OPPOSITION No B 3 046 235

Asociacion-Federacion Internacional de Fisicoculturismo y Fitness, C/ Dublin 39, Poligono Industrias Europolis., 28232 Las Rozas/Madrid, Spain (opponent), represented by Aseprin, S.L., Calle Pradillo, 18. 1º, 28002 Madrid, Spain (professional representative)

a g a i n s t

IFBB Professional League, Suite 100, 5415 Rue Pare, H4P1P7 Mont-Royal, Quebec Canada (applicant), represented by Rittershaus Rechtsanwälte Partnerschaftsgesellschaft MBB Harrlachweg 4, 68163 Mannheim, Germany (professional representative).

On 30/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 235 is upheld for all the contested services.

2. European Union trade mark application No 17 424 607 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 17 424 607 for the word mark ‘IFBB PROFESSIONAL LEAGUE’. The opposition is based on, inter alia, European Union trade mark registration No 17 231 531 for the word mark ‘IFBB PRO LEAGUE’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 17 231 531 for the word mark ‘IFBB PRO LEAGUE’.

a) The services

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

Class 41: Organisation of sporting competitions, arranging and conducting of colloquiums, conferences, congresses, trade fairs and exhibitions relating to bodybuilding and fitness; Publication of books relating to sports, providing of sporting installations, teaching of sports, rental of sporting apparatus and equipment, publication of magazines and books, electronic publication of magazines and books, publishing of books.

The contested services are the following:

Class 41: Entertainment services, including organizing and conducting contests and shows in the fields of body building and fitness, organizing and conducting sporting and cultural activities, production and distribution of television shows and television series relating to bodybuilding and fitness; entertainment in the nature of an on-going television series and television specials in the fields of bodybuilding and fitness; educational services, namely, physical fitness instruction; conducting workshops, seminars, classes and conferences in the field of body building and fitness; entertainment services in the field of body building and fitness to be distributed via radio, television, cable, satellite and the internet; physical fitness consultation; providing fitness and exercise facilities; fitness services; online services in the field of body building and fitness.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 providing fitness and exercise facilities are included in, or at least overlap with, the opponent’s providing of sporting installations. Therefore, they are identical.

Conducting conferences in the field of body building and fitness is identically included in both list of services (including synonyms).

The contested educational services, namely, physical fitness instruction; conducting workshops, seminars, classes in the field of body building and fitness are included in, or overlap with, the opponent’s teaching of sports. Therefore, they are identical.

The contested online services in the field of body building and fitness overlap with the opponent’s teaching of sports insofar as they both can both provide on line fitness education services. Therefore, they are identical.

The contested fitness services overlap with the opponent’s teaching of sports insofar as they both can both provide fitness education services. Therefore, they are identical.

The contested physical fitness consultation is similar to the opponent’s teaching of sports. These services have the same purpose and target the same public. Furthermore, they can be offered by the same undertaking and distributed through the same channels.

The contested entertainment services, including organizing and conducting contests and shows in the fields of body building and fitness, organizing and conducting sporting and cultural activities, production and distribution of television shows and television series relating to bodybuilding and fitness; entertainment in the nature of an on-going television series and television specials in the fields of bodybuilding and fitness; entertainment services in the field of body building and fitness to be distributed via radio, television, cable, satellite and the internet are similar to the opponent’s organization of sporting competitions since they can have the same purpose, they target the same public and they are offered through the same distribution channels.

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 or similar are directed both at the public at large and at professional consumers. The degree of attention may vary from average to higher than average, depending on the price, sophistication or terms and conditions of the services purchased.

c) The signs

IFBB PRO LEAGUE	IFBB PROFESSIONAL LEAGUE
Earlier trade mark	Contested sign

The relevant territory is 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.

Both marks are word marks composed of three verbal elements.

The common and first element ‘IFBB’ will be perceived as a meaningless sequence of letters by the relevant public. As such, it has an average degree of inherent distinctiveness.

The second elements ‘PRO’ (in the earlier mark) and ‘PROFESSIONAL’ in the contested sign, will be attributed the same meaning by the English-speaking part of the public, given that ‘pro’ is a common abbreviation for ‘professional’ (information extracted from Collins Dictionary on 16/01/2020, available at https://www.collinsdictionary.com/dictionary/english/pro_1).

Also the common and last element ‘LEAGUE’ is an English word meaning ‘a group of teams that play the same sport or activity against each other’ (information extracted from Collins Dictionary on 16/01/2020, available at https://www.collinsdictionary.com/dictionary/english/league). Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public who will find a conceptual link between the signs.

In combination with the common element ‘LEAGUE’, the elements ‘PRO’ and ‘PROFESSIONAL’ will be perceived by the relevant public as a reference to a professional category of athletes involved in the sport activities, events or shows that are (or can be) the subject of the services in question. Therefore, ‘PRO LEAGUE’ and ‘PROFESSIONAL LEAGUE’ are weak in the signs.

