OPPOSITION No B 2 889 197

Ciudad del Motor de Aragon, S.A., Alejandre, 2, 44600 Alcañiz (Teruel), Spain (opponent), represented by Iberpatent, Félix Boix, 9-1° Derecha, 28036 Madrid, Spain (professional representative)

a g a i n s t

Anneau du Rhin SA (Société Anonyme), 23 rue Chauffour, 68000 Colmar, France (applicant), represented by Cabinet Nuss, 10 rue Jacques Kablé, 67080 Strasbourg Cédex, France (professional representative).

On 19/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 889 197 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 392 111 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 392 111, for the word mark ‘MOTORLAND PARK’. The opposition is based on, inter alia, European Union trade mark registrations No 9 754 789 and No 6 981 906, both for the figurative mark . The opponent invoked Article 8(1)(b) for all earlier marks and also invoked Article 8(5) EUTMR in relation to European Union trade mark registration No 6 981 906.

The opponent also claimed the existence of a well-known mark for the word mark ‘MOTORLAND’, under Article 8(2)(c) EUTMR within the meaning of Article 6bis of the Paris Convention. The Opposition Division will examine this claim only if necessary.

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 registrations No 9 754 789 and No 6 981 906.

1. The goods and services

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

EU trade mark registration No 9 754 789

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

EU trade mark registration No 6 981 906

Class 41: Education, providing of training, entertainment, sporting and cultural activities, organisation of sports competitions.

The contested goods and services are the following:

Class 25: Clothing, footwear (except orthopaedic footwear), headgear; shirts; gloves; scarves; hosiery; socks; slippers; caps [headwear]; tee-shirts.

Class 28: Amusement park rides; theme park rides; toy figures, play figures; positionable toy figures; racing car games; toy cars; toy vehicle tracks (playthings) and more generally games, toys and playthings.

Class 41: Providing amusement park facilities; amusement park services; amusement park and theme park services; production of amusement park shows; entertainment in the nature of an amusement park ride; amusement parks and theme parks; entertainment in the form of an amusement park show; performances (presentation of live -); organisation of shows; planning of shows; production of shows; organization of cultural shows; arranging of visual entertainment; organisation of live performances; performances (presentation of live -); lighting productions for entertainment purposes; arranging of entertainment shows; organisation of events for cultural or educational purposes; entertainment; sporting and cultural activities; leisure services; providing of information relating to theme parks, cinema, television, film studios and entertainment; amusement arcades.

As a preliminary remark, 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 25

All of the contested goods in this class are identical to the opponent’s goods in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods in this class include, are included in, or overlap with, the opponent’s clothing, footwear, headgear.

Contested goods in Class 28

The contested toy figures, play figures; positionable toy figures; racing car games; toy cars; toy vehicle tracks (playthings) and more generally games, toys and playthings are included in the broad category of the opponent’s games and playthings.

The contested amusement park rides; theme park rides can be enjoyed when providing the opponent’s entertainment services in Class 41, which include a variety of services, such as funfairs, amusement parks or the provision of recreational facilities. Therefore, these goods and services are complementary, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). Indeed, the public may expect the contested goods, which are often rather complex constructions such as roller coasters, to be produced by, or at least produced under the control of the providers of funfairs, amusement parks and recreational facilities. For example, if the contested goods are manufactured by a subcontractor in accordance with the requirements of the opponent, they are often branded with the mark of the service provider, which, in the eye of the end user, is a factor that suggests that the goods are complementary. Moreover, they have the same general purpose of entertainment and can coincide in public and distribution channels. Therefore, the contested goods are similar to the services of the opponent’s earlier trade mark No 6 981 906 in Class 41.

Contested services in Class 41

The contested providing of information relating to theme parks, cinema, television, film studios and entertainment are at least similar to the opponent’s entertainment, as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The rest of the contested services in this class are identical to the opponent’s services in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods in this class include, are included in, or overlap with, the opponent’s education, providing of training, entertainment, sporting and cultural activities, organisation of sports competitions.

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 goods and services found to be identical or similar (to varying degrees) are directed both at the public at large and at professional consumers. The degree of attention may vary from average to high, depending on the specialised nature and price of the goods/services, the frequency of purchase, or terms and conditions of the goods and services purchased.

3. The signs

	MOTORLAND PARK
Earlier trade marks	Contested sign

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The term ‘MOTOR’ may be perceived and understood in the vast majority of the European Union, and consequently the marks may be divided by consumers into two elements. The second element, ‘LAND’, could also be associated with a concept (e.g. it may be seen by the English-speaking parts of the public, inter alia, as an area of ground, especially one that is used for a particular purpose such as farming or building) when encountering the conflicting goods and services. Moreover, it cannot be excluded that the term ‘LAND’, which is meaningless in Spanish, could be linked with the suffix ‘-landia’, which has a similar meaning to ‘land’ in English (information extracted from Diccionario de la Real Academia on 18/02/2020 at https://dle.rae.es/-landia?m=form).

Therefore, the shared element ‘MOTORLAND’ is allusive, in relation to some of the relevant goods and services, for the Spanish-speaking part of the public. All the signs have the same degree of distinctiveness, due to the identical concepts of their respective elements. Indeed, when encountering some of the goods and services in question, a part of the public will see ‘MOTORLAND’ as allusive.

Taking into account the abovementioned explanations regarding the concepts, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public, since for them the shared element ‘MOTORLAND’ is not completely descriptive, as it is for other consumers (e.g. the English-speaking consumers), and they will also understand both the term ‘ARAGÓN’ of the earlier mark and the English term ‘PARK’ of the contested sign.

The element ‘MOTORLAND’ may be considered to have reduced distinctiveness in relation to part of the goods and services.

