OPPOSITION No B 2 788 076

S.I.D.A.L. S.R.L., Via S. Agostino 50, 51100 Pistoia, Italy (opponent), represented by Studio Iemmedue – Studio Professionale Associato  di Nicla Giraldi e Gabriele Cappellini, Via S. Biagio in Cascheri, 91, 51100 Pistoia, Italy (professional representative)

a g a i n s t

Manuel Hoctin Boes, C/ Correu Vell, 10, 1-2 08002 Barcelona, Spain and Alejandro Oliver Parellada, Passatge de la Pau, 10 bis 1-1, 08002 Barcelona, Spain (applicants), represented by R. Volart Pons y Cia. S.L., Pau Claris 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative).

On 22/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 788 076 is upheld for all the contested services.

2. The European Union trade mark application No 15 043 995 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 15 043 995. The opposition is based on Italian trade mark registration No 1 522 113. The opponent invoked Article 8(1)(a) and (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, inter alia, the following:

Class 41:     Teaching; providing of training; sporting and cultural activities.

Class 43:     Temporary accommodation.   

The contested services are the following:

Class  41:    Tuition; Training; Sporting activities.

Class  43:

Temporary accommodation.

Contested services in Class 41

The contested tuition is a synonym of the opponent’s teaching. (https://www.collinsdictionary.com/dictionary/english/tuition, Synonyms: teaching). These services are therefore identical.

The contested training and the opponent’s providing of training are identically contained in both lists, albeit with slightly different wording.

Sporting activities are identically contained in both lists. 

Contested services in Class 43

Temporary accommodation is identically contained in both lists.

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 contested services found to be identical are directed at the public at large.

The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 made up of the word “piano” in a thick font and the word “Bar” in a slender, stylised font. The words will be perceived by the Italian public as referring to a piano-bar (http://www.treccani.it/vocabolario/piano-bar/), or bar where live piano music is played. The lack of a hyphen will make no difference to the public’s perception of the term. The respective fonts of the two word components are purely decorative.

The contested sign is composed of the word “pianobar”, which, despite the absence of a hyphen, will also be perceived as referring to a “piano-bar”, together with a figurative element which, depending on how it is viewed, represents a visual pun depicting three wine glasses and/or a few piano keys. The wine glasses merely reinforce the meaning of bar, while the piano keys reinforce the meaning of “piano”.

Although the semantic component is composed of one verbal element, the relevant consumers will break it down into ‘piano-bar’, as these are elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

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 common word element is weak for the parties´ respective educational services as it could allude to the content of those services. The mark is further weak for the respective temporary accommodation services, as it could allude to an amenity made available by the service-providers of the accommodation, while not directly describing the characteristics of these latter services either. The words are neither descriptive nor allusive of the sporting activities common to the marks of both parties .They are distinctive to an average degree in their regard.

The verbal element of the contested sign is, therefore, the more distinctive element.

There are no dominant elements.

Visually, the signs coincide in the words ‘piano’ and ‘bar’, both of which will be perceived in the signs, and which, together, are either weak or distinctive to an average degree for the relevant services. However, they differ in the figurative device of the wine glasses/piano keys in the contested mark, which has no counterpart in the contested sign, but which merely reinforces the semantic content of the contested sign, and which is not dominant. Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛piano-bar’, present identically in both signs, Therefore, the signs are identical. The figurative elements won’t be pronounced

Conceptually, as both signs will be perceived as a bar which features music played on a piano, and the figurative elements of the contested sign signify either wine glasses or piano keys, the signs are conceptually almost identical.

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. Reference is made to the statements in section c) in this regard. The mark as a whole is distinctive to an average degree in respect of sporting activities, and to a lower than average degree for the services relating to training, tuition and temporary accommodation. It is the verbal element which confers the distinctiveness overall, as the fonts deployed are merely decorative.

e)      Global assessment, other arguments and conclusion

The services are identical. The signs are visually highly similar, aurally identical and, conceptually, almost identical on account of “Pianobar”, which is the only verbal element of the earlier mark and is entirely reproduced in the contested sign.  

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian public, and therefore the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 522 113.

It follows from the above that the contested trade mark must be rejected for all the contested services.

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(1)(a) 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 applicants are the losing party, they 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

Oana-Alina STURZA

Keeva DOHERTY

Judith NEMETH

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.