OPPOSITION No B 2 696 006

IIC-Intersport International Corporation GmbH, Wölflistr. 2, 3006 Bern, Switzerland (opponent), represented by Wilson & Berthelot, 22, rue Bergère, 75009 Paris, France (professional representative)

a g a i n s t

Elba II, S.L., Avda. Ferrandis Salvador 131, 12560 Benicasim / Castellón, Spain (applicant), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 696 006 is upheld for all the contested services.

2.        European Union trade mark application No 15 039 076 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 039 076. The opposition is based on, inter alia, international trade mark registration No 610 368 designating the European Union. The opponent invoked Article 8(1)(b) and 8(5) 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 international trade mark registration No 610 368 designating the European Union.

1. The services

The services on which the opposition is based are, inter alia, the following:

Class 35:        Advertising; commercial business management; business administration, organisational and business counselling, shop window dressing, demonstration of goods, dissemination of advertising matter, direct mail advertising, market studies, import-export agencies, rental of advertising space, publicity material rental, organisation of exhibitions for commercial or advertising purposes, sales promotion, publication of advertising copies, radio advertising, television advertising.

Class 39:        Travel arrangement, organisation of holidays focusing on sports activities, boat rental, vehicle rental, travel reservation.

Class 41:        Sports activities and cultural activities, sport camp services, timing of sports events, health club services (sports exercise), physical education, providing sports facilities, providing golf facilities, gymnastic instruction, rental of sports equipment (except for vehicles), rental of skin diving equipment, rental of video tapes, organisation of sports competitions, film production, video tape film production, publication of books, holiday camp services.

The contested services are the following:

Class 35:        Event marketing; business management of sporting facilities [for others]; organisation of exhibitions and events for commercial or advertising purposes; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; marketing services in the field of travel; promotional management for sports personalities; advertising; organisation of events for commercial and advertising purposes; promotion [advertising] of travel; advertising and marketing; advertising, including promotion of products and services of third parties through sponsoring arrangements and licence agreements relating to international sports’ events.

Class 39:        Travel agency and booking services; travel information; arranging travel tours; booking agency services relating to travel; travel agency services relating to travel by omnibus; planning of journeys; providing information relating to bicycle rental services; travel agency; travel booking agencies; travel agents services for arranging travel; rental of cycles; travel arrangement; arranging of air travel; travel agency services, namely, making reservations and bookings for transportation; travel agency services for arranging holiday travel; travel agency services for business travel; travel reservation; organisation of trips; agency services for arranging travel.

Class 41:        Rental of sports grounds; production of sporting events; production and rental of educational and instructional materials; rental of equipment for use at sporting events; information about entertainment and entertainment events provided via online networks and the internet; organising of sporting activities and of sporting competitions; rental of teaching instruments; hire of teaching materials; organisation of sporting events; production of sporting events for television; conducting of entertainment events; organizing and conducting college athletic events; conducting of cultural events; conducting of educational events; organising of sporting events, competitions and sporting tournaments; rental of sports or exercise equipment; timing of sports events; games equipment rental; organising of recreational events; rental of sports equipment, except vehicles; educational materials or apparatus (rental of -); providing recreation facilities; conducting of live sports events.

An interpretation of the wording of the list of the applicant’s services is required to determine the scope of protection of these services.

The term ‘including’, used in the applicant’s list of services, indicates that the specific 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107). However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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 35

Advertising; advertising, including promotion of products and services of third parties through sponsoring arrangements and licence agreements relating to international sports’ events; organisation of exhibitions and events for commercial or advertising purposes are identically contained in both lists of services (including synonyms).

The opponent’s advertising services consist of providing others with assistance in the sale 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. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. These, therefore, include as a broader category the contested event marketing; marketing services in the field of travel; promotion [advertising] of travel; marketing. They are, therefore, considered identical.

The contested organisation of events for commercial or advertising purposes; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes overlap with the opponent’s organisation of exhibitions for commercial or advertising purposes, insofar as the contested services could be in the form of organising exhibitions and they are meant for commercial or advertising purposes. These are, therefore, considered identical.

