OPPOSITION No B 2 941 824

IIC-Intersport International Corporation GmbH, Wölflistr. 2, 3006 Bern, Switzerland (opponent), represented by Durán - Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Centro Intermodal de Logistica, S.A. S.M.E., Av. Ports d'Europa, 100, 4ª planta Edifici Service Center, 08040 Barcelona, Spain (applicant), represented by Ponti & Partners, S.L.P, C.Consell de Cent, 322 08007 Barcelona, Spain (professional representative).

On 27/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 941 824 is upheld for all the contested services.

2. European Union trade mark application No 16 620 106 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 620 106 , namely against all the services in Classes 35, 36, 37, 39, 40, 41, 42, 43, 44 and 45. The opposition is based on the following earlier rights:

1) International trade mark registration No 1 195 533 designating the European Union, covering goods and services in Classes 9, 12, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45.

2) European Union trade mark registration No 2 672 376 , covering services in Classes 35, 36, 37, 39, 40, 41 and 42 (according to the opponent’s submissions of 16/07/2018 where goods and services in Classes 25, 28 and 38 were withdrawn as a basis of the opposition).

The opponent invoked Article 8(1)(b) EUTMR for all the abovementioned goods and/or services and Article 8(5) EUTMR for part of the goods and/or services, namely, all the goods and services in Classes 25, 28, 35, 36, 40 and 41 in relation to the earlier right (1) and all the services in Classes 35, 36, 40 and 41 in relation to the earlier right (2).

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 19/04/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

1) International trade mark registration No 1 195 533 designating the European Union

Class 25: Clothing, footwear, headgear.

Class 28: Games, toys, gymnastic and sporting articles (except clothing); sporting articles included in this class; leather and fabric bags designed for carrying sports articles, sailboards; sail wings, namely hang gliders and paragliders; fishing and hunting equipment included in this class; belts, buoyancy devices, vests and belts for swimming.

Class 35: Advertising, including direct marketing and online marketing; business management; business administration, computer file management, order management and stock management services, business management and organization consultancy, organization and management consulting for sports stores and sports centers; shop-window dressing, demonstration of goods, dissemination of advertisements, dissemination of advertising matter, market study, import-export agencies, rental of advertising space, rental of advertising material, organization of exhibitions for commercial or advertising purposes, sales promotion through the sponsorship of cultural and sporting events, publication of advertising texts, radio advertising, television advertising; retail sale in stores and by means of a global computer network (the Internet); electronic commerce (e-commerce) services, namely provision of information on goods via telecommunication networks for advertising or sales purposes; grouping of wholesale purchases; wholesale services, the bringing together for the benefit of others of various goods and services (excluding their transport) enabling consumers to conveniently view, find out about and purchase such goods or services, services involving the selection and presentation of goods and services, through the use of printed documents or electronic communication media, to enable mail orders; services provided by a license granter and/or franchiser, namely transfer (provision) of commercial know-how.

Class 36: Insurance underwriting, debit and credit card services, issue of tokens of value, issue of travelers’ checks; financing of cultural and sporting events by means of sponsorship agreements; insurance (guarantee) services for sporting goods with a view to exchange thereof in a country other than that in which the product was purchased.

Class 40: Treatment of ski soles; alteration and waterproofing of garments and clothing; assembling and shaping of goods requested by third parties, namely assembling and shaping of ski boots and golf clubs, particularly with a view to adapting them to the needs of others.

Class 41: Sporting and cultural activities; sports camp services; timing of sports events; health clubs (physical fitness), physical education; operation of sports facilities, operation of golf facilities, operation of fitness clubs; teaching of sports and gymnastics; rental of sports equipment (except vehicles), particularly rental of ski and snowboard boots and equipment; rental of skin diving equipment; DVD rental, organization of sports competitions and events; production of films, particularly on video and multimedia carriers, publication of books; holiday camp services; rental of sports equipment.

2) European Union trade mark registration No 2 672 376

Class 35: Publicity; commercial business management; business administration; computerized file management; services for the management of orders and for the management of the stocks, business management and organization consultancy, shop window dressing, demonstration of goods, dissemination of advertising matter, marketing studies, import-export agencies, rental of advertising space, publicity material rental, organizing of exhibitions for commercial or advertising purposes, sales promotion (for others) through the sponsoring of cultural and sporting events, publication of publicity texts, radio advertising, television advertising; retail services, services for the selection and presentation of goods and services, by means of printed matters or via electronic communication means, in order to enable their mail order.

Class 36: Insurance, debit and credit cards services, issue of tokens of value, issuing of traveller’s checks, services for the financing of cultural and sporting events by means of sponsoring.

Class 40: Ski-base treatment, sharpening of skates; clothing alteration.

Class 41: Sporting and cultural activities, sport camp services, timing of sports events, health club services (sport exercises), physical education, providing sport facilities, providing golf facilities, sport instruction, rental of sports equipment, rental of video tapes, organization of sports competitions, film production, namely by video media and multimedia, publication of books.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 18/12/2017 the opponent submitted the following evidence:

Annex 1: Printouts (dated 24/11/2017) from the opponent’s website www.intersport.com, containing a summary of the history, principal achievements and milestones of the opponent. In it is indicated that Intersport International Corporation (IIC) was founded in 1968 when ten buying organisations came together to build a customer-based sporting goods operation. The opponent had started this activity in ten countries (Austria, Belgium, Denmark, France, Germany, Italy, Netherlands, Norway, Sweden and Switzerland) and in the following years expanded to Finland, Spain, the United Kingdom, Italy, Czech Republic, Slovenia, Greece, Bulgaria, Romania, Poland, Hungary etc. The opponent’s logo became IIC’s Banner in 1979 and has been constantly used since for all the opponent’s activities. The printouts also contain information related to the opponent’s shops, events, brands, campaigns launched, etc.

