OPPOSITION No B 3 065 610

EMS International ApS, Ravnsgårdsvej 109, Snoghøj, 7000 Fredericia, Denmark (opponent), represented by Patrade A/S, Ceresbyen 75, 8000 Aarhus C, Denmark (professional representative)

a g a i n s t

Iván Vass, Balázs Béla u. 34/b 2. em. 209., 1094 Budapest, Hungary (applicant), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 18/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 610 is upheld for all the contested services.

2. European Union trade mark application No 17 901 019 is rejected in its entirety.

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

REASONS

The opponent filed an opposition, initially against all the goods and services of European Union trade mark application No 17 901 019 (figurative mark). After a limitation, it is now directed against all services. The opposition is based on, inter alia, European Union trade mark registration No 12 642 666 ‘EMS BODYPOWER’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

The applicant has requested that the present case will be suspended awaiting the outcome of the cancellation action concerning earlier mark No 13 664 461. However, since the opponent based its opposition also on two other earlier registered trade marks, among them the one above which is not subject to cancellation procedure, the Office will rule on the opposition on that basis.

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 12 642 666 ‘EMS BODYPOWER’.

a) The services

The services on which the opposition is based are, inter alia, the following:

Class 41: Academies [education]; Advisory services relating to training; Advisory services relating to education; Conducting classes in exercise; Conducting classes in weight control; Conducting classes in weight reduction; Conducting classes in nutrition; Conducting instructional courses; Conducting courses, seminars and workshops; Consultancy services relating to the education and training of management and of personnel; Consultancy services relating to the training of employees; Consultancy services relating to training; Demonstration [for instructional purposes]; Education in movement awareness; Education in the field of data processing; Educational establishments providing courses of instruction (Services of -); Educational examination; Educational institute services; Educational instruction; Educational seminars; Educational services relating to sports; Educational testing; Exercise [fitness] training services; Exercise classes; Exercise instruction; Information relating to sports education; Information relating to education, provided on-line from a computer database or the internet; Institutes of education (Services provided by -); Instruction courses related to slimming; Instruction courses relating to health; Instruction courses relating to physical fitness; Instruction courses relating to sporting activities; Instruction in circuit training; Instruction in weight training; Instruction services relating to sports; Management education services; Management of education services; Management training consultancy services; Organisation of examinations [educational]; Organisation of teaching activities; Personal development training; Personal trainer services; Personnel training; Physical education; Physical education facilities (Provision of -); Physical education instruction; Physical fitness centre services; Physical fitness consultation; Physical fitness instruction; Physical fitness instruction for adults and children; Physical training services; Physical-education services; Production of course material distributed at management courses; Production of course material distributed at professional courses; Professional consultancy relating to education; Professional training services; Provision of courses of instruction relating to sport; Provision of educational services relating to health; Provision of exercise facilities; Provision of facilities for education; Provision of gymnasium facilities; Provision of information relating to training; Provision of instruction relating to exercise; Provision of training services for business; Services for the provision of exercise; Setting of educational standards; Teacher training services; Training in business management; Training in business skills; Training of sports players; Training of teachers; Training services relating to fitness; Workshops for educational purposes; Workshops for training purposes; Workshops (Arranging and conducting of -) [training]; Advisory services relating to the organisation of sporting events; Aerobics training services; Booking of exercise facilities; Booking of sports facilities; Coaching [training]; Coaching services for sporting activities; Conducting fitness classes; Gym activity classes; Gymnasium club services; Gymnasium services relating to body building; Gymnasium services relating to weight training; Health club services [health and fitness training]; Organising of sporting activities and of sporting competitions; Providing facilities for sporting events, sports and athletic competitions and awards programmes; Providing facilities for sports events; Providing facilities for sports recreation; Providing facilities for sports tournaments; Providing fitness and exercise facilities; Providing health club and gymnasium services; Providing sports facilities; Providing sports training facilities; Provision of information relating to sports; Provision of keep fit facilities; Provision of sporting club facilities; Rental of sports equipment, except vehicles; Sports club services; Sports coaching; Sports officiating; Sports tuition, coaching and instruction; Supervision of physical exercise; Entertainment, education and instruction services; Entertainment, sporting and cultural activities; Sporting and cultural activities; Tutoring.

The contested services are, after a limitation, the following:

Class 41: Health and fitness training; Provision of educational services relating to fitness; Exercise [fitness] training services; Gymnasium club services.

Gymnasium club services are identically contained in both lists of services.

The contested health and fitness training; provision of educational services relating to fitness; exercise [fitness] training services are included in the broad category of, or overlap with, the opponent’s health club services [health and fitness training]. Therefore, they are identical.

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 services found to be identical are directed at the public at large and professional trainers. The degree of attention is average.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

EMS BODYPOWER
Earlier trade mark	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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘BODYPOWER’ of the earlier mark and the verbal element ‘POWER’ of the contested sign are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the general public.

The earlier mark is a word mark, ‘EMS BODYPOWER’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

The contested sign is a figurative sign, consisting of a black square and inside, the slightly inclined red lower case letters ‘ems’ above the highly stylised upper case letters ‘POWER’, depicted in vertical white and red lines. On top of the mark is a white contour of a hexagon and inside this, some white and red horizontal lines.

A significant part of the relevant general English-speaking public will, contrary to the applicant’s arguments, not understand the meaning of the verbal element ‘EMS’, even if it, according to the parties, is an abbreviation of some English words (‘Electrical Muscle Stimulation’). Therefore, it is distinctive.

The verbal element ‘POWER’ of the contested sign and the element ‘BODYPOWER’ of the earlier sign will be understood as, inter alia, the ability to do something, to have the resources to deal with something (information extracted from Collins Dictionary on 15/10/2019 at https://www.collinsdictionary.com/dictionary/english/power), or the body to do/deal with something. Bearing in mind that the relevant services are related to sports, fitness and training, these elements in the marks are very weak. The element ‘BODY’ on its own is also weak, as it refers to the purpose for the relevant services, to train the body.

The figurative element of the hexagon with the lines inside will be perceived as such. It has no meaning in relation to the relevant services, and therefore, it is distinctive.

The figurative element of the black square background is a less distinctive figurative element of a purely decorative nature.

The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other 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).

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 their first and distinctive verbal element ‘ems’ and in the weak element ‘POWER’, as described above. However, they differ in the element ‘BODY’, placed in the middle of the earlier sign, and in the figurative elements including the colours of the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the distinctive letters ‘EMS’ and in the sound of the weak element ‘POWER’, present identically in both signs. The pronunciation differs in the sound of the, also weak, element ‘BODY’ in the middle of the earlier mark, which have no counterparts in the contested sign.

Therefore, the signs are aurally similar to a higher than average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘power’, included in both signs, will be associated with the meaning explained above. This element is very weak for the relevant services and therefore, the signs are conceptually similar to only a very low degree.

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 general public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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).

In the present case, the services are identical. They are directed at the general public with an average degree of attention. The signs are visually similar to an average degree and aurally similar to a degree above average, due to the fact that they coincide in the distinctive verbal elements ‘EMS’ and ‘POWER’. Conceptually, the signs are similar to a very low degree. The verbal elements of the contested sign are fully included in the earlier sign.

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 services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the general public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 642 666 ‘EMS BODYPOWER’. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 12 642 666 ‘EMS BODYPOWER’ leads 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

Benoit VLEMINCQ

Lena FRANKENBERG GLANTZ

Katarzyna ZANIECKA

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.