OPPOSITION No B 3 092 535

Radiotaxi Veneto Societa' Cooperativa, Via Piave, 208 Venezia (Ve), Italy (opponent), represented by Mondial Marchi S.R.L., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional representative)

a g a i n s t

Okeudo Jonathan Nmaju, Calle Desayuno Con Diamantes, Spain 23, 50019 Zaragoza, Spain (applicant).

On 28/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 092 535 is partially upheld, namely for following contested goods and services:

Class 9: Navigation, guidance, tracking, targeting and map making devices; Information technology and audio-visual, multimedia and photographic devices.

Class 42: Design services; IT services.

2. European Union trade mark application No 18 076 013 is rejected for the above goods and services. It may proceed for the remaining 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 18 076 013 . The opposition is based on European Union trade mark registration No 11 023 561 APPTAXI (word) and on European Union trade mark registration No 11 023 603 . 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 11 023 561 APPTAXI (word).

a) The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Clothing for protection against fire; Particle accelerators; Accumulators, electric; Batteries, electric, for vehicles; Adding machines; Aerometers; Agendas (Electronic -); Stills for laboratory experiments; Alcoholmeters; Alidades; Altimeters; Loudspeakers; Ammeters; Retorts' stands; Calibrating rings; Anemometers; Anodes; Aerials; Anticathodes; Apertometers [optics]; High-frequency apparatus; Heat regulating apparatus; Franking (Apparatus to check -); Chromatography apparatus for laboratory use; Diffraction apparatus [microscopy]; Fermentation (Apparatus for -) [laboratory apparatus]; Glass covered with an electrical conductor; Centering apparatus for photographic transparencies; Intercommunication apparatus; Ionization apparatus not for the treatment of air or water; Precision measuring apparatus; Navigation apparatus for vehicles [on-board computers]; Satellite navigational apparatus; Projection apparatus; Radiological apparatus for industrial purposes; Naval signalling apparatus; Remote control apparatus; X-rays producing apparatus and installations, not for medical purposes; Sounding apparatus and machines; Chemistry apparatus and instruments; Physics (Apparatus and instruments for -); Weighing apparatus and instruments; Surveying apparatus and instruments; Nautical apparatus and instruments; Optical apparatus and instruments; Astronomy (Apparatus and instruments for -); Commutation (Electric apparatus for -); Regulating apparatus, electric; Measuring devices, electric; Monitoring apparatus, electric; Electro-dynamic apparatus for the remote control of railway points; Electro-dynamic apparatus for the remote control of signals; Heliographic apparatus; Blueprint apparatus; Cameras [photography]; Global Positioning System [GPS] apparatus; Juke boxes, musical; Air analysis apparatus; Drying apparatus for photographic prints; Word processors; Amplifiers; Food analysis apparatus; Gas testing instruments; Testing apparatus not for medical purposes; Data processing apparatus; Enlarging apparatus [photography]; Audiovisual teaching apparatus; Diagnostic apparatus, not for medical purposes; Distillation apparatus for scientific purposes; Phototelegraphy apparatus; Speed measuring apparatus [photography]; Sound recording apparatus; Time recording apparatus; Distance recording apparatus; Breathing apparatus, except for artificial respiration; Sound reproduction apparatus; Railway traffic safety appliances; Sound transmitting apparatus; Glazing apparatus for photographic prints; Distance measuring apparatus; Leather (Appliances for measuring the thickness of -); Skins (Apparatus for measuring the thickness of -); Slide projectors; X-ray apparatus not for medical purposes; Chargers for electric batteries; Discharge tubes, electric, other than for lighting; Oxygen transvasing apparatus; Radios; Vehicle radios; Breathing apparatus for underwater swimming; Teaching apparatus; Demagnetizing apparatus for magnetic tapes; Stereoscopic apparatus; Telephone apparatus; Distribution boxes [electricity]; Optical goods; Gauges; Containers for contact lenses; Spectacle cases; Eyeglass cases; Containers for microscope