, and are not conceptually similar. In particular, the marks have a different length and composition. The contested sign includes the additional term ‘ONE’ which is distinctive. Although the element ‘WAMOS’ of the earlier mark and ‘WAYMO’ of the contested sign have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as similar as the additional letter ‘S’ and, in particular ‘Y’, which is rather striking, will not disregarded. Moreover, the stylisation of the earlier mark even if with less impact will further enhance the different visual impression created by the sign.

The additional and different elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks and the similarities between the signs are not sufficient to overcome the dissimilarities.

The opponent refers to previous decisions of the Office to support its arguments. 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, even assuming that the goods and services are identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the earlier mark has a meaning. This is This is because, that part of the public will perceive the signs as being even less similar.

The opponent has also based its opposition on the following earlier trade marks:

Spanish trade mark registration No 3 523 164 for the mark

Spanish trade mark registration No 3 548 011 for the mark

Spanish trade mark registration No 3 548 012 for the mark

Spanish trade mark registration No 3 548 013 for the mark

Spanish trade mark registration No 3 552 338 for the mark

The other earlier rights invoked by the opponent are identical or less similar to the contested sign. This is because they contain additional words such as ‘TOUR’, ‘CIRCUITOS’ or ‘AIR’ which are not present in the contested sign. 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Aldo BLASI

Francesca CANGERI

María Clara IBÁÑEZ FIORILLO

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.