OPPOSITION No B 2 528 845

100 tagú Cigányzenekar Országos Kulturális és Közművelődési Egyesület, Budapest, Izabella utca 13, 1077 Hungary (opponent), represented by Sbgk Ügyvédi Iroda, Budapest, Andrássy út 113., 1062 Hungary (professional representative)

a g a i n s t

Cypress Music, 15 Bis rue de la Doulline, 69340 Francheville-le-Haut, France (applicant).

On 10/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 528 845 is upheld for all the contested goods and services.

2. European Union trade mark application No 13 772 405 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 772 405 for the word mark ‘HUNDRED GYPSY VIOLINS’. The opposition is based on several earlier rights, namely:

• the well-known mark ‘HUNDRED GYPSY VIOLINS’ in Czech Republic, Germany, Greece, France, Croatia, Italy, Hungary and the Netherlands;

• the Hungarian trade mark registration No 163 685 for the word mark ‘100 TAGÚ CIGÁNYZENEKAR’;

• the non-registered trade mark ‘HUNDRED GYPSY VIOLINS’ filed by an agent;

• the non-registered trade name used in the course of trade ‘HUNDRED GYPSY VIOLINS’.

The opponent originally invoked Article 8(1)(b) EUTMR, Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR in the sense of Article 6bis of the Paris Convention, Article 8(5), Article 8(4) and Article 8(3) EUTMR.

On 13/04/2016, the Opposition Division rendered a decision that resulted in the rejection of the opposition. The decision was appealed and the Board of Appeal decided in case R 1027/2016-1 on 16/03/2017 leading to the annulment of the opposition decision. The Boards endorsed the findings of the Opposition Division aside from the grounds invoked under Article 8(3) EUTMR, Article 8(4) EUTMR and specifically Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR in the sense of Article 6bis of the Paris Convention. Indeed, in the original decision these grounds were largely rejected due to evidence not being admitted due to lack of translation.

However, the Boards reasoned extensively that the evidence should be admitted and considered in the context of the legal basis referred to above. The Boards specifically gave instructions that the Opposition Division ‘ought not to have discarded documents in French’. Consequently, the evidence will be reviewed in line with the instructions from the Boards.

The Opposition Division finds it most relevant to commence with the earlier well known marks.

EARLIER WELL-KNOWN MARKS - ARTICLE 8(2)(c) in conjunction with ARTICLE 8(1)(b) EUTMR

The opponent indicated that its unregistered trade mark ‘HUNDRED GYPSY VIOLINS’ is well-known in Czech Republic, Germany, France, Hungary, Croatia, Italy and the Netherlands, in the sense of Article 6bis of the Paris Convention for recorded musical contents , marketing and promotion and entertainment services and that it is therefore an earlier mark according to Article 8(2)(c) EUTMR.

Article 8(2)(c) EUTMR protects well-known marks within the meaning of Article 6bis of the Paris Convention

According to Article 8(2)(c) EUTMR, for the purposes of paragraph 1, ‘earlier trade marks’ means:

(c) trade marks which, on the date of application for registration of the European Union trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the European Union trade mark, are well-known in a Member State, in the sense in which the words ‘well-known’ are used in Article 6 bis of the Paris Convention.

The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trade mark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority to be well-known in that country and known to already belong to a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

Thus, in order for Article 8(2)(c) EUTMR (in conjunction with Articles 8(1)(a) and (b) EUTMR) to be applicable, it has to be established that, first, the earlier mark was well known in the relevant territory on the date when the contested application was filed and second, that because of identity with or similarity of the contested mark to the earlier well-known mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the relevant territory.

1. The well-known character of the earlier trade mark

The well-known character of an unregistered trade mark implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 25/02/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based was well known in Czech Republic, Germany, France, Hungary, Croatia, Italy and in the Netherlands prior to that date. The evidence must also show that the well-known character was acquired for the goods and services for which the opponent has claimed, as referred to above.

In order to determine the mark’s level of renown, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 14/10/2015, the opponent submitted the following evidence:

• Annex 1: extract in English dated 14/10/2015 from the website of the Budapest Gypsy Symphony orchestra http://www.100tagu.hu of the opponent. This extract provides various indications about the orchestra. In particular, it won the Hungarian Heritage Prize in 2000 as well as the Standard Prize for Hungarian Radio and that it has published twenty-one CDs and five DVDs, of which fourteen have become platinum and golden discs. The orchestra was also included in the Guinness Book of Records in 2000. Moreover, it celebrated its thirty year anniversary on 06/06/2015. Furthermore it has been given the honorary title of HUNCARICUM on 18/03/2015 (‘a collective term indicating a value of distinction and excellence in a uniform classification, categorisation and registration system which can be regarded as a top achievement for Hungarians through its characteristic features typical for the Hungarians, through its uniqueness, specialty and high quality’). The extract repeatedly refers to ‘Hundred Gypsy Violins’.

