OPPOSITION No B 2 923 178

easyGroup Ltd, 10 Ansdell Street, Kensington, W8 5BN, London, United Kingdom (opponent), represented by Kilburn & Strode LLP, Lacon London 84 Theobalds Road, WC1X 8NL, London, United Kingdom (professional representative)

a g a i n s t

Modern Sunrise Innovation GmbH, Spitzergasse 11/2, 1180 Vienna, Austria (applicant), represented by Kliment & Henhapel Patentanwälte OG, Singerstr. 8, 1010, Vienna, Austria (professional representative).

On 28/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 923 178 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 16 500 415 ‘EasyPick’ (word mark). The opposition is based on the following earlier rights:

1. European Union trade mark registration No 10 584 001 for the word mark ‘EASYJET’ (hereinafter ‘Earlier Mark 1’);

2. European Union trade mark registration No 10 583 111 for the word mark ‘EASYGROUP’ (hereinafter ‘Earlier Mark 2’);

3. European Union trade mark registration No 16 123 846 for the word mark ‘easyCome’ (hereinafter ‘Earlier Mark 3’);

4. European Union trade mark registration No 16 119 844 for the word mark ‘easyGo’ (hereinafter ‘Earlier Mark 4’);

5. European Union trade mark registration No 16 084 022 for the word mark ‘easyKiosk’ (hereinafter ‘Earlier Mark 5);

6. European Union trade mark registration No 16 079 675 for the word mark ‘easyLand’ (hereinafter ‘Earlier Mark 6);

7. European Union trade mark registration No  12 492 096 for the word mark ‘EASYPIZZA’ (hereinafter ‘Earlier Mark 7);

8. European Union trade mark registration No 10 735 496 for the word mark ‘EASYHOTEL’ (hereinafter ‘Earlier Mark 8’);

In relation to the Earlier Marks 3, 4, 5, 6 and 7 the opponent invoked Article 8(1)(b) EUTMR. In relation to the Earlier Marks 1, 2 and 8 the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

1. 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 will 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.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

According to the opponent, the Earlier Marks 1 and 2 listed above (in the section REASONS) have reputation in the European Union and the United Kingdom in relation to some of the goods and services for which they are registered. For the Earlier Mark 8 the reputation is claimed in United Kingdom only.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 23/03/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union and/or United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods and/or services for which the opponent has claimed reputation, namely:

Earlier Mark 1 ‘EASYJET’

Class 35: Advertising; business management; business administration; office functions; operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; provision of business information; retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes, cosmetics, non-medicated toilet preparations, perfumes, fragrances, colognes and scents, soaps and cleaning preparations, shampoos, conditioners, moisturisers, tooth cleaning preparations', depilatory preparations, sun-screening and tanning preparations, anti-perspirants, deodorisers and deodorants, sunglasses, personal stereos, MP3 players, CD players, apparatus for playing music and video recordings, jewelry, stones, watches, clocks, books, magazines, newspapers, stationery, calendars, diaries, purses, umbrellas, parasols briefcases, purses, wallets, pouches and handbags, luggage, suitcases, travelling sets, sports bags, bike bags, backpacks, games, playing cards, gymnastic and sporting articles, gymnastic and sporting articles, scooters; marketing and publicity services; dissemination of advertising, marketing and publicity materials.

Class 39: Transport; packaging and storage of goods; travel arrangement; travel information; provision of car parking facilities; transportation of goods, passengers and travelers by air, land, sea and rail; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travelers by land and sea; airline services; baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; rental and hire of aircraft, vehicles and boats; chauffeur services; taxi services; bus services; coach services; rail services; airport transfer services; airport parking services; aircraft parking services; escorting of travelers; travel agency services; tourist office services; advisory and information services relating to the aforesaid services; information services relating to transportation services, travel information and travel booking services provided on-line from a computer database or the Internet.

Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotel services; hotel reservation services; hotel services for the provision of facilities for exhibitions and conferences.

