OPPOSITION Nо B 3 094 686

Groupe Duval S.A.S, 123 Rue du Château, 92100 Boulogne-Billancourt, France (opponent), represented by Cabinet Le Guen Maillet, 3 Impasse De La Vigie Cs 71840, 35418 Saint-Malo Cedex, France (professional representative)

a g a i n s t

NFL Properties Europe GmbH, Mergenthalerallee 10-12, 65760 Eschborn, Germany (applicant), represented by White & Case LLP, 5 Old Broad Street, EC2N 1DW London, United Kingdom (professional representative).

On 07/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 686 is upheld for all the contested services.

2. European Union trade mark application No 18 066 416 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 066 416 for the word mark ‘DUUUVAL’. The opposition is based on, inter alia, European Union trade mark registration No 16 249 104 for the figurative mark . 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 16 249 104.

a) The services

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

Class 41: Providing of training; entertainment; sporting and cultural activities; arranging and conducting of colloquiums, conferences and seminars; camp services (holiday -) [entertainment]; sport camp services; club services [entertainment or education]; health club services; organisation of competitions [education or entertainment]; providing sports facilities; golf facilities (providing -); rental of golf equipment; golf facilities (providing -); organization of golf tournaments; rental of tennis courts; planning (party -) [entertainment]; publishing of publications and magazines.

The contested services are the following:

Class 41: Education and entertainment services in the nature of professional football games and exhibitions; providing sports and entertainment information via a global computer network or a commercial on-line computer service or by cable, satellite, television and radio; arranging and conducting athletic competitions, namely professional football games and exhibitions; football fan club services; entertainment services, namely, musical and dance performances provided during intervals at sports events; educational services, namely, physical education programmes; production of radio and television programmes; live shows featuring football games, exhibitions, competitions, and musical and dance performances; sporting, entertainment and cultural activities; publication of texts other than publicity texts; organisation of a professional association of sports teams; operation of a league of football clubs; scheduling match fixtures for sports games; provision of information about football.

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

The term ‘namely’, used in the applicant’s list of 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.

Sporting, entertainment and cultural activities are identically contained in both lists of services (including synonyms).

The contested entertainment services in the nature of professional football games and exhibitions are included in the broad category of the earlier entertainment. Therefore, they are identical.

The contested education services in the nature of professional football games and exhibitions, educational services, namely, physical education programmes are included in the broad category of, or at least overlap with, the earlier providing of training. Education in the specific field includes, inter alia, training services, such as practical and sports training, which covers instructions given by a sports/fitness trainer on how to improve person’s physical condition, avoid injuries or advance in certain sports. Therefore, they are identical.

The provision of sports information is usually part of the sport activities’ organisation (where the activity will take place, the participants and other details) and is therefore included in the broad category of sporting activities. Similarly, the provision of entertainment information forms part of entertainment services as the audience needs to have certain information in order to be invited and to attend cultural or entertainment events or to simply monitor their favourite performers. The contested providing sports and entertainment information via a global computer network or a commercial on-line computer service or by cable, satellite, television and radio, entertainment services, namely, musical and dance performances provided during intervals at sports events; live shows featuring football games, exhibitions, competitions, and musical and dance performances, provision of information about football are included in the broad categories of the earlier entertainment, sporting and cultural activities. Therefore, they are identical.

The contested arranging and conducting athletic competitions, namely professional football games and exhibitions; scheduling match fixtures for sports games; organisation of a professional association of sports teams; operation of a league of football clubs are included in the broad category of the earlier sporting and cultural activities. Therefore, they are identical.

The contested football fan club services are included in the broad category of the earlier club services [entertainment or education]. Therefore, they are identical.

Entertainment is the business of making films, television programmes, shows, etc. that entertain people. As such, the broad category of the opponent’s entertainment covers services such as television show production and production of radio and television programmes. Consequently, the contested production of radio and television programmes is included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested publication of texts other than publicity texts includes, as a broader category, the earlier publishing of publications and magazines. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise in the professional sport and entertainment industry.

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

	DUUUVAL
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 earlier mark is a figurative mark that depicts the verbal elements ‘GROUPE’ and ‘DUVAL’ in upper-case letters under a figurative element consisting of two intersecting lines. The verbal element ‘GROUPE’ is clearly smaller than other elements and is represented in gold as is the figurative element. The verbal element ‘DUVAL’ is black and, due to its size and its position, it is the main indicator of the business origin as it overshadows the word ‘GROUPE’. The relevant public will not attribute any major significance to the typeface and colours of the earlier mark due to their purely decorative nature. As to the figurative element represented therein, the public will perceive it as an element with an essentially ornamental value, meant to embellish the sign. In other words, consumers will attribute more trade mark significance to the verbal element ‘DUVAL’.

The contested sign is a word mark composed of the single verbal element ‘DUUUVAL’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they appear in upper-case or lower-case letters or in a combination thereof.

