OPPOSITION No B 2 706 052
Comité International Olympique (Association), Château de Vidy, 1007 Lausanne, Switzerland (opponent), represented by Wilson & Berthelot, 22, rue Bergère, 75009 Paris, France (professional representative)
a g a i n s t
Investment Hub Gayrimenkul Yatırım Danışmanlık İnşaat Sanayi ve Ticaret Limited Şirketi, Küçükçamlıca Cumhuriyet Mah. Libadiye Cad. No:37 İç Kapı No:3 Üsküdar, Istanbul, Turkey (applicant), represented by Franco Martegani S.R.L., Via Carlo Alberto 41, 20052 Monza (MI), Italy (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 706 052 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 090 939. The opposition is based on European Union trade mark registration No 2 970 366 and international trade mark registration No 1 026 242 designating the European Union. The opponent invoked Article 8(1)(b) and 8(5) 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.
- The goods and services
The goods and services on which the opposition is based are the following:
(1) EUTM registration No 2 970 366
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Class 35: Publicity; business management; business administration; office functions; promotion of goods and services for others, by means of partnership agreements (sponsoring) and licences, in connection with international sports events; retail services.
Class 41: Providing of education; training; entertainment; sporting and cultural activities.
Class 43: Services for providing food and drink; temporary accommodation.
(2) IR No 1 026 242
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flours and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice for refreshment.
Class 31: Agricultural, horticultural and forestry products and grains, not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; animal foodstuffs, malt.
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Class 35: Advertising; dissemination of advertising matter using all media, especially in the form of topic-based messages centred on human values; advertising by means of sponsoring; business management; business administration; office functions; promotion of the goods and services of others, through contractual agreements, especially partnership (sponsoring) and licences, offering them greater exposure and/or image strength and/or a surge of sympathy derived from that greater exposure and/or that image strength of cultural and sports events, especially international ones, and/or the surge of sympathy derived therefrom; promotion of the goods and services of others by means of the initial interest factor leading the public to consider from a host of competitors, goods or services which are presented to them provided with specific symbols, emblems or messages to capture their attention; promotion of the goods and services of third parties using image transfer; rental of advertising space of all kinds and on any media, in digital or other form; business administration of the participation by national teams in an international athletic competition and promotion of support for said teams by the public and interested sectors; statistical information services.
Class 41: Education; providing of training; entertainment; sporting and cultural activities, televised cultural and sporting entertainment; organization of cultural and educational exhibitions; operating lotteries and organizing competitions; betting and gaming services linked to or in connection with sports; entertainment services provided at sports events or concerning sports events; organization of sporting and cultural activities and events; organizing real or virtual sports competitions; operating sports facilities; audio and video equipment rental services; production, presentation and distribution of films and video and audio recordings; rental of films and video and sound recordings; presentation, networking and/or rental of interactive educational and entertainment products, namely interactive compact discs, CD-ROMs, computer games; coverage of radio broadcast and televised sports events; radio and television programme and videotape editing services; production of cartoons; production of animation programmes for television; ticket reservation services for shows and sports events; timing of sports events; arranging of beauty contests; interactive entertainment; online betting services; providing games on the Internet; providing raffle services; information on entertainment or education, provided online from a data bank or from the Internet; electronic games services provided through the Internet; providing electronic publications online; publication of books, magazines and texts (other than advertising texts) and periodicals; publication of books, magazines and texts (other than advertising texts) and of electronic magazines online; provision of digital music from the Internet; providing digital music from Internet MP3 Web sites; providing sports results; information services in connection with sport and sports events; rental of recorded sounds and images; audio production services; information services about sports events provided online from a computer database or from the Internet; editing and publishing services; providing digital music (non-downloadable); offering digital music via telecommunications.
Class 43: Services for providing food and drink; cafeteria and restaurant services; reception and hospitality services, namely provision of food and drink; catering services; reservation of hotels and temporary accommodation.
The contested goods are the following:
Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar; sauces (condiments); spices; ice.
Class 31: Agricultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables; natural plants and flowers; live animals; foodstuffs for animals; malt.
Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
Contested goods in Class 30
Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar; sauces (condiments); spices; ice are identically contained in both lists of goods (including synonyms).
Contested goods in Class 31
Agricultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables; natural plants and flowers; live animals; foodstuffs for animals; malt are identically contained in both lists of goods (including synonyms).
Contested goods in Class 32
Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages are identically contained in both lists of goods (including synonyms).
- 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 goods found to be identical are directed at the public at large.
The degree of attention may vary from average to lower than average (in the case of foodstuffs for daily consumption).
- The signs
(1) EUTM No 2 970 366
(2) IR No 1 026 242
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Earlier trade marks |
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).
All marks are purely figurative. Earlier mark (1) consists of five interconnected circles, depicted on two lines, each of them being coloured in a different colour, namely blue, black, red, yellow and green. Earlier mark (2) consists of five interconnected black circles, depicted on two lines. The five circles in both earlier marks will be perceived by the relevant public as the Olympic circles.
The contested mark consists of five blue ovals, each of them containing inside some blue and red hieroglyphs with white borders. It is not excluded that part of the public to perceive the hieroglyphs as Oriental or Arabic characters, and for this reason to associate the contested mark with something connected with to Orient or Arabic countries.
Visually, the signs coincide in only in the fact that all of them have five elements, depicted on two lines. The differences are obvious, earlier marks being composed of circles, whereas the contested mark is composed of ovals. The colours of the signs are different. Moreover, the contested mark contains some Oriental or Arabic characters which are not present in the earlier marks.
As the signs only coincide in irrelevant aspects, namely that all of them have five elements, depicted on two lines, it is concluded that the signs are not visually similar.
Aurally, purely figurative signs are not subject to a phonetic assessment. As all of the signs are purely figurative, it is not possible to compare them aurally.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.
As the signs merely coincide in irrelevant aspects, they are dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the [applicant][holder] establishes due cause for the use of the contested trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
- The signs
The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.
It follows from the above that similarity or identity of the signs is one of the conditions of Article 8(5) CTMR. As already found above, the marks at issue are dissimilar. Therefore, the opposition must also be rejected insofar as it is based on Article 8(5) CTMR.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
| Cristina CRESPO MOLTO | Francesca DINU | Janja FELC |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.