easyGroup IP Licensing v OHMI - Tui (easyAir-tours) (Judgment) [2015] EUECJ T-608/13 (13 May 2015)

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(Community trade mark — Opposition proceedings — Application for the Community figurative mark easyAir-tours — Earlier national figurative mark airtours Ticket Factory — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — No similarity between the signs — No likelihood of confusion — Power to alter decisions — Article 65(3) of Regulation No 207/2009)

easyGroup IP Licensing Ltd, established in London (United Kingdom), represented by J. Day and K. Osgerby, Solicitors,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Tui AG, established in Hanover (Germany), represented by D. von Schultz, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 5 September 2013 (Case R 1029/2012-1), relating to opposition proceedings between Tui AG and easyGroup IP Licensing Ltd,

composed of D. Gratsias, President, M. Kancheva (Rapporteur) and C. Wetter, Judges,

having regard to the application lodged at the Court Registry on 22 November 2013,

having regard to the response of OHIM lodged at the Court Registry on 26 March 2014,

having regard to the response of the intervener lodged at the Court Registry on 21 March 2014,

further to the hearing on 5 February 2015, in which the applicant did not take part,

1 On 2 July 2010, the applicant, easyGroup IP Licensing Ltd, filed an application for the registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 Registration as a mark was sought for the following figurative sign, in respect of which the applicant claimed the colours orange and white:

3 The goods and services in respect of which registration was sought are in Classes 16, 36, 39 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 16: ‘Printed matter and publications; wrapping and packaging; books, manuals, pamphlets, newsletters, albums, newspapers, magazines and periodicals; travel guides; maps; 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’;

– Class 36: ‘Insurance including travel insurance; financial services; real estate agency services; building society services; banking; travel money conversion and currency conversion; stockbroking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information and advice’;

– Class 39: ‘Transportation of goods, passengers and travellers by air, land and sea; transport of luggage, freight, personal effects and equipment; baggage handling services; cargo handling and freight services; provision of parking facilities and reservation of parking spaces; rental and hire of aircraft, vehicles and boats; taxi and private transfer of passengers services; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travellers by land, sea and air; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; travel arrangement; travel agency and tourist office services; reservation of flights, car hire, parking, holiday packages, ski holidays, ski equipment and passes; advisory and information services relating to the aforesaid services; information services relating to transportation services, including information services provided online from a computer database or the Internet’;

– Class 43: ‘Temporary accommodation; provision of food and drink; catering, hotel, restaurant, café and bar services; temporary accommodation, hotel, hostel and apartment reservation services; waiting room services including the provision of airport lounges and access thereto; provision of information and advice relating to temporary accommodation’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 190/2010 of 8 October 2010.

5 On 5 January 2011, the intervener, Tui AG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based, in particular, on the earlier German figurative mark reproduced below, in respect of which the intervener had claimed the colours blue and grey:

7 The earlier German mark designated services in Classes 38, 39 and 43, corresponding, for each of those classes, to the following description:

– Class 38: ‘Telecommunications; electronic communication; communication of data (included in Class 38), in particular of offers and information by computer and means of electronic communication (telecommunications, computer, telephone, Internet and intranet); online services, namely, communication of information of all types; providing of access to Internet portals for third parties; providing of access to Internet; providing of access to e-commerce platforms on the Internet; operation of chat rooms, chat lines and forums; operation of a teleshopping channel (included in Class 38); renting of telecommunication equipment for hotlines and call centres; telephone services; communication of traffic information within the scope of telecommunication services; broadcasting of radio and television programmes; all above services in particular, in the travel and recreational sector; communication of technical information within the scope of telecommunication services; telecommunication services in Internet cafés; providing access to databases; providing Internet chat rooms’;

– Class 39: ‘Transport and storage of goods; transport of persons and goods, in particular, by road, rail, sea and air; porter services; transport of money and valuables; organization, booking and arrangement of travel, excursions and cruises; arrangement of transport services; rental of diving suits; organization, booking and arrangement of excursions, day trips and sightseeing tours; travel consultancy and escorting of travellers; rental, booking and providing of aircraft; rental, booking and providing of ships, in particular rowing and motor boats, sailing vessels and canoes, rental, booking and providing of motor vehicles and bicycles, horses and diving equipment (included in Class 39); packaging and storage of goods; parcel delivery; organization of trips, holidays and sightseeing tours; travel agency services in particular consultancy and booking services for travel; providing information about travel, arrangement of transport services and travel; reservation services for travel (included in Class 39); information about travel on the Internet, in particular, about reservation and booking in the tourism and business travel sector (online travel agencies); all the above services, in particular in the travel and recreational sector; delivery, dispatching and distribution of newspapers and magazines; consultation provided by telephone call centres and hotlines in the field of tourism, transport and storage; location of passenger vehicles by computer traffic information’;

– Class 43: ‘Providing temporary accommodation, providing of food and drinks for guests; accommodation bureau services; providing and rental of holiday homes, holiday flats and apartments; providing room reservation and hotel reservation services, providing hotel, boarding house and motel services; catering; services of boarding houses, hotels and motels; rental of meeting rooms; providing of food and drinks in restaurants and bars; providing food and drinks in Internet cafés; consultation provided by telephone call centres and hotlines in the field of temporary room and board accommodation bureau services, providing and rental of holiday homes, accommodation service and hotel reservation as well as accommodation and catering for guests’.

