OPPOSITION No B 2 699 646

Olympic Entertainment Group As, Pronksi 19, 10124 Tallinn, Estonia (opponent), represented by Patent & Trade Mark Agency Koitel, Tina 26, 10126 Tallinn, Estonia (professional representative)

a g a i n s t

Darina Borisovna Denisova, 1-st Dubrovskaya street, bld. 1, block 1, flat 44, Moscow  109044, Russian Federation (applicant), represented by Stavros Stavrinides, 31 Evagorou street, Evagoras complex, 5th floor, office 54, 1066 Nicosia, Cyprus (professional representative).

On 24/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 646 is upheld for all the contested services.

2.        European Union trade mark application No 15 088 347 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 088 347. The opposition is based on, inter alia, European Union trade mark registration No 10 646 503. The opponent invoked Article 8(1) (b) and 8(4) 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 10 646 503.

1. The services

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

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 43: Services for providing food and drink; temporary accommodation.

The contested services are the following:

Class 41: Providing casino facilities; providing casino facilities [gambling]; providing of casino and gaming facilities; gambling; gambling services; game services provided on-line from a computer network; timing of sports events; provision of information relating to racing; provision of information relating to jockeys; provision of information relating to racehorses; provision of information relating to sports; provision of information relating to motor sports; provision of information relating to motor racing; racing information services; handicapping for sporting events; entertainment in the nature of wrestling contests; entertainment in the nature of baseball games; entertainment in the nature of basketball games; entertainment in the nature of boxing contests; entertainment in the nature of football games; entertainment in the nature of soccer games; entertainment in the nature of automobile races; entertainment in the nature of golf tournaments; entertainment in the nature of hockey games; entertainment in the nature of gymnastic performances; entertainment in the nature of tennis tournaments; entertainment in the nature of ice hockey games; entertainment in the nature of weight lifting competitions; entertainment in the nature of track and field competitions; entertainment in the nature of yacht races; entertainment services in the nature of skating events; providing wrestling news and information via a global computer network; sporting results services; betting services; horses (betting on -); casino, gaming and gambling services; dog races; football pools services; wagering services; on-line gaming services; gaming services for entertainment purposes; electronic game services and competitions provided by means of the internet.

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.

The contested providing casino facilities; providing casino facilities [gambling]; providing of casino and gaming facilities; gambling; gambling services; game services provided on-line from a computer network; entertainment in the nature of wrestling contests; entertainment in the nature of baseball games; entertainment in the nature of basketball games; entertainment in the nature of boxing contests; entertainment in the nature of football games; entertainment in the nature of soccer games; entertainment in the nature of automobile races; entertainment in the nature of golf tournaments; entertainment in the nature of hockey games; entertainment in the nature of gymnastic performances; entertainment in the nature of tennis tournaments; entertainment in the nature of ice hockey games; entertainment in the nature of weight lifting competitions; entertainment in the nature of track and field competitions; entertainment in the nature of yacht races; entertainment services in the nature of skating events; betting services; horses (betting on -); casino, gaming and gambling services; dog races; football pools services; wagering services; on-line gaming services; gaming services for entertainment purposes; electronic game services and competitions provided by means of the internet are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The remaining contested services, namely timing of sports events; provision of information relating to racing; provision of information relating to jockeys; provision of information relating to racehorses; provision of information relating to sports; provision of information relating to motor sports; provision of information relating to motor racing; racing information services; handicapping for sporting events; providing wrestling news and information via a global computer network; sporting results services are similar to the opponent’s sporting activities. They have the same purpose, distribution channels and relevant public. Moreover, these services can be ancillary and their providers may coincide.

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 and at business customers with specific professional knowledge of expertise. The degree of attention is considered average.

3. The signs

OLYMPIO	OLIMP
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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The marks, being word marks, do not have any elements that could be considered dominant. Likewise, they do not include any elements that could be considered more or less distinctive than other elements.

Visually, the signs coincide in the four letters ‘OL*MP’, present in the same order in both marks. They differ in their third letter, namely ‘Y’ for the earlier mark and ‘I’ for the contested sign, as well as in the two last letters ‘IO’ of the earlier mark.

In addition, it has to be recalled that 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. In the present case, the diverging letters are placed in the middle of the signs where they are more likely to be overlooked by consumers.

Therefore, the visual similarity of the signs is slightly below the average.

Aurally, the third letter of the signs, namely /Y/ for the earlier mark and /I/ for the contested sign, will be pronounced as [i] or [ɛ̃] by the French public. Therefore, as mentioned above, a significant part of this public will pronounce this letter identically.

Consequently, the pronunciation of the signs coincides in the sound of the distinctive strings of letters ‘OLYMP / OLIMP’, which consist the whole contested sign as well as the major and most striking part of the earlier mark.

The pronunciation differs in the sound of the last two letters of the earlier mark /IO/, which will correspond to only one syllable for the major part of the French public.

Therefore, the signs are similar to a relatively high degree.

Conceptually, neither of the signs exists as such in French. However, the contested sign ‘OLIMP’ is phonetically identical and visually very close to the French word ‘OLYMPE’, namely Mount Olympus, which is the highest mountain in Greece, believed in Greek mythology to be the dwelling place of the greater gods. Accordingly, an important part of the French public will perceive this concept in the sign. Moreover, the word ‘OLIMP’ may also be associated with the Olympic Games, which derive their name from Mount Olympus (Olympe in French). (See in this respect 05/05/2011, T-204/09, Olymp, EU:T:2011:196; 03/06/2015, R 1267/2014-2 – OLIMP LIVE & FIGHT / OLYMP et al.)

The earlier mark ‘OLYMPIO’ may be associated with the same ideas by the French public. Indeed, this term can be perceived as being derived from the words ‘OLYMPE’ and ‘OLYMPIQUE’, as they share more than a common root.

Therefore, since the signs may be associated with the same concept, whatever that may be, they are conceptually identical for a part of the public.

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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

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.).

Moreover, the Court has set out the essential principle that 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 the 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 services are partly identical and partly similar. The signs are phonetically similar to a relatively high degree and conceptually identical for a part of the public. As to the visual similarity, it is slightly below the average.

It has also to be recalled that for a significant part of the public, the contested sign is phonetically totally included in the striking beginning of the earlier mark and only differs in a less noticeable final syllable.

Based on all the foregoing, the differences are not particularly prominent nor numerous. In any case, they are not sufficient to clearly differentiate the marks. Indeed, it is considered that, for a sufficiently large part of the public, there are strong coincidences between the signs. Taken together with the identity and similarity of the services and the average degree of attention, it is likely that these consumers will, if not directly confuse the marks, associate them and believe that the conflicting services come from the same undertaking or economically linked undertakings.

Account should also be taken of 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.

Considering all the above, there is a likelihood of confusion on the part of 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 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 10 646 503. It follows that the contested trade mark must be rejected for all the contested services.

As this earlier right 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(4) 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

Anna BAKALARZ

Steve HAUSER

Begoña URIARTE VALIENTE

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.