OPPOSITION No B 2 308 172

Ayuntamiento de Barcelona, Pl. San Jaime, s/n; 08002 Barcelona, Spain (opponent)

a g a i n s t

Salamanca Group Holdings (UK) Limited, Nash House, St George Street, London W1S 2FQ, United Kingdom (applicant), represented by Barroso Hernández, Calvet 5, 2º 2ª, 08021 Barcelona, Spain (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 308 172 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 and services of European Union trade mark application No 12 283 016. The opposition is based on European Union trade mark registration No 1 619 709. 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.

1. The services

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

Class 35: Advertising; business management, business administration; office functions.

Class 38: Telecommunications.

Class 42: Providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming.

The contested goods and services are the following:

Class 16: Publications, periodicals and magazines featuring articles and information relating to the following: food, drink, property, fashion, lifestyle, art, culture, heritage, craft, sport, tourist attractions and activities, events listings and city guides and activity guides; including the provision of all of the aforementioned online.

Class 35: Advertising; provision of advertising space; including the provision of advice, information and consultancy relating to all of the aforesaid.

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 services, indicates that the specific services 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 method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 16

The contested publications, periodicals and magazines featuring articles and information relating to the following: food, drink, property, fashion, lifestyle, art, culture, heritage, craft, sport, tourist attractions and activities, events listings and city guides and activity guides; including the provision of all of the aforementioned online are published documents containing articles and information related to the aforementioned topics. They have nothing in common with the opponent’s services in Classes 35, 38 and 42. The opponent’s services in Class 35 include services rendered by persons or organisations principally with the object of helping in the management of business affairs, as well as services rendered by advertising establishments primarily undertaking communication to the public. Class 38 concerns services that allow at least one person to communicate with another by a sensory means. Class 42 includes services provided by persons or establishments whose aim is to prepare food and drink for consumption and services of providing accommodation; medical care, hygienic and beauty care services; veterinary services; services relating to the field of agriculture; and services rendered by lawyers. The contested goods and the opponent’s services have different natures, purposes, methods of use and distribution channels; the end users would not expect these goods and services to be provided by the same undertakings. They are dissimilar.

Contested services in Class 35

Advertising services are identically contained in both lists of services.

The contested provision of advertising space; including the provision of advice, information and consultancy relating to all of the aforesaid are included in the broad category of the opponent’s advertising. Therefore, they are identical.

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 are specialised services directed at business customers with specific professional knowledge or expertise.

Given the business-related nature of the services, the degree of attention is considered higher than average.

3. The signs

BARCELONA	SUPERYACHT BARCELONA
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive or weak elements.

The earlier trade mark and the contested sign are word marks.

The element ‘yacht’ will be understood in English, Italian, French and German as referring to a large boat used for racing or pleasure trips, and the remaining public will not understand this element. As it is not descriptive, allusive or otherwise weak in relation to the services in question, it has an average degree of distinctiveness. ‘Super’ will be understood by the entire relevant public as an adjective referring to something which is ‘superb’ or ‘extraordinary’, and this element therefore has a laudatory connotation. Consequently, it lacks distinctiveness.

The word ‘BARCELONA’ will be perceived by a significant part of the relevant public as referring to a city on the north-east coast of Spain and thus to that extent, it indicates where the services are rendered. Therefore, the distinctive character of the element ‘BARCELONA’ must be seen as lower than average.

Conceptually, the signs coincide their reference to the city of Barcelona. However, the contested sign has additional meanings, as explained above. Considering all the relevant factors, and in particular the distinctiveness of the elements of the marks, the sign are conceptually similar to a low degree.

Visually and aurally, the signs coincide in the word ‘BARCELONA’, which forms the entire earlier mark. However, they differ in the first element, ‘SUPERYACHT’, of the contested sign. The differences between the signs arise from their beginnings, which usually attract the primary attention of the public.

Therefore, the signs are visually and aurally similar to a low 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the services in question.

However, the earlier mark must be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, §  22 et seq.).

The contested goods are dissimilar to the opponent’s services. The services under comparison are identical and they are aimed at professionals, who pay close attention when selecting them. The degree of attention of the relevant public will be higher than average.

The various elements in the marks have been described above. The coincidence in an element that will be perceived as indicating where the services in question are rendered is not sufficient for a finding of likelihood of confusion, as the contested sign includes an additional element at its beginning, and the signs are of different lengths. The clear differences between the signs caused by the additional verbal elements are particularly relevant when assessing the likelihood of confusion between them.

As a result of the visual, aural and conceptual differences between the signs, the Opposition Division considers that, despite the identity between the services in question, the public with a high degree of attention will not confuse the marks.

The differences between the marks are sufficient to enable the relevant public to distinguish between them, even taking into account the principle of imperfect recollection. Therefore, consumers are unlikely to believe that the services provided under the earlier mark and the services provided under the contested sign come from the same undertaking or economically-linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public.

Therefore, the opposition on the grounds laid down in Article 8(1)(b) EUTMR must be rejected.

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.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 31/03/2014, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. The period was extended and the new time limit expired on 05/06/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

As a result, the opposition is rejected in its entirety.

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

Marine DARTEYRE

Julie GOUTARD

Loreto URRACA LUQUE

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.