Cirque DE Monte Carlo | Decision 2772120

Date Published: Sep 24, 2017

OPPOSITION No B 2 772 120

Marques de l’Etat de Monaco - Monaco Brands, L’Estoril 31 avenue Princesse Grace, 98000 Monaco, Monaco (opponent), represented by Nony, 11, rue Saint Georges, 75009 Paris, France (professional representative)

a g a i n s t

Edvin Marton, Kecske utca 13. 1. em. 10/a.,1034 Budapest, Hungary (applicant).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 772 120 is partially upheld, namely for the following contested goods and services:

Class 9:         Scientific research and laboratory apparatus, educational apparatus and simulators; safety, security, protection and signalling devices; apparatus, instruments and cables for electricity; information technology and audiovisual equipment; optical devices, enhancers and correctors.

Class 25:         Millinery; clothing.

Class 41:         Publishing and reporting; education, entertainment and sports.

2.        European Union trade mark application No 15 322 531 is rejected for all the above goods and services. It may proceed for the remaining goods, namely:

Class 9:         Magnets, magnetizers and demagnetizers.

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 15 322 531 , ‘MONTE-CARLO’. The opposition is based on international trade mark registration No 1 069 076 designating the European Union and France. The opponent invoked Article 8(1)(b) and 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.

For reasons of procedural economy, the examination will focus specifically on international trade mark registration No 1 069 076 designating France.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording disks; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; extinguishers.

Class 25: Clothing, footwear, headgear.

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

The contested goods and services are the following:

Class 9: Scientific research and laboratory apparatus, educational apparatus and simulators; safety, security, protection and signalling devices; apparatus, instruments and cables for electricity; information technology and audio-visual equipment; magnets, magnetizers and demagnetizers; optical devices, enhancers and correctors.

Class 25: Millinery; clothing.

Class 41: Publishing and reporting; education, entertainment and sports.

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 9

The contested scientific research and laboratory apparatus, educational apparatus and simulators are included in, or overlap with, the opponent’s broad category of scientific and teaching apparatus and instruments. Therefore, they are identical.

The contested safety, security, protection and signalling devices are included in, or overlap with, the opponent’s broad category of signalling and life-saving apparatus and instruments. Therefore, they are identical.

The contested apparatus, instruments and cables for electricity overlap with the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested audio-visual equipment is included in, or overlaps with, the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested information technology equipment includes the opponent’s data processing equipment and computers. 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 optical devices, enhancers and correctors are included in, or overlap with, the opponent’s optical apparatus and instruments. Therefore, they are identical.

However, the contested magnets are bodies that can attract certain substances, such as iron and steel, as a result of a magnetic field; namely they can attract ferromagnetic substances’. The contested magnetizers and demagnetizers are devices that make a substance or an object magnetic or that remove these magnetic properties. These contested goods are dissimilar to all of the opponent’s goods in Class 9 and to all of the opponent’s other goods and services. They have different natures and purposes, they differ in their distribution channels, sales outlets, producers and methods of use and they are not in competition with or complementary to each other.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested millinery is included in the broad category of the opponent’s headgear. Therefore, they are identical.

Contested services in Class 41

Entertainment and sports; education are identically contained in both lists of services, including with slightly different wording, such as sporting activities.

The contested publishing and reporting are similar to a low degree to the opponent’s entertainment, as these services may coincide in their distribution channels and, furthermore, are complementary to each other.

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 goods and services found to be identical or similar to a low degree are directed at the public at large and at a professional public with some level of expertise in the area in question. The degree of attention will be average or above average, the latter insofar as the complex and sophisticated items of apparatus and instruments in Class 9 are concerned.

3. The signs

MONTE-CARLO
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).

The earlier mark is a word mark consisting of the words ‘MONTE’ and ‘CARLO’ connected by a hyphen and the contested sign is a figurative mark consisting of the verbal expression ‘CIRQUE DE MONTE CARLO’, written in gold letters, with the depiction of a carnival mask underneath the expression in the same colour.

