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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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TUESDAY, 31 MAY 2016
General Court: Ocean Ibiza(fig) v. O.C. Ocean Club Ibiza (fig.)

 

In Judgment T-6/15, the General Court dismissed the appeal in this summer themed opposition:

 

Ice Mountain Ibiza, SL

Atlantic Ocean Club Marbella, SL – earlier Spanish marks

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Class 41  'services related to party rooms of nightclubs and services; nightclubs, discos services;production and disc publishing (CDs, LPs, cassettes and videos) (...) production and organization of shows; entertainment services, including providing information to an entertainment-related database;  (…) booking of entertainment shows of places

Servi Class 41 Services of sports clubs and entertainment ",

 

Both the Opposition Division and Board of Appeal of the EUIPO found that the differences between the marks were not sufficient to exclude the existence of a likelihood of confusion.

First, the signs have a certain degree of visual similarity. The word elements of the marks have the same value as the figurative elements and the common term "ocean" is located in a prominent position. It cannot be excluded that the figurative element of the mark applied for is perceived as referring to the capital letters "O" and "C", reinforcing the visual similarity of impression gained of the signs.

This impression is not changed by the absence of the word "club" in the applied for mark or by the use of different colors.  Moreover, the golden color of the mark applied for could be perceived as referring to sand or sun by a large part of the public and, therefore, be associated with the same concept of ocean that the blue color of the earlier mark .

As regards the distinctive character of the word elements, the term "club" is purely descriptive of the services in question and the descriptiveness of the term "ibiza" present in the two conflicting signs, is not disputed by the parties.

As to the term "ocean", it will be perceived by the Spanish public as having a distinctive character for the services in question. Even if part of the relevant public was the link between the term and its meaning in Spanish, this does not limit the inherent distinctiveness of the word "ocean" for the services concerned. Indeed, there is no direct link between the sea and the characteristics that define the services in Class 41 or the characteristics the type of establishment where such services are offered (including discos, theaters, auditoriums or recording studios). If such institutions may have characteristics related to the sea or to implement such a concept of marketing (coastal location, marine decoration, gastronomy based on seafood or offer water activities), it would be a mere coincidence and a business owner may carry an activity without these characteristics.

Moreover the documents produced by the applicant do not demonstrate the lack of distinctive character of the term "ocean" because of his alleged heavy use and the alleged peaceful coexistence of many traders using the term "ocean "or" oceanic "in combination with other terms to describe the same or similar services.

In that regard, it should be recalled that the relevant factor for the purpose of challenging the distinctiveness of an element is in its actual presence in the market and not in registers or databases, and also the actual knowledge or perception by the public must be proven.

Therefore, given the identity of the services covered by the marks, and that the signs have a certain visual, phonetic and conceptual similarity, despite the importance of visuals in the leisure sector in general and the existence of graphics and colors characteristic for the brands in conflict, there is a risk of confusion according to Article 8(1) b) EUTMR.

 

Posted by: Laetitia Lagarde @ 10.40
Tags: General court, likelihood of confusion, ocean ibiza,,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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