OPPOSITION No B 3 070 453

Wow Air ehf., Suðurlandsbraut 18, 108 Reykjavík, Iceland (opponent), represented by Cabinet @Mark, 16, rue Milton, 75009 Paris, France (professional representative)

a g a i n s t

HILODI - Historic Lodges & Discoveries, S.A., Rua do Choupelo, nº 250, 4400-088 Vila Nova de Gaia, Portugal (applicant), represented by Alexandra Paixão, Av. António Augusto de Aguiar, Nº 148, 4ºC e 5ºC, 1050-021 Lisboa, Portugal (professional representative).

On 24/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 453 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 886 816 (figurative), after a partial limitation of the contested sign, that is to say, against all the services in Class 35. The opposition is based on European Union trade mark registration No 10 432 052 for the word mark ‘WOW’ and international trade mark application No 1 297 940 designating the European Union for the word mark ‘WOW air’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE IN RELATION TO EARLIER EUTM No 10 432 052

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 10 432 052 for the word mark ‘WOW’.

The request was filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 22/05/2019, the opponent was given two months to file the requested proof of use. The opponent did not submit any evidence concerning the use of the earlier trade mark on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR, insofar as it is based on this earlier mark.

Consequently, the only valid earlier mark that proceeds as basis of the opposition is international trade mark application No 1 297 940 designating the European Union for the word mark ‘WOW air’.

PRELIMINARY REMARK ON SUBSTANTIATION

In the present case, the opponent based its opposition on earlier international trade mark application No 1 297 940 designating the EU.

For reasons of procedural economy, the Opposition Division will not enter into an assessment of whether this only remaining earlier right has been properly substantiated. By contrast, the Opposition Division considers it more appropriate to proceed with the examination below as if the earlier right was duly substantiated, taking note of the fact that this is the best possible scenario for the opponent.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The services

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

Class 39: Transport; packaging and storage of goods; travel arrangement; transportation activites; transportation of passengers and goods; airline services, including transportation of passengers and goods by air; travel booking services provided by travel agencies; provision of travel and flight information; providing on-line information in the field of travel and flights; rental of airplanes; rental of airplane crews; on-board airplane services; sale of tickets and/or travel arrangement; on-line sale of tickets and/or travel arrangement; providing information in the field of travel arrangement through the Internet; booking and reservation of tickets and/or travel arrangements; on-line booking and reservation of tickets and/or travel arrangements.

The contested services are the following:

Class 35: Merchandising.

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

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The contested services in Class 35 are business services falling under the category of advertising/marketing services provided by special agencies, in particular merchandising in a part of the marketing involved with promoting sales of merchandise, as by consideration of the most effective means of selecting, pricing, displaying, and advertising items for sale in a retail store.

The opponent’s mark is protected for a wide range of transport and travel services, including for some auxiliary services such as packing, storing, rental of transport vehicles, in Class 39.

None of the above categories of services share any commonalities. Even as services, they have different natures, methods of use and purposes, being in particular increasing commercial sales of an undertaking versus moving goods and humans/animals over distance. These services target different publics and will generally be offered via completely distinct distribution channels — marketing agencies versus travel and transport agencies. Consumers will be perfectly aware of their different commercial origins. Moreover, they are not complementary. Therefore, the services are considered dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

For the sake of completeness, it is noted that whether or not the earlier right was substantiated in the course of the proceedings finally remains irrelevant. In other words, it would have no material effect on the outcome reached above.

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

Tzvetelina IANCHEVA

Manuela RUSEVA

Mads Bjørn Georg JENSEN

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.