OPPOSITION Nо B 3 112 977

 

Shape Solutions GmbH, Bramfelder Straße 119 a, 22305 Hamburg, Germany (opponent), represented by BROOK Rechtsanwälte Rechel Aghamiri Burkart Burke & Ziehm Partnerschaft mbB, Am Sandtorkai 75, 20457 Hamburg, Germany (professional representative) 

 

a g a i n s t

 

Emanuel Pulis, 56 Ghajn Zejtuna Santa Maria Estate, Mlh 2704 Mellieha, Malta (applicant).

On 30/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 112 977 is upheld for all the contested services.

 

2.	European Union trade mark application No 18 104 009 is rejected in its entirety.

 

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

 

REASONS

 

On 02/03/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 104 009 (figurative mark), namely against all the service in Class 41. The opposition is based on European Union trade mark registration No 18 042 175, ‘Cannabiz’ (word 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.

 

 

a) The services

 

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

Class 41: Sports officiating; music festival services; arranging of entertainment shows; organization of competitions; organising of entertainment competitions; organising of entertainment competitions; organisation of shows; organisation of shows; organisation of musical competitions; recreational camps; providing cultural activities; symposiums relating to education; publication of calendars of events; video editing services for events; performances (presentation of live -); providing entertainment information; conducting of cultural events; arranging technical instruction courses; live music performances; music composition services; organization of shows [impresario services]; courses (training -) relating to medicine; organisation and presentation of shows; arranging and conducting of training seminars; arranging of demonstrations for entertainment purposes; arranging of competitions for entertainment purposes; organisation of competitions and awards; provision of on-line entertainment; provision of on-line entertainment; online interactive entertainment; on-line gaming services; on-line ticket agency services for entertainment purposes; providing on-line video games; electronic online publication of periodicals and books; entertainment services provided by on-line streams; publication of online reviews in the field of entertainment.

The contested services are the following:

 

Class 41: Arranging and conducting of conferences; conferences (arranging and conducting of -); arranging and conducting conferences; arranging and conducting conferences and seminars; arranging and conducting educational conferences; organisation of exhibitions for educational purposes; organisation of exhibitions for cultural or educational purposes; organisation of exhibitions for cultural and educational purposes; games equipment rental; presentation of live performances; production of shows; rental of show scenery; rental of motion pictures; rental of sound recordings; rental of videotapes; rental of video cassettes; rental of video recordings; rental of radio and television sets; rental of audio equipment; rental of lighting apparatus for television studios; rental of video cameras; arranging and conducting of workshops [training]. 

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 41

The contested arranging and conducting of conferences; conferences (arranging and conducting of -); arranging and conducting conferences; arranging and conducting conferences and seminars; arranging and conducting educational conferences overlap with the opponent's symposiums relating to education. Therefore, they are identical.

The contested organisation of exhibitions for educational purposes; organisation of exhibitions for cultural or educational purposes; organisation of exhibitions for cultural and educational purposes overlap with the opponent's arranging of demonstrations for entertainment purposes. Therefore, they are identical.

Production of shows; presentation of live performances are identically contained in both lists of services (including synonyms).

The opponent’s arranging and conducting of training seminars overlap with the contested arranging and conducting of workshops [training]. Therefore, they are identical.

The contested rental of videotapes; rental of video cassettes; rental of motion pictures; rental of sound recordings; rental of video recordings are similar to the opponent's entertainment services provided by on-line streams because they coincide in end user and they are in competition.

The contested rental of audio equipment is similar to the opponent's organisation of shows because they are complementary and they target the same consumers. Furthermore, they coincide in distribution channels and in provider.

The contested rental of show scenery is similar to the opponent's organisation of shows because they coincide in end user, in distribution channels, in provider, and, finally, they are complementary.

The contested rental of radio and television sets; rental of lighting apparatus for television studios; rental of video cameras are similar to the opponent's video editing services for events because they usually coincide in end user, in distribution channels, and in provider.

The contested games equipment rental is similar to the opponent's on-line gaming services because they are in competition and target the same consumers.

 

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 are directed at the public at large and are also specialised services directed at business customers with specific professional knowledge or expertise that will seek the services in the framework of their professional activity.

 

The degree of attention may vary from average to high.

  

c) The signs

 

Cannabiz
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.