slides; Cases especially made for photographic apparatus and instruments; Actinometers; Motor fire engines; Shutter releases [photography]; Whistle alarms; Sound alarms; Anti-theft warning apparatus; Tires (Automatic indicators of low pressure in vehicle -); Fire alarms; Spools [photography]; Rods for water diviners; Washing trays [photography]; Distribution consoles [electricity]; Barometers; Weighbridges; Fire beaters; Fire boats; Anode batteries; Batteries for lighting; Batteries, electric; Betatrons; Scales; Precision balances; Binoculars; Electromagnetic coils; Choking coils [impedance]; Coils, electric; Marking buoys; Signalling buoys; Tone arms for record players; Encoded identification bracelets, magnetic; Compasses (Directional -); Marine compasses; Magnets (Decorative -); Calculating machines; Pocket calculators; Calipers; Screw-tapping gauges; Slide calipers; Shoes for protection against accidents, irradiation and fire; Socks, electrically heated; Juke boxes for computers; Decompression chambers; Darkrooms [photography]; Signal bells; Bells [warning devices]; Alarm bells, electric; Electric door bells; Push buttons for bells; Telescopes; Sighting telescopes for firearms; Battery chargers; Identity cards, magnetic; Integrated circuit cards [smart cards]; Video game cartridges; Protective helmets; Protective helmets for sports; Riding helmets; Battery jars; Branch boxes [electricity]; Battery boxes; Switchboxes [electricity]; Surveying chains; Eyeglass chains; Cathodes; Fibre [fiber (Am)] optic cables; Coaxial cables; Starter cables for motors; Cables, electric; Galvanic cells; Photovoltaic cells; Laboratory centrifuges; Radio pagers; USB flash drives; DNA chips; Buzzers; Cyclotrons; Cinematographic film, exposed; Cinematographic cameras; Safety restraints, other than for vehicle seats and sports equipment; Cell phone straps; Life belts; Integrated circuits; Printed circuits; Hourglasses; Magnetic encoders; Couplings, electric; Collectors, electric; Road signs, luminous or mechanical; Acoustic couplers; Couplers [data processing equipment]; Commutators; Compact discs [audio-video]; Comparators; Compasses [measuring instruments]; Laptop computers; Notebook computers; Capacitors; Optical condensers; Electricity conduits; Acoustic conduits; Conductors, electric; Connectors [electricity]; Connections for electric lines; Milage recorders for vehicles; Waling glasses; Revolution counters; Pedometers; Meters; Contacts, electric; Speed checking apparatus for vehicles; Converters, electric; Fire blankets; Covers for electric outlets; Eyeglass cords; Cupels [laboratory]; Chronographs [time recording apparatus]; Measuring spoons; Headphones; Densimeters; Densitometers; Diaphragms [acoustics]; Diaphragms [photography]; Slides [photography]; Dynamometers; Light-emitting diodes [LED]; Floppy disks; Phonograph records; Calculating disks; Disks, magnetic; Optical discs; Compact discs [read-only memory]; Reflecting discs for wear, for the prevention of traffic accidents; Animated cartoons; Anti-interference devices [electricity]; Cathodic anti-corrosion apparatus; Steering apparatus, automatic, for vehicles; Protection devices against X-rays, not for medical purposes; Protection devices for personal use against accidents; Cleaning apparatus for phonograph records; Life saving apparatus and equipment; Igniting apparatus, electric, for igniting at a distance; Record player needles (Apparatus for changing -); Balancing apparatus; Editing appliances for cinematographic films; Ticket dispensers; Dosimeters; Computers; Electrolysers; Transmitters of electronic signals; Transmitting sets [telecommunication]; Epidiascopes; Ergometers; Exposure meters [light meters]; Drying racks [photography]; Extinguishers; Electronic tags for goods; Downloadable image files; Downloadable music files; Plumb lines; Light conducting filaments [optical fibers fibres]; Identification threads for electric wires; Copper wire, insulated; Wires, electric; Fuse wire; Magnetic wires; Telephone wires; Telegraph wires; Filters [photography]; Filters for respiratory masks; Filters for ultraviolet rays, for photography; Signalling whistles; Dog whistles; Flash-bulbs [photography]; Ovens for laboratory use; Photocopiers [photographic, electrostatic, thermic]; Photometers; Frequency meters; Fuses; Galena