Earlier Mark 2 ‘EASYGROUP’

Class 3: Preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes; cosmetics; non-medicated toilet preparations; perfumes, fragrances, colognes and scents; soaps and cleaning preparations; shampoos, conditioners, moisturisers and rinses; tooth cleaning preparations; depilatory preparations; sun-screening and tanning preparations; polishing preparations, dentifrices, bleaching preparations, hair lotions, anti-perspirants, deodorisers and deodorants, cotton wool; essential oils; preparations and substances for use in massage and aromatherapy.

Class 16: Printed matter and publications; wrapping and packaging; books, manuals, pamphlets, newsletters, albums, newspapers, magazines and periodicals; tickets, vouchers, coupons and travel documents; identity cards; labels and tags; posters, postcards, calendars, diaries, photographs, gift cards and greeting cards; teaching and instructional materials; stationery, artists' materials, writing instruments, brochures, travel document folders, guide books, travellers cheques, badges, promotional and advertising material, signs of paper or cardboard.

Class 35: Advertising, marketing and publicity services; dissemination of advertising, marketing and publicity materials; business organisation, business administration and business management services, business information services, auctioneering services, office functions, promotional services; import-export agency services, business and management consultancy, assistance and advice; purchasing and demonstration of goods for others; retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes, cosmetics, non-medicated toilet preparations, perfumes, fragrances, colognes and scents, soaps and cleaning preparations, shampoos, conditioners, moisturisers, tooth cleaning preparations', depilatory preparations, sun-screening and tanning preparations, anti-perspirants, deodorisers and deodorants, sunglasses, personal stereos, MP3 players, CD players, apparatus for playing music and video recordings, jewelry, stones, watches, clocks, books, magazines, newspapers, stationery, calendars, diaries, purses, umbrellas, parasols briefcases, purses, wallets, pouches and handbags; luggage, suitcases, travelling sets, sports bags, bike bags, backpacks, games and playthings, playing cards, gymnastic and sporting articles, toys; gymnastic and sporting articles, model airplanes, scooters, teddy bears, balls; commercial administration of the licensing of the goods and services of others; advice relating to business management; advice relating to business organisation; business advice; business management advice.

Class 39: Transportation of goods, passengers and travellers by air; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travellers by land and sea; airline services; bus transport services, car transport services, coach services, baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; rental and hire of aircraft, vehicles and boats; aircraft parking services; aircraft fuelling services, travel reservation and travel booking services provided by means of the world wide web, information services concerning travel, including information services enabling customers to compare prices of different companies; travel agency and tourist office services; advisory and information services relating to the aforesaid services; information services relating to transportation services, including information services provided on-line from a computer database or the Internet.

Class 43: Provision of temporary accommodation; provision of food and drink; catering; hotel, restaurant, café and bar services; hotel management and reservation services; nursery, kindergarten and creche services; hotel services for the provision of facilities for exhibitions; providing facilities for exhibitions and conferences.

Earlier Mark 8 ‘EASYHOTEL’

Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotel services; hotel reservation services; hotel services for the provision of facilities for exhibitions and conferences.

The opposition is directed against the following goods and services:

Class 3: Paper products for household and hygienic purposes (as far as they are contained in class 3), namely moist toilet paper; Cosmetic wipes soaked with liquid; Handkerchiefs soaked with liquid; all before-mentioned goods also made of or under the use of tissue or fleece and fluff materials.

Class 5: Sanitary pads; sanitary napkins.

Class 16: Toilet paper; bags, envelopes, pouches of paper or plastics for packaging.

Class 21: Toilet paper holders; toilet Utensils; cleaning instruments (Hand operated); napkin holders, not of precious metal.

