OPPOSITION Nо B 2 610 676

 

Heinrich Bauer Verlag KG, Burchardstraße 11, 20095 Hamburg, Germany (opponent), represented by Erlburg Rechtsanwaltsgesellschaft mbH, Friedrichstraße 88, 10117 Berlin, Germany (professional representative) 

 

a g a i n s t

 

Telefonica, S.A., Gran Vía, 28, 28013 Madrid, Spain (applicant), represented by Intecser Consultoría, Calle Goya, 127, 28009 Madrid, Spain (professional representative).

On 08/06/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 2 610 676 is partially upheld, namely for the following contested goods and services:

 

Class 9: Computer application software for mobile telephones; software for distributing information about motor vehicle drivers; interactive computer software; computer software for wireless content delivery; communication software; computer software for application and database integration; computer software for controlling and managing access server applications; computer software to enhance the audio-visual capabilities of multimedia applications; computer software applications, downloadable; downloadable graphics for mobile phones; computer digital maps; wireless communications equipment and devices; wireless local area network devices; nautical, photographic, cinematographic, optical, signalling, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, accumulating electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording and optical discs; cash registers, calculating machines, data-processing equipment and computers, recorded computer programmes, screens (computer and television), keyboards (computers), computer mice, CD-ROMs, telephone apparatus, image and sound transmitters and receivers, telephone exchanges; telephones; telephone repeaters; answering machines; electronic publications (electronically-downloadable); electronic agendas; intercommunication apparatus; interfaces (for computers); games programmes; electronic pens (visual display units); readers (data processing equipment); peripherals adapted for use with computers; magnetic card; television apparatus; modems; downloadable ring tones for mobile phones; teaching apparatus. Class 38: All the services in this Class. Class 42: Software design and development; programming of educational software; design of computer software for commercial analysis and preparation of reports; software (updating of computer-); rental of application software; rental and maintenance of computer software; computers services, namely, creation of indexes and databases organising information content supplied via a global computer network according to user preference; providing temporary use of online non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programmes; scientific and technological services and research and design relating thereto; industry analysis and research services; hosting computer sites [web sited]; development of software solutions for internet providers and internet users; providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; computer programming for the internet; computer rental; rental of web servers; computer system analysis; computer virus protection services; information technology [IT] consultancy; web site design consultancy; consultancy in the design and development of computer hardware; computer software consultancy; monitoring of computer systems by remote access; conversion of data or documents from physical to electronic media; data conversion of computer programs and data [not physical conversion]; creating and maintaining web sites for others; digitisation of documents (scanning); computer system design; duplicating computer programs; technical project studies; server hosting; installation of software; scientific research; technical research; research and development for others; computer programming; provision of search engines for the internet; recovery of computer data; software as a service (SaaS).

2.	European Union trade mark application No 14 437 404 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

On 18/11/2015, the opponent filed an opposition against all the goods and services of European Union trade mark application No 14 437 404 for the word mark ‘MOVISTAR DATA AS A SERVICE’, namely against all the goods and services in Classes 9, 38 and 42. The opposition is based on German trade mark registration No 302 009 025 166 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

Initially the opponent invoked also German trade mark registration No 302 015 042 136 for the figurative mark . However, in its letter of 03/02/2020, the opponent informed the Office that this earlier right was cancelled on 21/05/2019 and therefore no longer a valid basis in the current opposition proceedings.

Furthermore, in this letter, the opponent showed that the opposition against the other earlier mark invoked, namely German trade mark registration No 302 009 025 166 was rejected in its entirety and this trade mark will remain registered.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

In the present case, the contested trade mark was published on 20/08/2015.

In order to determine the date of commencement of the five years grace period in respect of a national mark, national law is relevant. The commencement of this period depends on the registration procedure of the Member States (14/06/2007, C-246/05, Le Chef de Cuisine, EU:C:2007:340, § 26-28). Consequently, the term ‘registration’ is to be interpreted as the ‘date of the completion of the registration procedure’ as defined by national law (Article 16(1) of Directive (EU) 2015/2436).

In German national proceedings concerning trade marks the opposition period is applied as a post-registration procedure. As indicated in the corresponding extract of the opponent’s German trade mark No 302 009 025 166, this mark had an opposition proceeding pending, which concluded on 21/02/2019. Consequently at the time of publication of the contested EUTM application, the earlier mark was not under the use requirement as the five years’ grace period commences from the date of the closure of the opposition period.

