INTO THE TRIBE | Decision 2669995 - Kerzner International Limited v. Into the Tribe limited
Date Published: Oct 1, 2017
OPPOSITION No B 2 669 995
Kerzner International Limited, Atlantis Paradise Island, Coral Towers Executive Office, P O Box N4777, Nassau, Bahamas (opponent), represented by Insignia IP Services Limited, Compass House, Vision Park, Chivers Way, Histon, Cambridge CB24 9AD, United Kingdom (professional representative)
a g a i n s t
Into the Tribe Limited, 13 Upper Baggot Street, 2nd floor, Dublin 4, Ireland (applicant).
On 04/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 669 995 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 14 880 272. The opposition is based on European Union trade mark registration No 11 441 003. 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.
- The services
The services on which the opposition is based are the following:
Class 41: Education; providing of training; entertainment; sporting and cultural activities; educational and training activities for children and teens; sporting and cultural activities for children and teens; resort activity programs for children and teens; children's and teen's day camp services; provision of clubs, dance clubs, lounges, internet lounges for children and teens; provision of live music for children and teens; provision of live music venues for children and teens; provision of gaming services for children and teens; provision of internet gaming services for children and teens.
The contested services are the following:
Class 39: Organizing and arranging travel; Travel services; Planning of journeys; Travel arrangement; Travel agency; Air travel services; Travel reservation; Arranging travel tours; Travel information; Arranging of travel by coach; Organisation of holiday travel; Travel agents services for arranging travel; Supplying tickets to enable holders to travel; Arranging of air travel; Arranging of business travel; Travel consultancy; Trip planning services; Issuing of tickets for travel; Reservation of berths for travel; Services for the booking of travel; Provision of travel information by computer; Travel agency services relating to travel by omnibus; Reservation services for airline travel; Booking agency services relating to travel; Planning, arranging and booking of travel by electronic means; Arranging of excursions as part of package holidays; Arranging of overseas travel for cultural purposes; Travel and tour ticket reservation service; Provision of tours; Reservation of seats for travel; Travel information about disruptions due to adverse weather conditions; Providing information relating to airline travel, via electronic means; Providing information about travel, via the Internet; Arranging travel tours as a bonus program for credit cards customers; Providing tourist travel information, via the Internet; Providing information relating to travel and transport, via electronic means; Providing travel information via global computer networks; Providing information relating to the planning and booking of airline travel, via electronic means; Providing information about booking business travel, via the Internet; Providing information relating to the planning and booking of travel and transport, via electronic means; Consultancy in the field of travel provided by telephone call centers and hotlines; Consultancy in the field of business travel provided by telephone call centers and hotlines; Providing transport and travel information via mobile telecommunications apparatus and devices; Booking of travel through tourist offices; Transport; Transport by land; Marine transport; Transport by water; River transport; Air transport; Transport by road; Ocean shipping; Bus transport; Coach transport; Boat transport; Ship transport; Passenger transport; Distribution by pipeline and cable; Packaging and storage of goods; Parking and vehicle storage, mooring.
Class 41: Educational courses relating to the travel industry; Recreational services relating to back-packing; Publication of directories relating to travel; Publishing and reporting; Education, entertainment and sports; Editorial consultation; Issue of publications; Provision of electronic publications (not downloadable); Rental of newspapers and magazines; Rental of magazines; Electronic desktop publishing; Layout services, other than for advertising purposes; Providing online electronic publications in the field of music, not downloadable; Providing on-line electronic publications, not downloadable; Providing electronic publications; Providing electronic publications relating to language training, not downloadable; Providing electronic publications from a global computer network or the Internet, not downloadable; Publication of posters; Screenplay writing; Publishing a newspaper for customers on the Internet; Publishing of musical works; Editing of printed matter containing pictures, other than for advertising purposes; Publishing of electronic publications; Publishing of medical publications; Publishing of magazines in electronic form on the Internet; Editing of written texts; Multimedia publishing of books; Multimedia publishing of printed matter; Multimedia publishing of magazines, journals and newspapers; Publication of books; Publication of audio books; Publication of calendars; Publication of calendars of events; Publication of catalogs; Song publishing; Publishing of reviews; Publishing of documents; Publication of documents in the field of training, science, public law and social affairs; Publication of educational and training guides; Publication of electronic newspapers accessible via a global computer network; Newspaper publication; Publication of newspapers, periodicals, catalogs and brochures; Publication of books relating to entertainment; Publication of music books; Publication of educational books; Publication of training manuals; Publication of work manuals for business management; Publication of material which can be accessed from databases or from the internet; Publication of multimedia material online; Publication of instructional literature; Publication of lyrics of songs in sheet form; Publication of lyrics of songs in book form; Publication of sheet music; Training in catering; Audio