The contested business management of sporting facilities [for others]; promotional management for sports personalities are different varieties of business management, which include services usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. The opponent’s commercial business management is in essence business management, as all these services are usually directed towards a commercial goal. The opponent’s services, therefore, include as a broader category the contested business management of sporting facilities [for others]; promotional management for sports personalities. The services are identical.

Contested services in Class 39

The contested services in this class cover a large variety of travel agency services, which are services related to travel and tourism offered to the public on behalf of suppliers, such as activities, airlines, hotels and package tours. It follows that the contested travel arrangement; travel reservation; travel agency and booking services; travel information; arranging travel tours; booking agency services relating to travel; travel agency services relating to travel by omnibus; planning of journeys; providing information relating to bicycle rental services; travel agency; travel booking agencies; travel agents services for arranging travel; arranging of air travel; travel agency services, namely, making reservations and bookings for transportation; travel agency services for arranging holiday travel; travel agency services for business travel; organisation of trips; agency services for arranging travel are identical to the opponent’s travel arrangement, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in or overlap with the contested services.

The contested rental of cycles is included in the broad category of the opponent’s vehicle rental. It follows that the services are identical.

Contested services in Class 41

Timing of sports events is identically contained in both lists of services.

The contested rental of sports grounds; rental of equipment for use at sporting events; rental of sports or exercise equipment; games equipment rental; rental of sports equipment, except vehicles are identical to the opponent’s rental of sports equipment (except for vehicles), either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in or overlap with the contested services.

The contested organising of sporting activities and of sporting competitions; organising of sporting events, competitions and sporting tournaments; organisation of sporting events; organizing and conducting college athletic events; conducting of live sports events overlap with the opponent’s sports activities, as the latter could also be in the form of organising sports competitions, tournaments or athletic events. They are, therefore, considered identical.

The contested conducting of cultural events overlaps with the opponent’s cultural activities, as the latter could also be in the form of organising cultural events. They are, therefore, considered identical.

The contested conducting of educational events overlaps with the opponent’s physical education, as far as they are both in the form of conducting events for physical education. It follows that they are identical.

The contested organising of recreational events overlaps with the opponent’s sports activities, as the recreational events could be in the form of sports activities. It follows that they are identical.

The contested providing recreation facilities overlaps with the opponent’s providing sports facilities, insofar as the latter is meant for recreation purposes (to entertain and engage attention). It follows that they are identical.

The contested rental of educational and instructional materials; rental of teaching instruments; hire of teaching materials; educational materials or apparatus(rental of -) overlap with the opponent’s rental of video tapes, insofar as they all concern the renting of video tapes for teaching/educational or instructional purposes. It follows that they are identical.

The contested production of educational and instructional materials overlaps with the opponent’s video tape film production, insofar as the latter is for educational or instructional purposes. It follows that they are identical.

The contested conducting of entertainment events; information about entertainment and entertainment events provided via online networks and the internet overlap with the opponent’s holiday camp services, as the opponent’s services could be in the form of holiday entertainment events and their provision will include the provision of information regarding their organisation. It follows that they are identical.

The contested production of sporting events overlaps with the opponent’s sports activities, insofar as they are all services in relation to the production of sporting activities, being in the form of events. It follows that they are identical.

The opponent’s film production could be in the form of producing sports films/films depicting sports events. The contested production of sporting events for television coincides with the opponent’s services in their purpose (creating sport-related material) and in their method of use. They also have the same producers, end users and distribution channels. It follows that they are similar to a high degree.

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 similar to a high degree are directed at the public at large, but also at some business customers, such as those looking for specific advertisement solutions for their business. The public’s degree of attentiveness may vary from average to higher than average, depending on the price, specialised nature, or terms and conditions of the purchased services.

3. The signs

INTERSPORT
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.

In the present case, the Opposition Division finds it appropriate, in order to remove the need to examine the specific meanings (or lack thereof) of the marks (and their elements/components) for different parts of the relevant public, to focus the comparison of the signs on the English-speaking part of the relevant public. The latter will perceive a meaning in the components ‘SPORT’/‘sports’ of the signs and will also attribute meaning to some of the remaining elements/components of the signs under comparison.

