OPPOSITION No B 2 680 323
SplashLine Event und Vermarktungs GmbH, Knöllgasse 15, 1100 Wien, Austria (opponent), represented by Lansky, Ganzger & Partner Rechtsanwälte GmbH, Biberstraße 5, 1010 Wien, Austria (professional representative)
a g a i n s t
Life Events Ltd, Abate Rigord Street, 75, quantum house level G office 1/516, TA' Xbiex XBX 1120 Malta (applicant).
On 01/03/2017, the Opposition Division takes the following
1. Opposition No B 2 680 323 is upheld for all the contested services.
2. European Union trade mark application No 14 993 653 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the services of European Union trade mark application No 14 993 653. The opposition is based on, inter alia, European Union trade mark registration No 8 489 551. The opponent invoked Article 8(1)(a) and (b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 489 551.
- The services
The services on which the opposition is based are the following:
Class 39: Transport; packaging and storage of goods; transport of persons and goods, in particular by road, rail, water and air; porterage; guarded transport of money and valuables; arranging, booking and arrangement of travel, excursions and cruises; organising transport services; rental of diving suits; organising, booking and arrangement of tours, excursions and sightseeing; travel consultancy and personal chaperoning of travellers; rental, booking and organising of aeroplanes; rental, booking and organising of ships, in particular rowing boats, motorboats, sailing ships and canoes; rental, booking and organising of motor vehicles, bicycles and horses; parcel delivery; organisation of excursions, holidays and sightseeing; travel agencies (included in class 39), in particular travel consultancy and booking, travel information and arranging of transport and travel; reservation services (included in class 39); information about travel on the Internet, in particular, about reservation and booking in the tourism and business travel sector (online travel agencies); sending and delivery of newspapers and periodicals; consultancy via hotlines or call centres with regard to travel, including business travel and in the field of logistics (transport sector), transport and storage; location of passenger vehicles by computer or a global positioning system (GPS); location of freight vehicles by computer or a global positioning system (GPS); traffic information services.
Class 41: Providing of training and further training and education consultancy; tuition, in particular correspondence courses and language teaching; entertainment; film and video tape film production; DVD and CD-ROM film production (recording); production of radio and television programmes; film and video rental, film and video showings; artist management; artists' services (entertainment); musical performances; circus performances; public entertainment; theatre productions; arranging and conducting concerts; advance booking services (entertainment); arranging and conducting of extracurricular support services (entertainment and education) for children; organisation of tourist accommodation (entertainment); arranging and conducting of sports lessons and language teaching; health club services (included in class 41), training club and fitness studio services, providing golf course, tennis court and riding facilities, nursery schools (education, entertainment), cinemas, discotheques, museums (presentations, exhibitions), amusement arcades, sports camps, sports facilities and amusement parks; rental and providing sports diving equipment; organization of sports competitions; organising and arranging of cultural and sporting events; reservation services (included in class 41) for sporting, scientific and cultural events; on-line game services (of a computer network); rental of recorded data carriers (films, music, games), projection apparatus and accessories therefor (included in class 41); rental of newspapers and periodicals; editing of texts (except publicity texts); publication of printed matter (including in the form of electronic media, including CD-ROMs), other than for advertising purposes, in particular books, periodicals, newspapers; publication of printed matter in electronic form, other than for advertising purposes, in particular periodicals and books, including on the Internet; publication of texts, other than publicity texts, in particular books, periodicals and newspapers, including in electronic form and on the Internet; organisation of exhibitions for cultural or educational purposes; leisure centres and amusement parks in the field of education and entertainment; interpreting and translation services; photography; radio entertainment, television entertainment; consultancy via hotlines or call centres in the fields of education, the providing of training and further training, and entertainment; consultancy via hotlines or call centres in the field of reservations for sporting, scientific and cultural events; providing information relating to entertainment events via online networks and the Internet.
Class 43: Accommodation and catering for guests; services in the field of providing food and drink and temporary accommodation for guests and arrangement thereof, including arranging holiday flats and holiday homes; arranging and rental of holiday homes, tourist homes and holiday apartments; room and hotel reservations; hotels and motels; outside catering; boarding houses, hotels and motels; rental of meeting rooms; bars; restaurant services; providing of food and drink in Internet cafés; consultancy by means of call centres or hotlines in the field of accommodation bureaux, organisation and rental of holiday homes, temporary accommodation reservations and hotel reservation services, services for providing of food and drink and temporary accommodation.
