OPPOSITION No B 2 953 167

Tekman Education S.L., Passeig de Garcia Fària, 49, 08019 Barcelona, Spain (opponent), represented by Pons patentes y marcas internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Kristijan Ladić s.p., Jarčeva ulica 37, Sl-2000 Maribor, Slovenia (applicant), represented by Jure Marn, Ljubljanska ulica 9, Sl-2000 Maribor, Slovenia (professional representative).

On 20/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 953 167 is partially upheld, namely for the following contested services:

Class 41: All the services applied for protection in this class.

2. European Union trade mark application No 16 562 101 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 562 101 for the word mark ‘ONMAT FIT’. The opposition is based on European Union trade mark registration No 15 703 655 for the figurative 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.

a) The services

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

Class 38: Providing access to websites on the internet or any other communications network; access to content, websites and portals.

Class 41: Provision of education, training and entertainment; provision of training courses; academies (education); interactive entertainment services; entertainment provided via the internet.

The contested services are the following:

Class 35: Advice relating to the business management of fitness, recreational and exercising studios; provision of assistance (business) in the establishment and in the operation of franchises in relation fitness, recreational and exercising studios; presentations of services relating to fitness, recreational and exercising studios for publicity and promotional purposes; marketing and retailing of equipment for fitness, recreation, physical exercises and yoga; business management for others in the field of fitness, recreation, physical exercises and yoga; import and export services; demonstration of equipment for fitness, recreation, physical exercises and yoga; business information, business organization consultancy in relation to fitness studios; arranging business introductions including introducing yoga and fitness coaches/trainers to clients and vice versa; business advice relating to franchising.

Class 37: Assembly, maintenance, repair, restoration and servicing of devices and equipment for fitness, recreation and exercise.

Class 41: Services of fitness, yoga, physical exercises and recreation studios/clubs providing exercise also on boards floating on water; consultancy relating to exercise (fitness) and yoga; teaching coaches and groups in relation to physical exercise, yoga and fitness exercise to be carried out also on boards floating on water; supervision of physical exercise; personal trainer services [fitness training]; exercise (fitness) advisory services; providing equipment in the field of physical exercise, yoga and fitness exercise taking place on water; provision of water-based recreation services; training services and advanced training services in the field of fitness, recreation and physical exercise; organization of seminars; conducting fitness classes; physical exercise instruction; arranging recreational events.

Class 45: Licensing of franchise concepts.

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.

Comparison between the opponent’s services in Class 38 and the contested services in Classes 35, 37, 41 and 45.

The opponent’s services in Class 38 are telecommunication services. They are related to the physical provision of an internet connection or to another type of distant connection. The provision of technical access to content, websites and portals is not related to the content of websites, neither is it complementary to them.

Therefore, they do not have anything in common to all the contested services. They differ in their nature, intended purpose, relevant public and distribution channels, they are neither in competition nor complementary. Therefore, all contested services are dissimilar to the opponent’s services in Class 38.

Contested services in Class 35

The opponent’s services in Class 41 are services intended to improve a person’s knowledge, culture and skills or for personal entertainment.

The contested advice relating to the business management of fitness, recreational and exercising studios; provision of assistance (business) in the establishment and in the operation of franchises in relation fitness, recreational and exercising studios; presentations of services relating to fitness, recreational and exercising studios for publicity and promotional purposes; marketing of equipment for fitness, recreation, physical exercises and yoga; business management for others in the field of fitness, recreation, physical exercises and yoga; import and export services; demonstration of equipment for fitness, recreation, physical exercises and yoga; business information, business organization consultancy in relation to fitness studios; arranging business introductions including introducing yoga and fitness coaches/trainers to clients and vice versa; business advice relating to franchising are intended to help companies manage their business by setting out the strategy and/or direction of the company, providing advice in the specific business areas and supporting the performance of business operations, including the organisation and provision of marketing activities and advertisements, or are specific services such as import and export and business advice and assistance relating to franchising. The services are rendered with the aim of helping other companies to run or improve their business or they provide consultancy and information in relation to such services. They are usually supplied by companies specialised in these fields, for example business intermediaries and agencies.

Although most of the contested services are rendered with the specific aim of helping other companies in the field of fitness, recreation, physical exercises and yoga, they are usually supplied by the same companies that provide these services in general, but not by the companies who are operating fitness or yoga studios, or organise physical exercise. In addition, even if the contested services are necessary or useful for the companies providing the services in Class 41 covered by the earlier mark, it does not mean that they are similar. They have a different public and purpose; the contested services target professionals who need support in their business activities, while the opponent’s services in Class 41 are for the public in general and the intended purpose of these two groups of services is different, as evident from the explanations above. They are neither in competition nor complementary; moreover, their distribution channels and providers are not the same. Therefore, they are dissimilar.

The remaining contested retailing services deal with equipment intended for fitness, recreation, physical exercises and yoga and they may target the same consumers as the opponent’s services in Class 41. However, they have a different nature and purpose, different providers and they are not complementary. The mere fact that the goods that are subject to the retailing services can be used for providing the opponent’s services is not sufficient to find the services complementary . Therefore, they are dissimilar.

Contested services in Class 37

The contested assembly, maintenance, repair, restoration and servicing of devices and equipment for fitness, recreation and exercise do not have anything relevant in common with the opponent’s services in Class 38. They have a different nature, purpose and relevant public. Their providers are not the same and they are distributed through different channels. Moreover, they are neither in competition nor complementary. Therefore, they are dissimilar.