Class 35: Retail or wholesale services for toiletpaper, toilet paper holders, sanitary pads and toilet Utensils.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 16/01/2018 the opponent submitted the following evidence:

Exhibit 1: A Witness Statement of 07/08/2013, signed by Mr Paul David Griffiths, the Finance Controller for the company easyGroup. In the Witness Statement, Mr Paul David Griffiths states the following:

• the company easyGroup was incorporated in the year 2000 by Sir Stellos Haji-Ioannou with the aim of establishing a group of companies which trade under the ‘easy’ brand, following the success of EasyJet which he had eastablished;

• since the year 2000, easyGroup has secured about 1 000 trade mark registrations around the world, including ‘EASY’, ‘EASY.COM’, ‘EASYJET’, ‘EASYCAR’, ‘EASYBUS’, ‘EASYVAN’, ‘EASYHOTEL’ and ‘EASYGROUP’;

• all easyGroup businesses use the prefix ‘easy’ followed by a descriptor of the goods and services offered and easyGroup also owns a family of ‘EASY’ marks;

• in relation to the earlier mark ‘EASYJET’, the Witness Statement states that the company was set up in 1995 and it operates like a travel agency, allowing people to book flights and, in addition, to arrange travel-related services, for example car hire, accommodation, airport parking and travel insurance, as well as allowing people to obtain travel information and destination guides. According to the opponent, the company carried over 270 million passengers (until 2013). The airline flies more than 400 routes from more than 100 destinations in almost 30 countries, mainly within Europe. The opponent also provides a table containing the turnover figures for ‘easyJet’. Additionally, the Witness Statement refers to consumer and industry awards that the opponent has received in relation to its ‘easyJet’ airline services and marketing techniques between 1999 and 2010;

• the opponent, easyGroup, has established numerous businesses that operate or have operated under the ‘easy’ brand. These include businesses operating in a range of fields under different trade marks (some also invoked as the basis of the present opposition, for example ‘easyHotel’). The opponent also provides tables with turnover for the mentioned trade marks.

The Witness Statement finally also makes numerous references to the evidence (exhibits PG1-PG65), which was, however, not submitted by the opponent in the present proceedings.

Furthermore, the opponent also filed a number of other exhibits:

Exhibit 2:

• An extract from the opponent’s website containing information about EasyJet presence in 31 countries, 132 airports and that it operates on 802 routes.

• Copies from EasyJet Annual Reports showing ‘Results for the year ending 30 September 2016’ of 15/11/2016 showing the total revenue for EasyJet (4,669 million Pounds), ‘Results for the year ending 30/09/2015’ of 17/11/2015 (revenue 4,686 million Pounds), ‘Results for the year ending 30/09/2014’ of 18/11/2014 (revenue 4,527 million Pounds), ‘Results for the year ending 30/09/2013’ of 18/11/2013 (revenue 4,258 million Pounds).

• www.scotsman.com: article of 16/05/2017, in which it is reported that ‘easyJet’ is seeking more pilots at its Edinburgh and Glasgow bases as part of ‘Scotland’s largest airline’s biggest recruitment drive to date’.

• www.eventmagazine.ca: article of 25/04/2017, which reports EasyJet `s intention to ‘bring an immersive theatre experience to London from 5-6 May’.

• www.telegraph.co.uk: article of 16/05/2017 reporting on EasyJet`s intention to ‘add more seats in locations its competitors are retrenching? from’.

• www.independent.co.uk: article of 14/02/2017 reporting on the success of the founder of EasyJet, Mr. Sir Stellos Haji-Ioannou, who ‘created an airline that would grow to eclipse local rivals such as ……., and overtake …. in passenger numbers…’. The article also states that ‘on an average day in 2017, EasyJet carries more than 200,000 passengers across Europe’.

• www.worldtravelawards.com: article reporting that the company EasyJet received an award for ‘Europe’s Leading Low-Cost Airline’ in 2013.

• an extract from an unknown source from July 2017, mentioning the founder of the EasyJet company and its activities in Greece.

• www.telegraph.co.uk: article of 11/06/2016, mentioning budget airline easyJet and its plans to set up a separate European business in case Britain leaves the European Union.

• www.travel.aol.co.uk: article of 08/10/2016, mentioning EasyJet (British low-cost carrier) as ‘Europe’s best low-cost airline’ in a poll of 16,000 travellers (with more than six in ten UK passengers backing EasyJet, based on customer service and overall flying experience). The article also mentions that ‘online travel agent eDreams.co.uk polled travellers across ten countries (UK, Spain, Germany, Italy, France, Portugal, Sweden, Denmark, Finland and Norway) and found that in addition to being voted the UK’s number one low-cost airline, EasyJet was also the favoured no-frills airline across the continent, taking more than 22% of the votes across Europe.

