OPPOSITION No B 2 746 082

Skyventure International (UK) Ltd., 5 Deansway, Worcester, WR12JG, United Kingdom (opponent), represented by Jens Haverkamp, Gartenstraße 61, 58636 Iserlohn, Germany (professional representative)

a g a i n s t

321chutelibre, 26 rue des Rigoles, 75020 Paris, France (applicant), represented by Bastien Masson, 1 Rue Claude Bloch CS 15093, 14078 Caen Cedex 05, France (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 746 082 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 15 367 881 ‘airfly’. The opposition is based on European Union trade mark registration No 13 307 491 ‘IFLY’ and international trade mark registrations No 932 080 ‘IFLY’ and No 1 225 899 ‘IFLY’ designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION- earlier international trade mark registrations No 932 080 and No 1 225 899 designating the European Union

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 is 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) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier international trade mark registrations No 932 080 and No 1 225 899 designating the European Union on which the opposition is based.

On 05/08/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 10/12/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier trade marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

The Opposition Division will, therefore, continue the examination of the opposition as far as it is based on the earlier European Union trade mark registration No 13 307 491. 

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 9:        Windtunnels.

Class 18:        Bags, bagpacks, duffel bags.

Class 41:        Entertainment services, namely providing facilities for athletic and sporting events including simulated skydiving; providing event space and planning; advice, information and consulting services relating to all the aforesaid activities.

The contested goods and services are the following:

Class 28:        Sporting articles and equipment; sports training apparatus; sporting articles not included in other classes; sports games; fairground and playground apparatus.

Class 41:        Sporting activities; training; tuition in sports; sports training; provision and management of sporting events; providing sports training facilities; providing sports facilities; providing facilities for sports events; providing facilities for sports recreation; provision of sporting club facilities; organisation of sporting events; coaching services for sporting activities; educational services relating to sports; production of sporting events; instruction courses relating to sporting activities; sport camp services; provision of information relating to sports; ticket information services for sporting events; sporting services; education, entertainment and sports.

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 opponent’s list of goods and services, indicates that the specific goods and 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).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

Furthermore, 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 28

The contested goods are a variety of sporting articles, equipment and games. The opponent’s goods in Class 9, namely windtunnels, are equipment often used nowadays not only for aerodynamic research, but also for recreational activities, such as ‘indoor skydiving’. The contested goods, therefore, coincide in producer, end user (for instance a sports entertainment provider, who purchases them to equip an entertainment facility) and distribution channels. It follows that the contested sporting articles and equipment; sports training apparatus; sporting articles not included in other classes; sports games; fairground and playground apparatus are similar to the opponent’s goods.  

Contested services in Class 41

The contested entertainment includes, as a broader category the opponent’s entertainment services, namely providing facilities for athletic and sporting events including simulated skydiving. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested providing sports training facilities; providing sports facilities; providing facilities for sports events; providing facilities for sports recreation; provision of sporting club facilities overlap with the opponent’s entertainment services, namely providing facilities for athletic and sporting events including simulated skydiving, as far as the services in comparison are related to providing sports training facilities, sports facilities, sports recreation facilities, or sporting club facilities, which are also for sporting events. These are, therefore, considered to be identical.  

The contested provision and management of sporting events overlaps with the opponent’s providing event space and planning, as far as they both are related to the providing of space for the sporting events and management by planning. These are, therefore, considered identical.

The contested organisation of sporting events overlaps with the opponent’s providing event space and planning, as far as they both are related to the organisation of the sporting events by providing the space and planning. These are, therefore, considered identical.

The contested sporting activities; sporting services; sports overlap with the opponent’s providing event space and planning, as far as they both are related to the providing of event space and planning of sporting activities. These are, therefore, considered identical.

The contested provision of information relating to sports; ticket information services for sporting events overlap with the opponent’s information relating to all the aforesaid activities (providing event space and planning), as far as they both are related to giving information on the providing of event space and planning of sporting activities, or the provision of tickets thereof. These are, therefore, considered identical.

The contested sport camp services overlap with the opponent’s providing event space and planning, as the opponent’s services could be in the form of provision and planning of sport camp events. These are, therefore, considered identical.

The contested training (which could be sports training); sports training; coaching services for sporting activities coincide with the opponent’s entertainment services, namely providing facilities for athletic and sporting events including simulated skydiving in the general purpose as to serve for recreation. They can also coincide in distribution channels and relevant public. These are, therefore, considered to be similar.

The contested production of sporting events coincides with the opponent’s entertainment services, namely providing facilities for athletic and sporting events including simulated skydiving in the general purpose to serve for recreation. They can also coincide in their provider and relevant public. These are, therefore, considered to be similar.

The contested tuition in sports; educational services relating to sports; instruction courses relating to sporting activities; education, however are not similar to the opponent’s services. The services do not usually originate from the same provider. Even though, the services in comparison may be related to the same subject matter (e.g. sports), such as the contested tuition in sports and the opponent’s providing event space and planning, this is not enough for finding similarity, as the contested services, which are educational services have a different purpose and method of use. Furthermore, the services in comparison are neither in competition, nor necessarily complementary. The latter applies for the contested services and the opponent’s goods as well. These, furthermore have different nature, purpose and method of use. It follows that the contested services are dissimilar to the opponent’s goods and services.

