M2Me | Decision 2814245

OPPOSITION DIVISION
OPPOSITION No B 2 814 245
Fashiontv.com GmbH, Elsenheimerstr. 43, c/o R.A.W. Unternehmensberatung
GmbH, 80687 München, Germany (opponent), represented by Mitscherlich, Patent-
Und Rechtsanwälte, Partmbb, Sonnenstraße 33, 80331 München, Germany
(professional representative)
a g a i n s t
Etic Telecom, 13 Chemin du Vieux Chêne, 38240 Meylan, France (applicant).
On 12/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 814 245 is partially upheld, namely for the following
contested goods and services:
Class 9: Educational apparatus and simulators; recorded content.
Class 42: Science and technology services.
2. European Union trade mark application No 15 318 215 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 all the goods and services of European
Union trade mark application No 15 318 215 for the figurative mark
. The opposition is based on European Union trade mark
registration No 15 104 102 for the figurative mark . The
opponent invoked Article 8(1)(a) and (b), as well as Article 8(5) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 814 245 page: 2 of 9
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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear.
Class 41: Film production, motion picture rental, projection of films, radio and
television entertainment; services in the field of education, but not referring to HIV
and AIDS and issues relating to pregnant women and new mothers with HIV and
AIDS; services in the field of entertainment (included in class 41), musical, singing,
theatre and dancing performances, live and via media; education via radio or
television, not in the field of HIV and AIDS and issu.es relating to pregnant women
and new mothers living with HIV and AIDS; production of radio and television
programs, sporting and cultural activities; production, rental and showing of films
(entertainment); educational films excluding those in the field of HIV and AIDS and
issues relating to pregnant women and new mothers living with HIV and AIDS, stored
on recorded video carders and CDs, CD ROMs and DVDs; entertainment films,
stored on recorded video carriers and CDs, CD ROMs and DVDs; organization of
award shows; organization and arranging of fashion shows for entertainment
purposes; entertainment.
Class 45: Legal services; security services for the protection of property and
individuals; escorting in society (chaperoning); marriage agencies; agency services
for arranging personal introductions; matchmaking services; dating services, internet
dating services, dating agency services, video dating services, computer dating
services.
The contested goods and services are the following:
Class 9: Magnets, magnetizers and demagnetizers; Scientific research and
laboratory apparatus, educational apparatus and simulators; Recorded content;
Navigation, guidance, tracking, targeting and map making devices; Safety, security,
protection and signalling devices; Devices for treatment using electricity; Optical
devices, enhancers and correctors; Measuring, detecting and monitoring
instruments, indicators and controllers; Information technology and audiovisual
equipment; Diving equipment.
Class 38: Telecommunication services.
Class 42: Design services; IT services; science and technology services; testing,
authentication and quality control.
Decision on Opposition No B 2 814 245 page: 3 of 9
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Contested goods in Class 9
The contested educational apparatus and simulators are similar to the opponent’s
services in the field of education, but not referring to HIV and AIDS and issues
relating to pregnant women and new mothers with HIV and AIDS in Class 41. These
goods and services have the same purpose, they are provided by the same
undertakings and target the same relevant public. Moreover, they are
complementary.
The contested recorded content is similar to the opponent’s services in the field of
education, but not referring to HIV and AIDS and issues relating to pregnant women
and new mothers with HIV and AIDS in Class 41. These goods and services are
provided by the same undertakings, they share the same distribution channels and
target the same relevant public. Moreover, they are complementary.
The remaining goods, namely magnets, magnetizers and demagnetizers; scientific
research and laboratory apparatus, navigation, guidance, tracking, targeting and
map making devices; safety, security, protection and signalling devices; devices for
treatment using electricity; optical devices, enhancers and correctors; measuring,
detecting and monitoring instruments, indicators and controllers; information
technology and audiovisual equipment; diving equipment are dissimilar to the
opponent’s goods and services in Classes 25 (clothing, footwear and headgear), 41
(education, entertainment, sporting and cultural activities) and 45 (legal, security and
dating services). Despite the fact that some of the contested goods might be
somehow related to some of the opponent’s services, for example audiovisual
equipment and film production or diving equipment and sporting activities, this
relation is not close enough to find a similarity. As far as the services of film
production are concerned, it is true that they make use of audiovisual equipment.
