OPPOSITION Nо B 2 634 874

 

The Financial Times Limited, Bracken House 1 Friday Street, London EC4M 9BT, United Kingdom (opponent), represented by Bristows LLP, Avenue des Arts 56, B-1000 Bruxelles, Belgium (professional representative).

 

a g a i n s t

 

Aciso Fitness & Health GmbH, Valentin-linhof-str. 8, 81829 München, Germany (applicant), represented by Flügel Preissner Schober Seidel Patentanwälte PartG mbB, Nymphenburger Str. 20, 80335 München, Germany (professional representative).

On 10/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 2 634 874 is upheld for all the contested goods and services.

 

2.		European Union trade mark application No 14 592 612 is rejected in its entirety.
3.	The applicant bears the costs, fixed at EUR 650.

 

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 592 612 ’FT-CLUB’ (word mark). The opposition is based on, inter alia, European Union trade mark registration (EU) No 13 169 735, ’FT’ (word mark) in relation to which the opponent invoked Article 8(1)(b) EUTMR and 8(5) EUTMR. In relation to another earlier right, the opponent also invoked Article 8(4) 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 (EU) No 13 169 735, ’FT’ (word mark), since it has the broadest territorial scope. This earlier mark is furthermore not subject to prove of use requirement as explained to the parties during the course of the opposition proceedings.

 

a) The goods and services

 

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

 

Class 28: Games; board games; puzzles.

Class 38: Telecommunication, communication and broadcasting services including the provision of such services online, via the Internet or via other communication networks; communication of information by electronic means, all relating to the provision of information by electronic means relating to business, business services, finance, financial services, economics, education, politics and current affairs; message sending and message delivery services; message sending and message delivery services relating to the provision of information relating to business, business services, finance, financial services, economics, education, politics and current affairs; electronic mail, message sending and receiving services; message and bulletin boards; provision of blogging services; email services; provision of chat and chat room services online, via the Internet or via other communication networks; news agency services; electronic news agency services;  news broadcasting services; transmission of business information and statistics; transmission of financial and/or economic information and statistics; transmission of educational and entertainment products and programmes; streaming of video and audio-visual material, including advertising via the Internet and other communication networks; transmission of information on-line, via the Internet and via other communication networks; transmission of data, text, images, graphics, sound, audio visual material; on-line transmission of electronic publications; leasing of access time to computer databases; information, advising and consultancy services relating to all the aforesaid services.

Class 41: Education services; training services; provision of training; organizing and arranging of sporting events.

The contested goods and services are the following:

Class 28: Machines for physical exercises; manually operated exercise equipment; gymnastic articles not included in other classes; sporting articles not included in other classes.

Class 41: Health club services [health and fitness training]; personal trainer services [fitness training]; fitness club services; physical fitness centre services; provision of keep fit facilities; booking of exercise facilities; provision of educational services relating to exercise; conducting fitness classes; physical training services; tuition in physical fitness; exercise instruction; physical-education services; provision of instruction relating to exercise; educational services relating to physical fitness; physical fitness instruction; providing fitness and exercise facilities; keep fit instruction services; instruction courses relating to physical fitness; rental of sports or exercise equipment; keep-fit instruction; exercise [fitness] advisory services; exercise [fitness] training services.

Class 44: Medical testing services, namely, fitness evaluation; dietetic advisory services; fitness testing.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

Furthermore, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 28

The contested machines for physical exercises; manually operated exercise equipment; gymnastic articles not included in other classes; sporting articles not included in other classes are similar to a low degree to the opponent's organizing and arranging of sporting events in Class 41, because they have the same purpose, they are complementary, they coincide in distribution channels, they coincide in end user. The General Court has held that the organization of sporting activities involves the use of ‘games’ and, by extension, ‘gymnastic and sporting articles’ hence, a degree of low similarity exists between them (16/09/2013, T-250/10, Knut – der Eisbär, EU:T:2013:448, § 68-76).

Contested services in Class 41

The contested health club services [health and fitness training]; personal trainer services [fitness training]; fitness club services; physical fitness centre services; provision of keep fit facilities; booking of exercise facilities; provision of educational services relating to exercise; conducting fitness classes; physical training services; tuition in physical fitness; exercise instruction; physical-education services; provision of instruction relating to exercise; educational services relating to physical fitness; physical fitness instruction; providing fitness and exercise facilities; keep fit instruction services; instruction courses relating to physical fitness; rental of sports or exercise equipment; keep-fit instruction; exercise [fitness] advisory services; exercise [fitness] training services are included in, or overlap with, at least one of the opponent's broad categories of education services; training services; provision of training, organizing and arranging of sporting events. Therefore, they are identical.

Contested services in Class 44

The contested medical testing services, namely, fitness evaluation; dietetic advisory services; fitness testing are related to the fitting of persons and are thus similar to the opponent's training services, provision of training (since these latter two are broad categories that may include physical training), organizing and arranging of sporting events because they have the same or a similar nature, they have the same or similar purpose, they coincide in distribution channels, they coincide in end users. Sport gyms for instance offer nowadays the training/sport services to their users and complement by fitness related services such as those of the opponent.

b) 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 (to varying degrees) are directed at the public at large and at professionals in the fitness and dietetic fields where particular care is taken in as much as they relate to the health of individuals. The degree of attention may vary from average to higher than average.

 

c) The signs

 

FT

FT-CLUB

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).

Both marks are word marks composed of the letters ‘FT’ (earlier mark) and ’FT-CLUB’ separated by a hyphen (contested sign). The relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). This will be even more the case here, since the two verbal elements are clearly separated by the use of a hyphen. The element ‘CLUB’ will be understood as referring to an association dedicated to a particular interest or activity. Bearing in mind the relevant goods and services at hand that can all be sold/provided by clubs or to clubs, this element is considered to be non-distinctive . The common combination of the letters ‘FT’ may be seen as an abbreviation for free throw (in basketball); full-time and (in the UK) financial times (https://www.lexico.com/en/definition/ft). Nonetheless, in the event a meaning were to be attributed to `FT´, it would be immaterial since it would be identical in both cases and thus on equal footing. The only differentiating elements of contested mark, merely reside in a clearly known element, `CLUB´ and perceived by consumers as non distinctive . The signs would be conceptually highly similar, if not identical, should a meaning be perceived in `FT´. Since the difference lays in a non-distinctive element, its impact on the comparison of the signs is very limited.

Moreover, it must be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, 'FT' which is placed at the beginning of the contested sign will catch the consumers' attention first.

Visually and aurally, the signs coincide in the letters/sounds ‘FT’ which are entirely reproduced at the beginning of the contested mark. They differ in the additional word ‘CLUB’ which has less impact on the consumer as it is non-distinctive in relation to the goods and services at hand. The hyphen will most likely not be pronounced.

The signs are visually and aurally highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

 

e) Global assessment, other arguments and conclusion

 

The goods and services are partially identical and partially similar (including to a low degree). The signs are visually and aurally similar to a high degree on account of the common verbal element ‘FT’. Conceptually, the signs are highly similar, if not identical since the conceptual difference lays in a non-distinctive element with a very limited impact on the comparison of the signs.

The level of attention of the public may vary from average to higher than average and the distinctiveness of the earlier mark is 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). 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).

As explained above in section c) of this decision, the relevant public will understand the meaning of the additional word of the contested sign ‘CLUB’ and will not pay particular attention to it because it is non-distinctive in relation to the goods and services in question. 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).

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration (EU) No 13 169 735. 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

As this earlier right 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 right 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(4) and 8(5) EUTMR.

 

COSTS

 

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

 

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

Marzena MACIAK

 

 

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.