trade marks and designs

OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
The Boards of Appeal
UNOFFICIAL DOCUMENT FOR INFORMATION PURPOSES ONLY
Language of the case: Spanish
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DECISION
of the Second Board of Appeal
of 18 March 2015
In Case R 2539/2013-2
Gema Rivas Soria
Gran Vía de Colón, 10-5-B
ES-18010 Granada
Spain
Applicant for a declaration of
invalidity / Appellant
represented by Antonio Salcedo Martín, Gran Vía de Colón 10, 5º B, ES-18010
Granada, Spain
v
Viajes El Corte Inglés, S.A.
Hermosilla, 112
ES-28009 Madrid
Spain
Proprietor of the Community trade
mark / Respondent
represented by J.M. Toro, S.L., Viriato, 56, 1º izda, ES-28010 Madrid, Spain
APPEAL relating to invalidity proceedings No 6455 C (registered Community trade
mark No 5 943 568)
THE SECOND BOARD OF APPEAL
composed
of
T. de las Heras (Chairperson),
U. Wennermark (Member)
C. Govers (Member)
Registrar: H. Dijkema
gives the following
DECISION OF 18 MARCH 2015 – R 2539/2013-2 – Tu viaje empieza aquí VIAJES El Corte Inglés
and
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Decision
Summary of the facts
1
By an application received at the Office on 28 May 2007, Viajes El Corte Inglés,
S.A. (‘the proprietor of the Community trade mark’ or ‘the proprietor’) sought to
register the following figurative mark:
for the following goods and services:
Class 16 – Magazines, catalogues.
Class 35 – Advertising promotions for travel agencies.
Class 38 – Telecommunications.
Class 39 – Travel arrangement.
Class 43 – Restaurant services (food); temporary accommodation.
2
The application was published in Community Trade Marks Bulletin No 056/2007
of 1 October 2007 and the trade mark was registered on 3 March 2008.
3
On 28 March 2012, Gema Rivas Soria (‘the applicant for a declaration of
invalidity’ or ‘the applicant’) filed an application for a declaration of invalidity in
respect of said Community trade mark.
4
The application for a declaration of invalidity was based on Spanish figurative
mark No 2 742 363:
applied for on 27 November 2006 and registered on 23 May 2007, for ‘travel
agency services, arranging of passenger transport, travel arrangement, booking of
travel, organising of excursions, sightseeing (tourism)’ in Class 39. It was also
based on the word mark ‘TU VIAJE EMPIEZA AQUÍ’ [your journey begins
here], allegedly well known in Spain, and on the domain names ‘aquí empieza tu
viaje’ [here begins your journey] and ‘aquí empieza tu viaje.com’.
5
The application for a declaration of invalidity was based on the grounds provided
for in Article 53(1)(a) CTMR, in conjunction with Article 8(1)(a) and (b)
and (5) CTMR and Article 8(2) CTMR, Article 53(2) CTMR and Article 52(1)
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(a) CTMR in conjunction with Article 7(1)(c) and (g) CTMR, and
Article 74 CTMR (the latter ground being subsequently withdrawn by the
applicant).
6
The application for a declaration of invalidity was directed against some of the
services registered, specifically ‘travel arrangement’ in Class 39, and was based
on the services protected under the earlier trade mark, namely ‘travel agency
services, arranging of passenger transport, travel arrangement, booking of travel,
organising of excursions, sightseeing (tourism)’ in Class 39.
7
The applicant for a declaration of invalidity claimed that there was a likelihood of
confusion owing to the high level of similarity between the trade marks and the
identical and similar nature of the services they each designate. Furthermore, the
applicant for a declaration of invalidity stated that her earlier Spanish trade mark
had a reputation and a high degree of distinctive character.
8
The proprietor of the Community trade mark stated in response that there was no
likelihood of confusion, given that the dominant element in its trade mark
consisted of ‘VIAJES EL CORTE INGLÉS’, a well-known sign with a reputation
which is familiar to the general public in Spain. The expression ‘AQUÍ
EMPIEZA TU VIAJE’ or variations thereof cannot be monopolised by any
undertaking whose activity includes travel arrangement. The proprietor also made
reference to its reputation and to other Spanish trade marks belonging to it, and to
the fact that the expression ‘AQUÍ EMPIEZA TU VIAJE’ is included in other
trade marks belonging to third parties since it is descriptive, and therefore said
trade marks are able to coexist peacefully on the market. What is more, the
proprietor observed that the applicant for a declaration of invalidity does not
carry on any activity related to travel agency services and has not provided proof
of use in respect of the earlier trade mark.
9
In support of her arguments, the applicant for a declaration of invalidity
submitted the following:
 Certificates from ‘Dipthylom Imagen Digital, SLL’ demonstrating their use of
the earlier Spanish trade mark.
 An application for certification on the register pertaining to Spanish trade mark
No 2 742 363.
10 In support of its arguments, the proprietor of the Community trade mark
furnished the following proof:
 Extracts from the Spanish Patent and Trade Mark Office (‘SPTO’) detailing
four trade marks belonging to third parties which include ‘TU VIAJE
EMPIEZA AQUÍ’ or similar expressions.
