OPPOSITION No B 3 114 095

Editorial Planeta, S.A., Avda. Diagonal, 662-664, 08034 Barcelona, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Hilodi - Historic Lodges & Discoveries S.A., Rua do Choupelo nº 250, 4400-088 Vila Nova de Gaia, Portugal (applicant), represented by Alexandra Paixão, Av. António Augusto de Aguiar, Nº 148, 4ºC e 5ºC, 1050-021 Lisboa, Portugal (professional representative).

On 16/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 114 095 is upheld for all the contested services.

2. European Union trade mark application No 18 163 308 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 (in Class 41) of European Union trade mark application No 18 163 308 (word mark: ‘PLANET CORK’). The opposition is based on, inter alia, Spanish trade mark registration No 1 041 840 (word mark: ‘PLANETA’). The opponent invoked Article 8(1)(b) and Article 8(5) 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 Spanish trade mark registration No 1 041 840.

a) The services

The services in Class 41 on which the opposition is based are the following:

Education and entertainment services and, in particular, publishing and audiovisual recordings services, and cinematographic production services.

The contested services in Class 41 are the following:

Teaching; training; entertainment services; sporting and cultural activities.

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

The term ‘in particular’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the services include, inter alia, the nature and purpose of the 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.

Entertainment services are identically contained in both lists of services.

The contested teaching; training overlap with the opponent’s education. Therefore, they are identical.

The remaining contested sporting and cultural activities have the same purpose, public and distribution channels as the opponent´s entertainment services. Therefore, they are similar.

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 at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness is average.

c) The signs

PLANETA	PLANET CORK
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).

Both signs are word marks, which are protected in all fonts and typefaces.

The earlier trade mark, consisting of a Spanish word, will clearly be understood by the Spanish public as meaning ‘planet’. This also applies to the first element of the contested sign ‘PLANET’: not only does it belong to the extended basic vocabulary of English, it only differs from the equivalent Spanish word in the absence of the final letter ‘A’.

The element ‘CORK’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. Due to its position after ‘PLANET, it cannot be excluded that the relevant public will perceive it as the name of the planet in question.

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.

Visually and aurally, the first five letters of the earlier trade mark ‘PLANET’ are the first element of the contested sign. The signs differ in the additional letter ‘A’ at the end of the earlier trade mark and in the additional word ‘CORK’ of the contested sign. Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, the signs coincide in the common meaning of the words ‘PLANET’ and ‘PLANETA’. The contested sign’s additional word ‘CORK’ qualifies the previous word ‘PLANET’. Therefore, the signs are at least similar to an average 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

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 which 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 (recital 8 of the EUTMR). 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Taking into account the (at least) average degree of visual, aural and conceptual similarity, the normal degree of distinctiveness of the earlier trade mark, the not more than average degree of attention of the public and the identical or similar services, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, and, therefore, the opposition is upheld.

Contrary to the applicant’s argument, the differences between the signs are not sufficient to clearly distinguish them. They will be perceived as coming from the same or economically linked undertakings. The contested sign’s additional word ‘CORK’ does not lead to a conceptual difference, because it has no meaning in Spanish and could be perceived as the name of an unknown planet. The applicant argues that the parties are engaged in different economic activities. However, the Opposition Division must make its decision on the basis of the information contained in the Register. The applicant also refers to various registrations with the element ‘PLANET’ in the Office’s Register. However, in the present case, the relevant territory is not the EU but Spain. Moreover, the two opposition decisions referred to by the applicant are at least 15 years old, so they neither represent the current case-law nor the Office’s current practice.

The opposition is well founded under Article 8(1)(b) EUTMR.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right ‘PLANETA’ 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Gonzalo BILBAO TEJADA

Peter QUAY

Claudia MARTINI

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.