The coinciding verbal elements ‘Monte Carlo’ will be understood by the relevant public as, in particular, a reference to ‘a town and resort forming part of the principality of Monaco, on the Riviera; famous casino and the destination of an annual car rally’ (information extracted from Collins Dictionary on 09/08/2017 at https://www.collinsdictionary.com/dictionary/english/monte-carlo). Furthermore, the expression ‘Cirque de Monte Carlo’ of the contested sign as a whole may be associated by the French-speaking public with the internationally known ‘Circus Festival of Monte-Carlo’ or at least with a circus that takes place in Monte Carlo. The carnival mask may serve to reinforce the concept of the circus suggested by the French word ‘cirque’.

While the elements ‘Monte-Carlo’ will not be, in principle, naturally associated with any type of electrical or other apparatus and instruments in Class 9 (see the comparison of the goods and services above in section a)) or with the articles in Class 25 (clothing and headgear), it could be perceived as a designation of origin for particular types of services that are contained in both the applicant’s and the opponent’s lists of goods and services, namely entertainment (e.g. circus and gambling services) and sport (e.g. racing). For these services, the verbal elements ‘Monte-Carlo’ may be considered to have a slightly below average degree of distinctiveness, as Monte Carlo is a popular place for these activities, among at least part of the relevant public. For the remaining goods and services, these verbal elements enjoy an average degree of distinctiveness.

The word ‘cirque’ of the contested sign will be understood as ‘a circus’. Bearing in mind that the relevant services include entertainment and sporting services, this element is non-distinctive, as it directly refers to circus performances, and is weak to some extent in relation to sporting services, including various acrobatic performances, as these are an essential part of circus performances. Likewise, the figurative element depicting a carnival mask in the contested sign will be allusive of these categories of services and will also have a somewhat low degree of distinctiveness in relation to such circus performances.

Neither of the signs has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal expression ‘Monte Carlo’, in which they differ in only the hyphen in the earlier mark, and they also differ in the stylisation and additional figurative and verbal (‘cirque de’) elements in the contested sign. 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, bearing in mind the distinctiveness of the verbal and figurative elements of the signs, as described above, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal elements ‛Monte Carlo’, present identically in both signs. The pronunciation differs in the sound of the verbal elements ‛cirque de’ of the contested sign, which have no counterparts in the earlier mark. Therefore, taking into account the degree of distinctiveness of the additional verbal elements of the contested sign, as described above, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar concept, stemming from the reference to Monte Carlo, and bearing in mind the degree of distinctiveness of particular elements in relation to some of the services, the signs are conceptually similar to at least an average degree.

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 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 right has a reputation in the European Union and, in particular, in France in connection with some of the goods and services for which it is registered, namely the goods in Class 25 (clothing, footwear, headgear) and the services in Class 41 (education, providing of training; entertainment; sporting and cultural activities). This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Printouts from the website www.monte-carlo.mc containing, inter alia, information about tourism in Monte Carlo, Monaco, in particular listing the Formula 1 Grand Prix, Monte Carlo Casino, the 40th International Circus Festival of Monte Carlo, etc.
• Extracts from Wikipedia giving information about the International Circus Festival of Monte Carlo, also known as ‘Festival International du Cirque de Monte-Carlo’. The Wikipedia article refers to the annual editions of the festival since 1974 and mentions that the festival includes the awarding of the Clown d’Or (Golden Clown).
• Extracts from www.monacobrands.mc entitled ‘The cult of sport and exceptional luxury’ containing references to the events hosted by the Principality of Monaco, such as the Formula 1 Grand Prix, the Monte Carlo Rally, the Monte-Carlo Rolex Masters tennis tournament, etc.
• Brochures and extracts from www.montecarlofestival.mc containing information about the International Circus Festival of Monte Carlo, including about the 41st festival, which took place in January 2017, as well as a testimony by the Prince of Monaco, Albert II, dated November 2015.
• Case-law from three particular cases dealt with by the French Office for Intellectual Property (one dated 12/08/2015 and two dated 25/08/2015), in which the opponent’s mark ‘Monte-Carlo’ is considered distinctive in relation to the goods in question. Apart from copies of the original case-law in French, translations of the relevant sections of the decisions into English have also been provided.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use (or reputation) in the territory of France or in the European Union as a whole for any of the goods and services for which the opponent claimed to have public recognition.

