OPPOSITION No B 1 988 925

De Gier & Co. Sàrl, 39, Avenue John F. Kennedy, 1855 Luxembourg, Luxembourg (opponent), represented by Raue LLP Rechtsanwälte und Notare, Potsdamer Platz 1, 10785 Berlin, Germany (professional representative)

a g a i n s t

Globalia Corporacion Empresarial S.A., Ctra. Arenal-Llucmajor Km. 21,5, 07620 Llucmajor, Baleares, Spain (applicant), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative).

On 29/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 988 925 is partially upheld, namely for the following contested goods and services:

Class 16: Printed matter; instructional and teaching material (except apparatus; Publications, Magazines, Books, Brochures.

Class 41: Educational and entertainment services; Organisation of sporting and cultural activities, organisation of exhibitions for cultural and educational purposes; Publication of texts (other than publicity texts); Use of on-line electronic publications (not downloadable by data transmission); On-line publication of electronic books and journals (not downloadable); Publication of books; Production of shows; Booking of seats for shows; Organisation of parties and receptions; Gaming; Operating of lotteries; Entertainment information; Holiday camp services (entertainment); Advice or consultancy in relation to entertainment; Organization of cultural events.

2.        European Union trade mark application No 10 320 778 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 320 778. The opposition is based on European Union trade mark registration No 9 360 348 and German trade mark registration No 302 010 023 607. 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.

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 9 360 348.

1. The goods and services

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

Class 9: Films, exposed; Recorded image, data and/or sound carriers containing films; Downloadable audiovisual content, in particular films.

Class 41: Entertainment, including film production, film rental; Providing audiovisual content, in particular films, via computer networks, in particular the Internet.

Class 45: Film, television and video licensing; Film copyright management and exploitation; Licensing of industrial property rights and copyright.

The contested goods and services are the following:

Class 16: Paper and cardboard and goods made from these materials, not included in other classes; Printed matter; Book binding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists’ materials; Paint brushes; Typewriters and office requisites (except furniture);Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers’ type; Printing blocks, Publications, Magazines, Books, Brochures, Check holders.

Class 39: Transport services; Packaging and storage of goods; Cargo delivery services; Travel arrangement; Travel reservation; Escorting of travellers; Motor-vehicle rental; Rental of boats; Car transport; Chauffeur services; Arranging of cruises; Tour operating; Passenger transport information; Transportation of passengers; Rental of vehicle roof racks; Pleasure boat services; Sightseeing (tourism); Rental of vehicles; Booking seats for travel; Information and advice in the field of travel arrangement and booking.

Class 41: Educational and entertainment services; Organisation of sporting and cultural activities, organisation of exhibitions for cultural and educational purposes; Publication of texts (other than publicity texts); Use of on-line electronic publications (not downloadable by data transmission); On-line publication of electronic books and journals (not downloadable); Publication of books; Production of shows; Booking of seats for shows; Organisation of parties and receptions; Gaming; Operating of lotteries; Entertainment information; Holiday camp services (entertainment); Advice or consultancy in relation to entertainment; Organization of cultural events.

Class 43: Hotel reservations; Reservation of temporary accommodation; Restaurant services (food); Temporary accommodation; Bar and cafeteria services; Catering services; Providing hotel accommodation; Rental of temporary accommodation; Rental of meeting rooms; Holiday camp services (accommodation); Catering; Day-nurseries; Hotel services; Retirement homes; Tourist homes; Information and advice in the field of booking hotels.

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 terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicate 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, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 16

The contested printed matter; publications, magazines, books, brochures are similar to the opponent’s recorded image, data and/or sound carriers containing films in Class 9, as they can have the same subject matter and, therefore, purpose. Printer matter can have the same content as or can refer to the content of the opponent’s abovementioned goods. These goods can also coincide in their producers and end users. Furthermore, they are in competition. Insofar as the contested instructional and teaching material (except apparatus) encompasses books and other printed matter, the foregoing findings also apply to these goods and they are similar to the opponent’s abovementioned goods.