crystals [detectors]; Galvanometers; Gasometers [measuring instruments]; Knee-pads for workers; Record players; Vests (Am) Bullet-proof -; Grids for batteries; Identification sheaths for electric wires; Sheaths for electric cables; Asbestos gloves for protection against accidents; Gloves for protection against X-rays for industrial purposes; Gloves for protection against accidents; Gloves for divers; Hydrometers; Hygrometers; Theft prevention installations, electric; Incubators for bacteria culture; Water level indicators; Quantity indicators; Temperature indicators; Petrol gauges; Clinometers; Electric loss indicators; Speed indicators; Vacuum gauges; Armatures [electricity]; Asbestos clothing for protection against fire; Clothing for protection against accidents, irradiation and fire; Garments for protection against fire; Inductors [electricity]; Signs, luminous; Mechanical signs; Electric installations for the remote control of industrial operations; Interfaces for computers; Circuit closers; Switches, electric; Circuit breakers; Inverters [electricity]; Hands free kits for phones; Optical lamps; Darkroom lamps [photography]; Flashlights [photography]; Blinkers [signalling lights]; Fire hose nozzles; Magic lanterns; Signal lanterns; Lasers, not for medical purposes; Lactodensimeters; Contact lenses; Lens hoods; Magnifying glasses [optics]; Correcting lenses [optics]; Optical lenses; Spectacle glasses; Bar code readers; Compact disc players; Disk drives for computers; DVD players; Readers [data processing equipment]; Portable media players; Optical character readers; Limiters [electricity]; Ducts [electricity]; Spirit levels; Mercury levels; Surveyors' levels; Levels [instruments for determining the horizontal]; Traffic-light apparatus [signalling devices]; Accounting machines; Money counting and sorting machines; Dictating machines; Invoicing machines; Weighing machines; Punched card machines for offices; Voting machines; Magnets; Video recorders; Cassette players; Wind socks for indicating wind direction; Crash test dummies; Junction sleeves for electric cables; Manometers; Protective masks; Divers' masks; Solderers' helmets; Respirators, other than for artificial respiration; Electricity mains (Materials for -) [wires, cables]; Electronic pens [visual display units]; Coin-operated mechanisms for television sets; Coin-operated apparatus (Mechanisms for -); Counter-operated apparatus (Mechanisms for -); Megaphones; Diaphragms for scientific apparatus; Computer memory devices; Dressmakers' measures; Rules [measuring instruments]; Metronomes; Microphones; Micrometers; Microprocessors; Microscopes; Microtomes; Time switches, automatic; Viewfinders, photographic; Measuring apparatus; Pressure measuring apparatus; Measures; Furniture especially made for laboratories; Modems; Monitors [computer hardware]; Monitors [computer programs]; Spectacle frames; Eyeglass frames; Terminals [electricity]; Mouse [data processing equipment]; Head cleaning tapes [recording]; Magnetic tapes; Sound recording strips; Videotapes; Objectives [lenses] optics; Lenses for astrophotography; Pince-nez; Anti-glare glasses; Sunglasses; Goggles for sports; Spectacles [optics]; Eyepieces; Ohmmeters; Holograms; Wavemeters; Time clocks [time recording devices]; Oscillographs; Octants; Step-up transformers; Shutters [photography]; Ozonisers [ozonators]; Rods [surveying instruments]; Meteorological balloons; Abacuses; Life jackets; Signalling panels, luminous or mechanical; Spark-guards; Lightning arresters; Asbestos screens for firemen; Parking meters; X-ray films, exposed; Films, exposed; Periscopes; Acid hydrometers; Acidimeters for batteries; Lactometers; Letter scales; Salinometers; Weights; Chips [integrated circuits]; Wafers [silicon slices]; Stands for photographic apparatus; Galvanic batteries; Solar batteries; Sounding leads; Plumb bobs; Pipettes; Pyrometers; Plates for batteries; Planimeters; Plotters; Wrist rests for use with computers; Polarimeters; Fire engines; Plugs, sockets and other contacts [electric connections]; Prisms [optics]; Computer programs [downloadable software]; Computer game programs; Computer operating programs, recorded; Computer programmes [programs], recorded; Teeth protectors; Test tubes; Electronic publications, downloadable; Light-emitting electronic