and video production, and photography; Library services; Sports and fitness; Education and instruction; Hosting [organising] awards; Hosting [organising] awards relating to television; Cultural activities; Entertainment, sporting and cultural activities; Sporting and cultural activities; Booking agencies concert tickets; Booking agency services for theatre tickets; Workshops for cultural purposes; Workshops for recreational purposes; Auditioning for tv game shows; Public baths [swimming pools]; Cabarets and discotheques; Summer camps [entertainment and education]; Amusement centers; Sea-life centres [recreational]; Gospel choir singing; Circuses; Songwriting; Composition of music for others; Presentation of concerts; Musical concerts by television; Entertainment services in the form of musical vocal group performances; Entertainment services in the form of musical group performances; Live musical concerts; Conducting guided tours; Special event planning consultation; Conducting of film festivals; Artistic direction of performing artists; Disc jockeys for parties and special events; Film distribution; Provision of television news shows; Entertainment; Live entertainment; Entertainment relating to wine tasting; Entertainment provided via a global communication network; Entertainment provided by cable television; Entertainment provided during intervals of sporting events; Entertainment provided via the internet; Musical entertainment; Entertainment by means of wireless television broadcasts; Entertainment provided by videotext systems; Wine tastings [entertainment services]; Male dance exhibitions; Radio entertainment; Entertainment in the nature of a water park and amusement center; Entertainment in the nature of wrestling contests; Entertainment in the nature of track and field competitions; Entertainment in the nature of weight lifting competitions; Entertainment in the nature of competitions in the field of spelling; Entertainment in the nature of symphony orchestra performances; Entertainment by means of concerts; Entertainment in the nature of yacht races; Entertainment in the nature of fashion shows; Entertainment in the nature of ethnic festival; Entertainment by film; Entertainment in the nature of ongoing game shows; Entertainment in the nature of baseball games; Entertainment in the nature of football games; Entertainment in the nature of hockey games; Entertainment in the nature of ice hockey games; Entertainment in the nature of on-going television programs in the field of variety; Entertainment in the nature of roller derbys; Entertainment in the nature of air shows; Entertainment in the nature of ballet performances; Entertainment in the nature of light shows; Entertainment in the nature of golf tournaments; Entertainment by means of roadshows; Club recreation facilities (Provision of -); Water chute complex operation; Botanical gardens; Running of museums; Aquatic recreation areas (Operation of -); Providing amusement arcade services; Providing slot machine parlors; Entertainment in the nature of boxing contests; Entertainment in the nature of theater productions; Entertainment in the nature of orchestra performances; Entertainment in the nature of television news shows; Entertainment in the nature of dance performances; Entertainment in the nature of tennis tournaments; Theatre entertainment; Television entertainment; Entertainment in the nature of an amusement park ride; Entertainment in the nature of beauty pageants; Entertainment in the nature of basketball games; Entertainment in the nature of circuses; Entertainment in the nature of gymnastic performances; Entertainment in the nature of magic shows; Entertainment in the nature of laser shows; Fan clubs; Provision of recreation information; Providing obstacle course training gym facilities; Providing zip line rides for recreational purposes; Provision of entertainment via podcast; Provision of live entertainment; Provision of water-based recreation services; Providing waterpark services; Artistic management of theatre shows; Artistic management of musical shows; Caves for public admission; Provision of information relating to books; Providing information on entertainment through computer networks; Entertainment information; Information about entertainment and entertainment events provided via online networks and the Internet; Recreation information; Information relating to computer gaming entertainment provided online from a computer database or a global communication network; Interviewing of contemporary figures for entertainment purposes; Gardens for public admission; Game shows; Internet games (non-downloadable); Hire of animals for recreational purposes; Rental of audio equipment; Rental of lighting apparatus for theatre; Rental of lighting apparatus for theatrical sets or television studios; Rental of lighting apparatus for theatrical sets; Rental of sound recordings; Rental of artwork; Rental of musical instruments; Leasing of interactive and digital compression television equipment; Rental of electronic game equipment; Rental of videotapes; Rental of kites; Rental of costumes [theatrical or masquerade]; Hire of phonograph records; Rental of show scenery; Rental of motion pictures; Rental of video games; Toy rental; Rental of amusement machines and apparatus; Rental of game machines and apparatus; Rental of bounce houses; Games equipment rental; Rental of paintings and calligraphic works; Rental of swimming pools; Rental of computer game programs; Rental of toy scooters; Live demonstrations for entertainment; Providing information in the field of music; Providing information in the field of entertainment by means of a global computer network; Providing entertainment information; Provision of entertainment information via television, broadband, wireless and on-line services; Provision of entertainment information by electronic means; Providing information, commentary and articles in the field of music via computer networks; Provision of multimedia entertainment programs by television, broadband, wireless and on-line services; Provision of non-downloadable films and television programs via a video-on-demand service; Provision of non-downloadable films and television programs via