OPPOSITION No B 2 398 389

R + R Brands KG, Georg-Landgraf-Str. 19, 09112 Chemnitz, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

Vicente Salvador Justicia, Sanchis Tarazona 26, 12600 Vall de Uxó, Spain (applicant), represented by Marcaval, Calle Serrano Morales, 9 Pta 10, 46004 Valencia, Spain (professional representative).

On 01/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 398 389 is partially upheld, namely for the following contested goods and services:

Class 9: Audio/visual and photographic devices; data storage devices; communications equipment; data processing equipment and accessories (electrical and mechanical); recorded data files; pre-recorded cassettes; recorded tapes; data recorded electronically; recorded data [magnetic]; directories [electric or electronic]; optical disc recordings; pre-programmed discs; information technology and audiovisual equipment; recorded content; optical devices, enhancers and correctors; recorded data files.

Class 25: Headgear; footwear; clothing.

Class 41: Live band performances; performance of dance, music and drama; live entertainment services; live performances by rock groups; sporting and cultural activities; cultural activities; providing facilities for game shows; live music performances; musical floor shows provided at performance venues; theatrical performances both animated and live action; booking agencies concert tickets; cabarets and discotheques; direction of making radio or television programs; directing of theatrical shows; directing of musical shows; directing of plays; direction or presentation of plays; distribution of motion pictures; providing digital music from mp3 internet web sites; provision of live shows; provision of live entertainment; provision of recreational activities; providing cultural activities; provision of recreational events; organisation of recreational activities; organisation of group recreational activities; organization of dancing events; organisation of live performances; arranging of music performances; arranging for ticket reservations for shows and other entertainment events; organising of audience participative games; organisation of galas; arranging of presentations for cultural purposes; organising of theatre productions; arranging of presentations for entertainment purposes; entertainment services; provision of entertainment services through the media of audio tapes; provision of entertainment services through the media of television; provision of entertainment services through the media of video-films; education, entertainment and sports; audio and video production, and photography.

2. Community trade mark application No 12 793 709 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 Community trade mark application No 12 793 709. The opposition is based on, inter alia, German trade mark registration No 30 259 713. 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 German trade mark registration No 30 259 713.

1. The goods and services

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

Class 9: All kinds of sound- image- and data carrier, in particular tapes, cassettes, CDs, records, digital audio tapes, video tapes, diskettes, all

products mentioned before in recorded and non-recorded ways.

Class 16: Paper, cardboard and goods made from these materials, so far as

included in class 16; printed matter; bookbinding material; photographs; stationery; packaging from plastic, so far as included in class 16.

Class 20: Playing cards; goods from plastic, so far as included in class 20.

Class 21: Glassware, porcelain and earthenware, so far as included in class 21.

Class 25: Clothes, shoes, headgear.

Class 28: Games and playthings; gymnastic and sporting articles, so far as included in class 28.

Class 35: Advertising; business management; business administration; office functions.

Class 41: Organization and realization of events, especially cultural events, music events, open air events, tours, radio and TV events, events for entertainment purposes; production of film-, TV-, radio-, BTX-, videotext-, teletext-programs and -broadcasts; sporting and cultural activities.

The contested goods and services are the following:

Class 9: Audio/visual and photographic devices; data storage devices; communications equipment; data processing equipment and accessories (electrical and mechanical); recorded data files; pre-recorded cassettes; recorded tapes; data recorded electronically; recorded data [magnetic]; directories [electric or electronic]; optical disc recordings; pre-programmed discs; apparatus, instruments and cables for electricity; safety, security, protection and signalling devices; devices for treatment using electricity; information technology and audiovisual equipment; diving equipment; recorded content; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers; navigation, guidance, tracking, targeting and map making devices; scientific research and laboratory apparatus, educational apparatus and simulators; optical devices, enhancers and correctors; recorded data files.

Class 25: Headgear; footwear; clothing.

