OPPOSITION Nо B 3 065 937

 

Ecamed Barcelona, S.L., C/Mallorca, 269, 08008 Barcelona, Spain (opponent), represented by José María Bartrina Díaz, Pisa, c/ Industria, 3-2ª mod. 7 - Edificio Metropol 2, 41927 Mairena del Aljarafe (Sevilla), Spain (professional representative) 

 

a g a i n s t

 

Sentient Art Limited, The Black Church, St. Mary's Place, D07p4ax Dublin, Ireland (applicant), represented by Sasse, Bachelin & Lichtenhahn Rechtsanwälte Partnerschaft mbB, Alexanderstr. 9, 10178 Berlin, Germany (professional representative)

On 16/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 065 937 is partially upheld, namely for the following contested services:

 

Class 35: Business management; advertising, marketing and promotional services; prize draws (organising of -) for promotional purposes; organisation of exhibitions and events for commercial or advertising purposes; planning of marketing strategies; market campaigns; public relations services; publication of publicity texts; writing of publicity texts; production of advertising films; marketing research and analysis; marketing agency services; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; arranging of presentations for advertising purposes; online business networking services; conducting virtual trade show exhibitions online. Class 41: Production of video and/or sound recordings; live music concerts; music composition services; party planning [entertainment]; theatre productions; presentation of live performances; orchestra services; disc jockey services; provision of club entertainment services; recording studios; ticket agency services [entertainment]; live entertainment production services; music recording services; production of music; providing on-line electronic publications, not downloadable; providing on-line music, not downloadable; film production, other than advertising films; performance of dance, music and drama.

2.

European Union trade mark application No 17 951 223 is rejected for all the above services. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 08/10/2018, the opponent filed an opposition against some of the services of European Union trade mark application No 17 951 223 (figurative mark), namely against all the services in Class 35 and some of the services in Class 41. The opposition is based on European Union trade mark registrations No 11 966 901 ‘ALMA’ (word mark); No 6 140 636 ‘ ’ (figurative mark); No 9 930 579 ‘SCHLOSSHOTEL IM GRUNEWALD ALMABERLIN’ (word mark) and on Spanish trade mark registrations No M2 482 828 ‘HOTEL ALMA DE SEVILLA’ (word mark); No M2 739 679 ‘ ’ (figurative mark); No M2 980 994 ‘ALMA BARCELONA’; No M3 083 882 ‘ ’ (figurative mark.

The opponent invoked Article 8(1)(a) EUTMR and 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 EUTM registration

No 11 966 901.

 

a) The services

 

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

 

Class 35: Advertising services; business management; business administration; office functions; organisation of trade fairs and exhibitions for commercial or advertising purposes; rental of advertising space; business management consultancy; business management consultancy, all them related exclusively in the hotel and restaurant activity; business management assistance related with hotel and restaurant activity; providing business information related with hotel and restaurant activity; providing human resources administration services for other businesses related with hotel and restaurant activity; public relations related with hotel and restaurant activity; business management of hotels; personnel recruitment related with hotel and restaurant activity, business management assistance in relation to franchises, franchising of hotels and boarding houses, restaurants and other establishments providing food and drink for consumption.

Class 41: Education; providing of training; entertainment related with hotel and restaurant activity; sporting and cultural activities related with hotel and restaurant activity; dance halls, discotheque, musical shows.

Class 43: Hotels (temporary accommodation); hotels; boarding houses; hotel and boarding house reservations; reservation and rental of temporary accommodation; services for providing food and drink; rental of meeting rooms; fast-food outlets and snack-bars; cafés; cafeterias; bar services; self-service restaurants; pubs.

The contested services are the following:

 

Class 35: Business management; advertising, marketing and promotional services; prize draws (organising of -) for promotional purposes; organisation of exhibitions and events for commercial or advertising purposes; planning of marketing strategies; market campaigns; public relations services; publication of publicity texts; writing of publicity texts; production of advertising films; marketing research and analysis; marketing agency services; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; arranging of presentations for advertising purposes; providing online marketplaces for sellers of goods and or services; arranging commercial transactions, for others, via online shops; online business networking services; conducting virtual trade show exhibitions online.

Following the decision taken in parallel opposition B 3 070 860, the scope of protection of the contested application in Class 41 has been limited as follows:

Class 41: Production of video and/or sound recordings; live music concerts; music composition services; party planning [entertainment]; theatre productions; presentation of live performances; orchestra services; publishing services; disc jockey services; provision of club entertainment services; recording studios; ticket agency services [entertainment]; live entertainment production services; music publishing and music recording services; production of music; publication of printed matter; on-line publishing services; providing on-line electronic publications, not downloadable; writing of texts, other than publicity texts; publication of texts, other than publicity texts; preparation of texts for publication; publication of material which can be accessed from databases or from the internet; publishing services for books and magazines; providing on-line music, not downloadable; film production, other than advertising films; performance of dance, music and drama.

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 services in class 35

The contested prize draws (organising of -) for promotional purposes; planning of marketing strategies; market campaigns; public relations services; publication of publicity texts; writing of publicity texts; production of advertising films; marketing agency services; arranging of presentations for advertising purposes; marketing research and analysis; advertising, marketing and promotional services are included in the opponent's broad category of advertising services. Therefore, they are identical.

