RACE ATTACK | Decision 2605452

Date Published: Sep 28, 2017

OPPOSITION No B 2 605 452

Real Automovil Club De España, Isaac Newton, 4 Parque Tecnológico de Madrid (PTM), 28760 Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Heinz-Rüdiger Schimanko, Tiefer Graben 30, 1010 Wien, Austria (applicant), represented by Heinz-Dietmar Schimanko, Reisnerstr. 20/4, 1030 Wien, Austria (professional representative).

On 08/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 605 452 is partially upheld, namely for the following contested goods and services:

Class 4: Fuels (including motor spirit).

Class 9: Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Computer programs; Computer software; Computer games programs; Fire-extinguishing apparatus; Diving equipment; Safety, security, protection and signalling devices; Optical devices, enhancers and correctors; Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting and monitoring instruments, indicators and controllers; Magnets, magnetizers and demagnetizers; Information technology and audiovisual equipment; Devices for treatment using electricity; Recorded content; Apparatus, instruments and cables for electricity; Scientific research and laboratory apparatus, educational apparatus and simulators.

Class 16: Filtering materials of paper; Fiberboard boxes; Printed matter; Newspapers; Periodicals; Folders; Informational sheets; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Printers' type; Printing blocks.

Class 18: Leather and imitation leather; Key cases made of leather; Trimmings of leather for furniture; Animal skins, hides; Saddlery, whips and animal apparel; Umbrellas and parasols; Luggage, bags, wallets and other carriers.

Class 35: Advertising; Advertising agencies; Arranging advertising contracts, for others; Planning services for advertising; Production of advertising films; Writing of publicity texts; Layout services for advertising purposes; Arranging and conducting of advertising events; Demonstration of goods; Presentation of goods and services for advertising and sales purposes; Publication of printed matter (including in electronic form), for advertising purposes; Dissemination of advertising matter; Distribution of advertising material; Dissemination of advertising matter; Bill-posting; Advertising by mail order; Radio advertising; Arranging sponsor agreements for advertising purposes; Professional business consulting; Business management and organization consultancy; Business organisation consulting; Office functions; Personnel management consultancy; Public relations services; News clipping services; Presentation of companies on the internet and other media for advertising and sales purposes; Presentation of goods on communications media for retail purposes; Procurement for others (purchasing of goods and services for other businesses); Marketing services; Commercial promotions; Collection of goods, for others, for presentation and sales purposes; Organisation of trade fairs for commercial or advertising purposes; Arranging and conducting of fashion shows for advertising and sales promotion purposes; Auctioneering services; Marketing studies; Opinion polling; Business research; Business information; Commercial information agencies; Economic forecasting; Compilation of statistics; Business administration and business management services.

Class 39: Travel arrangement; Travel arrangement; Transport; Packaging and storage of goods.

Class 41: Education; Providing of training; Ongoing education; Entertainment; Sporting and cultural activities; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of symposiums; Arranging and conducting of seminars; Workshops (Arranging and conducting of -) [training]; Arranging and conducting of colloquiums; Arranging and conducting of concerts; Arranging of exhibitions for cultural or educational purposes; Organization of balls; Arranging of beauty contests; Providing of shows for entertainment purposes; Performances (Presentation of live -); Organisation and staging of competitions; Arranging and conducting of trips by means of vehicles of all kinds; organisation and provision of auto sports; Other than fitness studios, health training and fitness training clubs, and rental of sports apparatus and sports equipment, other than vehicles.

Class 42: Scientific and technological services and research services.

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

Class 45: Personal background investigations; Adoption agency services; Arranging of travellers; Arranging of tour guides; Arranging of participants in competitions; Arranging of participants in sporting events; Arranging of participants in motorsport events; Arranging of participants in sporting competitions; Arranging of participants in trips by means of vehicles; Adoption placement; Marriage bureaus; Dating services; Chaperoning; Organization of religious meetings; Other than placement of customers and members at fitness studios and health training and fitness training clubs.

2. European Union trade mark application No 14 341 176 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 341 176, namely against all the goods and services in Classes 4, 9, 16, 18, 25, 35, 39, 41, 42, 43 and 45. The opposition is based on Spanish trade mark registration No 3 551 123. 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 goods and services

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

Class 9: Scientific, nautical, surveying, electric, 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 discs; compacts discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; correcting lenses; spectacles; sunglasses; clip-on sunglasses; contact lenses; lenses, glasses, frames, sidepieces, chains and cords for spectacles and sunglasses; covers and cases adapted for optical apparatus and products; covers and cases for spectacles, sunglasses and contact lenses; holders for spectacles and sunglasses; covers, carriers and bags adapted for computers, telephones, electronic agendas, radios and portable media players; accelerometers; acid hydrometers; batteries, electric, for vehicles; aerometers; agendas (electronic -); anti-theft warning apparatus; alcoholmeters; mouse pads; ammeters; calibrating rings; aerials; speed checking apparatus for vehicles; global positioning system [GPS] apparatus; navigation apparatus for vehicles [on-board computers]; vehicle radios; radio pagers; precision measuring apparatus; telephone apparatus; life saving apparatus and equipment; beacons, luminous; batteries, electric; compasses (directional -); starter cables for motors; junction boxes [electricity]; gauges; shoes for protection against accidents, irradiation and fire; signal bells; battery chargers; chargers for electric batteries; headphones; protective helmets; protective helmets for sports; life jackets; life belts; traffic cones; cell phone straps; milage recorders for vehicles; revolution counters; densimeters; reflecting discs for wear, for the prevention of traffic accidents; steering apparatus, automatic, for vehicles; balancing apparatus; gasometers [measuring instruments]; gloves for protection against accidents; gloves for divers; hardware; pressure in vehicle tires [tyres] (automatic indicators of low -); gasoline gauges; slope indicators; electric loss indicators; temperature indicators; vacuum gauges; speed indicators; water level indicators; theft prevention installations, electric; hand free kits for phones; limiters [electricity]; signal lanterns; safety tarpaulins; flashing lights [luminous signals]; protective masks; USB flash drives; modems; signalling panels, luminous or mechanical; vehicle steering apparatus, automatic; pointers (light-emitting electronic -); radar apparatus; nets for protection against accidents; safety nets; life nets; voltage regulators for vehicles; knee-pads for workers; life buoys; whistle alarms; signalling whistles; simulators for the steering and control of vehicles; computer keyboards; teleprompters; thermostats for vehicles; electronic pocket translators; clothing for protection against accidents, irradiation and fire; anti-dazzle and anti-glare visors; downloadable electronic publications; electronic publications recorded on computer mediav; computer software applications, downloadable.

Class 16: Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus): plastic materials for packaging (not included in other classes); printers’ type; printing blocks; writing materials; document files [stationery]; clips for offices; flower-pot covers of paper; bookbindings; inkstands; document holders [stationery]; drawing instruments; writing instruments; tablecloths of paper; bookmarkers; writing brushes; paper-clips; paperweights; pen cases; pencil holders; pencil lead holders; coasters of paper; erasing products; printed publications; periodicals; table napkins of paper; bookends; page holders; greeting cards; towels of paper; napkins of paper for removing make-up; face towels of paper; newsletters; printed publications and manuals on the subject of road safety.

