OPPOSITION No B 2 542 465

Real Automovil Club de España, Isaac Newton, 4 Parque Tecnológico de Madrid (PTM), 28760 Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Racecheck Limited, 5 Quarrendon Street, London Hammersmith and Fulham SW6 3ST, United Kingdom (applicant), represented by Hamlins LLP, Roxburghe House 273-287 Regent Street, London  W1B 2AD, United Kingdom (professional representative).

On 13/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 542 465 is partially upheld, namely for the following contested services:

Class 35: Advertising, business management, business administration, business administration associated with planning of sports and leisure, office functions, distribution of publicity materials, namely flyers, brochures, samples, preparation and presentation of audio visual displays for advertising purposes, demonstrations for advertising purposes, advertising flyer distribution, advertising copyrighting, planning and conducting of trade fairs, exhibitions and presentations for advertising purposes, sales promotion for third parties, website design and promotion, website traffic optimisation, pay per click advertising, outdoor advertising. 

Class 41: Sporting activities relating to triathlons, running events and other human-powered endurance events; provision of sports facilities and sports leisure planning relating to triathlons, running events and other human-powered endurance events; organisation, arrangement, staging and conduct of triathlons, running events and other humanpowered endurance events; organisation arrangement, staging and conduct of sports competitions and tournaments relating to triathlons, running and other human-powered endurance activities; provision of sports training relating to triathlons, running events and other human-powered endurance events; sports coaching relating to triathlons, running events and other human-powered endurance events; gymnasium services; physical education relating to triathlons, running events and other human-powered endurance events; sports education relating to triathlons, running events and other human-powered endurance events; cultural activities; provision of entertainment services during or in connection with to triathlons, running events and other human-powered endurance events; education, planning, organisation, arrangement and conduct of conferences, seminars, symposiums, workshops, educational activities, demonstrations, displays, exhibitions, festivals, lectures, presentations and instruction courses relating to triathlons, running events and other human-powered endurance events; planning, organisation, arrangement and conduct of corporate events relating to triathlons, running events and other human-powered endurance events; planning, organisation, arrangement and conduct of parties relating to triathlons, running events and other human-powered endurance events; provision of presentation and training facilities relating to triathlons, running events and other human-powered endurance events; provision of leisure, physical education and recreation facilities relating to triathlons, running events and other human-powered endurance events.   

2.        European Union trade mark application No 13 749 361 is rejected for all the above 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 13 749 361. The opposition is based on Spanish trade mark registrations No 2 898 163 of the word mark ‘RACE’ and No 3 529 340 of the figurative mark . 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.

1. The services

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

Spanish trade mark registration No 2 898 163.

Class 35: Advertising; business management; business administration; office functions.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37: Building construction; repair; installation services.

Class 39: Transport; packaging and storage of goods; travel arrangement.

Class 41: Education; providing of training; entertainment, sporting and cultural activities.

Spanish trade mark registration No 3 529 340

Class 35: Advertising; business management; business administration; office functions; procurement services for others (purchasing goods and services for other businesses); updating of advertising material; import-export agencies; commercial information agencies; advertising agencies; rental of vending machines; rental of advertising space; rental of photocopying machines; office machine and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; advisory services for business management; business management assistance; business auditing; data search in computer files for others; marketing research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; professional business consultancy; book-keeping; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; dissemination of advertising matter; distribution of samples; relocation services for businesses; drawing up of statements of accounts; marketing studies; outsourcing services (business assistance); invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; computerized file management; business management of performing artists; business Inquiries; business information; commercial information and advice for consumers (consumer advice shop); business investigations; marketing; typing; modelling for advertising or sales promotion; payroll preparation; employment agencies; organization of fashion shows for promotional purposes; organization of exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; psychological testing for the selection of personnel; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; publicity; on-line advertising on a computer network; outdoor advertising; direct mail advertising; advertising by mail order; radio advertising; television advertising; compilation of statistics; writing of publicity texts; public relations; document reproduction; secretarial services; personnel recruitment; business efficiency experts; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription; word processing; business appraisals; wholesaling or retailing of pharmaceutical, veterinary, or hygienic preparations and medical supplies; auctioneering.  

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; banking; actuarial services; real estate management; apartment house management; financial management; customs brokerage; accommodation bureaux (apartments); debt collection agencies; credit bureaux; real estate agencies; housing agents; renting of flats; rental of offices (real estate); financial analysis; lease-purchase financing; leasing of real estate; leasing of farms; debt advisory services; home banking; safe deposit services; financial clearing; rent collection; mutual funds; insurance consultancy; financial consultancy; brokerage; brokerage of carbon credits ; insurance securities ; stocks and bonds brokerage; stock exchange quotations; deposits of valuables; factoring; issue of tokens of value; issuing of travellers' checks (cheques); issuance of credit cards; repair costs evaluation (financial appraisal); fiscal assessments; financial evaluation (insurance, banking, real estate); surety services; trusteeship; financing services; provident fund services; insurance information; financial information; capital investments; retirement payment services; business liquidation services, financial; exchanging money; organization of collections; instalment loans; financial sponsorship; lending against security; loans (financing); pawnbrokerage; charitable fund raising; mortgage banking; savings bank services; insurance underwriting; accident insurance underwriting; fire insurance underwriting; life insurance underwriting; marine insurance underwriting; health insurance underwriting; credit card services; debit card services; antique appraisal; jewellery appraisal; art appraisal; stamp appraisal; numismatic appraisal; real estate appraisal; electronic funds transfer; financial evaluation of standing timber; financial evaluation of wool; check (cheque) verification.  