pointers; Control panels [electricity]; Switchboards; Distribution boards [electricity]; Radar apparatus; Current rectifiers; X-ray photographs, other than for medical purposes; Protractors [measuring instruments]; Electrified fences; Tape recorders; Cash registers; Pressure indicators; Voltage surge protectors; Speed regulators for record players; Voltage regulators for vehicles; Stage lighting regulators; Slide-rules; Carpenters' rules; Relays, electric; Rheostats; Resistances, electric; Respirators for filtering air; Nets for protection against accidents; Life nets; Screens for photoengraving; Receivers (Audio-- and video- -); Telephone receivers; Reducers [electricity]; Refractometers; Refractors; Rulers [measuring instruments]; Personal stereos; Detectors; Smoke detectors; False coin detectors; Metal detectors for industrial or military purposes; Balances [steelyards]; Electrified rails for mounting spot lights; Saccharometers; Sounding lines; Jigs [measuring instruments]; Life buoys; Satellites for scientific purposes; Diving suits; Fire escapes; Marine depth finders; Scanners [data processing equipment]; Cabinets for loudspeakers; Junction boxes [electricity]; Printed circuit boards; Fluorescent screens; Screens [photography]; Workmen's protective face-shields; Projection screens; Radiology screens for industrial purposes; Signals, luminous or mechanical; Fog signals, non-explosive; Beacons, luminous; Hemline markers; Answering machines; Semi-conductors; Wire connectors [electricity]; Locks, electric; Sextants; Spherometers; Drainers for use in photography; Simulators for the steering and control of vehicles; Sirens; Computer software, recorded; Logs [measuring instruments]; Sulphitometers; Sonars; Probes for scientific purposes; Sound locating instruments; Mirrors for inspecting work; Mirrors [optics]; Egg-candlers; Spectrograph apparatus; Spectroscopes; Peepholes [magnifying lenses] for doors; Automated teller machines [ATM]; Sprinkler systems for fire protection; Printers for use with computers; Radiotelephony sets; Radiotelegraphy sets; Stereoscopes; Retorts; Nose clips for divers and swimmers; Eyepieces (Instruments containing -); Azimuth instruments; Alarms; Observation instruments; Boiler control instruments; Cosmographic instruments; Levelling instruments; Measuring instruments; Material testing instruments and machines; Mathematical instruments; Meteorological instruments; Cases fitted with dissecting instruments [microscopy]; Navigational instruments; Surveying instruments; Downloadable ring tones for mobile phones; Holders for electric coils; Sound recording carriers; Magnetic data media; Optical data media; Electronic notice boards; Tachometers; Film cutting apparatus; Ear plugs for divers; Mouse pads; Resuscitation mannequins [teaching apparatus]; Pressure indicator plugs for valves; Taximeters; Computer keyboards; Plane tables [surveying instruments]; Carriers for dark plates [photography]; Frames for photographic transparencies; Teleprompters; Facsimile machines; Portable telephones; Telegraphs [apparatus]; Telemeters; Telerupters; Teleprinters; Television apparatus; Safety tarpaulins; Theodolites; Thermometers, not for medical purposes; Thermostats; Thermostats for vehicles; Encoded magnetic cards; Masts for wireless aerials; Totalizators; Electronic pocket translators; Transistors [electronic]; Transformers [electricity]; Transmitters [telecommunication]; Telephone transmitters; Transponders; Tripods for cameras; Vehicle breakdown warning triangles; Triodes; Horns for loudspeakers; Marking gauges [joinery]; X-ray tubes not for medical purposes; Speaking tubes; Capillary tubes; Neon signs; Fire hose; Protective suits for aviators; Central processing units [processors]; Magnetic tape units for computers; Computer peripheral devices; Urinometers; Vacuum tubes [radio]; Amplifying tubes; Solenoid valves [electromagnetic switches]; Thermionic tubes; Light dimmers [regulators], electric; Variometers; Laboratory trays; Verniers; Clothing especially made for laboratories; Measuring glassware; Optical glass; Camcorders; Video cassettes; Video screens; Video telephones; Viscosimeters; Anti-glare visors; Micrometer screws for optical instruments; Voltmeters; Walkie-talkies; Styli for record players; Life-saving rafts; Lighting ballasts.