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbreallas and parasols; walking sticks; whips, harness and saddlery; luggage, bags, briefcases and carrier bags; handbag; evening bags; bags; shopping bags; pouches; holdalls; rucksacks; school bags; fanny packs; duffel bags; shoulder belts [straps]; sling bags for carrying infants and safety harnesses for children; vanity cases, not fitted; travelling sets [leatherware]; cases, of leather or leatherboard; garment bags for travel; tie cases; portfolios; purses; wallets (pocket-); key cases; card holders; credit card cases; jewellery rolls for travel; leather garments; coverings of skins [furs]; boxes of leather; laces and straps of leather; umbrella and parasol covers; clothing for pets; collars for animals; covers and wraps for animals; leatherboard; leather, unworked or semi-worked; worked or semi-worked hides and other leather; trimmings of leather for furniture; walking stick seats; pouch baby carriers; furniture coverings of leather; hat boxes of leather.

Class 25: Clothing; footwear, headgear; aprons [clothing]; masquerade costumes; overalls; belts (money -) [clothing]; kerchiefs [clothing]; pocket squares; shoulder scarves; garments for protecting clothing; motorists’ and motorcyclists’ clothing; uniforms; wedding gowns.

Class 35: Advertising; business management; business administration; office functions; procurement services for others (purchasing goods and services for other businesses); updating of advertising material; import-export agencies; commercial information agencies; advertising agencies; rental of vending machines; rental of advertising space; rental of photocopying machines; office machine and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; advisory services for business management; business management assistance; business auditing; data search in computer files for others; marketing research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; professional business consultancy; book-keeping; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; dissemination of advertising matter; distribution of samples; relocation services for businesses; drawing up of statements of accounts; marketing studies; outsourcing services (business assistance); invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; computerized file management; business management of performing artists; business inquiries; business information; commercial information and advice for consumers (consumer advice shop); business investigations; marketing; typing; modelling for advertising or sales promotion; payroll preparation; employment agencies; organization of fashion shows for promotional purposes; organization of exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; psychological testing for the selection of personnel; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; publicity; on-line advertising on a computer network; outdoor advertising; direct mail advertising; advertising by mail order; radio advertising; television advertising; compilation of statistics; writing of publicity texts; public relations; document reproduction; secretarial services; personnel recruitment; business efficiency experts; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription; word processing; business appraisals; wholesaling or retailing of pharmaceutical, veterinary, or hygienic preparations and medical supplies; auctioneering; updating and maintenance of data in computer databases; providing business information via a web site.

Class 39: Transport; packaging and storage of goods; travel arrangement; carting; escorting of travellers; air transport; storage; storage of goods; physical storage of electronically stored data or documents; aircraft rental; rental of warehouses; motor coach rental; car rental; boat rental; horse rental; rental of diving bells; rental of motor racing cars; railway coach rental; rental of freezers; rental of storage containers; rental of diving suits; garage rental; rental of aircraft engines; parking place rental; rental of vehicle roof racks; refrigerator rental; rental of wheelchairs; railway truck rental; vehicle rental; car parking; vehicle breakdown assistance (towing); bus transport; car transport; boat storage; hauling; chauffer services; operating canal locks; freight brokerage (forwarding); transport brokerage; ship brokerage; unloading cargo; water distribution; electricity distribution; distribution of energy; packaging of goods; wrapping of goods; flower delivery; freight forwarding; stevedoring; freighting; freight (shipping of goods); franking of mail; transport by pipeline; storage information; traffic information; transportation information; lighterage services; launching of satellites for others; marine transport; removal services; transporting furniture; arranging of cruises; arranging of tours; passenger transport; piloting; porterage; pleasure boat transport; refloating of ships; towing; message delivery; delivery of goods; delivery of goods by mail order; parcel delivery; delivery of newspapers; booking of seats for travel; icebreaking; salvaging of ships; rescue operations (transport); salvaging; underwater salvage; bottling services; courier seruir.es (messages or merchandise), transportation logistics, water supplying; ferry-boat transport; transportation; ambulance transport; boat transport; barge transport; taxi transport; armored car transport; river transport; railway transport; guarded transport of valuables; transport reservation; transport and storage of waste; tram transport; transport of travellers; travel reservation; sightseeing (tourism); rental of navigational systems; providing driving directions for travel purposes.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; academies (education); animal training; modelling for artists; rental of radio and television sets; rental of video cameras; rental of movie projectors and accessories; rental of sports grounds; rental of videotapes; rental of show scenery; rental of audio equipment; rental of skin diving equipment; rental of lighting apparatus for theatrical sets or television studios; games equipment rental; rental of sports equipment, except vehicles; rental of stadium facilities; rental of sound recordings; toy rentals; rental of motion pictures; rental of tennis courts; rental of camcorders; entertainer services; mobile library services; ticket agency services (entertainment); calligraphy services; sport camp services; holiday camp services (entertainment); providing casino facilities (gambling); circuses; conducting of fitness classes; health club services (health and fitness training); night clubs; club services (entertainment or education); coaching (training); layout services, other than for advertising purposes; music composition services; timing of sports events; vocational retraining; correspondence courses; discotheque services; dubbing; educational services; physical education; religious education; entertainment; stage scenery (rental of); music halls; presentation of live performances; production of shows; movie studios; recording studio services; educational examination; cinema presentations; providing golf facilities; providing sports facilities; providing amusement arcade services; practical training (demonstration); photography; gymnastic instruction; videotaping; nursery schools; entertainment information; recreation information; education information; boarding schools; sign language interpretation; gambling; game services provided on-line from a computer network; providing karaoke services; electronic desktop publishing; microfilming; videotape editing; production of radio and television programmes; providing museum facilities (presentation, exhibitions); organization of balls; organization of sports competitions; organization of competitions (education or entertainment); arranging of beauty contests; organization of fashion shows for entertainment purposes; organization of shows (impresario services); organization of exhibitions for cultural or educational purposes; party planning (entertainment); operating lotteries; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging of award ceremonies; arranging and conducting of symposiums; arranging and conducting of workshops (training); vocational guidance (education or training advice); orchestra services; amusement parks; personal trainer services (fitness training); lending libraries, videotape film production; film production, other than advertising films; production of music; radio entertainment; television entertainment; publication and editing of texts, books, magazines and other printed matter; editing, publication and electronic delivery of books and journals on line; publication of books; publication of texts, other than publicity texts; publication of electronic books and journals on-line; providing recreation facilities; scriptwriting services; writing of texts, other than publicity texts; photographic reporting; news reporters services; theatre productions; booking of seats for shows; disc jockey services; school services; language interpreter services; zoological garden services; subtitling; providing on-line electronic publications, not downloadable; translation; funfairs; providing gaming house facilities; entertainment ticket agency services; providing on-line music, not downloadable; providing on-line videos, not downloadable; driving instruction and driving instruction in road safety; dissemination of educational material; electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; vehicle roadworthiness testing; tyre analysis services; testing of vehicles; software (updating of computer-); electronic data storage; hosting computer sites [web sites]; computer rental; rental of web servers; rental of computer software; computer system analysis; web site design consultancy; data conversion of computer programs and data [not physical conversion]; creating and maintaining web sites for others; design of interior décor; dress designing; computer system design; design (industrial-); mechanical research; technical research.

