OPPOSITION No B 3 046 925

Repsol, S.A., C/ Méndez Álvaro 44, 28045 Madrid, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Adeka, Kattendijkdok-Oostkaai 5, 2000 Antwerpen, Belgium (applicant), represented by Matthias Dobbelaere, Heernislaan 19, 9000 Gent, Belgium (professional representative).

On 30/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 925 is upheld for all the contested services.

2. European Union trade mark application No 17 519 612 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 519 612 for the word mark ‘SPRINTR’. The opposition is based on, inter alia, European Union trade mark registration No 4 435 384 for the word mark ‘SPRINT’ and European Union trade mark registration No 4 927 811 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 4 435 384 and European Union trade mark registration No 4 927 811.

1. The services

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

European Union trade mark registration No 4 435 384 (EUTM 1)

Class 35: Advertising; business management; business administration, office functions, aforementioned services not in the field of building construction, repair and installation services.

Class 39: Distribution, packaging, storage and supply of goods, aforementioned services not in the field of building construction, repair and installation services.

European Union trade mark registration No 4 927 811 (EUTM 2)

Class 35: Commercial retailing of pastry and confectionery, ices, prepared meals, tobacco, press, batteries, playthings.

Class 39: Distribution of tobacco, press, batteries, playthings, goods for cars, accessories and spare parts for cars, lubricants, fuel for cars; organisation of travel; all these services except the sale of games involving money, lotteries, games of chance, games of skill, betting and predictions/forecasts, aforementioned services not in the field of building construction, repair and installation services.

The contested services are the following:

Class 35: Business management; Advertising; Business representative services; Administrative processing of purchase orders within the framework of services provided by mail-order companies; Administrative processing and organising of mail order services; Export agency services; Import-export agency services; Import and export services; Business management consultancy in the field of transport and delivery; Business consultancy, in the field of transport and delivery; Business management in the field of transport and delivery; Business administration in the field of transport and delivery; Business administration services in the field of transportation.

Class 39: Pickup and delivery of parcels and goods; Air courier services; Courier services for the transportation of cargo; Courier services for merchandise; Import and export cargo handling services; Packaging and storage of goods; Storage of commercial goods; Storage of goods; Storage of freight; Provision of shipborne storage services; Storage; Freight brokerage [forwarding (Am)]; Yacht chartering; Arranging of expeditions; Port services [docking services]; Forwarding agency services; Messenger services for messages; Messenger services for letters; Courier services [messages or merchandise]; Delivery of parcels by courier; Delivery of goods by messenger; Courier services for the delivery of goods; Courier services for the delivery of parcels; Mail delivery and courier services; Transportation by courier; Messenger courier services; Drayage services; Guarded truck transport; Transport of goods; Airline transport; Porter services [transportation]; Transport; Transport services; Tracking and tracing services for letters and parcels; Freight forwarding; Services for the provision of information relating to motor transport; Arranging and conducting of mail order delivery services; Services for arranging transportation by water; Transportation logistics; Distribution 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 limitation at the end of the opponent’s list of services - ‘aforementioned services not in the field of building construction, repair and installation services’ - is a restriction to the field of the services that will be taken into account in the comparison.

Contested services in Class 35

Business management; advertising are identically contained in both lists of services.

The contested business representative services; business management consultancy in the field of transport and delivery; business management in the field of transport and delivery; business administration in the field of transport and delivery; business consultancy, in the field of transport and delivery; business administration services in the field of transportation are included in, or overlap with, the broad categories of the opponent’s business management or business administration. Therefore, they are identical.

The remaining contested services, namely administrative processing of purchase orders within the framework of services provided by mail-order companies; administrative processing and organising of mail order services; export agency services; import-export agency services; import and export services, belong to the broad category of ‘commercial trading and consumer information services’, which encompass services related to the activities around the actual sale, for example services that aim to help consumers make better choices in the marketplace. Hence, those services and the opponent’s services of business management; business administration are considered similar to an average degree since they can coincide in relevant public and distribution channels. Furthermore, they can be offered by the same specialised providers.

Contested services in Class 39

A definition of the conflicting services in Class 39 is considered appropriate at this stage in order to state the reasoning behind the present comparison.

The contested services belong to the broad categories of ‘transport’, including the subcategories of ‘transportation and delivery of goods’ and ‘travel and passenger transportation’; ‘packaging and storage of goods’; ‘rental of means of transportation’.

