OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 459 637
Guardant, Inc., 1030 Delta Boulevard, Atlanta, Georgia, United States of America (opponent), represented by Ladas & Parry LLP, Temple Chambers, 3-7 Temple Avenue, London EC4Y 0DA, United Kingdom (professional representative)
a g a i n s t
Skyairteam Srl, Via Giulio e Corrado Venini 31, 20124 Milano, Italy (applicant).
Class 35: Advertising, marketing and promotional services.
Class 39: Transport.
trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the services of Community
trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 Community trade mark registration No 12 467 916.
The services on which the opposition is based are the following:
Class 35: The administration of frequent flyer bonus programs; provision of frequent flyer bonus awards; promotion of travel services by incentive award programs for frequent travelers; the administration of sales incentive schemes.
Class 39: Air transportation of passengers, mail and cargo; tourism services; organization of excursions; travel agency services; storage of mail and cargo; surface transportation; providing transportation services and travel reservations services through informatics.
The contested services are the following:
Class 35: Advertising, marketing and promotional services.
Class 39: Transport.
Class 42: IT services.
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 services in Class 35
The contested promotional services include, as a broader category, the opponent’s promotion of travel services by incentive award programs for frequent travellers. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.
Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which assess clients’ needs, give information and advice on how to market the products and services and create a personalised advertising strategy in newspapers, websites, videos, internet, etc. The contested advertising, marketing services overlap with the opponent’s promotion of travel services by incentive award programs for frequent travellers as they include specific advertising and marketing services aimed at promoting frequent flyer programmes. Therefore, they are considered identical.
Contested services in Class 39
The contested transport includes, as a broader category, the opponent’s air transportation of passengers, mail and cargo; surface transportation. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.
Contested services in Class 42
The contested IT services are services provided by IT professionals and include services such as computer programming, consultancy, website creation or website hosting. These services are not similar to any of the opponent’s services in Classes 35 or 39. The mere fact that, as the opponent argues, the opponent’s services can be provided through IT systems, does not render them similar, as they have different natures, purposes, relevant publics, providers, methods of use and distribution channels. They are neither complementary nor in competition. The IT services sector is very different from transport, storage and the administration of various promotional activities. They are therefore dissimilar.
Earlier trade mark
The relevant territory is the European Union.
The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
Visually, the signs are similar to the extent that they both contain the words ‘SKY’ and ‘TEAM’, which constitute the entire earlier mark and the first and third verbal elements of the contested sign, respectively. However, they differ in the additional word ‘AIR’ of the contested sign, as well as in the figurative element of the contested sign, which is a blue circle containing four horizontal lines. Given the other elements of the contested sign and the nature of the relevant services (see the conceptual comparison below), the figurative element is likely to be perceived as a stylised winged pilot’s badge.
Aurally, the pronunciation of the signs coincides in the sound of the words ‛SKY’ and ‘TEAM’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the word ‛AIR’ of the contested sign, which has no counterpart in the earlier mark.
Conceptually, the public in the relevant territory will perceive both signs as referring to a team (‘people working together as a group in order to achieve something’) doing an activity in the sky (‘the area above the earth, in which clouds, the sun, etc. can be seen’). Although the contested sign contains an additional concept, that of the word ‘AIR’ (‘the space above the ground, especially high above the ground’) (all definitions taken from Cambridge Dictionary online), this concept is similar to that of the word ‘SKY’ and, therefore, overall, the concepts associated with the verbal elements of the signs are highly similar.
Given the meanings of the verbal elements and the nature of the relevant services, the figurative element of the contested sign is likely to be associated with a winged pilot’s badge.
Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The elements ‘SKY’, in both signs, and ‘AIR’, in the contested sign, will be associated with the space above the earth or ground. As the relevant services are (air) transport (in Class 39) or services related to (air) transport (i.e. the promotion of various air transport-related programmes in Class 35), it is considered that these elements are allusive for all the services.
Furthermore, the contested sign’s figurative element is likely to be perceived as a stylised winged pilot’s badge and as the relevant services relate to air transport, this element is also considered allusive.
The element ‘TEAM’, in both signs, will be associated with a group of people working together to achieve a particular goal. As a team is likely to be seen as an organisational unit, this element is considered to be weak for all services. The relevant public who understands the meaning of this element and will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.
It follows that the element ‘TEAM’, in both signs, is less distinctive than the other elements, which, although allusive, possess a certain degree of distinctiveness.
The earlier mark has no element which could be considered more dominant (visually eye-catching) than the other elements.
The figurative element of the contested sign is the dominant element, as it is the most eye-catching.
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, despite the fact that it is composed of an allusive and a weak element as stated above in section c) of this decision. The combination of these two elements renders the mark as a whole distinctive to an average degree.
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 identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to above average.
Global assessment, other arguments and conclusion
The likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods or services, and vice versa (judgment of 29/09/1998, C‑39/97, ‘Canon’).
The contested services are partly identical and partly dissimilar, and the signs are visually, aurally and conceptually similar.
The signs are visually and aurally similar because both signs include the words ‘SKY’ and ‘TEAM’, which constitute the entire earlier mark. Although all the verbal elements are weak or allusive for the relevant services, in addition to being visually and aurally similar, as a whole they refer to highly similar concepts. Although the contested sign contains an additional word, ‘AIR’, this does not significantly differentiate the signs conceptually. The same applies to the figurative element of the contested sign; this element is likely to be perceived as a pilot’s badge and does not significantly differentiate the signs conceptually.
It is acknowledged that the verbal elements of the contested sign are not visually eye-catching, however they are not negligible and will be clearly perceived by the relevant public. Furthermore, when a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered to have a stronger impact than the latter, because average consumers will more easily refer to the services in question by name rather than by describing figurative elements.
The Opposition Division considers that the differences in the signs are not sufficient to prevent the relevant public, even those with a higher than average degree of attention, from at least associating the two marks.
Furthermore, the identity between some of the services brings the interdependence principle into play. In this regard, the identity between the services outweighs any lesser degree of similarity between the signs.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section b) 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 partially well founded on the basis of the opponent’s Community trade mark registration.
It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.
The rest of the contested services (IT services in Class 42) are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, 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 marks:
Community trade mark registration No 12 467 882 for the figurative mark ;
Community trade mark registration No 12 459 889 for the figurative mark ;
Community trade mark registration No 1 725 498 for the figurative mark ;
Community trade mark registration No 1 451 509 for the word mark ‘SKYTEAM’.
These marks mainly cover the same or a narrower scope of services as the earlier mark compared above. The Opposition Division notes that these earlier rights also cover some services that are not listed in the list of the services of the earlier right compared above, namely services related to travel included in the class in Class 39 (of Community trade mark registration No 12 467 882), transportation, storage and travel services; transportation of passengers and cargo; frequent flyer bonus programs in Class 39 (of Community trade mark registration No 1 725 498) and transportation, storage and travel services in Class 39 (of Community trade mark registration No 1 451 509). However, these services all relate to travel, transport and frequent flyer bonus programmes and are therefore also dissimilar to the contested IT services in Class 42. The mere fact that the opponent’s services can be provided through IT systems does not render them similar, as IT services are used to provide a wide variety of services and belong to a very different sector than transport, storage and the administration of various promotional activities. These services have different natures, purposes, relevant publics, methods of use and distribution channels, and are neither complementary nor in competition. They are thus dissimilar.
Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part 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
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.