OPPOSITION No B 2 075 698

easyGroup Ltd, 10 Ansdell Street, Kensington, London W8 5BN, United Kingdom (opponent), represented by Clarke Willmott, Burlington House, Botleigh Grange Business Park, Hedge End, Southampton, Hampshire SO30 2AF, United Kingdom (professional representative)

a g a i n s t

Ingenico Group, 28/32 Boulevard de Grenelle, 75015 Paris, France (applicant), represented by Markplus International, 39 rue Fessart, 92100 Boulogne-Billancourt, France (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 075 698 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 10 772 523, namely the goods and services in Classes 9, 35, 36, 38, 41 and 42. The opposition is based on European Union trade mark registrations No 4 300 901, No 10 584 001, No 6 249 676, No 5 140 157, No 10 735 561 and No 10 735 553 and on UK trade mark registration No 2 497 576. The opposition is also based on the UK non-registered trade marks ‘EASYCAR’ and ‘EASYBUS’ and the European Union non-registered trade mark ‘EASYJET’. The opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.

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 registrations No 4 300 901, No 10 584 001, No 6 249 676, No 5 140 157, No 10 735 561 and No 10 735 553 and UK trade mark registration No 2 497 576.

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.

1. The goods and services

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

• European Union registration No 4 300 901 ‘EASYMOBILE’ for goods and services in Classes 9, 38 and 42;

• European Union registration No 10 584 001 ‘EASYJET’ for goods and services in Classes 3, 8, 9, 12, 14, 16, 18, 25, 28, 29, 30, 31, 32, 33, 34, 35, 36, 38, 39, 41 and 43;

• European Union registration No 6 249 676 ‘EASYJET’ for services in Class 36;

• European Union registration No 5 140 157 ‘EASYVAN’ for goods and services in Classes 12, 36 and 39;

• European Union registration No 10 735 561 ‘EASYBUS’ for goods and services in Classes 12, 16, 36, 37, 39 and 43;

• European Union registration No 10 735 553 ‘EASYCAR’ for goods and services in Classes 12, 16, 36, 37, 39 and 43;

• UK national registration No  2 497 576 ‘EASYMONEY’.

The contested goods and services are the following:

Some of the contested goods and services are identical to the goods and 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.

2. 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. The degree of attention is considered average.

3. The signs

EASYMOBILE EASYJET EASYVAN EASYMONEY EASYBUS EASYCAR	EASYACCEPT
Earlier trade marks	Contested sign

The relevant territories are the European Union and the United Kingdom.

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).

All the signs under comparison are a combination of the word ‘EASY’ with the English words ‘MOBILE’, ‘JET’, ‘VAN’, ‘MONEY’, ‘BUS’, ‘CAR’ or ‘ACCEPT’. For the English-speaking part of the relevant public, these second words are descriptive of at least some of the opponent’s goods and services.

None of the earlier trade marks has any element that could be considered clearly more dominant than other elements, and nor does the contested mark.

For the part of the relevant public that understands English, none of the earlier trade marks has elements that could be considered clearly more distinctive than other elements, and nor does the contested mark. The same conclusion applies to the earlier trade mark ‘EASYBUS’ for the part of the relevant public that does not understand English, because the word ‘BUS’ is understood throughout the relevant territories as meaning ‘a large motor vehicle carrying passengers by road’.

For the relevant public that does not understand English, the words ‘MOBILE’, ‘JET’, ‘VAN’, ‘MONEY’, ‘CAR’ or ‘ACCEPT’ are the distinctive elements of the signs in which they appear.

Visually, the signs coincide in the letters ‘EASY’, present identically in the earlier marks and the contested sign. They differ in that the earlier trade marks contain, as additional verbal elements following the word ‘EASY’, the words ‘MOBILE’, ‘JET’, ‘VAN’, ‘MONEY’, ‘BUS’ or ‘CAR’; the contested sign, instead, features, as a second element following the word ‘EASY’, the word ‘ACCESS’.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‘EASY’, present identically in the earlier marks and the contested sign. The pronunciation differs in the sounds of the English words ‘MOBILE’, ‘JET’, ‘VAN’, ‘MONEY’, ‘BUS’ or ‘CAR’ in the earlier signs and ‘ACCESS’ in the contested mark.

