OPPOSITION No B 2 530 742

Jacinto Vicente Maristany Ara, Benet Mercade 20, 08012 Barcelona, Spain (opponent), represented by Newpatent, Puerto, 34, 21001 Huelva, Spain (professional representative)

a g a i n s t

Valetta International Limited, 95 Quarantine Road, Nelson, New Zealand (applicant), represented by Dummett Copp LLP, 25 The Square, Martlesham Heath, Ipswich, IP5 3SL, United Kingdom (professional representative).

On 14/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 530 742 is partially upheld, namely for the following contested services:

Class 41: Entertainment services connected with the organisation and holding of musical, dramatic, dance, arts and cultural events including combination of the aforesaid, the organisation of art competitions and associated entertainment services, services provided in the organisation and running of fashion shows; none of the above services being related to nightclub services, educational services.

2. European Union trade mark application No 13 744 719 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 13 744 719 for the figurative mark . The opposition is based on Spanish trade mark registration No 3 526 274 for the figurative mark . 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.

1. The services

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

Class 41: Nightclub.

The contested services are the following:

Class 41: Entertainment services connected with the organisation and holding of musical, dramatic, dance, arts and cultural events including combination of the aforesaid, the organisation of art competitions and associated entertainment services, services provided in the organisation and running of fashion shows; none of the above services being related to nightclub services, educational services; provision of training, all the aforesaid services being related to the management and product of a fashion show and the exhibition of works of art and the provision of these services over the Internet.

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 applicant argues the following: ‘The respective uses of the services are different, in that a nightclub is for dancing, eating and drinking and a swingers club is for adults to find sexual partners. On the other hand, the applicant organises an art competition in the nature of a fashion show. These are very different services.’

However, the protection of the earlier mark is for nightclub, not for ‘swingers club’, even though the earlier sign includes the latter words. The Opposition Division agrees with the applicant that a nightclub is for dancing, eating and drinking. Actually, it is ‘an establishment for evening entertainment, generally open until the early morning, that serves liquor and usually food and offers patrons music, comedy acts, a floor show, or dancing; nightspot’ (information extracted from Dictionary.com on 02/08/2018 at https://www.dictionary.com/browse/nightclub). Another definition is ‘an entertainment venue and bar that usually operates late into the night. A nightclub is generally distinguished from regular bars, pubs or taverns by the inclusion of a stage for live music, one or more dance floor areas and a DJ booth, where a DJ plays recorded music’ (information extracted from Wikipedia on 02/08/2018 at https://en.wikipedia.org/wiki/Nightclub). Some of these clubs embrace the arts and artists. Therefore, although the applicant has explicitly limited the contested entertainment services to exclude nightclub services, there is a clear connection between these services and the opponent’s nightclub services.

Therefore, the contested entertainment services connected with the organisation and holding of musical, dramatic, dance, arts and cultural events including combination of the aforesaid, the organisation of art competitions and associated entertainment services; none of the above services being related to nightclub services, educational services are similar to a high degree to the opponent’s nightclub services, because they are all entertainment services that have the same purpose and method of use. Moreover, they also target the same public and they are in competition.

The contested services provided in the organisation and running of fashion shows; none of the above services being related to nightclub services, educational services also have some connection with the opponent’s nightclub services to the extent that a differentiating feature of exclusive nightclubs is that, in addition to being known for a certain type of music, they are also known for having a certain type of crowd, for instance a fashion-forward, affluent crowd or a crowd with a high concentration of fashion models. Many exclusive boutique clubs market themselves as being places to socialise with models and celebrities. Moreover, some nightclubs may run, for example, shows oriented to a type of fashion closely related to a specific musical genre that characterises these establishments. Therefore, these services may target the same public and have the same commercial origin and distribution channels. Therefore, these services are similar to a low degree.

The contested provision of training, all the aforesaid services being related to the management and product of a fashion show and the exhibition of works of art and the provision of these services over the Internet and the opponent’s nightclub services are very different from each other, because they do not have the same nature, purpose and method of use. Their commercial origin and distribution channels differ and they do not target the same end users. Moreover, these services are neither in competition nor complementary. Therefore, these services are dissimilar.

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 similar to different degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Contrary to the applicant’s opinion, the element ‘WOW’ of the signs has no meaning for Spanish consumers. The territory is Spain and, although many English-speaking tourists visit this country every year or even reside in it and are potential consumers of the relevant services, this exclamation is used to show surprise and sometimes pleasure but only in English, not in Spanish or any of the other official languages of Spain. The possible translations of this word in Spanish could be ‘vaya’, ‘hala’, ‘anda’ or ‘guau’. The Opposition Division will examine the opposition in relation to the part of the public for which ‘WOW’ has no meaning and therefore has a normal degree of distinctiveness. This element is also dominant in the earlier sign due to its size and central position.

The other verbal elements of the earlier mark, namely ‘BARCELONA’, ‘PRIVATE ADVENTURES’ and ‘CLUB’ have a very limited impact, not only because of their small size but also because of their low degree of distinctiveness or because they are devoid of distinctive character for the following reasons. ‘BARCELONA’ is the capital and largest city of Catalonia, as well as the second most populous municipality of Spain; it will be associated with the geographical origin of the services. The English words ‘PRIVATE ADVENTURES’ are close to their equivalent in Spanish (‘aventuras privadas’) and, therefore, will be associated with some characteristics of the services, namely that the opponent’s services either offer an unusual and exciting or daring experience in an intimate and discreet atmosphere or target particular people or groups of people. The word ‘CLUB’ exists as such in Spanish and will be understood as an association dedicated to a particular interest or activity or as a nightclub.

The English word ‘SWINGERS’ will not be understood by Spanish consumers and is distinctive because it has no meaning for any of the services in question. However, its impact is also reduced because of its small size compared with the dominant element, ‘WOW’.

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).

Visually, the signs coincide in that the verbal element ‘WOW’ of the earlier mark makes up the entire contested sign. However, the signs differ in the typeface and stylisation of their common element and in all the additional elements of the earlier mark, namely the exclamation mark, the figurative element and the words ‘BARCELONA’, ‘SWINGERS CLUB’ and ‘PRIVATE ADVENTURES’.

Bearing in mind that most of these additional elements of the earlier mark have a limited impact on the consumer, it is considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛WOW’, present identically in both signs. The additional words ‘BARCELONA’, ‘SWINGERS CLUB’ and ‘PRIVATE ADVENTURES’ will not be pronounced because they are not dominant and/or they are distinctive to a low degree or even non-distinctive. It cannot be excluded that part of the public will pronounce the coinciding element, ‘WOW’, with slightly more emphasis when referring to the earlier mark because of the presence of the exclamation mark, but this difference can be considered negligible.

Therefore, the signs are aurally identical.

Conceptually, although the public in the relevant territory will perceive some meanings in the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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, despite the presence of some non‑distinctive or weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The services found to be similar to different degrees target the public at large, whose degree of attention is considered average. The signs are visually similar to an average degree and aurally identical. The signs are not conceptually similar, but this is due to most of the earlier mark’s additional words, which have a low degree of distinctiveness or are even devoid of distinctiveness. The distinctiveness of the earlier mark must be seen as normal.

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).

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 high degree of similarity between the signs offsets the low degree of similarity between some of the services.

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.

Indeed, 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 because the differences between the signs are mainly confined to non-distinctive or secondary elements and aspects. The Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration. A likelihood of confusion for most of the relevant public, that is, excluding only those who understand the English word ‘WOW’, is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to different degrees to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the services are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sandra IBAÑEZ

Benoit VLEMINCQ

Pedro JURADO MONTEJANO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.