However, it is clear that these goods and services have a different commercial origin.
With respect to the diving equipment, it is not usual for providers of sporting services
to sell diving equipment directly manufactured by them. Consequently, all the
remaining contested goods and the opponent’s goods and services have a different
nature, purpose and method of use. These goods and services are not
complementary nor in competition with each other. Furthermore, most of these goods
and services are provided by different undertakings, through different distribution
channels and target a different relevant public.
Contested services in Class 38
The contested telecommunication services are dissimilar to the opponent’s goods
and services in Classes 25, 41 and 45, of which a more detailed explanation has
already been given above. The fact that some of the opponent’s services are
provided by means of telecommunication is not sufficient to find a similarity.
Consequently, the contested telecommunication services and the opponent’s goods
and services have a different nature, a different purpose and a different method of
Decision on Opposition No B 2 814 245 page: 4 of 9
use. These goods and services are not complementary nor in competition with each
other. Furthermore, these goods and services are provided by different undertakings,
through different distribution channels and target a different relevant public.
Contested services in Class 42
The contested science and technology services are similar to the opponent’s
services in the field of education, but not referring to HIV and AIDS and issues
relating to pregnant women and new mothers with HIV and AIDS in Class 41. These
services have the same purpose, they are provided by the same undertakings and
share the same distribution channels.
The contested design services; IT services; testing, authentication and quality control
are dissimilar to the opponent’s goods and services in Classes 25 (clothing, footwear
and headgear), 41 (education, entertainment, sporting and cultural activities) and 45
(legal, security and dating services). These goods and services have a different
nature, purpose and method of use. These goods and services are not
complementary nor in competition with each other. Furthermore, most of these goods
and services are provided by different undertakings, through different distribution
channels and target a different relevant public.
b) 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 similar are directed at the
public at large and at a professional public with specific professional knowledge or
expertise.
The public’s degree of attentiveness may vary from average to high, depending on
the price, specialised nature, or terms and conditions of the goods and services
purchased or offered.
c) The signs
Earlier trade mark Contested sign
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
Decision on Opposition No B 2 814 245 page: 5 of 9
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The marks as a whole have no meaning. However, the Court has held that, although
the average consumer normally perceives a mark as a whole and does not proceed
to analyse its various details, the fact remains that, when perceiving a word sign, they
will break it down into elements which, for them, suggest a specific meaning or which
resemble words they know (judgment of 13/02/2007, T-256/04, ‘Respicur’, paragraph
57).
The element ‘2’ present in both marks will be perceived as the cardinal number two,
or by the English-speaking public in an informal short way to say ‘to’. It has no direct
meaning in relation to the relevant goods and services and is, therefore, distinctive.
Although the last letter ‘e’ in the contested sign is in a different colour, it cannot be
excluded that part of the relevant public (for example the English-speaking public) will
perceive it, together with the preceding letter ‘M’, as the word ‘Me’, ‘a reference to the
speaker as the object of a verb or preposition’. When the English-speaking public will
perceive the element ‘Me’, it will also be likely that the number ‘2’ will be perceived as
‘to’, forming the expression ‘to me’. These elements have, however, no relevant
meaning in relation to the relevant goods and services for the relevant public and are,
therefore, distinctive regardless of the manner in which they are perceived.
As regards the earlier mark, it is composed of distinctive verbal elements and a less
distinctive figurative element of a purely decorative nature, namely the red figurative
element between the two letters ‘M’. Therefore, the verbal elements are more
distinctive than the figurative element. In this respect, it can also be noted that when
signs consist of both verbal and figurative components, in principle, the verbal
component of the sign usually has a stronger impact on the consumer than the
figurative component. This is because the public does not tend to analyse signs and
will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37).
The marks have no element that could be considered clearly more dominant than
other elements.
