OPPOSITION No B 2 431 115

H3 Brand SÀRL, 5, rue des Primeurs, 2361 Strassen, Luxembourg (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)

a g a i n s t

H3 Performance Limited, 4 Longden Street, Nottingham NG3 1JN, United Kingdom (applicant), represented by Stannard & Stannard, 8 Bluebell Place Saxon Meadow, Lutterworth, Leicestershire LE17 4UN, United Kingdom (professional representative).

On 16/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 431 115 is partially upheld, namely for the following contested services:

Class 41: Provision and operation of recreation and sports facilities; provision of teaching and coaching facilities for sports and recreational activities; sports training and teaching academies; group training and coaching; personal training; organisation of personal training programmes; organisation of sporting competitions; sports camps services in the UK and abroad; organisation of children's coaching sessions; training; training courses; all relating to the aforesaid services.

Class 43: Provision of food and drink; catering; rental of meeting rooms, meeting spaces and treatment rooms; rental of gym facilities and gym spaces; all relating to the aforesaid services.

2. Community trade mark application No 13 055 504 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of Community trade mark application No 13 055 504, namely against all the services in Classes 35, 41 and 43. The opposition is based on Community trade mark registration No 6 863 881 and Portuguese trade mark registration No 416 653. The opponent invoked Article 8(1)(b) 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.

1. Comparison of the services

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 services on which the opposition is based are the following:

Community trade mark registration No 6 863 881

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Portuguese trade mark registration No 416 653.

Class 43: Restaurant services.

The contested services are the following:

Class 35: Business advisory assistance and consultancy services relating to the establishment of franchises for recreation and sports facilities; provision of assistance in the operation of franchises; provision of assistance in the marketing of franchises; all relating to the aforesaid services.

Class 41: Provision and operation of recreation and sports facilities; provision of teaching and coaching facilities for sports and recreational activities; sports training and teaching academies; group training and coaching; personal training; organisation of personal training programmes; organisation of sporting competitions; sports camps services in the UK and abroad; organisation of children's coaching sessions; training; training courses; all relating to the aforesaid services.

Class 43: Provision of food and drink; catering; rental of meeting rooms, meeting spaces and treatment rooms; rental of gym facilities and gym spaces; all relating to the aforesaid services.

The earlier Community trade mark registration No 6 863 881 is registered for the entire class heading of Class 41 of the Nice Classification. It was filed on 24/04/2008. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the ninth edition.

The earlier Portuguese trade mark registration No 416 653 is registered for the entire class heading of Class 43 of the Nice Classification. It was filed on 01/06/2007. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the general indications in this class heading will be interpreted following a literal approach, which seeks to give those indications their natural and usual meaning.

As regards the contested services it must be noted that the addition at the end of each class ‘all relating to the aforesaid services’ does not seem to serve any purpose as it is not indicated what is relating to the aforesaid services. Therefore, this reference will not be taken into account in the comparison below.

Contested services in Class 35

The contested business advisory assistance and consultancy services relating to the establishment of franchises for recreation and sports facilities; provision of assistance in the operation of franchises; provision of assistance in the marketing of franchises are business support services offered by franchise consultant companies and aimed at supporting other businesses with the use of another firm's business model and brand for a prescribed period of time. These services have nothing in common with any of the opponent’s services in Classes 41 and 43. The expertise needed to provide the contested services is entirely different from the expertise required to provide the opponent’s education, entertainment, sports, cultural and restaurant services. The services in question satisfy very different needs, are offered by specialised companies in their corresponding fields, are not interchangeable and, therefore, are not in competition. The relevant consumer will not regard the opponent’s services and the applicants’ services as originating from the same undertaking. Therefore, they are deemed to be dissimilar.

Contested services in Class 41

The contested provision and operation of recreation and sports facilities; organisation of sporting competitions; sports camps services in the UK and abroad are included in the broad category of the sporting and cultural activities covered by the earlier CTM. Therefore, they are considered identical.

The contested provision of teaching and coaching facilities for sports and recreational activities; sports training and teaching academies; group training and coaching; personal training; organisation of personal training programmes; organisation of children's coaching sessions; training; training courses are included in the broad categories of the education; providing of training covered by the earlier CTM. Therefore, they are considered identical.

Contested services in Class 43

The contested provision of food and drink includes, as a broader category, the restaurant services covered by the earlier Portuguese mark. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested catering and the restaurant services covered by the earlier Portuguese mark have the same basic nature and purpose, as they both consist in providing food and drinks albeit in different places, the opponent’s services being offered in restaurants and the applicant’s services where requested. As a consequence, they are to some extent in competition with each other and may be offered by the same undertakings to the same end users. Therefore, they are highly similar.

The contested rental of meeting rooms, meeting spaces and treatment rooms; rental of gym facilities and gym spaces and the restaurant services covered by the earlier Portuguese mark complement each other as the applicant’s facilities are usually accompanied by a canteen or restaurant for their users to have something to eat and drink. Furthermore, the contested services are not only offered by conference, sports and leisure centres but also by hotels and not only to their guests but also to clients who merely want to hire their conference and leisure facilities. Likewise, the restaurant services covered by the earlier Portuguese mark are not only offered by restaurants but also by hotels whose restaurants are not only frequented by their guests but also by other clients. Therefore, consumers may well expect that both kinds of services may be provided by the same undertaking or by economically linked undertakings. Consequently, these services must be considered similar.