• www.unicef.org.uk: article mentioning the ‘Change for Good’ partnership launched in 2012 between EasyJet, the UK biggest airline and Unicef. According to the article, EasyJet has raised 7 million Pounds to support Unicef vaccination programmes.

• www.carrentals.co.uk: article of 10/10/2016 reporting that ‘easyJet takes top spot in eDreams poll of best cost airlines’ (eDreams quizzed travellers on their preferred budget carrier). The article mentions that ‘more than a fifth of 16,000 travellers – 22% - named EasyJet as the favourite low-cost European airline’.

• www.campaignlive.co.uk: article of 06/06/2014 reporting that EasyJet won five prizes at 2014 Marketing Society Awards, among others the Grand Prix for its ‘Europe’s by easyJet’ campaign.

• www.theguardian.com: article of 17/11/2015 mentioning that EasyJet profits hit record for fifth consecutive year. It also mentions that EasyJet is the second biggest airline present in France.

• www.standard.co.uk: article of 30/06/2016 mentioning that EasyJet´s boss received an award for personality of the year and an article of 26/10/2016, mentioning airline company EasyJet and its plans to launch new routes from the UK airport Heathrow.

• www.buyingbusinesstravel.com: an article from August 2014, reporting about a 2014 Business Travel Awards event in which the company EasyJet won ‘Best Short-Haul Airline’ award.

• www.independent.co.uk: article of 17/07/2014, reporting that EasyJet is the second best low-cost airline for cheap flights according to Skytrax World Airline Awards which is based on feedback from travellers in over 160 cities, who review over 200 airlines in the world´s largest airline passenger satisfaction survey. According to the article, EasyJet operates over 200 aircraft on 600 domestic and international routes, and it is the second biggest low-cost airline in Europe.

• www.statistics.com: an extract showing the number of passengers uplifted by Easyjet Airline Company Ltd. in the United Kingdom from 2008 to 2015.

• www.fundraising.com: an extract mentioning that EasyJet passengers were first to see UNICEF’s virtual reality film (which was a result of a partnership between EasyJet and UNICEF).

• www.independent.co.uk: an article of 04/11/2015, mentioning that several commissioners called for patrol cars to carry advertising from brands such as EasyJet as a way of alleviating the impact of the budget cuts.

• www.ft.com: an article of 24/01/2017, reporting on EasyJet´s future plans to expand its capacity by 9 % over the financial year up to September 30.

• An extract from Wikipedia, providing information about the EasyJet company (its history, business strategy, destinations, services, sponsorship, etc.).

• Extract from Wikipedia showing an entry for ‘easyJet’ and its history, business strategies, services, sponsorships, etc.

• An extract from the opponent’s website, showing the Route Map with EasyJet departure airports.

Exhibit 3: Documents showing final financial results for the year ended 30/09/2016 of 29/11/2016, the year ended 30/09/2015 of 09/12/2015 and the year ended 30/09/2014 of 09/12/2014 for easyHotel plc, the owner of super budget branded hotels.

Exhibit 4: extracts from different websites:

• www.mirror.co.uk, of 23/09/2015, reporting that easyProperty online estate agency established by the budget airline company EasyJet is launching its own online business serving property-hunters. The new venture easyProperty is online estate agency business.

• www.news.sky.com of 07/12/2015, reporting that Toscafound is investing into easyProperty in return for a stake of 15% in easyProperty.

• www.telegraph.co.uk of 08/12/2015, reporting that easyProperty has raised 25 million Pounds to take on estate agent rivals.

• www.cityam.com containing an interview with Sir Stellos Haji-Ioannou, who created the airline company EasyJet, reporting that EasyGroup is extending its brand into other sectors.

• www.standard.co.uk of 08/03/2015 reporting on easyProperty plans.