11 On 10 October 2013, the Cancellation Division gave decision No 6455 C
(‘the contested decision’), in which it dismissed, in its entirety, the application for
a declaration of invalidity in respect of Community trade mark No 5 943 568 as
regards the contested services ‘travel arrangement’ in Class 39.
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12 The Cancellation Division based its decision on the following reasoning:
Comparison of the services
— The contested services appear in the list of services of the earlier trade mark,
and they are therefore identical.
Comparison of the signs
— The relevant territory is Spain.
— Visually, the signs are similar insofar as they both contain the words ‘AQUÍ
EMPIEZA TU VIAJE’ of the earlier trade mark, the word order being switched
in the contested trade mark. However, they differ in terms of the word elements
‘VIAJES EL CORTE INGLÉS’ in the contested trade mark and ‘GERISO’ in
the earlier trade mark. They also differ in terms of the stylisation of the word
elements and the colours used in the contested trade mark (namely, green).
Furthermore, the earlier trade mark includes a representation of a globe, which
has no equivalent in the contested trade mark, whilst in the latter there is a
horizontal line.
— Aurally, the earlier trade mark is pronounced ‘GERISO AQUÍ EMPIEZA TU
VIAJE’ [GERISO here begins your journey], whereas the contested trade mark
would be pronounced ‘TU VIAJE EMPIEZA AQUÍ VIAJES EL CORTE
INGLÉS’ [your journey begins here El Corte Inglés Travel]. The trade marks
have the same pronunciation for the expression ‘TU VIAJE EMPIEZA AQUÍ’,
even though the words are not in the same order and are not placed in the same
positions within the signs. The pronunciation differs in terms of the words
‘GERISO’ in the earlier trade mark and ‘VIAJES EL CORTE INGLÉS’ in the
contested trade mark.
— Conceptually, ‘GERISO’ in the earlier trade mark is devoid of meaning in the
relevant territory. The slogan ‘AQUÍ EMPIEZA TU VIAJE’ is made up of four
basic Spanish-language words. The slogan in the contested trade mark contains
the same words but the order is switched, although the meaning is the same.
The other word in the contested trade mark, ‘VIAJES’ [journeys/travel], refers
to the same concept of travel. However, ‘El Corte Inglés’ [the English cut],
which can be taken as a reference to English-style tailoring, has no equivalent
in the earlier trade mark. The signs are therefore conceptually similar insofar as
they both contain a slogan which is semantically identical.
— Bearing in mind the visual, aural and conceptual similarities mentioned above,
the signs are considered to be similar.
Distinctive and dominant elements of the signs
— The element ‘VIAJES EL CORTE INGLÉS’ is the dominant element of the
contested sign, since it is the most visually eye-catching element owing to the
use of the colour green and the size of the letters in comparison to the slogan,
‘TU VIAJE EMPIEZA AQUÍ’. However, the earlier trade mark has no
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elements which could be considered dominant (more visually eye-catching than
other elements).
— ‘AQUÍ EMPIEZA TU VIAJE’ (in the earlier trade mark) and ‘TU VIAJE
EMPIEZA AQUÍ’ are laudatory expressions as they invite the public to embark
upon a journey, and said element is deemed to be weak in respect of the
services in Class 39. The public will understand the meaning of the element
and will not pay as much attention to it as it will to the other, more distinctive
elements of the trade mark.
— Therefore, when it comes to assessing the likelihood of confusion between the
trade marks, this weak element will be of lesser impact. The term ‘VIAJES’ in
the contested trade mark is also descriptive of the services, and thus the same
considerations as mentioned above are applicable. The figurative element in the
earlier trade mark, a representation of a globe, alludes to the services in
question, which is likewise detrimental to the distinctive character of said trade
mark.
Distinctive character of the earlier trade mark
— According to the applicant, the earlier trade mark enjoys a reputation in Spain
in respect of the services for which it is registered.
— Having examined the proof furnished by the applicant, the Cancellation
Division considers that the evidence supplied does not demonstrate that the
earlier trade mark has acquired a high degree of distinctive character through
use. The evidence contains no information on the extent of said use, and does
not give any indication as to the trade mark’s level of repute amongst the
relevant public.
— Furthermore, there is no information on the sales volume or market share held
by the trade mark, nor on the scope of the measures taken to promote it. As a
consequence, the evidence does not demonstrate the trade mark’s level of
repute, nor that it is familiar to a significant portion of the relevant public.
Given these circumstances, the Cancellation Division concludes that the
applicant has failed to demonstrate that the earlier trade mark enjoys a
reputation.
— The distinctive character of the earlier trade mark will consequently be
examined on the basis of its intrinsic distinctive character.
— In the present case, considering the earlier trade mark as a whole, the
distinctive character thereof must be deemed normal despite the fact that it
includes weak elements.
Relevant public. Level of attention
— In the present case, those services that are deemed identical target the general
public.
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— However, given the nature of the services, the level of attention can be
considered average to high, since it is possible that consumers will pay greater
attention to services involving accommodation or travel as these can sometimes
be expensive.
Global appreciation, other arguments and conclusion
— The earlier trade mark has a normal degree of distinctive character, but includes
elements that are weak in respect of the services in Class 39.
— The slogan that appears in both signs (albeit with a different word order) is
weak and the public will not pay as much attention to this element as it will to
the other, more distinctive elements of the trade marks. In addition, the four
words of the slogan are not dominant within the contested trade mark as they
are written in a small font. It is in fact the other word elements that are visually
dominant in the contested trade mark, and furthermore ‘El Corte Inglés’ is
entirely distinctive as regards the services in question.
