OPPOSITION Nо B 3 105 392

 

Scandic Hotels AB, Box 6197, 102 33 Stockholm, Sweden (opponent), represented by Time Danowsky Advokatbyrå AB, Box 590, 114 11 Stockholm, Sweden (professional representative) 

 

a g a i n s t

 

Royal Estates & Buildings SRL, Iosif Vulcan street, no. 5, ap. 17, Oradea city, Bihor county, Romania (applicant).

On 17/02/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 105 392 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 939 409 is rejected in its entirety.
3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 939 409 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 6 810 055 (figurative mark). The opponent invoked Article 8(1)(b) and Article 8(5) 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 6 810 055.

 

a) The goods and services

 

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

 

Class 35: Retailing of printed matter, sanitary articles, razors, clothing, toys, foodstuffs, bags, umbrellas and alarm clocks.

The contested goods are the following:

 

Class 33: Alcoholic beverages (except beer); preparations for making alcoholic beverages; cider.

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.

 

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The goods covered by the opponent’s retail services, namely foodstuffs is a broad category that encompasses any ‘substance used or capable of being used as nutriment’ (information extracted from Collins Dictionary on 09/02/2021 at https://www.collinsdictionary.com/dictionary/english/foodstuff). As such, the contested alcoholic beverages (except beer); preparations for making alcoholic beverages; cider are included in the broad category of the opponent’s foodstuffs.

Therefore, the contested alcoholic beverages (except beer); preparations for making alcoholic beverages; cider are similar to an average degree to the opponent’s retailing of foodstuffs.

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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise.  The degree of attention of the relevant public is average.

 

 

c) 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 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 element ‘SCANDIC’ of the earlier mark is meaningless for a significant part of the relevant public within the European Union whereas, for another part of the public it may allude to the geographic origin (‘Scandinavia) of the services at issue. It has, therefore, either an average or below average level of distinctiveness (25/05/2020, R 2267/2019-2, SCANDIC VODKA (fig.) / Scandic (fig.) et al., § 51). For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on a substantial part of the relevant public, for example the substantial part of the Spanish-speaking public, for whom the element ‘SCANDIC’ is meaningless and, therefore, has a normal degree of distinctiveness.

The element ‘SKANDIC’ of the contested sign is also meaningless for the relevant public and is, therefore, distinctive.

The element ‘SPIRIT’ of the contested sign may be perceived as a reference to the non-physical part of a person, the immaterial, the mind or the soul, since the Spanish equivalent of the English word ‘SPIRIT’, espíritu, is rather similar (information extracted from Diccionario de la lengua Española - RAE on 09/02/2021 at https://dle.rae.es/esp%C3%ADritu). In any case, irrespective of whether or not the element ‘SPIRIT’ will be understood as such, it has no meaning in relation to the relevant goods.

The stylization of the contested sign, including the horizontal bar of the letter ‘A’ of ‘SKANDIC’, will be perceived as essentially decorative and, in any event, there is nothing in it to distract the consumers’ attention from the verbal element or to prevent it from being clearly perceived. Therefore, it has a limited impact in the overall impression of the sign.

The verbal element ‘SKANDIC’ in the contested sign, by virtue of its large size and the bold typeface, is the dominant element as it is the most eye-catching.

Consumers generally tend to focus on the first elements of a sign when they encounter a trade mark. This is justified because the public reads from left to right, and from top to bottom, which makes the part placed at the left of the sign, or at its top (the initial part), the one that first catches the attention of the reader.

Visually, the signs coincide in the sequence of letters ‘S*ANDIC’ of the only element of the earlier mark and the dominant element of the contested sign. They differ in their second letters, ‘C’ in the earlier mark and ‘K’ in the contested sign, as well as in the secondary verbal element ‘SPIRIT’ of the contested sign. The signs differ further in their stylization and colours, which, however, have less impact on the consumer’s perception, being merely decorative.

It is concluded that the consumers’ attention will be mostly attracted to the verbal element ‘SKANDIC’ in the contested sign. This is because this element carries more weight on the fact that it is the first and the dominant element in the sign. Since the elements ‘SCANDIC’ in the earlier mark and ‘SKANDIC’ in the contested sign mainly differ in one letter out of seven, this difference may easily be overlooked. Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their seven letters ‘SCANDIC’/‘SKANDIC’. However, the pronunciation differs in the sound of the letters ‘SPIRIT’ of the contested sign, which have no counterparts in the earlier mark. Furthermore, it cannot be completely ruled out that at least a part of the public will not pronounce the secondary element ‘SPIRIT’ of the contested sign because of its smaller size and position within the sign.

Therefore, the signs are aurally either identical or similar to an average degree.

Conceptually, although the public under assessment will perceive the meaning of the element ‘SPIRIT’ of the contested sign 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. However, it is noted that this conceptual difference derives from an element which is secondary within the sign.

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 marks 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 under assessment. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. 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).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods and services are similar to an average degree. The relevant public is the public at large and professionals. The degree of attention is average. The earlier mark has an average degree of inherent distinctiveness.

The signs are visually similar to at least an average degree, aurally either identical or similar to an average degree and the signs are not conceptually similar. However, the conceptual difference between the signs derives from a secondary element in the contested sign, which will retain less attention from the relevant consumer.

Although the public may not overlook certain differences between the signs at issue, the likelihood of confusion includes the likelihood of association with the earlier trade marks. It 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. Therefore, in the present case, even though the signs may not be directly confused, there is a likelihood of confusion when the relevant public, although aware of the differences between the signs, nevertheless will assume that they are derived from the same undertaking or economically linked undertakings.

It is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In particular, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods.

Bearing in mind the above, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance their similarities with regard to the similar goods and services.

Consequently, the Opposition Division concludes that there is a likelihood of confusion on the Spanish-speaking part of the public. As mentioned above in section c) of this decision, the 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 6 810 055. It follows that the contested trade mark must be rejected for all the contested goods.

 

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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier above-indicated right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

 

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

 

 

María del Carmen COBOS PALOMO

Marzena MACIAK

Marta GARCÍA COLLADO

 

 

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.