Annex 2: A printout (dated 24/11/2017) from the opponent’s website www.intersport.com, containing a list of all the countries where the opponent is present. It can be seen from the printout that the opponent operates in 45 countries all over the world (including countries in the EU, such as Austria, Belgium, Bulgaria, Croatia, Czech Republic, Denmark, Finland, France, Germany, Greece, Hungary, Italy, Netherlands, Poland, Romania, Spain, etc.) with more than 5,400 stores worldwide. The mark is seen on the top of the printout.

Annex 3: A copy of the 2014 ‘Cross-country executive report’, which shows the consumer’s awareness of the opponent’s brand in various countries. The report bears the earlier mark , and was conducted by GfK Switzerland AG in 2014. It contains the conclusions obtained following several surveys that took place in 19 European countries, most of which belong to the European Union and, therefore, comprise the relevant public for the purposes of this opposition. The report shows that during the 6 months from April 2014 in Ireland, Greece and Croatia more than 85% of all respondents purchased sports products, while in Denmark and the Netherlands only 55% did so. As far as ‘INTERSPORT’ brand awareness is concerned, 17% of all the participating individuals mentioned ‘INTERSPORT’ when asked about sport shops. The results were particularly high in countries such as Finland (where 38% of the participants mentioned it), Greece (36%), Croatia (34%) and Austria (32%). Spontaneous awareness shows that after being asked about sport shops, 36% of the overall participants had knowledge of ‘INTERSPORT’, especially in Slovenia (73%), Sweden (71%), Finland (64%), Denmark (58%), Austria (58%), Croatia (56%), Greece (54%) and France (45%). When it comes to prompted awareness, the results of the survey show that 78% of the participants recognised the ‘INTERSPORT’ brand. The results show the high degree of recognition in many European Union countries, being more than 85% of the overall participants, especially by over 90% in Sweden, Slovenia, Croatia, Finland, Denmark, Austria, Greece and France, and over 80% in Germany, Romania and Netherlands. The highest results of ‘top-of-mind’, ‘spontaneous’ and ‘prompted’ brand awareness were in Finland (38%, 64% and 98% respectively), Greece (36%, 54% and 96% respectively), Croatia (34%, 56% and 98% respectively), Austria (32%, 58% and 96% respectively), Sweden (31%, 71% and 99% respectively), Denmark (28%, 58% and 97% respectively) and Slovenia (27%, 73% and 99% respectively). Advertising awareness results show that during the 6 months following April 2014 around a quarter or more of all respondents remember some ‘INTERSPORT’ advertising, namely, in Slovenia (46%), Finland (40%), Greece (35%), Croatia (34%) and Austria (29%). Prompted advertising awareness is highest for Finland (76%), Croatia (73%), Slovenia (71%), Greece (60%) and Austria (50%), where 50% or more remember having seen ‘INTERSPORT’ advertisements. The highest results of ‘top of mind’, ‘spontaneous’ and ‘prompted’ advertising awareness are in Finland (28%, 40% and 76% respectively), Croatia (21%, 34% and 73% respectively), Slovenia (20%, 46% and 71% respectively) and Greece (31%, 35% and 60% respectively).

Annex 4: A copy of excerpts of the executive reports conducted by GfK Switzerland AG between 2006 and 2013, namely winter 2006/2007 (showing that awareness for the ‘INTERSPORT’ brand is more than 80% in Sweden, Finland, Denmark, Slovenia, Greece, Austria and Netherlands, however no further information is provided other than one table); summer 2008 (where the highest spontaneous awareness is shown in Sweden (85%), Finland (69%), Austria (65%), Slovenia (61%), Denmark (54%) and Greece (45%)); and of 2013 (where the highest spontaneous awareness is shown in Sweden (74%), Slovenia (74%), Finland (71%), Austria (64%), Denmark (63%), Croatia (56%) and Greece (53%)).

Annex 5: Copies of six press release articles from January 2010, April 2011, March 2013, September 2013, September 2014 and May 2015, which highlight the opponent’s market share and its evolution over the years, namely that the market share (i.e. turnover) increased from about EUR 9.3 billion in retail sales in 2009, and a presence in 37 countries, to EUR 10.5 billion and operating in 44 countries in 2014. The press releases also indicate high growth rates in European Union countries, the growing number of the opponent’s stores, that the opponent strengthened its position as the leader in the global sporting goods market and other information related to the opponent’s business activity. The press releases bear the opponent’s mark on the top and emanate from the opponent.

Annex 6: List of the opponent’s sponsorship activities done the ‘INTERSPORT’ brand during the years 2005 – 2017 (including some upcoming events in 2019 and 2021). The list emanates from the opponent and indicates contract dates, names of events and the dates and places where these events take place. The list shows that the opponent sponsored around 275 sports events and competitions between 2005 and 2017. Sponsorship activity is particularly high in the fields of skiing, football and basketball. In its observations, the opponent also indicates that its sponsorship activities started with the Munich’72 Olympic Games, where the opponent opened an Olympic-shop and a fitness centre in the Olympic Village. After the success of that sponsorship, the opponent was again a sponsor in the Winter Olympics in Innsbruck, Austria, in 1976, starting an intense and fruitful relationship with the sport of skiing (the information about the beginning of the opponent’s sponsorship activities can be found in the document contained in ANNEX 1). The opponent also claims that it has been an official sponsor in numerous sports events, many of them of great importance, such as, several Ski-jumping World Cups, the Eurobasket 2007, Eurobasket 2009, Eurobasket 2013, Eurobasket 2015, UEFA Football cup Finals, Champions League football games and the qualification games for the 2014 Brazil Football World Cup.