Consequently, the most distinctive part of both signs is the common element ‘IFBB’.

Visually and aurally, the signs coincide in their first and most distinctive element ‘IFBB’ (and its sound) and in their last element ‘LEAGUE’ which is weak. They differ in their second elements ‘PRO’ (in the earlier mark) and ‘PROFESSIONAL’ (in the contested sign) which are however weak, although it might be highlighted that even in this difference they coincide in three identical letters in the same order. Given the highlighted coincidences, the marks present a similar structure as well as coinciding in their beginning and endings.

Therefore, taking into account the degree of distinctiveness of their elements, the signs are visually and aurally similar to at least an average degree.

Conceptually, the signs are similar to the extent that they convey the message of professional category of athletes involved in a league of sport or some related activities. However, as explained above, this concept is weak in both marks and of a limited impact. Therefore, the signs are conceptually similar to a low degree.

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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

In the present case, the services have been found to be identical or similar. The degree of attention of the public varies from average to higher than average. The earlier mark has a normal degree of inherent distinctiveness.

The marks have been found to be visually and aurally similar to at least an average degree and conceptually similar to a low degree. Their similarities lie in the coincidence of their respective first and third elements which make the marks identical in their end and beginning. Furthermore, the differing elements ‘PRO’ and ‘PROFESSIONAL’, in addition to being weak, convey the same concept and do not allow consumers to safely distinguish between the earlier mark and the contested sign.

In light of the foregoing, the degree of similarity between the marks at issue is sufficient to consider that a substantial part of the relevant public could reasonably believe that the identical or similar services offered under the word mark ‘IFBB PROFESSIONAL LEAGUE’ come from the same undertaking or from economically-linked undertakings as those bearing the earlier word mark ‘IFBB PRO LEAGUE’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion for the English-speaking part of the public.

The applicant argues that the use of the contested sign is accepted by both parties in virtue of a coexistence agreement and that such use has been tolerated by the opponent in the relevant market where the conflicting marks coexisted for several years.

The possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgment of 03/09/2009, C-498/07P07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (judgment of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this respect, the applicant submitted a copy of an affidavit signed by the president of the opponent’s company in 2018 and which was filed within an opposition proceeding before the Canadian Trade Mark Office which included a statement on the permitted use of the trade mark ‘IFBB’ in third parties’ websites domain names. This generic statement, besides showing a certain tolerance of the opponent in the use of the term ‘IFBB’ solely in relation to third parties’ websites, cannot be interpreted as a co-existence agreement on trade marks between the applicant and the opponent.

Furthermore, the applicant also submitted extracts of its corporate website including information and promotional flyers concerning fitness competitions held in the relevant territory displaying the sign sometimes in combination with which is another of the earlier marks on which the present opposition is based.

However, the figurative mark reproduced in the evidence submitted by the applicant is not identical to the EUTM application at issue in the present proceedings, nor it constitutes a slight figurative version of it. The word sign ‘IFBB PROFESSIONAL LEAGUE’, which corresponds to the contested sign, is used only in the score sheets published on the applicant’s website merely in the signature field to indicate the applicant’s company (i.e. it is not used as a trade mark). Furthermore, none of the opponent’s earlier marks are displayed in these score sheets.

Moreover, the present assessment has been conducted on the basis of another earlier mark, namely European Union trade mark registration No 17 231 531, for the different word mark ‘IFBB PRO LEAGUE’. Therefore it cannot be concluded that the parties agreed on the registration and use of the mark that is the subject of the present case, nor that a likelihood of confusion is excluded in the present case (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86; 18/09/2012, T-460/11, Bürger, EU:T:2012:432, § 60-61).

The applicant also argues that the opponent withdrew the opposition filed against an applicant’s previous European Union trade mark ‘IFBB PROFESSIONAL LEAGUE’ and that the opponent never opposed the use of the signs , ‘IFBB PRO LEAGUE’ and ‘IFBB PROFESSIONAL LEAGUE’. In order to substantiate its argument, the applicant filed a copy of the opponent’s withdrawal request within the Opposition proceeding No 21 010 890 as well as several promotional flyers and screenshots of Youtube videos showing the president of the opponent’s association promoting or participating in competitions organised by the applicant under the sign . However, this cannot be considered as ‘contradictory behaviour’ nor is it to be interpreted to the opponent’s disadvantage, especially since in opposition proceedings, unlike invalidity proceedings, the defence of ‘acquiescence’ is not available. Therefore, these facts do not preclude the opponent from filing an opposition against the contested EUTM application.

Furthermore, regarding the facts alleged by the applicant concerning the corporate history of its company and its creation as a separate and independent entity responsible of the IFBB Professional Division, it has to be considered that the right to an EUTM begins on the date when the EUTM is filed and not before, and it is only from this date that the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 231 531. 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 that the contested mark must be rejected for all the contested services.

As the earlier trade mark registration No 17 231 531 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, 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

Nicole CLARKE

Rosario GURRIERI

Erkki MÜNTER

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.