Class 37: Building construction; assembly (installation) of parts (including electronic parts) of vehicles; advisory services relating to the installation of engines and gearboxes; advisory and information services relating to vehicle repair; motor vehicle repair shop services; vehicle upholstering and repair services; upholstering; knife sharpening; air conditioning apparatus installation and repair; building insulating; masonry; warehouse construction and repair; rental of drainage pumps; rental of bulldozers; rental of excavators; rental of cranes (construction equipment); rental of road sweeping machines; rental of construction equipment; rental of cleaning machines; burglar alarm installation and repair; pumicing; mending clothing; elevator installation and repair; asphalting; vehicle breakdown assistance (repair); airplane maintenance and repair; varnishing; clothes bleaching; pump repair; sale maintenance and repair; boiler cleaning and repair; heating equipment installation and repair; shoe repair; strong-room maintenance and repair; film projector repair and maintenance; kitchen equipment installation; bricklaying; paper hanging; construction; building of fair stalls and shops; shipbuilding; construction consultation; leather care, cleaning and repair; demolition of buildings; chimney sweeping; disinfecting; rat exterminating; cabinet making (repair); electric appliance installation and repair; vehicle lubrication (greasing); vehicle service stations (refuelling and maintenance); quarrying services; vermin exterminating, other than for agriculture; mining extraction; factory construction; photographic apparatus repair; installation, maintenance and repair of computer hardware; furnace installation and repair; building sealing; fire alarm installation and repair; construction information; repair information; installation of doors and windows; washing; washing of linen; vehicle wash; painting or repair of signs; sanding; vehicle cleaning: cleaning of buildings (exterior surface); cleaning of buildings (interior); diaper cleaning; cleaning of clothing; window cleaning; dry cleaning; street cleaning; swimming-pool maintenance; machinery installation, maintenance and repair; scaffolding; furniture maintenance; snow-making services; office machines and equipment installation, maintenance and repair; pipeline construction and maintenance; umbrella repair; road paving; drilling of wells; drilling of deep oil or gas wells; fur care, cleaning and repair; interior and exterior painting; pressing of clothing; linen ironing; plumbing; clothing repair; harbour construction; vehicle polishing; burner maintenance and repair; refilling of toner cartridges; retreading of tires (tyres); rebuilding machines that have been warn or partially destroyed; rebuilding engines that have been worn or partially destroyed; freezing equipment installation and repair; clock and watch repair; riveting; renovation of clothing; repair of security locks; underwater repair; re-tinning; restoration of musical instruments; furniture restoration; restoration of works of art; irrigation devices installation and repair; pier breakwater building; carpentry services; parasol repair; underwater construction; building construction supervision; interference suppression in electrical apparatus; upholstery repair; roofing services; telephone installation and repair; anti-rust treatment for vehicles; rustproofing; vehicle maintenance; car wash; motor vehicle maintenance and repair; vulcanization of tires (tyres) (repair); plastering.  

Class 39: Transport; packaging and storage of goods; travel arrangement; carting; escorting of travellers; air transport; storage; storage of goods; physical storage of electronically stored data or documents; aircraft rental; rental of warehouses; motor coach rental; car rental; boat rental; horse rental; rental of diving bells; rental of motor racing cars; railway coach rental; rental of freezers; rental of storage containers; rental of diving suits; garage rental; rental of aircraft engines; parking place rental; rental of vehicle roof racks; refrigerator rental; rental of wheelchairs; railway truck rental; vehicle rental; car parking; vehicle breakdown assistance (towing); bus transport; car transport; boat storage; hauling; chauffer services; operating canal locks; freight brokerage (forwarding); transport brokerage; ship brokerage; unloading cargo; water distribution; electricity distribution; distribution of energy; packaging of goods; wrapping of goods; flower delivery; freight forwarding; stevedoring; freighting; freight (shipping of goods); franking of mail; transport by pipeline; storage information; traffic information; transportation information; lighterage services; launching of satellites for others; marine transport; removal services; transporting furniture; arranging of cruises; arranging of tours; passenger transport; piloting; porterage; pleasure boat transport; refloating of ships; towing; message delivery; delivery of goods; delivery of goods by mail order; parcel delivery; delivery of newspapers; booking of seats for travel; icebreaking; salvaging of ships; rescue operations (transport); salvaging; underwater salvage; bottling services; courier services (messages or merchandise); transportation logistics; water supplying; ferry-boat transport; transportation; ambulance transport boat transport; barge transport; taxi transport; armored car transport; river transport; railway transport; guarded transport of valuables; transport reservation; transport and storage of waste; tram transport; transport of travellers; travel reservation; sightseeing (tourism).  

Class 41: Education; providing of training; entertainment; sporting and cultural activities; academies (education); animal training; modelling for artists; rental of radio and television sets; rental of video cameras; rental of movie projectors and accessories; rental of sports grounds; rental of videotapes; rental of show scenery; rental of audio equipment; rental of skin diving equipment; rental of lighting apparatus for theatrical sets or television studios; games equipment rental; rental of sports equipment, except vehicles; rental of stadium facilities; rental of sound recordings; toy rentals; rental of motion pictures; rental of tennis courts; rental of camcorders; entertainer services; mobile library services; ticket agency services (entertainment); calligraphy services; sport camp services; holiday camp services (entertainment); providing casino facilities (gambling); circuses; conducting of fitness classes; health club services (health and fitness training); night clubs; club services (entertainment or education); coaching (training); layout services, other than for advertising purposes; music composition services; timing of sports events; vocational retraining; correspondence courses; discotheque services; dubbing; educational services; physical education; religious education; entertainment; stage scenery (rental of); music halls; presentation of live performances; production of shows; movie studios; recording studio services; educational examination; cinema presentations; providing golf facilities; providing sports facilities; providing amusement arcade services; practical training (demonstration); photography; gymnastic Instruction; videotaping; nursery schools; entertainment information; recreation information; education information; boarding schools; sign language Interpretation; gambling; game services provided on-line from a computer network; providing karaoke services; electronic desktop publishing; microfilming; videotape editing; production of radio and television programmes; providing museum facilities (presentation, exhibitions); organization of balls; organization of sports competitions; organization of competitions (education or entertainment); arranging of beauty contests; organization of fashion shows for entertainment purposes; organization of shows (impresario services); organization of exhibitions for cultural or educational purposes; party planning (entertainment); operating lotteries; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging and conducting of symposiums; arranging and conducting of workshops (training); vocational guidance (education or training advice); orchestra services; amusement parks; personal trainer services (fitness training); lending libraries; videotape film production; film production, other than advertising films; production of music; radio entertainment; television entertainment; publication of books; publication of texts, other than publicity texts; publication of electronic books and journals on-line; providing recreation facilities; scriptwriting services; writing of texts, other than publicity texts; photographic reporting; news reporters services; theatre productions; booking of seats for shows; disc jockey services; school services; language interpreter services; zoological garden services; subtitling; providing on-line electronic publications, not downloadable; translation.  