Annex 7: An affidavit signed by Chief Financial Officer (CFO) and Deputy CEO of IIC‑Intersport International Corporation GmbH on 12/12/2017, indicating that the opponent, the owner of the trade marks and , has a strong brand presence in the European Union with 4,329 stores (status Q3 2016), such as, 1,486 in Germany, 371 in France, 369 in Italy, 295 in Spain, 278 in Austria, 260 in Netherlands, 175 in Denmark, 144 in Sweden, 61 in Finland, etc. The affidavit also indicates that for the years 2005 – 2016 the retail sales of the ‘INTERSPORT’ group increased from EUR 6.4 billion to EUR 8.5 billion in the European Union. Moreover, the affidavit confirms provision of rental activities under the ‘INTERSPORT’ brand. There are more than 850 stores with the option to rent winter sports articles in Europe, including, in Austria, Czech Republic, Finland, France, Germany, Italy, Poland, Slovakia, Slovenia, Spain and Sweden. Annex A, attached to the affidavit, also indicates that by winter 2015/2016, a total of 184 stores in Austria and 224 in France, specifically in winter sports regions, had a rental turnover growth between winter 2010/2011 and winter 2015/2016, from EUR 25 million to EUR 46.7 million (rental share from 24% to 29%) in Austria and from EUR 50 million to EUR 62.2 million (rental share from 45% to 49%) in France. The affidavit also provides (Annex B) and confirms the list of the opponent’s sponsorship events under the ‘INTERSPORT’ brand, listed as Annex 6 above.

Annex 8: Several printouts and screenshots from, inter alia, www.intesport-bernik.com, www.intersport-latoussuire.com, www.intersport-alpedhuez.com, www.intersport-faldisere.com and www.intersport-wolfart.at websites offering ski equipment maintenance and repair services. The dates of the printouts are 12/12/2017 and 13/12/2017 and the majority of them bear the mark . In its observations, the opponent also points out that some of the shops in many countries of the European Union where ski rental services are offered, also offer ski equipment maintenance, treatment and repair services, particularly in countries where Alpine and Nordic skiing are popular sports. The stores offering such services are usually located next to the slopes. The opponent also refers to the following websites as examples of the opponent’s stores that offer ski and snowboarding equipment treatment and repair:

o http://www.intersport-arlberg.com/

o http://www.intersport-valdisere.com/en/

o http://www.intersport-bernik.com/en/

o http://www.ski-hire-intersport-tigneslelac.co.uk/

o http://www.intersport-latoussuire.com/en/

o http://www.intersport-alpedhuez.com/en/shop

Annex 9: Copies of six press release articles dated May 2012, February 2013, May 2013, November 2013, March 2016 and one undated (but relating to the year 2010), which highlight the opponent’s sponsorship activities. The press releases indicate, inter alia, that ‘INTERSPORT’ was the Official Event Shop in Germany for the 2011 FIFA Women’s World Cup, and was to become the main sponsor of the Vierschanzentournee ski jumping series for the 2013/14 season in Oberstdorf, Germany on 28^th December and that ‘INTERSPORT’ would manage the Official Sports Shop of Licensed Products for the UEFA EURO 2016, located near the Eiffel Tower in Paris. The press releases emanate from the opponent and bear the opponent’s mark or on the top.

Annex 10: Pictures showing the presence of the opponent’s trade mark on billboards and advertising posters (at some of the sporting events that the opponent has sponsored), namely, at a basketball match between Lithuania and Italy (2013), EuroBasket Slovenia (2013), FIBA EuroBasket France (2015), FIBA World Cup Spain (2014), FIS Nordic World Ski Championships Fallun (2015), Handball European Championship – Herning, Denmark (2014), FIS Nordic World Ski Championships – Fiemme Valley (2013), Women’s EuroBasket France (2015). It can be seen from the pictures that the opponent’s mark occupies predominant advertising space at these events. The mark is fully displayed during the sports events and is clearly seen by the audience – both the on-site spectators and the audience reached by the broadcast of such events.

Annex 11: Six printouts from the opponent’s Intersport France and Intersport España Facebook pages, Intersport Germany and Spain Twitter profiles, Intersport France and Netherlands Instagram profiles (undated), all bearing the opponent’s mark on the top left corner. The opponent in its observations also claims that the sign is often used on its own (without the word element ‘INTERSPORT’). This is particularly evident in social media profiles and on websites, where the stand-alone logo appears as the profile image and even in the browser tabs. Therefore, in the opponent’s opinion, consumers have been accustomed to seeing the graphic sign on its own and are used to identifying it with the goods and services provided by the opponent.

Annex 12: A copy of the ‘Google Analytics’ reports for the following websites:

o The opponent’s corporate website (www.intersport.com),

o Intersport Spain website (www.intersport.es),

o Intersport France (www.intersport.fr),

o Intersport UK (www.intersport.co.uk).

The data in these reports reflects the number of visitors that these websites have had from 01/01/2013 to 01/09/2016. It can be seen that, for example, Intersport France had more than 75 million page views, more than 17 million users and more than 24 million sessions. The figures for the remaining websites are almost half.

Annex 13: Judgement No 37/2007 of 06/02/2007 of the First Instance Court of Granada (Spain) in relation to the reputation of the trade mark ‘INTERSPORT’ (in Spanish, with some parts translated into English).

The abovementioned evidence indicates that the opponent’s mark has been used for a substantial period of time (since the 1980s). Although the majority of the evidence emanates from the opponent, assessment of the reputation claim must take account of the evidence as a whole. In particular, this fact has been supported by strong evidence from the independent source, GfK Switzerland AG, namely the copy of ‘Cross Country Executive Report’ 2014 and extracts from respective reports of 2006/2007, 2008 and 2013, showing the opponent’s high brand awareness in at least part of the European Union. This has been rather stable, at least between the years 2006 - 2014. This, taken together with the high figures (in billions) of the opponent’s sales and the fact that the opponent operates 4,329 stores in the majority of the countries of the European Union, suggests that the opponent’s trade mark has a consolidated position in the relevant market of sports products. Moreover, the list of the opponent’s sponsorship activities; the presence of the mark on billboards and advertising posters at basketball and winter sports events (which usually attract a lot of athletes and spectators); together with the advertising awareness reflected in the ‘Cross Country Executive Report’ of 2014, show significant efforts and investments form the part of the opponent in promoting its brand.