The contested paper and cardboard and goods made from these materials, not included in other classes; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes); printers’ type; printing blocks, check holders essentially consist of paper goods and office requisites other than printed matter. These goods and the opponent’s goods and services can be found in different trade channels. For instance, paper goods are sold in points of sale such as stationery stores or supermarkets, while the opponent’s films, exposed; recorded image, data and/or sound carriers containing films; downloadable audiovisual content, in particular films are found mainly online or in bookstores. The opponent’s services are provided by professionals in the field of entertainment or copyright management. Moreover, the contested goods and the opponent’s goods and services have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Furthermore, even though they may be sold through the same distribution channels, they cannot be found on the same shelves or in the same sections or departments of the relevant points of sale. Therefore, the contested goods are dissimilar to all of the opponent’s goods and services.

Contested services in Class 39

The contested services in this class basically consist of activities involved in transporting people or goods from one place to another and goods storage services, as well as travel arrangement services of various natures. These services and the opponent’s goods and services have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Therefore, the contested services are dissimilar to all of the opponent’s goods and services.

Contested services in Class 41

Entertainment services are identically contained in both lists of services, despite minor differences in wording.

The contested gaming; operating of lotteries; holiday camp services (entertainment) are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

Teaching material can be in various forms. For instance, the opponent’s recorded image, data and/or sound carriers containing films in Class 9 can have an educational content and purpose. Such teaching materials are essential to the contested educational services. Therefore, these goods and services are complementary. This is because in order to supply educational services it is both helpful and usual to use the opponent’s abovementioned goods. Service providers offering different kinds of courses often present the topic in an audio-visual form to participants as a learning support. Given the close link between the goods and services in question as regards their relevant public, common origin, distribution channels, and the fact that the goods complement the services, they are similar.

The contested organisation of sporting and cultural activities, organisation of exhibitions for cultural and educational purposes; organisation of parties and receptions; organization of cultural events are similar to the opponent’s entertainment, as they have the same purpose. They can coincide in their public and distribution channels.

The contested production of shows are similar to the opponent’s entertainment, as they have the same purpose. Moreover, they can coincide in their producers and relevant public.

The contested booking of seats for shows is similar to the opponent’s entertainment, as they have the same purpose, that is, providing entertainment to the general public. Moreover, they coincide in their producers and consumers.

The contested publication of texts (other than publicity texts); use of on-line electronic publications (not downloadable by data transmission); on-line publication of electronic books and journals (not downloadable); publication of books are similar to a low degree to the opponent’s entertainment, as they can coincide in their distribution channels. Furthermore, they are complementary.

The contested entertainment information; advice or consultancy in relation to entertainment are considered similar to a low degree to the opponent’s entertainment. These services target the same public and are often supplied by the same providers. The contested services involve providing information or advice on entertainment activities with the purpose of facilitating or making possible the enjoyment of those activities. The opponent’s services could be offered by companies that also provide information and advice on the activity organised. Therefore, these services are complementary.

Contested services in Class 43

The contested services in this class are provided by persons or establishments whose aim is to prepare food and drink for consumption and services for finding bed and board in hotels, boarding houses or other establishments providing temporary accommodation. These services and the opponent’s goods and services have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Therefore, the contested services are dissimilar to all of 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 both at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attention is considered average.

3. The signs

HELKON
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.

The element ‘HALCON’ means ‘hawk’ in Spanish. It is not meaningful in certain territories, for example in those countries where Spanish is not generally understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-, French- and Italian-speaking parts of the public.

The earlier mark is a word mark, ‘HELKON’, which has no meaning for the relevant public and has an average degree of distinctiveness.

The contested sign is a stylised depiction of the word ‘HALCON’, embellished with a V-shaped device. As the word is meaningless, it has an average degree of distinctiveness. The sign’s figurative element, for its rather decorative function, has a weak distinctive character and therefore a limited impact on the overall impression produced by the contested sign. The mark has no element that could be considered clearly more dominant than other elements.

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). In view of the foregoing, the figurative element of the contested sign – which is weak – is of a lesser importance in the present assessment than the verbal element.

Visually, the signs coincide in the letters ‘H*L*ON’. However, they differ in their second and fourth letters, namely ‘E’ and ‘K’ in the earlier mark and ‘A’ and ‘C’ in the contested sign. They also differ in the stylisation and the figurative element of the contested sign.

