OPPOSITION No B 3 087 932

Suomen 10Tanssi Tapahtumat & Tuotanto Oy, Myyraksen Mäntytie 2, 01400 Vantaa, Finland (opponent)

a g a i n s t

Fabulous Dancing Limited, Unit 701, 7/F Tung Ning Bldg 125-127, Connaugt Rd Central, Sheung Wan, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Carolina Maria Sanchez Margareto, Calle Guardia Civil Num. 22, Esc 6, 2º, pta 5, 46020 Valencia, Spain (professional representative).

On 15/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 932 is upheld for all the contested services.

2. European Union trade mark application No 18 026 919 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 026 919 , namely against all the services in Class 41. The opposition is based on, inter alia, European Union trade mark registration No 17 164 179, ‘PROAM’, for services in Class 41. 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.

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 17 164 179.

1. The services

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

Class 41: Educational services relating to dancing; organisation of dancing competitions; organization of dancing events; dance schools; entertainer services.

The contested services are the following:

Class 41: Organization of dancing events.

Organization of dancing events are identically contained in both lists of services.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise like professional dancers.

The degree of attention is average.

3. The signs

PROAM
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 coinciding element ‘PROAM’ is not meaningful in certain territories, such as in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese- and Spanish-speaking parts of the public.

The coinciding element ‘PROAM’, as such, has no specific meaning for the relevant public. It is not excluded that part of the relevant public will recognise the prefix ‘PRO’, as it is at the beginning of the earlier mark and the verbal element ‘ProAm’ is clearly divided into two parts by the upper-case letter in the middle in the contested mark. According to case-law, ‘PRO’ is a laudatory term, commonly used in trade for the presentation of all kinds of goods and services with the purpose to highlight the positive qualities of these goods or services (25/04/2013, T‑145/12, Eco Pro, EU:T:2013:220, § 27) and, therefore, it is considered non-distinctive in relation to the services in question. In contrast, the element ‘AM’ of both marks is not meaningful and, therefore, distinctive.

The verbal element ‘DANCE’ of the contested sign will be perceived as the present-tense form of the Spanish verb danzar, meaning executing rhythmic movements with the body, arms and feet (information extracted from Dictionario Real Academia on 14/04/2020 at https://dle.rae.es/danzar?m=form), and the Portuguese verb dançar having the same meaning (information extracted from Infopedia Dicionario on 14/04/2020 at https://www.infopedia.pt/dicionarios/verbos-portugueses/dan%C3%A7ar). Moreover, the contested sign’s verbal elements ‘WORLD’ and ‘CUP’, originating in the English language, are basic words which are known in all Member States (20/01/2008, R 1466/2005-1, WORLD CUP 2006, § 24). They would be seen by the relevant public as the generic name for a regular competition, where the word ‘world’ indicates that the competition is open to teams, normally national ones, from all over the world. The element ‘cup’ refers to a trophy, which may be an ornamental cup or other vessel, offered as a prize for a race or athletic contest. Bearing in mind that the relevant services are organization of dancing events, it is likely that the relevant public will perceive the verbal elements ‘WORLD DANCE CUP’ of the contested mark as alluding to a world tournament which involves dance and, therefore, these elements are non-distinctive for the relevant services.

The figurative element of the contested mark will be perceived as wavy lines that form a circular shape depicted in different shades of black and grey. As the figurative element has no relation with the goods and services and it is sufficiently elaborated, it is distinctive to an average degree.

Considering all of the above, the verbal element ‘ProAm’ and the figurative element are the most distinctive elements of the contested sign.

Although the verbal elements ‘WORLD’ and ‘DANCE CUP’ are smaller than the remaining elements, the difference in size is not significant enough to result in a clear dominance of one element over another. Therefore, there are no dominant elements in the contested sign.

Visually, the signs coincide in the letter sequence ‘PROAM’, composing the sole element of the earlier mark and one of the most distinctive elements of the contested mark. However, they differ in the additional elements ‘WORLD DANCE CUP’ of the contested mark, which has found to be non-distinctive. The signs also differ in the figurative element of the contested mark.

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).

The signs coincide in the verbal element ‘PROAM’, which is the sole element of the earlier mark and one of the most distinctive verbal elements of the contested sign and will attract the most of consumers’ attention. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory on which current assessment focuses, the pronunciation of the signs coincides in the sound of the letters ‛PROAM’, present identically in both signs. The pronunciation differs in the sound of the additional elements ‘WORLD DANCE CUP’ of the contested mark found to be non-distinctive.

Therefore, the signs are aurally similar to a high degree, bearing in mind that the differing elements ‘WORLD’ and ‘DANCE CUP’ of the contested sign are non-distinctive.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning due to the coinciding element ‘PRO’ (even though it is non-distinctive), as the remaining additional verbal elements in the contested mark are non-distinctive. Therefore, the signs are conceptually similar to a low degree.

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

4. Distinctiveness of the earlier mark

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

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 a non-distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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

The signs are visually similar to an average degree, while they are aurally similar to a high degree, because they both contain the letter sequence ‘PROAM’, which is the sole verbal element of the earlier mark and one of the most distinctive elements of the contested sign. Conceptually, the signs are similar to a low degree only. Although the verbal element ‘PRO’ is non-distinctive, the verbal element ‘AM’ is distinctive to an average degree. The signs differ in the additional non-distinctive verbal elements of the contested mark, ‘WORLD’ and ‘DANCE CUP’, and the figurative element which, despite being distinctive, has less impact on the relevant consumer as they usually concentrate their attention on the verbal elements of a complex sign.

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, and in the present case it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The fact that the verbal element ‘PROAM’ of which the earlier mark consists is entirely included in the contested sign may lead the public to believe that the services at issue derive, at the very least, from companies that are economically linked.

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 identity between the services offset the low degree of conceptual similarity.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 164 179. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 17 164 179 leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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).

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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Marine DARTEYRE

Francesca DRAGOSTIN

Rasa BARAKAUSKIENE

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.