pay television; Provision of non-downloadable films and television programs via pay-per-view television channels; Providing karaoke services; Provision of cinema facilities; Provision of cinema or theatre facilities; Provision of facilities for dancing; Provision of entertainment facilities; Provision of entertainment facilities in hotels; Providing kara-oke facilities; Provision of leisure facilities; Provision of facilities for outdoor recreational activities; Provision of facilities for live band performances; Providing karaoke facilities; Providing recreation facilities; Provision of theatre facilities; Providing facilities for movies, shows, plays, music or educational training; Providing facilities for entertainment; Provision of water chute complexes; Provision of amusement facilities; Providing online entertainment in the nature of game tournaments; Provision of rooms for entertainment; Play schemes [entertainment/education]; Directing of plays; Staging of light entertainment productions; Direction or presentation of plays; Directing of theatrical shows; Directing of musical shows; Production of radio and television programmes; Providing cultural activities; Organisation of recreational activities; Organisation of group recreational activities; Organising events for cultural purposes; Organisation of events for cultural, entertainment and sporting purposes; Organising events for entertainment purposes; Musical events (Arranging of -); Organising of recreational events; Organizing community sporting and cultural events; Organization of balls; Arranging for ticket reservations for shows and other entertainment events; Hosting of fantasy sports leagues; Organisation of ceremonial events; Hosting [organising] awards relating to films; Hosting [organising] awards relating to videos; Organising of sports competitions and equestrian contests; Live band performances; Pop music concerts (Organisation of -); Musical concerts by radio; Organisation of competitions [education or entertainment]; Arranging of beauty contests; Organisation of musical competitions; Organisation of congresses and conferences for cultural and educational purposes; Organisation of automobile rallies, tours and racing events; Wedding celebrations (Organisation of entertainment for -); Organising of entertainment; Organisation of entertainment for birthday parties; Arranging of air displays; Organisation of dancing displays; Arranging of demonstrations for entertainment purposes; Fan club organisation; Organising of festivals; Organisation of parties; Organisation of galas; Organising of audience participative games; Organising of competitions [entertainment] by telephone; Organizing cultural and arts events; Organising of sporting events, competitions and sporting tournaments; Arranging of presentations for cultural purposes; Arranging of presentations for entertainment purposes; Arranging of pageants; Organisation of live musical performances; Organising of stage shows; Organising of theatre productions; Party planning; Organising of meetings in the field of entertainment; Organisation of outings for entertainment; Organization of shows [impresario services]; Organization of cultural shows; Organization of dancing events; Provision of live shows; Arranging of music performances; Arranging of visual entertainment; Arranging of visual and musical entertainment; Organization of shows for cultural purposes; Organising of shows for entertainment purposes; Organisation of shows; Organisation of comedy shows; Organisation of ice skating shows for live audiences; Organisation of entertainment and cultural events; Organisation of recreational tournaments; Organisation of Webinars; Arranging and conducting of concerts; Organisation and conducting of balls; Air shows (Arranging and conducting -); Organising and conducting lotteries; Organizing and arranging exhibitions for entertainment purposes; Organizing and presenting displays of entertainment relating to style and fashion; Organization, production and presentation of theatrical performances; Planning of plays or musical shows; Planning of movie shows.
Class 43: Tourist restaurants; Rental of furniture, linens and table settings; Temporary accommodation; Animal boarding; Provision of food and drink; Providing temporary accommodation; Restaurants; Hotels, hostels and boarding houses, holiday and tourist accommodation; Event facilities and temporary office and meeting facilities; Rental of rooms as temporary living accommodations; Rental of transportable buildings; Leasing of metal and non-metal transportable buildings; Rental of temporary accommodation; Rental of rooms for social functions; Rental of tents; Temporary room hire; Providing information about temporary accommodation via the Internet; Providing information about temporary accommodation services; Provision of caravan park facilities; Providing temporary housing accommodations; Provision of temporary furnished accommodation; Arranging and providing temporary accommodation; Room booking; Arranging temporary housing accommodations; Booking of temporary accommodation via the Internet; Accommodation letting agency services [time share]; Agency services for the reservation of temporary accommodation; Accommodation booking agency services [time share]; Travel agency services for booking accommodation; Accommodation exchange services [time share]; Hospitality services [accommodation]; Accommodation services for functions; Provision of information relating to the booking of accommodation; Charitable services, namely providing temporary accommodation; Consultancy provided by telephone call centers and hotlines in the field of temporary accommodation; Creche services provided in shopping locations; Room hire services; Holiday accommodation services; Emergency shelter services [providing temporary housing]; Booking of accommodation for travellers; Hire of bed linen; Rental of furniture for hotels; Rental of furniture; Rental of kitchen worktops for preparing food for immediate consumption; Rental of towels for hotels; Rental of fair stands; Catering; Mobile catering services; Hotel catering services; Provision of food and drink; Fast-food restaurant services; Outside catering services.
