OPPOSITION No B 2 743 824

Fundación Aquae, Pº de la Castellana, 259, planta 31 – Torre de Cristal, 28046 Madrid, Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

SGS S.r.l., Via F. Cavallotti, 33/3, 27011 Belgioioso (PV), Italy (applicant), represented by Studio Legale Avv. Laura Turini, Viale Matteotti, 25, 50121 Firenze (FI), Italy (professional representative).

On 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 743 824 is partially upheld, namely for the following contested services:

Class 41:         Organising of leisure and entertainment events; entertainment and cultural activities; organisation of entertainment for ceremonies; summer camps; provision of club entertainment services; club recreation facilities (provision of -); entertainment services provided at country clubs; camp services (holiday -) [entertainment].

2.        European Union trade mark application No 15 119 803 is rejected for all the above services. It may proceed for the remaining services.

3.         Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 119 803 . The opposition is based on Spanish trade mark registration No 3 512 097 . 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 services

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

Class 41: Arranging of events and competitions for cultural and educational purposes; education, instruction and entertaining services; dissemination of educational material; all the foregoing in relation to the environment, sustainable development and integral water cycle.

The contested services are the following:

Class 41: Physical education; gymnasium club services; providing health club and gymnasium services; exercise and fitness classes; swimming facilities; health club services; organising of sporting, leisure and entertainment events; summer camps; sporting education services; booking of sports facilities; entertainment services relating to sport; sports-park services; provision of information relating to sports; tournaments (staging of sports -); organisation of sports tuition; training of sports teachers; sports tuition, coaching and instruction; handicapping for sporting events; rental of sports grounds; rental of sports grounds; providing facilities for sports events; ticket procurement services for sporting events; educational and instruction services relating to sport; educational and training services relating to sport; organisation of sporting events; gymnasium services relating to weight training; swimming facilities; swimming facilities; pool clubs; public swimming bath facilities (provision of -); swimming pool and water chute complex services; fitness club services; sports club services; provision of club entertainment services; provision of sporting club facilities; club recreation facilities (provision of -); health club services [health and fitness training]; health club services [health and fitness training]; entertainment services provided at country clubs; golf driving range services; soccer camps; tennis instruction; providing of tennis court facilities; rental of tennis courts; sports and fitness; physical fitness centres (operation of -); physical fitness centre services; personal sports trainer services; health club services [health and fitness training]; health club services [health and fitness training]; provision of educational services relating to fitness; entertainment, sporting and cultural activities; camp services (holiday -) [entertainment]; organisation of entertainment for ceremonies.

Class 43: Services for providing food and drink; temporary accommodation; food preparation services; catering for the provision of food and beverages; services for the preparation of food and drink; rental of cooking apparatus; bar services; wine bar services; restaurants; snack-bars; self-service restaurants; take-out restaurant services; arranging of accommodation for holiday makers; tourist homes; booking agency services for holiday accommodation; arranging of wedding receptions [food and drink]; hospitality services [food and drink]; arranging of wedding receptions [food and drink]; information, consultancy and advisory services in relation to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or 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.

Contested services in Class 41

As the applicant argues, the opponent’s services in Class 41, namely arranging of events and competitions for cultural and educational purposes; education, instruction and entertaining services; dissemination of educational material; all the foregoing in relation to the environment, sustainable development and integral water cycle, are various educational and entertaining activities organised in the field of sustainable development and water. Therefore, it is obvious that, in the comparison of the relevant services, the Opposition Division will take into account this restriction of the opponent’s services as worded above, exclusively relating them to these particular fields and not the general categories of education, instruction and entertaining services.

The contested organising of leisure and entertainment events; entertainment activities; organisation of entertainment for ceremonies include as broader categories, or overlap with, the opponent’s entertaining services; all the foregoing in relation to the environment, sustainable development and integral water cycle, insofar that they all are related to entertainment activities. Since the Opposition Division cannot dissect these services ex officio, they are considered identical.

The contested cultural activities include, or overlap with, the opponent’s arranging of events and competitions for cultural purposes. These services are identical.

The contested summer camps; provision of club entertainment services; club recreation facilities (provision of -); entertainment services provided at country clubs; camp services (holiday -) [entertainment] are highly similar to the opponent’s education, instruction and entertaining services; all the foregoing in relation to the environment, sustainable development and integral water cycle, as these goods may have the same purpose and target the same relevant public through the same distribution channels. It cannot be ruled out that the opponent’s education, training and entertaining services in the abovementioned field of environment, sustainable development and integral water cycle may be available on the premises of various camps, clubs and country clubs, where these particular topics are handled in the course of the leisure time/education spent there.

