OPPOSITION No B 2 922 378

Real Automovil Club De España, Isaac Newton, 4 Parque Tecnológico de Madrid (PTM), 28760, Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010, Madrid, Spain (professional representative)

a g a i n s t

Patrick Castellani, 74 résidence Elsa Triolet, 13230, Port Saint Louis du Rhône, France (applicant), represented by Fanny Pierre, 28 Boulevard Jean Jaurès, 83300, Draguignan, France (professional representative).

On 14/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 922 378 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 539 918 is rejected in its entirety.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 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 goods and services of European Union trade mark application No 16 539 918 for the figurative mark The opposition is based on Spanish trade mark registration No 3 551 123 of the figurative mark . The opponent invoked Article 8(1)(b) and 8(5) 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 goods and services

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

Class 25: Clothing; footwear; headgear; aprons [clothing]; masquerade costumes; overalls; belts (money -) [clothing]; kerchiefs [clothing]; pocket squares; shoulder scarves; garments for protecting clothing; motorists' and motorcyclists' clothing; uniforms; wedding gowns.

Class 35: Advertising; business management; business administration; office functions; procurement services for others (purchasing goods and services for other businesses); updating of advertising material; import-export agencies; commercial information agencies; advertising agencies; rental of vending machines; rental of advertising space; rental of photocopying machines; office machine and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; advisory services for business management; business management assistance; business auditing; data search in computer files for others; marketing research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; professional business consultancy; book-keeping; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; dissemination of advertising matter; distribution of samples; relocation services for businesses; drawing up of statements of accounts; marketing studies; outsourcing services (business assistance); invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; computerized file management; business management of performing artists; business inquiries; business information; commercial information and advice for consumers (consumer advice shop); business investigations; marketing; typing; modelling for advertising or sales promotion; payroll preparation; employment agencies; organization of fashion shows for promotional purposes; organization of exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; psychological testing for the selection of personnel; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; publicity; on-line advertising on a computer network; outdoor advertising; direct mail advertising; advertising by mail order; radio advertising; television advertising; compilation of statistics; writing of publicity texts; public relations; document reproduction; secretarial services; personnel recruitment; business efficiency experts; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription; word processing; business appraisals; wholesaling or retailing of pharmaceutical, veterinary, or hygienic preparations and medical supplies; auctioneering; updating and maintenance of data in computer databases; providing business information via a web site. goods and services for other businesses); updating of advertising material; import-export agencies; commercial information agencies; advertising agencies; rental of vending machines; rental of advertising space; rental of photocopying machines; office machine and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; advisory services for business management; business management assistance; business auditing; data search in computer files for others; marketing research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; professional business consultancy; book-keeping; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; dissemination of advertising matter; distribution of samples; relocation services for businesses; drawing up of statements of accounts; marketing studies; outsourcing services (business assistance); invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; computerized file management; business management of performing artists; business inquiries; business information; commercial information and advice for consumers (consumer advice shop); business investigations; marketing; typing; modelling for advertising or sales promotion; payroll preparation; employment agencies; organization of fashion shows for promotional purposes; organization of exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; psychological testing for the selection of personnel; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; publicity; on-line advertising on a computer network; outdoor advertising; direct mail advertising; advertising by mail order; radio advertising; television advertising; compilation of statistics; writing of publicity texts; public relations; document reproduction; secretarial services; personnel recruitment; business efficiency experts; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription; word processing; business appraisals; wholesaling or retailing of pharmaceutical, veterinary, or hygienic preparations and medical supplies; auctioneering; updating and maintenance of data in computer databases; providing business information via a web site.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; academies (education); animal training; modelling for artists; rental of radio and television sets; rental of video cameras; rental of movie projectors and accessories; rental of sports grounds; rental of videotapes; rental of show scenery; rental of audio equipment; rental of skin diving equipment; rental of lighting apparatus for theatrical sets or television studios; games equipment rental; rental of sports equipment, except vehicles; rental of stadium facilities; rental of sound recordings; toy rentals; rental of motion pictures; rental of tennis courts; rental of camcorders; entertainer services; mobile library services; ticket agency services (entertainment); calligraphy services; sport camp services; holiday camp services (entertainment); providing casino facilities (gambling); circuses; conducting of fitness classes; health club services (health and fitness training); night clubs; club services (entertainment or education); coaching (training); layout services, other than for advertising purposes; music composition services; timing of sports events; vocational retraining; correspondence courses; discotheque services; dubbing; educational services; physical education; religious education; entertainment; stage scenery (rental of); music halls; presentation of live performances; production of shows; movie studios; recording studio services; educational examination; cinema presentations; providing golf facilities; providing sports facilities; providing amusement arcade services; practical training (demonstration); photography; gymnastic instruction; videotaping; nursery schools; entertainment information; recreation information; education information; boarding schools; sign language interpretation; gambling; game services provided on-line from a computer network; providing karaoke services; electronic desktop publishing; microfilming; videotape editing; production of radio and television programmes; providing museum facilities (presentation, exhibitions); organization of balls; organization of sports competitions; organization of competitions (education or entertainment); arranging of beauty contests; organization of fashion shows for entertainment purposes; organization of shows (impresario services); organization of exhibitions for cultural or educational purposes; party planning (entertainment); operating lotteries; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging of award ceremonies; arranging and conducting of symposiums; arranging and conducting of workshops (training); vocational guidance (education or training advice); orchestra services; amusement parks; personal trainer services (fitness training); lending libraries; videotape film production; film production, other than advertising films; production of music; radio entertainment; television entertainment; publication and editing of texts, books, magazines and other printed matter; editing, publication and electronic delivery of books and journals on line; publication of books; publication of texts, other than publicity texts; publication of electronic books and journals on-line; providing recreation facilities; scriptwriting services; writing of texts, other than publicity texts; photographic reporting; news reporters services; theatre productions; booking of seats for shows; disc jockey services; school services; language interpreter services; zoological garden services; subtitling; providing on-line electronic publications, not downloadable; translation; funfairs; providing gaming house facilities; entertainment ticket agency services; providing on-line music, not downloadable; providing on-line videos, not downloadable; driving instruction and driving instruction in road safety; dissemination of educational material; electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information.