• Annex 2: extract in English dated 14/10/2015 from the Wikipedia page of the Budapest Gypsy Symphony Orchestra. The extract refers to the same prizes mentioned in Annex 1 and also clarifies that the Budapest Gypsy Symphony Orchestra is also widely known as ‘Hundred Gypsy Violins’ (an advert is included which also shows this link). In the discography section, four CDs are mentioned (1996, 1999, 2004 and 2007) as well as two DVDs (2004 and 2009).

• Annex 3: extract from the website http://www.youtube.com showing the search results of the keywords ‘Hundred gypsy violins’. The opponent indicates that all the videos are recordings of its representations and this can also be seen via the titles of the videos. At least 10 of these videos refer directly to ‘Hundred gypsy violins’ (others refer to Gypsy Symphony Orchestra) and hits range from a couple of hundred to nearly 12 000 views.

• Annex 4: extract in English (dated 07/09/2015) from the website http://musixmatch.com featuring a playlist from ‘Hundred Gypsy Violins’.

• Annex 5: extract from the online store of the website http://www.itunes.apple.com presenting a CD from ‘Hundred Gypsy Violins’ named ‘from Budapest to Vienna’.

• Annex 6: extract from the website http://spotify:com presenting a CD named ‘from Budapest to Vienna’ from the Budapest Gypsy Symphony Orchestra on which the denomination ‘Hundred Gypsy violins’ can also be seen. The CD is the same as presented in Annex 5.

• Annexes 7/8/10/11: examples of posters for concerts of the Budapest Gypsy Symphony Orchestra – The Hundred Gypsy Violins; Luxembourg 18/01/2016; Zagreb 05/09/2008, Zadar 06/09/2008, Osijek 07/11/2008 (Croatia).

• Annex 9: article from Halo News in English dated 02/10/2008 on the Budapest Gypsy Symphony orchestra entitled ‘Prague Autumn failed neither this year Hundred Gipsy Violins (20 and 21.9)’[sic]. The article describes the orchestra as being unique and distinctive and that, as in the past, it sold out in all three performances. It is described as the largest gypsy orchestra in the world.

• Annex 12: article from MF plus dated 26/09/2008 on the Budapest Gypsy Symphony orchestra which concerns recent performances by the ‘The Hundred Gypsy Violins’ and refers to them as ‘legends’.

• Annex 13: DVD of the Budapest Gypsy Symphony Orchestra also entitled ‘The Hundred Gypsy Violins’.

• Annex 15/14/16: examples of posters (undated) for the Budapest Gypsy Symphony Orchestra on which the trade mark ‘Hundred Gypsy Violins’ can clearly be seen.

• Annex 17/18: CDs of the Budapest Gypsy Symphony Orchestra ‘From Vienna to Budapest’ and ‘Live in Paris’ on which the trade mark Hundred Gypsy Violins’ can clearly be seen.

• Annexes 21/22: letter in Hungarian dated 16/03/2015 from the Hungaricum department of the Ministry of Agriculture addressed to the Orchestra and its French translation. The letter sets out that the orchestra in question, (the opponent) forms part of the Hungaricum’s collection and for thirty years has represented an exceptional cultural value for Hungary. The statement refers to platinum and gold discs having been awarded on several occasions, a prize for Hungarian patrimony and that the orchestra is one of the best due to its musical interpretations, according to several foreign critics.

• Annex 30: article in English dated 11/03/2015 from Mail Online about the Budapest Gypsy Symphony Orchestra and a dispute over the name ‘Hundred Gypsy Violins’ in France. The article refers to the ‘hungarium’ which qualifies the ‘Hundred Gypsy Violins’ as being a national treasure.

• Annex 31: article from the New York Times dated 11/03/2015 about the Budapest Gypsy Symphony Orchestra stating the same as above regarding the dispute over the name ‘Hundred Gypsy Violins’.

The remaining evidence filed can be set aside as it is not pertinent to the question of whether or not the earlier marks are well-known.

Assessment of the evidence

It is important to note that when evaluating the evidence submitted, the Opposition Division has to make an overall assessment and all the circumstances of the specific case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves but may contribute to proving recognition on the market in combination with other documentation and information.

