OPPOSITION No B 2 660 473

AIDA Cruises - German Branch of Costa Crociere S.P.A., Am Strande 3d, 18055 Rostock, Germany (opponent), represented by Dompatent von Kreisler Selting Werner - Partnerschaft von Patentanwälten und Rechtsanwälten MbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)

a g a i n s t

Beijing Innovate Aishangjia Technology Co., Ltd, 11A Unit1, Bldg.3, 48 Zhichun Rd., Haidian Dist., Beijing, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 27/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 660 473 is partially upheld, namely for the following contested goods:

Class 9: Cabinets for loudspeakers; Headphones; Socks, electrically heated; Television apparatus; Computers; Global Positioning System [GPS] apparatus; Theft prevention installations, electric; Mobile phones; Tripods for cameras.

Class 25: Scarfs; Shawls; Pelerines; Jerseys [clothing]; Liveries; Braces for clothing [suspenders]; Bath robes.

2. European Union trade mark application No 14 899 504 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 899 504 , namely against all the goods in Classes 9 and 25. The opposition is based on, inter alia, European Union trade mark registration No 12 773 371 ‘AIDA’. 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 12 773 371 ‘AIDA’.

a) The goods and services

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

Class 3: Cosmetics; Perfumery; Essential oils; Cotton wool for cosmetic purposes.

Class 8: Tableware (cutlery); Cutlery holders.

Class 9: Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers for cruises; Headphones; Balancing apparatus.

Class 12: Vehicles; Apparatus for locomotion by land, air or water; Passenger ships; Bicycles.

Class 14: Jewellery; Ornaments [jewellery, jewelry (Am)]; Jewellery stones; Timepieces; Time instruments.

Class 16: Bookbinding material; Photographs; Paper; Cardboard, stationery; Artists' materials; Brochures relating to cruises; Catalogues relating to cruises; Plastic materials for packaging, included in class 16; Calendars; Tissues of paper; Paper towels; Tissues of paper for removing make-up.

Class 18: Leather and imitation leather; Trunks and travelling bags; Luggage bags; Umbrellas; Parasols; Walking sticks; Shopping bags; Hand bags; Baggage.

Class 20: Furniture; Mirrors (silvered glass); Frames.

Class 21: Household or kitchen utensils and containers; Glassware, porcelain and earthenware included in class 21.

Class 24: Textiles and textile goods, included in class 24; Bed and table covers; Bed clothes and blankets.

Class 25: Clothing; Footwear; Headgear.

Class 26: Key straps; Artificial flowers.

Class 27: Mats; Mats; Floor covering materials for existing floors.

Class 28: Toys; Toys; Gymnastic and sporting articles, included in class 28; Playing cards; Models of vehicles; Golf bags, with and without wheels.

Class 30: Coffee; Tea; Cocoa; Chocolate; Pastry confectionery; Cake dough; Bread; Edible ices; Honey; muesli; Pizza; Puddings; Rusks; Candy.

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (excluding beer).

Class 34: Tobacco; Smokers' articles; Matches; Lighters.

Class 35: Advertising; Retailing, namely of travel requisites, cosmetics, perfumery, essential oils, jewellery, precious stones, horological and chronometric instruments, glassware, porcelain, earthenware, clothes, footwear, headgear, lanyards, games, playthings, gymnastic and sporting articles, trunks and travelling bags, umbrellas, parasols, shopping bags, handbags and travel bags; Arranging of contracts, for others, for the providing of services.

Class 39: Travel arrangement, in particular cruises and tours; Transport; Arranging of tours; Travel arrangement.

Class 40: Photographic film development; Photographic printing.

Class 41: Translation and interpretation; Education, other than in the field of music; Providing of training, Other than in the field of music; Entertainment, Other than in the field of music; Sporting and cultural activities, other than musical performances; Discotheque services; Theatre services; Operation of bathing facilities; Swimming pool and water chute complex services; Photography services, included in class 41; Videotape film production; Organisation of seminars; Courses and lectures; Conducting of sports programmes, in particular involving cycling, diving, golf.

Class 43: Temporary accommodation; Restaurants, cafeterias, cafes, bars and theatres; Catering; Holiday camp services; Room reservation services; Hotel services; Child care services; Bar.

Class 44: Medical assistance; Floral design; Manicuring; Beauty salons; Massage; Operation of bathing facilities; Human hygiene and beauty care.

The contested goods are the following:

Class 9: Cabinets for loudspeakers; Batteries; Covers for electric outlets; Headphones; Socks, electrically heated; Television apparatus; Computers; Global Positioning System [GPS] apparatus; Control panels [electricity]; Theft prevention installations, electric; Electrolysers; Materials for electricity mains [wires, cables]; Mobile phones; Tripods for cameras.