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; farming equipment rental; medical equipment rental; rental of sanitation facilities; pet grooming; aromatherapy services; flower arranging; pharmacy advice; health advice; medical assistance; veterinary assistance; blood bank services; public baths for hygiene purposes; Turkish baths; convalescent homes; health centres; tree surgery; plastic surgery; medical clinic services; wreath making; animal breeding; animal grooming; landscape design; vermin exterminating for agriculture, horticulture and forestry; weed killing; medical nursing; pharmacists' services to make up prescriptions; in vitro fertilization services; physiotherapy; horticulture; hospices; hospitals; hair implantation; artificial insemination services; gardening; landscape gardening; manicuring; lawn care; massage; dentistry; midwife services; hairdressing salons; tree planting for carbon offsetting purposes; services of a psychologist; aerial and surface spreading of fertilizers and other agricultural chemicals; chiropractics; rehabilitation for substance abuse patients; nursing homes; beauty salon services; health care; sanatoriums; sauna services; aquaculture services; alternative medicine services; opticians' services; speech therapy services; solarium services; health spa services; tattooing; telemedicine services; therapy services; visagists' services; plant nurseries.  

Class 45: Legal services; security services for the protection of property and individuals; stolen vehicle location services; security information, advisory, and consultancy services; monitoring of burglar and security alarms; monitoring of alarms; security risk assessment; accident investigation; accident reporting; missing person investigations; escorting in society (chaperoning); adoption agency services; detective agencies; night guards; marriage agencies; rental of file alarms; rental of sales; rental of fire extinguishers; clothing rental; evening dress rental; opening of security locks; arbitration services; investigations (missing persons); dating services; licensing of intellectual property; licensing of computer software (legal services); security consultancy; intellectual property consultancy; litigation services; crematorium services; pet sitting; baby sitting; house sitting; lost property return; funerals; fire-fighting; copyright management; personal body guarding: horoscope casting; monitoring of burglar and security alarms; baggage inspection for security purposes; inspection of factories for safety purposes; personal background investigations; genealogical research; legal research; mediation; organization of religious meetings; planning and arranging of wedding ceremonies; undertaking; intellectual property watching services; guards; registration of domain names (legal services); alternative dispute resolution services.

After a limitation made on 23/11/2016 the contested goods and services are the following:

Class 9: Computer databases, electronic databases, computer databases located on the internet, computer software, computer platforms, downloadable software and software applications for mobile phones and tablets, electronic tools and software, all of the aforesaid for identifying and tracking triathlons, running events and other human-powered endurance events. 

Class 25: Clothing, sports clothing, swimsuits, bathing trunks, shoes and boots for sports, cyclists' clothing, clothing for gymnastics, headgear (including cycling helmets), wetsuits, visors, hats, caps, tee shirts, shorts, sports jerseys, waterproof clothing, sports singlets, socks, wristbands, skull caps, specialist clothing for triathlon events, specialist clothing for running events. 

Class 35: Advertising, business management, business administration, business administration associated with planning of sports and leisure, office functions, distribution of publicity materials, namely flyers, brochures, samples, preparation and presentation of audio visual displays for advertising purposes, demonstrations for advertising purposes, advertising flyer distribution, advertising copyrighting, planning and conducting of trade fairs, exhibitions and presentations for advertising purposes, sales promotion for third parties, website design and promotion, website traffic optimisation, pay per click advertising, outdoor advertising. 

Class 38: Telecommunication services for the electronic transmission of data and information; communication services between race organisers, competitors, funders, advertisers and members of the general public in relation to triathlons, running events and other human-powered endurance events; communication services for the purpose of ecommerce, email and other messaging services via a global network; SMS, MMS and other short format messaging; providing online electronic bulletin boards for transmission of messages among computer users in the field of triathlons, running events and other human-powered endurance events. 

Class 41: Sporting activities relating to triathlons, running events and other human-powered endurance events; provision of sports facilities and sports leisure planning relating to triathlons, running events and other human-powered endurance events; organisation, arrangement, staging and conduct of triathlons, running events and other humanpowered endurance events; organisation arrangement, staging and conduct of sports competitions and tournaments relating to triathlons, running and other human-powered endurance activities; provision of sports training relating to triathlons, running events and other human-powered endurance events; sports coaching relating to triathlons, running events and other human-powered endurance events; gymnasium services; physical education relating to triathlons, running events and other human-powered endurance events; sports education relating to triathlons, running events and other human-powered endurance events; cultural activities; provision of entertainment services during or in connection with to triathlons, running events and other human-powered endurance events; education, planning, organisation, arrangement and conduct of conferences, seminars, symposiums, workshops, educational activities, demonstrations, displays, exhibitions, festivals, lectures, presentations and instruction courses relating to triathlons, running events and other human-powered endurance events; planning, organisation, arrangement and conduct of corporate events relating to triathlons, running events and other human-powered endurance events; planning, organisation, arrangement and conduct of parties relating to triathlons, running events and other human-powered endurance events; provision of presentation and training facilities relating to triathlons, running events and other human-powered endurance events; provision of leisure, physical education and recreation facilities relating to triathlons, running events and other human-powered endurance events.   

Class 42: Web design and development, compilation of webpages and information extracted from webpages on the internet for identifying and tracking triathlons, running events and other human-powered endurance events, maintenance and updating services for computer databases, advice and support of information provided from computer systems and the internet, providing search engines for obtaining information relating to triathlons, running events and other human-powered endurance events on the internet.