The contested online business networking services are included in the opponent's broad category of business management. Therefore, they are identical.

The contested business management is identically contained in both lists of services.

The contested organisation of exhibitions and events for commercial or advertising purposes; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; conducting virtual trade show exhibitions online are similar to the opponent's advertising services because they coincide in provider, they have the same purpose, they coincide in end user.

The contested arranging commercial transactions, for others, via online shops are similar to a low degree to the opponent's business management because they coincide in provider, they have the same purpose, they coincide in end user.

The contested providing online marketplaces for sellers of goods and or services is a passive service entailing the provision of an e-commerce platform where the seller can display and offer its goods for sale to the buyer, without the platform operator being involved in the promotion of sales. The platform provider does not study the marketing needs of its customers or create a personalized strategy regarding the advertising of their goods. The opponent’s services are advertising services, business assistance, management and administrative services, education and entertainment services, temporary accommodation services and provision of food and drink services. The services in conflict are dissimilar because they have different nature, purpose and method of use. The service providers and the distribution channels do not coincide and they are not complementary or in competition with each other.

Contested services in class 41

The contested providing on-line electronic publications, not downloadable are similar to the opponent's education because they coincide in distribution channels, they coincide in provider, they are complementary and they coincide in end user.

The contested providing on-line music, not downloadable; performance of dance, music and drama; live music concerts; music composition services; party planning [entertainment]; theatre productions; presentation of live performances; orchestra services; disc jockey services; provision of club entertainment services; production of video and/or sound recordings; recording studios; ticket agency services [entertainment]; live entertainment production services; production of music; film production, other than advertising films; music recording services are at least similar to a low degree to the opponent's musical shows because they can coincide in provider and in distribution channels and they have the same purpose of entertaining. Moreover, end users can also coincide. Finally, some of these services also have a similar nature and can be in competition with each other.

The contested publishing services; music publishing; publication of printed matter; on-line publishing services; writing of texts, other than publicity texts; publication of texts, other than publicity texts; preparation of texts for publication; publishing services for books and magazines; publication of material which can be accessed from databases or from the internet are publishing and writing of texts services. They are dissimilar to all services covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

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 to varying degrees are directed at the public at large (provision of club entertainment services for instance), and at business customers with specific professional knowledge or expertise (business management for example).

 

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

 

c) The signs

 

ALMA
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 word ‘ALMA’ that the signs have in common, is a Spanish word that will be understood as the part of someone that consists of his mind, character, thoughts, and feelings. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public to whom the word ‘ALMA’ has no relation with any of the relevant services and is distinctive.

Visually, aurally and conceptually, the signs coincide in the word ‘ALMA’ and in its corresponding sound and meaning. Visually, the signs differ in the stylization of the contested sign that will in any event not detract the attention of the consumer from the verbal element itself.

Therefore, the signs are visually similar to a high degree and aurally and conceptually identical.

  

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 .

 

e) Global assessment, other arguments and conclusion

 

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

In the present case, the services are partly identical and similar to varying degrees and partly dissimilar. The signs are visually similar to a high degree and aurally and conceptually identical. This is because the earlier mark is entirely reproduced in the contested sign and because the only differentiating feature (the stylization of the contested sign) will have little impact on the consumer, if any, and cannot counteract the overwhelming similarities between them.

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, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Furthermore 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). In the present case, the similarities between the signs are sufficient to counterbalance the low degree of similarity between some of the services.

In its observations, the applicant argues that there are many trade marks with the word ‘ALMA’ in classes 35 and 41. In support of its argument the applicant refers to a few trade mark registrations in the European Union and in Germany.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘ALMA’. Under these circumstances, the applicant’s claims must be set aside.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 966 901. 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 from the above that the contested trade mark must be rejected for the services found to be identical or similar to varying degrees to those of the earlier trade mark.

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

The opponent has also based its opposition on the following earlier trade marks:

 

1) European Union trade mark registration No 6 140 636 ‘ ’;

2) European Union trade mark registration No 9 930 579 ‘SCHLOSSHOTEL IM GRUNEWALD ALMABERLIN’;

3) Spanish trade mark registration No M2 482 828 ‘HOTEL ALMA DE SEVILLA’;

4) Spanish trade mark registration No M2 739 679 ‘ ’;

5) Spanish trade mark registration No M2 980 994 ‘ALMA BARCELONA’;

6) Spanish trade mark registration No M3 083 882, ‘ ’ .

Since these earlier rights cover the same or a narrower scope for most of the services, the outcome cannot be different with respect to services for which the opposition has already been rejected. As regards the entertainment services in earlier trade mark 2) and the hotel and pension franchise services in earlier trade marks 4), 5) and 6), for the same reasons as those already outlined in part a), they are also different to the services found dissimilar in the contested trade mark. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

 

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs are obviously not identical.

 

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Maria del Carmen SUCH SÁNCHEZ

Sandra IBAÑEZ

Meglena BENOVA

 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.