Class 43: Services for providing food and drink; temporary accommodation; reservations (temporary accommodation -); making reservations and bookings for restaurants and meals; providing campground facilities; accommodation bureaux [hotels, boarding houses]; catering (food and drink -); holiday camp services [lodging]; tourist homes; boarding for animals; retirement homes.

Class 45: Legal services; security services for the protection of property and individuals; stolen vehicle location services; security information, advisory, and consultancy services; monitoring of burglar and security alarms; monitoring of burglar and security alarms; monitoring of alarms; security risk assessment; accident investigation; accident reporting; missing person investigations; escorting in society (chaperoning); adoption agency services; detective agencies; night guards; marriage agencies; rental of fire alarms; rental of safes; rental of fire extinguishers; clothing rental; evening dress rental; opening of security locks; arbitration services; dating services; licensing of intellectual property; licensing of computer software (legal services); security consultancy; intellectual property consultancy; litigation services; crematorium services; pet sitting; baby sitting; house sitting; lost property return; funerals; fire-fighting; copyright management; personal body guarding; horoscope casting; baggage inspection for security purposes; inspection of factories for safety purposes; personal background investigations; genealogical research; legal research; mediation; organization of religious meetings; planning and arranging of wedding ceremonies; undertaking; intellectual property watching services; guards; registration of domain names (legal services); alternative dispute resolution services; stolen goods location services.

After a limitation of the list of goods and services the contested goods and services are the following:

Class 4: Fuels (including motor spirit).

Class 39: Travel arrangement; Travel arrangement; Transport; Packaging and storage of goods.

Class 42: Scientific and technological services and research services.

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

Class 45: Personal background investigations; Personal shopping services for others; Adoption agency services; Arranging of travellers; Arranging of tour guides; Arranging of participants in competitions; Arranging of participants in sporting events; Arranging of participants in motorsport events; Arranging of participants in sporting competitions; Arranging of participants in trips by means of vehicles; Adoption placement; Marriage bureaus; Dating services; Chaperoning; Organization of religious meetings; Other than placement of customers and members at fitness studios and health training and fitness training clubs.

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 4

The contested Fuels (including motor spirit) have no relevant connections with the opponent’s goods and services in Classes 9, 16, 18, 25, 35, 39, 41, 42, 43 and 45. They are different in their nature and intended purpose as can be gleaned from the wording. They are neither complementary nor in competition. Furthermore, their usual origin is different. Although it is noted that some goods or services covered by the earlier mark may be indirectly related to fuels, such as the gasoline gauges in Class 9 and transport services of Class 39, the contested fuels are not indispensable for the use of these goods or services in the sense that the relevant consumer would think that they come from the same undertaking. The consumers are very well aware that these goods and services pertain to different market sectors, the contested fuels originating from oil companies while the gauges and transport services come from manufacturers of measuring devices and professional transporters respectively. Therefore, they are dissimilar.

Contested goods in Class 9

The contested apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; computer programs; computer software; fire-extinguishing apparatus are identically contained in both lists of goods (including synonyms).

The contested optical devices, enhancers and correctors are included in the broad category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested navigation, guidance, tracking, targeting and map making devices overlap with the opponent’s nautical apparatus and instruments to the extent that the latter are used for navigation, guidance, tracking, targeting and map making purposes. Therefore, these goods are identical.

The contested measuring, detecting and monitoring instruments, indicators and controllers are either included in the broad category of the opponent’s measuring apparatus and instruments or overlap with this broad category to the extent that former goods detect, monitor or control by measuring. Therefore, they are identical.

The contested scientific research and laboratory apparatus are included in the broad category of the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested educational apparatus and simulators are included in the broad category of the opponent’s teaching apparatus and instruments. Therefore, they are identical.

The contested cables for electricity are included in the broad category of the opponent’s apparatus and instruments for conducting electricity. Therefore, they are identical.

The contested apparatus, instruments for electricity include as a broader category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. 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 devices for treatment using electricity are scientific or laboratory devices that use electricity to charge the composition of a material, such as ozonators and ionizers and therefore are included in the broad category of the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested information technology equipment includes, as a broader category the opponent’s data processing equipment. 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 audiovisual equipment is included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images.

Therefore, they are identical.

The contested recorded content includes, as a broader category the opponent’s electronic publications recorded on computer media. 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 safety, security and protection devices include, as broader categories inter alia the opponent’s beacons, luminous; safety tarpaulins; nets for protection against accidents; safety nets; life nets; life buoys. 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 signalling devices include, as broader category inter alia the opponent’s signal lanterns; flashing lights [luminous signals]; signalling panels, luminous or mechanical. 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 diving equipment is included in the broad category of the opponent’s nautical apparatus and instruments. Therefore, they are identical.

The contested magnets can be used in a number of ways and serve a variety of purposes. Inter alia, they are routinely used as a decorative or functional piece of stationery at home (e.g. fridge magnets) or in the office environment (e.g. board magnets) to hold in place reminders or sheets of paper in presentations. The contested magnetizers and demagnetizers are devices used to give or remove magnetic properties to or from various objects. All the aforementioned goods can serve the same purpose as the opponent’s stationery in Class 16. They target the same relevant public and are sold through the same distribution channels. Therefore,

these goods are similar.

Contested goods in Class 16

The contested printed matter; periodicals; informational sheets; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); printers' type; printing blocks are identically contained in both lists of goods.

The contested folders are identical to the opponent’s document files [stationery] albeit phrased differently.

The contested newspapers are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested filtering materials of paper are included in the broad category of the opponent’s paper, as the latter includes filter paper. Therefore, they are identical.

The contested fiberboard boxes are similar to the opponent’s plastic materials for packaging (not included in other classes), since these goods have the same purpose (packaging) and, therefore, can be in competition, bought in the same shops and target the same public.

Contested goods in Class 18

The contested leather and imitation leather; trimmings of leather for furniture; animal skins, hides; saddlery, whips; umbrellas and parasols; bags, wallets are identically contained in both lists of goods.

The contested key cases made of leather are included in the broad category of the opponent’s key cases. Therefore, these goods are identical.

The contested animal apparel includes, as a broader category the opponent’s clothing for pets. 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 luggage includes, as a broader category the opponent’s travelling sets [leatherware]; cases, of leather or leatherboard; garment bags for travel. 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 other carriers includes, as a broader category the opponent’s pouches; fanny packs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

However, the remaining contested goods in Class 18, namely sausage skins and imitations thereof have no relevant connections with the opponent’s goods and services in Classes 9, 16, 18, 25, 35, 39, 41, 42, 43 and 45. The contested goods are used to enclose the filling of a sausage and are either derived from the intestinal tract of farmed animals and edible, or made of collagen, cellulose or plastic and may not be edible at all. Therefore, they do not only have a different nature but also satisfy different purposes than the goods and services covered by the earlier mark, including the animal skins. They are neither complementary nor in competition. Furthermore, their usual origin is different. These goods are, therefore, dissimilar.