— The overall impression conveyed by the trade marks is that they are different,
as the signs contain other word and figurative elements which differentiate
them to a considerable extent.
— In light of all the aforesaid, the Cancellation Division takes the view that there
is no likelihood of confusion on the part of the public. The provisions of
Article 8(1)(b) CTMR therefore do not apply.
Likelihood of confusion based on well-known trade marks within the meaning
of Article 6bis of the Paris Convention. Article 8(2)(c) CTMR in conjunction
with Article 8(1)(b) CTMR
— The applicant also based her application for a declaration of invalidity on the
word mark ‘TU VIAJE EMPIEZA AQUÍ’, allegedly well known in Spain in
respect of ‘travel agency services, arranging of passenger transport, travel
arrangement, booking of travel, organising of excursions, sightseeing (tourism)’
in Class 39, within the meaning of Article 8(2)(c) CTMR in conjunction with
Article 8(1)(b) CTMR.
— The Cancellation Division has examined the evidence submitted and has
concluded that it is not sufficient to prove that the earlier sign is well known in
Spain. The same conclusion applies to the trade mark in question as the
documentation supplied contains no information on the trade mark’s level of
repute amongst the relevant public, and the points outlined above are applicable
here, too.
Reputation. Article 8(5) CTMR
— The grounds for refusal indicated in Article 8(5) CTMR are cumulative, and
therefore failure to satisfy one of them is sufficient for the application to be
refused pursuant to Article 8(5) CTMR (16.12.2010, T-345/08, & T-357/08,
Botolist / Botocyl, EU:T:2010:529, § 41). It should, however, be pointed out
that meeting said conditions may not be enough. Thus, the application for a
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declaration of invalidity may fail if the applicant successfully proves that there
was due cause to use the contested trade mark.
— In the present case, the proprietor has not claimed due cause to use the
contested trade mark. Consequently, in the absence of any indications to the
contrary, it must be assumed that no due cause exists.
— The signs have already been compared as part of the examination of the
grounds for refusal under Article 8(1)(b) CTMR, and the findings of that
examination are mentioned again here as they are equally valid for the purposes
of Article 8(5) CTMR.
— As stated above, the evidence provided does not give any indication as to the
trade mark’s level of repute amongst the relevant public. Furthermore, there is
no information on the sales volume or market share held by the trade mark, nor
on the scope of the measures taken to promote it. As a consequence, the
evidence does not demonstrate the trade mark’s level of repute, nor that it is
familiar to a significant portion of the relevant public. Given these
circumstances, the Cancellation Division concludes that the applicant has failed
to demonstrate that the trade mark enjoys a reputation.
Other earlier rights. Article 53(2) CTMR
— The applicant has invoked:
(a) A right to a name under Article 53(2)(a) CTMR.
(b) A copyright under Article 53(2)(c) CTMR.
(c) An industrial property right under Article 53(2)(d) CTMR in respect of the
trade mark
and ‘TU VIAJE EMPIEZA AQUÍ’
together with the domain names ‘aquí empieza tu viaje’ and ‘aquí empieza
tu viaje.com’.
— In the case in point, the applicant makes reference to Article 6(1)(b) of the
Spanish Law on Trade Marks and has submitted the documents cited above.
She has not, however, forwarded any information concerning how the national
legislation applies, nor any details on the scope of protection.
— Specifically, the applicant has not provided any information on precisely what
the rights invoked might cover or on the conditions that must be met in the
present case in order for the applicant to be able to prohibit use of the contested
trade mark under Spanish law. As a result, the Cancellation Division does not
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have sufficient information regarding the legal protection enjoyed by the types
of rights invoked.
Article 52(1)(a) CTMR in conjunction with Article 7 CTMR
— The contested Community trade mark contains the slogan ‘TU VIAJE
EMPIEZA AQUÍ’ and the word elements ‘VIAJES EL CORTE INGLÉS’, in
stylised green letters. As already explained, it is true that the slogan in question
is descriptive of the services in Class 39, as is the word ‘VIAJES’
[journeys/travel]. However, it must be borne in mind that, viewed as a whole,
the contested Community trade mark cannot be considered descriptive of said
services, owing to the presence of elements that are wholly
distinctive – namely ‘El Corte Inglés’. Said element is not insignificant, and
will be clearly noticed by consumers.
— It is therefore obvious that, in view of the combination of descriptive and
non-descriptive elements, the trade mark does not consist exclusively of signs
which may serve, in trade, to designate the kind, quality, quantity, intended
purpose, value, geographical origin or the time of production of the goods, or
other characteristics of the services.
— In terms of the argument that it would be unfair to allow an undertaking to
prevent other competitors from using the words ‘TU VIAJE EMPIEZA AQUÍ’,
it is pointed out that the register gives protection to the contested trade mark as
a whole and not to the individual words taken in isolation, and that said
protection will not stop other competitors from using the terms so long as it can
be proved that those terms are effectively descriptive or generic.
— The Cancellation Division concludes that the applicant has not demonstrated
that the elements of the contested Community trade mark are descriptive of the
relevant services in Class 39. As a result, the provisions of Article 7(1)
(c) CTMR are not applicable and the application for a declaration of invalidity
must be rejected in so far as it is based on this ground.
