OPPOSITION No B 3 056 799

Schwäbischer Verlag GmbH & Co. KG Drexler, Gessler, Karlstraße 16, 88212 Ravensburg, Germany (opponent), represented by Thümmel, Schütze & Partner, Urbanstr. 7, 70182 Stuttgart, Germany (professional representative)

a g a i n s t

Surfinder, Contrada Barbadangelo 22, 76123 Andria, Italy (applicant).

On 22/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 799 is upheld for all the contested services.

2. European Union trade mark application No 17 865 213 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 17 865 213 (figurative mark). The opposition is based on European Union trade mark registration No 9 808 858 ‘Südfinder’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The services

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

Class 41: Entertainment in and by means of newspapers, periodicals, television, radio, and online; Sporting and cultural activities, in particular the arranging or presentation of cultural or sporting events; Publication of printed matter and associated electronic media; Providing of training; in particular arranging of seminars for further training purposes; Event information in newspapers, periodicals, on television, radio and online; Arranging of competitions for entertainment purposes; Ticket advance sale.

Class 42: Computer programming services; Providing search engines for the Internet.

The contested services are the following:

Class 41: Organisation of sports tuition; Sporting activities; Sports coaching; Tuition in sports; Tuition in sports; Organisation of sporting events; Training of sports players; Organising of sporting activities and of sporting competitions; Education, entertainment and sports; Sporting and recreational activities; Sports instruction services; Rental of sports grounds; Sporting education services; Rental of sports equipment, except vehicles; Rental of sports equipment, except vehicles.

Class 42: Programming of software for e-commerce platforms; Consultancy relating to the creation and design of websites for e-commerce.

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

The term ‘in particular’, used in the opponent’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).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 41

Sporting activities (listed twice in the contested services) are identically contained in both lists of services.

The contested organisation of sporting events; organising of sporting activities and of sporting competitions; sports is included in the broad category of the opponent’s sporting activities. Therefore, they are identical.

The contested education overlaps with the opponent’s providing of training. Therefore, they are identical.

The contested organisation of sports tuition; sports coaching; tuition in sports (listed twice) training of sports players; sports instruction services; sporting education services are included in the broad category of, or overlap with, the opponent’s providing of training. Therefore, they are identical.

The contested rental of sports grounds; rental of sports equipment, except vehicles (listed twice) are rental services in relation to sports and therefore also identical to the broad category of the opponent’s sporting activities.

The contested recreational activities; entertainment are similar to the opponent’s cultural activities. They coincide in purpose and can have the same distribution channels and relevant public.

Contested services in Class 42

The contested programming of software for e-commerce platforms is included in the broad category of the opponent’s computer programming services. Therefore, these services are identical.

The contested consultancy relating to the creation and design of websites for e-commerce are at least similar to the opponent’s computer programming services. They have the same purpose, providers, distribution channels and relevant public. Furthermore, they are complementary.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is average to high.

3. The signs

Südfinder
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the marks are not meaningful in certain territories. The Opposition Division finds it appropriate to focus the comparison of the signs on the Swedish- and Danish-speaking part of the public, where the verbal elements have no meaning.

The earlier mark is a word mark, ‘SÜDFINDER’. It has no meaning for the relevant public under analysis and is, therefore, distinctive.

The contested sign is a figurative mark, consisting of the verbal element ‘SURFINDER’ in stylised blue/green title case letters, underneath a figurative element in blue and green with a black and white circle device in the centre. The verbal element ‘SURFINDER’ has no meaning for the relevant public and is, therefore, distinctive. The figurative element may, by a part of the public, be perceived as a surf board and/or an eye. Bearing in mind that the relevant services in Class 41 are sports activities, the element of a surf board is weak for this part of the public for all the services in this Class. In relation to the services in Class 42, it has no meaning and is distinctive. For the part of the public that do not associate the figurative element with an eye or not anything in particular, this element is distinctive for all the services.

The contested sign has no element that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letters ‘S-U-*-F-I-N-D-E-R’. The letter ‘Ü’ has no equivalent in Swedish and Danish and is therefore likely to be perceived as a ‘U’, however a part of the public may perceive it as the German letter ‘ü’. The marks differ in the third letter of the marks, ‘D’ versus ‘R’, and in the dots above the letter ‘U’ of the earlier mark if it is not perceived as the German letter ‘ü’. Moreover, the marks differ in the figurative elements of the contested sign, including its stylisation and colours.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, and for a major part of the public, the pronunciation of the signs coincides in the sound of the letters S-U-*-F-I-N-D-E-R’, present identically in both signs. The pronunciation differs in the sound of the third letters ‘D’ versus ‘R’. They also differ in the sound of the second letter ‘Ü’ (pronounced as ‘y’) versus the sound of the letter ‘U’, for the part of the public that perceives and pronounces the ‘Ü’ as the German letter. Even if perceived and pronounced as the German letter ‘ü’, the sound of the second letter in the marks is aurally quite similar.

Therefore, the signs are aurally highly similar for the entire relevant public.

Conceptually, neither of the signs has a meaning for part of the analysed public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the part of the public that perceives a surf board and/or an eye in the contested sign, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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.

In the present case, the services are identical or similar. The degree of attention is average to high.

The marks are visually similar to an average degree and aurally similar to a high degree. Conceptually, the signs are not similar or the conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is normal.

Taking into account all the relevant circumstances of the case, the differences between the signs are not sufficient to counterbalance the similarity between them. The relevant public could be mistaken regarding the origin of the services that are identical.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the Swedish- and Danish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 808 858. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Anna BAKALARZ

Lena FRANKENBERG GLANTZ

Anna ZIÓŁKOWSKA

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.