OPPOSITION No B 2 371 477

Football Temple Holding B.V., Dorpsstraat 843 E, 1566 EH Assendelft, the Netherlands (opponent), represented by Arlette Molenaar, Hoofdweg 50, 1058 BD Amsterdam, the Netherlands (professional representative)

a g a i n s t

I.E.S. S.r.l. – Intrattenimento e Sport, Via Agostino de Pretis 8, 56121 Pisa, Italy (applicant).

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 371 477 is partially upheld, namely for the following contested services:

Class 35:        Bringing together, exhibition and presentation, for others, in relation to printed matter, publications, newspapers, magazines, books, albums, photographs, posters, articles of stationery, clothing, clothing accessories, bags, backpacks, travelling bags and sports bags, leatherware, spectacles, jewellery, clocks and watches, sports equipment, helmets.

Class 41:        Entertainment relating to football; Sporting and cultural activities relating to football; Organisation of competitions relating to football.

2.        European Union trade mark application No 12 601 662 is rejected for all the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 601 662. The opposition is based on European Union trade mark registration No 12 583 951. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

1. The goods and services

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

Class 35:        Retail services in the field of sporting articles; Wholesaling in the field of sporting articles; all aforementioned services also provided via Internet.

Class 41:        Internet games (non-downloadable); Providing online games (non-downloadable); providing online contests.

The contested goods and services, after the applicant’s limitation of 02/07/2017, are the following:

Class 25:        Clothing, dresses, skirts, trousers, shorts, jackets, greatcoats, raincoats, overcoats, coats, shirts, tee-shirts, jumpers, tops, pullovers, sweatshirts; Underwear; Swimming costumes; Gymnastic and sports clothing; Clothing accessories, including scarves, neckties, headscarves, belts, gloves, stockings; Shoes, slippers, boots; Gymnastic and sporting footwear; Headgear.

Class 35:        Advertising; Dissemination of advertisements; Rental of advertising space; Business management; Business administration; Sales promotion (for others); Bringing together, exhibition and presentation, for others, in relation to printed matter, publications, newspapers, magazines, books, albums, photographs, posters, articles of stationery, clothing, clothing accessories, bags, backpacks, travelling bags and sports bags, leatherware, spectacles, jewellery, clocks and watches, sports equipment, helmets; Management of retail outlets for the sale of printed matter, publications, newspapers, magazines, books, albums, photographs, posters, articles of stationery, clothing, clothing accessories, bags, backpacks, travelling bags and sports bags, leatherware, spectacles, jewellery, clocks and watches, sports equipment, helmets; Services relating to franchising; Organisation of exhibitions for commercial or advertising purposes.

Class 41:        Education relating to football; Providing of training relating to football; Entertainment relating to football; Sporting and cultural activities relating to football; Organisation of competitions relating to football; Booking and ticketing services for musical, theatre and cinema productions and productions of all other kinds and for sporting events.

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

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the methods of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 25

The contested clothing, dresses, skirts, trousers, shorts, jackets, greatcoats, raincoats, overcoats, coats, shirts, tee-shirts, jumpers, tops, pullovers, sweatshirts; underwear; swimming costumes; gymnastic and sports clothing; clothing accessories, including scarves, neckties, headscarves, belts, gloves, stockings; shoes, slippers, boots; gymnastic and sporting footwear; headgear and the opponent’s services in Class 35 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical. Even though the applicant’s goods include sports clothing and footwear, they are not considered identical to the opponent’s sporting articles.

These contested goods in Class 25 are also dissimilar to the opponent’s services in Class 41, since they have different natures, purposes and methods of use, as well as different producer/providers and distribution channels. They are neither complementary nor in competition.

Contested services in Class 35

The contested bringing together, exhibition and presentation, for others, in relation to sports equipment are included in the broad category of the opponent’s retail services in the field of sporting articles; all aforementioned services also provided via internet. Therefore, they are identical.