The contested goods and services are the following:

Class 25: Shorts; Gym shorts; Bathing trunks; Boots for sports; Wet suits for water-skiing; Sports singlets; Bathing suits; Sports jerseys; Bath sandals; Tee-shirts; Sweat-absorbent underwear; Leggings [trousers].

Class 35: Dissemination of advertising matter; Distribution of advertisements and commercial announcements; Advertising; Television advertising; Online advertisements.

Class 41: Education, entertainment and sports; Organisation of conferences, exhibitions and competitions; Sporting and cultural activities; Arranging for ticket reservations for shows and other entertainment events; Arranging and conducting of sports events; Booking of seats for shows and sports events; Ticket reservation and booking services for sporting events; Timing of sports events; Sport camp services; Training.

Contested goods in Class 25

The contested shorts; gym shorts; bathing trunks; wet suits for water-skiing; sports singlets; bathing suits; sports jerseys; tee-shirts; sweat-absorbent underwear; leggings [trousers] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested boots for sports; bath sandals are included in the broad category of the opponent’s footwear. Therefore, they are identical.

Contested services in Class 35

The contested dissemination of advertising matter; distribution of advertisements and commercial announcements; advertising; television advertising; online advertisements are included in the broad category of the opponent’s advertising. Therefore, they are identical.

Contested services in Class 41

The contested Education, entertainment and sports; Organisation of conferences, Sporting and cultural activities; Timing of sports events; Sport camp services; Training are identically contained in both lists of services (including synonyms).

The contested organisation of competitions includes, as a broader category the opponent’s organization of competitions (education or entertainment). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s services.

The contested organisation of exhibitions includes, as a broader category the opponent’s organization of exhibitions for cultural or educational purposesorganization of exhibitions for commercial or advertising purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s services.

The contested arranging for ticket reservations for shows and other entertainment events; booking of seats for shows are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested arranging and conducting of sports events; booking of seats for sports events; Ticket reservation and booking services for sporting events are included in the broad category of the opponent’s sporting activities. 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 goods of Class 25 and the services of Class 41 mainly target the public at large (including professional consumers), while the services of Class 35 mainly address professional consumers.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

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).

