OPPOSITION No B 3 071 346

Yangames Promotion, a.s., Nad vodovodem 3258/2, 10000 Strašnice, Praha 10, Czech Republic (opponent), represented by Harber IP s.r.o., Dukelských hrdinů 567/52, 170 00 Prague 7- Holešovice, Czech Republic ( professional representative)

a g a i n s t

X Fight Nights, s.r.o., Loretánské náměstí 109/3, 11800 Prague, Czech Republic (applicant), represented by Štros & Kusák, Národní 32, 110 00 Prague 1, Czech Republic (professional representative).

On 21/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 346 is partially upheld, namely for the following contested goods and services:

Class 27: Wrestling mats.

Class 28: Martial arts training equipment; boxing rings; body-building apparatus; spring-supported punch balls; floor-mounted punch balls; punching bags; cages for mixed martial arts; exercise benches; sports equipment; exercise weights; kettle bells; machines for physical exercises.

Class 41: Organisation of sporting events; Providing information about boxing match results; Advisory services relating to the organisation of sporting events; Instruction in martial arts; Providing facilities for sporting events, sports and athletic competitions and awards programmes; Organisation of wrestling contests; Tournaments (Staging of sports -); Providing online newsletters in the fields of sports entertainment; Ticket procurement services for sporting events; Providing facilities for sports events; Organisation of tournaments; Entertainment in the nature of wrestling contests; Educational services relating to sports; Provision of information relating to sports; Providing information about martial arts match results; Providing facilities for sports tournaments; Production of sporting events; Entertainment services in the nature of a wrestling club; Ticket information services for sporting events; Education, entertainment and sports; Organisation of boxing matches; Conducting of sports events; Arranging and conducting of conferences, congresses and symposiums; Organising of sporting activities and of sporting competitions; Timing of sports events; Operation of sports facilities; Officiating at sports contests; Organisation of sports tournaments; Organisation of sports competitions; Provision of information relating to sporting events.

2. European Union trade mark application No 17 932 621 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 932 621 for the figurative mark , namely against all the goods and services in Classes 25, 27, 28 and 41. The opposition is based on Czech trade mark registration No 382 019 for the word mark ‘XFN - X FIGHT NIGHTS’. The opponent invoked Article 8(1)(b) EUTMR.

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

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

a) The goods and services

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

Class 41: Organisation of sporting and cultural events; martial arts matches.

The contested goods and services are the following:

Class 25: Millinery; Sports shoes; Martial arts uniforms; Waist belts; Gloves [clothing]; Boots for sports; Boxing shoes; Clothing for wear in wrestling games; Shoes; Sweatbands; Clothing for martial arts; Sports headgear [other than helmets]; Clothing; Combative sports uniforms; Pants.

Class 27: Wrestling mats.

Class 28: Martial arts training equipment; Boxing rings; Body-building apparatus; Spring-supported punch balls; Sparring gloves; Floor-mounted punch balls; Punching bags; Gloves made specifically for use in playing sports; Cages for mixed martial arts; Exercise benches; Sports equipment; Shin guards [sports articles]; Exercise weights; Men's athletic supporters [sports articles]; Fist protectors [sporting articles]; Protective vests for martial arts; Leg guards adapted for playing sport; Protective padding for sports; Kettle bells; Boxing gloves; Machines for physical exercises.

Class 41: Organisation of sporting events; Providing information about boxing match results; Advisory services relating to the organisation of sporting events; Instruction in martial arts; Providing facilities for sporting events, sports and athletic competitions and awards programmes; Organisation of wrestling contests; Tournaments (Staging of sports -); Providing online newsletters in the fields of sports entertainment; Ticket procurement services for sporting events; Providing facilities for sports events; Organisation of tournaments; Entertainment in the nature of wrestling contests; Educational services relating to sports; Provision of information relating to sports; Providing information about martial arts match results; Providing facilities for sports tournaments; Production of sporting events; Entertainment services in the nature of a wrestling club; Ticket information services for sporting events; Education, entertainment and sports; Organisation of boxing matches; Conducting of sports events; Arranging and conducting of conferences, congresses and symposiums; Organising of sporting activities and of sporting competitions; Timing of sports events; Operation of sports facilities; Officiating at sports contests; Organisation of sports tournaments; Organisation of sports competitions; Provision of information relating to sporting events.

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.

