OPPOSITION No B 3 086 286

Real Automóvil Club de España, Isaac Newton, 4 Parque Tecnológico de Madrid (PTM), 28760 Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Frank Schmittat, Dreyerstrasse 1, 30169 Hannover, Germany (applicant), represented by Dr. Stracke Bubenzer & Partner Rechtsanwälte PartGmbB, Marktstr. 7, 33602 Bielefeld, Germany (professional representative).

On 19/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 286 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 985 720 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 and services of European Union trade mark application No 17 985 720 ‘RACEVENT’ (word mark), namely against all the goods and services in Classes 25, 35 and 41. The opposition is based on Spanish trade mark registration No 3 551 123 (figurative mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark registration No 3 551 123.

The date of filing of the contested sign is 18/01/2019. The earlier Spanish trade mark No 3 551 123 was registered on 27/07/2015. As the earlier trade mark had not been registered for at least five years at the date of filing of the contested sign, the request for proof of use in relation to this earlier right is inadmissible. The Office informed the parties accordingly on 04/08/2020 and 05/08/2020.

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, inter alia, the following:

Class 25: Clothing; footwear; headgear; aprons [clothing]; masquerade costumes; overalls; belts (money -) [clothing]; kerchiefs [clothing]; pocket squares; shoulder scarves; garments for protecting clothing; motorists’ and motorcyclists’ clothing; uniforms; wedding gowns.

Class 35: Advertising; business management; business administration; office functions; procurement services for others (purchasing goods and services for other businesses); updating of advertising material; import-export agencies; commercial information agencies; advertising agencies; rental of vending machines; rental of advertising space; rental of photocopying machines; office machine and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; advisory services for business management; business management assistance; business auditing; data search in computer files for others; marketing research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; professional business consultancy; book-keeping; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; dissemination of advertising matter; distribution of samples; relocation services for businesses; drawing up of statements of accounts; marketing studies; outsourcing services (business assistance); invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; computerized file management; business management of performing artists; business inquiries; business information; commercial information and advice for consumers (consumer advice shop); business investigations; marketing; typing; modelling for advertising or sales promotion; payroll preparation; employment agencies; organization of fashion shows for promotional purposes; organization of exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; psychological testing for the selection of personnel; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; publicity; on-line advertising on a computer network; outdoor advertising; direct mail advertising; advertising by mail order; radio advertising; television advertising; compilation of statistics; writing of publicity texts; public relations; document reproduction; secretarial services; personnel recruitment; business efficiency experts; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription; word processing; business appraisals; wholesaling or retailing of pharmaceutical, veterinary, or hygienic preparations and medical supplies; auctioneering; updating and maintenance of data in computer databases; providing business information via a web site.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; academies (education); animal training; modelling for artists; rental of radio and television sets; rental of video cameras; rental of movie projectors and accessories; rental of sports grounds; rental of videotapes; rental of show scenery; rental of audio equipment; rental of skin diving equipment; rental of lighting apparatus for theatrical sets or television studios; games equipment rental; rental of sports equipment, except vehicles; rental of stadium facilities; rental of sound recordings; toy rentals; rental of motion pictures; rental of tennis courts; rental of camcorders; entertainer services; mobile library services; ticket agency services (entertainment); calligraphy services; sport camp services; holiday camp services (entertainment); providing casino facilities (gambling); circuses; conducting of fitness classes; health club services (health and fitness training); night clubs; club services (entertainment or education); coaching (training); layout services, other than for advertising purposes; music composition services; timing of sports events; vocational retraining; correspondence courses; discotheque services; dubbing; educational services; physical education; religious education; entertainment; stage scenery (rental of); music halls; presentation of live performances; production of shows; movie studios; recording studio services; educational examination; cinema presentations; providing golf facilities; providing sports facilities; providing amusement arcade services; practical training (demonstration); photography; gymnastic instruction; videotaping; nursery schools; entertainment information; recreation information; education information; boarding schools; sign language interpretation; gambling; game services provided on-line from a computer network; providing karaoke services; electronic desktop publishing; microfilming; videotape editing; production of radio and television programmes; providing museum facilities (presentation, exhibitions); organization of balls; organization of sports competitions; organization of competitions (education or entertainment); arranging of beauty contests; organization of fashion shows for entertainment purposes; organization of shows (impresario services); organization of exhibitions for cultural or educational purposes; party planning (entertainment); operating lotteries; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging of award ceremonies; arranging and conducting of symposiums; arranging and conducting of workshops (training); vocational guidance (education or training advice); orchestra services; amusement parks; personal trainer services (fitness training); lending libraries; videotape film production; film production, other than advertising films; production of music; radio entertainment; television entertainment; publication and editing of texts, books, magazines and other printed matter; editing, publication and electronic delivery of books and journals on line; publication of books; publication of texts, other than publicity texts; publication of electronic books and journals on-line; providing recreation facilities; scriptwriting services; writing of texts, other than publicity texts; photographic reporting; news reporters services; theatre productions; booking of seats for shows; disc jockey services; school services; language interpreter services; zoological garden services; subtitling; providing on-line electronic publications, not downloadable; translation; funfairs; providing gaming house facilities; entertainment ticket agency services; providing on-line music, not downloadable; providing on-line videos, not downloadable; driving instruction and driving instruction in road safety; dissemination of educational material; electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information.