Class 41: Live band performances; performance of dance, music and drama; live entertainment services; live performances by rock groups; sporting and cultural activities; cultural activities; providing facilities for game shows; live music performances; musical floor shows provided at performance venues; theatrical performances both animated and live action; booking agencies concert tickets; cabarets and discotheques; direction of making radio or television programs; directing of theatrical shows; directing of musical shows; directing of plays; direction or presentation of plays; distribution of motion pictures; providing digital music from mp3 internet web sites; provision of live shows; provision of live entertainment; provision of recreational activities; providing cultural activities; provision of recreational events; organisation of recreational activities; organisation of group recreational activities; organization of dancing events; organisation of live performances; arranging of music performances; arranging for ticket reservations for shows and other entertainment events; organising of audience participative games; organisation of galas; arranging of presentations for cultural purposes; organising of theatre productions; arranging of presentations for entertainment purposes; entertainment services; provision of entertainment services through the media of audio tapes; provision of entertainment services through the media of television; provision of entertainment services through the media of video-films; education, entertainment and sports; publishing and reporting; audio and video production, and photography.

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 term ‘in particular’ and ‘especially’, used in the opponent’s list of goods and services, indicates that the specific goods and 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’).

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 goods in Class 9

The contested data storage devices are identically contained in both lists of goods and services (including synonyms).

The contested pre-recorded cassettes; recorded tapes; pre-programmed discs are included in the broader category of the opponent’s all kinds of sound- image- and data carrier, in particular tapes, cassettes, CDs, records, digital audio tapes, video tapes, diskettes, all products mentioned before in recorded and non-recorded ways. Therefore, they are considered identical.

The contested audio/visual and photographic devices; data processing equipment and accessories (electrical and mechanical); optical devices, enhancers and correctors; information technology and audiovisual equipment are similar to the opponent’s all kinds of sound- image- and data carrier, in particular tapes, cassettes, CDs, records, digital audio tapes, video tapes, diskettes, all products mentioned before in recorded and non-recorded ways as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested communications equipment is similar to the opponent’s all kinds of sound- image- and data carrier, in particular tapes, cassettes, CDs, records, digital audio tapes, video tapes, diskettes, all products mentioned before in recorded and non-recorded ways as they can coincide in producer, end user and distribution channels.

The contested recorded data files; data recorded electronically; recorded data [magnetic]; directories [electric or electronic]; optical disc recordings; recorded content; recorded data files; are similar to the opponent’s all kinds of sound- image- and data carrier, in particular tapes, cassettes, CDs, records, digital audio tapes, video tapes, diskettes, all products mentioned before in recorded and non-recorded ways as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested safety, security, protection and signalling devices; devices for treatment using electricity; apparatus, instruments and cables for electricity; diving equipment; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers; navigation, guidance, tracking, targeting and map making devices; scientific research and laboratory apparatus; educational apparatus and simulators are dissimilar to any of the opponent’s goods and services as they do not coincide in producer or distribution channels. Furthermore, they are neither complementary nor in competition. In addition, the expression apparatus, instruments and cables for electricity, in Class 9, cannot be interpreted as covering all apparatus powered by electricity. Indeed, there are apparatus powered by electricity in various classes.

Contested goods in Class 25

The contested headgear; footwear; clothing are identically contained in both lists of goods and services (including synonyms).

Contested services in Class 41

The contested live band performances; performance of dance, music and drama; live entertainment services; live performances by rock groups providing facilities for game shows; live music performances; musical floor shows provided at performance venues; theatrical performances both animated and live action; cabarets and discotheques; direction of making radio or television programs; directing of theatrical shows; directing of musical shows; directing of plays; direction or presentation of plays; distribution of motion pictures; providing digital music from mp3 internet web sites; provision of live shows; provision of live entertainment; provision of recreational activities; providing cultural activities; provision of recreational events; organisation of recreational activities; organisation of group recreational activities; organization of dancing events; organisation of live performances; arranging of music performances; arranging for ticket reservations for shows and other entertainment events; organising of audience participative games; organisation of galas; arranging of presentations for cultural purposes; organising of theatre productions; arranging of presentations for entertainment purposes; entertainment services; provision of entertainment services through the media of audio tapes; provision of entertainment services through the media of television; provision of entertainment services through the media of video-films are included in the opponent’s broader category of organization and realization of events, especially cultural events, music events, open air events, tours, radio and TV events, events for entertainment purposes; production of film-, TV-, radio-, BTX-, videotext-, teletext-programs and -broadcasts; sporting and cultural activities. Therefore, they are considered identical to the opponent’s services.