Class 38: Telecommunications; Wire service; Providing telecommunications connections to a global computer network; Communications by fiber [fibre] optic networks; Radio broadcasting; Communications by telephone; Communications by telegrams; Communications by computer terminals; Television broadcasting; Providing access to databases; Providing user access to global computer networks; Providing telecommunication channels for teleshopping services; Providing internet chatrooms; Information about telecommunication; Electronic mail; Rental of access time to global computer networks; Rental of telecommunication equipment; Rental of message sending apparatus; Rental of facsimile apparatus; Rental of modems; Rental of telephones; Cellular telephone communication; Paging services [radio, telephone or other means of electronic communication]; Wireless broadcasting; Telecommunications routing and junction services; Electronic bulletin board services [telecommunications services]; Voice mail services; Teleconferencing services; Telephone services; Telegraph services; Telex services; Cable television broadcasting; Transmission of greeting cards online; Transmission of digital files; Message sending; Computer aided transmission of messages and images; Facsimile transmission; Transmission of telegrams; Satellite transmission.

Class 39: Transport; Packaging and storage of goods; Travel arrangement; Escorting of travellers; Water supplying; Coach (Motor -) rental; Franking of mail; Hauling; Freight [shipping of goods]; Parcel delivery; Flower delivery; Delivery of goods by mail order; Boat storage; Storage of goods; Delivery of goods; Electricity distribution; Water distribution; Message delivery; Distribution of energy; Newspaper delivery; Porterage; Packaging of goods; Storage; Storage (Physical -) of electronically-stored data or documents; Wrapping of goods; Storage information; Traffic information; Transportation information; Launching of satellites for others; Stevedoring; Operating canal locks; Shipbrokerage; Brokerage (Freight -); Transport brokerage; Aircraft rental; Car rental; Boat rental; Rental of diving bells; Horse rental; Rental of freezers; Rental of storage containers; Refrigerator rental; Rental of warehouses; Rental of vehicle roof racks; Parking place rental; Garage rental; Rental of diving suits; Rental of wheelchairs; Freighting; Truck (Railway -) rental; Vehicle rental; Rental of motor racing cars; Coach (Railway -) rental; Rescue operations [transport]; Arranging of cruises; Transportation logistics; Arranging of tours; Piloting; Booking of seats for travel; Travel reservation; Transport reservation; Underwater salvage; Refloating of ships; Towing; Salvage of ships; Unloading cargo; Chauffeur services; Bus transport; Pleasure boat transport; Bottling services; Transport; Car parking; Vehicle breakdown assistance [towing]; Ice-breaking; Salvaging; Courier services [messages or merchandise]; Taxi transport; Tram transport; Freight forwarding; Lighterage services; Removal services; Air transport; River transport; Marine transport; Transport by pipeline; Carting; Transporting furniture; Passenger transport; Armored-car transport; Transport of travellers; Transport and storage of trash; Ambulance transport; Car transport; Boat transport; Barge transport; Railway transport; Ferry-boat transport; Sightseeing [tourism].

