City Water Slide | Decision 2683160
Date Published: Oct 11, 2017
OPPOSITION No B 2 683 160
City Slide Global GmbH, Max-Ernst-Straße 4, 50354 Hürth, Germany (opponent), represented by Sasse, Bachelin & Lichtenhahn Rechtsanwälte Partnerschaft mbB, Alexanderstr. 9, 10178 Berlin, Germany (professional representative)
a g a i n s t
Mário Rui Da Silva Ferreira, Rua Alberto Pimenta, N°. 234, Gueifães, P- Maia, Portugal (applicant), represented by Mafalda Magalhães, Estádio Cidade de Coimbra, Rua D. João III, n.º 5, 3030-340 Coimbra, Portugal (professional representative).
On 27/03/2017, the Opposition Division takes the following
1. Opposition No B 2 683 160 is upheld for all the contested services.
2. European Union trade mark application No 13 977 384 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 13 977 384. The opposition is based on European Union trade mark registration No 13 157 318. 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 goods and services
The services on which the opposition is based are, inter alia, the following:
Class 41: Entertainment services; performances (presentation of live -); recreation facilities (providing -); recreation information; provision of recreational activities; provision of water-based recreation services; amusement park and theme park services; arrangement of conferences for recreational purposes; festivals (organisation of -) for recreational purposes; entertainment services provided by a musical group; party planning (entertainment); performances (presentation of live -); arranging and conducting of concerts; organisation of events for cultural, entertainment and sporting purposes; club services [entertainment or education]; booking of performing artists for events (services of a promoter); ticket agency services [entertainment]; production of video and/or sound recordings; music publishing and music recording services; publication of printed matter; on-line publishing services; providing on-line electronic publications, not downloadable; amusement park services; provision of recreational areas; recreation facilities (providing -); provision of leisure facilities; provision of facilities for outdoor recreational activities; circuses; publication and edition of books.
The contested services are the following:
Class 41: Education, entertainment and sports.
Entertainment services and entertainment are contained in both lists of services. They are identical.
The contested education includes, as a broader category, or overlaps with, the opponent’s club services [entertainment or education]. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
The contested sports overlap with the opponent’s organisation of events for sporting purposes to the extent that the former encompasses the latter. These 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 public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services.
- 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The verbal elements ‘city’, ‘water’ and ‘slide’ are meaningful English words. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark is the word mark ‘City Slide’ written in title case letters and the contested sign is a figurative mark consisting of the verbal elements ‘CITY WATER SLIDE’ written in white upper case letters and over three lines against a figurative element resembling a piece of land in a city with buildings on it. In the case of word marks, it is the word itself that is protected, and not its written form. Therefore, it is irrelevant whether the earlier mark is written in upper, lower or title case letters.
The element ‘city’ of the signs will be associated by the relevant public with ‘any large town or populous place’ (Collins Dictionary Online) and the figurative element in the contested sign will reinforce the concept of ‘city’, as it represents a piece of land with buildings on it. The word ‘slide’ will be understood by the relevant English-speaking public as, inter alia, ‘a smooth, usually inclined track, surface, or chute down which to slide, as on a playground’ and the expression ‘water slide’ as ‘a slide in a swimming pool’. Bearing in mind that the relevant services also include entertainment and sport, the elements described above may be, on their own, allusive or descriptive of services involving a slide/water slide for entertainment or sports or a mere indication of geographical location in a city. However, the Opposition Division considers that the expressions ‘city slide’ and ‘city water slide’, taken as a whole, have at least some distinctiveness in relation to the relevant services mentioned above. Indeed, due to the unusual combination of the words, forming an expression that has no clear concept, average consumers will not immediately perceive the services to which the marks allude or conjure up a particular image in their minds; therefore, these expressions still possess a certain level of distinctiveness when taken as a whole.
The figurative element of the contested sign, as mentioned above, will serve to reinforce the concept of the word ‘city’ and will not add any other concept. Furthermore, 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). Therefore, it is considered that this figurative element will be paid less attention than the other elements of the contested sign.
In addition, the signs have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the words ‘city ***** slide’. They differ in the additional word ‘water’, placed in the middle of the contested sign’s verbal expression, and in its figurative element and stylisation. For the reasons listed above, the signs are considered visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the words ‘city’ and ‘slide’, present identically in both signs. The pronunciation will differ only in the sound of the additional word ‘water’ of the contested sign, which has no counterpart in the earlier mark. Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the concept of ‘slide’, albeit a regular ‘slide’ versus a ‘water slide’, the signs are conceptually similar to an average degree.
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 will be perceived, as described above in section c), as a vague term in relation to the relevant services, and will be attributed at least a certain degree of distinctiveness.
- Global assessment, other arguments and conclusion
The services are identical and the degree of attention will vary from average to high, depending on the factors already mentioned above.
The signs are considered similar to an average degree from the visual, aural and conceptual points of view. These conclusions have been drawn because the signs coincide in the words ‘city slide’, present in each mark, and that expression is found to possess at least a certain degree of distinctiveness in relation to the conflicting services. In such a case, 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). As stated above, the only differences between the signs consist in the additional figurative element of the contested sign, which is considered to reinforce the concept of the word ‘city’, and in the additional word ‘water’, placed in between the other verbal elements. Regarding the additional concept that this word brings to the entire expression ‘city slide’, it must be recalled that, in principle, likelihood of confusion covers situations in which the consumer either directly confuses the trade marks themselves or makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings. In the present case, it cannot be completely ruled out that the contested sign may be perceived by the relevant consumers as an extension of the services offered by the opponent, in particular involving a specific type of ‘city slide’, namely a ‘water slide’.
Furthermore, 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). In the present case, the services are found to be identical and, to that extent, this factor may outweigh the small differences between the signs in question.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 No 13 157 318. It follows that the contested trade mark must be rejected for all the contested services.
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
LOPEZ FERNANDEZ DE CORRES
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.