8 The opposition was also based on other earlier figurative marks, which are reproduced in paragraph 4 of the contested decision:

– the international registration designating the European Community reproduced below, for which the intervener had claimed the colours blue and grey, covering goods and services in Classes 9, 16, 35, 36, 38, 39, 41, 43 and 44:

– the international registration designating the European Community and the German trade mark reproduced below, both of which cover services in Classes 35, 39, 41 and 43:

– the Community trade mark, for which the intervener had claimed the colours white and blue, and the German trade mark reproduced below, covering respectively goods and services in Classes 9, 16, 35, 36, 38, 39, 41 and 42 and services in Classes 35, 39, 41, 42, 43 and 44:

– the international registration designating Austria and Benelux, for which the intervener had claimed the colours yellow, blue, black and white, reproduced below, covering services in Classes 35, 36, 39, 41 and 42:

9 The ground relied on in support of the opposition was that set out in Article 8(1) (b) of Regulation No 207/2009.

10 On 1 June 2011, the intervener submitted evidence intended to prove genuine use of the Community figurative mark airtours Klasse. Urlaub. Erleben., reproduced in paragraph 8 above. That evidence included catalogues, screenshots of websites, business documents, advertisements and an affidavit by a director of a related company.

11 On 2 April 2012, the Opposition Division, taking the view that the list of services for which the Community figurative mark had been put to genuine use was more limited than that of the services covered by the earlier German mark reproduced in paragraph 6 above, partially upheld the opposition on the basis of the latter mark and rejected the Community trade mark application in respect of the following goods and services, which it regarded as identical or similar to the services covered by that latter mark:

– Class 36: ‘Insurance including travel insurance; travel money conversion and currency conversion’;

12 On 28 May 2012, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division in so far as the Opposition Division had upheld the opposition, but it did not, however, dispute the comparison of the goods and services made in that decision.

13 By decision of 5 September 2013 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. First, as regards the earlier marks, it took the view that it was ‘appropriate’, for reasons of procedural economy, first to examine the question of a likelihood of confusion on the basis of the earlier German mark referred to in paragraph 6 above, as that mark was ‘the strongest’ earlier mark and was not ‘liable to proof of use’, and that it was not therefore necessary to examine the proof of use of the Community trade mark airtours Klasse. Urlaub. Erleben., reproduced in paragraph 8 above, although, it added, the evidence provided in that regard might show that the earlier German mark had enhanced distinctiveness (paragraphs 13 and 14 of the contested decision). Secondly, as regards the relevant public, it found, first, that since the examination would be based on a German trade mark, the relevant geographical area was Germany and, secondly, that since the goods and services related mainly to travel arrangements in the broad sense, including telecommunications and accommodation services, that public comprised both the general public and professionals in the travel industry in Germany and that, although the goods and services were not necessarily very expensive, those two categories of consumers would tend to display a higher than average level of attention when purchasing them (paragraphs 18 to 20 of the contested decision). Thirdly, with regard to the comparison of the goods and services to which the appeal related, it confirmed the Opposition Division’s conclusion that they were partly identical and partly similar (paragraphs 22 to 27 of the contested decision).

14 Fourthly, with regard to the comparison of the marks at issue, the Board of Appeal first of all stated that the term ‘airtours’ dominated the visual impression created by the earlier German mark, as the element ‘ticket factory’ was not so eye-catching, and that the mark applied for was ‘built’ upon the word element ‘easy air-tours’, depicted in an orange rectangle. Next, visually, it found that the marks at issue were similar to the extent that their respective word elements ‘airtours’ and ‘air-tours’ ‘coincide[d] in the most conspicuous part’. It took the view that the differences as to their respective arrangements — the colours, the hyphen and the capital letter in the word ‘air’ in the mark applied for, which distinguished it from the additional element ‘easy’ — were minor. However, it found that the marks differed as to their respective additional elements: in the earlier mark the element ‘ticket factory’ appeared underneath the dominant word element, while, in the mark applied for, the word element was placed within an orange rectangle. Moreover, it took the view that, phonetically, the marks had the element ‘airtours’ in common, and that they were thus to that extent identical. It found that they differed, however, in the word element ‘ticket factory’ — on the assumption that it would be read — and the word element ‘easy’. Furthermore, conceptually, it took the view that the trade marks had the element ‘airtours’ in common, which, although it does not have any meaning in German, would be understood ‘as an allusion to air transport’, and that the marks were thus to that extent identical. It found that they differed, however, in the additional elements ‘ticket factory’, which referred to a place where tickets, in this case tickets for air transport, were produced and sold, and ‘easy’, which belonged to the range of basic English words and would therefore be understood by a major part of the relevant public as referring to something which had been achieved without great effort or which presented few difficulties. Lastly, it concluded that the signs were similar (paragraphs 30 to 36 of the contested decision).

