OPPOSITION No B 2 674 672

Santiago Genochio, Flat 3 152 Clarence Rd, London  E5 8DY, United Kingdom  (opponent), represented by Trade Mark Direct, 4 Grove Park Studios, 188-192 Sutton Court Road, Chiswick, London W4 3HR, United Kingdom (professional representative)

a g a i n s t

Morgans Group LLC, 475 10th Avenue, New York, NY 10018, United States of America (applicant), represented by Cleveland, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 674 672 is upheld for all the contested services.

2.        European Union trade mark application No 14 822 936 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 822 936 for the word mark ‘RUMPUS ROOM’. The opposition is based on European Union trade mark registration No 11 324 721 ‘Rumpus’ and on the non-registered trade mark ‘Rumpus’ used in the course of trade of more than mere local significance in the United Kingdom. The opponent invoked Article 8(1)(b) and 8(4) 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:

Class 41: Entertainment services, namely planning, organisation and provision of entertainment events, exhibitions, shows and parties; planning and organisation of art exhibitions and theatre events; provision of non-downloadable electronic information and publications in relation to all the aforesaid services; information, advice and consultancy in relation to all the aforesaid services. 

The contested services are the following:

Class 41: Night club services; night club reservation services, namely, arranging for admission, admission ticket reservation and booking services for night clubs and night club events; entertainment services in the nature of arranging and hosting social entertainment events; arranging and conducting nightclub entertainment events; entertainment services namely, live performances by musical bands, comedians and dancers and live musical concerts.

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

The term ‘namely’, used in the applicant’s and opponent’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 41

The contested entertainment services in the nature of arranging and hosting social entertainment events are included in the category of the opponent’s entertainment services, namely planning, organisation and provision of entertainment events. Therefore, they are identical.

The contested night club services; arranging and conducting nightclub entertainment events; entertainment services namely, live performances by musical bands, comedians and dancers and live musical concerts are included in the broader category of, or overlap with, the opponent’s entertainment services, namely planning, organisation and provision of entertainment events, exhibitions, shows and parties. Therefore, they are identical.

The contested night club reservation services, namely, arranging for admission, admission ticket reservation and booking services for night clubs and night club events are similar to the opponent’s entertainment services, namely planning, organisation and provision of entertainment events, exhibitions, shows and parties. These services and are targeted at the same consumers and can be offered by the same services provider and distribution channels. Furthermore, they are complementary.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed both at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of provision and their price.

3. The signs

Rumpus	RUMPUS ROOM
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Both marks are word marks. As such, they have no elements that could be considered clearly more dominant than other elements.

The earlier mark consists of the verbal element ‘Rumpus’ and the contested sign is made up of the same word followed by the additional element ‘Room’. It has to be taken into account that in the case of word marks, it is the word that is protected and not its written form. Therefore, it is not relevant whether the marks at issue are represented in upper case or lower case letters.  

The element ‘Rumpus’ present in the signs will be associated by the English-speaking part of the public with commotion, uproar, noise, disagreement; a riot, an uproar, a disturbance; a row, a noisy dispute. Furthermore, the word combination ‘rumpus room’ of the contested sign is also meaningful and is used chiefly in American English as well as in Canada and New Zealand in the sense of a room used for recreation, which does not need to be kept tidy; a room used for noisy activities, such as parties or children’s games (see Oxford English Dictionary at www.oed.com and Collins English Dictionary online). However, as regards the non-English-speaking part of the public, the verbal elements in the signs have no particular meanings.  

In relation to the earlier mark comprising the element ‘rumpus’, whether understood or not, this element has no specific, descriptive, allusive or otherwise weak meaning in relation to the relevant services and therefore, its inherent distinctive character is normal. As to the contested sign, it is considered that its distinctiveness is also normal in relation to the relevant services. Although the phrase ‘rumpus room’ has a connotation that may link it to entertainment activities (such as parties, games), it is in fact a room/place in a house intended for games and entertainment and this  meaning cannot be extrapolated to night clubs or premises where certain shows/ events are performed. In addition, this term seems to be less common in the United Kingdom where the preferred term is games room. Consequently, in spite of the possible allusive connotation of this word combination as regards the English-speaking part of the public, it is allusive in a manner that does not materially affect distinctiveness of the sign and it is considered to have a normal degree of distinctiveness. As regards the non-English speaking part of the public, the words in the contested sign are meaningless and therefore, the contested sign has no elements that could be considered clearly more distinctive than other elements.

Visually, the signs coincide in that they contain the verbal element ‘Rumpus’, which comprises the entirety of the earlier mark and represents the first verbal element of the contested sign. Account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, it is of relevance that the coincidence in the signs is placed at the beginning of the contested sign. The signs differ in the second verbal element ‘Room’ of the contested sign. Taking into account that the earlier mark is fully included in the contested sign but also the mentioned difference and the different length of the contested sign, it is considered that the signs are visually similar to an average degree.

Following the same line of reasoning as in the visual comparison, it is considered that the signs are aurally similar to an average degree.

 

Conceptually, as indicated above, the elements ‘Rumpus’ and ‘rumpus room’ included in the signs have a meaning for a part of relevant public and have no meaning for another part of the public. As regards the contested sign as a whole, as explained above, it has a meaning which, strictly speaking, is not the same as that of the earlier mark. Nevertheless, contrary to the arguments of the applicant, the fact that both signs contain the same word, does not preclude the establishing of a conceptual link between them. Therefore, this semantic coincidence generates a moderate degree of conceptual similarity between the signs in relation to the English-speaking public.

As regards the remaining part of the public which will not associate the signs with any meanings, as neither of the signs have a meaning, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark 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 contested services are identical and similar to the opponent’s services and they are directed both at the public at large and at a professional public. The degree of attention may vary from average to high.

The earlier trade mark and the contested sign are visually and aurally similar to an average degree. The signs are conceptually neutral or conceptually similar to an average degree.

The similarities between the signs are on account of the common and normally distinctive element ‘Rumpus’, which constitutes the totality of the earlier mark and is represented as the initial verbal element of the contested sign.

In relation to the territories where the signs are conceptually neutral, account must be taken of the fact the coincidence in the initial verbal element in the contested sign ‘Rumpus’, which is inherently distinctive and equally able to indicate trade origin as the element ‘room’ that follows it, is sufficient to induce a likelihood of confusion between the marks, even if the relevant degree of attention of the public is high. Furthermore, as mentioned above, the English-speaking relevant public will also establish a conceptual link between the signs.

As regards the difference in the element ‘room’ placed as a second element in the contested sign, its impact is not overwhelming and it is not sufficient to counteract the similar overall impression created by the signs.

In the present case, it is highly conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier marks configured in a different way according to the type of services which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of services designated by the trade mark applied for.

 

The Opposition Division highlights the fact that, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes owing to their similarities that they are derived from the same undertaking or indeed an economically-linked undertaking. This is clearly the case and the relevant consumer may see the contested mark as being a brand variation for a different line of services.

In view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 11 324 721. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Dorothée SCHLIEPHAKE

Liliya YORDANOVA

Gueorgui IVANOV

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.