The applicant questions each of the pieces of evidence submitted by the opponent as regards their dates, sources or probative value. In this regard, the Opposition Division notes that an overall assessment of the evidence shows that the mark has been used for a substantial period of time and has been recognised by the relevant public in the sector of retail of sporting goods. Moreover, the sales figures and marketing and sponsorship efforts suggest that the trade mark has a consolidated position in the market.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among a significant part of the relevant public in the field of retail of sporting goods, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation in the European Union.

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to the retail and sales promotion services related to sports goods, whereas there is no or little reference to the remaining goods and services. Therefore, it is considered that, in relation to the international trade mark registration No 1 195 533 designating the European Union, a certain degree of reputation is proven for the following services:

Class 35: Retail sale in stores of sports goods; sales promotion through the sponsoring of sporting events.

The Opposition Division finds that the evidence submitted by the opponent is not sufficient to demonstrate that earlier European Union trade mark No 2 672 376 acquired any relevant degree of reputation. Although the evidence shows that this logo has been used as an inseparable part of the opponent’s mark and as a stand-alone sign in the opponent’s social media websites, it is not enough to clearly demonstrate that the earlier mark acquired reputation on its own. As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier mark has a reputation. Since it has not been established that European Union trade mark No 2 672 376 has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on this ground and this earlier right is concerned.

b) The signs

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 earlier mark is a figurative mark, composed of the verbal element ‘INTERSPORT’ depicted in slightly stylised upper case letters, where ‘INTER’ is in red and ‘SPORT’ is in blue. The figurative element to the left of the verbal element, is composed of a solid red circle over a solid blue waved line. The contested sign is a figurative mark, composed of the verbal element ‘SERVICE CENTER’ depicted in standard grey upper case letters and the figurative element composed of a solid orange circle over a solid blue waved line. Neither of the signs has any element that could be considered clearly more dominant than other elements.

The use of different colours clearly divides the verbal element ‘INTERSPORT’ of the earlier mark into two components, ‘INTER’ and ‘SPORT’. Account must also be taken of the fact that 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). Therefore, the verbal element of the earlier mark will be perceived by the relevant public as a combination of the universally understandable term ‘INTER’ (referring to ‘between, among’ or ‘international’) and the word ‘SPORT’ (referring to ‘games such as football and basketball or other competitive leisure activities which need physical effort and skill). It is not ruled out that, in relation to the relevant services, the entire verbal element will be understood as referring to ‘international sport’ or to ‘a correlation between sports’. Therefore, the distinctiveness of the verbal element ‘INTERSPORT’ is very low as it strongly alludes to the nature of the services in question, namely that the opponent offers or promotes a variety of sporting goods internationally.

The expression ‘SERVICE CENTER’ of the contested sign is composed of basic English words, having similar equivalents in many languages, and will be perceived by the relevant public throughout the EU as referring to a place where various services are offered or performed. Consequently, the relevant consumers will not see this expression as an indication of commercial origin of the services in question and it is, therefore, non-distinctive.

The figurative elements in both marks, although quite simple, are fancy enough to serve as indications of commercial origin and possess an average degree of distinctiveness.

Visually, although the signs differ in their verbal elements, namely ‘INTERSPORT’ of the earlier mark and ‘SERVICE CENTER’ of the contested sign and their colours, the figurative elements of both signs show clearly perceptible similarities to the extent that they both consist of a solid circle over a solid blue waved line. The slight differences in colours of these elements, the position of the circle and the shape of the waved line can be perceived only upon examining the signs in question side by side and, taking into account that the relevant consumers usually have to trust in their imperfect recollection of the signs, may not even be remembered by the relevant consumers.

Considering the above and the fact that the distinctiveness of the verbal element of the earlier mark is very low and the verbal element of the contested sign is non-distinctive, the signs are visually similar to an average degree.

The signs are not similar aurally and conceptually, as the verbal elements in both signs will be pronounced differently and convey different meanings. Nevertheless, it has to be borne in mind that these differences merely result from verbal elements that have low distinctive character (in the case of the earlier mark) or are non-distinctive (in the case of the contested sign).

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The opponent claims that due to the reputation of the mark , the fact that the applicant uses a similar sign would lead the public to immediately recognise or associate the contested sign with the opponent’s mark.

The opposition is directed against the following services:

Class 35: Advertising; business management; business administration; office functions; business management in the field of transport and delivery; providing business information, also via internet, the cable network or other forms of data transfer; import and export services; mediation and conclusion of commercial transactions for others; consumers (commercial information and advice for -) [consumer advice shop]; business management consulting services in the field of information technology; commercial or industrial management assistance; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; news clipping services; promoting the goods and services of others; rental of sales stands.

Class 36: Insurance; financial affairs; monetary affairs; real estate services; customs brokerage; insurance services relating to goods in transit; rental of office space; rental of office space; renting of commercial premises; arranging letting of real estate; land leasing services; leasing of shopping mall space; rental of halls.

Class 37: Building construction, preservation and repair relating to preparing the ground for industrial, commercial and services sites; construction; construction project management services; maintenance and repair of transport containers; cleaning of buildings; cleaning of industrial premises; cleaning of commercial premises; office cleaning services; cleaning of storage containers; maintenance and repair of office buildings; interior renovation of commercial premises; warehouse construction and repair; installation, maintenance and repair of office equipment for business premises and offices; service stations (petrol stations); service stations for the repair of vehicles; service stations for the maintenance of vehicles.

Class 39: Transport, including transport relating to marine towing, loading and unloading of ships, operation of ports and docks, salvage of ships in danger; marina services [berthing, mooring, storage]; crating services; travel arrangement; travel reservation and booking services; transport; reservation and booking services for transportation; transportation logistics; transit services; loading and unloading of goods; container handling; cargo handling; goods warehousing; storage of goods in transit; container storage; storage and deposit of documents; container rental; rental of storage facilities; car parking; rental of transport vehicles; information regarding transport; providing advice relating to freight forwarding services; refuse collection services; transport and storage of waste; tourism operator services (transport).