  

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, but also at business customers with specific professional knowledge or expertise, such as those engaged in organising and providing entertainment activities (as far as the relevant goods are concerned). The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication/specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

IFLY	airfly
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 elements.

The component ´FLY´/´fly´, present in both signs is understood by part of the relevant public, namely the English-speaking part of the public, as having the meaning ´(of birds, aircraft, etc.) to move through the air in a controlled manner using aerodynamic forces; to travel over (an area of land or sea) in an aircraft’ (information extracted from  http://dictionary.reverso.net/english-definition/fly). It will be understood by this part of the public as a reference to the purpose/the subject matter of the relevant goods and services (e.g. for ‘indoor skydiving’ or other flight-simulating sports and entertainment activities) and therefore it is non-distinctive for this part of the public for the relevant goods and services.

  

However, for the other part of the public, namely the non- English-speaking part of the public, it has no meaning and is distinctive. Therefore, the Opposition Division will first examine the opposition in relation to the non- English-speaking part of the public, for which the component ´FLY´/´fly´ has no meaning and has a normal degree of distinctiveness.

For this part of the public, the marks are unlikely to be dissected and thus will be perceived as a single word ‘IFLY’ in the case of the earlier mark, which has no meaning and is therefore distinctive; and as the single word ‘airfly’ in the case of the contested sign, which has no meaning and is therefore distinctive. Furthermore, in the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial.

Visually and aurally, the signs coincide in the letter (and the sound) ‘I’, which is the first letter in the earlier mark and the second letter of the contested sign, as well as in the last three letters (and sounds), ‘FLY’ of both signs. However, the signs differ in the first and the third letter (and the sounds) ‘a’ and ‘r’ in the contested sign, which have no counterparts in the earlier mark. The signs differ in the position of the common letter ‘I’ within the signs. They, furthermore, differ in the number of letters, namely four in the earlier mark against six in the contested sign.

It is also noted that the shared sequence of letters ‘FLY’ is preceded by the letter ‘I’ in the earlier mark versus the sequence ‘air’ in the contested sign. Even though, the sequence ‘air’ of the contested sign contains the letter ‘I’, the latter is preceded by a vowel ‘a’ and followed by a consonant ‘r’, which are not present in the earlier mark. Thus the consonant-vowel structure of the signs in comparison is different, as in the earlier mark the shared sequence ‘FLY’ is preceded only by one vowel (‘I), while in the contested sign, it is preceded by vowel-vowel-consonant (‘a-i-r’). This renders the signs in comparison different rhythms and intonations.

Following from the above, the signs are visually and aurally similar to only a low degree.

Conceptually, neither of the signs has a meaning for the relevant part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 trade mark enjoys a high degree of recognition among the relevant public in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. 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).

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Printouts from http://skydive-flyzone.com (undated, bearing only the printing date 07/12/2016, one of the pages contains a copyright note from 2015), in French, untranslated, without a reference to the earlier mark.
• Printouts from http://skydiveperris.com (undated, bearing only the printing date 07/12/2016) in English, providing information about ‘Skydiving Los Angeles and Orange County’, without a reference to the earlier mark.
• Printouts from http://en.skydivevoss.no/ and https://www.vossvind.no (undated, bearing only the printing date 07/12/2016) in English, providing information on ‘skydiving’ in Norway, without a reference to the earlier mark; printouts from http://www.olimpic-skydive.pl/en/ (undated, bearing only the printing date 08/12/2016), providing information on ‘skydiving’ in Poland; printouts from http://www.dropzone.com (undated, bearing only the printing date 08/12/2016) in English, providing information on ‘skydiving’ in Germany, Belgium, Czech Republic, Luxembourg. There is no reference to the earlier sign.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Even though, the activities reflected could be related to some of the relevant services, there is no connection with the sign at issue, as neither one of the submitted documents refers to the earlier mark. It follows that the evidence does not suffice to prove that the sign was recognised by the public at any particular time. It follows that the opponent failed to demonstrate that the earlier mark has acquired a high degree of distinctiveness.

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 non- English-speaking part 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 contested goods were found to be similar to the opponent’s goods and the contested services were found to be partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The level of attention varies from average to high.

The signs under comparison are visually and aurally similar to a low degree, due to the coinciding letter, ‘I’ (however positioned differently in the letter strings of the signs), as well as the coinciding ending, ‘FLY’. However, the differences of the letter/ letter strings (namely ‘I’ versus ‘air’) placed before the shared sequence ‘FLY’, as specified above; the different lengths of the signs; and the different consonant–vowel structure, will be clearly noticeable to the relevant part of the public.

The abovementioned differences are enough to outweigh the similarities between the signs originating from the letters and sounds they have in common. Following from the above, the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered to be reasonably well informed and reasonably observant and circumspect, might believe that the goods and services, found to be identical or similar, come from the same undertaking or economically linked undertakings. This is even more so when the exercised level of attention is high.

Considering all the above, there is no likelihood of confusion on the part of the non- English-speaking part of the relevant public. The opposition is therefore rejected.

This absence of a likelihood of confusion even more so applies to the English-speaking part of the public for which the component ‘FLY’ is non-distinctive. This is because, as a result of the non-distinctive character of that component, that part of the public will perceive the signs as even less similar.

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

Loreto URRACA LUQUE

Irina SOTIROVA

Erkki MÜNTER

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.