OPPOSITION No B 2 624 701

Inibiza SL, Ramón Muntaner 151, 07800 Ibiza, Spain (opponent), represented by Newpatent, Puerto, 34, 21001 Huelva, Spain (professional representative)

a g a i n s t

Mario Di Maggio, Top Floor Flat, 23 West Park, Bristol  BS8 2LX, United Kingdom (holder), represented by Stevens Hewlett & Perkins, 1 St Augustine's Place, Bristol  BS1 4UD, United Kingdom (professional representative).

On 08/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 624 701 is upheld for all the contested services.

2.        International registration No 1 241 798 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the services of international registration designating the European Union No 1 241 798. The opposition is based on European Union trade mark registration No 11 751 336. 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 9:        Audio CDs; CD-ROMs; Compact disc (CDs); CD-ROMs; CD- ROMs.

Class 16:        Covers for magazines; Sleeves for magazines; Music magazines; Magazine posters; Magazines (publication); Specialist periodicals; Periodicals, magazines; Magazines and periodicals; Magazine supplements for newspapers; Periodicals, magazines; Comic books.

Class 41:        Publishing of music books; Publication of music books; Publication of books; Publication of books; Publication of electronic books and journals on-line; Electronic online publication of periodicals and books; Electronic online publication of periodicals and books; providing on-line reviews of books; Publication of books; Publication of text books; Publishing of books and reviews; Publication of books and magazines; Publication of books and magazines; Publishing of journals, books and handbooks in the field of medicine; Publication of texts, books, magazines and other printed matter; Publication of books, magazines, almanacs and journals; Publication of books; On-line publication of electronic books and journals (nondownloadable).

The contested services are the following:

Class 41:        Provision of entertainment services through the media of video-films.

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 provision of entertainment services through the media of video-films is similar to a low degree to the opponent’s publication of books, as they can have the same distribution channels. Furthermore, they are complementary.

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 similar to a low degree are directed at the public at large and at business consumers with specific professional knowledge or expertise in the entertainment and media field. The relevant public’s level of attention will vary from average to high, depending on the price and frequency of purchase of these services.

3. The signs

	Dome Club
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 word ‘Dome’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The word ‘DOME’, common to both signs, will be perceived as ‘a rounded vault forming the roof of a building or structure, typically with a circular base’ (information extracted from English Oxford Living Dictionaries on 26/04/2017 at https://en.oxforddictionaries.com/definition/dome). This word is considered to have a normal degree of distinctiveness for the services in question as there is no relationship.

The earlier mark is a figurative mark composed of the distinctive verbal element ‘DÔME’ in a white standard typeface on a background depicting spots in different tones of brown and black. The latter has a decorative function and so has little impact on the assessment of the similarity between the signs. The relevant public will have no difficulties in perceiving the verbal element as the word ‘DOME’, despite the circumflex accent on the vowel ‘O’. Moreover, the figurative elements and the circumflex accent could be perceived as variations for the purpose to endow the trade mark with a new fashionable image. In this regard, 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).

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The word ‘Club’ of the contested sign will be perceived as ‘an organization of people with a common purpose or interest, who meet regularly and take part in shared activities’ or ‘a place that people go to in order to dance and drink in the evening’ (information extracted from Cambridge Dictionary on 26/04/2017 at http://dictionary.cambridge.org/dictionary/english/club). Contrary to the holder’s argument and bearing in mind the relevant services are ‘provision of entertainment services’, this element is weak for these services, namely for provision of entertainment services through the media of video-films. Consequently, the contested sign is composed of the distinctive element ‘Dome’ and the less distinctive element ‘Club’.

Visually, the signs coincide in the distinctive word ‘DOME’. However, they differ in the weak element ‘Club’ of the contested sign, and in the circumflex, background and colouring of the earlier trade mark, these differences have a limited impact on the perception of this mark, as noted above.

Considering this, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sequence of sounds of the distinctive word ‘DOME’. The pronunciation differs in the sequence of sounds of the weak component ‘CLUB’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally highly similar.

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, that is, the distinctive word ‘DOME’, and only differ in the meaning of the less distinctive word ‘Club’ of the contested sign, the signs are conceptually highly 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 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The present assessment of likelihood of confusion considers the perception of the English-speaking part of the public in the relevant territory. The relevant public consists of the public at large and business customer, the degree of attention may vary from average to high and the earlier mark has an average degree of inherent distinctiveness.

Furthermore, account is 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).However, even consumers who pay 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).

The contested services are similar to a low degree to the opponent’s services. The similarity between the signs (which are visually similar to at least an average degree and aurally and conceptually highly similar) results from the distinctive words ‘DÔME’ in the earlier mark and ‘Dome’ in the contested sign. While the differences between the signs are not imperceptible, even if they are confined to weak or secondary elements, they are not sufficient to rule out any likelihood of confusion and, more specifically, the likelihood of association on the part of the relevant public that, although aware of differences between the signs, nevertheless assumes that, owing to their similarities, they derive from the same undertaking or an economically linked undertaking, despite the low degree of similarity between the services.

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 services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-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 11 751 336. It follows from the above that the contested sign must be rejected for all the contested 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 holder 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

Vanessa PAGE

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

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.