On the other hand, the contested physical education; sporting education services; gymnasium club services; providing health club and gymnasium services; health club services; health club services [health and fitness training] (listed four times); exercise and fitness classes; gymnasium services relating to weight training; sports-park services; provision of information relating to sports; tournaments (staging of sports -); organisation of sports tuition; training of sports teachers; sports tuition, coaching and instruction; handicapping for sporting events; organisation of sporting events; swimming facilities (listed three times); pool clubs; public swimming bath facilities (provision of -); swimming pool and water chute complex services; fitness club services; sports club services; provision of sporting club facilities; golf driving range services; soccer camps; tennis instruction; providing of tennis court facilities; sports and fitness; physical fitness centres (operation of -); physical fitness centre services; personal sports trainer services; provision of educational services relating to fitness; booking of sports facilities; rental of sports grounds (listed twice); providing facilities for sports events; ticket procurement services for sporting events; rental of tennis courts, as well as the more general categories of the contested organising of sporting events and sporting activities; entertainment services relating to sport; educational and instruction services relating to sport; educational and training services relating to sport, comprise various entertainment activities related to sport and/or sport services such as provision of sport facilities, information, training and instruction, club services, camps and tournaments, all related to sport. While it is difficult for the Opposition Division to clearly establish a distinction between the services that are strictly speaking sport-related and those for entertainment and/or cultural purposes, it can still be noted from the wording in the applicant’s and opponent’s lists of services that the opponent’s services are focused on a very different field from the contested ones, namely they mainly serve to educate about, deliver information on and provide training in topics such as the environment, the water cycle and sustainable development, whereas the purpose of the contested services is to provide sport-related activities. Both parties seem to operate in different commercial markets and target different publics, in particular scholars and professionals in environmental sustainability versus sportsmen and sport enthusiasts. The relevant services cannot be considered complementary to or in any sort of competition with each other. Consequently, since the relevant fields in which the services are provided seem to be relatively remote, they are considered dissimilar.

Contested services in Class 43

The opponent’s services in Class 41 are various educational, cultural and entertainment activities, which have different intended purposes from the applicant’s services for providing temporary accommodation or food and drinks, namely services for providing food and drink; temporary accommodation; food preparation services; catering for the provision of food and beverages; services for the preparation of food and drink; rental of cooking apparatus; bar services; wine bar services; restaurants; snack-bars; self-service restaurants; take-out restaurant services; arranging of accommodation for holiday makers; tourist homes; booking agency services for holiday accommodation; arranging of wedding receptions [food and drink]; hospitality services [food and drink]; arranging of wedding receptions [food and drink]; information, consultancy and advisory services in relation to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the internet.

Although hotels, restaurants and bars can provide on-site entertainment, training spaces, and sporting and cultural activities, they are not offered as separate services or on their own. Consequently, the contested services are not provided by the same undertakings and are not distributed through the same channels as the opponent’s services. Furthermore, although the services may target the same public, they cannot be considered complementary, since they are not interdependent; in particular, hotels, bars and restaurants do not necessarily need entertainment services in order to provide accommodation or food and drinks, and vice versa. Therefore, the Opposition Division concludes that these two categories of services are dissimilar.

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 highly similar are directed at the general public; however, it cannot be excluded that a professional public with expertise and knowledge in various fields such as environmental sustainability might also be involved. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 mark is a figurative mark consisting of the verbal elements ‘AQUAE’, written on the first line in blue upper case letters, and ‘CAMPUS EVENT’, written on two lines below it in pink upper case letters. Three figurative elements (in blue and pink), depicting circles enclosing images of a human head, a water drop and a chemical compound, are above the verbal elements.

The contested sign is a figurative sign consisting of the verbal elements ‘camp’ (in black) and ‘aquae’ (in blue) written in lower case letters on two lines, as well as the smaller verbal element ‘us’ in bold grey letters, above which are several curves of different lengths and colours.

‘AQUA’ is a common Latin word, ‘which the European Union consumer may be assumed to know’ (see, to that effect, 28/11/2013, T-410/12, vitaminaqua, EU:T:2013:615, § 57; 28/01/2015, T-123/14, AquaPerfect, EU:T:2015:52, § 34). The word ‘AQUAE’, on the other hand, is a plural form of the Latin word ‘AQUA’, which is not, however, considered to be commonly used in a purely descriptive manner for the services in question. The verbal element ‘AQUAE’, present in both signs, may allude to something related to water. Nevertheless, the use of this word in this form is rather unusual and cannot be seen in any way as directly descriptive or weak for the relevant services in Class 41 of both signs; consequently, it is considered to have an average degree of distinctiveness for at least a part of the public.

