OPPOSITION No B 2 401 126

Snowland Participações e Consultoria Ltda, Av. das Hortênsias nº 3500, sala 02, Bairro Avenida Central, Gramado (RS), 95.670-000, Brasil (opponent), represented by Simões, Garcia, Corte-Real & Associados-Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisbon, Portugal (professional representative)

a g a i n s t

Timothy Dean-Smith, Walled House Hatherop, Cirencester, Gloucestershire, GL7 3NA, United Kingdom (applicant), represented by Marchais Associes, 4, Avenue Hoche, 75008 Paris, France (professional representative).

On 19/07/2017, the Opposition Divisiontakes the following

DECISION:

1.        Opposition No B 2 401 126 is upheld for all the contested goods and services.

2.        European Union trade mark application No 12 772 497 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 772 497. The opposition is based on European Union trade mark registration No 10 871 952. 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 25:        Clothing, footwear, headgear.

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

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

The contested goods and services are the following:

Class 25:        Clothing; footwear; headgear.

Class 41:        Entertainment and leisure service.

Class 43:        Hotels; motels; restaurants; bars; catering services; self-service restaurants; snack-bars; brasserie; cafes; cafeterias.

Contested goods in Class 25

Clothing, footwear, headgear are identically contained in both the specifications of the contested sign and of the earlier mark.

Contested services in Class 41

Entertainment services are identically contained in both lists of services.

The term ‘leisure’ refers to ‘use of free time for enjoyment’ (Oxford Dictionary online). Depending on the exact perception of this term, the services in relation to them could either be included or overlap with the entertainment services protected by the opponent’s mark and, therefore, the services are identical.

Contested services in Class 43

The contested hotels; motels are included in the broad category of the opponent’s temporary accommodation. Therefore, they are identical.

The contested restaurants; bars; catering services; self-service restaurants; snack-bars; brasserie; cafes; cafeterias are included in the broad category of the opponent’s services for providing food and drink. 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

SNOW LAND
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 ‘SNOW’ will be understood by the English speaking public as ‘the partially frozen vapour of the atmosphere falling in flakes characterized by their whiteness and lightness’ (see Oxford English Dictionary). Bearing in mind that the relevant goods and services are related, among others, to ‘clothing, sport and training services’, this element is deemed to be weak for part of these goods and services. For instance, it could be understood as indicating clothing specially adapted for snow or arrangement of training or sport activities related to winter sports (i.e. skiing, snowboarding). However, this element is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public such as French and Spanish.

The earlier mark is a word mark consisting of the two terms ‘SNOW LAND’. None of the words have meaning for the relevant public and are, therefore, distinctive.

The contested sign is a figurative mark composed of the word element ‘SNOW’ and, bellow it, ‘REPUBLIC’, both in white upper case letters and separated by a horizontal white line; above these elements a five-pointed star within a circle is depicted. The above elements are placed on a turquoise rectangular background with a white frame. As seen above, the element ‘SNOW’ has no meaning for the relevant public and is, therefore, distinctive. The English word ‘REPUBLIC’ will be understood by the relevant public, since it is very close to the equivalent word in the official language (i.e. ‘république’ in French and ‘república’ in Spanish), as a ‘form of government’ and is, therefore, distinctive, as it means nothing in connection with the goods or their characteristics.

As regards the contested sign, it is composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal elements are more distinctive than the figurative elements. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). The depiction of a star is generally understood as a reference to emphasise the quality of the goods and services and is therefore of laudatory character. Hence, this figurative element has a lower than average degree of distinctiveness. Furthermore, the sign includes the registered trade mark symbol, ™. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this element will not be taken into consideration for the purposes of comparison.

The signs have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in ‘SNOW’ which is placed in first position in both cases. They differ in their second words ‘LAND’ and ‘REPUBLIC’, which are different in length (number of letters and syllables). The signs also differ in the figurative elements (i.e. the star, the turquoise background), only included in the contested sign; however, as seen above these elements have a lower degree of distinctiveness than the verbal elements and their impact is limited.

Furthermore, the fact that the signs coincide in the first word has more influence, as 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 part on the top of the contested sign in this case) the one that first catches the attention of the reader.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‛SNOW’, present identically in both signs. The pronunciation differs in the syllables and in the sound of the words ‛LAND’ and ‘REPUBLIC’ included in the earlier mark and the contested sign, respectively.

Since the reasoning set out in the visual comparison above, regarding the position of the coinciding element also applies here, this similarity has more influence and, therefore, the signs are aurally similar to an average degree.

 

Conceptually, although the public in the relevant territory will perceive the meaning of one element of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 goods and 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services covered by the trade marks in dispute are identical. They target the public at large and the degree of attention is average. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually and aurally similar to an average degree because they entirely coincide in their first word ‘SNOW’ and they differ in their second words, ‘LAND’ and ‘REPUBLIC’, included in the earlier and contested sign, respectively. As explained above, the fact that the similarity lies in the first word of the signs has more weight as consumers generally tend to focus on the first element of a sign when they encounter a trade mark. Therefore, the differences between the signs are confined to secondary or weakly distinctive elements and aspects such as the figurative elements depicted in the contested sign.

Furthermore, it must be noted that references to a community of some sort are also relatively common in the fashion sector, where brands often seek to transmit a sense of belonging to a particular group, belief or entity; consequently, although consumers will also be aware of the literal meaning of the word ‘republic’, in the context of the contested sign they will pick up the message which informs them that the goods and services offered carry some sense of community and that the entity responsible for their production and marketing is named ‘SNOW REPUBLIC’. Hence, the impact of the element ‘snow’ in the overall impression given by the marks would be stronger than the element ‘republic’.

Likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that the goods and services that are identical or similar to varying degrees come from the same undertaking or at least economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign 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 the present case, consumers may think that ‘SNOW REPUBLIC’ belongs to a particular group, belief or entity (i.e. ‘SNOW’) that is connected somehow with the earlier mark, ‘SNOW LAND’.

In its observations of 20/01/2017, the applicant argues that the common element ‘SNOW’ has a low distinctive character given that there are many trade marks that include this word. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘SNOW’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the French- and Spanish-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 10 871 952. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Andrea VALISA

Birgit FILTENBORG

María Belén IBARRA DE DIEGO

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.