Transport services (e.g. by boat or ferry) often fulfil a double function, since they can be hired for transporting both passengers and goods at the same time (e.g. travellers willing to take their cars with them while they travel on a ferry, or companies transporting cars within a ferry, for export or import purposes).

Packaging and storage services refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee.

Rental of means of transportation in Class 39 is a service by which a customer hires means of transportation, in the present case a yacht, for tourist or business purposes.

In light of the above definitions, the Opposition Division finds that the comparison between the contested services and the opponent’s services in Class 39 are identical or similar, as it will be reasoned below.

For instance, the contested storage of commercial goods; storage of goods; storage of freight; provision of shipborne storage services overlap with the broad category of the opponent’s storage of goods (aforementioned services not in the field of building construction, repair and installation services). The contested services that belong to the broad category ‘travel and passenger transportation’, arranging of expeditions, overlap with the opponent’s organisation of travel. Those contested services falling into the broad categories of ‘transportation and delivery of goods’ (such as air courier services; courier services for the transportation of cargo; courier services for merchandise) or ‘transport’ (such as airline transport, services for arranging transportation by water) overlap with the opponent’s distribution and supply of goods. Therefore, all the above services are identical.

The contested services that belong to the category ‘rental of means of transportation’ (i.e. yacht chartering) are closely connected to the organisation of travel services of the opponent, as rental of means of transportation often occurs in the course of the arrangement of travel. For example, a customer booking a package holiday can book excursions and a rental vehicle via the same process and often through the same company. Furthermore, these services have the same distribution channels and end users. Therefore, they are considered similar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased or on their impact on a company’s commercial strategy and on its results (cf. 21/03/2013, T-353/11, eventer Event Management Systems, EU:T:2013:147, § 31).

3. The signs

1) SPRINT 2)	SPRINTR
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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).

It should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the earlier trade mark 1) and the contested sign are depicted in lower or upper case letters, or in a combination thereof.

The element ‘SPRINT’ of the earlier trade marks could be perceived by part of the relevant public, such as the English-speaking public, as ‘run at full speed over a short distance’. The same relevant public could perceive the contested sign as a misspelling of ‘SPRINTER’, ‘an athlete who races over short distances’ (information extracted from English Oxford Dictionary on 24/01/2019 at https://en.oxforddictionaries.com). For another part of the relevant public, these elements are meaningless. In any event, since they have no clear and unequivocal meaning in relation to the relevant services, they are normally distinctive.

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).

In this regard, the figurative elements of the earlier trade mark 2), namely the depiction of a letter ‘S’ behind the verbal element ‘Sprint’ and the stylisation and colour of the letters and background are normally used with a decorative purpose.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the element ‘SPRINT’, the whole earlier trade mark 1) and the unique verbal element of the earlier trade mark 2). They only differ in the last letter ‘R’ of the contested sign and in the stylisation of the letters - which however is simple and it will not distract the consumers’ attention away from the word it embellishes - and in the figurative elements of the earlier trade mark 2). Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SPRINT*’, present identically in the signs, and only differs in the last sound of the letter ‘R’ in the contested sign. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the relevant public, the signs will be associated with similar meanings. Therefore, the signs are conceptually similar to a high degree.

For the remaining part of the public neither of the signs as a whole has a meaning, although they may perceive the depiction of the letter ‘S’ in the earlier trade mark 2) as the initial letter of the verbal element ‘SPRINT’. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

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 marks are 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 trademarks as a whole have 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 marks must be seen as normal, despite the presence of less distinctive elements in the mark 2), as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested services are partly identical and partly similar to the opponent’s services. They target the public at large and professionals with a degree of attention that may vary from average to high. The distinctiveness of the earlier marks is normal.

It has also been concluded that the signs are visually and aurally similar to a high degree, whereas the conceptual comparison remains neutral for part of the relevant public. For the remaining relevant public, the signs are conceptually highly similar. They differ only in the last (additional) letter placed at the end of the contested sign and in secondary elements of the earlier trade mark 2), as explained above. The Opposition Division considers that these differences are not sufficient to help consumers differentiate between the signs, because the commonalities are so overwhelming that they can only create confusion in the consumers’ minds. Furthermore, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 435 384 and European Union trade mark registration No 4 927 811. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier rights ‘SPRINT’ and lead to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Adriana VAN ROODEN

Carlos MATEO PEREZ

María Clara IBÁÑEZ FIORILLO

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.