OPPOSITION No B 3 094 440

Comité International Olympique (Association), Château de Vidy, 1007 Lausanne, Switzerland (opponent), represented by Bird and Bird (Belgium) LLP, Avenue Louise 235 box 1, 1050 Brussels, Belgium (professional representative)

a g a i n s t

Oliver Bechstedt, Lößniger Str. 23, 04416 Markkleeberg, Germany (applicant), represented by Michael Schmidt, Obere Eichstädtstr. 2a, 04299 Leipzig, Germany (professional representative).

On 21/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 440 is upheld for all the contested services.

2. European Union trade mark application No 18 081 421 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 18 081 421 for the word mark ‘GGH Olympisches Dorf Berlin’, namely against all the services in Class 36. The opposition is based on international trade mark registration No 1 128 501 designating the European Union for the word mark ‘OLYMPIC’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 services

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

Class 36: Real estate affairs.

The contested services are the following:

Class 36: Real estate affairs.

Real estate services are identically contained in both lists of services.

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 at professionals, such as investment companies.

The purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010-2, FIRST THE REAL ESTATE (fig.) / FIRSTMALLORCA (fig.) et al., § 21).

c) The signs

OLYMPIC	GGH Olympisches Dorf Berlin
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). This applies by analogy to international registrations designating the European Union. 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 ‘Olympisches Dorf’ of the contested sign is meaningful in certain territories, for example in those countries where German is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public, such as Germany and Austria.

The earlier mark ‘OLYMPIC’, as it is a basic English word, will be understood as ‘Olympisch’, namely as related to Olympic Games. Since it has no relevant meaning with regard to the services at issue it is, therefore, distinctive.

The element ‘GGH’ of the contested sign has no meaning and is distinctive. The element ‘Olympisches Dorf’ of the contested sign means ‘Olympic Village‘. ‘Berlin’ will be understood of the place of the offered services and is, therefore, non-distinctive.

Since both signs are word marks they have no element that could be considered clearly more dominant than other elements.

It is also irrelevant whether word marks are written in upper- or lower-case letters or in a combination thereof that does not depart from the usual way of writing, since it is the word as such that is protected and not its written form. Therefore, in the case at issue the protection of the word marks under comparison concerns the words as such, because the signs are written using standard capitalisation.

Visually and aurally, the signs coincide in the letters ‘OLYMPI’, nearly all letters of the earlier mark. Visually, even the final letter ‘C’ of the earlier mark, although in the contested sign it forms part of the trigraph ‘sch’, is included in both signs. The signs differ in the additional elements ‘GGH’, the letter combination ‘s(c)hes’, the word ‘Dorf’ and the non-distinctive element ‘Berlin’ of the contested sign. Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the additional element ‘Dorf’, both signs relate to ‘Olympic’, the signs are conceptually highly 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

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).

The level of attention is higher-than-average. The services at issue are identical, the earlier mark is distinctive per se to an average degree, the signs are visually and aurally similar to an average degree and conceptual similar to a high degree. It must be held that the visual and aural similarities and the conceptual link between the earlier mark ‘OLYMPIC’ and ‘Olympisches Dorf’ of the mark applied for are sufficient to offset the differences resulting from the presence of the different initial element ‘GGH’ and the further element ‘Dorf’ and the non-distinctive element ‘Berlin’ of the contested sign. The earlier mark is (nearly) entirely included in the contested 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 goods or 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 German-speaking part of the public, even in case of a higher-than-average degree of attention due to the similarities of the signs . 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, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 128 501 designating the European Union for the word mark ‘OLYMPIC’. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(5) EUTMR.

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

Beatrix STELTER

Martin EBERL

Renata COTTRELL

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.