Class 40: Treatment of waste; recycling of waste and trash; treatment of hazardous waste; destruction of waste and trash.

Class 41: Education; providing of training; entertainment and sporting and cultural activities; organisation of cultural, sporting and leisure events and functions; organisation and conducting of conferences, lectures, seminars, workshop days, forums, courses and workshops; advice, consultancy and information relating to the aforesaid services, included in this class.

Class 42: Environmental monitoring of waste treatment areas; environmental consultancy services; environmental assessment services; advisory services relating to energy efficiency; information technology [IT] consultancy; telecommunications engineering consultancy; technology research; design and development of computer hardware and software; installation, maintenance and updating computer software; design services; architectural services; planning in relation to town planning and commercial town planning; conducting technical project studies.

Class 43: Services for providing food and drink; temporary accommodation; day-nurseries [crèches]; rental of meeting rooms; hire of temporary office space; advice, consultancy and information relating to the aforesaid services, included in this class.

Class 44: Medical and health services; health screening; advice, consultancy and information relating to the aforesaid services, included in this class.

Class 45: Surveillance services; security services for the protection of property and individuals; information services relating to health and safety.

As indicated previously, the earlier mark has a reputation for some of the services in Class 35, namely retail sale in stores of sports goods; sales promotion through the sponsoring of sporting events.

Both signs under comparison are inherently distinctive (despite the presence of weak or non-distinctive verbal elements). The earlier mark and the contested sign are similar due to the presence of similar figurative elements in both of them and, as can be seen from the assessment of the evidence of reputation, this figurative element has been used as an integral and omnipresent part of the opponent’s brand for many years. Therefore, it is heavily associated with the opponent’s ‘INTERSPORT’ brand and will be clearly recognised by the relevant consumers as pertaining to the opponent. Moreover, the weak nature of the verbal element ‘INTERSPORT’ of the earlier mark has to be viewed in the context of the reputation that the trade mark has amongst the relevant public who, instead of seeing an allusive term, will see the trade mark as representing one of the forerunning players of the retailing of sports goods.

The examination of the opponent’s reputation claim has revealed that the brand does enjoy a certain degree of reputation among the public at large that buys sports goods or attends/watches sports events, as well as among the professional public in the field of sport.

It is clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 67-69; 18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 44).

The abovementioned contested services in Class 35 are various services related to business support activities, such as advertising and other promotional activities, business management or administration, clerical tasks as well as other functions necessary to back up the daily running of any business, such as organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes, rental of sales stands etc. There is a close connection between these contested services and the opponent’s retail sale in stores of sports goods and sales promotion through the sponsoring of sporting events which refer, whether directly or indirectly, not only to the sale of third parties’ goods but also promotion of these goods, providing advertising space in catalogues, evaluating market trends, launching third parties’ new products, transportation of these goods, arranging back-up offices for sponsoring events and providing other related services which have a direct impact not only on the business of the entity organising the sales, but also on the business of the third parties selling and promoting their goods through this entity.

A close connection also exists between the opponent’s reputed services and the contested services in Class 36 related to insurance, financial/monetary affairs and real estate affairs, as sponsorship activities usually involve financial transactions and may relate to sponsorship in the real estate field, such as financing rental of halls for sports events and leasing space for the official fan shops selling licensed products, etc. Moreover, sellers of sporting equipment often provide sporting equipment rental services, especially in areas of winter sports, which usually include insurance services for the coverage of this sporting equipment.

It is also quite common for the entities selling sports equipment and promoting sports events to offer various travel arrangement services or holiday packages in such places as, for example, winter sport resorts or in the places where sporting events take place. These services usually include temporary accommodation, provision of food, transportation of passengers, organising of sport and training activities, and other related services. Moreover, in addition to the accommodation, resorts often offer medical health related services such as SPAs, wellness and beauty care services or packages including various health and relaxation procedures. The same refers to the contested services in Classes 39, 41, 43 and 44 covering reservation/booking for transportation, tourism operator services, storage facilities, car parking services and rental of vehicles, travel arrangement, various kinds of entertainment, sporting and cultural activities and tuition activities, as well as temporary accommodation, including the provision of créches and rental of meeting rooms, provision of food and drink and health care services respectively. In view of the established reputation of the earlier mark, the relevant public, namely mostly the public at large which is using all these services, would be able to make a link with the opponent’s mark when seeing the contested sign in relation to the abovementioned contested services in Classes 39, 41, 43 and 44.

The contested import and export services in Class 35 are also closely linked to the opponent’s reputed retail services, as are the contested customs brokerage, insurance services relating to goods in transit in Class 36, as the contested services represent a stage in the logistics chain of international trade also concerning sports goods. Likewise, the contested transport-related services in Class 39, including those provided in the field of transport by sea and/or ports, transportation logistics, transit and freight forwarding, handling of cargo, warehousing etc., are also considered to be an integral part of an international retailing business.

Furthermore, in relation to the contested services in Class 37, there is a link between the opponent’s reputed services and the contested maintenance and repair of transport containers; cleaning of storage containers, which are closely related to the running of storage facilities or transportation of goods and, therefore, may be linked to the opponent’s reputed services for the reasons explained above.

The link can also be established between the contested cleaning of buildings; cleaning of industrial premises; cleaning of commercial premises; office cleaning services in Class 37 and the opponent’s reputed services as retail stores are public premises that have to be kept clean, and every store usually includes an office which needs maintenance. As far as the contested installation, maintenance and repair of office equipment for business premises and offices in Class 37 is concerned, as sponsorship of sports events often implies financing and arranging the back office, for which office equipment is necessarily installed and maintained, there is a link between these contested services and the opponent’s reputed services. As sports events imply transportation of athletes and the public to the venue etc., and during such events vehicle service stations are usually arranged for maintenance, repair or refuelling motor vehicles (e.g. in motor-sport events), there is also a link between the opponent’s reputed services and the contested service stations (petrol stations); service stations for the repair of vehicles; service stations for the maintenance of vehicles in Class 37.