— In the present case, the trade mark does not include any information that
unequivocally contradicts the list of services, since all of the services listed are,
in principle, connected with journeys or travel. As there is no contradiction
between the terms present in the contested trade mark and the list of services
claimed by it, it must be concluded that Article 7(1)(g) CTMR does not apply
either.
— In light of all the foregoing, the application for a declaration of invalidity must
be rejected insofar as it is based on the absolute and relative grounds for
invalidity described above.
13 On 16 December 2013, the applicant for a declaration of
invalidity filed notice of appeal against the contested decision,
submitting the statement of grounds of appeal on
17 February 2014.
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14 On 27 March 2014, the proprietor of the Community trade mark
was notified of the applicant’s grounds of appeal and was given
a period of two months in which to file its observations, which it
submitted on 10 June 2014.
Submissions and arguments of the parties
15 The applicant for a declaration of invalidity requests that the Board allow the
appeal filed and cancel the registration of Community trade mark No 5 943 568
in respect of all the contested services. Her arguments may be summarised as
follows:
— Contrary to that stated by the Cancellation Division, there is a likelihood of
confusion for the public because there is an aural and conceptual similarity
between the respective slogans, ‘TU VIAJE EMPIEZA AQUÍ’ belonging to the
proprietor of the Community trade mark and ‘AQUÍ EMPIEZA TU VIAJE’
belonging to the applicant.
— The signs that distinguish the two trade marks are those of the undertakings to
which they belong, rather than those of the trade marks themselves.
Consequently, if an undertaking such as ‘El Corte Inglés’, like any other
undertaking with a prestigious reputation, should register a trade mark, a
little-known undertaking could not apply for a declaration of invalidity in
respect of said trade mark even if it held a prior registration, as is the case with
the trade mark ‘AQUÍ EMPIEZA TU VIAJE’.
— The trade mark ‘AQUÍ EMPIEZA TU VIAJE’ has been on the market and in
use since August 2003, and is also part of a website with the same name, in
combination with the domain names ‘aquí empieza tu viaje’ and ‘aquí empieza
tu viaje.com’; this is unequivocal proof of its use over time, its reputation and
its relevance.
— Upon hearing ‘VIAJES EL CORTE INGLÉS’, the relevant public will not
notice whether the expression that comes before or after it is ‘TU VIAJE
EMPIEZA AQUÍ’; the part which is actually relevant, and will make a lasting
aural impression, is ‘VIAJES EL CORTE INGLÉS’ and the fact that ‘El Corte
Inglés’ is offering travel services.
— By contrast, when the relevant public hear ‘AQUÍ EMPIEZA TU VIAJE’, they
will know that they are being offered travel services or at least something
connected with travel, regardless of who is making the offer.
— As regards the likelihood of confusion on the basis of well-known trade marks,
under Article 8(2)(c) and (1)(b) CTMR, contrary to that stated by the
Cancellation Division, a trade mark’s reputation in terms of whether it is
familiar is dependent on it being registered.
— Furthermore, repute is acquired as a result of use over time, which has been
proved by furnishing the SPTO registration certificate, and the fact that the
trade mark had been in use since August 2003 was proved by means of the
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website from the servers of the undertaking ‘Dipthylom Imagen Digital SSL’,
and the domain names ‘aquí empieza tu viaje’ and ‘aquí empieza tu viaje.com’
are also registered, which gives further proof of its use over time.
— The applicant states that the issue of repute, under Article 8(5) CTMR,
constitutes a further ground for invalidity, but is not in any way cumulative
with the rest of the grounds contained in that article. However, the Cancellation
Division has carried out the entire examination of the grounds for invalidity by
interpreting said grounds cumulatively, which implies that they must all be met,
without exception, in order to comply with the ground for invalidity invoked in
respect of the trade mark.
Other earlier rights – Article 53(2) CTMR
— The applicant does not understand why, in examining the earlier rights, the
Cancellation Division did not acknowledge that the applicant’s earlier trade
mark ‘AQUI EMPIEZA TU VIAJE’ is registered with the SPTO under
No 2 742 363 (with an application date of 27 November 2006 and grant date of
23 May 2007, i.e. earlier than the contested trade mark). A certified copy of the
SPTO registration certificate has been supplied, and use of the trade mark over
time has been proved. In what way is this not sufficient to demonstrate the
applicant’s right as proprietor of her trade mark, and her right to object to
others using a similar trade mark that might give rise to mistakes and confusion
amongst users of the service for which it was registered? The applicant
registered her trade mark earlier, and since she is the creator and proprietor the
registration gives her the right to use the name and image and to raise an
objection if others use an identical or similar trade mark, as is the case here.
— The applicant sought a declaration of invalidity from OHIM in respect of the
contested trade mark, under the protection of a preferential right which comes
from having registered her national trade mark with the SPTO prior to the
registration of the contested trade mark by El Corte Inglés; this large
undertaking’s trade mark bears a high degree of aural, grammatical and
conceptual similarity to the applicant’s earlier trade mark and this gives rise to
a likelihood of confusion since both trade mark names comprise four identical
words placed in different positions, but with the same meaning and content
from the point of view of the relevant public.
