OPPOSITION Nо B 3 111 908

 

The 5 Elements Events, Calle Modesto Lafuente 10, 1ºA, 34800 Aguilar de Campoo, Spain (opponent), represented by Iberpatent, Félix Boix 9-1° Derecha, 28036 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Meletis Stamatis, Paleopanagias 1, 19002 Athens, Greece (applicant), represented by Regimark, Pulkveza Brieza 7-622c, 1010 Riga, Latvia (professional representative).

On 29/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 111 908 is upheld for all the contested services.

 

2.	European Union trade mark application No 18 145 517 is rejected in its entirety.

 

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

 

REASONS

 

On 18/02/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 145 517 for the figurative sign , namely against all the services in Class 41. The opposition is based on Spanish trade mark registration No M 3 649 919 for the figurative mark . The opponent invoked Article 8(1)(b).

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

Class 41: Education services; training; entertainment services; sports and cultural activities; facilitation of information related to education, entertainment and sports; celebration of sports events; ticket information services for sports events; publication services for books and non-advertising texts; non-download online electronic publications supply services; organization and direction of competitions (educational or recreational activities), organization of awards.

The contested services are the following:

Class 41: Entertainment, sporting and cultural activities; organising of sporting events, competitions and sporting tournaments; organization of competitions relating to motor vehicles; arranging and conducting automobile racing competition events; organisation of automobile races; entertainment in the nature of automobile races; provision of information relating to sporting events; ticket information services for sporting events; conducting of live sports events.

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

The contested organising of sporting events, competitions and sporting tournaments; organization of competitions relating to motor vehicles; arranging and conducting automobile racing competition events; organisation of automobile races; entertainment in the nature of automobile races; conducting of live sports events are included in the broad category of the opponent’s entertainment and sports. Therefore, they are identical.

The contested provision of information relating to sporting events; ticket information services for sporting events are included in the broad category of the opponent’s facilitation of information related to entertainment and sports. Therefore, they are identical.

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, to some extent, at a professional public with specific professional knowledge or expertise (e.g. organization of competitions relating to motor vehicles).

The degree of attention is considered to be average with regard to the services aimed at the general public. In relation to the professional public the 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

 

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 sign composed of the verbal element ‘HIXPANIA’ and the phrase ‘THE CONQUEST OF HARD ENDURO’. All letters are slightly stylised, with the exception of the third letter. Indeed, although the third letter is depicted in a much more stylized typeface (i.e. two white crossed lines against a shield), the majority of the consumers will recognize it as the letter ‘X’. This is because consumers tend to recognize a certain letter in a string of letters or a word that has either a meaning for them or because the device is similar to a certain letter. Furthermore, the earlier mark contains a figurative element that might be seen as a sketch of a castle on a mountain.

The contested sign is a figurative sign composed of the verbal elements ‘HISPANIA’ and ‘RALLY’, both depicted in slightly stylised letters and placed against a square red and beige background.

With regard to the earlier mark the word ‘HIXPANIA’ can be associated, after taking a mental step, with the Iberian peninsula in the Roman world. Therefore, its distinctiveness is limited. The verbal elements ‘THE CONQUEST OF HARD’ of the earlier mark have no meaning for the relevant public and are, therefore, distinctive. The word ‘ENDURO’ of the earlier mark will be associated with ‘sports competition for cars or motorcycles, held on open roads and other roads’ (extracted from https://dle.rae.es/enduro?m=form at RAE Dictionary on 23/04/2021). Bearing in mind that the vast majority of the opponent’s services can be related to sports competition for motorcycles, this element is very weak for these services. It is, however, distinctive for the opponent’s cultural activities.

As far as the word ‘HISPANIA’ of the contested sign is concerned, likewise, it can be associated with the Iberian peninsula (as explained above), also having a limited distinctiveness. The element ‘RALLY’ of the contested sign will be understood as ‘endurance motorcycle race, contested cross-country, on a fixed route and avoiding natural obstacles’ (extracted from https://dle.rae.es/rally?m=form at REA Dictionary on 23/04/2021). Bearing in mind that the vast majority of the opponent’s services can be related to endurance motorcycle race, this element is very weak for these services. It is, however, distinctive for the opponent’s cultural activities.