It is admittedly true that some of the contested services in Class 39 concern refuse collection and transport and storage of waste, in Class 40 they relate to treatment, recycling and destruction of (hazardous) waste/trash, and in Class 42 the contested services include environmental monitoring of waste treatment areas; environmental consultancy services; environmental assessment services; advisory services relating to energy efficiency, which do not appear to be directly and immediately linked to the opponent’s retail services in stores of sports goods and sales promotion through the sponsoring of sporting events. However, taking into account the great importance of green policy in the EU and in the world, and requirements for organisations to use environmentally friendly ways of working for improving and monitoring of environmental impact, sustainable and eco-friendly practices are implemented more and more in each market sector. In view of this, it is quite usual nowadays for retailers to offer consumers various recycling programs for used goods, even reward-based programs, which encourage consumers to drop off, for example, unwanted clothing and footwear at one of the stores in exchange for getting a reward coupon, voucher or discount toward the next purchase, or alternatively to donate the goods for charitable purposes. When a textile is unusable as a garment, its life span is extended by transforming it into a new product, recycling it mechanically or using it for energy production. Furthermore, hazardous waste, such as used batteries, is commonly collected in retail outlets. In this way, the contested services and the opponent’s services form interlinked parts in the green policy and lifecycle of the goods in circulation and, therefore, there is a certain proximity and link between them.

Although the opponent’s reputed services seem to be related to a different market sector from the contested information technology [IT] consultancy; telecommunications engineering consultancy; technology research; design and development of computer hardware and software; installation, maintenance and updating computer software; conducting technical project studies in Class 42 and surveillance services; security services for the protection of property and individuals; information services relating to health and safety in Class 45, taking into account the possible extent of the use of information technologies for providing the opponent’s services, such as, offering and selling the goods of other manufacturers on-line or by using specially created applications (so-called apps), ensuring safe purchases on-line or in the shops, as well as consumers’ data protection, the line between these services becomes blurred and the relevant consumers will see the connection between them. The same is true for the contested design services; architectural services; planning in relation to town planning and commercial town planning in Class 42, as retailing companies may also offer assistance in shop-fitting projects or store design services, as well as take part in the planning of commercial districts of towns if it is directly related to the expansion of their business or to their sponsorship activities.

Consequently, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested sign, the relevant consumers will be likely to associate it with the earlier trade mark, that is to say, establish a mental ‘link’ between the signs in relation to all the above listed contested services in Classes 35, 36, 39, 40, 41, 42, 43, 44, 45 and maintenance and repair of transport containers; cleaning of buildings; cleaning of industrial premises; cleaning of commercial premises; office cleaning services; cleaning of storage containers; installation, maintenance and repair of office equipment for business premises and offices; service stations (petrol stations); service stations for the repair of vehicles; service stations for the maintenance of vehicles in Class 37.

The rest of the contested services, namely building construction, preservation and repair relating to preparing the ground for industrial, commercial and services sites; construction; construction project management services; maintenance and repair of office buildings; interior renovation of commercial premises; warehouse construction and repair in Class 37 have no commonalities with the services for which the earlier trade mark gained a degree of reputation. The services in question are so different and the market sectors to which they belong are so distant, that the contested mark is unlikely to bring the earlier mark to the mind of the relevant public. To this extent, the opposition is not well founded under Article 8(5) EUTMR and must be rejected at this point, insofar as the abovementioned contested services are concerned.

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent essentially claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark, and would be detrimental to the distinctive character of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

 use of the contested sign will result in establishing a relationship between the contested services and the opponent’s services by the relevant consumers;

 due to the link between the contested services and the services of the opponent’s reputed trade mark, use of the contested sign would take unfair advantage of the repute of the earlier mark.

As can be inferred from the evidence submitted by the opponent, is seen as an international brand offering high quality and a wide variety of products, as well as standing for sport and a healthy lifestyle. The opponent is considered to be one of the largest sporting goods retailers, and the brand is known among both the general public and members of a professional sport. The brand has been widely advertised in various sports events, sponsorship by the opponent, has been seen in sport halls or stadiums where football or basketball matches have taken place, including the Olympic Games and Championships, which, as a rule, are widely broadcast and attract a huge number of spectators across the whole European Union.

The ‘good’ and ‘special’ reputation of the earlier trade mark could positively influence the choice of consumers as regard the services of other providers. Thus, the Opposition Division considers that the special brand image, power of attraction and advertising value of the opponent’s trade mark can be misappropriated. That may stimulate the sales of the applicant’s services to an extent that may be disproportionately high in comparison with the size of its own promotional investment and thus lead to the unacceptable situation, where the applicant is allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up the value of its trade mark.

On the basis of the above, the Opposition Division concludes that, in view of the exposure of the relevant circles of the public to the opponent’s earlier reputed mark in relation to the services for which a reputation has been found, and insofar as the existence of the ‘link’ with a part of the contested services has been established, there exists a probability that the use without due cause of the contested sign may acquire some unearned benefit and lead to free-riding, that is to say, it would take unfair advantage of the distinctive character and the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade marks.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following services:

Class 35: Advertising; business management; business administration; office functions; business management in the field of transport and delivery; providing business information, also via internet, the cable network or other forms of data transfer; import and export services; mediation and conclusion of commercial transactions for others; consumers (commercial information and advice for -) [consumer advice shop]; business management consulting services in the field of information technology; commercial or industrial management assistance; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; news clipping services; promoting the goods and services of others; rental of sales stands.

Class 36: Insurance; financial affairs; monetary affairs; real estate services; customs brokerage; insurance services relating to goods in transit; rental of office space; rental of office space; renting of commercial premises; arranging letting of real estate; land leasing services; leasing of shopping mall space; rental of halls.