Given that the signs have in common four out of six letters and that the coinciding letters are in identical positions, and since the figurative element of the contested sign has a limited impact for the reasons given above, the signs are visually similar to an average degree.

Aurally, given that in the relevant territories the letters ‘C’ and ‘K’ will have the same pronunciation in the words in question, the signs differ in only their second vowel, namely ‘E’ and in the earlier mark and ‘A’ in the contested sign.

Considering that the signs have in common five out of six sounds, in identical positions, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the relevant public. The figurative element of the contested sign does not introduce any particular concept capable of altering the conceptual perception of the signs. 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.

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 has no meaning for any of the goods and services in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. These goods and services target both the professional public and the public at large. The degree of attention is considered average. Furthermore, the earlier mark enjoys an average degree of distinctiveness in connection with the relevant goods and services.

The signs are visually similar to an average degree and aurally similar to a high degree. The differences between the signs are confined to aspects that either may pass unnoticed both visually and aurally or have a limited impact on the overall impression of the sign concerned.

Account must 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all of the above, the Opposition Division is of the opinion that the differences between the signs are not sufficient to counteract their similarities, which result in similar overall impressions given by the signs.

In view of the foregoing, there is a likelihood of confusion on the part of the English-, French- and Italian-speaking parts of the public in the European Union. 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.

In its observations of 03/08/2016, the applicant argues that its EUTM is a well-known mark within the travel agency sector and makes reference to printouts from its website to substantiate this claim. In that regard, the Opposition Division notes that the right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the contested EUTM application falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the contested EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Therefore, this argument cannot be upheld.

The applicant also claims to be the owner of European Union trade mark No 2 003 085 , registered prior to the opponent’s earlier mark for goods and services similar or identical to those of the earlier mark. However, the other EUTM rights owned by the applicant cannot be taken into consideration, since the present assessment does not refer to marks other than the ones that are the subject of the present opposition proceedings.

Under these circumstances, the applicant’s claims must be set aside.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 360 348.

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

This conclusion also stands for the contested goods and services that have been found to be similar to a low degree. 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 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 is considered that the similarity between the signs is sufficient to lead to a likelihood of confusion even in relation to the goods and services that have only a low degree of similarity.

The rest of the contested goods and 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 goods and services cannot be successful.

The opponent has also based its opposition on German trade mark No 302 010 023 607 for the word mark ‘HELKON’, registered for the following goods and services:

Class 25: Clothing.

Class 35: Advertising.

Class 41: Entertainment, including film production and rental of films.

The opponent’s services in Class 41 have already been discussed in relation to earlier European Union trade mark registration No 9 360 348. To that extent, the outcome of the opposition cannot be different in relation to the opponent’s earlier German trade mark.

Although the earlier German trade mark is registered for some additional goods and services in Classes 25 and 35 that are not covered by earlier EUTM No 9 360 348, they are dissimilar to the remaining contested goods and services in Classes 16, 39 and 43.

Specifically, the opponent’s clothing in Class 25 is mainly used for covering and protecting parts of the human body and for fashion. The opponent’s advertising in Class 35 consists of providing others with assistance in the trade of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These goods and services have nothing in common with the remaining contested goods and services. They have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. The fact that some of the remaining contested goods or services can appear in advertising is insufficient for a finding of similarity. Therefore, the remaining contested goods and services are dissimilar to the opponent’s goods and services in Classes 25 and 35.

Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

For the sake of completeness, it is noted that, according to the evidence submitted for substantiation, the owner of earlier German trade mark No 302 010 023 607 is Bijon Media Aktiengesellschaft, whilst, at the time of taking this decision, the opponent is De Gier & Co. Sàrl. However, in view of the conclusions drawn above in the comparison of the goods and services, the question of the opponent’s entitlement to base the opposition on this earlier German trade mark is irrelevant for the outcome of the present opposition.

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 shall decide a different apportionment of costs.

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

The Opposition Division

Solveiga BIEZA

Orsola LAMBERTI

Michele M. BENEDETTI-ALOISI

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.