OPPOSITION No B 2 549 759

Cme Media Pro B.V., Dam 5b, 1012 JS Amsterdam, The Netherlands (opponent), represented by Rott, Růzička & Guttmann Patentová, Známková A Advokátní Kancelář, Vinohradská 37/938, 120 00 Praha 2, Czech Republic (professional representative)

a g a i n s t

J.S.Tel S.R.O., Hybernská 24, 11000 Praha, Czech Republic, represented by Petr Uiblein, J.S.Tel S.R.O, Hybernská 24, 11000 Praha, Czech Republic (employee representative).

On 13/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 549 759 is upheld for all the contested goods and services.

2. European Union trade mark application No 13 824 719 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 13 824 719. The opposition is based on, inter alia, international trade mark registration No 1 075 456 designating the European Union. 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. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier international trade mark registration No 1 075 456.

1. The goods and services

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

Class 9: Digital and electronic media, namely, downloadable audio, visual, and multimedia content in the fields of news, entertainment, education, sports, comedy, drama, movies, music, and music videos; computer software, namely, downloadable players for audio, visual, and multimedia content; software tools for editing of audio, visual, and multimedia content; video search and annotation software; content protection software; AD tracking and optimization software; video game software; interactive game programs; recordable and pre-recorded media, namely, DVDs, CDs, music video interactive discs (MVIS), video and audio cassettes, laser discs; computer software for searching and retrieving information, websites, files, and documents; downloadable electronic and digital publications; digital and electronic equipment for recording, transferring and displaying text, sound and/or images; downloadable software to enable uploading, posting, showing, displaying, tagging, blogging, sharing and otherwise providing electronic and digital media and information over the Internet and other communications networks; application program interface (API) that enables developers to integrate video content and functionality into websites, software applications, and devices.

Class 38: Broadcasting and streaming of audio, video and multimedia content via the Internet and other communications networks; podcasting, webcasting and streaming services; transmission of messages, data and content via the Internet and other communications networks; transmission of video and interactive games; podcasting and webcasting services, namely broadcasting of programming via the Internet to personal data assistants, cellular and mobile telephones, and other portable electronic devices with Internet access; providing forums chat rooms, listservs and blogs for the transmission of messages, comments, audio, visual, and multimedia content among users via the Internet and other communications networks; transmission of digital and electronic media, audio, visual and multimedia content, videos, movies, pictures, images, text, photos, user-generated content and information via the Internet and other communications networks; providing community forums for users to post, search, watch, share, critique, rate, and comment on, videos and other audio, visual, and multimedia content via the Internet and other communications networks; providing online electronic bulletin boards for transmission of messages among users in the field of general interest; web messaging services; video-on-demand transmission services; interactive television broadcasting services.

Class 42: Providing temporary use of non-downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, audio, visual and multimedia content, videos, movies, pictures, images, text, photos, user-generated content, and information via the Internet and other communications networks; providing temporary use of non-downloadable software to enable sharing of audio, visual, and multimedia content and comments among users; providing temporary use of non-downloadable software to enable content providers to track audio, visual, and multimedia content; providing temporary use of non-downloadable analytics software, namely, software that provides statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games and other user-generated content; hosting of websites featuring audio, visual, and multimedia content for others; providing a website that gives computer users the ability to upload and share user-generated videos, essays and articles on a wide variety of topics and subjects; providing search engines for locating, previewing and downloading audio, visual, and multimedia content; computer services, namely, creating indexes of information, sites, media files and other resources available on computer networks.

The contested goods and services are the following:

Class 9: Information technology and audiovisual equipment.

Class 38: Electronic transmission of images (Services for the -); Electronic and telecommunication transmission services; Television broadcasting.

Class 42: IT services.

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 Information technology equipment consists of computers and computer peripherals. These goods are similar to the opponent’s software goods, such as computer software, namely, downloadable players for audio, visual, and multimedia content; software tools for editing of audio, visual, and multimedia content; video search and annotation software; content protection software as they can coincide in producer and distribution channels. Furthermore they are complementary and can have the same manufacturer.

The contested audiovisual equipment includes, as a broader category, the opponent’s digital and electronic equipment for recording, transferring and displaying text, sound and/or images. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

Contested services in Class 38

The contested Electronic transmission of images (Services for the -); Electronic and telecommunication transmission services; television broadcasting overlaps and largely coincides with the opponent’s Broadcasting and streaming of audio, video and multimedia content via the Internet and other communications networks; transmission of digital and electronic media, audio, visual and multimedia content, videos, movies, pictures, images, text, photos, user-generated content and information via the Internet and other communications networks since nowadays image and data transmission and television broadcasting is commonly provided via interactive channels, and the services are therefore considered identical.

Contested services in Class 42

The contested IT services include, as a broader category, the opponent’s computer services, namely, creating indexes of information, sites, media files and other resources available on computer networks and Providing temporary use of non-downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, audio, visual and multimedia content, videos, movies, pictures, images, text, photos, user-generated content, and information via the Internet and other communications networks. 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.

2. 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 or similar are directed at the public at large. The degree of attention is average.

3. The signs

VOYO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a word mark. The earlier mark has no element that could be clearly considered more distinctive than other elements. It has no dominant elements.

The contested sign is a figurative mark. The element TV of the contested sign will be associated with ‘television’. Bearing in mind that the relevant goods and services are audio-visual apparatuses, software, broadcasting and IT-services it is considered that this element is weak for these goods and services. The part of the relevant public who understands the meaning of that element will not pay as much attention to this element as to the other more distinctive elements of the mark. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue.

The figurative element of the contested trade mark, containing the word TVOYO, by virtue of its central position and size, overshadows the other verbal elements of the mark and is the visually dominant element of the contested trade mark.

Visually, the signs coincide in the letters VOYO. However, they differ in the first letter T, and stylisation, and in the small letters TV (placed at the end) in the contested mark, which do not have a respective counterpart in the earlier mark.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is also applicable to the contested sign, which has figurative components limited only to the use of slightly stylised typeface and placement of the letters.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the letters VOYO present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters T and TV of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive the letter combination TV, (appearing in the contested mark) as referring to television. The earlier sign lacks meaning throughout the territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 mark is 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. Global assessment, other arguments and conclusion

The goods and services have been found to be partially identical and partially similar. The similarities and dissimilarities between the signs have been established.

The earlier sign and the contested sign have been found to be similar to the extent that they have the letter sequence _ VOYO in common. The earlier mark is encompassed in its entirety in the contested sign. Also, in the case of word marks, such as the earlier mark, it is the word that is protected, not its written form. The additional letter T, although placed at the beginning of the word element of the contested sign, does not have a decisive differentiating effect given that the remaining letters are identical and within word elements of similar length. The two word elements have phonetically similar sounds and are aurally and visually confusingly similar for the consumer. The minuscule letters TV, placed at the end of the contested mark, do not serve, in themselves, to distinguish the marks because the consumer’s focus will be on the largest element TVOYO, this being the dominant element and the only one likely to be pronounced, contrary to the applicant’s arguments. Furthermore, the element TV, if perceived, is to be considered weak for all goods and services, and therefore overlooked.

The additional differentiating elements, namely the stylisation (in the contested sign), is not sufficient in itself to counteract the visual and aural similarity between the words VOYO and TVOYO. The public will focus on the similar aspects of the marks.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323).

Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting identical and similar goods and services come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that 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 international trade mark registration No 1 075 456. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right, international trade mark registration No 1 075 456, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Richard THEWLIS

Erkki MÜNTER

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal shall 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 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.