It is true that some of the evidence emanates from the opponent itself, however, this is counteracted by the independent and impartial materials such as the press articles, extracts from the internet, as well as the letter from the Hungarian Ministry. Together all the materials largely support the assertions made by the opponent, as will be illustrated below.

Firstly, there is no doubt that the mark in question is earlier than the contested mark. In fact, annex 1 states that 06/06/2015 marked the thirty year anniversary and this is proven via the online articles (annexes 9 and 12), the letter from the Hungarian Ministry (annexes 21/22) as well as the remaining evidence in general. Indeed, the evidence shows that the trade mark was used for CDs back in 1996 for example. More importantly, the references throughout the material clearly prove that the trade mark was used by the orchestra for at least thirty years.

Secondly, the evidence demonstrates that the Budapest Gypsy Symphony Orchestra is also known as (The) Hundred Gypsy Violins and in fact the latter epitomises the essence of the orchestra and could also be said to be the name which allows the orchestra to be immediately identifiable as such. In any event, it cannot be disputed that both names are intrinsically linked and this is clearly demonstrated in the evidence.

Thirdly, the assertions made by the opponent regarding the reputation attributed to the mark at issue are patently substantiated in the evidence, at least for part of the goods and services. It is clear from the evidence that (The) Hundred Gypsy Violins is considered a national treasure in Hungary as demonstrated by the letter from the Hungarian Ministry. Though it is true that there is no information about this prize, the fact that it is awarded by the Hungarian authorities and is considered to reflect Hungarian patrimony cannot be quibbled with. Moreover, the comments from the newspaper articles also confirm this prize and its importance. In any event, the evidence proves, as a whole, that the opponent’s right does enjoy a significant amount of recognition. This can be seen in the articles that refer to ‘sold-out concerts’ over a significant period of time (for example annex 9 refers to the performances being as successful as those in the past), the references to the uniqueness of the orchestra and its distinctiveness.

Nonetheless, the evidence does not prove that the mark is well known in relation to all the goods and services claimed. The evidence clearly shows that the earlier mark is recognised in connection with recorded musical content which is proven by the references to the platinum and gold discs (which are only awarded when sales of CDs reach a significant figure) as well as the general information relating to the recordings, albums and so forth. On this basis, the Opposition Division is satisfied that the mark is well known for these goods.

Further, the evidence clearly demonstrates that the opponent’s mark is well known in conjunction with concerts whilst the opponent submits it is well known for entertainment services. The latter is a broad term that includes firework displays, helicopter rides, casino gaming, contests to name but a few. The opponent has demonstrated that the earlier mark is well known for an orchestra that gives concerts and other similar musical performances but it has not demonstrated that it is well-known in conjunction with any other services that could be said to be in the field of entertainment.

Where the earlier well known mark covers a wide range of goods and services targeting different kinds of public, the renown has to be assessed separately for each category of goods. In such cases the earlier mark may not be well-known for all of them, as it may not have been used at all for some of the goods, whereas for others it may not have reached the degree of knowledge necessary. Hence, if the evidence shows that the earlier mark is only well-known for some of the goods or services for which it is registered, it is only to that extent that this mark may be protected under the relevant provisions. With this in mind, the Opposition Division finds that the mark is only well-known for entertainment services in the field of musical performances such as concerts.

As concerns the remaining marketing and promotion, it is firstly relevant to recall that this refers to the provision of such services to third parties. In this respect, the evidence does not relate to any of these services. The opponent’s posters for example may advertise the performances of the orchestra but this is clearly not sufficient. The evidence would have to demonstrate that these activities are rendered by the opponent to other undertakings and there is nothing in this evidence nor in any of the opponent’s submissions or argumentation that even refers to this activity.

Finally, it is true that the evidence spans several different Member States and third countries. However, as can be seen above, it can clearly be surmised that the earlier mark is well-known in Hungary. In fact, even if ‘100 TAGÚ CIGÁNYZENEKAR’ would be the Hungarian equivalent, the evidence demonstrates that the relevant public has been equally exposed to the earlier right in question, due to the world-wide fame of the orchestra. Whether or not the well-known character of the mark is proven in the other Member States invoked can be set aside, since, as will become apparent, it is sufficient for the time being to continue on the basis of the well-known mark in Hungary.

In view of the foregoing, the Opposition Division is of the opinion that when taken as whole, the evidence demonstrates the well-known character of the ‘HUNDRED GYPSY VIOLINS’, at least in Hungary, for recorded musical content and entertainment services in the field of musical performances such as concerts.

2. The goods and services

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

Recorded musical content and entertainment services in the field of musical performances such as concerts.