16 The proprietor of the Community trade mark requests that the Board dismiss the
appeal filed and uphold the registration of Community trade mark No 5 943 568
on the basis that there is no likelihood of confusion. Its arguments may be
summarised as follows:
— The dominant element of the trade mark ‘TU VIAJE EMPIEZA AQUÍ.
VIAJES EL CORTE INGLÉS’ is ‘VIAJES EL CORTE INGLÉS’, a
well-known sign with a reputation which is familiar to the general public in
Spain.
— The expression ‘AQUÍ EMPIEZA TU VIAJE’, or variations thereof, is fairly
commonplace in trade marks, particularly those of undertakings whose
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business activity is travel arrangement, and cannot be monopolised by the
applicant (documents No 1-5).
— This party argues that the applicant for a declaration of invalidity acted in bad
faith and has not used the earlier trade mark. Firstly, an internet search for the
earlier trade mark as a whole yields only one result showing the existence of
the trade mark. Even if a search is performed for ‘GERISO’ with varying
combinations, there is no trace of the applicant’s supposed travel agency, which
furthermore does not appear in the Andalusian Register of Tourism, in which it
should be registered in order to operate as a travel agency since it is based in
Granada (a province in Andalusia).
— However, as may be seen from the attached document No 6, the applicant does
not carry on any activity relating to travel and is bringing proceedings against
the proprietor of the Community trade mark only with a view to hindering the
development and business operations of one of Spain’s largest travel agencies.
— In line with that stated by the Cancellation Division, the conditions in
Article 8(5) CTMR are cumulative. Furthermore, the evidence submitted by the
applicant does not provide any information as to the trade mark’s level of
repute amongst the relevant public, and there is also no indication of the sales
volume or market share held by the applicant’s trade mark.
— Specifically, since one of the three conditions laid down in the CTMR has not
been met, the application for a declaration of invalidity must automatically be
rejected under the abovementioned article, and therefore for reasons of
procedural economy there will be no examination of the remaining conditions
which concern similarity between the signs and harm to reputation.
— The applicant has invoked the right to a name under Article 53(2) CTMR, but,
once again, despite bearing the burden of proof, has not submitted any
information regarding how the national legislation applies (Article 6(1)(b) of
the Spanish Law on Trade Marks 2001), nor any details on the scope of
protection.
— In relation to Article 52(1)(a) CTMR, the applicant has not demonstrated that
the elements of the ‘El Corte Inglés’ trade mark are descriptive of the relevant
services in Class 39, and therefore Article 7(1)(c) CTMR does not apply.
Article 7(1)(g) CTMR likewise does not apply, as there is no contradiction
between the terms in the proprietor’s trade mark and the services said trade
mark covers.
— In sum, the Cancellation Division was correct in rejecting all of the arguments
put forth by the applicant, and furthermore the latter did not furnish any new
information in her statement of observations dated 17 February 2014, and
therefore in light of all the foregoing it is requested that the appeal be dismissed
in its entirety and that the applicant once again be ordered to bear the costs.
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Reasons
17 The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR. It
is therefore admissible.
Scope of the appeal
18 Although the appeal form indicated that the appeal was directed
against the contested decision in its entirety, in the grounds of appeal
the applicant solely appeals from that part of the decision whereby the application
for a declaration of invalidity was rejected pursuant to Article 53(1)(a) CTMR in
conjunction with Article 8(1)(b) CTMR, Article 8(2)(c) CTMR in conjunction
with Article 8(1)(b) CTMR, Article 8(5) CTMR and the other earlier rights
pursuant to Article 53(2) CTMR.
19 The proprietor requests, in its observations on the appeal, that the contested
decision be upheld.
20 As the applicant has not requested that the contested decision
be annulled on the basis of Article 52(1)(a) CTMR in conjunction with
Article 7(1)(c) and (g) CTMR, that part of the contested decision
whereby the application for a declaration of invalidity was rejected, on the
basis of said grounds, is now confirmed.
21 As a result of the foregoing, the Board will now re-examine the application
for a declaration of invalidity in relation only to the relative grounds mentioned in
paragraph 18 above.
On the ground of invalidity laid down in Article 53(1)(a) CTMR in conjunction
with Article 8(1)(b) CTMR
22 Article 8(1)(b) CTMR states, in material part, that the trade mark
applied for shall not be registered if because of its identity with,
or similarity to, the earlier trade mark and the identity or
similarity of the goods or services covered by the trade marks
there exists a likelihood of confusion on the part of the public in
the territory in which the earlier trade mark is protected; the
likelihood of confusion includes the likelihood of association with
the earlier trade mark.
23 The risk that the public might believe that the goods or services
in question come from the same undertaking or, as the case may
be, from economically-linked undertakings, constitutes a
likelihood of confusion on the part of the public, in the absence
of which Article 8(1) CTMR does not apply (29.09.1998, C-39/97,
Canon, EU:C:1998:442, § 29, and 22.06.1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 17).
