OPPOSITION No B 2 562 406

Société Paneuropéene d’édition et d’exploitation de documentaires, 1, quai du Point du Jour, 92100 Boulogne Billancourt, France (opponent), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

Ushuaia Merchandising S.L., Avda. Bartolomé Roselló 18, 07800 Eivissa (Islas Baleares), Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).

On 28/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 562 406 is partially upheld, namely for the following contested goods and services:

Class 16: Forms; newspapers; magazines; periodicals (magazines); newsletters; periodicals; books; index cards (stationery); scrapbooks; catalogues; booklets; posters; paper; paperboard; printed matter; publications; paper and/or plastic bags; prospectuses; sign boards made of cardboard or paper; labels, not of textile; stationery; adhesives for stationery purposes; stickers [stationery]; pencils; pen; ball pens; office requisites (except furniture).

Class 18: Backpacks; school book bags; document holders made of leather and imitations of leather.

Class 35: Advertising; business management; business management and organisation consultancy; bill-posting; dissemination of advertising matter and direct mail advertising; publicity columns preparation; sample distribution; organisation of exhibitions and trade fairs for commercial or advertising purposes; publicity material rental; on line advertising on a computer network; publication of publicity texts; advertising by mail order, radio and television advertising; sales promotion (for others); organisation of promotional activities to obtain customer loyalty; organising promotional campaigns; demonstration of goods; shop window dressing; management of customer loyalty cards; commercial agencies; wholesaling, sale in shops and sale via global computer networks of briefcases, backpacks, attaché cases, computer cases, tablet cases, pencil holders, writing sets, all the aforesaid being of leather or morocco leather, backpacks of leather, electric goods and electronic goods including electronic organisers, alarms, speakers, amplifiers, antennas, barometers, scales, electric batteries, bulbs, electric cables, calculators, chronographs, transmitters and receivers of electronic signals, illumination regulators, data processing apparatus, optical readers, torches, printers for computers, electronic publications (downloadable and non-downloadable), computers, computer games, photographic, audio and video equipment and accessories, optical goods and sunglasses, audio tapes, CDs, records, video tapes, digital versatile discs (DVDs), optical discs for high-definition video, telephones and mobile telephones, stationery, printed publications and printed matter, diaries and personal organisers, greetings cards, gift wrap; musical recordings.

Class 39: Travel and sightseeing arrangement (tourism).

2. European Union trade mark application No 13 946 116 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 946 116 for the word mark ‘USHUAÏA’, namely against all the goods and services in Classes 16, 18, 25, 35 and 39. The opposition is based on French trade mark registration No 3 951 116 for the 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.

a) The goods and services

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

Class 16: Paper; cardboard; cardboard articles; printed matter; newspapers; books; manuals; promotional pamphlets; pamphlets; publications; magazines; periodical reviews, paintings (pictures) and engravings, wrapping paper; all kinds of bags and film of paper or plastic for packaging; shields (paper seals); paper or cardboard signs, non-textile labels, flags (of paper); posters; postcards, transfers [decalcomanias]; graphic prints; engravings; pictures; bands of paper or cardboard for recording computer programs; teaching material in the form of games (books); printed matter (printing products); printers’ type; printing blocks; instructional and teaching material (except apparatus); subscription cards (non-magnetic); credit cards (nonmagnetic); guides tor television and radio programs.

