OPPOSITION No B 2 418 716

Gruner + Jahr GmbH & Co KG, Am Baumwall 11, 20459 Hamburg, Germany (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft Mbb, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Geo Tenerife Ltd, Wood Cottage; Ashtead Woods Road, Ashtead, Surrey Surrey KT21 2EN, United Kingdom (applicant), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain professional representative).

On 27/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 418 716 is upheld for all the contested goods and services.

2. Community trade mark application No 12 901 914 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 12 901 914. The opposition is based on, inter alia, German trade mark registration No 30 2009 049 890 and international trade mark registration No 863 134 designating the European Union. The opponent invoked Article 8(1)(b) and 8(5) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 German trade mark registration No 30 2009 049 890 and international trade mark registration No 863 134 designating the European Union.

1. The goods and services

The goods and services on which the opposition is based are, among others, the following:

German trade mark registration No 30 2009 049 890

Class 9: Recorded and unrecorded electronic sound/image carriers, data memories, in particular COs, CD-ROMs, CD-is, MP3s, DVDs, floppy discs, video tapes, microfilms each for online and offline operations, all for digital data transmission; apparatus for recording, transmission, reception or reproduction of sound and images; software; data processing programs; computer operating programs; telescopes; microscopes; electronic publications (downloadable).

Class 39:Travel arrangement.

Class 41: Education; providing of training; entertainment; services of a publishing house (excluded printing services); publication of material in printed and electronic form for online and offline publishing house operations; publication of audio books; publication of works consisting of texts (other than publicity texts) and/or printed matter with images and/or films, in particular multimedia works, included in this class, each also tor transmission via digital data networks; sporting and cultural activities; electronic publications (not downloadable).

International trade mark registration No 863 134 designating the European Union

Class 9: Magnetic, optical, magneto-optical and electronic sound and image recording carriers and data memories, in particular CDs, CD ROMs, CD-Is, DVDs, floppy disks, video tapes, recording discs and microfilm, for on and off-line use; tape recorders, equipment for receiving, as well as for recording, transmission and reproduction of sound and images; hardware, in particular data processing apparatus, computers and computer peripheral devices; software; data processing programs, computer operating programs.

Class 41: Education, providing of training, entertainment, in particular radio and television entertainment; services of a publisher (except printing); publication and issuing of texts in printed and electronic form as an off-line and online publisher, included in this class; sporting and cultural activities.

The contested goods and services are the following:

Class 9: Downloadable publications.

Class 39: Travel arrangement, organisation of sightseeing and excursions for cultural purposes.

Class 41: Organisation of training, leisure, entertainment, amusement and recreational activities; arranging of congresses, seminars, training workshops and symposiums.

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

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and 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 (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

Contested goods in Class 9

The contested downloadable publications are identically included in the opponent’s goods.

Contested services in Class 39

Travel arrangement is identically contained in both lists of goods and services.

The contested organisation of sightseeing and excursions for cultural purposes are included in the broad category of the opponent’s travel arrangement covered by the earlier German trade mark registration No 30 2009 049 890.Therefore, they are considered identical.

Contested services in Class 41

The contested organisation of training, leisure, entertainment, amusement and recreational activities; arranging of congresses, seminars, training workshops and symposiums are included in the broad categories of the opponent’s education, providing of training, entertainment. Therefore, they are considered identical.

2. The signs

GE No 30 2009 049 890 IR No 863 134
Earlier trade mark	Contested sign

The relevant territory is Germany and the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). The same applies to an international trade mark registration designating the European Union. 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 Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the word ‘GEO’. However, they differ in the word ‘MINI’ in the earlier mark No 1 and in the word ‘TENERIFE’ in the contested sign. Moreover, they differ in the colours and slightly stylised typeface of the signs, as well as, in the additional figurative elements in the contested sign.

Aurally, the pronunciation of the signs coincides in the syllables ‛GE‑O’ present identically in the signs, and to that extent the signs are aurally similar. The pronunciation differs in the syllables ‘MI-NI’ of the earlier mark No 1 and in the syllables ‘TE-NE-RI-FE’ of the contested sign.