The mere fact that the contested services refers to devices and equipment for fitness, recreation and exercise that can be used for the provision of the opponent’s provision of education, training and entertainment; provision of training courses; academies (education) in Class 41 is not sufficient for finding similarity between them. These services usually have a different purpose and different distribution channels. Although some of the providers of services in Class 41, such as fitness studios, may maintain and repair their own devices, this is not a service that they provide to a third party; on the contrary, fitness studios can be consumers of the contested services. Therefore, the services have different providers and they are not in competition nor complementary.

Contested services in Class 45

The contested licensing of franchise concepts are services rendered by lawyers, legal assistants, and personal advocates to individuals, groups of individuals, organisations and enterprises in order to facilitate and support their intent to franchise. Therefore, these services have a different nature, intended purpose, relevant public and different distribution channels. Moreover, they are neither in competition with, nor complementary, to the opponent’s services in Class 41. Therefore, they are dissimilar.

Contested services in Class 41

The contested services of fitness, yoga, physical exercises and recreation studios/clubs providing exercise also on boards floating on water; teaching coaches and groups in relation to physical exercise, yoga and fitness exercise to be carried out also on boards floating on water; supervision of physical exercise; personal trainer services [fitness training]; provision of water-based recreation services; training services and advanced training services in the field of fitness, recreation and physical exercise; organization of seminars; conducting fitness classes; physical exercise instruction; arranging recreational events are included in, or overlap with, one of the following categories of the opponent’s services in the same class: provision of education, training and entertainment; provision of training courses.

The remaining contested services, namely consultancy relating to exercise (fitness) and yoga; exercise (fitness) advisory services; providing equipment in the field of physical exercise, yoga and fitness exercise taking place on water can have the same origin and distribution channels as the opponent’s provision of training. Moreover, they target the same public and therefore they are similar.

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 services found to be identical are directed at the public at large and business customers with specific professional knowledge or expertise (e.g. providing equipment in the field of physical exercise, yoga and fitness exercise taking place on water).

The degree of attention is average.

c) The signs

	ONMAT FIT
Earlier trade mark	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.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, some consumers may perceive that the element ‘ONMAT’ (present in the both signs) suggests a specific meaning or that resemble words existing in their respective languages (such as ‘on mat’ in English). However, at least a part of the public in the relevant territory will not identify any meaningful component in ‘ONMAT’. For reasons of procedural economy, the analysis of the opposition will continue for the non-English-speaking part of the public who will not perceive any meaning in the element ‘ONMAT’.

The earlier mark is a figurative sign that consists of the stylised term ‘ONMAT’, Although, the letters ‘MAT’ are depicted using geometrical shapes, it is considered that at least part of the consumer will still recognise the letters. Moreover, although the first two letters ‘ON’ are depicted in grey and without any use of geometrical shapes, which distinguish them from the remaining letters, the overall stylisation of the word is such that none of the letters or string of letters will be singled out by the relevant public as an individual element. Therefore, the verbal element ‘ONMAT’ is meaningless and distinctive.

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; decisions of 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).

The contested sign is composed of the verbal elements ‘ONMAT’ and ‘FIT’. The first verbal element will be perceived as distinctive and meaningless as in the earlier mark.

The second element ‘FIT’ will also be perceived as meaningless by part of the relevant public and for them it is distinctive. However, it is reasonable to assume that another part of the public will understand this element as a reference to ‘in good health, especially because of regular physical exercise’ (information extracted from Lexico on 01/04/2020 at https://www.lexico.com/definition/fit) or as an abbreviation of ‘fitness’, due to the extensive use of this basic English word. Bearing in mind the relevant services, when the element is perceived as having a meaning it will have a weak distinctive character as it describes characteristics of the services, such as the place of provision of the services, their intended purpose or desired result.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the word ‘ONMAT’, which is the sole verbal element of the earlier mark and the first distinctive verbal element of the contested sign. However, they differ in the additional word ‘FIT’, placed in second position in the contested sign, which has a weak or normal distinctiveness depending on whether it is understood or not, respectively. Furthermore, visually, the signs differ in the stylisation of the earlier mark, which will have a lesser impact, as previously explained.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the public that does not see any meaning in both signs a conceptual comparison is not possible and the the conceptual aspect does not influence the assessment of the similarity of the signs.

For the public that will perceive the element ‘FIT’ as having the abovementioned meanings, the signs are not conceptually similar. However, in this case the element ‘FIT’ is weak; therefore, the difference resulting from it should not be overestimated.

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.

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.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the services in question, under the assumption that they bear the signs in question, come from the same undertaking or, as the case may be, from economically linked undertakings. If a significant part of the relevant public may be confused as to the origin of the services at issue, this is sufficient. Therefore, there is no need to establish that all actual or potential consumers of the relevant services are likely to be confused.

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).

The services are partly identical, partly similar and partly dissimilar. The level of attention of the relevant public is average and the distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to at least an average degree and the conceptual aspect is irrelevant for a part of the public while for the other the marks are conceptually not similar. The marks are similar as they coincide in the element ‘ONMAT’, constituting the earlier mark’s only verbal element and fully included and clearly perceptible as an independent element at the beginning of the contested sign. The signs differ in the figurative stylisation of the earlier mark, which is of lesser importance, and in the additional word, ‘FIT’ of the contested sign. These elements, regardless of whether the element ‘FIT’ is perceived as distinctive or weak, cannot overshadow the similarities arising from the common element ‘ONMAT’.

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 services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that, when consumers encounter the signs at different times for the relevant services, they may assume that the relevant services come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public that will not perceive any meaning in the element ‘ONMAT’. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar 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.

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

Irena LYUDMILOVA LECHVA

Maria SLAVOVA

Michele M. BENEDETTI-ALOISI

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.