Class 35: Advertising and business information services; updating of advertising material; assistance and advice for business organization and management; business consultancy; billboard advertising, distribution of advertising material (leaflets, prospectuses, printed matter, samples), particularly for national or international mail-order sale; services of a franchiser, namely commercial or industrial management or operational assistance; commercial information and advice services; commercial promotion for others in all forms, and especially via the provision of privileged user cards; carrying out commercial activities and sales promotion for others of all kinds and on all media, especially for national or international mail order sale; data entry, formatting, compilation and processing services, namely, data entry, gathering, systematization, and more generally recording, transcription and systematization of written communications and sound and/or video recordings; subscription services for third parties to printed goods and all information media, texts, sounds and/or images, audiovisual goods or multimedia goods, document reproduction; rental of any advertising materials and commercial presentations; computerized file management, business advice and advertising related to data communication services; subscription to telecommunications services for others; subscription to television channels; subscription to a telephone or computer service (Internet); arranging subscriptions to digital, electronic or non-electronic publications for others; arranging subscriptions to a telematic service; arranging subscriptions to a television channel; advice (namely consumer information) on selecting computer and telecommunication equipment; wholesale and retail sale of audiovisual, computer and telecommunication products, namely videotapes, televisions, video recorders, personal stereos, tape recorders, radios, high, fidelity (Hi-Fi) equipment, decoders, portable telephones, computers, magnetic tapes, disc changers (data processing equipment), printed circuits, integrated circuits, computer keyboards, compact discs (audio-video), compact optical discs, couplers (data processing equipment), floppy disks, magnetic data media, video screens, scanners, computer printers, interfaces (data processing equipment), readers (data processing equipment), software (recorded programs), microprocessors, modems, monitors (hardware), monitors (computer programs), computers, computer memories, computer peripherals, recorded computer programs, processors (central processing units), recorded computer operating programs, chips (integrated circuits), retail sale of antennas; news clipping services; rental of advertising space; advertising mailing services; subscriptions to radio programs, sound and video recordings; organization of exhibitions for commercial or advertising purposes; marketing research; teleshopping with offers of sale; administration of exhibition sites; administrative management of exhibition sites for commercial or advertising purposes.

Class 41: Entertainment; radio and television entertainment on all kinds of media, namely television set, computer, personal stereo, portable video player, personal assistant, mobile telephone, computer networks, the Internet; services for teaching and training, education and entertainment; sporting and cultural activities; correspondence courses; creation and publication of texts other than advertising texts, illustrations, books, journals, newspapers, periodicals, magazines, publications of all types and in all forms (other than for advertising purposes) including electronic and digital publications (other than advertising), audio and/or video media, multimedia carriers, (interactive discs, audio-digital CD-ROMs), multimedia programs (computer editing of text and/or still or animated images), games, particularly television and audiovisual games, games on compact disc and digital audio compact disc, on magnetic media; editing of radio and television programs, audiovisual and multimedia programs (computer editing of texts and/or images, still or animated, and/or of musical or non-musical sounds), for interactive use or non-interactive use; organization of competitions relating to education or entertainment, of games (entertainment); creation and production of news programs, of radio and television entertainment, of audiovisual and multimedia programs (computer editing of texts and/or still or animated images, and/or musical or non-musical sounds), for interactive or other use; organization of shows; artistic production and rental of films and cassettes including videocassettes, and more generally all sound and/or visual media and multimedia carriers (interactive discs, compact and read-only digital audio discs); leisure services, namely arranging leisure events (entertainment); editing of videotape, photographic reporting; scriptwriting services; translation services; videotaping; rental of cinematographic projection apparatus, decoders, encoders, antennas, parabolic dishes, radio and television sets, audio and video apparatus, cameras, personal stereos, portable video players, theater props and accessories therefor; rental of devices (apparatus) for access to interactive audiovisual programs; game services offered on line (from a communication network), gambling services; booking of seats for shows; consultancy in the audiovisual field; publication of electronic books and journals on-line; electronic desktop publishing; rental of decoders and any audiovisual apparatus and instruments; teaching and training, education and entertainment services, organization of competitions in the field of education and entertainment, production services for radio and television programs for information and entertainment purposes.

The contested goods and services are the following:

Class 16: Forms; newspapers; magazines; periodicals (magazines); newsletters; periodicals; books; index cards (stationery); scrapbooks; catalogues; booklets; posters; paper; paperboard; printed matter; publications; paper and/or plastic bags; prospectuses; sign boards made of cardboard or paper; labels, not of textile; stationery; adhesives for stationery purposes; stickers [stationery]; pencils; pen; ball pens; office requisites (except furniture).

