OPPOSITION No B 2 411 349

Olympique de Marseille SASP, La Commanderie 33, Traverse de la Martine, 13012 Marseille, France (opponent), represented by Markplus International, 39 rue Fessart, 92100 Boulogne-Billancourt, France (professional representative)

a g a i n s t

OM International Services (Carlisle) Ltd, Unit B Cliffort Court, Cooper Way, Carlisle CA3 OJG, United Kingdom (applicant), represented by Zdarsky Wirtschaftsrecht, August-Schanz-Str. 8 Eing. B, 60433 Frankfurt am Main, Germany (professional representative).

On 23/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 411 349 is upheld for all the contested goods and services.

2. Community trade mark application No 12 897 609 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 12 897 609. The opposition is based on, inter alia, French trade mark registration No 3 573 710. The opponent invoked Articles 8(1)(b), 8(5) and 8(4) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 French trade mark registration No 3 573 710.

1. The goods and services

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

Class 9: Scientific apparatus and instruments (other than medical); nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), emergency (rescue) and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission, reproduction or processing of sound or images; magnetic data carriers, recording discs or optical; floppy disks; automatic vending machines and mechanisms for coin-operated apparatus; cash registers; calculating machines; equipment for information processing and computers; fire extinguishers; game software; software (recorded); computer peripherals; electric batteries; detectors; Electrical son; electric relays; suits, gloves or diving masks; clothing for protection against accidents, irradiation and fire; personal protection devices against accidents; spectacles (optics); eyewear; spectacle cases; diagnostic apparatus not for medical purposes; memory or microprocessor cards; safety tarpaulins;

Class 41: Education; training; entertainment; sporting and cultural activities; information relating to entertainment or education; recreational services; publication of books; book loans; animal training; production of films on videotape; rental of motion pictures; rental of sound recordings; rental of video and radio and television stations; rental of show scenery; videotape editing; photography services; organization of competitions (education or entertainment); organization and conducting of colloquiums, conferences, congresses; organization of exhibitions for cultural or educational purposes; Reservation of seats for shows; game services provided on-line from a computer network; Service of gambling; publication of electronic books and journals on-line; desktop publishing;

Class 45: Legal services; security services for the protection of property and individuals (excluding the transport thereof); marriage agencies; establishment of horoscopes; funeral; cremation services; night guards; monitoring of intruder alarms; security consulting; clothing rental; detective agencies; legal research; intellectual property consultancy.

The contested goods and services are the following:

Class 9: Video cassettes, Compact discs, Magnetic data carries, Laser media; Instructional and teaching material on video cassettes, compact discs, magnetic data carriers or laser data carriers.

Class 16: Books, periodicals, newspapers, prospectuses, instructional and teaching material in the form of books, newspapers, periodicals, loose-leaf publications; Photographs.

Class 41: Providing of education and training for Christian evangelisation, Information on Christian doctrine, Seminars, Instruction in the field of religion.

Class 45: Organization of religious meetings; Evangelisation and missionary work throughout the world.

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 magnetic data carries are identically included in the opponent’s list of goods and services.

The contested video cassettes, compact discs; laser media are highly similar to the opponent’s magnetic data carriers; floppy disks and recording disks. They have the same purpose. They are directed at the same consumers. They are usually provided by the same producers and have the same distribution channels. Moreover, they are in competition.

The contested instructional and teaching material on video cassettes, compact discs, magnetic data carriers or laser data carriers are similar to the opponent’s education; training. The goods and services have the same purpose. They are directed at the same consumers and are usually provided by the same producers.

Contested goods in Class 16

The contested books; periodicals, newspapers are similar to opponent’s publication of books and publication of electronic books and journals on-line. The goods and services under comparison are complementary and may come from the same producers/providers, may have the same distribution channels and may be directed at the same public.

The same applies to the contested prospectuses, instructional and teaching material in the form of books, newspapers, periodicals, loose-leaf publications. They are similar to the opponent’s publication of electronic books and journals on-line. They are complementary and may come from the same producers/providers. Moreover, they may have the same distribution channels and may be directed at the same public.

The contested photographs are similar to the opponent’s photography services in Class 41 as photographs are the end product of photography services. Photographs and photography services will be sold or offered together by the same enterprises in the same outlets. Furthermore the goods and services at issue are complementary to each other. Thus, they are likely to be perceived by consumers as having the same commercial origin.

Contested goods in Class 41

The contested providing of education and training for Christian evangelisation services are included in the opponent’s services education; training. The services are identical.

The same applies to the contested information on Christian doctrine, seminars, instruction in the field of religion. These services are included in the opponent’s broad category education. The services are identical.

Contested goods in Class 45

The contested organization of religious meetings; evangelisation and missionary work throughout the world are similar to the opponent’s cultural activities and education. The services may be provided by the same provider, may target the same public and share the same purpose.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is France.

Visually, the signs are similar to the extent that they coincide in the letters ‘OM’. The signs differ in the stylisation of the letters and in their colour, namely blue in the earlier mark and red in the contested mark.

Aurally, the signs are identical.

Conceptually, neither of the signs has a meaning in French. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive and more dominant (visually eye‑catching) than other elements.

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 goods and 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. 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 goods and services found to be identical or similar are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention is considered to be may vary from average to high.

6. Global assessment, other arguments and conclusion

The goods and services are partially identical, partially highly similar and partially similar.

It follows from case law that when two conflicting signs include or consist of the same combination of two letters, a likelihood of confusion can be safely excluded only when they are stylised in a sufficiently different way or contain a sufficiently different figurative element so that their different overall graphical representation eclipses the common verbal element.

In the opinion of the Opposition Division that is not the case in the present case. While it is true that the letters ‘OM’ of the marks appear in different colour and are stylised in case of the contested mark, this does not preclude the public in the relevant territory from immediately perceiving them as such. The graphical design in which the letter combinations appear does not strongly influence the overall impression given by the signs and is not capable of holding the attention of the relevant public which only rarely has the chance to make a direct comparison between the different marks

On an overall assessment of all of the factors, and bearing in mind the average inherent distinctive character of the earlier mark, the Opposition Division finds that the differences do not suffice to enable the relevant public to safely distinguish between the signs. The visual and aural similarities are rendering the overall impressions of the signs confusingly similar. Consequently, the relevant public could believe that the contested goods and services, which are identical or similar (to different degrees), come from the same undertaking or an economically linked undertaking.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 573 710. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right French trade mark registration leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) CTMR and 8(4) CTMR.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 CTMR and therefore did not incur representation costs.

The Opposition Division

Rhys MORGAN

Janja FELC

Eamonn KELLY

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.