OPPOSITION No B 3 055 660

Uber Technologies, Inc., 1455 Market Street, 4^th Floor, 94103 San Francisco, United States of America (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, EC2N 2DG London, United Kingdom (professional representative)

a g a i n s t

Nicolas Garnier de Boisgrollier, 127 bis rue du Ranelagh, 75016 Paris, France (applicant).

On 14/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 660 is upheld for all the contested services.

2. European Union trade mark application No 17 870 900 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 870 900 for the word mark ‘UBERIS’. The opposition is based on, inter alia, international trade mark registration No 1 400 400 designating the European Union for the word mark ‘UBERFREIGHT’. The opponent invoked Article 8(1)(b) EUTMR and in relation to other earlier rights the opponent also invoked Article 8(4) and (5) 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 international trade mark registration No 1 400 400 designating the European Union, as this mark has the broadest scope of protection.

a) The services

The services on which the opposition is based are, inter alia, the following:

Class 35: Business administration services; business management services; business management of freight logistics services.

Class 36: Financing services, namely, fuel advance services; factoring agency services, namely, freight factoring services; insurance services, namely, provision of motor vehicle and commercial transportation insurance and motor vehicle and commercial transportation insurance rate quotes.

The contested services are the following:

Class 35: Business consultancy services relating to the promotion of fund raising campaigns; business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding; advisory services relating to business acquisitions; advisory services relating to business organisation; advisory services relating to commercial transactions; advisory services relating to the corporate structure of businesses; consultancy and advisory services in the field of business strategy.

Class 36: Finance services; project finance; finance (raising of -); arranging of finance; raising of finance; corporate finance consultancy; corporate finance services; arranging finance for businesses; consultations relating to corporate finance; Investment consultancy; investment advice; investment brokerage; investment information; investment analysis; investment trusteeship; investment services; investment research; funds investment; financial investments; fund investments; investment advisory services; investment business services; investment asset management; financial investment brokerage; financial investment fund services; financial investment management services; consultancy of capital investment; private client investment services; hedge fund investment services; administration of fund investment; financial management relating to investment; investment trusteeship and advisory services; financial advice relating to investment; administration of capital investment services; financial services relating to investment; equity investment in international companies; securities investment services for personal investors; consultancy services relating to financial investment; financial management of collective investment schemes; investment of funds for charitable purposes; management of investments for mutual clubs and societies; financial management of risk capital, investment capital and development capital; advisory services relating to investment finance; charitable fundraising; charitable fund raising; charitable fundraising services; charitable fund raising services; fund raising for charitable purposes; providing information relating to charitable fundraising; fundraising; fund management; funds management; fundraising services; mutual fund services; mutual fund establishment; financial fund management; mutual fund distribution; investment fund services; fund investment services; offshore utilised funds; management of investment funds; providing funding for inventors; providing funding for commercial entities; management of a capital investment fund; advisory services relating to mutual funds; venture capital funding services for commercial entities; arranging of loans for securing funds for others; financing services for the securing of funds in respect of ventures; providing fundraising activities to support medical research and procedures for those in need; financial management of holding companies; financial nominees services for the holding of properties for others; provision of finance for business ventures; trustee advisory services; financial advisory services; financial economic advisory services; advisory services relating to investments; financial advisory services for individuals; financial advisory services provided for bankers; advisory services relating to unit trusts; advisory services relating to financial investments; advisory services relating to financial asset management; financial consulting; financial consulting services; capital investment consulting; consulting services relating to corporate finance; investment banking consulting and advisory services; international banking; international fund investment; financial services relating to international securities; advisory services relating to international securities.

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

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

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 business consultancy services relating to the promotion of fund raising campaigns; business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding; advisory services relating to business acquisitions; advisory services relating to business organisation; advisory services relating to commercial transactions; advisory services relating to the corporate structure of businesses; consultancy and advisory services in the field of business strategy are included in the broad category of, or overlap with, the opponent’s business management services. Therefore, they are identical.