15 Fifthly, as regards the distinctive character of the earlier mark, the Board of Appeal found that the documents submitted for the purpose of showing use of the Community trade mark airtours Klasse. Urlaub. Erleben., reproduced in paragraph 8 above, ‘totally demonstrate(d)’ that the earlier German mark airtours Ticket Factory referred to in paragraph 6 above had acquired enhanced distinctiveness with respect to the services in Classes 39 and 43, which was specifically linked to the figurative element ‘airtours’, which both marks had in common, and not to the elements ‘ticket factory’ or ‘klasse. urlaub. erleben.’, which would be perceived as rather descriptive, non-distinctive terms for travel services in those classes (paragraphs 38 and 39 of the contested decision).

16 Sixthly, as regards the likelihood of confusion, the Board of Appeal first of all stated that, as the goods and services at issue had been found to be partly identical and partly similar and the undertakings concerned were thus in direct competition, the differences between the signs at issue were attenuated in the global assessment of the likelihood of confusion. Next, it found that the word elements ‘airtours’ or ‘air-tours’, which were common to and dominant in both marks, were virtually identical. It took the view that the presence of the additional term ‘easy’ and its depiction within an orange rectangle in the mark applied for were not sufficient to eliminate the similarity between the marks at issue. It found that the differences linked to the simple orange rectangular shape, the use of capital or lower case letters and the additional word elements in the earlier mark and in the mark applied for were of minor importance. Accordingly, having regard in particular to the identity or similarity of the goods and services in question, the presence of partly identical word elements and ‘the absence of any further strong elements in the trade mark applied for’, it concluded that there was a likelihood of confusion between the marks at issue on the part of the German public. Lastly, it considered that those findings were corroborated by the evidence of ‘enhanced distinctiveness by virtue of intensive use’ submitted by the intervener. On the other hand, it rejected as irrelevant the applicant’s claims that the mark applied for had a reputation due to the well-known character of the orange colour and of the word ‘easy’ (paragraphs 44 to 51 of the contested decision).

19 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It claims, first, that the contested decision should be annulled and, secondly, that the opposition should be rejected in its entirety.

20 It must be pointed out at the outset that the applicant’s second head of claim, seeking the rejection of the opposition in its entirety, in reality asks the Court to take the decision which, in the applicant’s submission, the Board of Appeal should have taken when it was seised of the case. It is apparent from the second sentence of Article 64(1) of Regulation No 207/2009 that the Board of Appeal may annul the decision of the OHIM department which was responsible for the contested decision and exercise any power within the competence of that department, in the present case rule on the opposition and reject it. Consequently, that measure is one of those which may be taken by the General Court in the exercise of its power to alter decisions under Article 65(3) of Regulation No 207/2009 (see, to that effect, judgments of 14 December 2011 in Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, ECR, EU:T:2011:739, paragraph 40 and the case-law cited, and 4 June 2013 in i-content v OHIM — Decathlon (BETWIN), T‑514/11, ECR (Extracts), EU:T:2013:291, paragraph 15).

21 The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 inasmuch as it should have found that, in the context of an overall comparison, the signs at issue were not similar and that there was no likelihood of confusion between them on the part of the relevant public.

22 OHIM and the intervener dispute the applicant’s arguments, relying on the similarity between the signs and the likelihood of confusion between them.

23 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an 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. Pursuant to Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘earlier trade mark’ means, inter alia, a trade mark registered in a Member State.

24 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraphs 16, 17 and 29; see also judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

25 In the present case, it is necessary, at the outset, to confirm the definition of the relevant public which was given by the Board of Appeal in paragraphs 18 to 20 of the contested decision and is not disputed by the applicant, according to which both the general public and professionals in the travel industry in Germany will tend to display a higher than average level of attention when purchasing goods and services connected with travel arrangements, as such a purchase usually involves, even on the part of the general public, more in-depth consideration than that of everyday consumer goods or services. The intervener’s claim that the relevant public is solely the average consumer in Germany must therefore be rejected.

26 Next, it is necessary to confirm the Board of Appeal’s finding, in paragraphs 21 to 27 of the contested decision, that the goods and services to which the appeal related are partly identical and partly similar, which is not, moreover, called into question by the parties to the present proceedings.

27 By contrast, it is necessary to examine the Board of Appeal’s assessments relating to the comparison of the signs and to the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, which the applicant disputes.

28 The applicant claims that, in general, the Board of Appeal placed too much emphasis on the letters ‘a’, ‘i’, ‘r’, ‘t’, ‘o’, ‘u’, ‘r’ and ‘s’, which both signs have in common, and did not take sufficient account of the differences between the signs at issue, which, when compared as a whole, should not have been regarded as similar. It adds that the earlier mark is, after all, a figurative mark and, as such, should not enjoy the same scope of protection as a mark which consists only of the word ‘airtours’. As regards the dominant element of the mark applied for, it takes the view that the Board of Appeal was wrong to conclude that it was the element ‘air-tours’. It contends that that dominant element consists of the element ‘easyair’, although the word ‘tours’ and the ‘vibrant orange coloured rectangular background’ play an important, albeit secondary, role. It provides evidence to support its claim that the word ‘easy’ and the orange colour are well known, in the European Union, for a family of marks. As regards the element ‘airtours’ in the earlier mark, it takes the view that it is descriptive or is only very weakly distinctive, in the light, in particular, of the coexistence of numerous marks containing the word ‘airtours’ in the travel sector.