24 It is settled case-law that the likelihood of confusion must be
appreciated globally, taking into account all factors relevant to
the circumstances of the case. That global appreciation of the
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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. The average consumer normally perceives a mark
as a whole and does not proceed to analyse its various details,
as said consumer only rarely has the chance to make a direct
comparison between the different marks but must place his trust
in the imperfect picture of them that he has kept in his mind
(11.11.1997, C-251/95, Sabèl, EU:C:1997:528, §§ 22 and 23, and
22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
25 A global assessment of the likelihood of confusion implies some
interdependence between the relevant factors, and in particular
a similarity between the trade marks and between these goods
or services. Accordingly, a lesser degree of similarity between
these goods or 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 and 19, and 22/06/1999, C-342/97,
Lloyd Schuhfabrik, EU:C:1999:323, § 19).
26 The perception of marks in the mind of the average consumer of
the category of goods or services in question plays a decisive
role in the global appreciation of the likelihood of confusion. The
average consumer of the category of products or services
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 level of attention is likely to
vary according to the category of goods or services in question
(22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 126).
Relevant public / territory
27 As the earlier trade mark is registered in Spain, it is the perception on the part of
the Spanish public that will be taken into consideration.
28 The conflicting services target the Spanish average consumer, who is deemed
to be reasonably well informed and reasonably observant and
circumspect
(08.02.2011,
T-194/09,
Líneas aéreas del Mediterráneo,
EU:T:2011:34, § 23), as well as professionals in the fields of
passenger transport management, travel arrangement, etc.
Comparison of the services
29 Neither of the parties in the present appeal proceedings has challenged the ruling
that the contested services are identical to the opposing services. The matter at
issue in the present case is whether, given the identical or similar nature of the
services in question, the conflicting trade marks are sufficiently similar to give
rise to a likelihood of confusion on the part of the relevant public.
Comparison of the trade marks
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30 As regards the comparison of the signs, it is settled case-law that the global
appreciation of the likelihood of confusion must, as regards the visual, aural or
conceptual similarity of the marks in question, be based on the overall impression
created by them, bearing in mind, in particular, their distinctive and dominant
components (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 22.06.1999,
C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).
31 As regards the signs, case-law has established that a complex trade mark can be
regarded as being similar to another trade mark which is identical or similar to
one of the components of the complex mark, if that component forms the
dominant or co-dominant element within the overall impression created by the
complex mark. That is the case where that component is likely to dominate, by
itself, the image of that mark which the relevant public keeps in mind, with the
result that all the other components of the mark are negligible within the overall
impression created by it (23.10.2002, T-6/01, Matratzen, EU:T:2002:261,
§ 33-34, confirmed by 28.04.2004, C-3/03 P, Matratzen, EU:C:2004:233;
06.10.2005, C-120/04, Thomson Life, EU:C:2005:594, § 29; 12.06.2007,
C-334/05 P, Limoncello, EU:C:2007:333, § 41, 42).
32 With regard to the assessment of the dominant character of one or more given
components of a complex trade mark, account must be taken, in particular, of the
intrinsic qualities of each of those components by comparing them with those of
other components. In addition and accessorily, account may be taken of the
relative position of the various components within the arrangement of the
complex mark (23.10.2002, T-6/01, Matratzen, EU:T:2002:261, § 35).
33 The signs under comparison are as follows:
Earlier trade mark
Contested trade mark
34 The earlier trade mark is a figurative mark claiming word elements, namely the
word ‘GERISO’ in upper-case, bold letters, below which is a representation of a
globe in blue and brown. Below the globe are the words ‘AQUÍ EMPIEZA TU
VIAJE’, in upper-case letters.
35 The contested trade mark is a figurative mark in green and grey which consists of
the word elements ‘Tu viaje empieza aquí’, ‘VIAJES’ and ‘El Corte Inglés’. It
should be mentioned that the elements ‘VIAJES’ and ‘El Corte Inglés’ have
thicker lines and are in a striking green colour, whereas the words ‘Tu viaje
empieza aquí’ are in a much smaller size compared to the aforesaid.
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36 Where a sign consists of both figurative and word elements, it does not
automatically follow that it is the word element which must always be considered
to be dominant (24.11.2005, T-3/04, KINJI by SPA, EU:T:2005:418, § 45 and
23.11.2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). Thus, in the case
of a composite mark, the figurative element may rank equally with or even more
highly than the word element.
37 It is settled case-law that the public will not consider a descriptive element
forming part of a complex mark as the distinctive and dominant element of the
overall impression conveyed by that mark (03.07.2003, T-129/01, Budmen,
EU:T:2003:184, § 53, and 07.07.2005, T-385/03, Biker Miles, EU:T:2005:276,
§ 44).
38 It is therefore necessary to begin by identifying those elements in the complex
marks at issue which are distinctive and dominant, and also those which are
descriptive or non-distinctive, as the case may be.
39 The slogans ‘AQUÍ EMPIEZA TU VIAJE’ in the earlier trade mark and ‘TU
VIAJE EMPIEZA AQUÍ’ in the contested trade mark are laudatory expressions
and advertising slogans which invite the public to embark upon a journey; this
meaning is not disputed by the parties. It is true that the two slogans are
conceptually identical, although in the contested trade mark the subject and
adverb are placed in the correct grammatical order whereas in the earlier trade
mark this order is switched so as to emphasise the adverb of place, ‘AQUÍ’ [here],
by placing it at the beginning and relegating the subject, ‘TU VIAJE’ [your
journey], to the end. Since both of the slogans have this promotional meaning,
they are directly descriptive of the services in question, i.e. travel arrangement in
Class 39, as the contested decision correctly found; they are therefore both devoid
of distinctive character. Consequently, the public will not pay as much attention
to those elements as it will to the others: as the slogans are descriptive, they could
be used to advertise any kind of organised journey and thus are incapable of
distinguishing the services of one travel agency from those of its competitors.
