OPPOSITION No B 2 843 749

Spirit, 32, boulevard Victor Hugo, 92110 Clichy, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Green Spirit s.r.l., Via Ricasoli 59, 50122 Firenze, Italy (applicant).

On 24/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 843 749 is upheld for all the contested services, namely

Class 42: Architectural design; design of building interiors; designing feasibility studies on designs; interior design services and information and advisory services relating thereto.

2. European Union trade mark application No 15 964 513 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 15 964 513 (figurative sign), namely against some of the services in Class 42. The opposition is based on, inter alia, French trade mark registration No 4 304 929 ‘PARC SPIRIT’ (word mark). 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 French trade mark registration No 4 304 929 ‘PARC SPIRIT’.

1. The services

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

Class 42: Architecture, land surveying, construction advisory services, construction drafting, design of interior decor, material testing, technical project studies, expertise’s (engineers works), land surveying, licensing of intellectual property, energy auditing; urban planning.

The contested services are the following:

Class 42: Architectural design; design of building interiors; designing feasibility studies on designs; interior design services and information and advisory services relating thereto.

The contested architectural design is included in the broad category of the opponent’s architecture services. Therefore, they are identical.

The contested design of building interiors; interior design services and information and advisory services relating thereto are included in the broad category of, or synonymous to, the opponent’s design of interior decor. Therefore, they are identical.

The contested designing feasibility studies on designs overlap with the opponent’s technical project studies. Therefore, they are identical.

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 are directed either both at the public at large and professionals (i.e. those related to architecture services) or at business customers with specific professional knowledge or expertise (i.e. designing feasibility studies on designs). The degree of attention may vary from average to high as these services are rather specialised and expensive.

3. The signs

PARC SPIRIT
Earlier trade mark	Contested sign

The relevant territory is France.

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 earlier mark is a word mark composed of two words ‘PARC’ and ‘SPIRIT’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters.

The contested sign is a figurative sign made up of two words, ‘GREEN’ and ‘SPIRIT’, depicted in slightly stylised lower-case letters. They are in white and placed against a black circle.

The word ‘parc’ of the earlier mark is a French word that means ‘park’, that is, an enclosed terrain, partially forested, maintained for walking, enjoyment (information extracted from Larousse Dictionary at www.larousse.fr on 14/05/2018). The word ‘spirit’ as such does not evoke any particular meaning for the relevant public with regard to the services in question.

In relation to the contested sign the above explanations concerning the word ‘spirit’ apply. As far as the word ‘green’ is concerned, although it is an English word, it will be understood as the colour of grass or leaves.

Taking into account the above explanations, the word ‘spirit’, present in both signs, is distinctive for the services at issue. The word ‘parc’ of the earlier mark could allude to landscape architecture services, that is, the design of outdoor areas, landmarks, and structures to achieve environmental, social-behavioural, or aesthetic outcomes. Therefore, it can be weak not only with regard to architecture services, but also with regard to the rest of the services that might concern for instance designing interior gardens. The word ‘green’ could be understood as referring to sustainable architecture services (often referred to as green architecture), namely architecture that seeks to minimize the negative environmental impact of buildings by efficiency and moderation in the use of materials, energy, development space and the ecosystem at large. It is therefore weak with regard to the services in question. As far as the graphic elements and the stylisation of the contested sign are concerned, they are of a decorative nature and, therefore, play a secondary role in the comparison.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their second verbal element ‘SPIRIT’. However, they differ in their first verbal elements, that is, ‘PARC’ of the earlier mark and ‘green’ of the contested sign. They differ also in the graphic elements and the stylisation of the contested sign.

Therefore, the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SPIRIT’, present identically in both signs. However, the pronunciation differs in the sound of the letters ‛PARC’ of the earlier sign and ‘green’ of the contested mark.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘PARC’ of the earlier mark and ‘green’ of the contested sign, will be associated with the meanings explained above. Although these words do not have the same concept, a connection between the two concepts cannot be denied. Green is the colour of a park, and they are both associated with nature. To that extent, the signs are conceptually similar to a low degree.

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 a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, §22).

In the present case, the services are identical. The conflicting marks are similar to various degrees: visually to at least a low degree, aurally to at least an average degree and conceptually to a low degree. The degree of attention of the relevant public may vary from average to high. In addition, 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).

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).

The applicant argues that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. In the current case however the first parts of the marks under comparison, ‘parc’ and ‘green’ will be immediately understood by the relevant consumers and will be seen as weak in connection with the services at issue. Therefore, these additional verbal components do not substantially distinguish the marks in question. Moreover, there is a link between the concepts of ‘PARC’ and ‘green’. Furthermore, in the contested sign the word ‘spirit’ is placed just beneath the word ‘green’, both being separate elements. It means that the most distinctive element of the earlier mark, that is, ‘SPIRIT’, is fully incorporated in the contested sign and placed at its end where it plays an independent role. It is the most distinctive element in this mark as well. In an overall assessment of all the relevant factors, it must be concluded that the differences between the marks (confined to weak elements which are conceptually linked to a certain extent) cannot outweigh the visual and aural similarities arising from the coinciding element ‘SPIRIT’.

The applicant refers to previous decisions of the Office to support its arguments (e.g. 28.11.2008, R 1901/2007- 4, BlueSpirit vs. Spirit). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as they concern other factual circumstances such as different scopes of protection and different trade marks. Therefore, this argument has to be set aside.

The applicant also argues that the scope of activities rendered by the parties in conflict is different as the applicant offers services related to ‘design and specifically in the conception and design of amusement parks, family entertainment center, edutainment center & parks, other entertainment facilities and exhibition design’, whereas the opponent offers various types of services, including architecture services.

The Opposition Division considers that this claim has also to be set aside as the comparison of the services should focus on the services as registered.

Considering all the above, 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 4 304 929 ‘PARC SPIRIT’. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right French trade mark registration No 4 304 929 ‘PARC SPIRIT’ 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Natascha GALPERIN

Michal KRUK

Elena NICOLÁS GÓMEZ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.