OPPOSITION No B 2 725 185

In and Out Limited, 4 St James’s Square, London SW1Y 4JU, United Kingdom (opponent), represented by Bromhead Johnson, Sovereign House, 212-224 Shaftesbury Avenue, London WC2H 8HQ, United Kingdom (professional representative)

a g a i n s t

Roof – New Concept Media, Travessa da Telheira, 294, 4455-494 Matosinhos, Portugal (applicant).

On 21/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 725 185 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 230 592, namely against all the goods and services in Classes 16 and 41. The opposition is based on United Kingdom trade mark registration No 2 536 989. The opponent invoked Article 8(1)(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 goods and services on which the opposition is based are the following:

Class 16: Stationery; office requisites; printed matter.

Class 41:        Private members’ club services; provision of social and recreational facilities; provision of sports, fitness and gymnasium facilities; health club services.

Class 43: Provision of temporary accommodation; restaurant, bar, cafeteria, catering and banqueting services; providing facilities for meetings, conferences and seminars.

The contested goods and services are the following:

Class 16: Graphic art prints; newspapers; magazines [periodicals]; books.

Class 41: Publication and editing of printed matter; organisation of congresses and conferences for cultural and educational purposes; organising events for cultural purposes; conducting of exhibitions for entertainment purposes; organizing cultural and arts events; publication of year books; publication of books; publishing services for books and magazines; publication of electronic books and periodicals on the internet; services for the publication of newsletters; publication of printed matter relating to intellectual property rights; publication of printed matter.

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 graphic art prints; newspapers; magazines [periodicals]; books are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

Contested services in Class 41

The opponent’s services in Class 41 comprise private members’ club services; provision of social and recreational facilities; provision of sports, fitness and gymnasium facilities; health club services.

The wording private members’ club services indicates a very broad category comprising all the services that an association or organisation of people might provide to its members at their request or of its own volition. These services are offered in different fields, such as education and training (e.g. organisation of colloquiums, seminars or training on diverse subjects of interest), entertainment, and services in the fields of culture and sports (e.g. theatre performances, film projections, organisation of sports competitions, organisation of shows, party planning). Furthermore, the opponents’ provision of social and recreational facilities; provision of sports, fitness and gymnasium facilities are ancillary services necessary for the provision of the abovementioned activities.

The contested organisation of congresses and conferences for cultural and educational purposes; organising events for cultural purposes; conducting of exhibitions for entertainment purposes; organizing cultural and arts events are included in the broad categories of, or overlap with, the opponent’s private members’ club services; provision of social and recreational facilities; provision of sports, fitness and gymnasium facilities; health club services. Therefore, they are identical.

The contested publication and editing of printed matter; publication of year books; publication of books; publishing services for books and magazines; publication of electronic books and periodicals on the internet; services for the publication of newsletters; publication of printed matter relating to intellectual property rights; publication of printed matter may be rendered by the same providers as those of the opponent’s printed matter in Class 16; moreover these goods and services are complementary to each other. Therefore, the contested services are similar to the opponent’s printed matter.

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 goods and services found to be identical or similar are directed at the public at large and also at professionals. The services at issue may demand specific professional knowledge or expertise from the public concerned.

The degree of attention is deemed to be average.

3. The signs

THE IN & OUT
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 earlier trade mark, ‘THE IN & OUT’, is a word mark comprising the equivalent of the expression ‘in-and-out’ (‘informal, 1. Involving rapid inward and outward movement’; information extracted from Oxford English Dictionary online edition) along with the definite article, ‘The’, and the ampersand standing for ‘and’.

The contested figurative sign consists of the word ‘ROOF’ depicted in standard bold upper case letters that are split horizontally in their upper parts and offset to the right. Below this element are the words ‘AN IN & OUT MAGAZINE’, depicted in much smaller standard narrow upper case latters.

The element that the signs have in common, ‘IN & OUT’, will be understood by the relevant public as having the meaning explained above. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The stylised word element, ‘ROOF’, of the contested sign, which will be associated with ‘the structure forming the upper covering of a building or vehicle’ (information extracted from Oxford English Dictionary online edition), is dominant over the remaining elements of the sign by virtue of, in particular, its position.

