OPPOSITION No B 1 757 056

Administrador de Infraestructuras Ferroviarias (ADIF), Gabinete de Auditoría y Gestión de Patentes, Calle Titán, 4 y 6, 28045 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

1-2-3.tv GmbH, Bavariafilmplatz 7, 82031 Grünwald, Germany (applicant), represented by Bird & Bird LLP, Großer Grasbrook 9, 20457 Hamburg, Germany (professional representative).

On 16/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 757 056 is partially upheld, namely for the following contested services:

Class 38: Telecommunications, including by means of platforms and portals on the Internet, in particular using an online information centre for customer care; consultancy and information with regard to telecommunications; providing access to a global computer network; teleconferencing services; rental of telecommunication equipment; television broadcasting, radio broadcasting, cable television broadcasting, providing of telecommunication channels for teleshopping services and electronic market places, operating a teleshopping channel (broadcasting); Press agencies; providing access to databases on computer networks; leasing access time to a computer database; electronic broadcasting and re-transmission of film, television, radio, videotext and teletext programmes; electronic transmission and re-transmission of sound, images, documents, messages and data; telephone services, providing access to information and information offers for retrieval from the Internet and from other data networks; electronic mail services; fax services; mobile radio telephone services; providing access to information on the Internet concerning computer games and video games and to information on related products; electronic exchange of messages via chat lines, chat rooms and Internet forums; web messaging; procuring access to databases.

Class 41: Entertainment, in particular radio and television entertainment and entertainment via the Internet; consultancy and information on entertainment, including on the Internet; games on the Internet; film production, show production, television film production, video tape film production; production of radio and television programmes; production of radio, film or television programs; sound recording studio services; creating texts (other than for advertising purposes), in particular for video and teletext programmes; rental of books, CD-Rs, DVDs and video films; publication of printed matter (other than for advertising purposes), in particular periodicals, newspapers and books; publishing services, including publication of texts, in particular company profiles and goods descriptions, operating instructions and user or processing guides for products and consumer goods, all other than publicity texts; education; Providing of training, including within the framework of correspondence courses and distance learning, in particular in connection with instruction in the application of goods; training consultancy and further training consultancy; sporting and cultural activities.

2. Community trade mark application No 9 185 117 is rejected for all the above 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 Community trade mark application No 9 185 117, namely against all the services in Classes 35, 38 and 41. The opposition is based on, inter alia, Spanish trade mark No 2 888 585. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark No 2 888 585.

1. The goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included en other classes; printer 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); playing cards; printers’ type; printing blocks.

Class 36: Insurance, finances, monetary business, banking, real-estate.

Class 38: Telecommunications.

Class 39: Transport, packaging, storage and distribution of merchandize, travel arrangement.

Class 41: Education, Training and entertainment, sports and cultural activities.

Class 43: Providing food and drink, services rendered by people or establishments whose purpose is preparing food and drink for consumption, as well as services rendered obtaining lodging, housing and food in hotels, hostels or other establishments that ensure temporary housing, reservations for temporary hosing, residences for animals.

The contested services are the following:

Class 35: Advertising, in particular radio, television, cinema, print, videotext and teletext advertising, business management, business administration; office functions; arranging contracts for the buying and selling of goods, in particular within the framework of operating an electronic market place on the Internet; conducting stock and commodity exchanges on the Internet; collation of data, in particular product or business-related data in databases; rental of advertising space, including in the form of banner advertising on the Internet; advertising time rental; call centre services, included in class 35;administrative processing of purchase orders for goods and services (including for teleshopping), in particular order acceptance, order processing, dispatch of orders, processing complaints and inquiries and handling of orders; telephone consultancy with regard to information for others, namely consumer consultancy; autioneering, in particular in the form of online auctions via television transmitters or via the Internet; wholesale and retail services in relation to goods of all kinds, namely soaps; perfumery, cosmetics; decorative and care cosmetics; nail care preparations, nail varnish; bath preparations, not for medical purposes; toilet preparations, included in class 3;cosmetic sunscreen and tanning preparations; preparations for after-sun skin care; essential oils, potpourris (fragrances); hair lotions; dentifrices; bleaching preparations and other substances for laundry use; preparations to clean, polish, degrease and abrade; Substances and food supplements for medical and/or therapeutic purposes, included in class 5;nutrients and food preparations, namely nutrients and foodstuffs for medical purposes, nutrients, food supplements and/or nutritional supplements; dietetic preparations and substances for medical use; medical restorative serums; mineral food supplements, vitamin preparations, including beauty capsules; natural and homeopathic preparations and substances for medical purposes; sanitary preparations for medical purposes; medicinal teas; herbal teas; food for babies; pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; plasters, materials for dressing; disinfectants; food supplements, not for medical purposes, with a base of proteins or fats, food supplements, not for medical purposes, with a base of roughage or carbohydrates; the aforesaid trading services within the framework of an electronic market place on the Internet, or within the framework of homeshopping services on television or radio, or within the framework of auctions or being wholesale or retail trading services; publishing printed matter for advertising purposes; call centres, including the organising and forwarding of order transactions for goods and services, and of requests, inquiries and complaints, from the customer to the manufacturer or supplier; advertising sites.

Class 38: Telecommunications, including by means of platforms and portals on the Internet, in particular using an online information centre for customer care; consultancy and information with regard to telecommunications; providing access to a global computer network; teleconferencing services; rental of telecommunication equipment; television broadcasting, radio broadcasting, cable television broadcasting, providing of telecommunication channels for teleshopping services and electronic market places, operating a teleshopping channel (broadcasting); Press agencies; providing access to databases on computer networks; leasing access time to a computer database; electronic broadcasting and re-transmission of film, television, radio, videotext and teletext programmes; electronic transmission and re-transmission of sound, images, documents, messages and data; telephone services, providing access to information and information offers for retrieval from the Internet and from other data networks; electronic mail services; fax services; mobile radio telephone services; providing access to information on the Internet concerning computer games and video games and to information on related products; electronic exchange of messages via chat lines, chat rooms and Internet forums; web messaging; procuring access to databases.

Class 41: Entertainment, in particular radio and television entertainment and entertainment via the Internet; consultancy and information on entertainment, including on the Internet; games on the Internet; film production, show production, television film production, video tape film production; production of radio and television programmes; production of radio, film or television programs; sound recording studio services; creating texts (other than for advertising purposes), in particular for video and teletext programmes; rental of books, CD-Rs, DVDs and video films; publication of printed matter (other than for advertising purposes), in particular periodicals, newspapers and books; publishing services, including publication of texts, in particular company profiles and goods descriptions, operating instructions and user or processing guides for products and consumer goods, all other than publicity texts; education; Providing of training, including within the framework of correspondence courses and distance learning, in particular in connection with instruction in the application of goods; training consultancy and further training consultancy; sporting and cultural activities.

The earlier Spanish trade mark No 2 888 585 is registered for the entire class headings of Classes 16, 36, 38, 39, 41 and 43 of the Nice Classification. It was filed on 11/08/2009. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the general indications in these class headings will be interpreted following a literal approach, which seeks to give those indications their natural and usual meaning.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 services in Class 35

The contested advertising, in particular radio, television, cinema, print, videotext and teletext advertising; rental of advertising space, including in the form of banner advertising on the Internet; advertising time rental; publishing printed matter for advertising purposes are various advertising services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.

The nature and purpose of advertising services are fundamentally different from the manufacture of goods or from the provision of many other services. The mere fact that some goods or services may appear in advertisements is insufficient for finding a similarity. Therefore, the contested advertising services mentioned above are dissimilar to the goods or services being advertised.

The same applies to the comparison of those advertising services with goods that can be used as a medium for disseminating advertising, such as printed matter in Class 16. These goods and services are considered dissimilar.