 

The element ‘HIXPANIA’ in the earlier sign and the element ‘HISPANIA’ in the contested sign are the dominant elements as they are the most eye-catching.

With regard to the signs in conflict consumers generally tend to focus on the beginning or top of a sign when they encounter a trade mark. This is because the public reads from left to right or from top to bottom, which makes the part placed at the left or on the top of the sign (the initial part) the one that first catches the attention of the reader. It is therefore relevant to note that in the present case the coincidences between the marks are found at the tops of the signs. Therefore, the above rule strengthens the fact that the public will focus its attention on the words ‘HIXPANIA’ and ‘HISPANIA’ respectively.

The figurative elements in the earlier mark have no direct meaning for the services in question. Therefore, they are distinctive. In this regard 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). Their role will be therefore secondary.

The stylisation of the contested sign’s background is distinctive. Bearing in mind the above rule and the fact that it has rather a decorative function, its role is also secondary.

The letters in the signs in conflict are slightly stylised (with the exception of the third letter of the earlier mark). This stylisation, being rather commonplace, has a marginal role in the comparison.

Visually, the signs coincide in ‛HI*PANIA’, present identically in both signs’ dominant elements. These elements differ, however, in their third letters, namely ‛X’ of the earlier mark and ‘S’ of the contested sign. Furthermore, they differ in the phrase ‘THE CONQUEST OF HARD ENDURO’ of the earlier mark and the word ‘RALLY’ of the contested sign. They differ also in the figurative elements of the earlier mark, the background of the contested sign and the slight stylisation of the letters in both signs.

 

Therefore, and taking into account the distinctiveness and dominance issues, the signs are visually similar to a below-average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛HI*PANIA’, present identically in both signs’ dominant elements. With regard to the latter the pronunciation differs in the sound of the letters ‛X’ of the earlier mark and ‘S’ of the contested signs which are the third letters in these dominant verbal elements. The relevant public will pronounce these letters in a very similar way. Furthermore, they differ in the phrase ‘THE CONQUEST OF HARD ENDURO’ of the earlier mark and the word ‘RALLY’ of the contested sign.

However, consumers tend not to pronounce all the elements of signs, simply to economise on words because they take time to pronounce, especially when they are easily separable from the dominant element of the mark (18/09/2012, T-460/11, Bürger, EU:T:2012:432, § 48). Therefore, it is very plausible that the relevant public will not pronounce the additional verbal elements, namely ‘THE CONQUEST OF HARD ENDURO’ of the earlier mark and the word ‘RALLY’ of the contested sign, given their smaller size and length.

Therefore, and taking into account the distinctiveness and dominance issues, the signs are aurally similar to an above-average degree. 

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning (both make reference to the geographical term ‘HISPANIA’), the signs are conceptually similar to a low degree, since the coincide resides in elements with a limited distinctiveness.

 

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, despite the presence of elements in the mark that are of limited distinctiveness or very weak, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

 

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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).

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).

The services are identical and they target the public at large and, to some extent, a more professional public, whose degree of attention is respectively average and may vary from average to high. The signs are visually similar to a below-average degree and aurally similar to an above-average degree. Conceptually, they are similar to a low degree. The earlier mark has at least a minimum level of distinctiveness.

The signs in conflict coincide in some of their letters, namely ‛HI*PANIA’. Furthermore, the signs contain the words ‘ENDURO’ (earlier mark) and ‘RALLY’ (contested sign) that bring to mind sports competition for cars or motorcycles. They differ in the third letters of the dominant verbal elements in the signs in conflict, that is, ‘X’ and ‘S’ respectively. These differences can be however overlooked or even go unnoticed when pronounced by the public. Furthermore, the signs differ in the figurative elements of the earlier mark, the background of the contested sign and the different, albeit slight, stylisation of the letters in both signs. These differences are have however less influence on the comparison, as they play a secondary (or marginal) role. Accordingly, the Opposition Division finds that the differences between the signs are not sufficient to outweigh the similarities between the signs.

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).

 

Considering all the above, there is a likelihood of confusion on the part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No M 3 649 919. 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

 

 

Julia GARCÍA MURILLO

Michal KRUK

Chantal VAN RIEL

 

 

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.