The word ‘CAMPUS’ in the earlier mark will be understood by the relevant public as ‘conjunto de terrenos y edificios pertenecientes a una universidad’ (information extracted from Real Academia Española on 30/08/2017 at http://dle.rae.es/?id=71Q8yg5), namely as ‘an area of land and buildings belonging to a university’. Since this word may indicate the place where or the form in which the relevant services are offered, it has limited distinctive character in the sign.

On the other hand, the English word ‘EVENT’, in relation to the relevant services (arranging of events, training, etc.), will immediately bring to mind its Spanish equivalent ‘evento’, namely anything that takes place or happens; bearing in mind that the services in Class 41 are various kinds of events or information about events, this element is descriptive in relation to them.

Due to the different graphical depiction, the word ‘camp’ in the contested sign may be perceived on its own, most likely as a reference to ‘camping’, namely ‘an outdoor area with buildings, tents, or caravans where people stay on holiday’ (information extracted from Collins Dictionary Online on 30/08/2017 at https://www.collinsdictionary.com/dictionary/english/camp).

Nevertheless, although the two verbal elements ‘camp’ and ‘us’ have different stylisations, the Opposition Division cannot completely disregard the possibility that a part of the Spanish public may refer to them in conjunction with each other, namely as the verbal element ‘campus’. In that case, the word ‘campus’ will have a lower than average distinctive character, since it will still indicate the premises on which the relevant services may be offered, as explained above in relation to the opponent’s services.

For reasons of procedural economy, the Opposition Division will focus the next part of the examination only on the part of the public that will perceive the element ‘aquae’ as an element of normal distinctiveness and the elements ‘camp’ and ‘us’ in the contested sign together, namely ‘as campus’, as this part of the public is most prone to confusion.

Neither sign has any elements that could be considered visually clearly more dominant than other elements.

Visually, the signs coincide in their verbal elements ‘aquae’, both written in blue letters, as well as in the letters ‘campus’. However, the signs differ in the additional verbal element ‘event’ in the earlier mark and in the arrangement of the letters in the word ‘campus’ in the contested sign; for instance, in the contested sign the last two letters, ‘us’, are visually separated from ‘camp’, while in the earlier mark they are written together. Furthermore, the signs differ in their figurative elements, the graphical depictions of the verbal elements, their colours and the positions of the verbal and figurative elements. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. 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). Therefore, bearing in mind all the visual differences, the signs are visually similar to a low degree.

Aurally, the earlier mark will be pronounced as the words ‘Aquae Campus Event’, whereas the contested sign may be pronounced as ‘campus aquae’. Therefore, although the pronunciation of the coinciding elements may be reversed, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that they coincide in the distinctive word ‘aquae’ and bearing in mind the limited or no distinctiveness of the words ‘campus’ and ‘event’, as referred to above, the signs are considered at least 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.

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, despite the presence of some non-distinctive or weak elements in the mark as stated above in section c) of this decision.

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).

Account must be also 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

As concluded above, the contested services are partly identical and highly similar and partly dissimilar to the opponent’s services, and the degree of attention ranges from average to high, for the reasons indicated above in section b). Furthermore, the earlier mark as a whole enjoys a normal degree of inherent distinctiveness, despite the presence of some weak or non-distinctive elements.

Although the signs have certain visual differences, these are not considered sufficient to guarantee that consumers will safely distinguish between the signs. Therefore, they are not sufficient to exclude the possibility of a likelihood of confusion. The coinciding element ‘aquae’ plays an independent distinctive role in both signs. Furthermore, regardless of its limited distinctive character, for the public that perceives the two verbal elements ‘camp’ and ‘us’ as conjoined in the contested sign, the signs will also coincide in this second verbal element. In this case, apart from their different graphic depictions, the signs will differ only in the non-distinctive element ‘event’ of the earlier mark. As stated above, the figurative elements in a sign usually have a secondary character in comparison with the verbal elements, which are those used to refer to the signs verbally.

In addition, it must be considered that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As may be seen, the element ‘aquae’ is included in both signs and, although it appears in slightly different manners, namely as a first element written in upper case letters in the earlier mark versus a second verbal element in lower case letters in the contested sign, a mental connection between the two signs cannot be ruled out, as this distinctive element is present in both and, moreover, depicted in the same bright blue colour, which may attract consumers’ attention. Indeed, 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).

Furthermore, 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 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, it was established that the relevant services are identical and highly similar, which is a relevant factor that outweighs the differences between the signs, as explained above.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or highly similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ignacio IGLESIAS ARROYO

Manuela RUSEVA

Sandra KASPERIŪNAITÉ

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.