29 As regards the visual comparison of the signs, the applicant maintains that the Board of Appeal did not at all take into account the word element ‘easy’ which, however, owing to its position at the beginning of the word elements of the mark applied for, has a significant influence on the overall perception of that sign. It takes the view that that key difference, combined with the other differences — in particular, in the mark applied for, the ‘vibrant and visually striking orange rectangular background’ and, in the earlier German mark, the ‘other clearly noticeable verbal components’, namely the words ‘ticket’ and ‘factory’ — clearly outweighs the visual similarity created by the eight coinciding letters ‘a’, ‘i’, ‘r’, ‘t’, ‘o’, ‘u’, ‘r’ and ‘s’. As regards the phonetic comparison, it complains that the Board of Appeal concluded that the signs are identical by attaching undue importance to the sound made by the eight coinciding letters ‘a’, ‘i’, ‘r’, ‘t’, ‘o’, ‘u’, ‘r’ and ‘s’, by not taking sufficient account of the significant phonetic differences relating to the two first syllables of the mark applied for, ‘ea’ and ‘sy’, and the last five syllables of the earlier mark, ‘tick’, ‘et’, ‘fact’, ‘or’, ‘y’, and by not pronouncing the mark applied for as two separate words, ‘easyair’ and ‘tours’. It takes the view that, when the signs are compared as a whole, those phonetic differences clearly outweigh any phonetic similarity that may arise due to the presence of the letters ‘a’, ‘i’, ‘r’, ‘t’, ‘o’, ‘u’, ‘r’ and ‘s’ in both signs. As regards the conceptual comparison, it alleges a ‘wrong and illogical’ contradiction on the part of the Board of Appeal between the observation that the word ‘airtours’ has no meaning in German and the conclusion that the signs are conceptually identical because they both allude to air transport. Furthermore, the applicant submits that the Board of Appeal did not take account of the concepts evoked by the word elements ‘easyair’ and ‘ticket factory’. Lastly, it claims that the mere fact that a series of letters, in the present case the letters ‘a’, ‘i’, ‘r’, ‘t’, ‘o’, ‘u’, ‘r’ and ‘s’, is identical is not enough to support a finding that the signs at issue are similar, which should not be based on the mere fact that one sign is ‘contained’ in the other.

30 OHIM maintains that the element ‘airtours’ remains the most distinctive and dominant element of the earlier mark, notwithstanding its allusive nature in respect of certain services in Classes 39 and 43, and that an almost identical expression is ‘prominently’ displayed in the mark applied for, without being surpassed in importance by other word or colour elements. As regards the visual comparison, it contends that the Board of Appeal did not disregard the impact of the word ‘easy’ but correctly found that its contribution to the overall impression created by the sign applied for was ‘minor’ in view of its being written in lower case letters, whereas the element ‘air-tours’ of the same sign was ‘rather eye-catching’ in view of its initial capital letter. It maintains that the Board of Appeal took account of all the elements of the marks at issue but that it attributed to the elements which differentiate them the weight that it considered appropriate, having regard to their size and their position in those composite signs. As regards the phonetic comparison, it maintains that the consumer will pronounce the sign applied for as two separate words, namely ‘easy’ and ‘airtours’, given that the word ‘air’ has a capital letter which isolates it from the word ‘easy’, and that the positioning of the element ‘easy’ at the beginning of the mark applied for is not sufficient to eliminate the phonetic similarity produced by the element ‘airtours’, which constitutes both the dominant element of the earlier mark and an important word element of the mark applied for. As regards the conceptual comparison, it considers that the fact that the element ‘airtours’, which both signs have in common, ‘alludes’ — refers indirectly and non-descriptively — to air transport is sufficient to establish a degree of conceptual similarity, which cannot be overcome by the differences due to the elements ‘ticket factory’ and ‘easy’, which were taken into account by the Board of Appeal. It therefore concludes that the signs are similar overall.

31 The intervener claims that the element ‘airtours’ dominates the earlier mark and is inherently distinctive as it has no specific meaning for the relevant public in Germany. It takes the view that the visual similarity between the signs at issue is undeniably apparent from the fact that the dominant element ‘airtours’ in the earlier mark and the word element ‘air-tours’ in the mark applied for correspond and from the fact that the slight differences between those signs are not sufficient to cancel out the impression of visual similarity created by the element ‘airtours’, which both signs have in common. It submits that the additional word element in the earlier mark, ‘ticket factory’, is thus eclipsed by the dominant element ‘airtours’. Likewise, it maintains that the visual similarity is not cancelled out by the additional word element ‘easy’ in the mark applied for, which is written only in lower case characters, indicating that it plays a minor role compared to the element ‘air-tours’, which begins with the capital letter ‘A’, thereby indicating its independent and dominant character. Lastly, it takes the view that the orange rectangular background of the mark applied for has no impact on the visual comparison as word elements are more easily remembered by consumers. The intervener submits that the phonetic similarity is also apparent from the element ‘airtours’ or ‘air-tours’, which the signs have in common and which is combined into a single word by a hyphen in the mark applied for, and that that phonetic similarity is not cancelled out by the element ‘ticket factory’, which is not pronounced, or by the element ‘easy’, which is of minor importance. It maintains that the conceptual similarity is apparent from the element ‘airtours’, which the signs have in common and which might be understood as an allusion to air transport, and is not cancelled out by the element ‘ticket factory’, which is ignored, or by the element ‘easy’, which is only an adjective and is merely descriptive in connection with the dominant element ‘air-tours’.