The contested bringing together, exhibition and presentation, for others, in relation to printed matter, publications, newspapers, magazines, books, albums, photographs, posters, articles of stationery, clothing, clothing accessories, bags, backpacks, travelling bags and sports bags, leatherware, spectacles, jewellery, clocks and watches, helmets are considered similar to the opponent’s retail services in the field of sporting articles all aforementioned services also provided via internet. The services at issue have the same nature, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they have the same relevant public and distribution channels.

The contested advertising; dissemination of advertisements; rental of advertising space; business management; business administration; sales promotion (for others); services relating to franchising; organisation of exhibitions for commercial or advertising purposes are dissimilar to all the opponent’s services in Classes 35 and 41. They belong to different areas of activity, are of different natures and have different purposes. They are neither complementary nor in competition.

Contested services in Class 41

The contested entertainment relating to football; sporting and cultural activities relating to football; organisation of competitions relating to football are similar to the opponent’s internet games (non-downloadable), since these services can have the same distribution channels and relevant public. They also have the same purpose, namely that of amusing and entertaining the public. They are also in competition.

The contested education relating to football; providing of training relating to football; booking and ticketing services for musical, theatre and cinema productions and productions of all other kinds and for sporting events are dissimilar to the opponent’s services in Classes 35 and 41. They have different purposes and methods of use, as well as different providers and distribution channels. They are neither complementary nor in competition.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘TEMPLE’ is meaningful in certain territories, for example, in those countries where French is understood. In addition, for this part of the public, the word elements ‘FOOT’ and ‘FOOTBALL’ have the same meaning. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The contested sign is a figurative mark consisting of the letters ‘FT’ in white against an irregular black pentagon; below this element are the words ‘FOOTBALL TEMPLE’. The combination of the word elements will be associated by the relevant public with a privileged place frequented by experts and lovers of football. Consequently, these elements are weak for some of the relevant services in Class 35, namely for bringing together, exhibition and presentation, for others, in relation to sports equipment, and for the relevant services in Class 41.

The earlier mark is a figurative mark that is made up of three conjoined elements on a rectangular background, which include two verbal elements, ‘FOOT’ and ‘ALL’, and between them a figurative element that resembles the central circle of a football field; there is also another separate verbal element, ‘TEMPLE’. The verbal elements ‘FOOT’ and ‘TEMPLE’, in combination, will be associated with the meaning explained above. Therefore, these elements are weak for the relevant services, namely for retail services in the field of sporting articles and internet games (non-downloadable).

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, the black backgrounds of the signs will be perceived as merely decorative elements.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in ‘FOOT*ALL’ and ‘TEMPLE’. However, they differ in their backgrounds, in the verbal element ‘FT’ of the contested sign, to which the public will attribute little importance, as it consists of the initial letters of the other two verbal elements of the sign, and in the stylisation and the figurative element resembling the centre circle of a football field of the earlier mark. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘FOOT*ALL-TEMPLE’. The pronunciation differs in the sound of the additional letter, ‘B’, of the word ‘FOOTBALL’, and in the sound of the letters ‛FT’ of the contested sign, which have no counterpart in the earlier sign, and which are unlikely to be pronounced as they are the initial letters of the other two verbal elements of the sign. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the concept of a temple (place) dedicated to football, they are conceptually similar to an average degree. In addition, the figurative element of the earlier mark resembling the centre circle of a football field reinforces the concept of football. Therefore, the signs are conceptually similar to an average degree.

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

4. Distinctiveness of the earlier mark

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

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

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

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the good/services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

In the present case, the goods and services at issue are partly identical, partly similar and partly dissimilar. They target the public at large and the degree of attention is average. The signs are visually and conceptually similar to an average degree and aurally similar to a high degree.

The entire verbal element of the earlier mark, with the exception of the figurative element, is recognisable in the contested sign. The differences between the signs, as explained above, are not sufficient to offset the commonalities.

Considering all the above and taking into account the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), there is a likelihood of confusion for part of the public, namely the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union, in this case the French-speaking part of the public, is sufficient to reject the contested application.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 583 951. It follows that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sonia MEHANNEK

Alexandra APOSTOLAKIS

Frédérique SULPICE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.