The contested entertainment includes as a broader category the opponent’s cultural activities. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested sporting and cultural activities; cultural activities are identically contained in both lists of goods and services.

The contested booking agencies concert tickets is similar to the opponent’s organization and realization of events, especially cultural events, music events, open air events, tours, radio and TV events, events for entertainment purposes as they can coincide in end user and distribution channels. Furthermore they are complementary.

The contested education is similar to the opponent’s all kinds of sound- image- and data carrier, in particular tapes, cassettes, CDs, records, digital audio tapes, video tapes, diskettes, all products mentioned before in recorded and non-recorded ways as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested photography; audio and video production are similar to the opponent’s all kinds of sound- image- and data carrier, in particular tapes, cassettes, CDs, records, digital audio tapes, video tapes, diskettes, all products mentioned before in recorded and non-recorded ways as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested publishing and reporting is similar to a low degree to the opponent’s cultural activities as they can coincide in distribution channels. Furthermore they are complementary.

2. The signs

SPLASH
Earlier trade mark	Contested sign

The relevant territory is Germany.

The earlier mark is a word mark ‘SPLASH’ and the contested mark is a figurative mark. The contested mark consists of the verbal elements ‘ELECTR*’ (the last letter could be an ‘A’ or an ‘O’ as it is represented in fact as a triangle) and ‘SPLASH’ written in different stylised upper-case letters. The beginning of the sign ‘ELEKTR*’ is written in magenta and the latter part ‘SPLASH’ is written in blue. On the first blue letter S there is a small figurative element of two magenta lightning.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘SPLASH’. However, the signs further differ in the stylised magenta and blue typeface of the letters and the additional verbal element ‘ELECTR*’ at the beginning of the contested mark and the small figurative element of two magenta lightning on the letter S in the contested mark that has no counterparts in the earlier mark.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SPLASH’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛ELECTR*’ of the contested mark, which has no counterpart in the earlier sign. The figurative element of the contested sign will not be pronounced.

Conceptually, neither of the signs has a meaning for the public in the relevant territory.

Some part of the relevant public may understand the English word ‘SPLASH’ present in both signs meaning, among others, ‘quantity of some fluid or semi-liquid substance dashed or dropped upon a surface’. Therefore, the marks are similar to that extent.

Although the words ‘ELEKTR*’ and ‘SPLASH’ in the contested sign have no meaning in its entirety it is likely that the public will split the word into different parts ‘ELECTR*’ and ‘SPLASH’, due to the use of two different colours. The element ‘ELECTR*’ will be perceived as ELECTRO or ELECTRA and associated by the relevant public with the German word ‘ELEKTRIC’ which is a word building prefix meaning ‘electric, of electricity’, for example Elektrotechnik. Some part of the relevant public may associate the word ‘ELECTR*’ with a type of music.

The relevant public will perceive the figurative element of the contested sign as two lightning and most likely associate it with electricity, electro music. The figurative element reinforces the concept of the verbal part ‘ELECTR*’.

For part of the public who will not understand the meaning of the word ‘SPLASH’ marks are not conceptually similar.

Taking into account the abovementioned visual, aural and for part of the relevant public also conceptual 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 earlier mark has no element that could be clearly considered more distinctive than other elements.

The signs are similar insofar they share a concept of ‘SPLASH’. The Opposition Division finds that even for the part of the relevant public who understand the meaning of the English word ‘SPLASH’ it will not be perceived as descriptive for the goods and services in question but as a distinctive part of the conflicting marks.

As it was already mentioned above, the part ‘ELECTR*’ of the contested sign will be associated by the relevant public with the German word electro and therefore it will be perceived as weak for most of the goods in Class 9 and services in Class 41. The figurative element merely reinforces the concept of the verbal part ‘ELECTR*’.