40 In that respect, as already mentioned in paragraph 37 above, the public will not
generally consider a descriptive element forming part of a complex mark as the
distinctive and dominant element of the overall impression conveyed by that
mark.
41 Therefore, the applicant for a declaration of invalidity cannot claim a monopoly
over the slogan in question, as it was not registered in isolation but rather as one
element forming part of the earlier complex mark, the distinctive character of
which lies in the term GERISO, which is devoid of meaning and is therefore
distinctive per se, and also in the figurative element comprising the globe, which
has a lesser degree of distinctive character owing to the fact that its meaning is
linked with the travel services covered by the trade mark.
42 As the Cancellation Division correctly stated, ‘VIAJES’ in the contested trade
mark is likewise descriptive of the services and thus the same considerations
apply as above (27.11.2007, T-434/05, Activy Media Gateway, EU:T:2007:359,
§ 47).
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43 The word VIAJES in the contested trade mark is also descriptive, for the reasons
stated above. The words ‘EL CORTE INGLÉS’ must be considered dominant,
partly because of their large size but principally because they are distinctive in
respect of the relevant services in Class 39, as they are not descriptive of them.
44 There is a certain degree of visual similarity between the trade marks as they both
contain the abovementioned slogans, ‘AQUÍ EMPIEZA TU VIAJE’/‘TU VIAJE
EMPIEZA AQUÍ’, albeit with a different word order. However, this is where the
similarities end, since the remaining word elements, ‘GERISO’ and ‘VIAJES EL
CORTE INGLÉS’, which are positioned more prominently in the centre of the
trade marks, are visually very different as they bear no similarity at all in terms of
their composition, size or colours, nor in terms of the typeface in which they are
written. This difference is accentuated by the figurative element formed by the
globe, which is present only in the earlier trade mark. The visual differences are
therefore greater and more prominent than the similarity that lies in the slogan
alone, which is not distinctive; the degree of similarity is therefore very slight and
negligible to the extent that it may go unnoticed by the public, as they will be
unlikely to remember it.
45 The trade marks are not aurally similar, as it is probable that the only parts to be
pronounced will be the most distinctive and relevant elements, namely ‘GERISO’
and ‘VIAJES EL CORTE INGLÉS’. Although the shared expressions ‘AQUÍ
EMPIEZA TU VIAJE’/‘TU VIAJE EMPIEZA AQUÍ’ are visible elements in the
overall impression conveyed by the signs at issue, they clearly have a secondary
position compared to the terms ‘GERISO’ and ‘VIAJES EL CORTE INGLÉS’
and are also descriptive of the services at issue (02.02.2011, T-437/09,
Oyster cosmetics,
EU:T:2011:23,
§ 44;
31.01.2012,
T-205/10,
La victoria de Mexico, EU:T:2012:36, § 69). The small font, secondary position
and descriptive character of these words are all factors contributing to the
conclusion that this part of the sign is ancillary, and therefore negligible
(02.09.2010, C-254/09 P, CK Creaciones Kennya, EU:C:2010:488, § 57). The
public is selective, and tends to abbreviate complex marks by pronouncing the
distinctive terms only.
46 In any event, case-law makes it clear that ‘a complex trade mark cannot be
regarded as being similar to another trade mark which is identical or similar to
one of the components of the complex mark, unless that component forms the
dominant element within the overall impression created by the complex mark (...)
with the result that all the other components of the mark are negligible within the
overall impression’ (23.10.2002, T-6/01, Matratzen, EU:T:2002:261, § 33). In the
present case, the dominant and distinctive terms in the two trade marks are
completely different.
47 Conceptually, the most distinctive and dominant elements of the conflicting signs,
‘GERISO’ and ‘EL CORTE INGLÉS’, are not similar since ‘El Corte Inglés’ may
be understood as a reference to ‘the English cut’ of tailoring and the word
‘GERISO’ has no meaning in the relevant territory. The slogans ‘AQUÍ
EMPIEZA TU VIAJE’/‘TU VIAJE EMPIEZA AQUÍ’ have the same meaning,
but although they are identical in that sense, this is practically irrelevant in view
of the fact that they are descriptive and consequently devoid of distinctive
character, as explained above.
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48 In view of all the foregoing, the Board concludes that the trade marks at issue are
different overall, visually, aurally and conceptually, as their respective distinctive
and dominant elements differ and their similarity lies only in the two slogans,
which lack distinctive character as they are descriptive of the services in question.
Global assessment of the likelihood of confusion
49 The likelihood of confusion implies some interdependence between the relevant
factors, and in particular a similarity between the trade marks and between these
goods or services. Accordingly, a lesser degree of similarity between these goods
or services may be offset by a greater degree of similarity between the marks, and
vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk
of confusion (29.09.1998, C-39/97, Canon, EU:C:1998:442, § 17 et seq.).