Class 18: Leather and his/her imitations; animal skins, hides; trunks(luggage); valises; umbrellas; parasols; walking sticks; whips, harness and saddlery; casual bags; handbags; travelling handbags; backpacks; wallets (pocket); clutches [purses]; purses; school book bags; document holders made of leather and imitations of leather; gentlemen’s handbags; parasols; umbrellas; harness.

Class 25: Clothing; footwear; headgear.

Class 35: Advertising; business management; business management and organisation consultancy; bill-posting; dissemination of advertising matter and direct mail advertising; publicity columns preparation; sample distribution; organisation of exhibitions and trade fairs for commercial or advertising purposes; publicity material rental; on line advertising on a computer network; publication of publicity texts; advertising by mail order, radio and television advertising; sales promotion (for others); organisation of promotional activities to obtain customer loyalty; organising promotional campaigns; demonstration of goods; shop window dressing; management of customer loyalty cards; commercial agencies; wholesaling, sale in shops and sale via global computer networks of T-shirts, clothing, footwear, handbags, goods of leather, namely wallets of leather, harness and saddlery, laces, straps, leatherware, namely wallets, briefcases, travelling bags, suitcases, backpacks, handbags, luggage tags, luggage sets, attaché cases, wallets for cards, travel cases, computer cases, tablet cases, mobile telephone covers, belts, keyrings, pencil holders, writing sets, all the aforesaid being of leather or morocco leather, purses of leather, backpacks of leather, jewellery, costume jewellery, perfumery, toiletries and cosmetics, candles, electric goods and electronic goods including electronic organisers, alarms, speakers, amplifiers, antennas, barometers, scales, electric batteries, bulbs, electric cables, calculators, chronographs, transmitters and receivers of electronic signals, illumination regulators, data processing apparatus, optical readers, torches, printers for computers, electronic publications (downloadable and non-downloadable), computers, computer games, photographic, audio and video equipment and accessories, optical goods and sunglasses, audio tapes, CDs, records, video tapes, digital versatile discs (DVDs), optical discs for high-definition video, telephones and mobile telephones, musical instruments, stationery, printed publications and printed matter, diaries and personal organisers, greetings cards, gift wrap, bags, luggage, leather and travel articles, umbrellas, furniture, soft furnishings, decorations including picture frames, mirrors, pictures, candle holders, candelabra, coverings of textile, tablecloths, cushions, candles, flower pots, decorative boxes, vases, works of art, glass, glassware, porcelain and fine china, household utensils and containers, household linen, bed covers and table covers, towels, carpets and rugs, games and playthings and sporting articles and equipment, exercise equipment, equestrian articles, alcoholic and non-alcoholic beverages, tobacco and tobacco products, smokers’ articles, motor vehicles and parts for motor vehicles and musical recordings.

Class 39: Rental of garage parking places; transport; package and storage of goods; travel and sightseeing arrangement (tourism); rental of cars, taxis, driving services and newspaper delivery.

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 terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicate 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, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 16

Newspapers; magazines; posters; paper; printed matter; publications; labels, not of textile are identically contained in both lists of goods (including synonyms).

The contested periodicals (magazines); newsletters; periodicals; books; catalogues; booklets; prospectuses are included in the broad category of the opponent’s publications. Therefore, they are identical.

The contested index cards (stationery); scrapbooks; sign boards made of cardboard or paper; paperboard are included, or overlap with, the opponent’s cardboard articles. Therefore, they are identical.

The contested forms; stickers [stationery] are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested stationery includes, as a broader category, the opponent’s paper. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested paper and/or plastic bags are included in the broader category of the opponent’s all kinds of bags and film of paper or plastic for packaging. Therefore, they are identical.

The contested adhesives for stationery purposes; pencils; pen; ball pens; office requisites (except furniture) are at least similar to a low degree to the opponent’s paper. These are all stationery goods, and, consequently, can be found next to writing instruments in stationery shops and sections of department stores, and target the same relevant consumers. They are also frequently sold together in sets.