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

Conceptually, the signs are similar because they all refer to the concept conveyed by the word ‘EASY’. It is reasonable to assume that the element ‘EASY’, included in both the earlier marks and the contested sign, will be associated almost universally throughout the relevant territories with, inter alia, ‘not requiring much effort; simple’ (information extracted from Collins English Dictionary on 17/06/2016 at www.collinsdictionary.com). This concept will be understood not only by the English-speaking part of the public, but also by the part of the public whose native language is not English. This is because ‘EASY’ belongs to basic English vocabulary and is extensively used in everyday language as well as in business. On the other hand, as seen above, the earlier signs contain, as a second or additional component, the English words ‘MOBILE’, ‘JET’, ‘VAN’, ‘MONEY’, ‘BUS’ or ‘CAR’. In English, these words are descriptive or at least to some degree evocative of the characteristics of some of the relevant goods or services. For the part of the relevant public that understands English, those words have clearly different meanings from that conveyed by the word ‘ACCESS’ of the contested sign. Therefore, these different meanings counterbalance the similarity arising from the element ‘EASY’, with the result that the signs are conceptually similar to a low degree. On the other hand, for the part of the relevant public that does not understand English, and bearing in mind what was stated above in relation to the general knowledge of the word ‘EASY’, the signs do not have any elements that would be perceived as conceptually different. Therefore, they must be considered conceptually similar.

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

4. 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

For the sake completeness, it must be mentioned that the opponent referred to several decisions of the Office in which the reputation of at least some of the earlier marks and the family of marks to which they belong was recognised.

This mere reference, although the decision numbers were provided, is not sufficient because, as stated in the Office’s Guidelines, Part C, Opposition, point 4.4.4, with regard to references made to documents or items of evidence in other proceedings:

The Office may receive observations from the opponent or applicant in which they refer to documents or evidence submitted in other proceedings, for instance to evidence of use that has already been submitted in a different opposition.

Such requests are accepted at any stage of the proceedings when the opponent/applicant clearly identifies the documents that it refers to. The party must indicate the following: (1) the number of the opposition it refers to; (2) the title of the document it refers to; (3) the number of pages of this document; and (4) the date this document was sent to the Office. For example, ‘the statutory declaration that was submitted to the Office on dd/mm/yy in opposition proceedings B XXX XXX, together with exhibits 1 to 8, consisting of XX pages’.

Should the documents referred to by the opponent or the applicant consist originally of items of evidence not having been filed in paper format up to and including A3 size and should this evidence not be available in the electronic file of the Office, in accordance with Rule 79a EUTMIR the party concerned must submit by mail a second copy for transmission to the other party within the original time limit. If no copy is provided, these items of evidence will not be taken into account.

In addition, it should be noted that the documents or evidence referred to might need translation into the language of the opposition proceedings. Rules 19(4) and 22(6), and Rule 96 EUTMIR apply accordingly.

A general reference to documents or evidence submitted in other proceedings will not be accepted. In such a situation the party making general reference to other documents or evidence may be invited to be sufficiently specific within a given time limit. The party should be informed that the time limit granted by the Office is only meant for the clear and precise indication of the documents or evidence referred to and that under no circumstances will an extension of the original time limit be granted. Moreover, the party should also be informed that if it does not specify which documents are being referred to within the time limit set, those other documents will not be considered.

The parties should be aware that material submitted in other proceedings may have been destroyed five years after their receipt in accordance with Rule 91 EUTMIR and Decision EX-13-4 of the President of the Office of 26 November 2013 concerning the keeping of files. In this case, the reference to documents or evidence submitted in other opposition proceedings has no effect.

In the light of the above, neither reputation nor enhanced distinctiveness can be recognised and the examination will continue on the basis of the distinctive character recognised in the marks in section c), meaning that the word ‘easy’ is generally considered weak and that the other words, in combination with the word ‘easy’, are descriptive of at least some of the goods and services for which registration is sought.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

A likelihood of confusion on the part of the public must be assessed globally. Such a global assessment implies some interdependence between the factors taken into account and, in particular, a similarity between the trade marks and between the goods or services. 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; 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 assessment, the average consumer of the category of goods 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; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

As explained above, the Opposition Division will proceed as if all the contested goods and services were identical to those of the earlier mark.