The public understands the meaning of those two elements and will not pay as much attention to these weak elements as to the other more distinctive elements of the mark. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue. Therefore the verbal element ‘SPLASH’ is the most distinctive part of the contested mark.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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.

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 goods and services found to be identical and similar are directed at the public at large and the specialist public. Taking into account the category of goods and services, the level of attention of the relevant public will range from normal to high.

6. Global assessment, other arguments and conclusion

The goods and services have been found partly identical, partly similar to various degrees and partly dissimilar.

The marks have been found to be visually, aurally and for part of the relevant public also conceptually similar on account of the coinciding verbal element ‘SPLASH’ representing the entire earlier mark and included as an independent distinctive element in the contested sign.

The differences are confined to the first 6 letters of the contested mark ‘ELECTR*’ and the figurative element of two lightning (which were found weak for part of the goods and services) and the stylisation and colours of the font of the contested sign.

The fact that the entire earlier mark is included in the contested sign and has an independent distinctive role in its composition may lead the public to believe that the goods and services at issue derive at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (judgment of 06/10/2005, C-120 ‘Medion’, paragraphs 31 and 32).

In this situation, the fact that the coinciding element (the entire earlier mark) is neither dominant nor placed at first/top position in the composition of the contested sign, does not play a decisive role. Although it is true that usually more attention is paid to the beginning of a mark, it should be noted that where the contested trade mark incorporates the earlier mark, it should not matter too much whether the contested trade mark incorporates the earlier mark as its first or second element. The protection against likelihood of confusion applies in both directions: the owner of the earlier mark is protected not only against the contested trade mark being understood as referring to its goods but also against its mark being taken as referring to the applicant’s goods.

The applicant claims that the marks in question refer to two music festivals and coexist in the market. According to the applicant ‘ELECTROSPLASH’ is a music festival in Spain, mainly for Spanish people and tourists and the website in available only in Spanish whereas the music festival ‘SPLASH’ takes place in Germany and is targeted at mainly German people and that the website of that festival is available in German only. This claim must be disregarded.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (judgment of 11/05/2005, T‑31/03, ‘GRUPO SADA’, paragraph 86).

In this regard it should be noted that formal co‑existence on national or Community registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office shall in principle be restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the registry) on a national/Community level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

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 German trade mark registration.

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 lowly similar services are concerned as the moderate similarity of signs does not outweigh the low similarity of goods.

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) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

1. German trade mark registration No 30 160 645 for the figurative mark

registered for the following goods and services:

Class 9: All kinds of sound- image- and data carrier, in particular tapes, cassettes, CDs, records, digital audio tapes, video tapes, diskettes, all

products mentioned before in recorded and non-recorded ways.

Class 16: Paper, cardboard and goods made from these materials, so far as included in class 16; printed matter; bookbinding material; photographs; stationery; packaging from plastic, so far as included in class 16.

Class 20: Playing cards; goods from plastic, so far as included in class 20.

Class 21: Glassware, porcelain and earthenware, so far as included in class 21.

Class 25: Clothes, shoes, headgear.

Class 28: Games and playthings; gymnastic and sporting articles, so far as included in class 28.

Class 35: Advertising; business management; business administration; office functions.

Class 41: Entertainment, in particular organization and support of events, especially music events, open air events and tours, radio and TV events, production of film-, TV-, radio-, BTX-, videotext-, teletext-programs and -broadcasts; sporting and cultural activities.

2. German trade mark registration No 2 060 322 for the figurative mark

registered for organization and conduct of cultural entertainment and sporting events in Class 41.

The other earlier rights invoked by the opponent are less similar to the contested mark as they are both stylised figurative marks. Further, the mark 1 contains additional element – an exclamation mark and figurative elements of two semi circles/waves, framing the mark.

Moreover the mark 1 covers basically the same scope of goods and services as a mark compared and the mark 2 covers only services in Class 41. As the other earlier marks are less similar and cover the same or a narrower scope of goods and services the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and 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 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

Isabel DE ALFONSETI HARTMANN

Eamonn KELLY

Jessica LEWIS

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.