The earlier mark is a word mark, consisting of the single element ‘INTERSPORT’. It is likely that the relevant part of the public will perceive the sign as a juxtaposition of the words ‘inter’, having the meaning of ‘between or among’, as well as ‘international’ (information extracted from ReversoDictionary at http://dictionary.reverso.net/english-definition/inter) and ‘sport’, having the meaning of ‘an individual or group activity pursued for exercise or pleasure, often involving the testing of physical capabilities and taking the form of a competitive game such as football, tennis, etc.’ (information extracted from ReversoDictionary at http://dictionary.reverso.net/english-definition/sport). It is not ruled out that the entire sign could be understood as referring to ‘international sport’ or to ‘a correlation between sports’.

The contested sign is a figurative mark that consists of the element ‘IS’, written in stylised lower case letters in black, with a yellow border on one of the sides. On the left of this element is the element ‘intursports’, written in smaller standard lower case letters, in which the component ‘intur’ is written in blue and the component ‘sports’ in black. It is likely that the relevant part of the public will perceive the element ‘intursports’ as a juxtaposition of ‘intur’ (which has no particular meaning) and the plural form of the word ‘sport’ (which has the meaning specified above).

The contested sign also contains the element ‘TRAVEL SERVICES’, written in very small letters and barely perceptible. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. The element ‘TRAVEL SERVICES’ can be considered negligible due to its very small size. As this element is likely to be disregarded by the relevant public, it will not be taken into consideration.

Furthermore, the relevant part of the public is likely to perceive the stylised element ‘IS’ of the contested sign as a depiction of (and thus as underlining) the first letters of the components ‘intur’ and ‘sports’, in particular because the components are in different colours and ‘sports’ will be dissected as having a meaning. Therefore, this element will not be endowed with a meaning on its own. The element is considered distinctive.

The component ‘INTER’ of the earlier mark, when perceived as referring to ‘international’, will be associated with the span of the relevant services, namely services that are offered internationally. It is, therefore, considered that this component is weaker than average for the relevant services.

The component ‘intur’ of the contested sign has no particular meaning for the relevant part of the public and is, therefore, distinctive.

The components ‘SPORT’/‘sports’ of the signs under comparison will be associated with the meaning specified above. Bearing in mind that the relevant services are ‘advertising and business management services’ (Class 35); ‘travel agency and rental of vehicles services’ (Class 39); ‘sporting, cultural, entertainment and production services’ (Class 41), these components are non-distinctive for some of these services (e.g. sports activities in Class 41 of the earlier mark and production of sporting events in Class 41 of the contested sign), as they directly indicate the subject matter of these services. The components are considered weaker than average for some of the relevant services, as they are a reference to their purpose or subject matter (e.g. vehicle rental in Class 39 of the earlier mark and rental of cycles in Class 39 of the contested sign). Nevertheless, the above conclusion (for lack of distinctiveness/limited distinctiveness) applies only to the services that can reasonably be referred to as being related to sports. For the remaining services, for which the components do not have the descriptive/weaker than average meaning explained above (e.g. travel arrangement in Class 39 of the earlier mark and travel agency services, namely, making reservations and bookings for transportation; travel agency services for business travel; travel reservation in Class 39 of the contested sign), their distinctiveness is considered average.

The element ‘IS’ of the contested sign is the dominant element, as it is the most eye-catching due to its size.

Visually, the signs coincide in the sequence of letters ‘INT*RSPORT*’, which is nine out of ten letters in the earlier mark and out of eleven in the element ‘intursports’ of the contested sign. The signs differ in the fourth letter, ‘E’, of the earlier mark and the fourth letter, ‘u’, of the element ‘intursports’ of the contested sign and in the last letter, ‘s’, of the latter element. The signs differ further in the dominant element ‘IS’ of the contested sign, which, however, will be perceived as the first letters of the components ‘intur’ and ‘sports’. The signs also differ in the colours and stylisation in the contested sign. As explained above, the components ‘SPORT’/‘sports’ are non-distinctive or weak for some of the relevant services and distinctive for others. The component ‘INTER’ of the earlier mark is weaker than average for the relevant services.