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 9

The contested computer databases, electronic databases, computer databases located on the internet, computer software, computer platforms, downloadable software and software applications for mobile phones and tablets, electronic tools and software, all of the aforesaid for identifying and tracking triathlons, running events and other human-powered endurance events have no relevant points in common with the opponent’s services. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different purposes. Where the applicant’s mark seeks protection for programs used by computers or mobile phones for operating particular tasks, the opponent’s mark is protected for services in the fields of business support (Class 35) insurance; finance and real estate services (Class 36),  construction; repair; installation services (Class 37) transport; travel, packaging and storage of goods (Class 39) education; entertainment, sporting and cultural activities (Class 41) medical, hygienic and beauty care, agriculture, horticulture and forestry (Class 44) legal aid; security; personal and social assistance (Class 45).

Moreover, the applicant correctly points out that the goods are not complementary to the opponent’s services. Complementary goods are those which are closely connected in the sense that one is indispensable or important for the use of the other, so that consumers may think that the same undertaking is responsible for both. However, in the case of the goods and services at hand, the consumer is not likely to believe that they have the same commercial origin, since the production of software is of a highly specialised technical nature that has nothing to do with the organisation of sporting activities of any of the other services covered by the earlier marks. The fact that the software will be used for human-endurance events such as running and triathlons, does not change this. Consumers are very well aware that, for example, producers of software do not commonly organise sporting events on a commercial basis. Therefore, their producers and distribution channels are also different. Hence, these goods are dissimilar to the opponent’s services.

Contested goods in Class 25

The contested clothing, sports clothing, swimsuits, bathing trunks, shoes and boots for sports, cyclists' clothing, clothing for gymnastics, headgear (including cycling helmets), wetsuits, visors, hats, caps, tee shirts, shorts, sports jerseys, waterproof clothing, sports singlets, socks, wristbands, skull caps, specialist clothing for triathlon events, specialist clothing for running events have a very specific nature and purpose which are very different from those of the opponent’s services in Classes 35, 36, 37, 39, 41, 44 and 45 and, therefore, they also differ in their distribution channel and origin. Consequently, these goods are considered dissimilar.

Contested services in Class 35

The contested advertising, business management, business administration, office functions, are identically contained in the lists of services covered by both earlier marks.

The contested business administration associated with planning of sports and leisure and planning and conducting of trade fairs, exhibitions and presentations for advertising purposes are included in the broad category of the opponent’s business administration covered by both earlier marks. Therefore, they are identical.

The contested distribution of publicity materials, namely flyers, brochures, samples, preparation and presentation of audio visual displays for advertising purposes, demonstrations for advertising purposes, advertising flyer distribution, advertising copyrighting, sales promotion for third parties, website design and promotion, website traffic optimisation, pay per click advertising, outdoor advertising are included in the broad category of the opponent’s advertising covered by both earlier marks. The applicant’s argument that website design and promotion and website traffic optimisation are dissimilar to the opponent’s services cannot succeed, since these services do not concern computer programming but services that help other businesses to make their websites and thus one of their main means of publicity, more attractive. Therefore, they are identical.

Contested services in Class 38

There are no similarities between the contested telecommunication services for the electronic transmission of data and information; communication services between race organisers, competitors, funders, advertisers and members of the general public in relation to triathlons, running events and other human-powered endurance events; communication services for the purpose of ecommerce, email and other messaging services via a global network; SMS, MMS and other short format messaging; providing online electronic bulletin boards for transmission of messages among computer users in the field of triathlons, running events and other human-powered endurance events and all the opponent’s services in Classes 35, 36, 37, 39, 41, 44 and 45. The contested communication services are highly specialised technical services provided by ICT companies and have nothing in common with any of the opponent’s services. The services in question satisfy completely different needs, they are offered by specialised companies in their corresponding fields, they are not interchangeable and, therefore, they are not in competition. The relevant consumer will not regard the opponent’s services and the applicant’s services as originating from the same undertaking. The mere fact that the applicant’s services can be used to render some of the opponent’s services is no reason to find them similar, since the consumers will not expect a provider of telecommunication services to offer the opponent’s services or vice versa. For example, the opponent’s arranging subscriptions to telecommunication services for others in Class 35 may target telecom operators who need help to sell their services but they are not indispensable to render these. Therefore, the contested services in Class 38 are considered to be dissimilar.

Contested services in Class 41

The contested sporting activities relating to triathlons, running events and other human-powered endurance events; provision of sports facilities and sports leisure planning relating to triathlons, running events and other human-powered endurance events; organisation, arrangement, staging and conduct of triathlons, running events and other human powered endurance events; organisation arrangement, staging and conduct of sports competitions and tournaments relating to triathlons, running and other human-powered endurance activities are included in the broad category of the opponent’s sporting activities covered by both earlier marks. Therefore, they are identical.

The contested provision of sports training relating to triathlons, running events and other human-powered endurance events; sports coaching relating to triathlons, running events and other human-powered endurance events; gymnasium services; physical education relating to triathlons, running events and other human-powered endurance events; sports education relating to triathlons, running events and other human-powered endurance events are included in the broad category of the opponent’s providing of training covered by both earlier marks. Therefore, they are identical.

The contested cultural activities are identically contained in the lists of services covered by both earlier marks.

The contested provision of entertainment services during or in connection with to triathlons, running events and other human-powered endurance events; planning, organisation, arrangement and conduct of parties relating to triathlons, running events and other human-powered endurance events are included in the broad category of the opponent’s entertainment covered by both earlier marks. Therefore, they are identical.

The contested education, planning, organisation, arrangement and conduct of conferences, seminars, symposiums, workshops, educational activities, demonstrations, displays, exhibitions, festivals, lectures, presentations and instruction courses relating to triathlons, running events and other human-powered endurance events; planning, organisation, arrangement and conduct of corporate events relating to triathlons, running events and other human-powered endurance events; provision of presentation and training facilities relating to triathlons, running events and other human-powered endurance events; provision of leisure, physical education and recreation facilities relating to triathlons, running events and other human-powered endurance events cover a wide range of educational, entertainment and sports activities and, therefore, are included in, or overlap with the opponent’s education, entertainment and sporting activities covered by both earlier marks. Therefore, they are identical.

