O2OPTIMAL | Decision 2740515
Date Published: Sep 25, 2017
OPPOSITION No B 2 740 515
O2 Centro Wellness, S.L., C/ Doctor Trueta, 13, 08005 Barcelona, Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)
a g a i n s t
Terrapromo, JJ Strossmayera 341, Osijek 31000, Croatia (applicant), represented by Ivan Stefanic, Gajev trg 6, Osijek 31000, Croatia (professional representative).
On 24/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 740 515 is upheld for all the contested services, namely
Class 41: Organisation of sports competitions.
2. European Union trade mark application No 15 141 138 is rejected for all the contested services. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the services of European Union trade mark application No 15 141 138 , namely against all the services in Class 41. The opposition is based on, inter alia, Spanish trade mark registration No 2 576 292. 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 Spanish trade mark registration No 2 576 292.
- The services
The services on which the opposition is based are the following:
Class 41: Sports facilities operation, health clubs (keeping fit), gymnastics instructions, physical education (gym), water gymnastics and thermal pools; organization and management of conferences, seminars and exhibitions all of them of character cultural, recreational and or sports; the organization of cultural activities, sports, leisure, free time and leisure; service information, consultation and advice related activities indicated and offered through any means; franchise services issued by companies and aimed at realization of the activities described.
The contested services are the following:
Class 41: Organisation of sports competitions.
The contested organisation of sports competitions is included in the broad category of the opponent’s services for organization of sports. Therefore, these services are identical.
- 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 as well as at business customers with specific professional knowledge or expertise, for example organising of sports competitions.
The degree of attention may vary from average to above average as for example sports competitions may be organised for a high number of people and need a lot of organisational skill, such as for arranging the place where the event takes place, contacting people interested, take security measures, etc.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Spain.
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 figurative mark consisting of the verbal elements ‘O2 Centro Wellness’ written in capitalized black standard case letters with the exception of the letter ‘O’, which appears in light blue colour. The first element ‘O2’ is placed at the top of the mark in a perceptibly bigger typeface, and the remaining words, which are not visually so eye-catching, are depicted underneath. Therefore, the element 'O2' in the earlier mark is considered dominant (visually more eye-catching). This element refers to the chemical formula for dioxygen, a colourless, odourless, tasteless gas formed by two oxygen atoms. Whilst it is unlikely that this will be fully recognised as such by all the relevant consumers, it is likely that, given that it is presented as a standard chemical formula 'O2' and that the element Oxygen (O) is widely known, the consumers will associate this element with a chemical formula related to oxygen. Either way, it has no particular meaning in relation to the services concerned and is, therefore, considered to be distinctive.
On the other hand, the second, Spanish, word ‘Centro’ in the earlier mark, which refers to a place where various activities might be organized, is considered weak for the services at issue, since it alludes to the place where the opponent’s services are provided.
The word ‘Wellness’ of the earlier mark is an English word referring to the state of being in good physical and mental health. Part of the relevant public in Spain is not likely to understand the meaning of this word and would thus see it as distinctive. However, taking into account that ‘wellness’ is a word commonly used in the health and sports sector, part of the relevant public, and in particular the professional public with special knowledge and expertise in the sports sector, will understand the meaning of ‘wellness’. For this part of the public, the words ‘Centro Wellness’ will be perceived as one conceptual unit referring to an establishment offering services for the body and health and thus as being of only weak distinctiveness.
The contested sign is also a figurative mark consisting of the verbal elements ‘O 2 OPTIMAL’ written in standard upper case letters and slightly stylized in a way that the number ‘2’ (in light blue with white outlines) partially overlap with the letter ‘O’ (in dark blue) on its right bottom side. In addition, the word ‘OPTIMAL’, written in dark blue (with exception of the letter ‘O’ in light blue), partly covers the bottom parts of the other elements of the mark.
The applicant contends that the mark will be read as ‘OPTIMAL 2 O’. Nevertheless, taking into account that the public reads from left to right (and top to bottom), the part placed at the left (or at the top) of the sign (the initial part) is the one that first catches the attention of the reader. Accordingly, the Opposition Division considers that, contrary to the applicant’s arguments, the relevant public will read the mark as, ‘O 2 OPTIMAL’. Moreover, in view of the particular configuration of the sign, contrary to the applicant’s arguments, the mark will most likely be perceived as containing the elements ‘O2 OPTIMAL’ and thus as representing a chemical formula and be perceived in the same way as that already explained above in relation to this element of the earlier mark.
Therefore, for the same reasons as those outlined above in relation to the earlier mark, the element ‘O2’ of the contested sign is considered distinctive in relation to the services in question.
The element ‘OPTIMAL’ is an English word referring to the best level or state that something could achieve, the meaning of which will be understood by the Spanish public due to the similar equivalent in Spanish (óptimo/a). Because of the merely laudatory character of this word, it is considered weak for the relevant services. However, the contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in Spain who may perceive the additional words in the earlier mark, ‘Centro Wellness’, as a conceptual unit and weak element as explained above.
In view of the foregoing, visually and aurally the signs coincide in the distinctive element ‘O2’, being also the dominant element in the earlier sign, and the element that first catches the attention of the consumers (as it is placed at the top of both signs). Furthermore, the colour depiction of the first letters of the marks is similar in the sense that they are both displayed in similar shades of blue. The remaining smaller elements of the marks hardly constitute a great difference between them because of their weak and secondary character in the signs.
Therefore, the signs are visually and aurally similar to, at least, an average degree.
Conceptually, reference is made to the semantic content of the signs for the part of the public under analysis as outlined above. Since the difference between the signs for this part of the public is limited to the additional weak elements ‘centro wellness’ in the earlier mark, which merely refers to an establishment offering services for the body and health, and ‘optimal’ in the contested sign, merely reinforcing that the services offered are the best that one could achieve, they are conceptually similar to a high degree.
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 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 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 for the part of the relevant public under analysis as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the contested services are identical to the opponent’s services. The degree of attention of the relevant public may vary from average to above average. The signs in dispute have been found to be visually and aurally similar to, at least, an average degree and conceptually highly similar.
The signs coincide in the element ‘O2’, which is their most distinctive element, placed at the top where consumers generally tend to focus when being confronted with a trade mark for the reasons explained in section c) of this decision. On the other hand, the differences between the signs are limited to their respective weak and secondary elements and to the slightly different stylization of the marks.
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.
In view of the foregoing, the Opposition Division is of the opinion that the differences between the marks are not sufficient to counteract their similarities, and in consequence the part of the relevant public under analysis, even that with an above average degree of attention, is likely to believe that the identical services provided under the signs in dispute come from the same undertaking or from economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public under analysis in the relevant territory. As the likelihood of confusion for only part of the public of the European Union is sufficient to reject the contested application, it is not necessary to analyze the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 576 292. It follows that the contested trade mark must be rejected for all the contested services.
As the earlier right ‘O2 Centro Wellness’ 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Sam GYLLING | Begoña | Pedro JURADO MONTEJANO |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.