The contested goods and services are the following:

Class 9: Navigation, guidance, tracking, targeting and map making devices; Information technology and audio-visual, multimedia and photographic devices.

Class 42: Design services; IT services; Science and technology services; Testing, authentication and quality control.

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 goods in Class 9

The contested navigation, guidance, tracking, targeting and map making devices include, as broader categories, or overlap with, the opponent’s navigation apparatus for vehicles [on-board computers]. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested information technology and audio-visual, multimedia and photographic devices are included in the broad categories of, or overlap with, the opponent’s data processing equipment; computers; photographic apparatus and instruments. Therefore, they are identical.

Contested services in Class 42

The contested design services are similar to the opponent’s computer software in Class 9 as they usually coincide in producer, relevant public and distribution channels.

The contested IT services are similar to the opponent’s computer software in Class 9 as they usually coincide in producer and relevant public. Furthermore they are complementary.

The contested science and technology services and the contested testing, authentication and quality control do not share relevant trade mark points of contact with the opponent’s goods in Class 9 or services in Classes 38 and 39 to justify a finding of similarity therewith.

In particular, the contested science and technology services are not similar to the opponent’s scientific apparatus and instruments in Class 9 while the contested testing, authentication and quality control is not similar to the opponent’s testing apparatus not for medical purposes in Class 9. These respective goods and services have different natures. It should be noted that whereas the opponent’s said goods are directed at scientists and technicians and testing specialists respectively who use such equipment in carrying out their scientific or technical functions, the applicant’s services are directed, instead, at end users who seek the applicant’s science and technology services or testing services respectively. It follows that while there could be some element of complementarity (in the sense that scientific, technical and testing services are almost invariably carried out using scientific, technical and testing equipment), that is not sufficient to render them similar as these goods and services normally have distinct purposes and distribution channels. It must be concluded, therefore, that they are dissimilar.

The Opposition Division finds that the remaining goods and services of the opponent are even less similar than the opponent’s scientific apparatus and instruments and testing, authentication and quality control in Class 9. Therefore, they are dissimilar.

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 or 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, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

APPTAXI
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 relevant public in the European Union will understand the meaning of the components ‘APP’ and ‘TAXI’ comprising the earlier word mark as both are common words in use, and known by such public, in all the languages of the Union.

In that regard although the earlier mark is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it 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).

The component ‘APP’ will be understood as a piece of software, especially for downloading to a mobile phone or electronic device. As it merely refers to the nature or method of use of the relevant goods it is non-distinctive of them.

The component ‘TAXI’ will be understood as a car or other motor vehicle driven by a person whose job is to take people where they want to go in return for money. Although this word is not directly descriptive of the goods in question, it alludes to the purpose of some of the goods: computer software and navigation apparatus for vehicles [on board computers] for which, therefore, it enjoys weak distinctive character. For the rest of the goods in question, in respect of which it bears no direct or indirect reference, it is normally distinctive.

The contested sign consists of the verbal element ‘Apptaxila’ in slightly stylised white letters above which appears a device element most likely to be perceived as a white-coloured motor vehicle steering wheel, both elements depicted against a dark green circle. Both the said green circle and the stylised lettering of the said verbal element of the contested sign will be perceived as being mainly decorative in nature and so of low distinctiveness.

As has been explained above, the relevant public will immediately perceive the component ‘App’ in the verbal element of the contested sign, dissecting the said verbal element into the components ‘App’ and ‘taxila’. In light of the above, the component ‘App’ is descriptive and non-distinctive of the relevant goods and services.

For the vast majority of the relevant public, the component ‘taxila’ is meaningless and so distinctive of the relevant goods and services. That said, in perceiving this component the relevant public is likely to bring to mind the word ‘taxi’ given that there are relatively few words in the languages of the Union featuring this letter combination and given the presence of the figurative device of the steering wheel which is likely to assist in triggering the word ‘taxi’.

As the figurative element of the steering wheel alludes to the purpose of the contested navigation, guidance, tracking, targeting and map making devices it is weakly distinctive of them. It bears no direct reference to the remaining contested goods and services and so is normally distinctive of them. In any event, 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). It follows that this figurative element will play a secondary role in the perception of the contested sign.

None of the elements of the contested sign is considered dominant (i.e. visually eye catching).