Contested services in Class 42

The contested web design and development, compilation of webpages and information extracted from webpages on the internet for identifying and tracking triathlons, running events and other human-powered endurance events, maintenance and updating services for computer databases, advice and support of information provided from computer systems and the internet, providing search engines for obtaining information relating to triathlons, running events and other human-powered endurance events on the internet concern in essence the design and development of computer software which are commonly provided by ICT companies. They have nothing in common with any of the opponent’s services in Classes 35, 36, 37, 39, 41, 44 and 45, since they basically differ in nature and purpose from the opponent’s services. They are also not complementary in the sense that the public will expect the applicant’s services to be offered by the computer programmers of the opponent. Although it is observed that the contested services and the opponent’s computerized file management and systemization of information into computer databases in Class 35 relate to the collection of information, they are commonly provided by companies that render administrative support services but not by ICT companies. Whilst the opponent’s services may involve some computer programming, its main purpose is to provide support in the form of compiling and organising the customer's information, not the programming as such. Hence, they are not usually rendered by the same companies or distributed through the same sales channels either. Therefore, the contested services in Class 42 are considered dissimilar to the opponent’s services.

Since it is clear that the results of the above comparison are the same for both earlier marks, for reasons of economy of proceedings the Opposition Division finds it appropriate to continue the examination of the opposition in relation to the opponent’s Spanish trade mark registration No 2 898 163 only.

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 identical services in Class 41 are directed at the public at large which will display an average degree of attention. On the other hand, the identical services of Class 35 target professional consumers only who will be slightly more attentive due to the degree of sophistication and cost of these services, their infrequent purchase and the serious and long-term impact they may have on the purchaser’s business.

3. The signs

RACE
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 applicant argues that both words of the contested sign belong to the category of basic English words that would be understood by the general public in Spain since the world of sport is an increasingly global marketplace, with racing events being hosted across the globe including Spain.

However the Opposition Division disagrees. Without any proof to the contrary, it cannot be upheld that the majority of the Spanish public knows the meaning of these words. The Spanish equivalent of the word ‘race’ is ‘carrera’ which does not resemble the English word at all. The salesperson and the purchaser of, for example, a ‘racing bicycle’ or a ‘racer’ would refer to it in Spanish as a ‘bicicleta de carreras’ and not to its English equivalent (08/01/2008, R 382/2007-2 RACE FACE PERFORMANCE PRODUCTS (fig.)/ RACE, § 23). Likewise, the Spanish equivalent of check is ‘controlar’ or ‘verificar’ which are also very different from the English word. Accordingly, ‘RACECHECK’ will be perceived as one, meaningless and, thus, distinctive element.

Visually, it is true, as alleged by the applicant, that the signs must be compared as a whole and that none of the components of the contested sign can be ignored on the ground that they are negligible. However, it is not true that the stopwatch has the same importance in the overall impression of the contested sign as the verbal 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). This applies all the more so in the present case where the figurative element, a stopwatch with a check mark representing the second hand of a stop watch alludes to the speed or exactitude with which the services in question are performed. Further, considering that consumers generally pay greater attention to the beginning of a mark than to the end (07/09/2006, T-133/05 ‘Pam-Pim’s Baby-Prop’, EU:T:2006:247, § 51 and 28/10/2010, T-131/09, ‘Botumax’, EU:T:2010:458, § 35), they will rather notice that the word ‘RACECHECK’ incorporates the earlier mark ‘RACE’ at its beginning. It must, therefore, be concluded that the visual differences are not so striking that, overall, they will undo the established similarities between the earlier mark and the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the syllables ‘RA-CE’. The pronunciation differs in the sound of the additional last syllable ‘CHECK’ of the contested sign. Therefore, considering that the distinctive elements coincide in two out of three syllables and that the differentiating syllable is placed at the end of the sign, it must be concluded that the differentiating elements cannot prevent the finding of an average degree of phonetic similarity.

Conceptually, for the reasons explained above, neither of the signs’ verbal elements, have a meaning for the public in the relevant territory. However, the figurative element of the contested sign does evoke a concept, namely that of a stopwatch comprising a check mark. Although this means that the marks are not conceptually similar, the concept of the figurative element does not serve to differentiate the marks conceptually, since it is of a limited distinctiveness being perceived as alluding to the speed or exactitude with which the services in question are performed. Therefore, in spite of the concept of the figurative element in the earlier mark, the conceptual comparison does not have much impact on the assessment of similarity of the marks.

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. 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. 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 (eighth recital of the CTMR). 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, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see to that effect, 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).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods and services were partly found identical and partly dissimilar to those of the earlier mark and the relevant public’s level of attention will be either average or above average. The marks in dispute have been found to be visually and aurally similar to an average degree, while the signs do not convey any clearly differentiating concepts that will aid the relevant consumers in distinguishing between them.

Indeed, the only meaningful element, i.e. the stopwatch containing a check mark representing the second hand of a stop watch, will not have much of an impact on the overall perception of the signs, since it is of a limited distinctiveness being perceived as alluding to the speed or exactitude with which the services in question are performed and not as an indicator of origin. Hence, that difference can certainly not counteract the visual and aural similarity.

In light of all the foregoing considerations, especially taking into account the identity of the services, the Opposition Division concludes that it is likely that even a more attentive professional Spanish consumer could believe, for instance, that the services designated by the conflicting signs distinguish different product lines coming from the same or related undertakings.

Indeed, considering that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically-related ones (C-39/97, ‘Canon’, EU:C:1998:442, § 30), the relevant Spanish consumer may, for instance, think that the stopwatch in the contested sign indicates a sub brand of the brand ‘RACE’, for example for goods and services specially used in relation to tracking triathlons, running events and other human-powered endurance events.

Therefore, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark No 2 898 163. It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark. The opposition is not successful insofar as the remaining dissimilar goods and services are concerned.