The contested business management, business administration; office functions; collation of data, in particular product or business-related data in databases; call centres, including the organising and forwarding of order transactions for goods and services, and of requests, inquiries and complaints, from the customer to the manufacturer or supplier; advertising sites; call centre services, included in class 35; administrative processing of purchase orders for goods and services (including for teleshopping), in particular order acceptance, order processing, dispatch of orders, processing complaints and inquiries and handling of orders; telephone consultancy with regard to information for others, namely consumer consultancy; arranging contracts for the buying and selling of goods, in particular within the framework of operating an electronic market place on the Internet; conducting stock and commodity exchanges on the Internet are various business management, business administration and office functions. These services are dissimilar to the opponent’s goods and services in Classes 16, 36, 38, 39, 41 and 43. They have a different nature, a different purpose and a different method of use. They are not complementary, nor in competition with each other. Moreover, they are usually not provided by the same undertakings and use different distribution channels.

The contested auctioneering, in particular in the form of online auctions via television transmitters or via the Internet is dissimilar to the opponent’s goods and services in Classes 16, 36, 38, 39, 41 and 43. They have a different nature, a different purpose and a different method of use. They are not complementary, nor in competition with each other. Moreover, they are usually not provided by the same undertakings and use different distribution channels.

The contested wholesale and retail services in relation to goods of all kinds, namely soaps; perfumery, cosmetics; decorative and care cosmetics; nail care preparations, nail varnish; bath preparations, not for medical purposes; toilet preparations, included in class 3; cosmetic sunscreen and tanning preparations; preparations for after-sun skin care; essential oils, potpourris (fragrances); hair lotions; dentifrices; bleaching preparations and other substances for laundry use; preparations to clean, polish, degrease and abrade; Substances and food supplements for medical and/or therapeutic purposes, included in class 5; nutrients and food preparations, namely nutrients and foodstuffs for medical purposes, nutrients, food supplements and/or nutritional supplements; dietetic preparations and substances for medical use; medical restorative serums; mineral food supplements, vitamin preparations, including beauty capsules; natural and homeopathic preparations and substances for medical purposes; sanitary preparations for medical purposes; medicinal teas; herbal teas; food for babies; pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; plasters, materials for dressing; disinfectants; food supplements, not for medical purposes, with a base of proteins or fats, food supplements, not for medical purposes, with a base of roughage or carbohydrates; the aforesaid trading services within the framework of an electronic market place on the Internet, or within the framework of homeshopping services on television or radio, or within the framework of auctions or being wholesale or retail trading service and the opponent’s goods in Class 16 are dissimilar. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Wholesale services are the selling of goods in large quantities to be retailed by others. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

The contested wholesaling and retailing services mentioned above are also dissimilar to the opponent’s services in Classes 36, 38, 39, 41 and 43. They have a different nature, a different purpose and a different method of use. They are not complementary, nor in competition with each other. Moreover, they are usually not provided by the same undertakings and use different distribution channels.

Contested services in Class 38

The contested telecommunications, including by means of platforms and portals on the Internet, in particular using an online information centre for customer care; consultancy and information with regard to telecommunications; providing access to a global computer network; teleconferencing services; rental of telecommunication equipment; television broadcasting, radio broadcasting, cable television broadcasting, providing of telecommunication channels for teleshopping services and electronic market places, operating a teleshopping channel (broadcasting); Press agencies; providing access to databases on computer networks; leasing access time to a computer database; electronic broadcasting and re-transmission of film, television, radio, videotext and teletext programmes; electronic transmission and re-transmission of sound, images, documents, messages and data; telephone services, providing access to information and information offers for retrieval from the Internet and from other data networks; electronic mail services; fax services; mobile radio telephone services; providing access to information on the Internet concerning computer games and video games and to information on related products; electronic exchange of messages via chat lines, chat rooms and Internet forums; web messaging; procuring access to databases are identical to or included in the broad category of the opponent’s telecommunications protected by the earlier mark. Therefore, they are considered identical.

Contested services in Class 41

The contested entertainment, in particular radio and television entertainment and entertainment via the Internet; consultancy and information on entertainment, including on the Internet; games on the Internet; film production, show production, television film production, video tape film production; production of radio and television programmes; production of radio, film or television programs; sound recording studio services; creating texts (other than for advertising purposes), in particular for video and teletext programmes; rental of books, CD-Rs, DVDs and video films are identical to or included in the broad category of the opponent’s entertainment. Therefore, they are considered identical.