Exhibit 5: An extract from www.mirror.co.uk, reporting on the most powerful people in the British food and drink industry. The article mentions, among others, in 99^th place, Sir Stellos Haji-Ioannou, who established easyFoodstore with a range of food and drinks.

Exhibit 6: A document showing a list of all easyCoffee shops in central London and their locations.

Exhibit 7: Pictures of an easyKiosk flyer with prices for several different drinks.

Exhibit 8: A Witness Statement of 04/04/2017 of Mr Cristopher Griffin, Executive of the Museum of Brands, attesting that the ‘easy’ brand is famous and that it has, since the start, been more expansive than ‘easyJet’ alone and covers a diverse range of products and services.

In relation to the witness statements (Exhibits 1 and 8), it should be noted that the probative value of statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish reputation, since such statements have to be considered as having less probative value than evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the witness statements are supported by the other items of evidence.

The evidence shows that the commercial activity of the opponent involves providing budget airline services under the trade mark ‘EASYJET’ and for a substantial period of time (since the year 2000 and even before). The evidence shows that the relevant public was exposed to the trade mark ‘EASYJET’ extensively and, although not particularly exhaustive, it is clear from the evidence as a whole that the trade mark ‘EASYJET’ has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands. This is corroborated by the evidence attached to Exhibit 2 in which ‘EASYJET’ was mentioned as the ‘biggest airline present in France’ (www.guardian.com) and ‘second best-low cost airline for cheap flights’ (www.independent.co.uk) or ‘easyJet takes top spot in eDreams poll of best cost airlines’ (www.carrentals.co.uk). Also the remaining press releases and publications referring to the earlier mark ‘EASYJET’ give some indirect information on the opponent’s investments and its promotional, communication and marketing strategies.There is also a reference to the award Europe’s Leading Low-Cost Airline in 2013 that ‘EASYJET’ has received (i.e. article from www.worldtravelawards.com).

All these facts and evidence allow the Opposition Division to conclude that the earlier trade mark ‘EASYJET’ has been subject to long-standing and intensive use, at least in the United Kingdom and that it was generally known in the relevant market sector, and enjoyed a consolidated position among the leading airlines on the filing date of the EUTM application. Although the evidence does not refer to all the countries of the European Union, the European Court of Justice has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (06/10/2009, C-301/07 ‘PAGO’, EU:C:2009:611, § 29 and 30). Therefore, the Opposition Division acknowledges that reputation proven in the United Kingdom is sufficient also for concluding that the earlier trade mark has a reputation in the European Union.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark ‘EASYJET’ enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods/services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the services on which the opposition is based and for which reputation was claimed. The evidence only refers to transportation of passengers and travelers by air; airline services in Class 39 whereas there is not sufficient reference to the remaining services for which the opponent has claimed reputation. Consequently, the opponent has demonstrated that its trade mark ‘EASYJET’ enjoyed reputation in the European Union and the United Kingdom respectively, on the filing date of the EUTM application, in relation to transportation of passengers and travelers by air; airline services in Class 39.

The evidence does not succeed in establishing that the Earlier Mark 2 ‘EASYGROUP’ and the Earlier Mark 8 ‘EASYHOTEL’ have acquired a reputation in the relevant territories with regard to the goods and/or services for which the opponent claims reputation. The articles taken from different websites do demonstrate that the earlier mark ‘EASYGROUP’ is present in the market for example but they do not indicate the degree of recognition by the relevant public, if the mark is recognised by the relevant public or what is the position of the mark on the market.

On the basis of the documents submitted, the Opposition Division concludes that the opponent failed to prove that the Earlier Marks 2 ‘EASYGROUP’ and 8 ‘EASYHOTEL’ are reputed in the relevant territories with regard to the goods and /or services for which the opponent claims reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that Earlier Marks 2 and 8 have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on these earlier marks.

The examination of the present opposition will continue on the grounds of Article 8(5) EUTMR only on the basis of the Earlier Mark 1.