The contested services are the following:
Class 39: Planning of journeys; Trip planning services; Planning, arranging and booking of travel; Consultancy for travel planning of routes; Organisation of holiday travel; Holiday travel reservation services; Arranging of excursions as part of package holidays; Arranging of sightseeing tours as part of package holidays; Travel courier services; Provision of tours; Travel information; Tour reservation services; Organisation of trips; Travel agency; Transport of travelers; Escorting of travellers; Travel agency services for business travel; Travel guide and travel information services; Arranging travel tours; Tour conducting; Computerised reservation services for travel; Arranging of business travel; Air travel services; Travel consultancy; Travel reservation; Organising of foreign travel; Tour operating and organising; Services for the arranging of tours; Agents for arranging travel; Arranging of travel by coach; Provision of information relating to travel routes; Travel booking agencies; Organizing and arranging travel; Arranging and booking of travel; Travel and transport reservation services; Travel agents services for arranging travel; Booking of tickets for travel; Issuing of tickets for travel; Supplying tickets to enable holders to travel; Booking of seats for travel; Services for arranging the transportation of travellers; Arranging the escorting of travellers; Seat reservation services for travellers; Reservation services for airline travel; Tourist travel reservation services; Travel services; Computerised information services relating to travel; Provision of travel information by computer; Travel agency services for arranging holiday travel; Travel arrangement and reservation services; Booking of travel through tourist offices; Reservation of seats for travel; Transport of passengers by air; Transport of travellers by land; Booking agency services relating to travel; Arrangement of travel to and from hotels; Arranging of overseas travel for cultural purposes; Travel ticket reservation services; Booking of holiday travel and tours; Travel and tour ticket reservation service; Itinerary travel advice services; Ticketing services for travel; Reservation services for travel by land; Provision of tourist travel information; Arranging and booking of travel for package holidays; Providing online information relating to travel; Travel consultancy and information services; Providing transport and travel information; Providing information about travel, via the Internet; Agency services for arranging travel; Booking and reservation services for tours; Computerised information services relating to travel reservations; Booking agency services for airline travel; Travel agency and booking services; Services for the booking of travel; Reservation of berths for travel; Timetable enquiry services relating to travel; Planning and booking of travel and transport, via electronic means; Providing information relating to travel and transport, via electronic means; Providing travel information via global computer networks; Travel reservation and booking services; Booking of seats for coach travel; Booking of seats for air travel; Booking of seats for rail travel; Planning, arranging and booking of travel by electronic means; Providing tourist travel information, via the Internet; Package holiday services for arranging travel; Coordinating travel arrangements for individuals and for groups; Reservation and booking of seats for travel; Travel agency services, namely, making reservations and bookings for transportation; Providing information relating to the planning and booking of airline travel, via electronic means; Providing information relating to the planning and booking of travel and transport, via electronic means; Planning and booking of airline travel, via electronic means; Providing information relating to airline travel, via electronic means; Agency services for arranging the transportation of travellers; Providing transport and travel information via mobile telecommunications apparatus and devices.
Class 41: Provision of recreational events; Conducting of entertainment events; Organisation of entertainment and cultural events; Live entertainment production services; Fetes (Organisation of -) for entertainment purposes; Party planning consultation; Fetes (Organisation of -) for recreational purposes; Fetes (Organisation of -) for cultural purposes; Organisation of parties; Cabarets; Entertainment information; Presentation of live performances; Organisation of shows; Planning of shows; Production of shows; Satellite television shows; Directing of musical shows; Live music performances; Arranging of music performances; Presentation of musical performances; Production of music shows; Organisation of live performances; Provision of live shows; Production of live shows; Music performances; Show production services; Laser show services; Presentation of variety shows; Live entertainment; Organising of shows for entertainment purposes; Laser show services [entertainment]; Animated musical entertainment services; Organization of shows [impresario services]; Live show production services; Theatrical performances both animated and live action; Ticket information services for shows; Entertainment in the nature of light shows; Reservation services for show tickets; Production of entertainment shows featuring instrumentalists; Production of revue shows before live audiences; Provision of facilities for live band performances; Entertainment services in the nature of an amusement park show; Production of entertainment shows featuring dancers and singers; Musical floor shows provided at performance venues; Production of a continuous series of animated adventure shows; Entertainment services for producing live shows; Booking of seats for shows and booking of theatre tickets; Arranging for ticket reservations for shows and other entertainment events; Providing facilities for movies, shows, plays, music or educational training; Organizing and presenting displays of entertainment relating to style and fashion; Services providing entertainment in the form of live musical performances; Entertainment in the nature of live performances and personal appearances by a costumed character; Production of live entertainment events; Special event planning consultation; Disc jockeys for parties and special events; Organisation of events for cultural, entertainment and sporting purposes; Booking of seats for entertainment events.
Class 43: Providing on-line information relating to holiday accommodation reservations; Bar services; Snack-bars; Pubs; Cafés; Cocktail lounge services; Provision of information relating to bars; Serving food and drink in restaurants and bars; Providing food and drink in restaurants and bars.
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 39
The contested travel courier services; transport of travelers; transport of passengers by air; transport of travellers by land fall into the broad category of the opponent transport of persons and goods, in particular by road, rail, water and air. Therefore, they are identical.
The remaining contested services all relate to travel arranging, booking, consultancy and information; to this extent, they are included in or overlap with the opponent’s services travel agencies (included in class 39), in particular travel consultancy and booking, travel information and arranging of transport and travel. Therefore, they are identical.
The term ‘in particular’ used in the opponent’s list of services indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).
Contested services in Class 41
The contested satellite television shows fall under the broad category of the opponent radio entertainment, television entertainment. Therefore, they are identical.
The contested entertainment information includes, as a broad category, the opponent’s providing information relating to entertainment events via online networks and the Internet, while the contested ticket information services for shows overlaps with these services of the opponent. Since it is impossible for the Office to filter the opponent’s services from the broad category of the contested goods, they are considered identical.