As mentioned above, the opponent has also based its opposition on the following earlier Spanish trademark No 3 529 340 of the figurative mark . However, considering that this figurative mark is clearly less similar to the contested mark than the word mark compared above and that the remaining contested goods and services have been found dissimilar to the services covered by that other earlier mark in section a) above, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services. Since the similarity of goods and services is a sine qua non condition for there to exist likelihood of confusion, the result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The Opposition Division will now proceed with the examination of earlier Spanish word mark No 2 898 163 on the basis of Article 8(5) EUTMR in relation to the goods and services that were found dissimilar namely:

Class 9: Computer databases, electronic databases, computer databases located on the internet, computer software, computer platforms, downloadable software and software applications for mobile phones and tablets, electronic tools and software, all of the aforesaid for identifying and tracking triathlons, running events and other human-powered endurance events. 

Class 25: Clothing, sports clothing, swimsuits, bathing trunks, shoes and boots for sports, cyclists' clothing, clothing for gymnastics, headgear (including cycling helmets), wetsuits, visors, hats, caps, tee shirts, shorts, sports jerseys, waterproof clothing, sports singlets, socks, wristbands, skull caps, specialist clothing for triathlon events, specialist clothing for running events. 

Class 38: Telecommunication services for the electronic transmission of data and information; communication services between race organisers, competitors, funders, advertisers and members of the general public in relation to triathlons, running events and other human-powered endurance events; communication services for the purpose of ecommerce, email and other messaging services via a global network; SMS, MMS and other short format messaging; providing online electronic bulletin boards for transmission of messages among computer users in the field of triathlons, running events and other human-powered endurance events. 

Class 42: Web design and development, compilation of webpages and information extracted from webpages on the internet for identifying and tracking triathlons, running events and other human-powered endurance events, maintenance and updating services for computer databases, advice and support of information provided from computer systems and the internet, providing search engines for obtaining information relating to triathlons, running events and other human-powered endurance events on the internet.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent the earlier trade mark has a reputation in Spain, in connection with part of the goods and services for which it is registered, namely

Class 35: Advertising; business management; business administration; office functions.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37: Building construction; repair; installation services.

Class 39: Transport; packaging and storage of goods; travel arrangement.

Class 41: Education; providing of training; entertainment, sporting and cultural activities.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 13/02/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date.

On 12/09/2016 the opponent submitted the following evidence:

• A market survey conducted in July-August 2013 by the company TNS. This shows that within the automobile insurance sector in Spain, the RACE mark takes the first place in spontaneous awareness, at 47%, ahead of MAPFRE, MM (MUTUA MADRILENA) and RACC.

• Numerous, partially translated, decisions of EUIPO, the Spanish Trademark Office, Chamber Three of the Contentious-Administrative Division of the Spanish Supreme Court and the High Court of Justice of Madrid acknowledging the reputation of the mark RACE.

• Untranslated copies of part of the book ‘Topbrands – El Libro de las Grandes Marcas en España- Volumen I’ published in 2002 by the ‘Brand Council, The Independent Authority on Branding’ in which RACE is listed as a top brand among other brands like McDonalds, Volkswagen, Yahoo and Nestlé.

• A copy of an Affidavit dated 22/01/2003 by the President of Real Automovil Club de España in which it is, inter alia, stated that:

• RACE was awarded the Gold medal for Traffic Safety and the Gold Badge for Touristic merit by King Juan Carlos in 1982.

• Is founding member of the International Automobile Federation (IAF) since 1904 and of Arc Transistance S.A. since 1990 and member of Alliance of International Tourism (AIT) since 1923.

• RACE performs its operations through almost fifty offices throughout Spain and through the San Sebastian de los Reyes Sports Complex and the Jarama Race Track where various automobile sports events are held and other activities, such as advanced driving courses, are undertaken.

• Translated copies of portions of the undated members’ magazine ‘Autoclub – Revista de los socios del Real Automóvil Club de España’ containing a description of the history, the foundation and the services provided by RACE, i.e. recovery of vehicles, roadside assistance, technical inspection of vehicles, travel assistance, legal assistance regarding traffic violations, vehicle formalities services, driving school/perfection services, car insurance, provision of tourist and travel information and organisation of motor competitions. It also contains a list of RACE offices in Spain.

• Partially translated copies of the relevant portions of the opponent’s annual reports corresponding to the fiscal years 2011, 2012, 2013 and 2014. The net turnover was EUR 29,867,560 in 2011, EUR 29,010,287 in 2012, EUR 27 659 886,23  in 2013 and EUR 29 126 201,19 in 2014. 

• Translated copies of portions of the opponent’s by-laws indicating that the association’s corporate purpose is, inter alia, to provide advice, protection, information and representation to its members in relation to the use and enjoyment of automobiles, to promote sporting activities and to organise car races, competitions and tests.

• An extract from the web site www.fia.com, dated 14/10/2002, containing links to press releases about motor rallies, crash test reports, a FIA brochure, a road safety campaign and a description of RACE and its activities.

• Undated extracts from the web site www.arceurope.com. 

• An undated partially translated brochure from ARC Transistance indicating the main objectives of this organisation.

• Several undated partially translated advertising brochures concerning, inter alia, RACE’s assistance in helping members to find the best suitable car and other membership advantages.

• An extract from the magazine ‘Trafico’ (2003 edition) showing that in June 2003 the Spanish Post Office issued a set of four stamps to mark the centenary of RACE.

• A copy of an undated and partially translated document titled ‘RACE multimedia magazine’ containing an overview of all the media in which the RACE marks are mentioned in the year 2013.

• A translated list of reports and studies undertaken by RACE in the years 2012 and 2013 in the field of road safety including a partially translated document about a fatigue prevention campaign launched by, inter alia, RACE.

• Untranslated copies of the Spring-Summer 2013 number of the RACE ‘Autoclub’ magazine and of the RACE ‘actualidad’ magazine of February 2013.

