OPPOSITION No B 3 093 127

Tempting Brands Netherlands BV, De Smalle Zijde 3, 3909 LL Veenendaal, Netherlands (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft MBB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Celebration Jump LDA, Rua Victoria 2, 8200‑295 Albufeira Portugal (applicant), represented by A2 Estudio Legal, Calle Javier Ferrero 10, 28002 Madrid, Spain (professional representative).

On 18/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 127 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 038 018 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 038 018 . The opposition is based on, inter alia, international trade mark registration No 1 269 032 designating the European Union . 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 international trade mark registration No 1 269 032 designating the European Union.

a) The goods and services

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

Class 25: Clothing, footwear, headgear.

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

Class 43: Services for providing food and drink; temporary accommodation.

The contested goods and services are the following:

Class 25: Clothing.

Class 41: Nightclub.

Class 43: Restaurant services.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

Contested services in Class 41

The contested nightclub services are included in the opponent’s broad category of entertainment services. Therefore, they are identical.

Contested services in Class 43

The contested restaurant services are included in the opponent’s broad category of services for providing food and drink. 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 goods and services found to be identical are directed at the public at large. The degree of attention is considered to be average.

c) The signs

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 earlier trade mark consists of the word ‘ROUTE’ and the number ‘66’ depicted within a shield-shaped frame that is divided into two parts by a horizontal line. The sign also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, it will not be taken into consideration for the purposes of comparison.

The contested sign consists of the verbal elements ‘ALBUFEIRA’ and ‘US’ and the number ‘66’ within a shield-shaped frame, divided into two parts by a horizontal line, and the element ‘O POETA’ written below. The shield component is located on a circular black background and surrounded by stars. On both sides of the shield are elements that look like two white wings.

The verbal elements ‘ALBUFEIRA’ and ‘O POETA’ in the contested mark are Portuguese words referring respectively to a city in Portugal and to ‘a poet’. Consequently, and in order to take into account the potential impact of the meanings of these verbal elements in the comparison of the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese-speaking part of the public.

The words ‘O POETA’ have no relation to the goods and services at issue and this element is therefore distinctive. Although it is secondary due to its smaller size and its position at the bottom of the sign, it is not negligible since it is still noticeable at first sight and is not likely to be disregarded by the relevant public.

As the verbal elements ‘ALBUFEIRA’ and ‘US’ in the contested mark can be understood as a place of origin of the goods and services at issue, these words are of very weak distinctive character, if any at all.

Part of the relevant public, namely those with some basic knowledge of US culture and history, will perceive the marks as referring to the historic US Highway 66, which existed from 1926 until 1985. This meaning is ‘attached’ not only to the whole expression ‘ROUTE 66’ but also to the number ‘66’ as such and in particular to the number ‘66’ located in a typical shield-shaped frame. Therefore, contrary to the applicant’s arguments, this meaning will be attributed to both signs, not just to the earlier mark. Another part of the public will understand the word ‘ROUTE’ and/or will associate the element ‘66’ with the number that it identifies, but yet another part might see the word ‘ROUTE’ as meaningless. Regardless of the way these elements are perceived, there is no relation between them and the goods and services on which the opposition is based and, therefore, their distinctiveness is normal.

For the sake of completeness, it must be noted that, in its observations of 06/02/2020, the applicant argues that the element ‘66’, being a numeral, has a low level of distinctiveness. Furthermore, it argues that this element is used by many trade mark owners in the market and refers to several trade mark registrations containing this element registered for goods and services in Classes 25, 41 and 43.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the numeral ‘66’. Under these circumstances, the applicant’s claims must be set aside.

Moreover, according to case-law, numerals, unless descriptive or otherwise related to the goods and services, are not limited in their distinctiveness (06/10/2011, T‑176/10, Seven for all mankind, EU:T:2011:577, § 36).

The circular background in the contested sign upon which the shield is located is a simple geometrical shape and is of a purely decorative nature. The stars surrounding the shield in the contested sign will also not be given much attention due to the fact that they are commonly used for indicating a laudatory characteristic, usually denoting a superior quality of a product or service.

Both the shield component, which may be perceived also as a shield-shaped frame, and the wing devices have a normal degree of distinctiveness for the goods and services at issue. However, 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 both signs, the number ‘66’ is the dominant element due to its size and position in the middle of the shield component.

Visually, the signs coincide in the number ‘66’, which is the dominant element in both signs. They have the same structure (a nearly identical shield component divided in two by a horizontal line with the number ‘66’ located in the same position). However, they differ in the less dominant element ‘ROUTE’ of the earlier mark and the weak or secondary verbal elements ‘O POETA’, ‘ALBUFEIRA’ and ‘US’ of the contested sign. Furthermore, they differ in the additional figurative elements of the contested sign, which, for the reasons explained above, have less weight in the comparison of the signs.

Therefore, the signs are visually similar at least to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the pronunciation of the element ‘66’ present identically in both signs. They differ in the pronunciation of the distinctive but less dominant element ‘ROUTE’ of the earlier mark and the element ‘O POETA’ of the contested mark. The additional differentiating elements ‘US’ and ‘ALBUFEIRA’ of the contested mark will most likely not be pronounced due to their lack of distinctive character.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the public, both signs will be perceived as the road sign of the famous highway Route 66 in the USA. The contested sign has additional verbal and figurative elements that, although conveying a meaning, are secondary or weak and have less of an impact on the comparison of the signs.

Therefore, for the part of the public that will associate the signs with the road sign of the famous highway, the signs are conceptually highly similar. For the remaining public the signs are still at least similar to an average degree as they both refer to the number ‘66’ (dominant in both signs) and a shield-shaped frame.

Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs under comparison are 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.

e) Global assessment, other arguments and conclusion

The goods and services are identical and target the general public whose degree of attention is average. The signs are visually similar at least to a low degree and aurally similar to an average degree. The signs are conceptually similar to at least an average degree depending on the perception of the public. The signs coincide in their distinctive and dominant element, ‘66’, and the differences between the signs are confined to the secondary or weak elements.

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).

Considering all the above, and based on the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that the differences identified between the signs are clearly insufficient to enable the relevant public to distinguish between the commercial origin of the goods and services at issue.

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. When encountering the signs in the context of the goods and services that are identical, the average consumer may think that the contested sign is a sub-brand of the opponent’s trade mark, denoting, for example, nightclub and restaurant services provided in Albufeira.

In its observations, the applicant argues that it has a trade mark registration with the elements ‘ALBUFEIRA 66’ in the European Union, which coexists with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Therefore, there is a likelihood of confusion on the part of Portuguese-speaking part of the 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. It follows that the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 269 032 designating the European Union and the contested trade mark must be rejected for all the contested goods and services.

As the earlier right international trade mark registration No 1 269 032 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right 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, 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

Cynthia DEN DEKKER

Cristina CRESPO MOLTÓ

Biruté SATAITE-GONZALEZ

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.