Contested goods in Class 18

The contested backpacks; school book bags; document holders made of leather and imitations of leather are similar to a low degree to the opponent’s paper; cardboard; cardboard articles in Class 16 as it is customary for manufacturers of stationery to manufacture stationery for the office or school. In addition to their range of stationery and office requisites, they also offer backpacks, rucksacks, school satchels, satchels and office and briefcases. Even though the nature of the opposing goods is different, they have a similar purpose: school or office supplies. Consequently, they target the same public and are sold in the same stationery stores and department store sections (03/01/2020, R 242/2019‑2, Pax/Pax, § 17-19).

The rest of the contested goods, namely leather and his/her imitations; animal skins, hides; trunks(luggage); valises; umbrellas; parasols; walking sticks; whips, harness and saddlery; casual bags; handbags; travelling handbags; wallets (pocket); clutches [purses]; purses; gentlemen’s handbags; parasols; umbrellas; harness are dissimilar to the goods in Class 16 as their purpose is not for office or school use, but mainly for transport, aids for walking (sticks) or weather protection (umbrella, parasols). Their nature, distribution channels, sales outlets, producers are different, and they are neither in competition nor complementary.

Contrary to the opponent’s arguments, the contested goods in Class 18 are not complementary to the services in Class 41; goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). Based on that, there is no complementarity between the goods and services.

The same applies to the contested goods in Class 18 and the opponent’s services in Class 35, as these target a different public: undertakings (e.g. advertisement and business management services). Furthermore, their nature, method of use, and purpose are different and they are neither in competition or complementary. The same applies to the retail services as these are limited to IT products, which are not similar to the goods in Class 18.

Contested goods in Class 25

The contested clothing, footwear and headgear are dissimilar to the opponent’s goods and services as they have nothing relevant in common, in broad terms, with the printed matter in Class 16, advertisement, business management or retail of electronic goods in Class 35 or entertainment services in Class 41. These goods and services have different purposes, distribution channels, sales outlets, producers and methods of use and are neither in competition nor complementary.

Contested goods in Class 35

Advertising; organisation of exhibitions for commercial or advertising purposes are identically contained in both lists of services.

The contested business management (listed twice); organisation consultancy; commercial agencies are included in, or overlap with, the broad category of the opponent’s business consultancy. Therefore, they are identical.

The contested bill-posting; dissemination of advertising matter and direct mail advertising; publicity columns preparation; sample distribution; publicity material rental; on line advertising on a computer network; publication of publicity texts; advertising by mail order, radio and television advertising; sales promotion (for others); organisation of promotional activities to obtain customer loyalty; organising promotional campaigns; demonstration of goods; shop window dressing; management of customer loyalty cards are all included in, or overlap with, the broader category of the opponent’s advertising. Therefore, they are identical.

The contested organisation of trade fairs for commercial or advertising purposes overlaps with the opponent’s organization of exhibitions for commercial or advertising purposes. Therefore, they are identical.

The contested services of wholesaling, sale in shops and sale via global computer networks can be divided into three groups: 1) wholesale of goods that are identical to the wholesale services of the same specific goods of the opponent, 2) wholesale services of goods that are similar and similar to a low degree to the opponent’s goods, and 3) wholesale services of goods that are dissimilar to the opponent’s goods.

1) Wholesale services of specific goods and wholesale services of other goods have the same nature as both are wholesale services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

Similarity is found between those wholesale services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between wholesale of specific goods on the one hand and wholesale of other goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors.