• A partially translated photocopy of an article in which the RACE marks appear, published online in the newspaper ABC dated 20/07/2015 in connection with an event called Conducir una ilusión (drive with enthusiasm) arranged by the Organización de Ciegos Españoles (ONCE) (the Spanish organization for the blind), the automobile manufacturer SEAT and the Real Automóvil Club de España (RACE).

• A partially translated article published in the Spanish daily newspaper ‘ABC’, dated 12/12/2013, where reference is made to the remodelling, scheduled for competition in 2021 of RACE’s Jarama track. And further information concerning the Jarama track, such as the calendar of sporting events programmed there in the years 2014 and 2015 and some specific sports events.

The opponent has submitted an abundance of documents comprising, amongst other evidence, several decisions of EUIPO and the Spanish Patent Office, as well as judgments of the national courts. Both the Offices and the Spanish courts have on many occasions held, according to the material submitted by the opponent, that the mark of the opponent is well known. Although on the mere basis of earlier decisions and judgments the Office cannot conclude that the earlier mark is reputed, it can be deduced from the remaining evidence, in particular the other evidence of independent sources, such as the market survey regarding car insurances, the book ‘Topbrands – El Libro de las Grandes Marcas en España- Volumen I’ and the websites of the European automobile clubs, that even if the mark was recently registered the mark RACE has been present in the Spanish market since the beginning of the 20th century offering all sorts of services related to the use and enjoyment of automobiles to its members and members of the international automobile clubs it is a (founding) member of. Furthermore, it is clear from the association’s by-laws and members’ magazine that the opponent’s activities range from recovery of vehicles, roadside assistance, technical inspection of vehicles, travel assistance, legal assistance regarding traffic violations, vehicle formalities services, driving schools, car insurance and the provision of tourist and travel services to the organisation of sporting activities offered via its widespread offices and sport complexes in Spain. Further taking into account that the opponent’s high turnover figures, it must be concluded that the mark enjoys a high degree of recognition among the relevant public.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Spain for the following services:

Class 35: Vehicle formalities services.

Class 36: Car insurance.

Class 37: Car repair services.

Class 39: Travel assistance and provision of tourist and travel information.

Class 41: Driving schools; car races.

Although most of these specifications are not mentioned in the list of services for which the opponent claims reputation, they can be considered to form objective subcategories of the broader categories of services for which the opponent has claimed reputation, namely

Class 35: Office functions.

Class 36: Insurance.

Class 37: Motor vehicle maintenance and repair.

Class 39: Travel arrangement.

Class 41: School services; organization of sports competitions.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed for part of the services and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case it is likely that such a link will exist between the two competing signs. First, the opponent’s ‘RACE’ mark is such a well-known mark in Spain that it is bound to be known to the general public to which the abovementioned contested goods and services are directed. Secondly, the signs are similar since the earlier mark is repeated in first position of the verbal element of the contested sign. Moreover, the word ‘RACE’ is inherently distinctive for the goods and services at hand because it is a word without any meaning in Spanish. Thirdly, all remaining contested goods and services, although dissimilar by nature, are to be used in the field of sports, namely triathlons, running events and other human-powered endurance events and, consequently, in adjacent fields of business.  

Therefore, the taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

In the present case, the opponent claims the following:

Unfair advantage (free-riding)

• The notion of what constitutes taking unfair advantage of the distinctive character or repute of a trade mark includes transfer, i.e., cases in which the image of the reputed mark or its features and attributes are projected onto the goods or services to which the junior mark is affixed. In the instant case we have seen that the ‘RACE’ mark has been present in the marketplace for many years. The mark further reflects the image of a business enterprise with an outstanding history which has achieved great success over the years, won the trust of the public and built up a solid reputation for reliability thanks to the excellent quality of all its services and the road safety campaigns it is constantly conducting. That image would be projected directly onto the goods/services claimed by the new application, even if the sectors to which the two marks relate were different, although in this case they are not.

• Similarly, granting the contested mark would allow the owners thereof to benefit from the reputation of the earlier mark by taking unfair advantage of its capacity to attract consumers and of the advertising investments made therein. The other party's mark would thus be permitted to penetrate the market far more easily, thanks to the familiarity of consumers with the ‘RACE’ marks and to the trust that they place in it. Consumers who chose to use the products and services offered under the trade mark could gather the mistaken impression that they were ‘RACE’ goods/services or were being offered with our client’s approval, sponsorship or authorization, when that is not the case.

• The grant of the contested application could thus give rise to misappropriation of the fame, prestige and reputation of the opponents' ‘RACE’ marks, not only because of the high degree of recognition which the latter has earned among consumers but also because of the image of excellence, reliability and quality which it conveys. That image can exert a positive influence on the choice consumers make at the time of purchasing the goods/services of one manufacturer or another. Thus, the opponents should have the right to prevent the applicants from taking unfair advantage of the fame, prestige and reputation of the ‘RACE’ marks to the benefit of the later mark.

Detriment to the distinctive character (dilution)

• It is evident that the distinctive character of the earlier mark would be impaired if consumers ceased automatically to link it with a given range of goods/services produced by a specific entity and instead began to associate it with other goods/services from a different source. As a consequence of that process, commonly known as dilution, the ‘RACE’ mark would lose its capacity to prompt consumers to associate it immediately with the goods/services it covers and on which it is used.

• It should be borne in mind that in order to guard against the risk of dilution one must be able to object to third parties’ use of the same or a similar mark in relation to any kind of goods/services, even those which may be far removed from a competitive point of view. Such an objection is therefore all the more warranted in a case like this, where the goods/services are in fact identical or similar and fall in the same sector (sports sector in which the opponent trademark is specially well-known and reputed). This is because any use of an infringing mark by a third party is capable of undermining the unique relationship between the reputed sign and the goods/services on which it is used.

Detriment to repute (tarnishing)

• Use of the contested mark could undermine the image or prestige acquired by the ‘RACE’ mark in Spain over so many years, for instance, in the event that the goods/services offered for sale under the junior mark were of poor quality or otherwise not in line with the high standards expected of the earlier mark.

