OPPOSITION No B 2 333 998

Fullscreen, Inc., 9336 Washington Blvd., Building K, 90232, Culver City, United States (opponent), represented by Groom Wilkes & Wright LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, SG5 3PF, Shillington, Hitchin, United Kingdom (professional representative)

a g a i n s t

Hi-Media, 6 Place du Colonel Bourgoin, 75012, Paris, France (applicant), represented by Desbarres & Staeffen, 18 avenue de l'Opéra, 75001, Paris, France (professional representative).

On 21/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 333 998 is partially upheld, namely for the following contested services:

Class 38: Communications by computer terminals or by fibre optic networks; radio or telephone communications; electronic advertising (telecommunications); radio or television broadcasting; electronic mail.

2. European Union trade mark application No 12 259 123 is rejected for all the above services. It may proceed for the remaining 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 12 259 123 .

The opposition was initially based on European Union trade mark applications Nos 12 330 494 ‘FULLSCREEN’ and 12 330 585 . However, their registration was rejected and this was confirmed in Board of Appeal decisions Nos 3211/2014-5 and 3208/2014-5.

The opponent’s EUTM application No 12 330 585 was subsequently converted into two national marks upon which the opposition is now based, namely on Benelux trade mark registration No 201 524  and Greek trade mark registration No M773  .

The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 201 524.

a) The goods and services

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

Class  9: Computer software and apps for provision online; computer software and apps (downloading from the Internet, via the World Wide Web and via communications networks); software applications; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for use as an application programming interface (API); application programming interface (API) for computer software which facilitates online services for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; computer software platforms; interface software.

Class 38: Transmission of electronic media, multimedia content, videos, films, pictures, images, text, photos, audio content, and information via global computer networks; transmission of audio, video material, or digital content on the Internet on mobile telephones or on other electronic or digital communications networks, and global computer information networks; audio, visual and multimedia broadcasting via global communication networks; webcasting services; providing telecommunication channels for viewing videos and content via global computer networks; providing online and mobile telecommunication channels; Sharing services of audio, video, digital, and multimedia entertainment content.

Class 41: Entertainment services in the nature of development, creation, production, and post-production services of audio, video, digital, and multimedia entertainment content; production and creation of films, videos, movies, audio recordings, music recordings; electronic media production services, namely, film, video, music, and digital content production; online digital video, audio and multimedia entertainment publishing services.

Class 42: Application service provider (ASP) featuring software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; design and development of computer hardware and software; computer services in the nature of customized web pages featuring user-defined information, personal profiles and information; providing use of software applications through a website; data transmission and instant messaging services; Design services for audio, video, digital, and multimedia entertainment content; advisory and consultancy services for the aforesaid.

The contested services are the following:

Class 35: Advertising; direct mail advertising; employment agencies; computerised file management; organisation of exhibitions for commercial or advertising purposes; on-line advertising on a computer network; rental of advertising time on communication media; publication of advertising copy; rental of advertising space; dissemination of advertisements; public relations services.

Class 38: Communications by computer terminals or by fibre optic networks; radio or telephone communications; electronic advertising (telecommunications); radio or television broadcasting; electronic mail.

Contested services in Class 35

The contested services in this class, listed above, are advertising-, business administration- and employment-related services and are provided by specialist undertakings, namely by advertising, business administration and recruitment agencies. The opponent’s mark essentially cover software (Class 9), telecommunications services (Class 38), entertainment and media production services (Class 41) and design of software and hardware and related consultancy (Class 42). It is clear that manufacturing of these goods and provision of these services require different expertise than that needed for the contested services in this class. Furthermore, these goods and services in comparison target different customers, they are distributed via different channels and they are neither in competition nor complementary to one another. In summary, the contested services in this class are dissimilar to the opponent’s goods and services.

Contested services in Class 38

The contested communications by computer terminals or by fibre optic networks; radio or telephone communications; electronic advertising (telecommunications); radio or television broadcasting; electronic mail all have the purpose of providing communications services by various means and types of technology. Therefore, these services are identical or overlap with the opponent’s services in this class, such as providing telecommunication channels for viewing videos and content via global computer networks.