32 According to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

33 In particular, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see, to that effect, judgments in OHIM v Shaker, cited in paragraph 32 above, EU:C:2007:333, paragraphs 41 and 42, and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraphs 42 and 43 and the case-law cited).

34 In the present case, it is therefore necessary, before examining whether there is any visual, phonetic and conceptual similarity between the marks at issue, to determine which the distinctive and dominant elements in those marks are.

35 In the first place, as regards the Community trade mark applied for, it must be pointed out that that composite mark consists of two word elements, ‘easy’ and ‘air-tours’, in letters which are mainly lower case and are bold, white and in the relatively common font Cooper Black, and of a figurative element consisting of a broad, bright orange rectangle, on the background of which those word elements are written. The applicant’s claim that the word elements of the mark applied for are ‘easyair’ and ‘tours’ must therefore be rejected. The capital letter ‘A’ separates the word ‘easy’ from the word ‘air’, which is linked to the word ‘tours’ by a hyphen to form the element ‘air-tours’ in which that capital letter ‘A’ and that hyphen are negligible.

36 According to the case-law, in assessing the dominant character of one or more given components of a composite 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 composite mark (judgment of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 35; see also judgments of 16 January 2008 in Inter-Ikea v OHIM — Waibel (idea), T‑112/06, EU:T:2008:10, paragraph 47 and the case-law cited, and 16 July 2014 in Erreà Sport v OHIM — Facchinelli (ANTONIO BACIONE), T‑36/13, EU:T:2014:673, paragraph 33 and the case-law cited).

37 In the present case, it is therefore necessary to examine the intrinsic qualities of the word elements and of the figurative element of the mark applied for, as well as their respective positions, in order to ascertain whether, as the Board of Appeal found in paragraph 47 of the contested decision, the word element ‘air-tours’ is the dominant element in that mark.

38 First, as regards the intrinsic qualities of the word elements ‘easy’ and ‘air-tours’ for the German public, which understands basic English (see, by analogy, judgment of 28 November 2013 in Vitaminaqua v OHIM — Energy Brands (vitaminaqua), T‑410/12, EU:T:2013:615, paragraph 58 and the case-law cited), the word ‘easy’ may laud all kinds of goods or services, whereas the word ‘air-tours’ alludes to package holidays (‘tours’) involving air transport (‘air’). That allusive element ‘airtours’ or ‘air-tours’ cannot therefore be intrinsically dominant and is at most equivalent to the laudatory element ‘easy’, which will be perceived and memorised as being at least equally striking, inasmuch as it does not refer to the goods and services at issue, but to an alleged quality of the goods and services covered by the mark applied for. Furthermore, both of those words have weak distinctive character, subject always to a possible increase in that distinctive character through the subsequent use of the mark applied for, which is irrelevant at the stage of the opposition proceedings.

39 Secondly, as regards the respective positions of those word elements, the position of the element ‘easy’ at the beginning of the sign applied would be such as to make it slightly dominant, in accordance with the case-law that the relevant public normally attaches more importance to the first part of words (judgments of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 81, and 10 December 2008 in MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, EU:T:2008:562, paragraph 50), were it not for the greater length and the capital letter of the element ‘air-tours’, which offset the position of the element ‘easy’ at the beginning of the sign.

40 Thirdly, the alleged reputation or renown of the element ‘easy’ in the mark applied for is irrelevant, because it is apparent from the case-law that only the reputation of the earlier mark, and not that of the mark applied for, is to be taken into account in assessing whether there is a likelihood of confusion (see judgment of 3 September 2009 in Aceites del Sur-Coosur v Koipe, C‑498/07 P, ECR, EU:C:2009:503, paragraph 84 and the case-law cited). That case-law is consistent with the objective of Article 8(1)(b) of Regulation No 207/2009, which is to provide proprietors of earlier rights with appropriate protection against subsequent applications for identical or similar Community trade marks (judgment of 8 March 2013 in Mayer Naman v OHIM — Daniel e Mayer (David Mayer), T‑498/10, EU:T:2013:117, paragraph 105).

41 Fourthly, the figurative element consisting of a broad orange rectangle appears striking, both owing to its size, which is very large in relation to that of the word elements, and its bright colour, with the result that it will be clearly perceived and memorised by the relevant public, and will not be dominated by the word elements. According to the case-law, in a composite mark, the figurative element may occupy a position equivalent to the word element (see, to that effect, judgments of 24 November 2005 in Simonds Farsons Cisk v OHIM — Spa Monopole (KINJI by SPA), T‑3/04, ECR, EU:T:2005:418, paragraph 47, and in idea, cited in paragraph 36 above, EU:T:2008:10, paragraphs 45 and 48 and the case-law cited).

42 It must therefore be held that, in the mark applied for, there are three elements of major importance, none of which dominates the other — the figurative element of a broad, bright orange rectangle and also the word elements ‘easy’ and ‘air-tours’, both of which appear in white letters against that orange background.