Visually, the verbal element ‘M2M’ of the earlier mark is fully incorporated at the
beginning of the contested sign. Consumers generally tend to focus on the beginning
of a sign when they encounter a trade mark. This is because the public reads from
left to right, which makes the part placed at the left of the sign (the initial part) the one
that first catches the attention of the reader. However, the marks differ in the last
green letter ‘e’ of the contested sign and in the less distinctive figurative element in
the earlier mark. Furthermore, the marks differ in their stylisation, which is, however,
not that elaborated that it can take away the attention from the verbal elements.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides for a significant part of the
relevant public in the sound of the letters ‘M2M’, which will be pronounced depending
on the language as M deux M’ (French), ‘M dos M’ (Spanish), ‘M twee M’ (Dutch),
etc. For this part of the relevant public, the pronunciation differs in the sound of the
last letter ‛e’ of the contested sign, which has no counterpart in the earlier mark. For
the part of the relevant public that will perceive the element ‘Me’ in the contested
sign, the pronunciation will also slightly differ in the sound of the second letter ‘M’.
Decision on Opposition No B 2 814 245 page: 6 of 9
Therefore, for part of the relevant public, the signs are aurally similar to a high
degree, while for another part of the relevant public, they are aurally similar to an
average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be associated with a similar
meaning on account of the number ‘2’ (in the sense of ‘two’ or ‘to’, as explained
above), while the contested sign also evokes, for part of the relevant public, the
concept of ‘Me’, the signs are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness,
but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the services in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal, despite the presence of a weak element in the mark, as stated above in
section c) of this decision.
e) 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. 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 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).
The conflicting goods and services are partly similar and partly dissimilar. The
relevant public is the public at large and a professional public, the level of attention
will vary from average to high. The earlier mark has a normal degree of
distinctiveness.
Decision on Opposition No B 2 814 245 page: 7 of 9
The signs are visually and conceptually similar to an average degree, aurally they
are, for part of the relevant public, similar to a high degree to the extent that the
verbal element ‘M2M’ of the earlier mark is fully included at the beginning of the
contested sign and plays and independent distinctive role therein. Indeed, the
differing last letter ‘ein the contested sign is represented in a different colour which
makes it easy to dissect the element ‘M2M’. Furthermore, the figurative element of
the earlier mark is less distinctive and the stylisation of the marks is not elaborated
enough to take away the attention of the verbal elements or to enable the relevant
public to distinguish between the marks.
Account is taken of the fact that average consumers rarely have the chance to make
a direct comparison between different marks, but must trust in their imperfect
recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,
§ 26). Even consumers who pay a high degree of attention need to rely on their
imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605,
§ 54).
Taking into account all relevant factors, and especially the similarities between the
signs and between the goods and services, it is considered that the relevant public
might be led to believe that the similar goods come from the same or economically
linked undertakings.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be similar to those of the earlier trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods
and services is a necessary condition for the application of Article 8(1) EUTMR, the
opposition based on this article and directed at these goods and services cannot be
successful.
For the sake of completeness, it must be mentioned that the opposition must also fail
insofar as based on the ground under Article 8(1)(a) EUTMR and directed against the
remaining goods and services, because the signs and the goods and services are
obviously not identical.
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
According to Article 95(1) EUTMR, in proceedings before it the Office will examine
the facts of its own motion; however, in proceedings relating to relative grounds for
refusal of registration, the Office will be restricted in this examination to the facts,
evidence and arguments provided by the parties and the relief sought.
Decision on Opposition No B 2 814 245 page: 8 of 9
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to present the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR (in the version in force at the time of
commencement of the adversarial part), when the opposition is based on a mark with
reputation within the meaning of Article 8(5) EUTMR, the opposing party must
provide evidence showing, inter alia, that the mark has a reputation, as well as
evidence or arguments showing that use without due cause of the contested trade
mark would take unfair advantage of, or be detrimental to, the distinctive character or
the repute of the earlier trade mark.
In the present case, the notice of opposition was not accompanied by any evidence
of the alleged reputation of the earlier trade mark.
On 20/12/2016 the opponent was given two months, commencing after the end of the
cooling-off period, to submit the abovementioned material. This time limit expired on
25/04/2017.
The opponent did not submit any evidence concerning the reputation of the trade
mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the
opposition must be rejected as unfounded insofar as these grounds are concerned.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some 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
Chantal VAN RIEL Saida CRABBE Ric WASLEY
Decision on Opposition No B 2 814 245 page: 9 of 9
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.

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