OPPOSITION No B 2 556 788

SC Pro Tv SA, Bd. Pache Protopopescu nr. 109, sector 2, Bucuresti, Romania (opponent), represented by Nestor Nestor Diculescu Kingston Petersen, 201 Barbu Vacarescu Street, Globalworth Tower, 17th floor, 2nd District, 020276 Bucharest, Romania (professional representative)

a g a i n s t

Emile Capital Ltd, Metsäpirtinkatu 10, 20740 Turku, Finland (applicant).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 556 788 is upheld for all the contested goods and services, namely:

Class 9: Recorded content; Information technology and audiovisual equipment.

Class 38: Telecommunication services.

Class 42: IT services; design services.

2. European Union trade mark application No 14 024 715 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 024 715, namely against some of the goods and services in Classes 9 and 42 and all the services in Class 38. The opposition is based on, inter alia, Romanian trade mark registration No 99 840. The opponent invoked Article 8(1)(b), 8(4) and 8(5) 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 Romanian trade mark registration No 99 840.

1. The goods and services

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

Class 16: […], Printed matter.

Class 38: Telecommunications; […..].

Class 42: Creating and maintaining websites.

The contested goods and services are the following:

Class 9: Recorded content; Information technology and audiovisual equipment.

Class 38: Telecommunication services.

Class 42: IT services; design services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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 information technology equipment includes devices whose primary function is related to the collection, transfer, storage or processing of data, and the contested audiovisual equipment includes devices used to communicate audio or visual information over a distance via radio waves, optical signals, etc., or along a transmission line. The opponent’s telecommunications in Class 38 allow people to communicate with one another by remote means. Consumers will use the contested goods when they want to communicate with others. There is a link between these contested goods and the opponent’s services. They are similar because they are complementary, and, even though their natures are different, their purposes and distribution channels are the same.

The contested recorded content includes a variety of recorded media, such as downloadable electronic publications, for example e-books. The contested goods are considered similar to the opponent’s printed matter in Class 16 (which includes printed books), as the goods under comparison may coincide in their purpose (for information, education or entertainment) and they are in competition. Furthermore, they can have the same producer and relevant public.

Contested services in Class 38

The contested telecommunication services are synonymous with the opponent’s telecommunications. The services are identical.

Contested services in Class 42

The contested IT services include a whole range of services encompassing the creation, maintenance and provision of support for any technology that involves the development, maintenance or use of computer systems, software or networks for the processing and distribution of data. These services, therefore, include, as a broader category, the opponent’s creating and maintaining websites (i.e. a collection of files and related resources that are accessible through the World Wide Web and organised under a particular domain name and used for the distribution of data). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested design services could cover a large variety of services (e.g. computer software and system design, graphic arts design, website design). The opponent’s creating websites includes services such as website design and content development. Therefore, the contested services overlap with the opponent’s services insofar as they could both be for website design. It follows that these services are identical.

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, but also at business customers looking for IT or telecommunication business solutions. The degree of attention may vary from average to higher than average, depending on the price and application of the goods/services.

3. The signs

protele

Earlier trade mark	Contested sign

The relevant territory is Romania.

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 figurative mark consisting of the verbal elements ‘PRO’ and ‘TV’, written in slightly stylised upper case letters; these elements are depicted in white–grey merging colours and are placed one below the other. The element ‘TV’ is slightly italicised and inclined, and depicted against three horizontal stripes in red, green and blue. The element ‘PRO’ and the stripes are depicted with partial black shading behind them. All of these elements are placed against a white square background. The word ‘PRO’ will be understood by the public in the relevant territory to have the meaning of the word ‘pro’, as in ‘for, in favour of’; the word ‘TV’ will be understood as a short form of ‘television; television set’. The words ‘PRO’ and ‘TV’ in combination will be perceived by the relevant public to mean ‘for television/for television set’. The stripes and the square background will be perceived as such and the partial shading will be perceived as decorative shading that highlights the verbal element ‘PRO’ and the stripes.

The contested sign is the word mark ‘protele’. The public in the relevant territory will perceive the contested sign as a juxtaposition of the word ‘pro’, which has the meaning specified above, and the word ‘tele’, which will be understood as an abbreviated form of ‘television; television set’ and is used by the relevant public as a prefix to form other words. The contested sign as a whole will be perceived to mean ‘for television/for television set’.

In its observations, the applicant argues that the verbal element ‘tele’ of the contested sign will be associated with the word ‘telecommunication’. Although the equivalent word for ‘telecommunication’ in Romanian (i.e. ‘telecomunicatii’) does begin with the letters ‘tele’, for the relevant public, as already explained above, ‘tele’ will convey the concept of ‘television/television set’. The applicant did not provide any evidence to support its claim regarding the association of ‘tele’ with ‘telecommunication’. Therefore, its claim must be set aside.