Therefore, the request for proof of use is inadmissible.

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.

a) The goods and services

 

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

Class 9: Recorded and unrecorded sound, image and data carriers of all kinds, as far as included in class 9 (except unexposed film), in particular tapes, cassettes, compact discs, video discs, records, OAT tapes, audio and video tapes, diskettes, CD-ROM, digital versatile discs (DVDs ); apparatus for recording, transmission or reproduction of sound, images and data; calculating machines, data processing equipment and computers, computer software [recorded or downloadable]; glasses [optics], spectacle cases, electronic publications [downloadable].

Class 16: Paper, cardboard (carton) and goods made from these materials (included in class 16), in particular paper napkins, paper handkerchiefs, toilet paper, household paper and paper towels, printed matter, in particular magazines, newspapers, books, catalogs and brochures, book binding material, photographs; instructional and teaching material (except apparatus); stationery, posters, decals, trading cards [stationery]; adhesives for stationery or household purposes; artists' materials; typewriters and office requisites (except furniture); plastic materials for packaging, included in class 16 included; printers' type, printing blocks.

Class 35: Advertising research, namely sales, marketing and opinion research; advertising purposes distribution of goods, especially of leaflets, prospectuses, printed matter and samples; arranging advertising contracts or third parties; advertising, in particular radio, television, cinema, print, videotext and teletext advertising, public relations [public relations], development of marketing concepts; rental of advertising material; arranging advertising contracts, rental of advertising films; rental of advertising space, including in electronic form on the internet; business management; business administration; office functions; systemization and compilation of data in computer databases; updating of data in computer data bases, administrative processing of purchase orders for goods and services (including teleshopping), in particular order taking, order processing, order routing, handling of complaints and supply demands and placement of orders; provision of information (information) and consultancy for consumers in trade and business affairs [consumer advice]; publication of printed matter for advertising purposes.

Class 38: Telecommunications, electronic transmission and routing of voice, images, documents, messages and data, telephone services, including through a hotline or call center; mobile radio telephone services, email services, fax services, services of press agencies, providing access to data bases on computer networks; leasing access time to computer databases, electronic display, broadcast and transmission of film, television, radio, videotext, teletext programs or transmissions; providing access to information and information services for retrieval from the Internet and from other data networks, providing access to information on the Internet about computer games, video games, and information about so related products; telecommunications by means of platforms and portals on the Internet, in particular by means of an on line information center for customer service related to publishing products, advice and Information about telecommunications; providing access to a global computer network; conference call services, rental of telecommunication equipment; providing telecommunications channels for teleshopping services and electronic marketplaces; electronic exchange of messages via chat lines, chat roams and Internet forums; forwarding of messages of all kinds to Internet addresses (Web messaging ); procuring access to data bases.

Class 41: Entertainment, in particular radio and television entertainment, and entertainment on the internet, advice and information an entertainment, even on the internet, conducting games on the internet, film production, video production, production of radio, television and radio broadcasts; create texts (except for advertising purposes), in particular for video and teletext programs; movie rental [movie rental]; publication of printed matter other than for advertising purposes), in particular of magazines, newspapers, books; education; training; sports and cultural activities.

Class 42: Technical advice; server administration, electronic data storage and electronic data security, even in computer databases; design and development of programs for data processing, design and creating home pages and Internet pages; rental and maintenance of memory space far websites, for others (hosting); investigations and research in data bases and on the Internet for computer technology and scientific research, advice and information about telecommunications technology; providing or rental of electronic memory space (webspace) on the Internet, rental of computer software.

The contested goods and services are the following:

Class 9: Computer application software for mobile telephones; software for distributing information about motor vehicle drivers; interactive computer software; computer software for wireless content delivery; communication software; computer software for application and database integration; computer software for controlling and managing access server applications; computer software to enhance the audio-visual capabilities of multimedia applications; computer software applications, downloadable; downloadable graphics for mobile phones; computer digital maps; wireless communications equipment and devices; wireless local area network devices; optical fibre sensors; electronic sensors; synchro sensors; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording and optical discs; coin change dispensers and mechanisms for coin-operated apparatus; cash registers, calculating machines, data-processing equipment and computers, recorded computer programmes, screens (computer and television), keyboards (computers), computer mice, CD-ROMs, telephone apparatus, image and sound transmitters and receivers, telephone exchanges; telephones; telephone repeaters; answering machines; fire-extinguishing apparatus; electronic publications (electronically-downloadable); electronic agendas; intercommunication apparatus; interfaces (for computers); games programmes; electronic pens (visual display units); readers (data processing equipment); peripherals adapted for use with computers; magnetic card; television apparatus; coin-operated mechanisms for television sets; modems; downloadable ring tones for mobile phones; teaching apparatus.

