OPPOSITION No B 2 562 091

Société Paneuropéenne 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 21/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 562 091 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; cardboard; 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 39: Travel and sightseeing arrangement (tourism).

2. European Union trade mark application No 13 946 207 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 all the goods and services of European Union trade mark application No 13 946 207 (fig.). The opposition is based on French trade mark registration No 3 951 116 (fig.). 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; cardboard; 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 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 ‘particularly’ 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 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; cardboard; 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 are included in, 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 together in stationery shops and sections of department stores. Furthermore, they target the same relevant consumers and 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, and briefcases. Even if the nature of the opposing goods is different, they have a similar purpose, namely school or office supplies. Consequently, they target the same public and are sold in the same stationery stores and department store sectors (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 they are not intended for office or school purposes, but are mainly for transport, walking help (walking sticks) or weather protection (umbrella, parasols). Their nature, distribution channels, sales outlets and producers are different, and they are neither in competition nor complementary to each other.

Contrary to the opponent’s arguments, the goods in Class 18 are not complementary to the services in Classes 35 and 41, as goods (or services) are only considered to be 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). Therefore, there is no complementarity between these relevant goods and services.

Contested services 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 offer entertainment services as part of an organised tour within a package deal. 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, namely 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 plastic for packaging). Although they may be stored, packaged and transported by a transport company, it will not be the same company as that producing the goods. Even the plastic for packaging will not be produced by the same undertaking packing the goods for transportation and/or storage. The nature, purpose, distribution channels, sales outlets, undertakings, method of use are different, and they are neither complementary nor in competition to each other.

The same is applicable in relation to the rest of the services in Class 41. Although Class 41 also includes rental services, the goods to be rented are for entertainment purposes, not transportation or parking spaces. Therefore, there cannot be any similarity between these services. The rental of garage places and cars, transport and packaging has no relation to entertainment, education, publications or show services. Neither are they complementary as stated by the opponent. These services can easily be offered without an entertainment service (e.g. simple car rental). Consequently, there are no similarities in relation to their purpose, distribution channels, sales outlets, producers, or method of use, and they are neither in competition nor complementary.

In the same way as for 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 18 (leather and leather goods). Consequently, they are dissimilar. Although these may be the goods being transported, their production will be carried out by a different undertaking. Consequently, there are no similarities in relation to their nature, purpose, distribution channels, sales outlets, or method of use, and they are neither complementary nor in competition.

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, the frequency of purchase and their price.

c) The signs

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 verbal element ‘USHUAÏA’. Consequently, it is immaterial whether or not it 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 city in southern Argentina and, therefore, has a normal degree of distinctiveness.

The applicant argues that the verbal element ‘USHUAÏA’ will be perceived as a famous tourist destination in Argentina and, therefore, is generic. Nevertheless, even if perceived as such, the Opposition Division does not concur with the statement that it is non-distinctive, as it has no relation to the relevant services and is not known as ‘the’ location for the rendering of the relevant services. This term does not describe objective characteristics of the services. Consequently, it neither designates a place associated with the services nor the geographical origin of the services (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 sufficient 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 destination in Spain, next to 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’ and ‘TV’, underlined by a slightly curved line, all depicted 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 because the public will perceive them as decorative elements. Therefore, the verbal element is more distinctive than the figurative elements.

The relevant public will clearly perceive the element ‘TV’ at the end of the earlier sign, 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 and services for the production of entertainment in the form of television, radio and cinema), as it indicates that these services are used for or related to television broadcasting, or that the services are rendered by means of television (e.g. entertainment). Consequently, the element ‘TV’ is non-distinctive in relation to these services. However, it has a normal degree of distinctiveness in relation to all the goods and services in Classes 16 and 35, and some in Class 41 for which it does not bear any correlation (e.g. cardboard articles; business consultancy; sporting and cultural activities).

The contested sign contains the red, stylised verbal element ‘USHUAÏA’. To the left of this is a depiction of a red hummingbird. The figurative element of the hummingbird is distinctive as it is not descriptive or in any other manner weak / non-distinctive with regard to the characteristics of the goods and services. The applicant argues that the dominant element of the sign is the hummingbird. However, the hummingbird, although at the beginning of the sign, is not larger than the verbal element and is not visually striking. Consequently, the contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the distinctive verbal element ‘USHUAÏA’. However, they differ in their stylisation and in their remaining elements, namely the contested sign’s depiction of a hummingbird and the earlier mark’s second verbal element – ‘TV’ – and its figurative elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the distinctive verbal element ‘USHUAÏA’. It differs in the earlier sign’s verbal element ‘TV’. However, part of the public will not pronounce this, as it is at the end of the first verbal element. Even for the part of the public that will pronounce it, because of its position, and the fact that the first verbal element of the earlier mark is identical to the contested sign, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. If the verbal element ‘USHUAÏA’ is understood, it will be associated with a similar meaning and the signs are conceptually similar to a high degree. However, if the distinctive concepts of the hummingbird in the contested sign and the verbal element ‘TV’ (which is at least partly distinctive) in the earlier sign are grasped, the signs are 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 goods and 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 some elements that are non-distinctive for some of the goods and services in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between them. 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 similar to an average degree, aurally similar to a high degree and conceptually either highly similar or not similar. The earlier mark has a normal degree of distinctiveness. The coincidence in the distinctive verbal element ‘USHUAÏA’ is striking, even taking into account the distinctive hummingbird of the contested sign, as this verbal identity may lead the relevant public to consider that the goods and services may come from the same undertaking, as further argued below.

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 goods/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 goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the contested sign may be considered to be covering a new market segment – such as stationery, transport or tourism – or as being a newer, more updated version of the earlier mark.

The applicant argues that its EUTM, and specifically the figurative element , has a reputation and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark. This applies even for those services that are similar to a low degree, as the distinctive verbal element of both signs is identical. Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The 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.