Contested goods in class 25

The opponent argues that the contested millinery; sports shoes; martial arts uniforms; waist belts; gloves [clothing]; boots for sports; boxing shoes; clothing for wear in wrestling games; shoes; sweatbands; clothing for martial arts; sports headgear [other than helmets]; clothing; combative sports uniforms; pants are similar to the opponent’s services of organisation of sporting and cultural events (including martial arts matches) in Class 41 because fighters wear special clothing and it has become common business practice to connect many sports events with promotion, distribution, offering and sale of goods such as headgear and clothing and that those goods are often labelled with the name, mark or sign of the event, or the event’s promoter. Furthermore, according to the opponent, the producers of such goods often act as the sponsors of the event having exclusive rights to promote their goods during the events and also claims that these goods and services are complementary. In this respect, from the outset it must be noted that by their nature (tangible versus intangible), goods are generally dissimilar to services. However, some goods and services may be complementary to each other or have the same purpose and thus be in competition. Therefore, under certain circumstances similarity between goods and services can be found. Nevertheless, in the present case, even if some of the contested goods consist of or include clothing and footwear articles intended to be used when practicing different sports, including martial arts, and may thus be worn by fighters as argued by the opponent, those goods would be purchased by the participants themselves and not be provided by the event organiser. Therefore, those goods are still not essential or important for the provision of the opponent’s services themselves, namely the organisation of sporting events, including martial arts matches, nor is the acquisition of the opponent’s services essential for the use of the opponent’s goods even if they might be a requirement when participating in an event or a competition. Goods and services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). However, for the reasons given, this cannot be considered to be the case insofar as the goods and services under comparison are concerned, even if there may be a certain connection between them. Moreover, the contested goods cannot be interchanged for the opponent’s services or vice versa so they are not in competition either. As regards the opponent’s argument that sports clothing, footwear and headgear are commonly offered for sale during sports events and that they are usually labelled with the name or brand of the event provider, this claim is fully unsubstantiated since the opponent did not submit any evidence to this effect. It cannot be considered a well-known fact that such clothing and footwear articles are usually labelled with the name or trade mark of the organiser of a sports event. Moreover, the opponent did not claim that the goods and services under comparison usually originate from the same undertakings and this is also unlikely to generally be the case. Therefore, even if some sports clothing and footwear articles could conceivably share the same distribution channels on occasions and target the same relevant public, this is in itself insufficient for a finding of a similarity between them since the consumers would not expect these goods and services to share the same commercial origin. Therefore, all these contested goods must be considered dissimilar to the opponent’s services in Class 41.

Contested goods in class 27

Contrary to the findings reached above, the contested wrestling mats can be indispensable for the provision of the opponent’s services since wrestling or martial arts matches cannot be organised without such goods. Therefore, there is a close connection between these goods and services in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. As a result, they are complementary and may also contribute to the same purpose. Furthermore, they can target the same relevant public, e.g. companies that wish to hold a wresting or martial arts match or other sporting event. Therefore, the contested wrestling mats must be considered to be similar to a low degree to the opponent's organization of sporting and cultural events in Class 41.

Contested goods in class 28

The contested martial arts training equipment; boxing rings; body-building apparatus; spring-supported punch balls; floor-mounted punch balls; punching bags; cages for mixed martial arts; exercise benches; sports equipment; exercise weights; kettle bells; machines for physical exercises all consist of or include sports equipment that may be indispensable for the provision of the opponent’s services of organization of sporting and cultural events since events such as martial arts and boxing matches, competitions or shows as well as weight lifting competitions might not be organized without such goods. Also these contested goods are complementary to the opponent’s services and may have the same purpose. Furthermore, they can target the same relevant public as explained in the comparison made above. As a result, they are similar to a low degree.

However, the contested sparring gloves; gloves made specifically for use in playing sports; shin guards [sports articles]; men's athletic supporters [sports articles]; fist protectors [sporting articles]; protective vests for martial arts; leg guards adapted for playing sport; protective padding for sports; boxing gloves are sports articles worn and purchased by the sports practitioners themselves. Therefore, for the same reasons as those outlined above in the comparison of the contested clothing and footwear articles in Class 25, these contested goods cannot be considered to be complementary to the opponent’s services and they are not in competition with each other. Moreover, in the absence of any evidence to the contrary, it cannot be considered that these goods and services usually originate from the same undertakings. The opponent claims that associating goods such as boxing gloves with particular events such as a Mixed Martial Arts league may increase the consumer’s willingness to purchase those goods. However, this is not a factor for assessing similarity between the goods and services concerned within the meaning of Article 8(1)(b) EUTMR but would rather be an argument to be raised based on the reputation of an earlier mark under Article 8(5). However, the opponent did not invoke those grounds as a basis of the opposition and these arguments of the opponent must thus be rejected as irrelevant. Consequently, for the same reasons as those set out above in the comparison of the contested goods in Class 25, these contested goods must also be considered to be dissimilar to the opponent’s services in Class 41.

Contested services in class 41

Organisation of sporting events is identically contained in both lists of services.

The contested organising of sporting activities and of sporting competitions; tournaments (Staging of sports -); organization of sports tournaments; organization of sports competitions; organization of tournaments; organization of boxing matches; organization of wrestling contests; production of sporting events; conducting of sports events; officiating at sports contests; advisory services relating to the organization of sporting events; providing information about boxing match results; provision of information relating to sports; providing information about martial arts match results; provision of information relating to sporting events are included in, or overlap with, the opponent's broad category of organization of sporting and cultural events. Therefore, they are identical.