Class 38: Telecommunication services; transmission of digital information; electronic transmission of data and documents via computer terminals and electronic devices; telecommunication of information (including web pages); webcasting services; provision of wireless application protocol services including those utilising a secure communications channel; broadband services; provision of broadband telecommunications access; communications consisting of providing multiple user access to a global computer data network (internet/intranet) for the transmission and dissemination of information, images or sound of all kinds; interactive broadcasting and communications services; routing and link-up for telecommunications; communications by fiber optic networks; communications by computer terminals; computer supported transmission of messages and images; satellite transmission, information about telecommunication; telephone and mobile telephone services; mobile telecommunications services; providing access to an internet portal; mobile telecommunication network services; fixed line telecommunication services; transmission of messages by telephone and facsimile; videoconferencing; recording, filtering and barring of calls; chatroom services and operation of chatrooms; forums [chat rooms] for social networking; providing access to digital music web sites on the internet; providing access to weblogs; provision of electronic communication links; electronic advertising (telecommunications); electronic messaging; message sending and message transmittal services; providing access to commercial transactions via electronic communications networks; broadcasting and transmission of information via networks or the internet; providing telecommunication connections to the internet or data bases; news agencies, transmission of news and daily events, sending of telegrams; broadcasting services; services relating to the broadcasting of radio and television programmes; subscription television broadcasting; broadcasting services relating to Internet protocol TV; provision of access to Internet protocol TV; internet access services; provision of wireless application protocol services including those utilising a secure communications channel; email and text messaging services; information services provided by means of telecommunication networks relating to telecommunications; services of a network provider, namely rental and handling of access time to data networks and databases, in particular the internet; operating of telecommunications equipment; rental of telecommunication facilities; providing telecommunication channels for teleshopping services; providing communication services through the use of phone cards or debit cards.

Class 42: Software design and development; programming of educational software; design of computer software for commercial analysis and preparation of reports; software (updating of computer -); rental of application software; rental and maintenance of computer software; inspection of motor vehicles [for roadworthiness]; providing of meteorological information via mobile telephone; computers services, namely, creation of indexes and databases organising information content supplied via a global computer network according to user preference; providing temporary use of online non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programmes; scientific and technological services and research and design relating thereto; industry analysis and research services; hosting computer sites [web sited]; development of software solutions for internet providers and internet users; providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; computer programming for the internet; computer rental; rental of web servers; computer system analysis; computer virus protection services; information technology [IT] consultancy; web site design consultancy; consultancy in the design and development of computer hardware; computer software consultancy; monitoring of computer systems by remote access; quality control; conversion of data or documents from physical to electronic media; data conversion of computer programs and data [not physical conversion]; creating and maintaining web sites for others; digitisation of documents (scanning); computer system design; industrial design; duplicating computer programs; technical project studies; server hosting; installation of software; scientific research; technical research; research and development for others; computer programming; provision of search engines for the internet; recovery of computer data; cloud seeding, software as a service (SaaS).

The terms ‘in particular’ and ‘including’, used in the applicant’s and opponent’s lists of goods and services, indicate 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and opponent´s lists of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 services in Class 9

Apparatus for recording, transmission or reproduction of sound or images; electronic publications (electronically-downloadable); calculating machines, data-processing equipment and computers are identically contained in both lists of goods (including synonyms).

The contested computer application software for mobile telephones; software for distributing information about motor vehicle drivers; interactive computer software; computer software for wireless content delivery; communication software; computer software for application and database integration; computer software for controlling and managing access server applications; computer software to enhance the audio-visual capabilities of multimedia applications; computer software applications, downloadable; recorded computer programmes; games programmes are included in the broad category of, or overlap with, the opponent’s computer software [recorded or downloadable]. Therefore, they are identical.

The contested magnetic data carriers, recording and optical discs; magnetic card are included in the broad category of, or overlap with, the opponent’s recorded and unrecorded sound, image and data carriers of all kinds, as far as included in class 9 (except unexposed film), in particular tapes, cassettes, compact discs, video discs, records, OAT tapes, audio and video tapes, diskettes, CD-ROM, digital versatile discs (DVDs). Therefore, they are identical.