In the present case, the goods and services assumed to be identical are directed at the public at large. The degree of attention is considered average.

The signs are visually and aurally similar to a low degree. On the other hand, even for the relevant public that does not have English as its native language, the signs are conceptually similar because of the coinciding word ‘EASY’. As explained above, it is reasonable to assume that the element ‘EASY’, included in all the earlier marks and the contested sign, will be associated almost universally throughout the relevant territories with, inter alia, ‘not requiring much effort; simple’. Therefore, this element is not particularly distinctive because it suggests a quality of the goods or services.

In addition, although the first parts of the marks may be liable to attract the consumer’s primary attention, this principle has little impact on the present case.

The signs also have clear differences, resulting from the other components of the earlier trade marks, ‘MOBILE’, ‘JET’, ‘VAN’, ‘MONEY’, ‘BUS’ or ‘CAR’. These elements are visually and aurally different from the word ‘ACCESS’, included in the contested sign. Account must be taken of the fact that the signs under comparison are not particularly long. Consumers will easily perceive them in their entirety. The similarities resulting from the beginning of each mark are not enough to counteract the differences between the marks resulting from all the other letters.

The signs, therefore, are, overall, similar only to a low degree. Moreover, this similarity lies only in the coinciding element ‘EASY’, which is very weak because of its lack of intrinsic distinctive character.

Therefore, considering the above, the differences are sufficient to safely exclude a likelihood of confusion.

This is the case in particular with regard to the English-speaking part of the relevant public, because of the clearly different meanings of the second words in the signs under comparison.

Therefore, in spite of the coincidence in the word ‘EASY’, there is no likelihood of confusion because this similarity results from a weak element in the signs under comparison, which is per se inadequate to exercise the distinctive function of the sign.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘EASY’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘EASY’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The opponent, in order to support its argument, merely refers to previous decisions in which the Office recognised that ‘the opponent had a reputation for having a family of marks’ including the element ‘EASY’ (the latest decision is dated 31/01/2008). 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the opponent are not relevant to the present proceedings. The existence of a family of marks is a matter of fact. Consequently, its existence or otherwise can vary over time. Therefore, a family of marks cannot be ascertained to exist once and for all, but needs to be assessed on a case-by-case basis with reference to the filing date of the contested EUTM application, taking account, where appropriate, of any priority claimed, on condition, of course, that the priority claim has been accepted by the Office.

Accordingly, the opponent’s argument must be rejected as unfounded because the existence of its family of marks has not been proved (see section d))

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 under Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 29/09/2014, in response to a request for suspension of the proceedings after the commencement of the adversarial part of the opposition proceedings, the opponent was given a new time limit to submit the abovementioned material. This time limit expired on 25/11/2015.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based (see section d)).

In the light of the above, no evidence of reputation of the earlier marks was submitted.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent claims that the registration of the contested sign would also infringe its rights to non-registered trade marks in the United Kingdom and in the European Union, namely:

• ‘EASYCAR’ in the United Kingdom for transport; travel arrangements; arranging of transportation of goods, passengers and travellers buy land; travel reservation and booking services; travel information services; vehicle hire.

• ‘EASYBUS’ in the United Kingdom for transport; travel arrangements; bus transport services; travel information services.

• ‘EASYJET’ in the European Union for transportation services; travel arrangements; cargo and freight se4rvices; travel agency services; airline services; rental of vehicles; travel booking services.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier signs in the course of trade

On 29/09/2014, in response to a request for suspension of the proceedings after the commencement of the adversarial part of the opposition proceedings, the opponent was given a new time limit to submit the abovementioned material. This time limit expired on 25/11/2015.

The opponent did not submit any evidence of use in the course of trade of the earlier non-registered signs on which the opposition is based and a reference to the evidence filed in previous cases cannot be accepted for the reasons mentioned in section d).

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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

Michele M. BENEDETTI-ALOISI Mauro BUFFOLO Co-signer 2 [Name SURNAME]

Mauro BUFFOLO Mauro BUFFOLO Co-signer 2 [Name SURNAME]

Andrea VALISA Mauro BUFFOLO Co-signer 2 [Name SURNAME]

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.