OPPOSITION No B 2 781 212

Gianni Coselli, Via Marconi 57/9, San Biagio di Callalta, Treviso, Italy (opponent), represented by Piergiovanni Cervato, Via Bronzetti 46, 35138 Padova, Italy (professional representative)

a g a i n s t

Gerhard Neumer, Talstrasse 1, 55232 Alzey, Germany  (applicant) represented by Günter Schlösser, Keppentalerweg 21, 55286 Wörrstadt, Germany (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 781 212 is upheld for all the contested services.

2.        International registration No 1 281 018 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the services of international registration designating the European Union No 1 281 018, ‘W.A.B.B.A. World’. The opposition is based on, inter alia, European Union trade mark registration No 14 057 244 ‘wabba’.  The opponent invoked Article 8(1)(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 14 057 244.  

Preliminary Comment

In its observations of 24/02/2017, the opponent submitted that the contested mark has been incorrectly designated as a word mark when in fact it should be a figurative mark given that the original German trade mark (No 3 020 150 567 086) on which the IR is based is the following figurative mark:

The opponent submitted extracts from Romarin, TMView and the German Trade mark and Patent Office to substantiate this claim.

The observations and extracts were duly forwarded to the applicant and a deadline set for a response. The applicant however did not file any further submissions.

The Opposition Division takes notes of the opponent’s claims and evidence submitted in this regard and has given due consideration to the situation at hand.

Currently, the contested mark seeks registration as a word mark (W.A.B.B.A. World) as opposed to a figurative mark (above). In both cases, the verbal elements coincide and it is only the three circular objects that mark a difference, the lower middle circle encasing the words and the upper two featuring a grid like effect with the left hand globe featuring what appears to be a male silhouette and the right-hand sphere a female depiction, both striking a pose.

The Opposition Division considers that the contested mark has been validly processed by the responsible entity, in this case WIPO, and any possible deviations, as remarked on by the opponent, are outside the scope and responsibility of the EUIPO. The Opposition Division further believes that whether the contested mark is a word or figurative mark, the final outcome would not differ, as will become clear after the following assessment. Consequently, the Opposition Division has sufficient material particulars on which to base its findings and will thus continue on the basis of the word mark, as processed by the originating Office, WIPO.

1. The services

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

Class 41: Academies [education]; Sports coaching; Coaching [training]; Sport camp services; Organisation of sports competitions; Conducting fitness classes; Entertainment; Providing on-line electronic publications, not downloadable; Gymnastic instruction; Timing of sports events; Providing sports facilities; Rental of sports equipment, except vehicles; Rental of sports grounds; Arranging and conducting of workshops [training]; Health club services [health and fitness training]; Personal trainer services [fitness training]; Organization of exhibitions for cultural or educational purposes.

        

The contested services are the following:

Class 41: Publishing and reporting; entertainment and sports; organisation of sports events in the form of national and international championships; service in the fitness industry and equipment sports area; further education.

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.

The contested entertainment is equally designated by the earlier right leading to identity.

The contested organisation of sports events in the form of national and international championships is included in the organisation of sports competitions as protected by the earlier right thus also leading to identity.

The contested service in the fitness industry and equipment sports area is a rather broad term but includes services such as sports coaching; Coaching [training]; Sport camp services; Conducting fitness classes; Gymnastic instruction; Providing sports facilities; Rental of sports equipment, except vehicles; Rental of sports grounds as designated by the earlier mark. As the broad term cannot be dissected ex-officio and in view of the fact that the aforesaid services from the earlier right are wholly included therein, the services are identical. 

        

The contested further education is also a broad term that includes academies [education] as found in the services protected by the earlier right. As remarked above, the broad nature of the term and the fact it cannot be dissected ex-officio, also lead to identity.

Likewise, the contested sports is a broad term covering the opponent’s conducting fitness classes for example and given that this can neither be dissected ex-officio, identity is also found.

The contested publishing is a broad term that includes the providing on-line electronic publications, not downloadable as protected by the earlier right. Indeed, publishing refers to the preparation and issue of copies of printed matter which nowadays not only refers to physical printed matter but also virtual in the way of electronic publications. In view of the foregoing therefore, the services are identical. 