In the earlier marks, the element ‘MOTORLAND’ is the largest element, and is the most eye-catching due to its size and position. Furthermore, it is the first word that would be read when seeing the mark, as the other word element, ‘ARAGÓN’, occupies only a secondary position, being beneath ‘MOTORLAND’, at the bottom of the mark, and in a much smaller typeface.

The term ‘ARAGÓN’, of the earlier marks, refers to an autonomous community in Spain. As it will be perceived merely as a reference to the geographical origin of the relevant goods and services, it possesses no distinctive character. Moreover, given that this verbal element is much smaller than the verbal element ‘MOTORLAND’, its impact on the perception of the relevant public is reduced.

The verbal element ‘PARK’, of the contested mark, will be perceived by the Spanish consumer as its equivalent (‘parque’), which is a public area of land with grass and trees, usually in a town, where people go in order to relax and enjoy themselves (information extracted from Collins Dictionary on 18/02/2020 at https://www.collinsdictionary.com/dictionary/english/park). Thus, bearing in mind that some of the contested goods and services can be related to parks, this verbal element is descriptive and considered non-distinctive for some of the goods and services, such as amusement park rides; theme park rides; in Class 28 and providing amusement park facilities; amusement park services; amusement park and theme park services; production of amusement park shows; entertainment in the nature of an amusement park ride; amusement parks and theme parks in Class 41. It will still be distinctive in relation to some of the remaining goods (such as those in Class 25).

The figurative elements of the earlier marks are rather decorative and will barely be attributed any trade mark significance. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component usually has a stronger impact on the consumer. 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; 19/12/2011, R 233/2011‑4, BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

In conclusion, ‘MOTORLAND’ dominates the visual impression of the earlier marks, will attract more attention than the figurative elements and is more distinctive than ‘ARAGÓN’.

The visual, phonetic and conceptual comparison

Visually, taking into account that the differences are found in the verbal elements ‘PARK’ (which is non-distinctive for some of the goods and services), and ‘ARAGÓN’ (which is also non-distinctive), as well as the stylisation of the earlier mark, there is an average degree of similarity between the trade marks overall. This is due to the verbal element ‘MOTORLAND’ which is in the primary position of the contested sign, and is the most dominant and distinctive element of the earlier marks.

Aurally, a similar reasoning applies, and the signs are similar to an average degree.

Conceptually, to the extent that both signs may be associated with the somewhat allusive concepts of ‘motor’ and ‘land’ — even bearing in mind the descriptive concepts of ‘ARAGÓN’, and ‘PARK’ (for some goods and services) — the signs are 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.

4. Distinctiveness of the earlier marks

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, earlier European Union trade mark registration No 6 981 906 has a reputation in the European Union in connection with all the relevant goods in Class 41 for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted some links related to the opponent’s mark, namely from the Official MotoGP web; www.spain.info/en/lugaresinteres/, motorlandaragon.com; the Honda professional racing team official web page; as well as the Ducati and Yamaha racing teams official web pages and the Renault Sport official web page.

The opponent states, inter alia, that ‘Ciudad Del Motor De Aragón, S.A’ is the company that develops and manages all motor competitions in the MOTORLAND circuit. What is, nowadays, one of the best circuits in Europe was built near Alcañiz. Designed by Norman Foster, with shops & accommodation, the circuit is well recognised worldwide, being currently one of the permanent sites for Moto GP competition.

The opponent did not claim reputation or enhanced distinctiveness for earlier EU trade mark No 9 754 789.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark (EUTM No 6 981 906) acquired a high degree of distinctiveness through its use. There are no documents enabling the Opposition Division to determine the possible extent of use or possible degree of knowledge of the mark amongst the relevant public in the context of the respective market and competitors. The Opposition Division is unable to extract or determine, on the basis of this evidence, any direct or indirect indication as regards the degree of recognition of the trade mark among the relevant public. Clear information on the level of awareness of the trade mark on the part of the relevant public at the relevant date, such as independent market surveys or opinion polls, has not been submitted. Moreover, the opponent has not submitted any data on the market share held by the trade mark, the intensity of its use by means of sales figures, and the amount spent in promoting it.

Therefore, the Opposition Division concludes that the opponent has failed to prove that earlier European Union trade mark registration No 6 981 906 acquired a high degree of distinctiveness through use.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. The distinctiveness of the earlier marks is less than normal for those goods and services such as games in Class 28 or organisation of sports competitions in Class 41. For other goods and services, such as those in Class 25, the distinctive character is normal, despite the presence of a non-distinctive element.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabel, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, the similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C: 1998:442, § 17). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

It should be noted that the lower than average degree of distinctiveness of the coinciding element, ‘MOTORLAND’, cannot cause the degree of similarity between the marks to be disregarded in favour of a comparison based on those elements that have a more distinctive character, which would then be given undue importance. This would not be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) EUTMR (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 41).

The goods and services are identical or similar (to varying degrees). The similarities between the signs are due to the identical element ‘MOTORLAND’. The stylisation of the earlier mark is not of such a nature as to distract attention from the verbal element ‘MOTORLAND’ in relation to some of the goods and services at issue. Furthermore, the differing word element ‘PARK’ — which is non- distinctive for part of the goods and services — does not create sufficient differences to outweigh the similarities created by ‘MOTORLAND’. The remaining elements of the signs are non-distinctive, being either descriptive (ARAGÓN) or simply decorative. Despite the weakened distinctive character of the coinciding element ‘MOTORLAND’, it will be this element that will make an impression on consumers and be remembered by them.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 European Union trade mark registrations No 9 754 789 and No 6 981 906. It follows that the contested trade mark must be rejected for all the contested goods and services.

As these earlier rights lead 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).

Finally, 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.

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, 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

Astrid Victoria WABER

Gonzalo BILBAO TEJADA

Peter QUAY

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.