The same applies to the contested party planning consultation; special event planning consultation, which are broad categories including the opponent’s consultancy via hotlines or call centres in the fields of education, the providing of training and further training, and entertainment, and the latter services cannot be filtered from the contested services. Therefore, the services are identical.
The contested provision of facilities for live band performances; providing facilities for movies, shows, plays, music or educational training are included in or overlap with the opponent’s providing golf course, tennis court and riding facilities, nursery schools (education, entertainment), cinemas, discotheques, museums (presentations, exhibitions), amusement arcades, sports camps, sports facilities and amusement parks. Therefore, they are identical.
The contested reservation services for show tickets; booking of seats for shows and booking of theatre tickets; arranging for ticket reservations for shows and other entertainment events; booking of seats for entertainment events all fall under the broad category of the opponent advance booking services (entertainment). Therefore, they are identical.
The remaining contested services all relate to the organisation, provision, production of entertainment, sporting and cultural events. To this extent, they are included in or overlap with the opponent’s services entertainment, organising and arranging of cultural and sporting events. Therefore, they are identical.
Contested services in Class 43
The contested services in Class 43 all relate to accommodation and the provision of food and drink, as well as the provision of information related thereto. Therefore, they are all included or overlap with the opponent’s broad category services in the field of providing food and drink and temporary accommodation for guests and arrangement thereof, including arranging holiday flats and holiday homes. Once again, the term ‘including’ only indicates examples of specific services but protection is not restricted to them. Therefore, the services are identical.
- 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 are directed at the public at large. The degree of attention is considered to be average.
- The signs
Earlier trade mark
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common elements “Spring Break” are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public for whom the coinciding words are meaningless.
Both signs are figurative marks. The earlier sign consists of the words “Spring break” written in white handwritten letters with black outline, in two lines, above the word “EUROPE” written in black outline capital letters filled with white dots. The shaft of the letter “k” of the word “break” is stylised to depict a palm tree. There is grey shadowing at the background of the elements.
The contested sign consists of the words “SPRING BREAK” written in capital white letters in two lines, on yellow and pink stripes, placed above the somewhat smaller word “MALTA” written in white capital letters on a blue stripe. On the left side of the stripe containing “BREAK” a blue stylised sun, on the upper right corner of “SPRING” a blue stylised boat on water is depicted.
The contested sign also includes, above the word “SPRING”, a website address www.springbreakmalta.com. However, this term is a negligible element since due to its size it is barely perceptible. As this element is likely to be disregarded by the relevant public, it will not be taken into consideration.
The words “EUROPE” and “MALTA” included in the earlier and the contested sign will be understood by the relevant public as reference to the European continent and to the smallest Member State of the European Union, respectively. In the context of the travel, accommodation, foods and drinks, entertainment, sporting and cultural services these terms will be immediately seen as direct references to the geographical location of the services provided. Consequently, these terms are devoid of distinctive character.
The images displayed in the signs, i.e. the palm tree in the earlier sign, the sun and the boat in the contested sign are suggestive of holiday and leisure activities and therefore in relation to the travel, entertainment, accommodation and foods and drinks services, their distinctive character is below average.
The rest of the words in the signs, i.e. “SPRING” and “BREAK” carry no meaning in relation to the services for the public subject to the present assessment, and their distinctive character is therefore normal.
None of the signs have elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in “Spring break”.
It should be pointed out that while their typeface and some of their background colours differ, the coinciding words in both signs are written in two lines and in white letters; this coincidence in the signs’ overall layout and design contributes to the visual similarity.
The signs also differ in the images of the palm tree, boat, and sun and in the words “EUROPE” and “MALTA”, although these are non-distinctive or weak elements.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in “SPRING BREAK” and only differs in non-distinctive elements such as “EUROPE”/”MALTA”; the negligible element www.springbreakmalta.com is unlikely to be pronounced.
Therefore, the signs are aurally highly similar.
Conceptually, the signs are not similar as far as the concepts of the palm tree and “Europe” in the earlier sign and the concepts of the boat, sun and “Malta” in the contested sign are concerned. However, this difference has limited impact since it is the result of elements with little or no distinctiveness. The remaining elements are not understood and since a conceptual comparison is not possible in respect of those elements, the conceptual aspect, to that extent, 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.
- 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, despite the presence of some non-distinctive or weak elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
In the present case, the signs coincide in their distinctive verbal elements. The coinciding words are written in white, placed in two lines above a non-distinctive word denoting a geographic region, and are surrounded in both signs by images evoking holiday and leisure activities.
Consequently, in addition to containing two identical words, the overall layout and design of the signs also show significant resemblance.
Indeed, it is highly conceivable that in the context of identical services the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). For example, it is very likely that consumers will perceive the contested sign relating to services offered in Malta, but nevertheless provided by the same or economically linked undertaking active throughout Europe.
Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public for whom the coinciding words are meaningless. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested services.
As the earlier right European Union trade mark registration No 8 489 551 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) EUTMR.
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
Cynthia DEN DEKKER
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.