OPPOSITION Nо B 3 104 472

Pegasus Hava Tasimaciligi Anonim Sirketi, Aeropark Yenisehir Mahallesi Osmanly Bulvary No 11, 34912 Kurtköy Pendik Istanbul, Turkey (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Eva Maria Kristina Andersson Manning, Centralvägen 12 Lgh 1301, 194 76 Upplands Väsby, Sweden (applicant), represented by Angelica Coppini, Standard House, Level 3 Birkirkara Hill, Stj 1149 St. Julians, Malta (professional representative).

On 28/09/2020, the Opposition Division takes the following

DECISION:

1.

Opposition No B 3 104 472 is partially upheld, namely for the following contested services: Class 35: Commercial or industrial management assistance; business management assistance; professional business consultancy; commercial information and advice for consumers [consumer advice shop]; business research; business efficiency expert services; business management consultancy; economic forecasting; business organization consultancy; business management and organization consultancy; advisory services for business management; none being insurance and assurance services.

2.	European Union trade mark application No 18 096 216 is rejected for all the above services. It may proceed for the remaining services.

3.	Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 18 096 216 ‘Pegasus Holding’ (word mark), namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 17 899 979, ‘PEGASUS BOL BOL’ (word 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 on which the opposition is based are the following:

Class 35: Advertising; marketing; public relations; organization of exhibitions and trade fairs for commercial or advertising purposes; design for advertising; provision of an online marketplace for buyers and sellers of goods and services; the bringing together, for the benefit of others, of a variety of goods, namely computers, desktop computers, magnetic data carriers, optical data carriers, computer software, recorded computer programmes, downloadable and recordable electronic publications, encoded magnetic cards, optical cards enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues.

The contested services are the following:

Class 35: Administrative processing of purchase orders; commercial or industrial management assistance; business management assistance; negotiation and conclusion of commercial transactions for third parties; professional business consultancy; commercial information and advice for consumers [consumer advice shop]; business appraisals; business research; commercial intermediation services; business efficiency expert services; business management consultancy; economic forecasting; business organization consultancy; business management and organization consultancy; advisory services for business management; drawing up of statements of accounts; none being insurance and assurance services.

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 opponent’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.

The contested commercial or industrial management assistance; business management assistance; professional business consultancy; business research; business efficiency expert services; business management consultancy; economic forecasting; business organization consultancy; business management and organization consultancy; advisory services for business management; none being insurance and assurance services are all business management services which are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand their market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The opponent’s advertising consists of providing others with assistance in the sale of their goods and 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.

When comparing business management services with advertising services, advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in his or her advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, as the opponent states, they are similar to a low degree as they have the same purpose, namely to facilitate running a successful business. They may also have the same providers and relevant public.

The contested commercial information and advice for consumers [consumer advice shop]; none being insurance and assurance services are similar to a low degree to the opponent’s advertising as they have the same purpose and they usually coincide in the relevant public, in the sense that these services are intended to promote other companies’ products, albeit with different means.

However, the same reasoning as above in relation to business management services cannot be applied to the contested administrative processing of purchase orders; negotiation and conclusion of commercial transactions for third parties; business appraisals; commercial intermediation services; drawing up of statements of accounts; none being insurance and assurance services despite the opponent’s joint analysis of these contested services and the abovementioned contested services as they cannot be considered as business management services as explained below.

Contrary to the opponent’s assertion, the contested administrative processing of purchase orders, none being insurance and assurance services are not highly similar to the opponent’s provision of an online marketplace for buyers and sellers of goods and services. The contested services are services related to the internal day-to-day operations of an organization whereas the earlier services entail the provision of a platform where the buyer can display and offer its goods for sale. Therefore, their purpose, providers and targeted public are different. They do not have the same distribution channels, and are not in competition. They are dissimilar. Therefore, this argument of the opponent must be dismissed.

The contested negotiation and conclusion of commercial transactions for third parties; commercial intermediation; none being insurance and assurance services are services rendered by specialists with the purpose of helping businesses to resolve their business-related problems. It also includes services when a third party puts sellers and buyers of something in contact, negotiates between them and gets commission for such services. Therefore, they are dissimilar to the opponent’s advertising services. Although they can be targeted to the same public, their purpose and providers are different. They are not in competition and do not have the same distribution channels.

The contested business appraisals; none being insurance and assurance services are services combining a set of procedures used to estimate the economic value of an owner’s interest in a business. These services are very specific business tools and are usually provided by consultants specialised in that area. They are considered dissimilar to the opponent’s advertising and marketing services. Although they are business related professional services, they do not have the same purpose. Consequently, although they can be addressed to the same public, they will be provided by different specialised undertakings, have different distribution channels and are not in competition.