43 Consequently, it is necessary to reject the Board of Appeal’s assessment, in paragraph 49 of the contested decision, confirming ‘the absence of any further strong elements in the trade mark applied for’ other than the element ‘air-tours’, which had been found to be dominant in paragraph 47 of that decision. The word ‘easy’ and the orange rectangle also constitute ‘strong elements’ of the mark applied for, having at least a certain degree of distinctive character, and the element ‘air-tours’ cannot constitute the dominant element in the mark applied for.

44 Since no word or figurative element of the mark applied for may be regarded as dominant or negligible, it is thus the overall impression created by that mark which must be taken into account in the comparison with the earlier mark (see, to that effect, judgment of 22 June 2010 in CM Capital Markets v OHIM — Carbon Capital Markets (CARBON CAPITAL MARKETS Emissions Compliance Solutions & Carbon Finance), T‑490/08, ECR, EU:T:2010:250, paragraph 43 and the case-law cited).

45 In the second place, as regards the earlier German mark, it must be pointed out that it consists, first, of the word element ‘airtours’, which is in a central position and is large in size, in lower case, bold, blue letters in a rather commonplace font and, secondly, of the word element ‘ticket factory’, which is in a lower position and is considerably smaller, in upper case and lower case grey letters in a different font which is no less commonplace.

46 It must therefore be held, as the Board of Appeal found, in paragraphs 31 and 47 of the contested decision, that the word element ‘airtours’, in blue letters, is dominant in the earlier German mark, whereas the figurative elements and the word element ‘ticket factory’ appear to be distinctly secondary in that mark.

47 Furthermore, in accordance with the case-law of the Court of Justice according to which it is necessary to acknowledge that an earlier national mark on which an opposition against the registration of a Community trade mark is based has a certain degree of distinctiveness (judgment of 24 May 2012 in Formula One Licensing v OHIM, C‑196/11 P, ECR, EU:C:2012:314, paragraph 47), it must be held that the earlier German mark, notwithstanding its allusive nature in respect of the goods and services concerned (see paragraph 38 above), has a certain, although low, degree of distinctive character.

48 From a visual standpoint, the Board of Appeal found, in paragraph 33 of the contested decision, that the marks at issue were similar, to the extent that their respective word elements, ‘airtours’ and ‘air-tours’, ‘coincide[d] in the most conspicuous part’ and the differences as to their respective arrangements — the colours, the hyphen and the capital letter in the word ‘air’, distinguishing it from the additional element ‘easy’ — were minor. However, it stated that the marks differed as to their respective additional elements: in the earlier mark the additional element ‘ticket factory’ appeared underneath the dominant word element, while in the mark applied for the word elements were placed within an orange rectangle.

49 In that regard, it must be pointed out that the Board of Appeal was right to find that the allusive elements ‘airtours’ and ‘air-tours’ in the marks at issue essentially ‘coincide[d]’. However, it failed to take into account the additional element ‘easy’ — except to state that it could be distinguished from the element ‘air-tours’ by the capital letter ‘A’ — although it is an element of the mark applied for which cannot in any way be regarded as being of minor importance, particularly because it is the first word element in that mark (see paragraph 39 above). Furthermore, even though it pointed out the presence of the orange rectangle in the mark applied for, it did not draw any more inference from this than it did from the distinctly secondary element ‘ticket factory’ in the earlier mark, although that orange rectangle also constitutes an element of the mark applied for which cannot be considered to be of minor importance. Consequently, the Board of Appeal actually took into account, in the overall visual comparison of the signs at issue, only the fact that the respective elements ‘airtours’ and ‘air-tours’ essentially ‘coincide[d]’, erroneously holding the latter element to be dominant in the mark applied for and, as a result, disregarding the presence of the two other elements of major importance in the overall visual impression created by that mark.

50 According to the case-law, the fact that one of the components of a composite trade mark is identical to another trade mark does not mean that those two marks are similar unless that component constitutes the dominant element within the overall impression created by the composite mark. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (see judgment in Nestlé v OHIM, cited in paragraph 33 above, EU:C:2007:539, paragraph 43 and the case-law cited; judgment in MATRATZEN, cited in paragraph 36 above, EU:T:2002:261, paragraph 33; see also judgment in METRONIA, cited in paragraph 39 above, EU:T:2008:562, paragraph 42 and the case-law cited).

51 In the present case, it must be held that, in the context of an overall visual comparison of the figurative signs at issue, the mere presence of the respective word elements ‘airtours’ and ‘air-tours’, which are in very different colours on very different backgrounds (blue on white and white on orange) and in quite different fonts, is offset and cancelled out by the presence of the two other elements of major importance in the mark applied for, which are not in the earlier mark, namely the element ‘easy’ and the broad, bright orange rectangle, to such an extent that the overall visual impression of the mark applied for is different from that of the earlier mark. Furthermore, the presence of the element ‘ticket factory’ in the earlier mark, which is not in the mark applied for, slightly increases, in spite of its distinctly secondary nature, the overall visual difference between the signs at issue.

52 Consequently, it must be held that, in the context of an overall comparison of the overall impressions which the relevant public has of them, the signs at issue are visually different, notwithstanding the fact that they have a word element in common, and that the Board of Appeal erred in considering them to be similar.