It must be noted that the burden of proving reputation lies on the opponent; consequently, evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark is known by a significant part of the public. According to the second sentence of Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. It follows that, in assessing if the earlier mark enjoys a reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market nor conduct an ex officio investigation, but should exclusively base its findings on the information and evidence submitted by the opponent. In the present case, the opponent provided only references to internet sources, most probably produced by the opponent itself, providing information about different touristic attractions bearing, inter alia, the trade mark ‘Monte Carlo’, as well as references to other internet open sources (Wikipedia). It must therefore be noted that this evidence, which mostly originates from the opponent, was not supported by any other evidence produced by a third party that could be considered independent and objective.

Furthermore, evidence showing that the reputation of the opponent’s mark has been repeatedly recognised and protected against infringing acts by decisions of judicial or administrative authorities will be an important indication that the mark enjoys a reputation in the relevant territory, especially where such decisions are recent. However, in the present case, the opponent provided recent case-law only concerning the relevant public, where the earlier mark has been considered to have an average degree of distinctiveness for the purposes of assessing likelihood of confusion.

To sum up, the opponent did not demonstrate the public perception of the element ‘Monte Carlo’ as such, but rather relied on the good image of the Principality of Monaco and on its reputation for certain values (‘exceptional luxury’) and for some types of entertainment and sporting activities it offers to the general public, especially those that take place in Monte Carlo (the International Circus Festival of Monte Carlo, the Monte Carlo Rally, etc.). However, this association in consumers’ minds is probably determined by the geographical destination ‘Monte Carlo’ and not by the role that the sign ‘Monte Carlo’ plays in designating the commercial origin of the particular category of services in question.

Since the opponent did not succeed in proving the reputation of its earlier right, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Therefore, taking into account the findings about the elements ‘Monte Carlo’ laid out in the previous section, the distinctiveness of the earlier mark must be seen as somewhat lower than average in relation to services such as entertainment and sporting activities.

However, the earlier trade mark as a whole has no meaning for, or does not trigger any association with, the remaining goods and services in question from the perspective of the public in the relevant territory, France (or in the EU as a whole). Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se for these remaining goods and services and therefore its degree of distinctiveness is normal.

5. Global assessment, other arguments and conclusion

The conflicting goods and services are partly identical and similar and partly dissimilar. The degree of attention of the relevant public is average or above the average.

Firstly, as far as the degree of distinctiveness of the earlier mark in relation to some of the services is concerned, the Opposition Division considered that the opponent’s earlier mark is more likely to be associated with the destination Monte Carlo as such, rather than with the trade mark ‘Monte-Carlo’. However, this could still not prevent a likelihood of confusion among the relevant public; even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102).

Secondly, 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). On the visual, aural and conceptual levels, the signs are considered similar to at least an average degree to the extent that, apart from the connecting hyphen, the earlier mark is completely incorporated in the contested sign. Furthermore, as already stated above, the additional differing expression ‘cirque de’ in the contested sign is non-distinctive in relation to some of the services, and the figurative element depicting a carnival mask will have less impact on the overall impression created by the contested sign than the verbal elements.

Thirdly, 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). In the present case, as the earlier mark is entirely reproduced in the contested sign, it cannot be excluded that the relevant consumer might assume a potential economic relationship between the signs ‘Monte-Carlo’ and .

In addition, 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). As concluded above, most of the goods and services are identical and this will to some degree outweigh the differences between the signs. On the other hand, the signs are also sufficiently similar to overcome the low degree of similarity between some of the services, in particular the services in Class 41, for which the earlier right has an average degree of distinctiveness.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international registration trade mark registration designating France.

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 different degrees to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

The opponent has also based its opposition on the remaining territories in the European Union designated by its international registration, namely the EU as a whole. However, the outcome cannot be different with respect to goods for which the opposition has already been rejected, as the international registration does not cover a broader scope of protection for these territories. Therefore, no likelihood of confusion exists with respect to those goods.

The opponent also invoked Article 8(5) EUTMR, which will now be examined in relation to the goods found to be dissimilar to the opponent’s goods and services in this section.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. As stated above in section d), the earlier mark does not enjoy a reputation in France or in the EU as a whole. Since one of the conditions is not fulfilled, the opposition must also be rejected under this ground for the remaining goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Benoit  VLEMINCQ

Manuela RUSEVA

Adriana Pieternella VAN ROODEN

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.