Class 37: Maintenance and repair of transport containers; cleaning of buildings; cleaning of industrial premises; cleaning of commercial premises; office cleaning services; cleaning of storage containers; installation, maintenance and repair of office equipment for business premises and offices; service stations (petrol stations) ; service stations for the repair of vehicles; service stations for the maintenance of vehicles.

Class 39: Transport, including transport relating to marine towing, loading and unloading of ships, operation of ports and docks, salvage of ships in danger; marina services [berthing, mooring, storage]; crating services; travel arrangement; travel reservation and booking services; transport; reservation and booking services for transportation; transportation logistics; transit services; loading and unloading of goods; container handling; cargo handling; goods warehousing; storage of goods in transit; container storage; storage and deposit of documents; container rental; rental of storage facilities; car parking; rental of transport vehicles; information regarding transport; providing advice relating to freight forwarding services; refuse collection services; transport and storage of waste; tourism operator services (transport).

Class 40: Treatment of waste; recycling of waste and trash; treatment of hazardous waste; destruction of waste and trash.

Class 41: Education; providing of training; entertainment and sporting and cultural activities; organisation of cultural, sporting and leisure events and functions; organisation and conducting of conferences, lectures, seminars, workshop days, forums, courses and workshops; advice, consultancy and information relating to the aforesaid services, included in this class.

Class 42: Environmental monitoring of waste treatment areas; environmental consultancy services; environmental assessment services; advisory services relating to energy efficiency; information technology [it] consultancy; telecommunications engineering consultancy; technology research; design and development of computer hardware and software; installation, maintenance and updating computer software; design services; architectural services; planning in relation to town planning and commercial town planning; conducting technical project studies.

Class 43: Services for providing food and drink; temporary accommodation; day-nurseries [crèches]; rental of meeting rooms; hire of temporary office space; advice, consultancy and information relating to the aforesaid services, included in this class.

Class 44: Medical and health services; health screening; advice, consultancy and information relating to the aforesaid services, included in this class.

Class 45: Surveillance services; security services for the protection of property and individuals; information services relating to health and safety.

As already concluded in section c) of this decision, the opposition is not successful under Article 8(5) EUTMR insofar as the remaining services are concerned, namely:

Class 37: Building construction, preservation and repair relating to preparing the ground for industrial, commercial and services sites; construction; construction project management services; maintenance and repair of office buildings; interior renovation of commercial premises; warehouse construction and repair.

Therefore, the opposition will continue under 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 International trade mark registration No 1 195 533 designating the European Union, which is not a subject of proof of use and covers a wider scope of goods and services.

f) The goods and services

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

Class 9: Helmets, vests, elbow and knee pads for protective use in sports; helmets for skiing, helmets for hockey; sunglasses and glasses designed for sports, particularly diving goggles and masks, skiing goggles and cycling goggles; swimming goggles; ski masks, diving masks; life jackets; diving suits, gloves and masks; suits, gloves and earplugs for divers, nose clips, pulse meters and other portable electronic indicators of measurements, particularly worn on the wrist.

Class 12: Bicycles; boats; parachutes.

Class 18: Backpacks, multi-purpose sports bags, belt bags, namely hip pouches for skiing, backpacks for Nordic skiing, travel bags.

Class 25: Clothing, footwear, headgear.

Class 28: Games, toys, gymnastic and sporting articles (except clothing); sporting articles included in this class; leather and fabric bags designed for carrying sports articles, sailboards; sail wings, namely hang gliders and paragliders; fishing and hunting equipment included in this class; belts, buoyancy devices, vests and belts for swimming.

Class 35: Advertising, including direct marketing and online marketing; business management; business administration, computer file management, order management and stock management services, business management and organization consultancy, organization and management consulting for sports stores and sports centers; shop-window dressing, demonstration of goods, dissemination of advertisements, dissemination of advertising matter, market study, import-export agencies, rental of advertising space, rental of advertising material, organization of exhibitions for commercial or advertising purposes, sales promotion through the sponsorship of cultural and sporting events, publication of advertising texts, radio advertising, television advertising; retail sale in stores and by means of a global computer network (the Internet); electronic commerce (e-commerce) services, namely provision of information on goods via telecommunication networks for advertising or sales purposes; grouping of wholesale purchases; wholesale services, the bringing together for the benefit of others of various goods and services (excluding their transport) enabling consumers to conveniently view, find out about and purchase such goods or services, services involving the selection and presentation of goods and services, through the use of printed documents or electronic communication media, to enable mail orders; services provided by a license granter and/or franchiser, namely transfer (provision) of commercial know-how.

Class 36: Insurance underwriting, debit and credit card services, issue of tokens of value, issue of travelers’ checks; financing of cultural and sporting events by means of sponsorship agreements; insurance (guarantee) services for sporting goods with a view to exchange thereof in a country other than that in which the product was purchased.

Class 37: Maintenance, repair and adjustment services for sporting goods; skate blade sharpening.

Class 38: Computer-assisted message and/or image transmission.

Class 39: Organization of trips, organization of sports holidays, boat rental, vehicle rental, travel reservation, delivery of goods ordered by mail order.

Class 40: Treatment of ski soles; alteration and waterproofing of garments and clothing; assembling and shaping of goods requested by third parties, namely assembling and shaping of ski boots and golf clubs, particularly with a view to adapting them to the needs of others.

Class 41: Sporting and cultural activities; sports camp services; timing of sports events; health clubs (physical fitness), physical education; operation of sports facilities, operation of golf facilities, operation of fitness clubs; teaching of sports and gymnastics; rental of sports equipment (except vehicles), particularly rental of ski and snowboard boots and equipment; rental of skin diving equipment; DVD rental, organization of sports competitions and events; production of films, particularly on video and multimedia carriers, publication of books; holiday camp services; rental of sports equipment.

Class 42: Quality control for goods and services, computer programming and rental of computer programs and software, consulting services for the design of new products, styling (industrial design), testing and quality evaluation services for sports equipment and goods, establishing and checking the application of technical standards; architectural services, particularly with regard to the interior design of exhibition and sales premises; services provided by a licenser and/or franchiser, namely transfer (provision) of technical know-how.

