easyGroup successful on appeal in 'airtours' case
In easyGroup IP Licensing Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-608/13, May 13 2015), the General Court has annulled a decision of the First Board of Appeal of OHIM in an opposition matter.
easyGroup IP Licensing Ltd filed a Community trademark application for the word-and-device mark EASYAIR-TOURS in white script on an orange rectangle, depicted below, in Classes 16, 36, 39 and 43 of the Nice Classification:
German travel company TUI AG filed an opposition based on several marks containing the word 'airtours', as well as additional elements. The Opposition Division of OHIM focused on the mark AIRTOURS TICKET FACTORY, depicted above, in Classes 38, 39 and 43, as it was the strongest earlier mark which was not liable to proof of use. It upheld the opposition based on the mark AIRTOURS TICKET FACTORY with respect to most of the goods and services, holding that EASYAIR-TOURS and AIRTOURS TICKET FACTORY were confusingly similar. The First Board of Appeal of OHIM dismissed easygroup’s appeal, holding that both marks were dominated by the term 'airtours', while all the other elements were of minor importance.
easygroup appealed to the General Court, arguing that the board's decision infringed Article 8(1)(b) of the Community Trademark Regulation (207/2009). easygroup claimed that more attention should be paid to the other elements of its mark, while OHIM and TUI defended the decisions of the Opposition Division and the Board of Appeal.
The General Court followed easygroup and annulled the decision of the Board of Appeal. The court reiterated the established criteria for a finding of a likelihood of confusion, and started its examination by determining the distinctive and dominant elements of the two marks.
With respect to easygroup's mark, the court stated that the intrinsic qualities of each of the components of a composite mark must be taken into account, as well as the relative position of these components within the arrangement of that mark. It concluded that the intrinsic qualities of the word elements 'easy' and 'Air-tours' in easygroup’s mark were practically the same, and that the Board of Appeal had erred in considering the component 'Air-tours' to be dominant. The General Court was of the opinion that both 'easy' and 'Air-tours' have a weak distinctive character.
With respect to the position of the word elements, the General Court held that 'easy' was slightly more dominant than 'Air-tours', as 'easy' was placed at the beginning of the mark. easygroup's allegation that the reputation of 'easy' should be taken into account was rejected by the General Court, as only the reputation of the earlier mark would be relevant.
With respect to the broad orange rectangle, the General Court also disagreed with the Board of Appeal, holding that owing to its size and its bright colour, this figurative element would clearly be perceived and memorised by the relevant public and would not be dominated by the word elements. Contrary to the Board of Appeal, the General Court came to the conclusion that the three elements - 'easy', 'Air-tours' and the broad orange rectangle - had the same importance in the overall impression of the mark.
Turning to the earlier mark AIRTOURS TICKET FACTORY, the General Court agreed with the assessment of the Board of Appeal that the word element 'airtours' printed in dark blue, and considerably bigger than 'Ticket Factory' printed in grey, clearly dominated the mark. However, the General Court also emphasised that 'airtours' had only a low degree of distinctive character in view of its allusive nature in respect of the goods and services concerned.
Having determined the distinctive and dominant elements of the marks, the General Court turned to the visual, phonetic and conceptual comparison of the marks. It came to a different conclusion than the Board of Appeal:
- Even though the marks coincided in the term 'airtours', this was not sufficient to find a visual similarity, because the word element 'easy' and the broad orange rectangle had the same importance for the overall impression, so that the marks were clearly different from a visual point of view. The additional element 'Ticket Factory' contributed to this visual dissimilarity, even though it was only secondary in nature.
- The General Court agreed with the Board of Appeal that the marks coincided in the term 'airtours' phonetically. However, the additional word element 'easy' helped to reduce this phonetic similarity and the General Court even took the word element 'Ticket Factory' into account, despite the fact that it was only of a secondary nature. The General Court therefore came to the conclusion that the phonetic similarity was average or even low if the element 'Ticket Factory' was also taken into account.
- The General Court agreed with the Board of Appeal that the word elements 'airtours' were conceptually similar. However, the additional element 'easy', which had the same importance as 'airtours' in easygroup's mark, could not be neglected, so that the conceptual similarity was at best low or even very low, if the additional element 'Ticket Factory' was also taken into account.
Given the visual dissimilarity between the marks, the - at best - average phonetic similarity and the low - or even very low - conceptual similarity, the court came to the conclusion that the marks in question were not similar overall. The General Court even pointed out that a figurative mark such as AIRTOURS TICKET FACTORY should not enjoy the same scope of protection as a mark which only consists of the word 'airtours' alone (Paragraph 61).
As the General Court had concluded that the signs were not similar overall, and as the similarity of the signs is a prerequisite condition for a likelihood of confusion, the General Court refused to take the identity of the goods and services and the possible enhanced distinctiveness of the earlier mark into account. The lack of similarity of the two marks was sufficient to uphold easygroup's single plea and to annul the board's decision.
In view of the inherent weakness of the word 'airtours', this decision is possibly not a surprise. However, the General Court’s unwillingness to find a similarity between the two marks by paying more attention to the other elements of the mark EASYAIR-TOURS could be an indication that the General Court will not find a likelihood of confusion between two word-and-device marks as easily as between two word marks. This is supported by the fact that the court emphasised the importance of the bright orange rectangle in easygroup's mark and also pointed out that word-and-device marks should not enjoy the same scope of protection as mere word marks.
It remains to be seen whether the General Court will follow this approach in other decisions. As EASY and the orange rectangle were the house marks of easygroup, it is interesting to see that the General Court did not even discuss the Thomson Life doctrine: 'airtours' could have “an independent distinctive role in the composite sign, without necessarily constituting the dominant element” and could therefore be the relevant element to compare. Finally, it would be frustrating for TUI to have made major investments to build the mark AIRTOURS and to then see a competitor get away with using a younger mark consisting of the competitor's house mark with the word 'airtours'.
Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg
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