2. The signs

EASYJET	EasyPick
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is the word mark ‘EASYJET’. Even though the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 30). Therefore, it is reasonable to assume that, even if the earlier mark as a whole does not have any meaning for the public in the relevant territory, the element ‘JET’, included in the earlier mark will be perceived with a meaning ‘a jet-propelled aircraft’ by the part of the relevant public (i.e. English and French speaking part of the public). For some of the relevant services (i.e. services in Class 39), this element is considered to be non-distinctive while for other services in relation to which it has no meaning, it is considered to be distinctive to an average degree.

The word ‘EASY’ included in the earlier mark is a basic English word which means ‘not requiring much labour or effort; not difficult; simple’ and is likely to be understood by the relevant public of the goods concerned in the whole territory of the European Union. This finding has been confirmed by the Boards of Appeal in case 21/02/2017, R 2048/2015-2, § 59 and § 60. As the word ‘EASY’ may laud the services concerned (13/05/2015, T-608/13, easy Air-airtours, EU:T:2015:282, § 38 and 57), it is considered to be non-distinctive.

The contested sign is a word mark composed of the verbal element ‘EasyPick’.

In relation to the contested mark, the Opposition Division is of the opinion that, the relevant consumer may also break it down into elements ‘Easy’ and ‘Pick’. The word ‘EASY’ has the meaning explained above and the considerations mentioned above on the distinctiveness of the word ‘EASY’ are equally applicable here. Therefore, the element ‘EASY’ lacks any ability to function as a badge of origin for the relevant goods and services. The word ‘Pick’ included in the contested mark refers to an act of selecting something from a number of alternatives in English. It is meaningless in other languages. Since this word has no meaning in relation to the relevant goods and services at hand, it is considered to be distinctive to an average degree.

The marks are word mark and obviously have no elements that could be considered more dominant than other elements.

Visually and aurally, the signs coincide in the element ‘easy’. However, they differ in the word ‘jet’ of the earlier mark and the word ‘pick’ of the contested mark.

Given that the common element ‘easy’ is non-distinctive, the relevant public will be inclined to focus on the remaining verbal elements of the signs. In the present case, the element ‘Pick’ of the contested mark and (for part of the goods and services) the element ‘JET’ of the earlier mark are distinctive in relation to the relevant services at hand.

Consequently, the signs are visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

Since the common element ‘easy’ is non-distinctive, the conceptual similarity created by this element cannot be given too much weight. The semantic differences of the other verbal elements ‘JET’ and, where applicable, ‘pick’ also play a differentiating role. Therefore, the signs are conceptually similar to a very low degree.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are considered similar for the purposes of Article 8(5) EUTMR.

3. The ‘link’ between the signs

As seen above, the earlier mark ‘EASYJET’ is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the signs have a certain degree of visual, aural and conceptual similarity as they share the element ‘EASY’ placed at the beginning of both marks. However, this does not mean that the relevant public is likely to establish a link between them. When consideration is given to the goods and services in question (namely the opponent’s transportation of passengers and travelers by air; airline services in Class 39 on the one hand and the contested goods and services in Classes 3, 5, 16, 21 and 35), it is clear that the similarities between the signs in dispute relate to an element which is non-distinctive. As it has been shown above, the common word ‘EASY’ will be understood throughout the relevant territory as referring to something ‘simple’ and may laud all the goods and services concerned. It will therefore be perceived as non-distinctive element (13/05/2015, T-608/13, easy Air-airtours, EU:T:2015:282, § 38 and 57) which cannot identify the commercial origin of the goods and services at issue but, instead, it will indicate that the goods and services offered are easy to use or easy to access. Furthermore, the evidence of reputation submitted by the opponent does not show that the word ‘EASY’ on its own enjoys reputation in the perception of the relevant public.

Therefore, in view of the non-distinctive character of the element ‘EASY’, the similarities between the contested sign ‘EasyPick’ and the earlier mark are unlikely to bring the earlier trade mark to the mind of the average consumer. The element ‘EASY’ indicates a characteristic shared by a wide range of goods and services which means that the consumer is more likely to associate it with the specific feature of the goods and services that it describes rather than with another mark (30/04/2009, C-136/08 P, ‘Camelo’). Moreover, the signs under comparison contain additional elements ‘JET’ and ‘Pick’ which account for visual, aural and, for part of the public, also for conceptual differences.

Taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

The Opposition Division continues with the examination of the opposition under Article 8(1)(b) EUTMR.

2. 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 Earlier Mark 1 ‘EASYJET’.

1. The goods and services

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; deodorants for personal use; preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes; cosmetics; non-medicated toilet preparations; shampoos and conditioners; moisturisers; sun-screening and tanning preparations.

Class 16: Paper, cardboard and goods made from these materials; printed matter; photographs; stationery; packaging materials; printed publications; books, manuals, pamphlets, newsletters, albums, newspapers, magazines and periodicals; tickets, vouchers, coupons and travel documents; identity cards; labels and tags; posters, postcards, calendars, diaries; teaching and instructional materials.

Class 35: Advertising; business management; business administration; office functions; operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; provision of business information; retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes, cosmetics, non-medicated toilet preparations, perfumes, fragrances, colognes and scents, soaps and cleaning preparations, shampoos, conditioners, moisturisers, tooth cleaning preparations', depilatory preparations, sun-screening and tanning preparations, anti-perspirants, deodorisers and deodorants, sunglasses, personal stereos, MP3 players, CD players, apparatus for playing music and video recordings, jewelry, stones, watches, clocks, books, magazines, newspapers, stationery, calendars, diaries, purses, umbrellas, parasols briefcases, purses, wallets, pouches and handbags, luggage, suitcases, travelling sets, sports bags, bike bags, backpacks, games, playing cards, gymnastic and sporting articles, gymnastic and sporting articles, scooters; marketing and publicity services; dissemination of advertising, marketing and publicity materials.

Class 39: Transport; packaging and storage of goods; travel arrangement; travel information; provision of car parking facilities; transportation of goods, passengers and travelers by air, land, sea and rail; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travelers by land and sea; airline services; baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; rental and hire of aircraft, vehicles and boats; chauffeur services; taxi services; bus services; coach services; rail services; airport transfer services; airport parking services; aircraft parking services; escorting of travelers; travel agency services; tourist office services; advisory and information services relating to the aforesaid services; information services relating to transportation services, travel information and travel booking services provided on-line from a computer database or the Internet.

Class 43: Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotel services; hotel reservation services; hotel services for the provision of facilities for exhibitions and conferences.

The contested goods and services are the following:

Class 3: Paper products for household and hygienic purposes (as far as they are contained in class 3), namely moist toilet paper; Cosmetic wipes soaked with liquid; Handkerchiefs soaked with liquid; all before-mentioned goods also made of or under the use of tissue or fleece and fluff materials.

Class 5: Sanitary pads; sanitary napkins.

Class 16: Toilet paper; bags, envelopes, pouches of paper or plastics for packaging.

Class 21: Toilet paper holders; toilet Utensils; cleaning instruments (Hand operated); napkin holders, not of precious metal.

Class 35: Retail or wholesale services for toiletpaper, toilet paper holders, sanitary pads and toilet Utensils.

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.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods in Class 3 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods .

Some of the contested goods are identical (i.e. goods in Class 3) and some of the contested services are similar (i.e. services in Class 35) 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 or similar to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

3. The signs

The signs have already been compared above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

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.

According to the opponent, the earlier trade mark ‘EASYJET’ has a reputation in the European Union and the United Kingdom in connection with part of the goods and services for which it is registered, namely for the services in Classes 35, 39 and 43. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition 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).

The evidence submitted by the opponent in that regard has already been listed and assessed under Article 8(5) EUTMR. The same findings are valid under Article 8(1)(b) EUTMR.

Specifically, the Opposition Division concludes that the earlier mark ‘EASYJET’ acquired reputation and therefore also a high degree of distinctiveness through use for some of the services in Class 39, namely to transportation of passengers and travelers by air; airline services.