53 From a phonetic standpoint, the Board of Appeal found, in paragraph 34 of the contested decision, that the marks ‘coincide[d]’ in the element ‘airtours’, which they have in common, and that they were, to that extent, identical, and that they differed in the element ‘ticket factory’ — on the assumption that it would be read — and the word element ‘easy’.

54 In that regard, it must be pointed out that the Board of Appeal was right to find that the word elements ‘airtours’ and ‘air-tours’, each of which consists of two syllables according to English pronunciation, ‘coincide phonetically’. However, it seems to have played down the significance of the two additional syllables ‘ea’ and ‘sy’ in the element of major importance ‘easy’ in the mark applied for and even possibly of the five additional syllables ‘tick’, ‘et’, ‘fact’, ‘or’ and ‘y’ in the distinctly secondary element ‘ticket factory’ in the earlier mark, in so far as those differences do not appear to have affected its finding of phonetic identity between the signs at issue.

55 Consequently, it must be held that, in the context of an overall comparison, there is an average — or even rather low, if the element ‘ticket factory’ is read — degree of phonetic similarity between the signs at issue and that the Board of Appeal erred in apparently considering them to be identical, notwithstanding the differences held to exist, relating, in particular, to the influence of the element ‘easy’ on the overall phonetic impression created by the mark applied for.

56 From a conceptual standpoint, the Board of Appeal found, in paragraph 35 of the contested decision, that the trade marks ‘coincide[d]’ in the element ‘airtours’, which is common to both of them and which, although it has no meaning in German, would be understood as an allusion to air transport, the marks thus being to that extent identical, but that they differed, however, in the additional elements ‘ticket factory’, which refers to a place where tickets, in this case tickets for air transport, are produced and sold, and ‘easy’, which belongs to the range of basic English words and would therefore be understood by a major part of the relevant public as referring to something which had been achieved without great effort or presented few difficulties.

57 In that regard, it must be pointed out that the Board of Appeal was right to find that, for the German public, which understands basic English (see paragraph 38 above), the word elements ‘airtours’ and ‘air-tours’, both of which allude to air transport (‘air’) or even to package holidays (‘tours’), ‘coincide’ conceptually. However, it seems to have played down the significance of the laudatory element ‘easy’, which is an element of major importance in the mark applied for, is not in the earlier mark and is easily recognised by the German public, and even possibly of the element ‘ticket factory’, which is admittedly distinctly secondary in the earlier mark and is not in the mark applied for, in so far as those differences do not appear to have affected its finding of conceptual identity between the signs. However, as has been held in paragraph 38 above, the allusive element ‘airtours’ or ‘air-tours’ is at most equivalent to the laudatory element ‘easy’, which will be perceived and memorised as being at least equally striking, inasmuch as it does not refer to the goods and services at issue, but to an alleged quality of the goods and services covered by the mark applied for.

58 Consequently, it must be held that, in the context of an overall comparison, there is a low — or even very low, if the element ‘ticket factory’ is taken into account — degree of conceptual similarity between the signs at issue and that the Board of Appeal erred in apparently considering them to be identical, notwithstanding the differences held to exist, relating, in particular, to the influence of the element ‘easy’ on the overall conceptual impression created by the mark applied for.

59 It must be borne in mind at the outset that, according to the case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks and that the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see, to that effect, judgment in OHIM v Shaker, cited in paragraph 32 above, EU:C:2007:333, paragraph 35 and the case-law cited).

60 In the present case, it is apparent from an overall comparison of the signs at issue that the overall impression which each of them conveys to the relevant public is different. The average, or even rather low, degree of phonetic similarity and the low, or even very low, degree of conceptual similarity between them are offset and cancelled out by the overall impression of visual dissimilarity established in paragraphs 51 and 52 above, particularly because the marks at issue are both figurative and not word marks.

61 In that regard, it is important to point out, echoing the applicant’s claim that the earlier mark is a figurative mark and, as such, should not enjoy the same scope of protection as a mark which consists only of the word ‘airtours’, that, whereas a word mark usually covers any type of representation, a figurative mark, by definition, includes a specific representation, which, unless it is totally negligible, must, even if it is dominated by a word element, nevertheless be taken into account in the overall assessment of the similarity between the signs, with the result that such a figurative mark cannot, in principle, be given a scope of protection which is strictly identical to that of a word mark which consists only of its dominant word element.

62 Accordingly, in a scenario which was the opposite of that in the present case, concerning a comparison between, on the one hand, two marks which had been applied for, one of which was a word mark and the other of which was a figurative mark, and, on the other hand, one single earlier word mark, the General Court was able to hold that the latter had a very weak degree of similarity with the figurative mark applied for and a medium degree of similarity with the word mark applied for (see, by analogy, judgment of 4 February 2014 in Mega Brands v OHIM — Diset (MAGNEXT), T‑604/11 and T‑292/12, EU:T:2014:56, paragraph 29), thereby confirming that the figurative nature of a mark including a dominant word element tends, in an overall impression, to reduce its similarity with another sign containing a word element which is identical or similar to that element.