The contested wholesale services of similar goods: electric goods and electronic goods including electronic organisers, alarms, speakers, amplifiers, antennas, barometers, scales, electric batteries, bulbs, electric cables, calculators, chronographs, transmitters and receivers of electronic signals, illumination regulators, data processing apparatus, optical readers, torches, printers for computers, electronic publications (downloadable and non-downloadable), computers, computer games, photographic, audio and video equipment and accessories, optical goods and sunglasses, audio tapes, CDs, records, video tapes, digital versatile discs (DVDs), optical discs for high-definition video, telephones and mobile telephones; musical recordings; briefcases, backpacks, attaché cases, computer cases, tablet cases and backpacks of leather all the aforesaid being of leather or morocco leather are wholesale services of specific goods that are highly similar or identical to the opponent’s wholesale and retail sale of audiovisual, computer and telecommunication products, namely videotapes, televisions, video recorders, personal stereos, tape recorders, radios, high, fidelity (hi-fi) equipment, decoders, portable telephones, computers, magnetic tapes, disc changers (data processing equipment), printed circuits, integrated circuits, computer keyboards, compact discs (audio-video), compact optical discs, couplers (data processing equipment), floppy disks, magnetic data media, video screens, scanners, computer printers, interfaces (data processing equipment), readers (data processing equipment), software (recorded programs), microprocessors, modems, monitors (hardware), monitors (computer programs), computers, computer memories, computer peripherals, recorded computer programs, processors (central processing units), recorded computer operating programs, chips (integrated circuits), retail sale of antennas. The goods of both are commonly retailed together in the same outlets and target the same public. Consequently, these services are at least similar to a high degree.

2) Wholesale services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The goods involved in the contested services of wholesale, sale in shops and sale via global computer networks of stationery, printed publications and printed matter, diaries and personal organisers, greetings cards, gift wrap are identical to the opponent’s printed matter (listed twice) in Class 16. Therefore, these contested services are similar to the opponent’s abovementioned goods as the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, furthermore, are of interest to the same consumers.

The goods involved in the contested services of wholesale, sale in shops and sale via global computer networks of pencil holders, writing sets all the aforesaid being of leather or morocco leather are similar to a low degree to the opponent’s paper; cardboard; cardboard articles in Class 16. This is sufficient for a finding of a low degree of similarity with the wholesale services, as the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores, and are of interest to the same consumer; hence in line with the comparison of goods in Class 18 above.

3) In relation to the contested wholesale services of the following dissimilar goods:

a) T-shirts, clothing, footwear, handbags, goods of leather, namely wallets of leather, harness and saddlery, laces, straps, leatherware, namely wallets, travelling bags, suitcases, handbags, luggage tags, luggage sets, wallets for cards, travel cases, mobile telephone covers, belts, keyrings, all the aforesaid being of leather or morocco leather, purses of leather, bags, luggage, leather and travel articles, umbrellas;

b) jewellery, costume jewellery;

c) perfumery, toiletries and cosmetics, candles;

d) musical instruments;

e) furniture, soft furnishings, decorations including picture frames, mirrors, pictures, candle holders, candelabra;

f) coverings of textile, tablecloths, cushions, candles, flowerpots, decorative boxes, vases, works of art, glass, glassware, porcelain and fine china, household utensils and containers, household linen, bed covers and table covers, towels, carpets and rugs;

g) games and playthings and sporting articles and equipment, exercise equipment, equestrian articles;

h) alcoholic and non-alcoholic beverages;

i) tobacco and tobacco products, smokers’ articles;

j) motor vehicles and parts for motor vehicles,

the following is noted: similarity between wholesale services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the wholesale services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers.

Wholesale services of the goods listed above and the opponent goods in Class 16 (printed matter) are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Wholesale services, in offering for sale a wide variety of different goods, thus allowing the relevant public to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Moreover, in this case, the abovementioned conditions are not fulfilled, since the goods concerned are not sold in the same specialist shops, or the same sections of department stores or supermarkets. Admittedly, like most goods, they can now be found in large retail stores. However, in such outlets the goods at issue are sold in specialist departments which, even though they may be close, are nonetheless separate. In such circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51).

The contested wholesale services listed above in point 3) is also dissimilar in relation to the opponent’s wholesale and retail sale of audiovisual, computer and telecommunication products, namely videotapes, televisions, video recorders, personal stereos, tape recorders, radios, high, fidelity (hi-fi) equipment, decoders, portable telephones, computers, magnetic tapes, disc changers (data processing equipment), printed circuits, integrated circuits, computer keyboards, compact discs (audio-video), compact optical discs, couplers (data processing equipment), floppy disks, magnetic data media, video screens, scanners, computer printers, interfaces (data processing equipment), readers (data processing equipment), software (recorded programs), microprocessors, modems, monitors (hardware), monitors (computer programs), computers, computer memories, computer peripherals, recorded computer programs, processors (central processing units), recorded computer operating programs, chips (integrated circuits), retail sale of antennas.