Visually, the signs coincide in the letters ‘APPTAXI’ differing in the additional letters ‘la’ coming at the end of the verbal element of the contested sign which have no counterpart in the earlier mark, and differing in the figurative and stylised elements of the contested sign which will play a secondary or decorative role respectively in the perception of that sign, as explained above. Taking into account the level of distinctiveness of the components ‘APP’ and ‘TAXI’, as set out above, but also bearing in mind that the earlier mark is fully included at the beginning of the contested sign’s verbal element and makes up the majority of this element, the Opposition Division considers that the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in the European Union, the signs coincide in the sound ‘APPTAXI’ differing in the additional sound ‘la’ at the end of the verbal element of the contested sign which has no counterpart in the earlier mark.

In light of the above and taking into account the level of distinctiveness of the components ‘APP’ and ‘TAXI’, as set out above, the fact that the coincidence comes at the beginning of the signs’ verbal elements, being the part that first catches the attention of the reader, and the fact that, in some languages of the Union – such as English - the additional letters ‘la’ of the contested sign has a distinguishing impact on the rhythm and intonation thereof, the Opposition Division considers that the signs are aurally similar to at least an average degree.

Conceptually, the signs coincide in the meaning of the component ‘APP’ present in both signs, although it is non distinctive of the goods and services in question and so it is not capable of indicating trade origin.

Given that the component ‘taxila’ evokes the idea of ‘taxi’ as stated above, the signs coincide semantically also at least to some extent. This is because the component ‘taxi’ of the earlier mark, the said component ‘taxila’ of the contested sign, and the device of the steering wheel of the contested sign, all make a broadly similar semantic impression relating to motor vehicles or motor driving.

On the basis of the above, the Opposition Division considers that the signs are conceptually similar to at least 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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for some of the goods in question, namely computer software; navigation apparatus for vehicles [on board computers] in Class 9. Moreover, the distinctiveness of the earlier mark as a whole should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear in its judgment of 24/05/2012, C 196/11 P, F1 Live, EU:C:2012:314, § 40-41 that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

The earlier mark as a whole has a normal degree of distinctiveness for the remaining goods in relation to which it has no direct meaning from the perspective of the relevant public.

e) 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.

The signs have been found to be visually, aurally, and conceptually similar to at least an average degree. The relevant goods and services are partly identical, partly similar, and partly dissimilar. The degree of attention is either average or high. The earlier mark enjoys at least a minimum degree of distinctive character for some of the opponent’s goods in Class 9 while, as a whole, being normally distinctive of the remaining goods.

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).

Taking all of the relevant factors into consideration, the Opposition Division considers that the similarities between the signs due to the coincidence in the identical letter string ‘APPTAXI’, which forms the entirety of the earlier mark and which appears at the start of the only verbal element of the contested sign, despite the non-distinctive nature of the component ‘APP’ and the weak distinctiveness of the component ‘TAXI’ for some of the goods in question in Class 9, are not counteracted by the differences between the signs pertaining only to the additional letters ‘la’ coming at the end of the contested sign, and the figurative and stylised elements of the contested sign which play a secondary role in its perception.

With regard to the finding at section c) above that the earlier mark is weakly distinctive of some of the opponent’s goods in Class 9, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 24), it is only one factor, inter alia, involved in that assessment. The Court has emphasised on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T 134/06, Pagesjaunes.com, EU:T:2007:387, § 70). With respect to the contested navigation, guidance, tracking, targeting and map making devices in Class 9, their identity with the relevant goods of the opponent, for which the earlier mark is weakly distinctive, may compensate for, or offset, such weak distinctiveness of the earlier mark according to the principle of interdependence referred to above. However, even with respect to the contested design services and IT services in class 42 for which the relevant goods of the opponent (computer software) are similar merely to an average degree, the Opposition Division considers that notwithstanding the weak distinctive character of the earlier mark for such contested services, a likelihood of confusion cannot be safely excluded given that the differences between the signs at issue are not counteracting, for the reasons set out above.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 023 561.

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, including where the degree of attention is high.

The rest of the contested 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark: European Union trade mark registration No 11023603 for the figurative mark

Since this earlier figurative mark covers the same scope of goods and services, the outcome cannot be different with respect to the 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

Boyana NAYDENOVA

Kieran HENEGHAN

María del Carmen COBOS PALOMO

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.