The contested goods and services are the following:

Class 25: Clothing, apparel; footwear; headgear.

Class 35: Advertising, namely providing of event services for advertising purposes; business management; business administration services; marketing studies; commercial development and implementation of marketing strategies; organisation of trade fairs and racing events being corporate events for commercial and advertising purposes; organisational planning and project management; planning, design and implementation of advertising and marketing concepts for racing events; marketing in the field of motorsports; public relations in the field of motorsports; driver marketing in the field of motorsports; marketing of goods and services through sponsorship concepts in the field of motorsports; conducting and organisation of advertising events in the field of motorsports.

Class 41: Creation of show and event concepts; entertainment; planning and conducting of entertainment and show events in motorsports; planning, arranging and conducting of sporting and cultural events; providing of training; providing of training, in particular training of drivers in the field of motorsport; training support for drivers at motorsport events; conducting of driving courses; entertainment, in particular organisation and conducting of events in the field of motorsport; sporting and cultural activities, in particular participation in motorsports racing events; conducting of motorsport events; publication of press articles, newspapers and magazines (periodicals) in connection with motorsports and motorsport events; consultancy in the field of organising trade fairs, shows, roadshows and sporting events.

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

The terms ‘in particular’ or ‘including’, used in the applicant’s and the opponent’s lists of goods and services, indicate 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 goods and 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.

Contested goods in Class 25

The contested clothing, apparel; footwear; headgear are identical to the opponent’s clothing; footwear; headgear, either because they are identically contained in both lists or because the opponent’s clothing includes the contested apparel.

Contested services in Class 35

The contested advertising, namely providing of event services for advertising purposes; marketing studies; commercial development and implementation of marketing strategies; organisation of trade fairs and racing events being corporate events for commercial and advertising purposes; planning, design and implementation of advertising and marketing concepts for racing events; marketing in the field of motorsports; public relations in the field of motorsports; driver marketing in the field of motorsports; marketing of goods and services through sponsorship concepts in the field of motorsports; conducting and organisation of advertising events in the field of motorsports are advertising-related services aimed at providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through various means of media. The contested services are included in, or overlap with, the opponent’s advertising; organization of trade fairs for commercial or advertising purposes and, therefore, they are identical.

Business management; business administration services are identically contained in both lists of services (including synonyms) and the contested organisational planning and project management are included in the broad category of, or overlap with, the opponent’s business management. Therefore, they are identical.

Contested services in Class 41

The contested services are identical to the opponent’s providing of training; entertainment; sporting and cultural activities; publication of electronic books and journals on-line, either because they are identically contained in both lists (e.g. entertainment and providing of training) or because the opponent’s services include, or overlap with, the contested services. For example, the contested providing of training, in particular training of drivers in the field of motorsport; training support for drivers at motorsport events; conducting of driving courses are included in the broad category of the opponent’s providing of training; the contested creation of show and event concepts; planning and conducting of entertainment and show events in motorsports; entertainment, in particular organisation and conducting of events in the field of motorsport; consultancy in the field of organising trade fairs, shows, roadshows and sporting events are included in the broad category of, or overlap with, the opponent’s entertainment and sporting and cultural activities; the contested sporting and cultural activities, in particular participation in motorsports racing events; conducting of motorsport events; planning, arranging and conducting of sporting and cultural events are included in the broad category of the opponent’s sporting and cultural activities, and the contested publication of press articles, newspapers and magazines (periodicals) in connection with motorsports and motorsport events overlaps with the opponent’s publication of electronic books and journals on-line.

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 are partly directed at the public at large (e.g. the goods in Class 25 and entertainment services in Class 41) and partly at business customers (e.g. the services in Class 35 and the event organisation-related services – e.g. creation of show and event concepts in Class 41). Therefore, the relevant public’s degree of attentiveness is likely to vary from average to higher than average, depending on the category of the goods and/or services in question (07/10/2010, T‑244/09, Acsensa, EU:T:2010:430, § 18 and the case-law cited therein).

c) The signs

	RACEVENT
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 a figurative mark consisting of the word ‘RACE’, depicted in italicised upper-case letters, with a small crown above it. Given the size of the word ‘RACE’ vis-à-vis the image of the crown, this word clearly stands out as the dominant element of the earlier mark. The contested sign is the word mark ‘RACEVENT’.