The elements ‘PRO’ and ‘TV’ of the earlier sign, in combination, will be associated with the meaning specified above. Bearing in mind that the relevant goods and services are printed matter; telecommunications; creating and maintaining websites, the elements, in combination, are considered weak for these goods and services, as they refer to the subject matter and/or purpose of these goods and services.

The earlier sign is also composed of less distinctive (in comparison with the verbal elements ‘PRO’ and ‘TV’) figurative elements of a purely decorative nature, namely the stripes, the rectangular background and the partial shading, which are simple geometric shapes or serve only to highlight the other elements. Therefore, the verbal elements are more distinctive than these figurative elements.

The element ‘protele’ of the contested sign will be associated with the meaning specified above. Bearing in mind that the relevant goods and services are recorded content; information technology and audiovisual equipment; telecommunication services; IT services; design services, this element is weak for these goods and services, as it refers to the subject matter and/or purpose of these goods and services.

Visually, the signs coincide in the sequence of letters ‘PRO’ and the letter ‘T’ of the verbal elements ‘PRO’ and ‘TV’ of the earlier sign and ‘protele’ of the contested sign, which are weak for the relevant goods and services. The signs differ in the letter ‘V’ of the element ‘TV’ of the earlier sign and the letters ‘ele’ of the contested sign. They also differ in the figurative elements of the earlier mark, namely the stripes, the square background and the partial shading (which are less distinctive than the verbal elements), and the slight stylisation of the verbal elements of the earlier mark, which will, however, not divert consumers’ attention from the letters.

When signs consist of both verbal and figurative components (as is the case for the earlier mark), 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).

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

Aurally, the relevant public will pronounce the elements ‘PRO’ and ‘TV’ (which are of weak distinctiveness) of the earlier mark as /pro/te/ve/, and the element ‘protele’ (which is of weak distinctiveness) of the contested sign as /pro/te/le/. Therefore, the pronunciation of the signs coincides in the sounds /pro/te/*e/ and differs in the sound of the /v/ of the earlier mark and the /l/ of the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, as explained above, the words ‘PRO’ and ‘TV’ of the earlier mark and ‘protele’ of the contested sign will be associated with the same meaning by the relevant public. The figurative elements of the earlier mark, being of a purely decorative nature, do not create any particular conceptual differences between the signs.

To that extent, the signs are conceptually identical.

As the signs have been found similar (and even identical) 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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all the goods and services in question, namely printed matter in Class 16; telecommunications in Class 38; and creating and maintaining websites in Class 42.

5. Global assessment, other arguments and conclusion

The contested goods are similar and the contested services are identical to the opponent’s goods and services, respectively. The degree of attention may vary from average to higher than average when choosing the relevant goods and services.

The signs are visually similar to an average degree and are aurally highly similar. Furthermore, they will convey the same concept to the relevant public, namely ‘for television/for television set’.

As noted above, the earlier Romanian trade mark has a lower than average degree of distinctiveness for the goods and services in question. However, while the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment and it is established case law that, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102).

Although the relevant public will perceive concepts in the verbal elements ‘PRO’ and ‘TV’ and ‘protele’ in the signs under comparison, and these elements are, therefore, of weaker than normal distinctiveness for the goods and services at issue, this concept is conveyed by both signs and it retains a certain degree of distinctiveness. In addition, these are the only verbal elements of the earlier mark and the only element of the contested sign, and the figurative elements of the earlier mark, as specified above, are less distinctive than the verbal elements, as they are of a purely decorative nature. Furthermore, when a sign consists of a verbal and a figurative element, which is the case for the earlier mark, it is the verbal element that has a stronger impact on the consumer.

Considering all the above, the Opposition Division concludes that the relevant public could believe that the goods and services found to be identical or similar come from the same undertaking or from economically linked undertakings, even when the degree of attention is above average.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘PRO’ and points to the existence of ‘28183 trade mark matches in OHIM eSearch’. The applicant does not refer to any particular examples to support its argument.

The Opposition Division notes that the existence of some trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the information given by the applicant does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the verbal element ‘PRO’.

The Opposition Division has already established that the distinctiveness of the earlier mark is lower than average, as pointed in section d) of this decision (‘Distinctiveness of the earlier mark’); however, this is based not on the reasons given by the applicant, but on the ground of the assessment carried out in this decision and, in particular, the assessment described in section c) (‘The signs’).The lower than average distinctiveness of the earlier mark, however, does not prevent the finding of likelihood of confusion on the basis of the reasons given above.

Considering all the above, in particular the identity and similarity between the goods and services and the similarity between the signs, 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 Romanian trade mark registration No 99 840. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is 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. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier Romanian trade mark registration No 99 840 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and 8(5) EUTMR.

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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Claudia ATTINÀ

Eamonn KELLY

Oana-Alina STURZA

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 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 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 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.