Class 43: Accommodation agencies (hotels, boarding houses); cafés, cafeterias; operation of campground facilities; holiday camp services (lodging); hotel services, self-service restaurants; rental of temporary accommodation; hotel reservations.

Class 45: Intellectual property licensing, legal services, clothing rental.

Following the examination of the opposition in relation to Article 8(5) EUTMR, the remaining contested services are the following:

Class 37: Building construction, preservation and repair relating to preparing the ground for industrial, commercial and services sites; construction; construction project management services; maintenance and repair of office buildings; interior renovation of commercial premises; warehouse construction and repair.

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.

The contested building construction, preservation and repair relating to preparing the ground for industrial, commercial and services sites; construction; construction project management services; maintenance and repair of office buildings; interior renovation of commercial premises; warehouse construction and repair are similar to the opponent’s architectural services, particularly with regard to the interior design of exhibition and sales premises in Class 42 as the services of an architect are indispensable for the services related to building construction. These services are often offered together through the same distribution channels, by the same providers and target the same relevant public. Moreover, these services are complementary.

g) 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 similar are mainly directed at business customers with specific professional knowledge or expertise in the field of construction. The degree of attention may vary from average to higher than average, depending on the price, specialised nature and frequency of purchase of the services in question.

h) The signs

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 Opposition Division refers to the descriptions of the marks and reasoning regarding the relevant publics’ perception of the verbal elements ‘INTERSPORT’ and ‘SERVICE CENTER’ already addressed in section b) of the present decision, which equally applies here.

In relation to the relevant services, the part ‘INTER’ of the verbal element of the earlier mark is non-distinctive for at least part of the public that may perceive it as mere indication that the opponent is an international company and provides services internationally. As far as the element ‘SPORT’ is concerned, it may be perceived by the relevant public as strongly alluding that the opponent specialises in architectural services for sport arenas or other sport complexes. Consequently, the distinctiveness of the verbal element ‘INTERSPORT’ is seen as very low.

As explained in section b), the verbal element ‘SERVICE CENTER’ of the contested sign is non-distinctive, since it merely refers to a place where the services are offered, performed or may be ordered.

The figurative elements in both marks, although quite simple, contrary to the applicant’s assertions, have an average capacity to serve as indications of commercial origin, as also explained in section b) of this decision.

The applicant claims that 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. However, the verbal element of a sign does not automatically have a stronger impact (31/01/2013, T‑54/12, Sport, EU:T:2013:50, § 40) and in assessing the impact of the verbal element of a composite trade mark, account should be taken of the distinctiveness of this element, as well as of other factors of each particular case. Moreover, a coincidence in a figurative element that is visually perceived in an identical or similar way may lead to a visual similarity between the signs.

As already explained in section b) of the present decision, visually, although the signs differ in their verbal elements, they show clear visual similarities in their figurative elements. Contrary to the applicant’s arguments, the signs must be compared as a whole, but not only their verbal elements. Moreover, account must also be taken of the fact that the verbal element, ‘INTERSPORT’, of the earlier mark is weak and the verbal element, ‘SERVICE CENTER’, of the contested sign is non-distinctive. It follows that figurative elements are the most distinctive elements in both marks. Taking all into account, as well as the fact that that slight differences between these figurative elements may not even be remembered by the relevant consumers who usually do not perform side-by-side examination of the marks, the signs are visually similar to an average degree.

Although, as explained in section b) of the present decision, the signs are not similar aurally and conceptually, it has to be borne in mind that these differences merely results from the verbal elements that have a very low degree of distinctiveness (in the case of the earlier mark) or are non-distinctive (in the case of the contested sign).

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

i) 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 trade mark has a reputation in connection with part of the goods and services, namely all the goods and services in Classes 25, 28, 35, 36, 40 and 41. However, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation in relation to the services in Class 42, which are relevant for the current 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, when taken as a whole, has normal degree of distinctiveness, despite the presence of a weak verbal element, as stated above in section h) of this decision.

j) Global assessment, other arguments and conclusion

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As concluded above, the contested services are similar to the opponent’s services and they target business customers, whose degree of attention may vary from average to higher than average. The distinctiveness of the earlier mark is normal.

The earlier mark and the contested sign are visually similar to an average degree on account of their figurative elements, which are the most distinctive elements in the marks. Although the signs differ in the verbal element ‘INTERSPORT’ of the earlier mark and ‘SERVICE CENTER’ of the contested sign, these elements, as explained above in section h) of this decision, in the absence of any secondary meaning or enhanced distinctiveness acquired through use for the relevant services, will rather be seen by the relevant consumers as references related to the services in question than as indications of their commercial origin. Taking into account that the distinctive figurative elements in both marks are composed of the same kind of shapes arranged in a very similar way and having very similar colours, as well as the fact that average consumers rarely have the chance to make a direct comparison between different marks and that even professional consumers who pay a higher 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), the slight differences between these elements are not likely to be remembered by the relevant consumers.

Although, as correctly pointed out by the applicant, the signs are not similar aurally and conceptually, considering all the above, and taking into account the aforementioned principle of interdependence, it cannot be safely excluded that the relevant consumers will make a connection between the conflicting signs in relation to the similar services and assume that these services are from the same undertaking or economically linked undertakings.

Therefore, the Opposition Division finds that there is a likelihood of confusion on the part of the public and the opposition is well founded on the basis of the opponent’s International trade mark registration No 1 195 533 designating the European Union.

It follows from the above that the contested trade mark must be rejected for all the contested services.

As the earlier International trade mark registration No 1 195 533 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). It follows that it is unnecessary to examine the proof of use submitted by the opponent in relation to earlier European Union trade mark registration No 2 672 376 .

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

Solveiga BIEZA

Rasa BARAKAUSKIENE

Alicia BLAYA ALGARRA

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.