50 The inherent distinctive character of the earlier trade mark may be considered
normal and is determined as much by the arrangement of the different figurative
and word elements therein as it is by the term ‘GERISO’. As well as having an
important position within the sign as a whole, this word element bears no
connection at all with the services for which the opposing trade mark is
registered. By contrast, ‘AQUÍ EMPIEZA TU VIAJE’ is, as stated above, a
slogan descriptive of the relevant services in Class 39.
51 The Board agrees with the Cancellation Division’s finding whereby the
applicant’s evidence does not prove that the earlier trade mark has acquired a high
degree of distinctive character through use, much less that said slogan has
acquired distinctiveness by virtue of its reputation.
52 In view of the aforesaid, the Board concludes that the trade marks at issue
are different overall, visually, aurally and conceptually, as their
distinctive and dominant elements differ, meaning that any
likelihood of confusion between them can be ruled out in spite of
the fact that the services they cover are identical.
On the argument that the reputation of the opposing trade mark was not taken
into account
53 It is true, as the appellant has claimed, that no ruling was made whatsoever in the
contested decision in respect of the earlier trade mark’s reputation, even though
that reputation was one of the arguments on which the application for a
declaration of invalidity was based. However, it must be borne in mind that such
a ruling was not necessary given the circumstances of the case since, as soon as
the Cancellation Division found that the trade marks at issue were not similar, the
application for a declaration of invalidity had to be rejected, irrespective of the
earlier trade mark’s level of repute, as the existence of a similarity between the
trade marks is one of the prerequisites for both Article 8(1)(b) CTMR and
Article 8(5) CTMR to apply, pursuant to the actual wording in both of said
provisions. In any event, as stated above, the proof furnished to
demonstrate the earlier trade mark’s reputation and high degree
of distinctive character is clearly insufficient. Therefore, the
opposition cannot succeed on the basis of Article 8(2)(c) CTMR in
conjunction with Article 8(1)(b) CTMR and Article 8(5) CTMR since
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the conditions in respect of similarity between the trade marks and reputation of
the earlier trade mark have not been met.
On the remaining earlier rights – Article 53(2) CTMR
54 The ground for invalidity on which the Cancellation Division’s ruling was based
is that provided for in Article 53(2) CTMR (codified version), which states:
A Community trade mark shall also be declared invalid on application to the
Office (...) where the use of such trade mark may be prohibited pursuant to
another earlier right, and in particular:
(a) a right to a name;
(b) a right of personal portrayal;
(c) a copyright;
(d) an industrial property right;
under the Community legislation or national law governing its protection.
55 The above provision makes reference to ‘the Community legislation or national
law governing its protection’; in the Board’s opinion, this denotes Community
legislation or national laws governing the protection of:
(a) the right to a name;
(b) the right of personal portrayal;
(c) copyright;
(d) industrial property rights (i.e. patents or designs).
56 In the present case, the applicant has invoked Article 6(1)(b) of the Spanish Law
on Trade Marks as a ‘national law’, as grounds for a declaration of invalidity in
respect of the Community trade mark, and has submitted the following
documents:
 Certificates from ‘Dipthylom Imagen Digital, SLL’ demonstrating their use of
the earlier Spanish trade mark.
 An application for certification on the register pertaining to Spanish trade
mark No 2 742 363.
57 In the Board’s view, in order to determine whether the ground for invalidity under
Article 53(2) CTMR is applicable – that is, whether use of the Community trade
mark can be prohibited – it is necessary to apply national legislation in the matter
of (i) names, (ii) copyright or (iii) designs, depending on the case. However, the
documentation furnished does not provide any information concerning how the
national legislation applies, nor any details on the scope of protection. Merely
referring to national legislation is not sufficient. The content of the
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national legislation must be proved (05.07.2011, C-263/09 P, Elio Fiorucci,
EU:C:2011:452,
§ 47
to 50;
20.03.2013,
T-571/11,
Club Gourmet,
EU:T:2013:145, § 35; 27.03.2014, C-530/12 P, Mano, EU:C:2014:186), which
the applicant has failed to do.
58 Consequently, like the Cancellation Division, the Board feels that the application
for a declaration of invalidity is not duly substantiated for the purposes of
Article 53(2) CTMR in any of the cases invoked.
Conclusion
59 In light of the foregoing, the appeal is dismissed in its entirety and therefore the
rejection of the application for a declaration of invalidity is upheld.
Costs
60 Pursuant to Article 85(1) CTMR and Rule 94(7)(d) CTMIR, the applicant for a
declaration of invalidity, as losing party, shall bear the costs incurred by the
proprietor of the Community trade mark in the invalidity and appeal proceedings,
amounting to EUR 450 by way of costs of representation in the invalidity
proceedings and EUR 550 by way of costs of representation in the appeal
proceedings.
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Order
On those grounds,
THE BOARD
hereby:
1. Dismisses the appeal.
2. Orders the applicant for a declaration of invalidity to bear the costs
incurred by the proprietor of the Community trade mark in the invalidity
and appeal proceedings.
3. Fixes the amount of the costs to be borne by the applicant for a
declaration of invalidity at EUR 1 000.
Signed
Signed
T. de las Heras
C. Govers
According to Article 6 of
Commission
Regulation (EC)
No 216/96
Signed
T. de las Heras
Registrar:
Signed
H. Dijkema
DECISION OF 18 MARCH 2015 – R 2539/2013-2 – Tu viaje empieza aquí VIAJES El Corte Inglés