Whole sales or retail services of specific goods and whole sale or retail services of other goods have the same nature as both are whole sale/ retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

Furthermore, these are also dissimilar to the goods in Class 9 and the services in Class 41, as the nature, purpose, method of use, producer/provider, points of sale are different, and they are neither in competition nor complementary.

Therefore, the wholesale services are dissimilar, as the goods involved in the wholesale are not commonly sold together and they target different publics.

Contested goods in Class 39

The contested travel and sightseeing arrangement (tourism) is similar to the opponent’s entertainment in Class 41. The opponent’s travel services include travel and sightseeing arrangements, which may also offer entertainment services as part of an organised tour. These services can target the same consumers and can be offered through the same distribution channels (20/07/2017, R 2332/2016‑1, JAM! / JAM, § 23).

The other contested services, rental of garage parking places; transport; package and storage of goods; rental of cars, taxis, driving services and newspaper delivery, are dissimilar to the opponent’s goods and services. These have nothing relevant in common with the goods in Class 16 (printed matters and stationery); even though the goods may be transported through a transport company, it will not be the same company as that producing the goods. The nature, purpose, distribution channels, sales outlets, undertakings, method of use are different and they are neither complementary nor in competition (21/09/2011, R 2395/2010‑2, VITAL / CAJA VITAL KUTXA (fig. mark), § 29, 30).

The same applies to the rest of the services in Class 41. Although Class 41 includes rental services, the goods to be rented are for entertainment purposes, not transportation or parking, therefore, there cannot be any similarity between the services. In addition, the rental of garage places and cars, transport and packaging have no relation to entertainment, education, and publication services. They are also not complementary, as claimed by the opponent, as they can easily be offered without entertainment services, for example, a simple car rental. Consequently, they differ in nature, purpose, distribution channels, sales outlets, producers and method of use. Furthermore, these are neither in competition nor complementary.

As regards the goods in Class 16 (printed matters and stationery), there is nothing relevant in common between the contested services in Class 39 and the opponent’s goods in Class 16 and, they are consequently dissimilar. Although these may be the transported goods, they will have been produced by a different undertaking. Consequently, they differ in the nature, purpose, distribution channels, sales outlets, method of use. Furthermore, the goods and services are neither complementary nor in competition.

The same applies to the contested services in Class 39 and the opponent’s service in Class 35. They differ in purpose (transport v advertisement, business management v retail services), method of use and relevant public. Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar.

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 goods and services found to be identical or similar (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

c) The signs

	USHUAÏA
Earlier trade mark	Contested sign

The relevant territory is France.

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 include the word ‘USHUAÏA’. Consequently, it is immaterial whether or not this identical verbal component is associated with a meaning by the relevant public, since the signs are on an equal footing regarding the distinctiveness of this word. For the sake of completeness, the Office notes that ‘USHUAÏA’ is a small city in southern Argentina and, therefore, has a normal degree of distinctiveness in relation to the relevant goods and services.

The applicant argues that the verbal element ‘USHUAÏA’ will be perceived as a famous tourist location in Argentina and, therefore, is generic. Nevertheless, even if perceived as such, the Opposition Division does not concur that it is non-distinctive, as it has no relation to the relevant goods and services nor is it known as ‘the’ location for the producing/rendering of the relevant goods and services. This term does not describe objective characteristics of the goods and services. Consequently, it neither designates a place associated with the goods/services nor their geographical origin (04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 31). Furthermore, the applicant has not submitted any evidence that this term would be understood by the average French consumer, who has average common knowledge but is not a specialist in geography. Finally, regarding the decisions mentioned by the applicant in reference to ‘Ibiza’, Ushuaïa is a small town in Argentina and not a tourist spot in Spain, a country that borders France (14/05/2013, T‑19/12, IKFŁT Kraśnik, EU:T:2013:242, § 49; 29/10/2015, T‑256/14, CREMERIA TOSCANA / La Cremeria et al., EU:T:2015:814, § 39).