Conceptually, the verbal element ‘GEO’ will be perceived by the German public as a prefix indicating ‘earth’. The element ‘MINI’ in the earlier mark No 1 will be perceived as, among other meanings, something very small of its kind. The element ‘TENERIFE’ is a Spanish word that refers to the name of one of the Canary Islands, and will be perceived as such by the relevant public because of its resemblance to the German equivalent word ‘Teneriffa’ and because it is a common touristic destiny among the German public.

Since the signs will be associated with a similar meaning to the extent that all the signs contain the element ‘GEO’, the signs are conceptually similar.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The element ‘MINI’ of the earlier mark No 1 will be associated with something very small of its kind. Bearing in mind that the relevant goods and services are publications, travel arrangements, education and entertainment, it is considered that this element is weak for these goods and services since it denotes that these goods are of less size or that these services are short or that both are aimed to kids. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘TENERIFE’ of the contested sign will be associated with the name of one of the Spanish Canary Islands which is a common touristic destiny for German public. Bearing in mind that the relevant goods and services are publications, travel arrangements, education and entertainment, it is considered that this element is weak for a part of these goods and services, namely for downloadable publications in Class 9; travel arrangement, organisation of sightseeing and excursions for cultural purposes in Class 39 and organisation of leisure, entertainment, amusement and recreational activities in Class 41.

The public understands the meaning of the element and will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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 earlier mark No 1 is particularly distinctive by virtue of intensive use or reputation.

According to the opponent, the earlier mark No 2 has been extensively used and enjoys reputation. 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak element in the earlier mark No 1 as stated above in section c) of this decision.

5. 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 goods and services found to be identical are directed at the public at large. The degree of attention is considered to be average.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’).

The goods under comparison are identical and target the public at large that will pay an average degree of attention when purchasing them.

The conflicting signs are visually, aurally and even conceptually similar insofar as they share the verbal element ‘GEO’ which composes the earlier mark No 2 and is depicted at the beginning of the earlier mark no 1 and the contested sign. Thus, this is the first element that consumers firstly perceive when seeing the marks. It should be taken into account that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the common word in the first elements of the marks at issue has to be taken into account when assessing the likelihood of confusion between the marks.

The marks differ in the verbal element ‘MINI’ in the earlier mark No 1 and the verbal element ‘TENERIFE’ in the contested sign, as well as, in the colours and slight stylisation of both marks and the figurative elements in the contested sign.

However, from the facts provided in section c) of this decision it has been concluded that the word ‘MINI’ in the earlier mark No 1 is a weak element since it alludes to the size of the goods or the duration of the services at issue. Therefore, its impact in the relevant public will be lesser than the other elements of the mark.

Similarly, the verbal element ‘TENERIFE’ of the contested sign, will be recognised by the public as a name of one common holiday destination, and therefore, its impact in the relevant public for part of the goods and services will be lesser than the other verbal element of the mark as well.

As far as, the stylisation of the marks is concerned, the different typefaces used are not particularly distinctive and do not contribute to differentiating the signs from one another.

Regarding the colour and figurative elements of the contested sign, it is recalled 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 components. 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.

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. 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 lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C 39/97, ‘Canon’, paragraph 17 et seq.). In the present case, the identity between the goods and services at hand offsets a lesser degree of similarity between the signs.

Furthermore, it must be pointed out that likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse two signs directly, believe that they come from the same undertaking or from economically related ones. In the present case, it is likely that the earlier mark will be associated by the public with the contested mark, creating an impression that the goods and services originate from the same undertaking or economically linked undertakings, especially as all the signs have the abovementioned word ‘GEO’ in common and that the contested mark with its additional verbal element ‘TENERIFE’ represents a new line or a parallel line of the opponent’s products (Jako-O/Lagerfeld Jako T‑220/06).

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public. As stated above in section b) 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 German trade mark registration No 30 2009 049 890 and international trade mark registration No 863 134 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing mark No 2 due to reputation as claimed by the opponent. The result would be the same even if the earlier mark No 2 enjoyed an enhanced degree of distinctiveness.

As the above mentioned earlier rights lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

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

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Agueda MAS PASTOR

Victoria DAFAUCE MENÉNDEZ

Karin KHUL

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.