Contested services in Class 35

The contested advertising; business management; business administration; office functions; auctioneering services; news clipping services; opinion polling; business management services are identically contained in both lists of services (including synonyms).

The contested advertising agencies; arranging advertising contracts, for others; planning services for advertising; production of advertising films; writing of publicity texts; layout services for advertising purposes; arranging and conducting of advertising events; demonstration of goods; presentation of goods and services for advertising and sales purposes; publication of printed matter (including in electronic form), for advertising purposes; dissemination of advertising matter; distribution of advertising material; dissemination of advertising matter; bill-posting; advertising by mail order; radio advertising; arranging sponsor agreements for advertising purposes; public relations services; presentation of companies on the internet and other media for advertising and sales purposes; presentation of goods on communications media for retail purposes; marketing services; commercial promotions; collection of goods, for others, for presentation and sales purposes; organisation of trade fairs for commercial or advertising purposes; arranging and conducting of fashion shows for advertising and sales promotion purposes; marketing studies are all types of advertising and therefore they are included in the broad category of the opponent’s advertising. Thus, they are identical.

The contested professional business consulting; organization consultancy; business organisation consulting; personnel management consultancy; business research; business information; economic forecasting are all services intended to help companies manage their business by setting out the strategy and/or direction of the company. Therefore, they are included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested compilation of statistics belongs to the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. Therefore, it is included in the broad category of the opponent’s office functions. Therefore, they are identical.

The contested procurement for others (purchasing of goods and services for other businesses); commercial information agencies are intended to help companies with the performance of business operations defined by the organisation’s board of directors. Therefore, they are included in the broad category of the opponent’s business administration. Therefore, they are identical.

Contested services in Class 39

Travel arrangement (2x); transport; packaging and storage of goods are identically contained in both lists of services.

Contested services in Class 41

As a preliminary remark it must be mentioned that the limitation at the end of the specification of this class “Other than fitness studios, health training and fitness training clubs, and rental of sports apparatus and sports equipment, other than vehicles” merely seems to limit the scope of protection of the contested sporting activities since the other contested services in Class 41 do not relate to fitness or health clubs, rental of sports equipment or vehicles for that matter.

Considering the above, the contested sporting activities other than fitness studios, health training and fitness training clubs, and rental of sports apparatus and sports equipment, other than vehicles are included in the broad category of the opponent’s sporting activities. Therefore, they are identical.

The contested education; providing of training; entertainment; cultural activities; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of symposiums; arranging and conducting of seminars; workshops (arranging and conducting of -) [training]; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging of exhibitions for cultural or educational purposes; organization of balls; arranging of beauty contests; performances (presentation of live -) are identically contained in both lists of services.

The contested arranging and conducting of trips by means of vehicles of all kinds; organisation and provision of auto sports are included in the broad category of the opponent’s sporting and cultural activities. Therefore, they are identical.

The contested providing of shows for entertainment purposes includes, as a broader category the opponent’s organization of shows (impresario services). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested organisation and staging of competitions includes, as a broader category the opponent’s organization of competitions (education or entertainment). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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

Contested services in Class 42

The contested scientific and technological services and research services are identically contained in both lists of services.

Contested services in Class 43

The contested services for providing food and drink, temporary accommodation are identically contained in both lists of services.

Contested services in Class 45

As a preliminary remark it must be mentioned that the limitation at the end of the specification of this class “Other than placement of customers and members at fitness studios and health training and fitness training clubs” merely seems to limit the scope of protection of the contested arranging of participants in competitions; arranging of participants in sporting events; arranging of participants in sporting competitions, since the other services in this class do not include the placement of customers and members at fitness studios and health training and fitness training clubs.

As regards the abovementioned contested services, as well as the contested arranging of travellers; arranging of tour guides; arranging of participants in motorsport events; arranging of participants in trips by means of vehicles, it must be noted that all these are personal and social services provided to individuals in relation with sporting and cultural events. Therefore, they have a similar nature and purpose as the opponent’s sporting and cultural activities, may target the same public, are to some extent in competition and can be provided by the same undertakings through the same distribution channels. Therefore, they are highly similar. The fact that some of the contested services do not include placement of customers and members at fitness studios and health training and fitness training clubs does not change this finding since the sporting services or competitions can take place in other locations.

The contested personal background investigations; adoption agency services; marriage bureaus; dating services; chaperoning; organization of religious meetings are identically contained in both lists of services including synonyms.

The contested adoption placement is included in the broad category of the opponent’s adoption agency services. Therefore, they are identical.

However, the contested personal shopping services for others have no relevant points in common with the opponent’s goods and services in Classes 9, 16, 18, 25, 35, 39, 41, 42, 43 and 45. These goods and services have different natures and purposes as can be gleaned from the wording. Furthermore, they are not provided by the same companies or through the same distribution channels. Even though it is noted that the opponent’s clothing rental; evening dress rental may involve clothing advice, this service is ancillary intended to support or supplement the rental services; they are not considered to be complementary within the meaning of the case law in the sense that they are indispensable for the use of the opponent’s services. Therefore, the contested personal shopping services for others are considered dissimilar to all of the opponent’s goods and services.

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 are partly directed at the public at large including professionals (e.g. the scientific goods in Class 9) and partly at business customers with specific professional knowledge or expertise only (e.g. the business support services in Class 35 and scientific and technological services of Class 42). Their degree of attention may vary from average to high depending on the price, (specialised) nature, or terms and conditions of the purchased or contracted goods and services. For example, where the consumer is likely to pay an average degree of attention when purchasing the often inexpensive daily consumer goods such as the magnets of Class 9, he/she may be highly attentive when acquiring the services of a consultancy firm.

The signs

RACE ATTACK

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 applicant argues that the word ‘RACE’ is devoid of any distinctive character since it is a basic English term that is also known in Spain and merely serves to refer to competition in general which is immanent in any business related to the offering of goods and services against competitors.

The Opposition Division disagrees since this line of reasoning is not in line with the relevant case law. See for example decisions 30/01/2015, R 175/2014-5, RACEKING (FIG. MARK) / RACE, 09/04/2014, R 786/2013-1, RACECODE / RACE, 08/01/2008, R 382/2007-2, RACE FACE PERFORMANCE PRODUCTS (fig.)/ RACE and 09/09/2015, R 1566/2014-4, RACECRAFT / RACE, where the Boards of Appeal stated the following concerning the meaning of the word ‘RACE’ “this word does not belong to the category of basic English words that a significant part of the relevant public in Spain would be familiar with […] To the Board’s knowledge, the salesperson and the purchaser of, for example, a ‘racing bicycle’ or a ‘racer’ would refer to it in Spanish as a ‘bicicleta de carreras’ and not to its English equivalent”. Hence, the word ‘RACE’ will not be understood by a significant part of the relevant public and, therefore, must be considered distinctive.

Hence, contrary to the applicant’s argument the earlier mark is not registered merely because of its figurative elements. In fact, the crown is a commonly used laudatory symbol of power, legitimacy, victory, triumph, honour and glory and, therefore, is clearly less distinctive than the meaningless verbal element ‘RACE’. Further, considering the sheer size of the word ‘RACE’ vis-à-vis the image of the crown, this word also clearly stands out as the dominant element of the earlier mark.