63 In the present case, the figurative nature of the two marks at issue — which have in common only one word element, which is, moreover, not dominant in one of them, whereas their figurative elements are completely different — thus tends to reinforce the finding that they are dissimilar.

64 In conclusion, since, as has been held in paragraph 60 above, the signs at issue are, considered as a whole, dissimilar in the overall impressions that they convey to the relevant public, the Board of Appeal erred in finding, in paragraph 36 of the contested decision, that they were similar.

65 It is apparent from settled case-law that, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see, to that effect, judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48; 23 January 2014 in OHIM v riha WeserGold Getränke, C‑558/12 P, ECR, EU:C:2014:22, paragraph 41; and 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited). The similarity of the marks at issue is therefore a necessary condition for it to be found that there is a likelihood of confusion within the meaning of that article, with the result that a lack of similarity between the marks at issue renders that article inapplicable (judgment in OHIM v riha WeserGold Getränke, EU:C:2014:22, paragraph 44) and that, where there is no such similarity, the enhanced distinctiveness of the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the marks at issue (judgment in OHIM v riha WeserGold Getränke, EU:C:2014:22, paragraph 42).

66 In the present case, since it has been established, in paragraph 60 above, that the signs at issue are, considered as a whole, dissimilar in the overall impressions that they convey to the relevant public, it may be deduced from that lack of similarity between the signs that any likelihood of confusion between the marks at issue is precluded, without it being necessary first to apply the principle of interdependence and, in particular, to examine any highly distinctive character of the earlier mark in the course of a global assessment of the likelihood of confusion (see, to that effect, order of 4 March 2010 in Kaul v OHIM, C‑193/09 P, EU:C:2010:121, paragraph 45, and judgment in OHIM v riha WeserGold Getränke, cited in paragraph 65 above, EU:C:2014:22, paragraph 43).

67 In the light of all of the foregoing considerations, it is necessary to uphold the single plea in law put forward in support of the action and, consequently, to uphold the applicant’s first head of claim by annulling the contested decision.

68 As regards the applicant’s second head of claim, seeking the rejection of the opposition in its entirety and, in reality, requesting the alteration of the contested decision (see paragraph 20 above), it must be borne in mind that the power of the General Court to alter decisions pursuant to Article 65(3) of Regulation No 207/2009 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgments of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraph 72, and in BETWIN, cited in paragraph 20 above, EU:T:2013:291, paragraph 78).

69 In the present case, the conditions for the exercise of the General Court’s power to alter decisions, as set out in the judgment in Edwin v OHIM, cited in paragraph 68 above, EU:C:2011:452, are not satisfied. Although it is in fact apparent from the considerations set out in paragraph 66 above that the Board of Appeal was required to find that there was no likelihood of confusion between the mark applied for and the earlier German figurative mark reproduced in paragraph 6 above, the fact remains that the Board of Appeal — since it incorrectly found that the comparison of the mark applied for with that earlier mark was sufficient to establish that there was a likelihood of confusion capable of justifying the Opposition Division’s upholding of the opposition — did not rule on whether there was any likelihood of confusion between the mark applied for and the four other earlier figurative marks reproduced in paragraph 4 of the contested decision and in paragraph 8 above.

70 Since the issue of whether there is any likelihood of confusion between the mark applied for and the earlier marks other than that reproduced in paragraph 6 above was not examined by the Board of Appeal, it is not for the General Court to examine it, for the first time, in its review of the legality of the contested decision (see, to that effect, judgments in Edwin v OHIM, cited in paragraph 68 above, EU:C:2011:452, paragraphs 72 and 73; VÖLKL, cited in paragraph 20 above, EU:T:2011:739, paragraph 63; and of 11 December 2014 in CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, ECR, EU:T:2014:1058, paragraph 101 and the case-law cited).

71 As the General Court is not able to exercise its power to alter the contested decision in order to annul the Opposition Division’s decision of 2 April 2012 and reject the opposition in respect of all the goods and services concerned, the applicant’s second head of claim must be rejected.

72 It will therefore fall to the Board of Appeal to assess, having regard to the grounds of the present judgment, in particular as regards the overall impression created by the mark applied for, which is different from that created by an earlier mark the dominant element of which is ‘airtours’ such as that reproduced in paragraph 6 above, whether there is a likelihood of confusion between the mark applied for and the earlier marks reproduced in paragraph 8 above, when making the decision which it is called upon to give on the appeal which is still pending before it (see, by analogy, judgment in Shape of a blade of grass in a bottle, cited in paragraph 70 above, EU:T:2014:1058, paragraph 102 and the case-law cited).

73 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

74 Since OHIM and the intervener have been unsuccessful for the main part, first, OHIM must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the latter, and, secondly, the intervener must be ordered to bear its own costs.

1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 5 September 2013 (Case R 1029/2012-1);

3. Orders OHIM to bear its own costs and to pay those incurred by easyGroup IP Licensing Ltd;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> easyGroup IP Licensing v OHMI - Tui (easyAir-tours) (Judgment) [2015] EUECJ T-608/13 (13 May 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T60813.html Cite as: [2015] EUECJ T-608/13, ECLI:EU:T:2015:282, EU:T:2015:282

Court of Justice of the European Communities (including Court of First Instance Decisions)