Bearing in mind that the contested sign includes the word ‘MAGAZINE’ and the relevant goods are, for example, newspapers or magazines and the services are, inter alia, publication-related services, this element is non-distinctive for part of these goods and services, namely for graphic art prints; newspapers; magazines [periodicals] in Class 16 and publication and editing of printed matter; publishing services for books and magazines; publication of electronic books and periodicals on the internet; services for the publication of newsletters; publication of printed matter relating to intellectual property rights; publication of printed matter in Class 41.

Visually, the signs coincide in the word elements ‘IN & OUT’. However, they differ in the word element ‘ROOF’ of the contested sign, which constitutes its initial and dominant part. Although they coincide in the expression ‘IN & OUT’, this coinciding element is preceded by the definite article, ‘THE’, in the earlier mark, and the indefinite article, ‘AN’, in the contested sign. Furthermore, the contested sign contains the additional word element ‘MAGAZINE’, which renders the contested sign markedly longer as far as its word elements are concerned. Account must be taken of the fact that this commonality between the signs is limited to an element that, by virtue of its size and position, is secondary in the contested sign.

Therefore the verbal elements of the contested sign and not their fanciful stylisation are the elements that will attract most of the consumers’ attention.

Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, since the signs are similar to the extent that they coincide in the expression ‘IN & OUT’ and vary in the remaining elements, as described above, they are considered visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sounds of the words ‛IN’/‘AND’/‘OUT’, present identically in both signs. The pronunciation differs in the sounds of the letters of the articles ‘THE’/‘AND’ of the earlier and the contested sign, respectively, and in the sound of the distinctive word ‘ROOF’ and the non-distinctive word ‘MAGAZINE’ of the contested sign, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to a low degree because they have the element ‘IN & OUT’ in common.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as conveying the concept of the meaningful expression ‘IN & OUT’, the signs are conceptually similar only to this extent. However, the difference in the articles, ‘THE’/‘AN’, preceding that expression in the earlier and contested sign, respectively, will be noted by the relevant public, and to a certain degree they will contribute to the remaining differences found on the conceptual level. The contested sign contains additional distinctive and non-distinctive meaningful words such as ‘ROOF’, and ‘MAGAZINE’, respectively. Therefore, in the overall perception the impact of the coinciding element, ‘IN & OUT’, will be limited, since the contested sign contains another distinctive word, ‘ROOF’, which is also the dominant element in this sign.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

The Opposition Division assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

In the present case, the contested goods and services are identical or similar to the opponent’s goods and services. The attentiveness of the relevant public is deemed to be average.

The signs under comparison are visually, aurally and conceptually similar only to a certain extent due to the presence of the expression ‘IN & OUT’, which forms almost the whole of the earlier mark. However, as explained above, the difference in the definite and indefinite articles, ‘THE’ and ‘AN’, respectively, preceding this expression in each mark will constitute a considerable difference for the relevant public, which will influence their perception of both signs as a whole. In this regard, the additional distinctive first and dominant element of the contested sign, that is, the element ‘ROOF’, is particularly important. This element is in the central and initial position of the contested sign and is depicted in a stylised font that is much larger than the remaining word elements, ‘AN IN & OUT MAGAZINE’, and therefore it prevails over the latter elements.

In these circumstances, the dominant word element, ‘ROOF’, in the contested sign will undoubtedly be the element that is the most likely to be memorised at first glance by the relevant public and, in the event of encountering both signs, is likely to be referred to, since the expression ‘AN IN & OUT’ plays a secondary role in the contested sign. Although the word ‘MAGAZINE’ is non-distinctive in the contested sign, it also adds to the differences found (e.g. the length of both signs), which in the overall assessment are of greater importance than the similarities because of the presence of the coinciding element, ‘IN & OUT’.

Although the signs coincide visually, aurally and conceptually in the element ‘IN & OUT’, there is no likelihood of confusion, since this element is secondary in the contested sign and overshadowed by the additional dominant element, ‘ROOF’.

Considering all the above, and even taking into account the fact that the goods and services are identical or similar, there is no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR. Therefore, the opposition must be rejected.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Andrea VALISA

José Antonio GARRIDO OTAOLA

Francesca CANGERI SERRANO

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.