OPPOSITION No B 2 665 043

Orange Brand Services Limited, 3 More London Riverside, London  SE1 2AQ, United Kingdom (opponent), represented by Taylor Wessing Llp, 5 New Street Square, London  EC4A 3TW, United Kingdom (professional representative)

a g a i n s t

Biofresh Usa Inc, 104 Bayard st, Floor 5, Suite 2, New Brunswick New Jersey NJ08901, United States of America  (applicant), represented by Eleni Nassou, 3 Nakou str. Athens, Greece, 11743  Athens, Greece (professional representative).

On 22/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 665 043 is upheld for all the contested services.

2.        European Union trade mark application No 14 815 179 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 815 179. The opposition is based on, inter alia, European Union trade mark registration No 12 542 197. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 542 197.

1. The services

The services on which, inter alia, the opposition is based are the following:

Class 41:         Education and training services; entertainment services; sporting and cultural activities; information relating to education, entertainment, sporting and cultural events provided on-line from a computer database or the Internet or provided by other means; electronic games services provided from a computer database or by means of the Internet; video, audio and computer games rental services; radio and television entertainment services; publishing and production of music, films (other than advertising films), radio and television programmes and of teleshopping and webshopping programmes; organising of games and competitions; providing on-line electronic publications; providing programs for consumer video games and handheld game apparatus via wireless communication (non downloadable); publication of electronic books and journals on-line; provision of movie, television and music video entertainment via an interactive web site; publication of texts in electronic format or otherwise; publishing and production services for sound and/or visual media; exhibition services; organisation, production and presentation of music concerts, musical, theatrical and video performances, festivals, tours and other musical and cultural performances, events and activities; organisation, management or arrangement of video games events; post-production editing services in the field of music, videos and films; news programming services for transmission across the Internet; arranging and conducting of conferences, seminars, symposia, tutorials, workshops, courses, conventions and exhibitions; interactive and distance learning or training courses and sessions provided on-line via a telecommunications link or computer network or provided by other means; translation services; art gallery services provided on-line via a telecommunications link; gaming services; club services; ticket reservation and booking services for entertainment, sporting and cultural events; electronic library services for the supply of electronic information (including archive information) in the form of electronic texts, audio and/or video information and data, games and amusements; providing digital music (not downloadable) from the Internet; providing photographs, pictures, graphics, sound bites, films, videos and audio-visual programmes (not downloadable) on-line or from computer databases or the Internet or Internet websites; photography services; provision of information and advice relating to all of the aforesaid services.

The contested services are the following:

Class 41:         Amusement park and theme park services; Provision of amusement facilities; Entertainment services in the nature of organizing social entertainment events.

The contested Amusement park and theme park services; Provision of amusement facilities; Entertainment services in the nature of organizing social entertainment events are included in the broad category of the opponent’s entertainment services. 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 directed at the public at large. The degree of attention is average.

3. The signs

ORANGE	ORANGELAND
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). This applies by analogy to international registrations designating the European Union. 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 ORANGE is not meaningful in certain territories, for example, in those countries where English or German is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English and German-speaking part of the public.

The marks are word marks.

The word ORANGE in both marks refers to an orange fruit or something of orange colour.

The element LAND of the contested sign will be understood as an area of a ground by the relevant public or a particular place or realm. It is a term commonly used in respect of entertainment facilities and parks (such as Disneyland, Legoland, Freizeit-Land, Taunus Wunderland, Lütge Land). Bearing in mind that the relevant services are entertainment and amusement park services, this element is weak for these services.

Furthermore, it is noted, that the 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.

Visually and aurally, the signs coincide in the element ORANGE, considering also the respective pronunciation rules of the relevant territories. The only word element of the earlier mark is encompassed entirely in the contested mark, in its beginning.   However, the marks differ in the element LAND, found weak, of the contested sign.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning in respect of the coinciding element ORANGE, 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.

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’).

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.

5. Global assessment, other arguments and conclusion

The services have been found identical. The visual, aural and conceptual aspects have been examined.

The earlier sign and the contested sign have been found to be similar to the extent that they have the element ORANGE in common, constituting the only word element in the earlier mark and the first and distinctive word element in the contested mark. The additional element LAND in the contested sign does not have a decisive differentiating effect, as it has been found to be weak. The distinctive word element  ORANGE, present in the marks makes the marks confusingly similar for the consumer who will focus on the beginning of the marks, as explained.  

It is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause at least a part of the public to believe that the conflicting services, which are identical, come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English- and German-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 is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 542 197. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right EUTM No 12 542 197 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DINU

Erkki MÜNTER

Julie GOUTARD

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.