The contested reporting is a broad term that not only refers to reporting in the form of writing texts but also photographic and video reporting for example. It can also encompass the reporting of news or of any other activity. As can be seen it is a broad term but to the extent that it includes the writing of texts, a high degree of similarity can be found with the providing on-line electronic publications, not downloadable as protected by the earlier right. Indeed, both services share the same purpose and usually coincide in their producers, end users and distribution channels.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical or similar to a high degree are directed at both the public at large and specialists in the fields of education and sports. Some services such as the organisation of sports events in the form of national and international championships may require a high degree of attention due to the high financial investment that may have to be made as well as in the potential outcomes. However, for other services such as conducting fitness classes, the degree of attention may only be average.

3. The signs

wabba	W.A.B.B.A. World
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).

‘Wabba’ and ‘W.A.B.B.A.’ have no meaning and as such are distinctive as there is no connection with the relevant services. Even if W.A.B.B.A. were to be perceived as an acronym with each letter representing a specific word, no clear meaning can be found and neither of the parties has adduced any arguments in this regard.

‘World’ on the other hand will be recognised by a substantial part of the relevant public as referring to the ‘state’ or ‘realm of human existence on earth’ (www.oed.com). It can also be used loosely to refer to a place or even an organisation with no territorial boundaries. In such a scenario its distinctiveness is lowered and its impact reduced.

It must be taken into account that any difference in upper or lower case is irrelevant, as in this specific case the signs are word marks and as such the signs are protected for the word as such and not its written form.

Visually, the signs coincide in all the letters of the earlier mark, wholly included in the same position in the contested sign where it is the first element and as such will firstly attract the attention of consumers, given that signs are read from left to right. The signs differ in the full stops after each letter of the common element, as well as the word ‘world’. As seen above this second element loses weighting due to its reduced impact. Even the full stops do not amount to a considerable difference as it is fairly commonplace to omit such punctuation in many modern day contexts and consumers are aware of this as is evidenced by USA (U.S.A), FBI (F.B.I) and so forth.

In view of the foregoing, considering that the earlier right is wholly included at the beginning of the contested sign, where it will be largely perceived as the most distinctive element, the signs are similar to an average degree.

Aurally, many of the assertions above apply here as concerns the positioning of the common element, its impact and the reduced weight of ‘world’. When comparing the pronunciation, the earlier mark will be referred to as ‘wa-bba’ whilst the contested sign will either be referred to as ‘wa-bba- worl-d’ or by sounding out each individual sound of the first element. In the first scenario, it is only the difference in the sounds of the last component that differentiate the signs. However, in the second, depending on the relevant language, the differences may be more pronounced. For example in English it would be ‘double-you, ei,bi,bi,ei’. Consequently in the first scenario the signs would be aurally similar to an average degree whilst in the second they would be, at most, low.

Conceptually, the earlier mark has no meaning whereas ‘world’ in the contested sign will be understood by a substantial part of the public, as mentioned above. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. Where no semantic meaning can be attributed, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs show similarities, as remarked above, the assessment 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.

It is true that in its brief of 24/02/2017, the opponent claimed its marks were ‘strongly distinctive’. If this is to be interpreted as a claim of enhanced distinctive character, the onus is on the opponent to submit evidence to prove such a claim.  In the course of the proceedings no documentation or any other materials were received in this regard.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

When weighing up the different factors, the services have been found identical and highly similar, the degree of attention ranges from average to high and the relevant public covers both the general public and specialists. 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

The signs have been found visually similar to an average degree and for some, also aurally. It is only when the contested sign will be uttered as letters rather than a word that the aural similarity is lowered and conceptually depending on the understanding of ‘world’ there is no conceptual similarity or its impact is neutral. For that part of the public where the signs are visually and aurally similar to an average degree there is a clear risk that the signs will be confused. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to further analyse the remaining part of the public.

Indeed, 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.

Further, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

As the earlier EUTM 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).

Reverting to the preliminary comment, the Opposition Division remarks that the presence of the nearly coinciding verbal component has been sufficient for the success of the opposition. As noted previously, the figurative version of the mark only differs in a number of spheres and figurative elements that would have had little impact on the established degrees of similarity. From a visual perspective, these figurative elements would have been seen as mostly decorative embellishments or even as references to some of the services which would not have altered the visual degree of similarity and bears no impact on the aural conclusion. To conclude, whether the word or figurative version of the applicant’s mark were taken into account,  the final outcome of a likelihood of confusion would still have been found due to the other factors, referred to above and most importantly the similarities between the verbal elements which remain unaffected. There would still be an association made between the signs leading consumers to perceive the sign as a variation of the earlier mark.  

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 holder 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

Lucinda CARNEY

Vanessa PAGE

Richard BIANCHI

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.