The applicant further argues that even if the term ‘RACE’ is considered an acronym for the name of the opponent, the relevant consumer is unlikely to think that the contested sign is composed of a Spanish acronym and the English word ‘ATTACK’, but will rather perceive it as a combination of two existing English words with the independent meaning of ‘attacking the race’.

For the reasons explained above this argument cannot succeed either. Neither ‘RACE’ nor ‘ATTACK’ is a basic English word that a significant part of the Spanish relevant consumer will be familiar with. Therefore, it must be concluded that the contested sign has no elements which are clearly more distinctive than others, both being equally distinctive. As a word mark, it has no elements which are more dominant than others either.

Visually, the signs coincide in the distinctive verbal element ‘RACE’ which is the sole verbal element of the earlier mark and the first verbal element of the contested sign. They differ in the earlier mark’s figurative element and the word ‘ATTACK’ of the contested sign. However, considering that the word ‘RACE’ is the main element of the earlier mark, being both the dominant and more distinctive element, and that it plays an independent distinctive role in the contested sign at the more noticeable beginning of the mark, the differentiating elements, i.e. the crown and the word ‘ATTACK’, cannot counterbalance the visual similarity in the common verbal element ‘RACE’. Hence, the signs must be considered visually similar to an average degree.

Aurally, the signs coincide in the pronunciation of the two-syllable-word /RA-CE/. What differentiates them is the two-syllable-word ‘AT-TACK’ of the contested sign, since the figurative element of the earlier mark will not be pronounced. Therefore, due to the common beginning and complete repetition of the earlier mark in the contested sign the marks must be found aurally similar to an average degree.

Conceptually, the word that both signs have in common, ‘RACE’, has no meaning in Spanish in relation to the goods and services in question. The additional verbal element of the contested sign ‘ATTACK’ has no meaning either. Although the crown of the earlier mark does have a meaning for the Spanish public, this figurative element does not serve to differentiate the marks conceptually, since it will be perceived as a laudatory element of limited distinctiveness. Therefore, in spite of the concept of the figurative element in the earlier mark, the conceptual comparison does not really influence the assessment of similarity of the marks.

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.

According to the opponent, the earlier trade mark has a reputation in Spain.

Such 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 (11/11/1997, C-251/95, ‘Sabel’), 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’).

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 08/07/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 35: Advertising; business management; business administration; office functions; procurement services for others (purchasing goods and services for other businesses); updating of advertising material; import-export agencies; commercial information agencies; advertising agencies; rental of vending machines; rental of advertising space; rental of photocopying machines: office machine and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; advisory services for business management; business management assistance; business auditing; data search in computer files for others; marketing research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; professional business consultancy; book-keeping; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; dissemination of advertising matter; distribution of samples; relocation services for businesses; drawing up of statements of accounts; marketing studies; outsourcing services (business assistance): invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; computerized file management; business management of performing artists; business inquiries; business information; commercial information and advice for consumers (consumer advice shop); business investigations; marketing; typing; modelling for advertising or sales promotion; payroll preparation; employment agencies; organization of fashion shows for promotional purposes; organization of exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; psychological testing for the selection of personnel; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; publicity; on-line advertising on a computer network; outdoor advertising; direct mail advertising; advertising by mail order; radio advertising; television advertising; compilation of statistics; writing of publicity texts; public relations; document reproduction; secretarial services; personnel recruitment; business efficiency experts; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription; word processing; business appraisals; wholesaling or retailing of pharmaceutical, veterinary, or hygienic preparations and medical supplies; auctioneering; updating and maintenance of data in computer databases; providing business information via a web site.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; banking actuarial services; real estate management; apartment house management; financial management; customs brokerage; accommodation bureaux (apartments); debt collection agencies; credit bureaux; real estate agencies; housing agents; renting of flats; rental of offices (real estate); financial analysis; lease-purchase financing; leasing of real estate; leasing of farms; debt advisory services; home banking; safe deposit services; financial clearing; rent collection; mutual funds; insurance consultancy; financial consultancy; brokerage; brokerage of carbon credits; insurance brokerage; securities brokerage; stocks and bonds brokerage; stock exchange quotations; deposits of valuables; factoring; issue of tokens of value; issuing of travellers' checks (cheques); issuance of credit cards; repair costs evaluation (financial appraisal); fiscal assessments; financial evaluation (insurance, banking, real estate); surety services; trusteeship; financing services; provident fund services; insurance information; financial information; capital investments; retirement payment services; business liquidation services, financial; exchanging money; organization of collections; instalment loans; financial sponsorship; lending against security; loans (financing); pawnbrokerage; charitable fund raising; mortgage banking; savings bank services; insurance underwriting; accident insurance underwriting; fire insurance underwriting; life insurance underwriting; marine insurance underwriting; health insurance underwriting; credit card services; debit card services; antique appraisal; jewellery appraisal; art appraisal; stamp appraisal; numismatic appraisal; real estate appraisal; electronic funds transfer; financial evaluation of standing timber; financial evaluation of wool; check (cheque) verification.

Class 37: Building construction; assembly (installation) of parts (including electronic parts) of vehicles; advisory services relating to the installation of engines and gearboxes; advisory and information services relating to vehicle repair; motor vehicle repair shop services; vehicle upholstering and repair services; upholstering; knife sharpening; air conditioning apparatus installation and repair; building insulating; masonry; warehouse construction and repair; rental of drainage pumps; rental of bulldozers; rental of excavators; rental of cranes (construction equipment); rental of road sweeping machines; rental of construction equipment; rental of cleaning machines; burglar alarm installation and repair; pumicing; mending clothing; elevator installation and repair; asphalting; vehicle breakdown assistance (repair); airplane maintenance and repair; varnishing; clothes bleaching; pump repair; safe maintenance and repair; boiler cleaning and repair; heating equipment installation and repair; shoe repair; strong-room maintenance and repair; film projector repair and maintenance; kitchen equipment installation; bricklaying; paper hanging; construction; building of fair stalls and shops; shipbuilding; construction consultation; leather care, cleaning and repair; demolition of buildings; chimney sweeping; disinfecting; rat exterminating; cabinet making (repair); electric appliance installation and repair; vehicle lubrication (greasing); vehicle service stations (refuelling and maintenance); quarrying services; vermin exterminating, other than for agriculture; mining extraction; factory construction; photographic apparatus repair; installation, maintenance and repair of computer hardware; furnace installation and repair; building sealing; fire alarm installation and repair; construction information; repair information; installation of doors and windows; washing; washing of linen; vehicle wash; painting or repair of signs; sanding; vehicle cleaning; cleaning of buildings (exterior surface); cleaning of buildings (interior); diaper cleaning; cleaning of clothing; window cleaning; dry cleaning; street cleaning; swimming-pool maintenance; machinery installation, maintenance and repair; scaffolding; furniture maintenance; snow-making services; office machines and equipment installation, maintenance and repair; pipeline construction and maintenance; umbrella repair; road paving; drilling of wells; drilling of deep oil or gas wells; fur care, cleaning and repair; interior and exterior painting; pressing of clothing; linen ironing; plumbing; clothing repair; harbour construction; vehicle polishing; burner maintenance and repair; refilling of toner cartridges; retreading of tires (lyres); rebuilding machines that have been worn or partially destroyed; rebuilding engines that have been worn or partially destroyed; freezing equipment installation and repair; clock and watch repair; riveting; renovation of clothing; repair of security locks; underwater repair; re-tinning; restoration of musical instruments; furniture restoration; restoration of works of art; irrigation devices installation and repair; pier breakwater building; carpentry services; parasol repair; underwater construction; building construction supervision; interference suppression in electrical apparatus; upholstery repair; roofing services; telephone installation and repair; anti-rust treatment for vehicles; rustproofing; vehicle maintenance; car wash; motor vehicle maintenance and repair; vulcanization of tires (tyres) (repair); plastering; tire (tyre) balancing; installation, maintenance and repair of computer hardware; vehicle battery charging; inspection of vehicles prior to maintenance and repair; servicing of motor vehicles; vehicle tuning.