However, as regards the remaining relevant goods and services, the distinctiveness of the earlier mark will rest on its distinctiveness per se. In relation to these goods and services the distinctive character of the earlier mark lies in the combination of its respective elements. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of (for a part of the public) non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services were assumed to be identical or similar. The signs are visually, aurally similar to a low degree and conceptually similar to a very low degree, as they coincide in the non-distinctive element ‘EASY’, which is likely to be understood by the relevant public throughout the relevant territory. The level of attention of the relevant public may vary from average to high. The earlier mark ‘EASYJET’ enjoys enhanced distinctiveness as a result of its intensive use, in relation to transportation of passengers and travelers by air; airline services in Class 39. For the remaining relevant goods and services the distinctiveness of the earlier mark is deemed to be normal.

Even though the word ‘EASY’ retained an independent role in the contested mark, it is non-distinctive and is therefore reducing the likelihood of consumer reliance on that element as an indication of origin for the goods at hand. The differing distinctive element ‘Pick’ of the contested mark and also the element ‘JET’ in case of the earlier mark significantly contribute to the overall impression created by the signs. They are clearly perceptible and sufficient to exclude any likelihood of confusion between the signs; this is true even where an average degree of attention is displayed by the public and in relation to identical or similar goods and services.

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 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.

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’.

The opponent must prove that it has used the marks forming the alleged family in the marketplace. For the contested sign to trigger in the consumers’ minds an association with an opponent’s alleged family of marks, the public must be aware that various trade marks with the same characteristics exist. Therefore, the marks forming the alleged family must have been used to such an extent that the relevant public has become familiar with this family of marks as designating the goods and/or services of a particular undertaking.

The opponent refers to various decisions of the Office that confirmed the family of marks, i.e. decisions of the Opposition Division B 754 418 (of 30/01/2008), B 1 001 694 (of 30/01/2008), B 420 457 (of 13/02/2004) and B 634 024 (of 31/01/2005). It also refers to two articles published in Daily Telegraph and Reuters.

The evidence submitted by the opponent during the substantiation period in support of its claim for a family of marks mentions some trade marks with the element ‘EASY’. However, the documents do not contain sufficient indications of the extent and time of use of each of these marks. The opponent did not prove that the marks allegedly forming the family are being used, by, for example, submitting invoices or other evidence of commercial transactions that could show the reality of the commercial use of the marks in the relevant territory and that goods or services bearing these marks were made available to consumers on the market. There is no convincing information demonstrating that consumers are aware that there is a family of marks used in the same fields as those covered by the contested trade mark.

With respect to the previous decisions, it has to be noted that 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 opponent refers only to the decisions and their outcomes. Moreover, the evidence which has been submitted in the mentioned cases is not the same than in the present case and the decisions to which the opponent referred belong to the period between 2004 and 2008, which is way before the publication of the contested mark. Under these circumstances, the Opposition Division bases its findings on only the material submitted in the present proceedings.

In the present case, the opponent failed to prove that it uses a family of ‘easy’ marks. Consequently, the claim of a series of mark cannot be accepted and the argument in relation to the family of marks is not a relevant factor in establishing a likelihood of confusion in the present case.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent also based its opposition on the Earlier Marks 2, 3, 4, 5, 6, 7 and 8 (listed above in the section REASONS). These earlier marks are structured in the same manner as the one which has already been compared, namely they are composed of an element ‘EASY’ which is non-distinctive in relation to the relevant goods and services, followed by another word or expression ‘GROUP’, ‘Come’, ‘Go’, ‘Kiosk’, ‘PIZZA’, ‘Land’ and ‘HOTEL’. These elements are not present in the contested trade mark and they show no stronger visual, aural or conceptual coincidences. The additional elements account for visual, aural, and at least for the English-speaking part of the public also for conceptual differences between the signs. Therefore, the same findings apply to these earlier marks as to the one compared above, even under the presumption that the contested goods and services are identical to the ones covered by these earlier marks.

Therefore, the outcome of the opposition based on the above mentioned earlier trade marks cannot be different. No likelihood of confusion exists with respect to those earlier marks. Therefore, the opposition is also not well founded under Article 8(1)(b) EUTMR.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Oana-Alina STURZA

Janja FELC

Keeva DOHERTY

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.