Since having a meaningful element in common could make the signs more similar conceptually in addition to the fact that the the likelihood of confusion is greater in case the differing element is weak, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier word consists of the word ‘CANNABIZ’. The relevant public will perceive the mark as referring to the psychoactive drug cannabis from the Cannabis plant used primarily for medical and recreational purposes. Furthermore, the component ‘-BIZ’ alludes to the word ‘business’. The mark as a whole has a normal degree of distinctiveness in in connection with the services.

The contested figurative mark consists of the verbal elements ‘CANNABIZ’ and ‘WORLD’ and a decorative figurative element. The previous assertions when it comes to the meaning and the distinctiveness of the word ‘CANNABIZ’ are applicable in the case of the contested mark as well. When it comes to the word ‘WORLD’, it will be understood by the relevant public as meaning ‘the world, the earth, with all its countries, peoples and natural features’ (information extracted from Oxford Dictionaries on 23/04/2021 at https://www.oxfordlearnersdictionaries.com/definition/english/world?q=world). This verbal element is commonly used in trade to designate the global nature or scope of the goods or services offered by companies and, thus, in the contested sign it will be perceived merely as describing that the services concerned are offered globally or have a worldwide scope. Consequently, this element will be perceived as a non‑distinctive element. Furthermore, for the relevant public, there is semantic unit created by their combination, which will be understood as ‘the world of CANNABIZ’ or ‘all that relates to CANNABIZ’. The typeface and the colour in which these verbal elements are presented are basic and devoid of any distinctive character. When it comes to the figurative element present within the sign, it has normal distinctiveness. Finally, the elements ‘CANNABIZ WORLD’ are co-dominant within the contested sign due to their size.

 

Visually, the signs coincide in ‘CANNABIZ’, which is distinctive and is the only component of the earlier sign and the first component of the contested one. The signs differ in the element ‘WORLD’, the typeface and the figurative element, all appearing only within the contested mark. Apart from the figurative element, the rest of the differentiating elements are non-distinctive. What is more, 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. It should be also noted that 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). More precisely, in view of the lack of meaning within the figurative element of the contested mark and its difficulty of being described, the consumers will refer to the mark solely by its verbal elements. Therefore, the signs are visually similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the word ‘CANNABIZ’ present identically in both signs. The pronunciation differs in the word ‘WORLD’ present only within the contested mark, which however, lacks distinctiveness. The figurative element of the contested sign will not be pronounced and therefore does not play any role in the aural comparison of the signs. Therefore, the signs are aurally similar to a high degree.

   

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark and the first verbal component of the contested sign will be associated with the same meaning. What is more, the only remaining meaningful element, which is differentiating the marks, ‘WORLD’, lacks distinctiveness altogether. Therefore, the signs are conceptually similar to a high degree.

 

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

 

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).

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.

As has been previously established, some of the services at issue are identical and the others similar.

The relevant public is deemed to be the public at large as well as the professional public. The degree of attention is considered to be average to high.

When it comes to the signs, the visual similarity and the even higher aural and conceptual similarity between them lies in the fact that they coincide in the element ‘CANNABIZ’. This distinctive element forms the entirety of the earlier mark and it is totally reproduced in the contested one as an independent and visually significant element. Moreover, the only additional verbal element of the contested mark is non-distinctive. Under these circumstances, the presence of a figurative element, although it cannot be considered non-distinctive, cannot prevent the likelihood that consumers will associate the trade marks. As explained above, the figurative component conveys no meaning, it is not easy to memorize and it is not visually more prominent than the verbal elements. The consumers will refer to the contested mark by its verbal elements and are likely to consider the contested mark to be a mere alternative of the earlier one.

Moreover, it is a common practice for companies to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new products or service lines, or to endow their trade mark with a new, modernized image. Accordingly, it is very likely in this case that the relevant consumer may perceive the contested sign as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (see by analogy 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the public may attribute the same (or an economically linked) commercial origin to all the services at issue.

   

Considering all the above, there is a likelihood of confusion on the part of the English- speaking part 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 18 042 175. It follows that the contested trade mark must be rejected for all the contested services.

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

 

 

Michaela SIMANDLOVA	Claudia SCHLIE	Lucinda CARNEY

 

 

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.