In this regard it should be noted that the earlier mark is a figurative mark consisting of the word ‘RACE’ in italicised letters with a small crown on top. Given the sheer size of the word ‘RACE’ vis-à-vis the image of the crown, this word clearly stands out as the dominant element of the earlier mark. The word ‘RACE’ is also the more distinctive element of the mark, since it does not belong to the category of basic English words that a significant part of the relevant public in Spain would be familiar with, whereas the crown is a commonly used laudatory symbol of power, legitimacy, victory, triumph, honour and glory and, therefore, is lowly distinctive.

The contested sign is a word mark consisting of the words ‘RHONMAN’ and ‘RACE’. Since these verbal elements have no meaning in Spanish, they are distinctive. The word ‘RHONMAN’ is depicted in blue, in slightly smaller print than the word ‘RACE’, which is depicted in yellow underneath. Both words are depicted in the same rather ordinary, albeit italicised, typeface. This typeface is so common and minimal in character that it will not lead consumers’ attention away from the word it seems merely to embellish. Therefore, it hardly has any impact visually.

Placed above the verbal elements there is a figurative element consisting of two swoosh like elements in yellow and blue. This element is rather eye-catching due to its size and striking colours. However, it cannot be considered to have more impact than the verbal elements underneath, since all the mark’s constituent elements have more or less the same size and are interconnected through their matching blue and yellow colours. In fact, the consumers are more likely to remember the verbal elements, because not only is this figurative element rather abstract, in general, in the case of signs which consist of both verbal and figurative components, in principle, the public 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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Visually, the signs coincide in the distinctive verbal element ‘RACE’, which is the sole verbal element of the earlier mark and the second verbal element of the contested sign. The signs differ in their figurative elements and the word ‘ROHNMAN’ of the contested sign. However, considering the laudatory nature of the figurative element of the earlier mark and the fact that in general consumers pay more attention to verbal elements than figurative elements, the relevant consumers will rather notice that the more distinctive and dominant element of the earlier mark, i.e. ‘RACE’, is repeated in the contested sign in an independent distinctive position and in a slightly bigger typeface. Therefore, overall, these differentiating elements cannot counterbalance the visual similarity residing in the common verbal element ‘RACE’. Hence, the signs must be considered visually similar to an average degree.

Aurally, the signs coincide in the pronunciation of the two-syllable-word /RA-CE/. What differentiates them is the two-syllable-word /ROHN-MAN/. Although this difference will not go unnoticed, being the first thing to hear when the contested sign is referred to, the complete reproduction of the earlier mark in the contested sign creates an average degree of oral similarity between the marks.

Conceptually, the signs are not conceptually similar since the crown of the earlier mark, evokes a concept whereas the contested sign is totally meaningless. It must be noted, however, that this difference in the figurative element has little impact conceptually, since it will be perceived as a laudatory element of limited distinctiveness.

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.

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, 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 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 (eleventh recital of the EUTMR). 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, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, 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 (see to that effect, 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).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods and services were found identical to those of the earlier mark and are directed at a public whose level of attention may vary from average to high. The marks in dispute have been found to be visually and aurally similar to an average degree, while the signs do not convey any clearly differentiating concepts that will aid the relevant consumers in distinguishing between them.

Indeed, the only meaningful element, i.e. the image of the crown in the earlier mark, will not have much of an impact on the overall perception of the signs, since it will be perceived as a laudatory element of limited distinctiveness and not as an indicator of origin or element that could distinguish the signs conceptually. Hence, that difference can certainly not counteract the visual and aural similarity.

In light of all the foregoing considerations, the Opposition Division concludes that the differences between the signs are not sufficient to rule out a likelihood of confusion in the sense that even a more attentive Spanish consumer could believe, for instance, that the goods or services designated by the conflicting signs distinguish different product lines coming from the same or related undertakings.

Considering that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically-related ones (C-39/97, ‘Canon’, EU:C:1998:442, § 30), the relevant Spanish consumer may, for instance, think that the word ‘RHONMAN’ in the contested sign indicates a sub brand of the brand ‘RACE’.

Considering all the above, there is a likelihood of confusion on the part of the of the public. Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 551 123. 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.

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 ground of the opposition, namely Article 8(1)(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

Pedro JURADO MONTEJANO

Adriana VAN ROODEN

Sandra IBAÑEZ

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.