The earlier mark contains a meaningful French word ‘GROUPE’ meaning ‘group’ in English which is non-distinctive in relation to the services since it indicates a very general term referring to a group of companies. The Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public in the EU. The Opposition Division agrees with the applicant that the word ‘DUVAL’ is a French surname. However, this word has an average degree of distinctiveness for the services in question as it does not describe or relate to them in any way. The applicant’s claim that the contested sign is a neologism must be contested to the extent that the repetition of the letter ‘U’ will have a reduced impact, as even if a consumer prolongs the pronunciation of the vowel ‘U’ or notices its visual reappearance, the reference to and/or reminiscence of the surname ‘DUVAL’ remain present for the French-speaking part of the public.

Visually, the signs coincide in the string of letters ‘DU*VAL’ and differ in the repetitive appearance of the letter ‘U’ in the contested sign and in the remaining verbal and figurative elements of the earlier mark. Reference is made to the previous paragraphs regarding the distinctiveness and role of the signs’ elements. Admittedly, the letter sequence ‘*UU*’ in the middle of the contested sign establishes a noticeable difference between the signs. Nonetheless, it is considered that the coinciding sequence ‘DU*VAL’ will have a considerable, and stronger, impact for the consumers. Indeed, the differing letters appear in the less conspicuous middle part of the contested sign and, in any case, are not of a nature that prevents the immediate recognition of – or at least the allusion to – the surname ‘DUVAL’.

Moreover, the repetitive appearance of the vowel ‘U’ cannot be considered particularly striking, as it merely repeats the previous letter in the sign. Despite this repetitive difference, the coincidence in all the remaining letters of the earlier mark’s verbal element ‘DUVAL’ will certainly have a significant impact on the public experiencing the contested sign, considering the fact that the coinciding letters are also in the same order.

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).

This principle also applies to this case, as the figurative element of the earlier mark does not significantly influence the relevant public and the distinctive verbal element ‘DUVAL’ will be immediately recognisable and legible.

Bearing in mind all the above, the signs are considered visually similar to a higher than an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters [D-U-V-A-L], since the triple ‘U’ in the contested sign does not significantly change its pronunciation, as compared to a single ‘U’ in the earlier mark. Hence, the distinctive elements of both signs will be pronounced identically in two syllables [DU]-[VAL] with a slightly elongated sound /U/ in the middle of the contested sign. The difference is also related to the sound of the letters [G‑R‑U‑P] within the earlier mark, but reference is made to the previous paragraphs with regard to the distinctiveness and role of the earlier mark’s non-distinctive element. Purely figurative components of signs are not subject to a phonetic assessment.

Overall, even taking into consideration the difference established by the repetitive appearance of the letter ‘U’ in the contested sign and the non-distinctive verbal element of the earlier mark, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier sign will be perceived as referring to the French surname ‘DUVAL’. The multiple instances of the vowel ‘U’ in the contested sign has no influence and the average consumer will easily perceive the contested sign as also referring to the French surname ‘DUVAL’. Therefore, the signs are conceptually highly similar, given that their additional, differing, elements include a non-distinctive element and a meaningless figurative element.

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, its distinctiveness 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.

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 which 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).

The contested services are all identical to the services covered by earlier European Union trade mark registration No 16 249 104 and the level of attention of the public at large and business customers in the professional sport and entertainment industry may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased. The earlier mark has an average distinctive character.

The signs show a higher than average degree of visual and a high degree of aural and conceptual similarity. The signs coincide in the string (‘DU*VAL’) in their distinctive parts. Furthermore, as previously established, the repetitive appearance of the letter ‘U’ is less striking visually and aurally, as it merely repeats the previous letter in the sign, and it is present in the least conspicuous middle part of the contested sign. The differences between the signs are further limited to secondary or non-distinctive elements which cannot offset the impact of their coincidences.

Moreover, 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. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application may not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

Considering the fact that the sequence ‘DU*VAL’ is, in fact, entirely reproducing the most distinctive verbal element of the earlier mark, consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the opponent’s mark – such as a more fashionable way to attract consumers’ attention to the most distinctive part of the earlier mark, considering that it will be applied to services that are identical to those protected by the earlier trade mark. In other words, consumers may confuse the origins of the services at issue, by assuming that they come from the same undertaking or from economically linked undertakings.

Indeed, 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, when examining the possible existence of likelihood of confusion, the Opposition Division must also take into consideration the principle that a likelihood of confusion implies some interdependence among the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods 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). In the present case, it is considered that the identity of the relevant services outweighs and offsets the remaining differences between the signs.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the French-speaking public even considering the higher degree of attention of the part of the relevant public which is not sufficient to exclude confusion due to the important similarities between the signs. 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 16 249 104. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 16 249 104 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 rights 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.

The Opposition Division

Gueorgui IVANOV

Jiří JIRSA

Dorothée SCHLIEPHAKE

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.