• Detriment to the distinctive character, fame and reputation of the opponent’s mark would be inevitable if the contested mark were granted registration, as the latter would not be subject to the quality controls which the opposing entity exercises over its own goods. Consumers could therefore experience different standards of quality and the image of the opponents' RACE marks would in that event undoubtedly be harmed.

However, these arguments do not convince the Opposition Division that use of the contested trade mark will result in any such events occurring.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Even though consumers in this case are likely to establish a link between the two trade marks, in the sense that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 71).

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent claims that the image of a successful and reliable business enterprise with an outstanding history for excellent quality would be transferred to the goods and services covered by the contested trade mark. However, this is not obvious in the present case where the earlier mark makes up only part of the contested sign, is not visually separated from the word ‘CHECK’ and the contested goods and services pertain to a field of business which is far removed from that of the opponent. Even where the earlier mark is highly reputed, unfair advantage or detriment must be properly proved and/or argued taking into account both marks and the relevant goods and services, since otherwise marks with reputation would enjoy blanket protection against identical or similar signs for virtually any kind of product. This would be clearly inconsistent with the wording and spirit of Article 8(5) EUTMR, because in such a case reputation would become the sole requirement, rather than being only one of the several conditions provided for therein.

Therefore, in the absence of an explanation by the opponent of the way in which those characteristics are capable of facilitating the marketing of the goods and services covered by the mark applied for, the characteristics normally associated with a mark with a reputation for services related to the use and enjoyment of automobiles cannot be considered in themselves to be such as to bring any advantage to the marketing of clothing or IT goods and services, even if those are intended for sports related events, namely triathlons, running events and other human-powered endurance events on the internet.

The opponent is an association for automobile drivers, known for organising car races. However, it is not involved in the organisation of triathlons or other running events which have nothing to do with cars, since they are human-powered endurance events. The contested goods and services target consumers of (sports) outfits, means of telecommunication and development and maintenance thereof, such as athletes and organisers of running events. Although these consumers may be car drivers or fans of car races and thus use the opponent’s services, they are not likely to let their decision to purchase goods or services marketed under a similar brand be influenced by the reputation of the earlier mark. It is much more likely that that choice will be made on the basis of other more substantial and determining factors, such as the cost or technical aspects of the software, clothing or IT services on offer.

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Detriment to the distinctive character (dilution)

Detriment to the distinctive character of the earlier mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to ‘dispersion’ of the identity of the earlier mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 29).

However, this cannot be found to occur merely because the earlier mark has a reputation and is identical with or similar to the mark applied for — such an approach would apply an automatic and indiscriminate finding of likelihood of dilution against all marks that are similar to reputed trade marks and would negate the requirement of proving detriment.

The Court held in ‘Intel’ that Article 4(4)(a) TMD (the equivalent to Article 8(5) EUTMR) must be interpreted as meaning that proof that the use of the later mark would be detrimental to the distinctive character of the earlier mark requires evidence of a ‘change in the economic behaviour’ of the average consumer of the goods/services for which the earlier mark was registered, or a serious likelihood that such a change will occur in the future.

The opponent may do this by submitting evidence that proves a likelihood of detriment on the basis of logical deductions made from an analysis of the probabilities (and not mere suppositions) and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (judgment of 16/04/2008, T-181/05, Citi, EU:T:2008:112, § 78, as cited in judgment of 22/05/2012, T-570/10, Répresentation d’une tête de loup, EU:T:2012:250, § 52 and confirmed in the appeal by judgment of 14/11/2013, C-383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43).

However, the opponent’s argument that both the opponent and the applicant operate in the field of sports in not enough to prove the likelihood of such a future change in behaviour. Reason is that the English word ‘RACE’, even though it may not be understood as such by a significant part of the Spanish public, is not a unique term both internationally and nationally in the field of sports competitions.

The Court has stated that ‘the more unique the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character’ (judgments of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 74; 28/10/2008, T-131/09, Botumax, EU:T:2010:458). The earlier mark must possess an exclusive character in the sense that it should be associated by the consumers with a single source of origin — since it is only in this case that a likelihood of detriment to distinctiveness may be envisaged. If the same sign, or a variation thereof, is already in use in connection with a range of different goods, there can be no immediate link with any of the goods or services it distinguishes and, thus, there will be little or no room for further dilution.

Therefore, considering that the contested sign is not identical to the earlier mark but merely forms part thereof and that the word ‘RACE’ is not unique in the field of application of the contested goods and services it is difficult to accept that the attractiveness of the earlier mark risks to be diluted if the contested mark were used in relation to clothing and IT goods and services intended for use in (the organisation of) running events.

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark.

Detriment to repute (tarnishing)

Detriment to repute occurs where the goods or services covered by the contested trade mark appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished. There is a risk of such detriment occurring, inter alia, where the contested goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the contested trade mark (18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 40, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 39).

In that regard, it must be stated that the goods and services covered by the mark applied for do not have any characteristic or quality capable of establishing the likelihood of detriment of that type to the earlier mark. There is no reason to assume on the basis of the nature and usual characteristics of the goods and services applied for that these would be of an inferior quality than the services for which the opponent is reputed. Such an outcome can arise only if it is established that the goods and services covered by the mark applied for have characteristics or qualities which are potentially detrimental to the reputation of the earlier mark. Such evidence has not been adduced in the present case.

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would be detrimental to the repute of the earlier trade mark.

The opponent has also based the ground of Article 8(5) EUTMR on the earlier Spanish trademark No 3 529 340 of the figurative mark . Since the opponent’s arguments regarding the risks of injury make no distinction between the two earlier marks, the reasons to reject the opposition on the ground of Article 8(5) EUTMR equally apply to this other earlier mark.

Conclusion

As seen above, it has not been established that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark as required by Article 8(5) EUTMR. As one of the necessary requirements is not met, the opposition must be rejected as not well founded under 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. 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 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

Catherine MEDINA

Adriana VAN ROODEN

Boyana NAYDENOVA

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.