Class 39: Transport; packaging and storage of goods; travel arrangement; carting; escorting of travellers; air transport; storage; storage of goods; physical storage of electronically stored data or documents; aircraft rental; rental of warehouses; motor coach rental; car rental; boat rental; horse rental; rental of diving bells; rental of motor racing cars; railway coach rental; rental of freezers; rental of storage containers; rental of diving suits; garage rental; rental of aircraft engines; parking place rental; rental of vehicle roof racks; refrigerator rental; rental of wheelchairs; railway truck rental; vehicle rental; car parking; vehicle breakdown assistance (towing); bus transport; car transport; boat storage; hauling; chauffer services; operating canal locks; freight brokerage (forwarding); transport brokerage; ship brokerage; unloading cargo; water distribution; electricity distribution; distribution of energy; packaging of goods; wrapping of goods; flower delivery; freight forwarding; stevedoring; freighting; freight (shipping of goods); franking of mail; transport by pipeline; storage information; traffic information; transportation information; lighterage services; launching of satellites for others; marine transport; removal services; transporting furniture; arranging of cruises; arranging of tours: passenger transport; piloting; porterage; pleasure boat transport; refloating of ships; towing; message delivery; delivery of goods; delivery of goods by mail order; parcel delivery; delivery of newspapers; booking of seats for travel; icebreaking; salvaging of ships; rescue operations (transport); salvaging; underwater salvage; bottling services; courier services (messages or merchandise); transportation logistics; water supplying; ferry-boat transport; transportation; ambulance transport; boat transport; barge transport; taxi transport; armored car transport; river transport; railway transport; guarded transport of valuables; transport reservation; transport and storage of waste; tram transport; transport of travellers; travel reservation; sightseeing (tourism): rental of navigational systems; providing driving directions for travel purposes.

Class 41: Education; providing of training; entertainment: sporting and cultural activities; academies (education); animal training; modelling for artists; rental of radio and television sets; rental of video cameras; rental of movie projectors and accessories; rental of sports grounds; rental of videotapes; rental of show scenery; rental of audio equipment; rental of skin diving equipment; rental of lighting apparatus for theatrical sets or television studios; games equipment rental; rental of sports equipment, except vehicles; rental of stadium facilities; rental of sound recordings; toy rentals; rental of motion pictures; rental of tennis courts; rental of camcorders; entertainer services; mobile library services; ticket agency services (entertainment); calligraphy services; sport camp services; holiday camp services (entertainment); providing casino facilities (gambling); circuses; conducting of fitness classes; health club services (health and fitness training); night clubs; club services (entertainment or education); coaching (training); layout services, other than for advertising purposes; music composition services; timing of sports events; vocational retraining; correspondence courses; discotheque services; dubbing; educational services; physical education; religious education; entertainment; stage scenery (rental of); music halls; presentation of live performances; production of shows; movie studios; recording studio services; educational examination; cinema presentations; providing golf facilities; providing sports facilities; providing amusement arcade services; practical training (demonstration); photography; gymnastic instruction; videotaping; nursery schools; entertainment information; recreation information; education information; boarding schools; sign language interpretation; gambling; game services provided on-line from a computer network; providing karaoke services; electronic desktop publishing; microfilming; videotape editing; production of radio and television programmes; providing museum facilities (presentation, exhibitions); organization of balls; organization of sports competitions; organization of competitions (education or entertainment); arranging of beauty contests; organization of fashion shows for entertainment purposes; organization of shows (impresario services): organization of exhibitions for cultural or educational purposes; party planning (entertainment); operating lotteries; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging of award ceremonies; arranging and conducting of symposiums; arranging and conducting of workshops (training); vocational guidance (education or training advice): orchestra services; amusement parks; personal trainer services (fitness training); lending libraries; videotape film production; film production, other than advertising films; production of music; radio entertainment; television entertainment; publication and editing of texts, books, magazines and other printed matter; editing, publication and electronic delivery of books and journals on line: publication of books; publication of texts, other than publicity texts; publication of electronic books and journals on-line; providing recreation facilities; scriptwriting services; writing of texts, other than publicity texts; photographic reporting; news reporters services; theatre productions; booking of seats for shows; disc jockey services; school services; language interpreter services; zoological garden services; subtitling; providing on-line electronic publications, not downloadable; translation; funfairs; providing gaming house facilities; entertainment ticket agency services; providing on-line music, not downloadable; providing on-line videos, not downloadable; driving instruction and driving instruction in road safety; dissemination of educational material; electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 27/06/2016 the opponent submitted the following evidence:

A market survey conducted in July-August 2013 by the company TNS. This shows that within the automobile insurance sector in Spain, the RACE mark takes the first place in spontaneous awareness, at 47%, ahead of MAPFRE, MM (MUTUA MADRILENA) and RACC.

Numerous, partially translated, decisions of OHIM, the Spanish Trademark Office, Chamber Three of the Contentious-Administrative Division of the Spanish Supreme Court and the High Court of Justice of Madrid acknowledging the reputation of the mark RACE.

Untranslated copies of part of the book ‘Topbrands - El Libro de las Grandes Marcas en España- Volumen I’ published in 2002 by the ‘Brand Council, The Independent Authority on Branding’ in which RACE is listed as a top brand among other brands like McDonalds, Volkswagen, Yahoo and Nestlé.

Copy of an Affidavit dated 22/01/2003 by the President of Real Automovil Club de España in which is, inter alia, stated that:

RACE was awarded the Gold medal for Traffic Safety and the Gold Badge for Touristic merit by King Juan Carlos in 1982.

Is founding member of the International Automobile Federation (IAF) since 1904 and of Arc Transistance S.A. since 1990 and member of Alliance of International Tourism (AIT) since 1923.

RACE performs its operations through almost fifty offices throughout Spain and through the San Sebastian de los Reyes Sports Complex and the Jarama Race Track where various automobile sports events are held and other activities, such as advanced driving courses, are undertaken.