The contested telephones; telephone repeaters; answering machines; intercommunication apparatus; television apparatus; telephone apparatus, image and sound transmitters and receivers, telephone exchanges; wireless communications equipment and devices; wireless local area network devices; nautical, photographic, cinematographic, signalling, life-saving teaching apparatus and instruments are included in the broad category of, or overlap with, the opponent’s apparatus for recording, transmission or reproduction of sound, images and data. Therefore, they are identical.

The contested cash registers; electronic agendas; readers (data processing equipment); teaching apparatus are included in the broad category of, or overlap with, the opponent’s computers. Therefore, they are identical.

The contested optical apparatus and instruments include, as a broader category, the opponent’s glasses [optics]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus and instruments for conducting, accumulating electricity are similar to the opponent’s apparatus for recording, transmission or reproduction of sound, images and data. They usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested screens (computer and television), keyboards (computers), computer mice, CD-ROMs; interfaces (for computers); electronic pens (visual display units); peripherals adapted for use with computers; modems are similar to the opponent’s computers. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested downloadable ring tones for mobile phones; downloadable graphics for mobile phones; computer digital maps are similar to the opponent’s electronic publications [downloadable]. They have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels.

The contested fire-extinguishing apparatus; coin change dispensers and mechanisms for coin-operated apparatus; coin-operated mechanisms for television sets; optical fibre sensors; electronic sensors; synchro sensors; scientific, surveying, weighing, measuring, checking apparatus and instruments; apparatus and instruments for switching, transforming, regulating or controlling electricity are dissimilar to the opponent’s goods and services in Classes 9, 16, 35, 38, 41 and 42 as they have no points of contact. Fire-extinguishing apparatus is equipment designed to extinguish fires or protect the user from fire. Coin change dispensers are machines that give change rapidly, as to a customer, typically operated by a manual keyboard and often used in association with a cash register. Mechanisms for coin-operated apparatus are mechanisms for any machine operated by the insertion of a coin, token or similar item designed for amusement of the person operating the device or the sale of certain products, including but not limited to jukeboxes, video and pinball machines, pool, shuffleboard and similar games, cigarettes, food and beverages. Sensors are devices that respond to a physical stimulus (such as heat, light, sound, pressure, magnetism, or a particular motion) and transmit a resulting impulse (as for measurement or operating a control). For example, electronic sensors are electronic devices used to measure a physical quantity such as temperature, pressure or loudness and convert it into an electronic signal. Scientific, surveying, weighing, measuring, checking apparatus and instruments are various devices that are used respectively for scientific purposes, including the study of both natural phenomena and theoretical research, by surveyors in their work to examine the condition of land and buildings professionally, to show amount of mass, to show the extent or amount or quantity or degree of something and to measure some specific parameters. Apparatus and instruments for switching, transforming, regulating or controlling electricity are various devices that are used in order to switch, transform, regulate or control electricity in a device. The fact, for example, that some electrical instruments and parts can be used in the apparatus covered by the earlier mark is not sufficient for a finding of similarity. The contested goods and the opponent’s goods and services differ not only in their nature and purpose, but also in their distribution channels, sales outlets, producers/providers and method of use. Furthermore, they are neither in competition nor complementary.

Contested services in Class 38

The contested telecommunication services; rental of telecommunication facilities are identically included in both lists of services (including synonyms).

The contested news agencies overlap with the opponent’s services of press agencies. Therefore, they are identical.