As the signs coincide in the given sequence of letters, which forms almost the entirety of the earlier mark and of the element ‘intursports’ of the contested sign, and the element ‘IS’ of the contested sign depicts (and thus emphasises) the first letters of the components ‘intur’ and ‘sport’ of the contested sign, the signs are considered visually similar at least to an average degree.

Aurally, the pronunciation of the signs coincides in the sounds of the sequence of letters ‘INT*RSPORT*’. The element ‘IS’ of the contested sign depicts the first letters of the components ‘intur’ and ‘sport’, and so  is unlikely to be pronounced separately. The signs differ in the sound of the fourth letter, ‘E’, of the earlier mark and the fourth letter, ‘u’, of the element ‘intursports’ of the contested sign; however, the given sequence of letters will be pronounced highly similarly by the relevant part of the public. The signs also differ in the final letter, ‘s’, of the element ‘intursports’ of the contested sign. As explained above, the components ‘SPORT’/‘sports’ are non-distinctive or weak for some of the relevant services and distinctive for others. The component ‘INTER’ of the earlier mark is weaker than average for the relevant services.

Bearing in mind the coinciding sequence of sounds, the signs are considered aurally similar to a high degree.

Conceptually, the components ‘SPORT’/‘sports’ in the signs will be associated with the meaning explained above. Therefore, the signs will coincide in the concept of ‘sport’, although it is in plural in the contested sign. The signs differ in the concept of the component ‘inter’ of the earlier mark. The components ‘SPORT’/‘sports’ are considered non-distinctive for some of the relevant services and cannot indicate the commercial origin of any of the marks when it comes to those services. Therefore, the signs are not similar conceptually for these relevant services.

For another part of the relevant services the components ‘SPORT’/‘sports’ in the signs are of a limited or of an average distinctiveness. The signs will coincide in the concept of ‘sport’, as explained above and differ in the concept of ‘inter’ of the earlier mark. Therefore, for this part of the services the signs are considered similar to at least a low 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection (reputation). However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. As explained above in section c) of this decision, the component ‘inter’ is weaker than average for all the relevant services and the component ‘sport’ is non-distinctive/weak for part of the relevant services and distinctive for others. Therefore, as a whole, the earlier mark has a lower than average degree of distinctiveness for a part of the services in question, namely for services in Classes 35, 39 and 41 (e.g. sports activities in Class 41, vehicle rental in Class 39) whose purpose or subject matter are related to sports. For the rest of the relevant services, which cannot reasonably be referred to as being related to sports (e.g. travel arrangement in Class 39), the mark has a normal degree of distinctiveness, despite the presence of the weaker than average component ‘inter’, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested services are identical and similar to a high degree to the opponent’s services. The degree of attention may vary from average to higher than average when choosing the relevant services. The signs have been found to be visually similar to at least an average degree and aurally highly similar. The coincidences between the signs are found in the coinciding sequence of letters ‘INT*RSPORT*’, in which the components ‘SPORT’/‘sports’ are non-distinctive or weak for part of the relevant services and of an average degree of distinctiveness for other part of the relevant services.

Although the earlier sign has a lower than average degree of distinctiveness for some of the services, this cannot prevent the opposition against the relevant services from succeeding. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102).

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 case at issue, the identity and high degree of similarity between the services under comparison offsets any lesser degree of similarity between the signs, even when the degree of attention is higher than average.

Furthermore, the dominant element, ‘IS’, in the contested sign depicts the first letters of the components ‘intur’ and ‘sports’ of the same sign. The earlier mark is also perceived as a juxtaposition of words starting with the same initial letters, namely ‘I’ and ‘S’.

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).

Therefore, due to the coinciding sequence of letters and the figurative depiction of the element ‘IS’ in the contested sign, 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 international trade mark registration No 610 368 designating the European Union. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right international trade mark registration No 610 368 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

André Gerd Günther BOSSE

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.