OPPOSITION Nо B 3 109 386

Team Vitality, société par actions simplifiée, 102, boulevard de Sébastopol, 75003 Paris, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Le Sirenuse S.P.A., Via S. Sebastiano, 2, 84017 Positano (SA), Italy (applicant), represented by Akran Intellectual Property Srl, Via del Tritone 169, 00187 Roma, Italy (professional representative).

On 24/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 109 386 is upheld for all the contested services.

2. European Union trade mark application No 18 136 214 is rejected in its entirety.

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

REASONS

On 20/01/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 136 214 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 18 107 509 (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 18 107 509.

a) The services

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

Class 41: Education; providing of training.

The contested services, after a limitation made by the applicant on 25/06/2020, are the following:

Class 41: Sports and fitness services; health club services [health and fitness training]; health club services [health and fitness training]; sports and fitness services; education services relating to health; physical fitness centres (operation of -), all the aforesaid services except in the field of esports and video games.

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.

The contested health club services [health and fitness training]; health club services [health and fitness training] are included in the broad category of the opponent’s providing of training. Therefore, they are identical.

The contested education services relating to health are included in the broad category of the opponent’s education. Therefore, they are identical.

The opponent’s providing of training is a broad category which includes, inter alia, sports training (which covers instructions given by a sports/fitness trainer on how to improve a person’s physical condition, avoid injuries or advance in certain sports). The remaining contested services are sporting and fitness services which include, inter alia, providing of sports, fitness or exercise facilities. The services in comparison can share the same intended purpose, as they both could be directed towards the development or improvement of sports skills or sports performance. They could have the same commercial origin (e.g. a sports or fitness club which provides sporting facilities and sports instruction services). The services can share the same distribution channels and target the same public. Therefore, the contested sports and fitness services; sports and fitness services; physical fitness centres (operation of -), all the aforesaid services except in the field of esports and video games are similar to the opponent’s providing of training.

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, for example the opponent’s providing of training, and at business customers with specific professional knowledge or expertise as in the case of the contested physical fitness centres (operation of -), all the aforesaid services except in the field of esports and video games.

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 rendered.

c) The signs

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.

In the present case, the common element ‘VITALITY’ is meaningful as such or will be associated with a meaning in certain territories, for example in those countries where English, French or Spanish is understood. These meanings may reduce its distinctive character in relation to the services concerned. Consequently, for reasons of procedural economy, the Opposition Division will focus the comparison of the signs on the part of the public for whom the common element has no meaning and is, therefore, distinctive, as this will be where the likelihood of confusion between the marks is most likely. This is the case of, for instance, the Hungarian-speaking part of the relevant public.

The verbal element ‘DOLCE’ of the contested sign has no meaning. Therefore, it is distinctive.

The earlier mark’s figurative element is a fanciful device with no clear meaning and is, therefore, distinctive.

The figurative element of an octopus of the contested sign has no meaning for the relevant services. Therefore, it is distinctive.

The contested sign’s yellow square background is a figurative element of a purely decorative nature since it is a basic geometrical shape. Therefore, it is non-distinctive.

The slightly fancy typefaces of the signs’ verbal elements are not very significant, as they are quite common and have a minimal stylisation that will not draw the consumer’s attention away from the words they embellish.

Contrary to the applicant’s opinion, the signs have no elements that are more dominant than others.

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).

Visually, the signs coincide in the distinctive element ‘VITALITY’. However, they differ in the distinctive verbal element ‘DOLCE’ at the beginning of the contested sign and in the distinctive figurative elements of both signs (a fanciful device in the earlier mark and an octopus in the contested sign). The signs also differ in the non-distinctive figurative element of a yellow square background of the contested sign and in the typefaces of both signs.

Therefore, the signs are visually similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘VI-TA-LI-TY’, present identically in both signs. The pronunciation differs in the syllables ‘DOL-CE’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of an octopus in the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

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 that 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 services are partly identical and partly similar. They target the public at large and the professional public whose degree of attention may vary from average to high. The earlier mark has a normal degree of distinctiveness.

The marks are visually similar to a below-average degree and aurally similar to an average degree, while they are not conceptually similar. The similarities between the signs result from the fact that the earlier mark’s sole verbal element ‘VITALITY’ is completely reproduced in the contested sign in which it plays an independent and distinctive role. The marks differ in the contested sign’s verbal element ‘DOLCE’ and in their figurative elements, which will have less impact on the public than the verbal elements as explained above or are non-distinctive.

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. Furthermore, it is common practice in the relevant market for manufacturers/providers 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 a new product and/or service line or to endow a trade mark with a new, fashionable image.

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). In the present case, the additional verbal element ‘DOLCE’ and the figurative element of an octopus of the contested sign could be perceived as the opponent’s new line of services.

Therefore, the Opposition Division considers that the differences between the signs are insufficient to counterbalance the degree of similarity between them as regards identical and similar services. Therefore, the relevant public, even with a high degree of attention, may believe that these services come from the same undertaking or, at least, economically linked undertakings, particularly in the belief that the contested sign is a sub-brand of the earlier mark.

Considering all the above, there is a likelihood of confusion on the part of the Hungarian-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 18 107 509. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 18 107 509 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.

The Opposition Division

Boyana NAYDENOVA

Victoria DAFAUCE MENÉNDEZ

Martin MITURA

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.