The contested education; providing of training, including within the framework of correspondence courses and distance learning, in particular in connection with instruction in the application of goods; training consultancy and further training consultancy are identical to or included in the broad categories of the opponent’s education, training. Therefore, they are considered identical.

The contested sporting and cultural activities are identically contained in the list of goods and services of the earlier mark.

The contested publication of printed matter (other than for advertising purposes), in particular periodicals, newspapers and books; publishing services, including publication of texts, in particular company profiles and goods descriptions, operating instructions and user or processing guides for products and consumer goods, all other than publicity texts are similar to the opponent’s printed matter in Class 16. These goods and services are complementary and are provided by the same undertakings.

2. The signs

	ViaBia
Earlier trade mark	Contested sign

The relevant territory is Spain.

The earlier mark is a figurative mark composed of a figurative element consisting of four elements of which three in green and one in yellow, followed by the verbal element ‘vialia’ in green lower case letters. The contested sign is a word mark ‘ViaBia’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

Visually, the signs are similar to the extent that they coincide in the letters ‘via*ia’. However, they differ in their fourth letters, ‘L’ in the earlier mark and ‘B’ in the contested sign. Furthermore, the marks differ in the figurative elements and graphical representation of the earlier mark, as described above.

Aurally, the pronunciation of the signs coincides in the sound of the letters /VIA*IA/ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the fourth letters, ‛L’ in the earlier mark and ‘B’ in the contested sign. Furthermore, the marks slightly differ in their pronunciation as far as the earlier mark will be pronounced as /vi/á/lia/ and the contested sign as /bía/bía/, as the first letter ‘v’ is pronounced as ‘b’ in Spanish.

Conceptually, the signs will be perceived as a whole and have no meaning for the relevant public. Since a conceptual comparison is not possible for this part of the relevant public, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and 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.

5. Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical and similar are directed at the public at large and at a professional public with specific knowledge and experience. The level of attention is considered to be average.

6. Global assessment, other arguments and conclusion

The contested services are partly identical, partly similar and partly dissimilar to the goods and services protected by the earlier mark.

The signs are visually and aurally similar to the extent that they coincide in the letters ‘via*ia’. However, they differ visually and aurally in their fourth letters, ‘L’ in the earlier mark and ‘B’ in the contested sign, which also makes that the marks will be pronounced as /vi/á/lia/ and /bía/bía/, as the first letter ‘v’ is pronounced as ‘b’ in Spanish. Furthermore, the marks differ visually in the figurative elements and graphical representation of the earlier mark.

The earlier mark is a figurative mark. Where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 15/12/2009, T-412/08, ‘Trubion’, paragraph 45 and the case-law cited therein). Therefore, the relevant public will refer to the earlier mark with its verbal element ‘vialia’.

The first parts of the verbal element of the earlier mark and the contested sign are coinciding in the letters ‘VIA’. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the common first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

In addition, it should be borne in mind that, according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

Taking into account the above, and especially the fact that the verbal elements of the marks differ visually only in one letter, it is considered that the relevant public might be led to believe that the identical services come from the same or economically linked undertakings.

The applicant submitted evidence that shows that the parties were already since 2010 negotiating a possible co-existence of the marks and that in 2014 they came to an agreement which was, however, never countersigned by the opponent. It can be noted that the Opposition Division cannot take into account this information and has to assess the merits of the case based on the marks as registered and on the ground of Article 8(1)(b) CTMR.

Furthermore, the applicant argues that the contested sign ‘ViaBia’ has a meaning, ‘Via’ refers to ‘vital’ and ‘Bia’ refers to ‘biological’. This argument has to be set aside as there is no reason to assume that the contested sign would be split in parts and that the constituting terms would be seen with that particular meaning.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Spanish trade mark registration No 2 888 585.

It follows from the above that the contested trade mark must be rejected for the services found to be identical and similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

Spanish trade mark registration No 2 829 466 for the figurative mark . The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains a figurative element which can be perceived as the representation of a gift containing a letter ‘e’ which might create different concepts. Moreover, they cover the same scope of the goods and services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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 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

Dorothée SCHLIEPHAKE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.