Class 25: Scarfs; Shawls; Pelerines; Jerseys [clothing]; Liveries; Braces for clothing [suspenders]; Bath robes.

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

Headphones are identically contained in both lists of goods.

The contested television apparatus; computers; mobile phones; global positioning system [gps] apparatus; theft prevention installations, electric are included in the broad category of, or overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images in Class 9 since all these devices do record and transmit and/or display images. Therefore, they are identical.

The contested cabinets for loudspeakers are similar to the opponent’s apparatus for transmission or reproduction of sound in Class 9 as they usually coincide in producer and relevant public. Furthermore they are complementary.

The contested tripods for cameras are similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images in Class 9 (which include cameras), as they usually coincide in producer and relevant public. Furthermore, they are complementary.

The contested socks, electrically heated are similar to a low degree to the opponent’s clothing in Class 25 as they have the same nature. They usually coincide in relevant public and method of use.

The remaining contested goods in Class 9, namely, batteries; covers for electric outlets; control panels [electricity]; electrolysers; materials for electricity mains [wires, cables] have different natures, purposes and methods of use compared to all the goods and services of the opponent. They have different usual origins, different distribution channels and users. These goods are dissimilar.

Contested goods in Class 25

The contested scarfs; shawls; pelerines; jerseys [clothing]; liveries; braces for clothing [suspenders]; bath robes are included in the opponent’s broad category clothing. 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 found to be identical or similar to various degrees are directed at the public at large and at customers with specific professional knowledge or expertise.

The degree of attention ranges from average to high, depending on the specific nature of the goods.

c) The signs

AIDA
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.

The earlier mark ‘AIDA’ is meaningful in French as the third person singular of the verb ‘aider’ (to help) in preterit (passé simple). For other consumers such as the Spanish-speaking part of the public, it may be understood as a female name and others may understand it as a reference to a famous opera. For some consumers, however, particularly for English speakers, no concept can be attributed to this word.

The contested sign is perceived as a word ‘AIKA’, depicted in a stylised typeface. The English speakers will perceive a meaning neither in the word element ‘AIDA’ nor in the word ‘AIKA’. Therefore, the comparison will focus on the English-speaking part of the public.

As the word elements of the marks have no meaning for the English-speaking part of the relevant public, they are distinctive.

Visually, the signs coincide in the string of letters ‘AI_A’ identically present in both signs. The signs differ in their respective third letter ‘D’ versus ‘K’ and in the stylisation elements of the contested sign which do not have counterpart in the earlier mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘AI_A’ present identically in both signs and differs in the sound of the letters ‘D’ in the earlier mark versus ‘K’ in the contested sign. The signs have the same length and rhythm.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 goods and 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 goods have been found identical, similar to various degrees and also dissimilar to the opponent’s goods and services. The visual, aural and conceptual aspects have been examined.

The earlier mark and the contested sign have been found to be similar to the extent that they have the letters ‘AI_A’ in common. This coincidence provides the signs with the same length and with the same rhythm and intonation when pronounced. The difference lies in the letters D/K in the middle of the signs, in addition to the slight stylization of the letters in the contested sign.

However, these differences can be easily overlooked, and, in any event cannot outweigh the prevailing coinciding letters perceived by the public. The similarities between the signs are thus sufficient to cause at least the English-speaking part of the public to believe that the conflicting goods - which are identical and similar to various degrees - come from the same undertakings.

Account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). As 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), the Opposition Division considers that even when displaying a high degree of attention at the time of the purchase, they could overlook the differences between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 773 371. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark. The same applies to goods found similar to a low degree due to the sufficient degree of similarity between the signs.

The rest of the contested goods 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 goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 3 947 694 ‘AIDA Cruises’, for services in Classes 39 and 43.

 European Union trade mark registration No 4 880 209 , for goods and services in Classes 3, 9, 12, 14, 16, 18, 20, 24, 25, 27, 28, 30, 32, 33, 34, 35, 39, 40, 41, 43and 44.

 European Union trade mark registration No 4 681 987 ‘AIDA’ for goods and services in Classes 3, 12, 16, 18, 24, 25, 28, 30, 32, 33, 39, 41, 43 and 44.

Since the mark No 4 681 987 ‘AIDA’ is identical to the one which has been compared and covers the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements and additional words which are not present in the contested trade mark.

Moreover, they cover either the same or a narrower scope of the goods and services with the exception of EUTM No 4 880 209 which covers additional goods, in Class 9, namely software, magnetic data carriers, optical storage media. However, these are clearly different to the contested goods that were considered dissimilar to the opponent’s goods and services in the comparison above. These goods have different nature, purpose and methods of use compared to the contested goods. They differ in manufacturers, distribution channels and consumers.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Zuzanna STOJKOWICZ

Erkki Münter

Marine DARTEYRE

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.