Some of the contested services are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.
- 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 assumed to be identical are directed either at the public at large or at business customers with specific professional knowledge or expertise. The degree of attention will be average.
- The signs
ONE TRIBE | INTO THE TRIBE |
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).
As far as the earlier trade mark is concerned, the English-speaking public will understand the element ‘ONE’ as ‘united, undivided’ and the element ‘TRIBE‘ as ‘a group of people who are all doing the same thing or who all behave in the same way’ (for example as in the expression ‘urban tribe’). As these elements are not descriptive, allusive or otherwise weak for the relevant services in the context of the earlier mark, they are distinctive for the English-speaking public.
For the non-English-speaking public in the EU, the element ‘TRIBE‘ of the earlier mark has no meaning and is, therefore, distinctive. ‘ONE’, understood as the numeral 1, is an English word that is likely to be understood in all Member States of the EU. As this element is not clearly descriptive, allusive or otherwise weak for the relevant services, it is distinctive for the non-English-speaking public.
As far as the contested sign is concerned, the English-speaking public will understand the element ‘INTO’ as a preposition meaning ‘inside’, the element ‘THE’ as a definite article and the element ‘TRIBE’ (in the context of the contested sign) as ‘a group of people of the same race, language or customs, especially in a developing country’. As the element ‘TRIBE’ is not descriptive, allusive or otherwise weak for the relevant services in the context of the contested sign, it is distinctive for the English-speaking public. The element ‘INTO‘, being a relatively common English preposition, and the element ‘THE’, being a definite article, are weaker than the element ‘TRIBE’ for the English-speaking public.
For the non-English-speaking public, the elements ‘INTO’ and ‘TRIBE’ of the contested sign have no meanings and are, therefore, distinctive. The element ‘THE’ is likely to be understood in all Member States of the EU as an English definite article and will, therefore, be weaker than the other two elements.
The earlier mark has no elements that could be considered clearly more distinctive than other elements.
The opponent argues that for the English-speaking public, the element ‘TRIBE’ is the core element in both marks and that the preceding elements ‘ONE’ (an adjective) and ‘INTO THE’ (a preposition plus a definite article) are only subordinate elements that merely emphasise the main element ‘TRIBE’. However, the Opposition Division cannot agree with these arguments. The English-speaking public will primarily perceive the marks as a whole, i.e. as specific phrases with their own particular meaning. The public is not likely to thoroughly analyse the marks.
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 ‘TRIBE’. However, they differ in the elements ‘ONE’ vs ‘INTO THE’ at the beginning of the marks. They also differ in their structure (two words as opposed to three) and length (eight letters versus twelve).
Therefore, the signs are visually similar only to a low degree.
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 ‘TRIBE’, present identically in both signs. The pronunciation differs in the sound of the letters ‘ONE’ vs ‘INTO THE’ at the beginning of the marks. Due to the different number of words and letters, the marks also have a different length and intonation.
Therefore, the signs are aurally similar only to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the presence of the same meaningful word ‘TRIBE’, the marks as a whole are not conceptually similar for the English-speaking public. For the non-English-speaking public, the marks will be associated with dissimilar notions and, therefore, are not conceptually similar either.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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.
- Global assessment, other arguments and conclusion
The services were assumed to be identical. The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the relevant public will be average as well.
The marks are visually and aurally similar only to a low degree due to the presence of the same word element ‘TRIBE’ at the end of the marks. Conceptually, the marks are not similar. It is important to note that the differences between the marks, namely ‘ONE’ vs ‘INTO THE’, are concentrated in a prominent position at the beginning of the marks. Furthermore, the marks differ in their structure and length. Finally, as far as the English-speaking public is concerned, the different concepts of the marks perceived as a whole have a particular significance.
On balance, it is considered that the overall impressions created by the marks are not sufficiently similar to cause likelihood of confusion, be it on the part of the English-speaking public or the remaining part of the EU public. The public is not likely to attribute the same commercial origin to the services sold under the marks in dispute solely on the basis of the coincidence in the word ‘TRIBE’.
Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition on the ground of Article 8(1()(b) EUTMR must be rejected.
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.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.
In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.
On 21/03/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 26/07/2016.
The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Richard BIANCHI | Vít MAHELKA | Lucinda CARNEY |
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.