OPPOSITION Nо B 3 126 769

 

ABS Jets, A.S., K letišti 549, Hangár C, 161 00 Prague 6 - Ruzyně, Czech Republic (opponent), represented by Propatent Intellectual Property Law Firm, Pod Pekařkou 107/1, 147 00 Podolí, Praha 4, Czech Republic (professional representative) 

 

a g a i n s t

 

Abjet s.r.l., Via Brigate Alpine, 9/C Fraz. Dossobuono, 37062 Villafranca, Italy (applicant).

On 13/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 126 769 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 236 016 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 28/07/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 236 016 (figurative mark). The opposition is based on international trade mark registration designating the European Union No 994 155, ‘ABS JETS’ (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 goods and services

 

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

 

Class 37: Repairing services: technical maintenance of aircraft.

Class 39: Air transport, arranging of tours, handling of passengers, information about transportation.

The contested goods and services are the following:

 

Class 12: Vehicles and conveyances.

Class 39: Aircraft rental.

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 12

Commercial undertakings which produce the contested vehicles and conveyances usually offer services such as the earlier repairing services, and the relevant consumers are aware of this fact. Moreover, using the same undertaking to provide both the goods and the services provides a certain guarantee of quality. For example, spare parts may have particularities that mean that only that particular undertaking can render the services in an appropriate way. To this extent, there is a certain interdependence leading to a complementary character. These goods and services have the same relevant public and may have the same producers/providers and distribution channels. Therefore, the aforementioned contested vehicles and conveyances and the opponent’s services are held to be similar.

Contested services in Class 39

The contested aircraft rental is included within the broader category of the opponent’s air transport. Therefore, they are identical.

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

 

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. As the goods and services concern vehicles and conveyances and aircraft rental, which generally are acquired or purchased at significant cost, after at least some degree of care and attention, the degree of attention is considered to be higher than average.

c) The signs

 

ABS JETS
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.

As both signs at issue feature words which are meaningful in English, the Opposition Division considers it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland and Malta, given, in particular, that the non-coinciding meaningful words lack distinctive character (as explained below) thereby diminishing their impact in the comparison of signs, which is not necessarily the case for all of the non-English speaking part of the said public.

Although ‘ABjet’ 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), not least given that the letters ‘AB’ are in upper case whereas the component ‘jet’ is in lower case, and the letter ‘j’ thereof is depicted in a contrasting (burgundy) colour.

The component ‘ABS’ in the earlier mark, and ‘AB’ in the contested sign, bears no reference to the relevant goods and services and so each is normally distinctive. In contrast, the component ‘jet’ present in both signs merely refers to the nature of the relevant goods and the subject matter of the relevant services (i.e. jet aircraft and jet aircraft rental) and so is non distinctive.

Beneath the letters ‘AB’ in the contested sign appear the words ‘AVIATION BUSINESS’ in very small letters, and beneath the said verbal element ‘ABjet’ and having the same width, appear the words ‘FOR VERY IMPORTANT FLIGHT’. The verbal element ‘ABjet’ is clearly the dominant element of the contested sign, in the sense of being the most visually eye catching part thereof. Furthermore, ‘AVIATION BUSINESS’ and ‘FOR VERY IMPORTANT FLIGHT’ are merely descriptive of the relevant goods and services and so are non-distinctive. The stylization in terms of color and typeface in the contested sign will be regarded as primarily decorative in nature.

Visually, the signs coincide in the letters ‘AB*JET*’, differing in the letters ‘S’ in third and seventh positions of the earlier mark, in the additional words of the contested sign, as well as in the stylized elements thereof, each of which (i.e. the additional words and stylized elements) has weaker impact for the reasons set out above. Taking into account that the said coincidence pertains to the dominant element of the contested sign, the Opposition Division considers that the signs at issue are visually similar to at least an average degree.

Aurally, the signs coincide in the sound of the letters ‘AB*JET*’, differing in the sound of the letter ‘S’ at third and seventh position within the earlier mark. Although it is true that the signs differ also in the sound of the additional words of the contested sign, which have no counterpart in the earlier mark, they are not likely to be sounded by the public under analysis, given both their relative very small size and, even if they were to be sounded, their impact in the trade mark appreciation of the contested sign is greatly reduced, given their said non distinctive nature. On this basis, the Opposition Division considers that the signs at issue are aurally similar to an at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs at issue will convey the concept of a jet (albeit in the plural form in the earlier mark), they must be held to be conceptually similar at least to a low degree although the impact on the conceptual comparison of the signs of the near coinciding component is limited due to its non-distinctive nature. The additional words of the contested sign, which have no counterpart in the earlier mark, will be regarded as being merely informational by the public under analysis and so will not be regarded as conveying any trade mark meaning in the appreciation of this sign.

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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark (‘JETS’), as stated above in section c) of this decision.

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 goods and services have been found partly identical and partly similar. For the public under analysis, the signs have been found to be visually similar to at least an average degree, aurally similar to at least an average degree, and conceptually similar to a low degree. The earlier mark as a whole is normally distinctive, and the degree of attention of the relevant public is above average.

Taking the relevant factors into consideration, the Opposition Division considers that the similarities between the signs at issue, pertaining to the nearly-coinciding verbal elements ‘ABS JETS’/’ABjet’ - being the dominant element of the contested sign - are not outweighed by the differences pertaining to (a) the letter ‘S’ at third and seventh position (in which it merely creates the plural form of the word ‘JET’) of the earlier mark, (b) the additional words of the contested sign – which are both non distinctive and much smaller than the said coinciding elements – and (c) the stylized elements of the contested sign, which have weaker impact as explained at section c) above.

The Office takes into account 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).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public such as in Ireland and Malta. 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.

 

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 994 155 ‘ABS JETS’. It follows that the contested trade mark must be rejected for all the contested goods and services, including those for which a higher than average degree of attention may be exercised.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

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

 

 

 

The Opposition Division

 

 

Irena LYUDMILOVA LECHEVA

Kieran HENEGHAN

Carlos MATEO PÉREZ

 

 

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.