The contested drawing up of statements of accounts; none being insurance and assurance services are business administration services that are performed in order to organise and run a business. These services enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. Therefore, they are dissimilar to the opponent’s advertising since a professional who helps with the execution of business decisions or the performance of business operations will not offer advertising strategies. The nature and purpose of these services are different. They do not have the same providers or distribution channels, and are not in competition.

Finally, the contested administrative processing of purchase orders; negotiation and conclusion of commercial transactions for third parties; business appraisals; drawing up of statements of accounts; none being insurance and assurance services do not have nothing common with the opponent’s public relations; organization of exhibitions and trade fairs for commercial or advertising purposes; design for advertising; provision of an online marketplace for buyers and sellers of goods and services; the bringing together, for the benefit of others, of a variety of goods, namely computers, desktop computers, magnetic data carriers, optical data carriers, computer software, recorded computer programmes, downloadable and recordable electronic publications, encoded magnetic cards, optical cards enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues. They differ in their nature, purpose and method of use. They are provided by different undertakings and target a different public. Moreover, these services are neither complementary nor in competition. 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 services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise, who will use these services to support their commercial activities or in the course of their business. The relevant public's degree of attention will be relatively high when choosing them as the relevant services may have consequences for the functioning of a business, are quite expensive, and are not contracted on a daily basis.

c) The signs

PEGASUS BOL BOL	Pegasus Holding
Earlier trade mark	Contested sign

The relevant territory is 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 common element ‘PEGASUS’ present identically in both marks is meaningful for the relevant public, and will be understood as referring to the mythological winged horse, the Pegasus. This verbal element has no direct or indirect link to the relevant services and, therefore, it is considered distinctive.

The verbal element ‘Holding’ of the contested mark is an English word which means, inter alia, ‘property to which the holder has legal title, such as land, stocks, shares, and other investments’ (information extracted from Collins dictionary on 24/09/2020 at https://www.collinsdictionary.com/dictionary/english/holding). Bearing in mind the services in question, it is non-distinctive since it is descriptive of a company organised as a holding company, known not only by the English-speaking public but also widely and internationally used in the business world (12/06/2012, R 1875/2011-4, Serafin Privat Holding / (fig), § 19).

The earlier mark is also composed of the verbal elements ‘BOL BOL’ placed in second and third position. The verbal element ‘BOL’ will be understood by part of the relevant public, such as the Spanish-speaking public, as a ‘bowl without handle’ (information extracted from Diccionario de la Real Academia Española on 24/09/2020 at https://dle.rae.es/bol; translation by the examiner). For another part of the public this verbal element has no meaning. In any case, since this element does not convey any meaning to the relevant public that is directly related to the services in question it is distinctive to a normal degree.

It is important to note that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in ‘PEGASUS’ which is the most distinctive element in the contested sign and is placed at the beginning of the signs where it has greater impact on their overall impression. They differ in the additional verbal elements ‘BOL BOL’ and ‘Holding’ which, as seen above, are either placed at the end of the sign and/or of lesser impact due to the lack of distinctiveness.

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be understood as referring to the mythological winged horse, the Pegasus. Therefore, and considering the non-distinctiveness of the concept related to ‘Holding’ and that only part of the relevant public will understand the verbal element ‘BOL BOL’, which in any case, are placed at the end of the sign, the signs are conceptually similar to an average degree.

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

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

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).

The contested services have been found partly similar to a low degree and partly dissimilar. The degree of attention of the relevant public, composed by the professionals, is high. The earlier mark is considered to have a normal level of distinctiveness. The signs are visually and aurally highly similar and conceptually similar to an average degree.

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 with 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).

Bearing in mind the consumer’s imperfect recollection and the fact that the signs coincide in the verbal element ‘PEGASUS’, which is the most distinctive element in the contested mark and is placed at their beginnings, it is considered that their differences (the words ‘BOL BOL’ in the earlier mark and the non-distinctive additional word ‘Holding’ in the contested mark) are not sufficient to outweigh the similarities between them, even in relation to lowly similar services taking into account the abovementioned principle of interdependence.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 

It follows from the above that the contested trade mark must be rejected for the services found to be similar to a low degree to those of the earlier trade mark.

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.

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

Inés GARCIA LLEDO

Carolina MOLINA BARDISA

Helen Louise MOSBACK

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