The earlier mark is composed of the verbal elements ‘Ushuaïa TV’, underlined by a slightly curved line; both of which are in white on a red-orange rectangle. These figurative elements will be perceived as rather simple geometrical shapes, and as such they are not particularly distinctive as the public will perceive them as decorative elements. Therefore, the verbal element is more distinctive than the figurative elements. This sign has no element that could be considered clearly more dominant than other elements.

The relevant public will clearly perceive the element ‘TV’ at the end of the earlier mark, which is a common abbreviation for the word ‘television’ throughout the European Union (including France). This element is non-distinctive for the services in Class 41 (such as entertainment), as it indicates that these services are used for or related to television broadcasting or that the services are rendered by means of television. Consequently, the element ‘TV’ is non-distinctive in relation to these services. For the rest of the goods and services in Classes 16, 35 and 41, it has a normal degree of distinctiveness.

The contested sign is composed of the verbal element ‘USHUAÏA’, which is equally distinctive as its identical counterpart in the earlier mark.

Visually, the signs coincide in the distinctive verbal element ‘USHUAÏA’. However, they differ in the figurative elements of the earlier mark, which are of a decorative nature, and the letters ‘TV’, which are distinctive to a normal degree or non-distinctive, depending on the goods and services. Contrary to the applicant’s arguments, the different visual impressions due to the figurative elements have a rather low impact, if any at all, as the elements are of a decorative nature.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the distinctive verbal element ‘USHUAÏA’. It differs in the letters ‘TV’ of the earlier mark; however, part of the public will not pronounce them as they are at the end of the first verbal element. Even for the part of the public that will pronounce them, on account of their position and the fact that the first verbal element of the earlier mark is identical to the contested sign, the signs are at least aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the verbal element, ‘USHUAÏA’ will be understood as mentioned above, the two signs will be associated with a highly similar meaning. This meaning will not be affected significantly by the other elements in the earlier mark and therefore the signs are conceptually similar to a high degree. However, if the verbal element ‘USHUAÏA’ is not understood, the verbal element ‘TV’, which is distinctive for a part of the goods and services covered by the earlier mark, makes the signs conceptually not 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, despite the presence of the non‑distinctive (for part of the goods and services) element (‘TV’) in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to 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’ (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 28, 29; 28/04/2004, C‑3/03 P, Matratzen + Matratzenmarkt Concord (fig.), EU:C:2004:233, § 32).

The goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar. They target the public at large and professionals. The level of attention varies from average to high. The signs are visually and aurally similar to a high degree and conceptually either highly similar or not similar. The earlier mark is distinctive to a normal degree. The coincidence in the distinctive verbal element ‘USHUAÏA’, which is also the sole element of the contested sign, is striking. The figurative elements of the earlier mark are of a purely decorative nature and the word ‘TV’ is descriptive of part of the services and, therefore, not striking. Where the word ‘TV’ is distinctive, as it is at the end of a longer distinctive element and is only two letters, its impact, considering the sign as a whole, is limited. Consequently, there are not enough differing elements to safely differentiate between the signs and avoid a likelihood of confusion.

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 services covered are from the same or economically linked undertakings. 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). As both include the identical distinctive verbal element ‘USHUAÏA’, the contested sign may be perceived as covering a new or wider market segment, not only limited to ‘TV’, such as newspapers, backpacks, travel agencies.

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). As the relevant consumer might associate both signs with the same undertaking, this will also affect the goods and services considered to be similar to at least a low degree, as these are related to the broader concept of entertainment.

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

Therefore, the opposition is partly well founded on the basis of the opponent’s French trade mark registration No 3 951 116. It follows that the contested trade mark must be rejected for some of the contested goods and services.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Renata COTTRELL

Astrid Victoria WÄBER

Beatrix STELTER

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.