Translated copies of portions of the undated members’ magazine ‘Autoclub - Revista de los socios del Real Automóvil Club de España’ containing a description of the history, the foundation and the services provided by RACE, i.e. recovery of vehicles, roadside assistance, technical inspection of vehicles, travel assistance, legal assistance regarding traffic violations, vehicle formalities services, driving school/perfection services, car insurance, provision of tourist and travel information and organisation of motor competitions. It also contains a list of RACE offices in Spain.

Partially translated copies of the relevant portions of the opponent’s annual reports corresponding to the fiscal years 2011, 2012 and 2013. The revenues in 2011 were EUR 29 867 560, in 2012 EUR 29 010 297 and in 2013 EUR 27 659 886.

Translated copies of portions of the opponent’s by-laws indicating that the association’s corporate purpose is, inter alia, to provide advice, protection, information and representation to its members in relation to the use and enjoyment of automobiles, to promote sporting activities and to organise car races, competitions and tests.

An extract from the web site www.fia.com, dated 14/10/2002, containing links to press release about motor rallies, crash test reports, a FIA brochure, a road safety campaign and a description of RACE and its activities.

Undated extracts from the web site www.arceurope.com.

An undated partially translated brochure from ARC Transistance indicating the main objectives of this organization.

Several undated partially translated advertising brochures concerning, inter alia, RACE’s assistance in helping members to find the best suitable car and other membership advantages.

An extract from the magazine ‘Trafico’ (2003 edition) showing that in June 2003 the Spanish Post Office issued a set of four stamps to mark the centenary of RACE.

A copy of an undated and untranslated document titled ‘RACE multimedia revista’ containing an overview of all the media in which the RACE marks are mentioned in the year 2013.

A translated list of reports and studies undertaken by RACE in the years 2012 and 2013 in the field of road safety including a partially translated document about a fatigue prevention campaign launched by, inter alia, RACE.

Untranslated copies of the Spring-Summer 2013 number of the RACE ‘Autoclub’ magazine and of the RACE ‘actualidad’ magazine of February 2013.

Untranslated copy of part of the February 2013 number of the Actualidad RACE magazine.

Partially translated photocopy of an article in which the RACE marks appear, published in the newspaper ABC dated 20/07/2015 in connection with an event called Conducir una ilusión (drive with enthusiasm) arranged by the Organización de Ciegos Españoles (ONCE) (the Spanish organization for the blind), the automobile manufacturer SEAT and the Real Automóvil Club de España (RACE)

A partially translated article published in the Spanish daily newspaper ‘ABC’, dated 12/12/2013, where reference is made to the remodelling, scheduled for competition in 2021 of RACE’s Jarama track. And further information concerning the Jarama track, such as the calendar of sporting events programmed there in the years 2014 and 2015 and some specific sports events.

The opponent has submitted an abundance of documents comprising, amongst other evidence, several decisions of EUIPO and the Spanish Patent Office, as well as judgments of the national courts. Both the Offices and the Spanish courts have on many occasions held, according to the material submitted by the opponent, that the mark of the opponent is well known. Although on the mere basis of earlier decisions and judgments the Office cannot conclude that the earlier mark is reputed, it can be deduced from the remaining evidence, in particular the other evidence of independent sources, such as the market survey regarding car insurances, the book ‘Topbrands - El Libro de las Grandes Marcas en España- Volumen I’ and the websites of the European automobile clubs, that the mark RACE has been present in the Spanish market since the beginning of the 20th century offering all sorts of services related to the use and enjoyment of automobiles to its members and members of the international automobile clubs it is (founding) member of. Furthermore, it is clear from the association’s by-laws and members’ magazine that its activities range from recovery of vehicles, roadside assistance, technical inspection of vehicles, travel assistance, legal assistance regarding traffic violations, vehicle formalities services, driving schools, car insurance and the provision of tourist and travel services to the organisation of sporting activities offered via its widespread offices and sport complexes in Spain. Further taking into account that the opponent’s publicly available annual reports demonstrate that in the year 2012 it obtained EUR 29 010 297 from membership fees only, it must be concluded that the mark enjoys a high degree of recognition among the relevant public.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Spain for the following services:

Class 35: Vehicle formalities services.

Class 36: Car insurance.

Class 37: Car repair services.

Class 39: Travel assistance and travel arrangement.

Class 41: Driving schools; car races.

Although most of these specifications are not mentioned in the list of services for which the opponent claims reputation, they can be considered to form objective subcategories of the broader categories of services for which the opponent has claimed reputation, namely

Class 35: Office functions;

Class 36: Insurance underwriting;

Class 37: Motor vehicle maintenance and repair;

Class 39: Transport.

Class 41: School services; organization of sports competitions.

As regards the remaining goods and services for which no reputation has been established, 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 in relation to any of the goods and services at hand 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528 § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness for most of the goods and services found identical or similar to those of the contested mark and a reputation for some of these, namely some specific services in Classes 35, 39 and 41. Furthermore, the contested goods and services were found identical, similar or dissimilar to those of the earlier mark and are directed at a public whose level of attention may vary from average to high. The marks in dispute have been found to be visually and aurally similar to an average degree, while the signs do not convey any clearly differentiating concepts that will aid the relevant consumers in distinguishing between them.

Indeed, the only meaningful element, i.e. the image of the crown in the earlier mark, will not have much of an impact on the overall perception of the signs, since it will be perceived as a laudatory element of limited distinctiveness and not as an indicator of origin or element that could distinguish the signs conceptually. Hence, that difference can certainly not counteract the visual and aural similarity.

In light of all the foregoing considerations, especially taking into account that the dominant and distinctive element of the earlier mark is repeated in first position in the contested sign, where it fulfils an independent distinctive role, the Opposition Division concludes that it is likely that even a more attentive Spanish consumer could believe, for instance, that the goods or services designated by the conflicting signs distinguish different product lines coming from the same or related undertakings.

Indeed, considering that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically-related ones (C-39/97, ‘Canon’, EU:C:1998:442, § 30), the relevant Spanish consumer may, for instance, think that the word ‘ATTACK’ in the contested sign indicates a sub brand of the brand ‘RACE’.

Therefore, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration No 3 551 123. 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 those of the earlier trade mark. The opposition is not successful insofar as the remaining dissimilar goods and services are concerned.

The Opposition Division will now proceed with the examination of the ground of Article 8(5) EUTMR in relation to the goods and services found dissimilar namely:

Class 4: Fuels (including motor spirit).

Class 18: Sausage skins and imitations thereof.

Class 45: Personal shopping services for others.

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 shall 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.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

The signs have already been compared 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.

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 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.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙ the degree of similarity between the signs;

∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙ the strength of the earlier mark’s reputation;

∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙ the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As for the proximity of the market sectors, even if the relevant section of the public as regards the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 49).

It is in the light of the above jurisprudence that the opponent’s claim must be examined. In the present case it is likely that such a link will exist with respect to the contested fuels (including motor spirit) of Class 4.

A number of factors lead to this conclusion. First, the opponent’s RACE mark is such a well-known mark in Spain that it is bound to be known to the public to which the abovementioned contested goods are directed. Secondly, although the nature of the services for which the earlier mark is well-known is not exactly the same as that of the contested goods mentioned above, they are connected in the sense that they both relate to the proper use or functioning of vehicles. Therefore, the first element RACE of the contested sign when used in relation to these goods, is likely to bring to mind the opponent’s famous mark, that is to say, they will establish a mental ‘link’ between these signs.