2. Comparison of the signs

H3 Earlier CTM Earlier Portuguese mark
Earlier trade marks	Contested sign

The relevant territory is the European Union and Portugal.

The earlier Community trade mark is a word mark consisting of the conjoined letter ‘H’ and number ‘3’. In this regard it is worth noting that in the case of word marks, it is the word as such that is protected, and not its written form. Therefore, it is irrelevant whether the word is presented in upper or lower case.

The earlier Portuguese mark is a black and white figurative mark consisting of a greyish square containing a black ‘h’ in its upper left corner and a white ‘3’ in its right part which misses part of its lower curve.

The contested sign is a figurative mark consisting of the conjoined letter ‘H’ and number ‘3’ depicted in a black, white bordered typeface with underneath in much smaller white print the word ‘PERFORMANCE’ placed against an orange rectangular background.

Visually, the signs are similar to the extent that they contain the letter-number combination ‘H3’. They differ in the additional elements of the contested sign, that is the word ‘PERFORMANCE’ set in white letters within an orange rectangle and the particular typeface of the element ‘H3’. The earlier Portuguese mark further differs in the design of the number ‘3’ and the particular composition of the ‘H’ and ‘3’ within the square.

Aurally, irrespective of the different pronunciation and words used in different parts of the relevant territory to refer to the letter ‘H’ and number ‘3’, the signs are similar to the extent that they coincide in the sound of the letter ‘H’ and number ‘3’. The pronunciation differs in the sound of the word ‘PERFORMANCE’ of the contested sign, which has no counterpart in the earlier marks.

Conceptually, the combination of the letter ‘H’ and number ‘3’, common to all marks, has no particular meaning. The additional word of the contested sign, ‘PERFORMANCE’, will be perceived by the English speaking part of the public in the relevant territories as ‘any recognized accomplishment’ or ‘ability to perform’, but is meaningless for the rest of the public. This means that for the English speaking part of the public the signs are conceptually not similar, while for the rest of the public a conceptual comparison is not possible and cannot influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural 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 earlier marks have no elements which could be considered clearly more distinctive or dominant (visually eye catching) than other elements.

The contested sign does. The word ‘PERFORMANCE’ is not only dominated by the element ‘H3’ but also less distinctive to the extent that it is perceived as ‘any recognized accomplishment’ or ‘ability to perform’ by the English speaking part of the public. Due to its relatively small script and subordinate position under the letter-number combination ‘H3’ the word ‘PERFORMANCE’ is less perceptible than the prominent element ‘H3’ and insofar as it is perceived as a reference to the object or quality of the services in question, it is also weak. However, even for the public that does not know the meaning of the word ‘PERFORMANCE’, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue, due to its subordinate position within the contested sign.

4. 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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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 services found to be identical and similar (also to a high degree) target the public at large, whose level of attention on the whole will be average.

6. Global assessment, other arguments and conclusion

The contested services have been found to be partly identical, partly similar (also to a high degree) and partly dissimilar to the services on which the opposition is based and must be assessed from the point of view of a public whose level of attention is average.

The signs are similar to the extent that they contain the letter-number combination ‘H3’. They differ in the additional elements of the contested sign, that is the word ‘PERFORMANCE’ set in white letters within an orange rectangle and the particular typeface of the element ‘H3’. The earlier Portuguese mark further differs in the design of the number ‘3’ and the particular composition of the ‘H’ and ‘3’ within the square.

However, these differentiating elements are not sufficient to counteract, on a visual and phonetic level, the similarity deriving from the common element, ‘H3’.

As regards the additional word ‘PERFORMANCE’ of the contested sign, this is written in such a small script underneath the elements ‘H3’ that the consumers will not pay particular attention to it. In addition, the impact of this element is further limited to the extent that it is perceived by part of the public as a reference to the quality or object of the services in question.

Also the mark(s)’ figurative aspects do not have much of an impact on the assessment of the likelihood of confusion, since they will be perceived as a particular graphic means of bringing the verbal element(s) to the consumers’ attention and, therefore, will not detract their attention from the word they merely try to embellish.

Therefore, on the basis of the foregoing, it must be held that the differences between the marks will not enable part of the public to safely distinguish the marks. Therefore, a substantial part of the relevant public, when confronted with the contested sign in relation to identical and similar services, is likely to think that these services come from the same undertaking or, as the case may be, from economically linked undertakings.

The applicant’s argument that it is merely interested in the operation of a gym and has no aspirations to open a restaurant cannot change this outcome, as these factual circumstances are irrelevant for the assessment of the current proceedings. The aim of opposition proceedings is merely to determine whether there is a conflict between the earlier mark and the contested CTM application as filed or registered.

Consequently, the Opposition Division concludes that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registration No 6 863 881 and Portuguese trade mark registration No 416 653.

It follows from the above that the contested sign must be rejected for the services found to be identical and similar to those of the earlier mark. The opposition is not successful insofar as the remaining dissimilar services are concerned, as identity or similarity of goods and services is a necessary condition for the application of Article 8(1) 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. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Julia SCHRADER

Adriana VAN ROODEN

Dorothée SCHLIEPHAKE

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.