Even though the word ‘RACE’ of the earlier mark is meaningful in English, it does not belong to the category of basic English words that a significant part of the relevant public in Spain would be familiar with. The opponent claims that the relevant consumers will perceive the word ‘RACE’ in the earlier mark as the acronym of the opponent’s name ‘Real Automóvil Club de España’ and, to support this claim, makes reference to previous Office decisions. However, since the opponent’s name is not included in the mark (together with its acronym), it cannot generally be assumed that the relevant public will perceive the word ‘RACE’ as meaning ‘Real Automóvil Club de España’. Consequently, the word ‘RACE’ in both marks will be perceived as meaningless by at least a significant part of the relevant public and, therefore, has an average degree of distinctiveness in relation to the goods and services in question.

As to the reference to previous Office decisions, it is recalled that the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Moreover, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. Therefore, even if the previous decisions referred to by the opponent are to some extent factually similar to the present case, the outcome may not be the same.

The depiction of the crown, in the earlier mark, is a commonly used laudatory symbol of power, legitimacy, victory, triumph, honour and glory. Therefore, it possesses at most only a low degree of inherent distinctiveness. Consequently, the verbal element ‘RACE’ is the most distinctive element of the earlier mark.

The verbal element ‘RACEVENT’ of the contested sign will be perceived as one meaningless word by the relevant consumers and, therefore, has an average degree of distinctiveness.

Visually, the signs coincide in the sequence of letters ‘RACE’, which constitute the entire verbal element of the earlier mark and the first four letters of the contested sign. The signs differ in the remaining letters, ‘VENT’, of the contested sign, which have no counterparts in the earlier mark, and in the figurative element and stylisation of the earlier mark.

The applicant argues that since the verbal element ‘RACE’ of the earlier mark is purely descriptive in relation to the goods and services in question, it must be disregarded when comparing the signs. According to the applicant, the only element of the earlier mark to be compared is a figurative element of a crown, which has nothing in common with the contested sign. However, as explained above, the verbal element ‘RACE’ of the earlier mark is meaningless for the relevant public and, contrary to the applicant’s assertions, has an average degree of distinctiveness. Moreover, it is the most distinctive element of the earlier mark, taking into account that the figurative element of a crown possesses only a low degree of distinctiveness (for the reasons explained above) and the relevant consumers will not pay much attention to it.

Furthermore, account must be taken of the fact that consumers generally 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. Consequently, despite the addition of four letters at the end of the contested sign, the fact that the contested sign reproduces the entire verbal element of the earlier mark at its beginning will not go unnoticed by the relevant consumers. Taking that into account, as well as the minimal impact of the figurative element of the earlier mark, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘RACE’, which constitute the entire sole verbal element of the earlier mark and the first four letters of the contested sign. The pronunciation differs in the sound of the last four letters ‘VENT’ of the contested sign, which have no counterparts in the earlier mark. The figurative element of the earlier mark has no impact on the aural comparison.

Although the contested sign contains some additional phonemes, the fact that, when pronounced, it incorporates the entire earlier mark at its beginning creates clearly perceptible aural similarities between the marks. Therefore, the signs are aurally similar to at least an average degree.

Conceptually, although the figurative element of a crown makes the earlier mark conceptually not similar to the meaningless contested sign, this will not have much impact on the relevant consumers considering the limited distinctiveness of this element (as explained above).

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.

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 goods and 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 a weak figurative element in the mark, as stated above in section c) of this decision.

e) 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/or 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.

The contested goods and services are identical to those of the earlier mark and target the public at large and professionals, who will have an average to higher-than-average degree of attention. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually similar to an average degree, aurally similar to at least an average degree and not similar conceptually. The dominant and sole verbal element of the earlier mark is entirely included in the contested sign as its first four letters. The difference in the remaining letters at the end of the contested sign, as well as in the slight stylisation and weak figurative element of the earlier mark, are not of such a nature as to distract the consumers’ attention from this commonality. This is especially true since the coinciding letters will be the first noticed by the relevant consumers when encountering the contested sign.

Likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the relevant signs directly, conclude that they designate different lines of goods and/or services from the same undertaking or from economically linked undertakings. It is common practice nowadays for companies to make small variations of their trade marks, for example by adding some letters or figurative elements, in order to name new lines of products. Given that the contested sign incorporates the entire distinctive verbal element of the earlier mark, it is highly conceivable that a substantial part of the relevant public could reasonably believe that the identical goods and services offered under the contested sign are a different line of products coming from the same undertaking, or from economically linked undertakings, as those bearing the earlier mark.

Therefore, and taking into account the abovementioned principle of interdependence, the identity between the relevant goods and services, together with the at least average degree of visual and aural similarity between the signs, is sufficient to conclude that there is a likelihood of confusion or, at least, a likelihood of association on the part of the relevant public in the relevant territory.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 551 123. It follows that the contested trade mark must be rejected for all the contested goods and 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 grounds 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, he 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

Zuzanna STOJKOWICZ

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

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.