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 services found to be identical are directed both at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory includes Belgium, the Netherlands and Luxemburg.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier marks are composed of the term ‘FULLSCREEN’ in uppercase and, next to it, a black rectangle with a smaller white rectangle inside. The device element is in fact a simple geometric shape and will be viewed as mere decoration while the term is meaningless and has, therefore, average distinctiveness for part of the public which does not understand English. With regard to the remaining public, they will recognize that the mark is composed of two English words and will understand their combination as meaning ‘complete display / monitor’. Since the relevant services are all related to technology and entertainment, this verbal element has a very low degree of distinctiveness since it refers to the object or method of presentation of the services in question. Furthermore, it is the verbal part in the marks that has a visually dominant role given its size.

The contested sign is composed of the term ‘fullscreen’ in grey and purple lowercase and a combination of rectangular and triangular elements in grey, purple, orange, blue and green. With regard to the term ‘fullscreen’, reference is made to the previous paragraph and the findings therein while the sign’s device does not convey any meaning and will be viewed as a decorative element. None of the sign’s elements can be considered visually more dominant than the other ones.

Visually, the signs coincide in their only verbal element ‘FULLSCREEN’ / ‘fullscreen’ and differ in their typeface, colours and device elements. While it is admitted that the coinciding verbal element has low distinctiveness, at least for part of the public, it still constitutes the signs’ only word and the differing elements are for decorative purposes only. Furthermore, it is to be noted that, for assessment of the visual aspects, verbal components usually have a stronger impact on the consumer than figurative ones since 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). It can, thus, be concluded that consumers will recall the signs by their identical verbal elements and the signs must, therefore, be considered to be similar to a high degree.

Aurally, reference is made to the findings in the previous paragraphs and in particular to the fact that the signs coincide in their only verbal element. Therefore, they are identical.

Conceptually, none of the signs have any meaning for part of the public which does not speak English. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. For the remaining public, the signs coincide in their only, albeit weak, concept evoked by their common verbal element. Therefore, the signs are identical for part of the public which understands the English words in the signs.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have a meaning for the services in question for part of the public, as explained above, and they have a low degree of distinctiveness from their perspective, in particular since the mark’s additional, device element is non-distinctive and it, therefore, is not capable of altering distinctiveness. For the remaining public, the marks are meaningless and their distinctiveness must be seen as normal.

e) Global assessment, other arguments and conclusion

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Some of the services are identical while some are dissimilar. The signs are visually highly similar and aurally identical. In addition, they are conceptually identical too, at least for part of the public. The differences between the signs are confined to secondary elements and aspects. Therefore, in the present case, it can be presumed that the relevant consumer will perceive the contested mark as a variation of the earlier marks despite the low degree of distinctiveness of the verbal element and the earlier mark as a whole from the perspective of a part of the public.

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 partly well founded on the basis of the opponent’s Benelux trade mark registration.

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

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

The opponent also invoked its Greek trade mark registration No M773. That mark is claimed to cover the following goods and services:

Class  9: Computer software and apps for provision online; computer software and apps (downloading from the Internet, via the World Wide Web and via communications networks); software applications; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for use as an application programming interface (API); application programming interface (API) for computer software which facilitates online services for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; computer software platforms; interface software.

Class 38: Transmission of electronic media, multimedia content, videos, films, pictures, images, text, photos, audio content, and information via global computer networks; transmission of audio, video material, or digital content on the Internet on mobile telephones or on other electronic or digital communications networks or digital communications devices; telecommunications services, namely, transmission of voice, data, images, graphics, audio and video by means of wired and wireless networks, communications networks, and global computer information networks; audio, visual and multimedia broadcasting via global communication networks; webcasting services; providing telecommunication channels for viewing videos and content via global computer networks; providing online and mobile telecommunication channels; Sharing services of audio, video, digital, and multimedia entertainment content. (Greek trade mark No M773)

Class 41: Entertainment services in the nature of development, creation, production, and post-production services of audio, video, digital, and multimedia entertainment content; production and creation of films, videos, movies, audio recordings, music recordings; electronic media production services, namely, film, video, music, and digital content production; online digital video, audio and multimedia entertainment publishing services.

Class 42: Application service provider (ASP) featuring software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; design and development of computer hardware and software; computer services in the nature of customized web pages featuring user-defined information, personal profiles and information; providing use of software applications through a website; data transmission and instant messaging services; Design services for audio, video, digital, and multimedia entertainment content; advisory and consultancy services for the aforesaid.

As can be seen from the above list, this mark essentially covers the same goods and services, therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michaela SIMANDLOVA

Ferenc GAZDA

Biruté SATAITE-GONZALEZ

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.