The contested goods and services are the following:

Class 9: Recorded content.

Class 35: Advertising, marketing and promotional services.

Class 41: Education, entertainment and sports; Publishing and reporting.

Contested goods in Class 9

The contested goods include the opponent’s recorded musical content thus they are identical.

Contested services in Class 35

It should firstly be borne in mind that the fact that the opponent was unable to prove any kind of use or recognition for its earlier mark in relation to the same services cannot be used against it when assessing the similarity of the services since the concepts are different.

The services of the contested mark are advertising, marketing and promotional services in Class 35. With regard to the relevant legal provisions from Hungarian law, as cited above, the opponent argues that the contested services in Class 35 are similar to its goods and services given that its services rely on promotion, advertising and marketing. The opponent argues that the performing arts rely heavily on such impresario services to enable them to better reach the audience. To render the goods and services of the earlier mark, the contested services are inherently included therein due to the very specific nature of the services for which the earlier mark is renowned and used. In such a specialist field, such entertainment services within the music industry services are undertaken by the same providers as they have the same necessary know-how. In short, the opponent argues that the services are intrinsically linked.

The contested services in this class are worded in a broad manner but they do indeed include impresario services. The latter refers to the notion of somebody who not only organizes but also finances concerts, plays or operas or other similar events. The Opposition Division concurs that there is a low degree of similarity with the opponent’s activities. Many orchestras have their established networks in which they give concerts, tours and similar live performances and indeed they usually undertake all the different actions involved.

Contested services in Class 41

The contested entertainment includes the limited entertainment services as protected by the earlier right. Given that the broad contested services cannot be dissected ex-officio, they are considered identical.

The contested sports refer to physical activities, practised individually or in a team, for competition or for entertainment. As such, the aforementioned service can have the same purpose as the opponent’s entertainment services in the field of musical performances such as concerts given that both are enjoyable, relaxing activities usually denoted as leisure activities. It is quite usual for such services to be made available in the same venues and they target the same public. Consequently, at least a low degree of similarity can be sustained.

The contested education consists in giving instruction to others, whether it is through formal schooling or informal transmission of knowledge, skills, and attitudes. Education clearly covers a multitude of different disciplines, one of which is teaching music. It has to be considered that music teaching material includes, inter alia, recorded musical content which is essential to the education services. Therefore, these goods and services are complementary and service providers offering any kind of course often hand out these goods to participants as learning supports. Given the link between the goods and services in question as regards their relevant public, common origin, distribution channels, and given that the goods complement the services, these goods and services are considered similar to at least a low degree.

The contested publishing is the action of producing and issuing printed or electronic matter for distribution and sale while the contested reporting refers to the activity of collecting information and transforming it into a format that can be made available in a variety of ways. As the finished products resulting from the aforementioned services may have an entertainment purpose, there is a certain complementary relationship to the aforementioned opponent’s services. To this extent therefore, they can be distributed through the same distribution channels. Hence, they are considered similar to a low degree.

3. The signs

HUNDRED GYPSY VIOLINS	HUNDRED GYPSY VIOLINS
Earlier trade mark	Contested sign

The signs are identical.

4. Global assessment, other arguments and conclusion

The opponent has demonstrated the well-known character of the ‘HUNDRED GYPSY VIOLINS’, at least in Hungary, for recorded musical content and entertainment services in the field of musical performances such as concerts. Furthermore, the signs are identical whilst the contested goods and services are identical and similar to varying degrees.

As set out previously, well-known marks that are not registered, are only protected against identical or similar goods if there exists a likelihood of confusion pursuant to Article 8(1)(b) EUTMR, to which Article 8(2)(c) EUTMR refers for determining the scope of protection. However, it should be noted that Article 8(1)(b) EUTMR is interrelated to Article 8(1)(a) EUTMR; the former requires similarity whilst the latter full identity. In the case at hand, the signs are identical as are some of the goods and services (the goods in Class 9 and entertainment from Class 41) and such circumstances satisfy the provisions of Article 8(1)(a) EUTMR.

The remaining services are all similar to varying degrees. Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The identity between the signs leads to a clear likelihood of confusion for all the goods and services found similar to varying degrees. Indeed, bearing in mind the aforementioned premise of interdependence, the identity between the signs offsets the low degree of similarity of some of the services.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s well-known mark in Hungary. It follows that the contested trade mark must be rejected for all the goods and services.

In view of the success of the opposition in this regard, it is not necessary to assess the remaining rights or grounds.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Vanessa Page Marion GAILLARD

Helen Louise MOSBACK

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.