Contested services in Class 36

The contested finance services include, as a broader category, the opponent’s financing services, namely, fuel advance services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested project finance; finance (raising of -); arranging of finance; raising of finance; corporate finance consultancy; corporate finance services; arranging finance for businesses; consultations relating to corporate finance; investment consultancy; investment advice; investment brokerage; investment information; investment analysis; investment trusteeship; investment services; investment research; funds investment; financial investments; fund investments; investment advisory services; investment business services; investment asset management; financial investment brokerage; financial investment fund services; financial investment management services; consultancy of capital investment; private client investment services; hedge fund investment services; administration of fund investment; financial management relating to investment; investment trusteeship and advisory services; financial advice relating to investment; administration of capital investment services; financial services relating to investment; equity investment in international companies; securities investment services for personal investors; consultancy services relating to financial investment; financial management of collective investment schemes; investment of funds for charitable purposes; management of investments for mutual clubs and societies; financial management of risk capital, investment capital and development capital; advisory services relating to investment finance; charitable fundraising; charitable fund raising; charitable fundraising services; charitable fund raising services; fund raising for charitable purposes; providing information relating to charitable fundraising; fundraising; fund management; funds management; fundraising services; mutual fund services; mutual fund establishment; financial fund management; mutual fund distribution; investment fund services; fund investment services; offshore utilised funds; management of investment funds; providing funding for inventors; providing funding for commercial entities; management of a capital investment fund; advisory services relating to mutual funds; venture capital funding services for commercial entities; arranging of loans for securing funds for others; financing services for the securing of funds in respect of ventures; providing fundraising activities to support medical research and procedures for those in need; financial management of holding companies; financial nominees services for the holding of properties for others; provision of finance for business ventures; trustee advisory services; financial advisory services; financial economic advisory services; advisory services relating to investments; financial advisory services for individuals; financial advisory services provided for bankers; advisory services relating to unit trusts; advisory services relating to financial investments; advisory services relating to financial asset management; financial consulting; financial consulting services; capital investment consulting; consulting services relating to corporate finance; investment banking consulting and advisory services; international banking; international fund investment; financial services relating to international securities; advisory services relating to international securities are at least similar to the opponent’s financing services, namely, fuel advance services; and to factoring agency services, namely, freight factoring services. These services are provided by the same undertakings, through the same channels and target the same relevant public. Most of these services also have the same nature, as they are different types of financing services.

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 services found to be identical or similar are directed at the public at large and at a professional public with specific knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of purchase and their price.

As far as the financial services are concerned, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (FIG. MARK) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

c) The signs

UBERFREIGHT	UBERIS
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As the signs are meaningful in English, the comparison of the signs will focus on the English-speaking part of the relevant public.

Although the signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The word ‘FREIGHT’ in the earlier mark will be perceived as ‘goods transported in bulk by truck, train, ship, or aircraft’. This element is weak for some of the services in Class 36, as it indicates the subject of the services, namely financing services for freight. For the remaining services that are not directly related to ‘freight’, this word has a normal degree of distinctiveness.

The element ‘IS’ will be perceived as the third person present singular of the verb ‘to be’. This word is distinctive for the relevant services.

The word ‘uber’ or ‘über’ might be dissected in both marks as a combining form ‘denoting an outstanding or supreme example of a particular kind of person or thing’ (information extracted from Oxford Dictionary on 14/05/2019 at https://en.oxforddictionaries.com/definition/us/uber-).

The combination of the word ‘UBER’, with the words ‘FREIGHT’ in the earlier mark and ‘IS’ in the contested sign, is nonsensical and has no immediate clear meaning.

The word ‘UBER’, as such, has a normal degree of distinctiveness, as it is unusual to use it individually, or in combination with a nonsensical noun or verb.

Therefore, for some of the services, the element ‘UBER’ will be the most distinctive element in the earlier mark and for other services, the sign has no elements that are more distinctive than others.

The contested sign has no elements that are more distinctive than others.

Visually and aurally, the signs coincide in the element, ‘UBER’, which is distinctive in both signs. However, they differ in the element ‘FREIGHT’ in the earlier mark, which is weak for some of the services, and ‘IS’ in the contested sign. The fact that the signs coincide in their beginnings is particularly relevant, since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of the element ‘UBER’, and differ in the elements ‘FREIGHT’ and ‘IS’. The signs are conceptually similar to an average degree.

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

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision for some of the relevant services.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has an inherent normal degree of distinctiveness. The relevant public is the public at large and the professional public. The level of attention will vary from average to high.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The conflicting services are partly identical and partly similar.

The signs are visually, aurally and conceptually similar to an average degree.

Taking into account all relevant factors, and especially the average degree of similarity between the signs, and the identity and similarity between the services, the relevant public might be led to believe that the conflicting services come from the same or economically linked undertakings, even by a public with a high degree of attention.

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 c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 400 400 designating the European Union. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier international trade mark registration No 1 400 400 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) 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 applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Chantal VAN RIEL

Saida CRABBE

Marzena MACIAK

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.