The contested services of sports include, as a broader category, the opponent's organization of sporting events. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested providing facilities for sporting events, sports and athletic competitions and awards programmes; operation of sports facilities; providing facilities for sports tournaments; providing facilities for sports events are similar to a high degree to the opponent's organization of sporting and cultural events. They may coincide in provider, target the same public and are offered through the same channels of distribution. Furthermore they are complementary.

The contested ticket information services for sporting events; ticket procurement services for sporting events are similar to the opponent’s organization of sporting events since they target the same relevant public, share the same distribution channels and are complementary.

The contested education, entertainment; educational services relating to sports; instruction in martial arts; providing online newsletters in the fields of sports entertainment; timing of sports events; entertainment in the nature of wrestling contests; entertainment services in the nature of a wrestling club; arranging and conducting of conferences, congresses and symposiums are at least similar to the opponent's organization of sporting and cultural events because they can at least target the same relevant public, be provided through the same distribution channels and have the same purpose or be provided by the same undertakings.

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 goods and services found to be identical or similar to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

c) The signs

XFN - X FIGHT NIGHTS
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 the word mark ‘XFN - X FIGHT NIGHTS’. The first letters have no meaning as such but will be related to the initial letters of the following elements. The English words will be understood by the relevant public as they are basic English words. ‘FIGHT’ will be understood by the relevant public as to take part in a violent struggle involving the exchange of physical blows or the use of weapons ( information extracted from Lexico Oxford Dictionary on line on 15/12/2020 at https://www.lexico.com/definition/fight) and the English word ‘NIGHTS’ will be understood as ‘the period from sunset to sunrise in each twenty-four hours’ (information extracted from Lexico Oxford Dictionary on line on 15/12/2020 at https://www.lexico.com/definition/night). The element ‘FIGHTS’ of the earlier mark will be associated with ‘sports combats’. The word ‘NIGHTS’ used together with ‘FIGHTS’ will likely be associated to the relevant public to fight contests which take place at night. Bearing in mind that the relevant services concern the organisation of sports events, this expression is weak.

The contested sign is figurative and is composed of the letters ‘XFN’ depicted in white within a square red background, which is mere decoration. These letters are meaningless and have an average degree of distinctiveness. As it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature, the verbal element is more distinctive than the figurative element.

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 and aurally, the signs coincide in the letters ‘XFN’, which is the first element of the earlier mark and the most distinctive element of the contested sign. However, they differ in the additional letter ‘X’ and the words ‘FIGHT NIGHTS’ of the earlier mark, the latter which is a weak expression in relation to the relevant services as explained above.

In general, consumers tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In this case the earlier mark’s beginning ‘XFN’ is the contested sign’s sole and most distinctive verbal element.

Considering the secondary position of the earlier mark’s additional words, bearing in mind that they will be perceived by consumers as referring to the initial letters 'XFN' and taking into account that consumers tend to shorten marks containing several words to the element that is easiest to remember, the earlier mark is likely to be referred to simply as 'XFN. Therefore, at least for a significant part of the public, the signs are aurally identical.

Therefore, the signs are visually similar to an average degree and aurally identical, at least for a significant part of the public.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory will perceive the meaning of ‘FIGHTS NIGHTS’ in the earlier mark as explained above, 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.

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

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous factors and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services concerned are partly identical or similar to varying degrees and party dissimilar. The relevant public’s level of attention may vary from average to high. The earlier mark’s distinctiveness is normal.

The signs are visually similar to an average degree and aurally identical, at least for a significant part of the public. In this case, the identical beginning of the opposing signs has an important visual and aural impact. It has to be taken into account that the earlier mark’s differing letter ‘X’ and weak expression are in a secondary position and that consumers tend to shorten marks containing several words; it is, therefore, very likely that the earlier mark will be referred to as ‘XFN’. The visual differences, consist mainly in figurative elements of a decorative nature, and additional words of the earlier mark which are weak (except the ‘X’) and which will thus neither constitute a significant conceptual difference between the signs.

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 covered are from the same or economically linked undertakings. Considering this and taking into account the principle of interdependence as outlined above, there is a likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR for the goods and services that are identical or similar to varying degrees. Nevertheless, it is conceivable that the consumers that recognise the term ‘XFN’ in both marks, would be lead to believe that the identical or similar goods and services offered under those signs originated from the same or economically linked undertakings, even in relation to those which have been found to be similar only to a low degree.

The opponent has submitted arguments and evidence relating to the alleged bad faith of the applicant at the time of filing the application. These arguments are, however, clearly outside the scope of these proceedings, given that the EUTMR does not foresee bad faith as one of the grounds of opposition. The same applies to the applicant’s arguments regarding the authorship of the XFN brands and the ownership of the domain name, which have, moreover, been dismissed by the Industrial Property Office of the Czech Republic, as shown by the evidence submitted by the opponent on 31/10/2020, in the proceedings which led to the registration of the opponent’s earlier trade mark, which had been opposed by the applicant on the basis of alleged earlier rights to the sign 'XFN'.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Czech trade mark registration No 382 019.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to the services of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sam GYLLING

Aurelia PEREZ BARBER

Francesca CANGERI

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.