However, an association between the signs is not likely insofar as the other remaining goods and services in Classes 18 and 45 are concerned, since they are so different from the services for which the earlier mark is reputed that, in spite of some overlap between the marks’ targeted publics, the later mark is unlikely to bring the earlier mark to the mind of the relevant public. Unlike the goods for which a link has been established above, the remaining contested goods and services have nothing to do with the use and enjoyment of automobiles. The remaining goods in Class 18 Sausage skins and imitations thereof are used to enclose the filling of a sausage and have a completely different field of application outside of the scope of automobiles namely in the charcuterie business. The same is true for the remaining services in Class 45: Personal shopping services for others which services are rendered by an individual who is paid to assist another to purchase goods, either by accompanying them while shopping or by shopping on their behalf. Therefore, given the enormous cleavage between the nature of these goods and services and the services for which the opponent has demonstrated repute, the Opposition Division does not consider it plausible that the relevant consumer would make any link to the earlier mark if the contested sign were used in relation to these goods or services merely because of the high repute of the earlier mark and fact that the signs have the element RACE in common. Furthermore, the opponent has failed to put forward any concrete evidence or argument on the basis of which the Opposition Division could hold that the use of the contested sign in relation to such goods and services would bring the opposing trade mark to mind.

Given that the relevant section of the public of the remaining contested goods and services is unlikely to establish a link between the trade marks in dispute, such a link being a precondition for the application of Article 8(5) EUTMR (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 30–31), the Opposition Division concludes that the use of the contested sign in connection with those goods will not take advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark in so far as it is directed against:

Class 18: Sausage skins and imitations thereof

Class 45: Personal shopping services for others.

Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected as far as it concerns these goods and services. The Opposition Division will now continue with the further examination of article 8(5) EUTMR in relation to the goods for which a link has been established namely Fuels (including motor spirit) of Class 4.

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙ it is detrimental to the repute of the earlier mark;

∙ it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims inter alia the following:

The notion of what constitutes taking unfair advantage of the distinctive character or repute of a trade mark includes transfer, i.e., cases in which the image of the reputed mark or its features and attributes are projected onto the goods or services to which the junior mark is affixed. In the instant case we have seen that the RACE mark has been present in the marketplace for many years. The mark further reflects the image of a business enterprise with an outstanding history which has achieved great success over the years, won the trust of the public and built up a solid reputation for reliability thanks to the excellent quality of all its services and the road safety campaigns it is constantly conducting. That image would be projected directly onto the goods/services claimed by the new application even if the sectors to which the two marks relate were different, although in this case they are not.

Similarly, granting the contested mark would allow the owners thereof to benefit from the reputation of the earlier mark by taking unfair advantage of its capacity to attract consumers and of the advertising investments made therein. The other party's mark would thus be permitted to penetrate the market far more easily, thanks to the familiarity of consumers with the ‘RACE’ mark and to the trust that they place in it. Consumers who chose to use the services offered under the ‘RACE ATTACK’ mark could gather the mistaken impression that they were ‘RACE’ goods/services or were being offered with our client’s approval or authorization, when that is not the case.

The grant of the contested application could thus give rise to misappropriation of the fame, prestige and reputation of the opponents' ‘RACE’ marks, not only because of the high degree of recognition which the latter has earned among consumers but also because of the image of excellence, reliability and quality which it conveys. That image can exert a positive influence on the choice consumers make at the time of purchasing the goods/services of one manufacturer or another. Thus, the opponents should have the right to prevent the applicants from taking unfair advantage of the fame, prestige and reputation of the ‘RACE’ mark to the benefit of the later mark.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:

Class 4: Fuels (including motor spirit).

As seen above, the earlier trade mark was found to have a reputation for:

Class 35: Vehicle formalities services.

Class 36: Car insurance.

Class 37: Car repair services.

Class 39: Travel assistance and travel arrangement.

Class 41: Driving schools; car races.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

According to the Court of Justice of the European Union… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

As has been seen above, the opponent, in part, bases its claim on the allegation that the contested sign will free-ride on the coattails of the reputed trademark ‘RACE’ because it will unfairly enjoy some of the recognition that attaches to the earlier mark and in this way benefit from the years of effort and investment that the opponent has expended in advertising and building up the reputation of its earlier mark.

The concept of taking unfair advantage does not necessarily imply a deliberate intention to exploit the goodwill attaching to someone else’s trade mark. In several cases, the General Court has held that the concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation (see judgments of 19/06/2008, T-93/06, ‘Mineral Spa’, EU:T:2008:215, § 40; of 22/03/2007, T-215/03, ‘VIPS’, EU:T:2007:93, § 40; and of 30/01/2008, T-128/06, ‘Camelo’, EU:T:2008:22, § 46).

In the present case, it is likely that the applicant’s use of the term ‘RACE’ as an independent distinctive part of its mark in relation to the applicant’s goods, would take unfair advantage of the ‘RACE’ mark in the sense recognised by the General Court in the preceding paragraph. In view of the undoubted reputation of the mark ‘RACE’, it seems inevitable that the image of the mark and the characteristics that it projects will be transferred to the applicant’s goods if they are marketed under the contested sign.

The goods may well be sought by the same public seeking the opponent’s reputed services. The consumers of the contested fuels in Class 4 will mainly consist of car owners and therefore, they will at the same time be interested in any of the opponent’s reputed services, such as its car insurance, or driving lessons, or its road assistance services.

Therefore, given the earlier mark’s repute for services involving assistance to motorists, these relevant consumers, when faced with the contested sign, RACE ATTACK, for fuels (including motor spirit), which are essential for the proper functioning of cars, will immediately will make the connection with the opponent‘s ‘RACE’-mark and will expect that the goods offered have the same image and quality standards as those offered by the opponent. For example, they may think that these goods have been approved, certified or recommended by RACE.

Consequently, in view of the reproduction of the distinctive term ‘RACE’, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s ‘RACE’ mark in the minds of consumers in Spain, because the marketing of the applicant’s goods would be made easier, as its mark contains a key element that will be immediately recognised by the relevant public in Spain. Of course, it is because of the efforts of the opponent in Spain, not those of the applicant, that the contested sign starts off with an immediate degree of recognition. Again, it must be recalled that ‘RACE’ is inherently distinctive in Spain and has no meaning in Spanish, so it is not a term that is used in other contexts. Overall, the contested sign’s association with the opponent’s earlier well-known sign in Spain makes the contested sign easier for the relevant Spanish consumer to remember and recognise and, given this, the contested sign would exploit the attractive powers or distinctiveness of the earlier mark. The contested sign will thus benefit from the repute of the earlier mark.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following remaining goods:

Class 4: Fuels (including motor spirit).

The opposition is not successful insofar as the remaining goods and services 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. 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 shall 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

Christian RUUD

Adriana VAN ROODEN

Catherine MEDINA

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.

RACE ATTACK | Decision 2605452

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