The remaining contested services, namely transmission of digital information; electronic transmission of data and documents via computer terminals and electronic devices; telecommunication of information (including web pages); webcasting services; provision of wireless application protocol services including those utilising a secure communications channel; broadband services; provision of broadband telecommunications access; communications consisting of providing multiple user access to a global computer data network (internet/intranet) for the transmission and dissemination of information, images or sound of all kinds; interactive broadcasting and communications services; routing and link-up for telecommunications; communications by fiber optic networks; communications by computer terminals; computer supported transmission of messages and images; satellite transmission, information about telecommunication; telephone and mobile telephone services; mobile telecommunications services; providing access to an internet portal; mobile telecommunication network services; fixed line telecommunication services; transmission of messages by telephone and facsimile; videoconferencing; chatroom services and operation of chatrooms; forums [chat rooms] for social networking; providing access to digital music web sites on the internet; providing access to weblogs; provision of electronic communication links; electronic advertising (telecommunications); electronic messaging; message sending and message transmittal services; providing access to commercial transactions via electronic communications networks; broadcasting and transmission of information via networks or the internet; providing telecommunication connections to the internet or data bases; transmission of news and daily events, sending of telegrams; broadcasting services; services relating to the broadcasting of radio and television programmes; broadcasting services relating to internet protocol TV; provision of access to Internet protocol TV; internet access services; provision of wireless application protocol services including those utilising a secure communications channel; email and text messaging services; information services provided by means of telecommunication networks relating to telecommunications; services of a network provider, namely rental and handling of access time to data networks and databases, in particular the internet; operating of telecommunications equipment; providing telecommunication channels for teleshopping services; providing communication services through the use of phone cards or debit cards; recording, filtering and barring of calls; subscription television broadcasting are all various types of telecommunication services or services related to telecommunication. Therefore, they are included in the broad category of, or overlap with, the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 42

The contested software design and development; programming of educational software; design of computer software for commercial analysis and preparation of reports; software (updating of computer -); maintenance of computer software; development of software solutions for internet providers and internet users computer; programming for the internet; information technology [IT] consultancy; computer software consultancy; installation of software; computer programming include, as broader categories, or overlap with, the opponent’s design and development of programs for data processing. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested rental of application software; rental of computer software; providing temporary use of online non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programmes; providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; software as a service (SaaS) are identical to the opponent’s rental of computer software, either because they are identically contained in both lists or because the opponent’s services include, or overlap with, the contested services.

The contested hosting computer sites [web sited]; server hosting; rental of web servers overlap with the opponent’s rental and maintenance of memory space far websites, for others (hosting). Therefore, they are identical.

The contested computer rental is highly similar to the opponent’s rental of electronic memory space (webspace) on the Internet. They usually coincide in their purpose, distribution channels, providers, public and method of use. Furthermore, they can be complementary to each other.

The contested computers services, namely, creation of indexes and databases organising information content supplied via a global computer network according to user preference; computer system analysis; computer virus protection services; web site design consultancy; consultancy in the design and development of computer hardware; monitoring of computer systems by remote access; conversion of data or documents from physical to electronic media; data conversion of computer programs and data [not physical conversion]; creating and maintaining web sites for others; digitisation of documents (scanning); computer system design; duplicating computer programs; provision of search engines for the internet; recovery of computer data; scientific and technological services and research and design relating thereto; industry analysis and research services; technical project studies; scientific research; technical research; research and development for others are at least similar to the opponent’s design and development of programs for data processing. They usually coincide in providers, relevant public and distribution channels. Some of these services can have the same nature.

The contested inspection of motor vehicles [for roadworthiness]; providing of meteorological information via mobile telephone; cloud seeding; quality control; industrial design are dissimilar to the opponent’s goods and services in Classes 9, 16, 35, 38, 41 and 42 as they have no points of contact. Inspection of motor vehicles is a procedure mandated by national or subnational governments in many countries, in which a vehicle is inspected to ensure that it conforms to regulations governing safety, emissions, or both. Providing of meteorological information refers to meteorological report, analysis, forecast, and any other statement relating to existing or expected meteorological conditions. Cloud seeding is a type of weather modification that aims to change the amount or type of precipitation that falls from clouds by dispersing substances into the air. Quality control relates to the process of certifying that a certain product or service has passed quality assurance tests and meets qualification criteria stipulated in contracts, regulations or specifications. Industrial design is the professional practice of designing products, devices, objects and services of all kinds. Industrial designers typically focus on the physical appearance, functionality and manufacturability of a product, though they are often involved in far more during a development cycle. The contested services and the opponent’s goods and services differ not only in their nature and purpose, but also in their distribution channels, sales outlets, producers/providers and method of use. Furthermore, they are neither in competition with each other nor complementary to each other.

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

 

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and/or at business customers with specific professional knowledge or expertise.

 

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

c) The signs

	MOVISTAR DATA AS A SERVICE
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 composed of the words ‘Movie’ and ‘Star’ (forming the verbal element ‘MovieStar’) and a personalised depiction of the latter.

As regards the verbal elements ‘Movie’ and ‘Star’, both being English words, they form an expression, which will be understood by the vast majority of the relevant public as a reference to a famous actor or actress. This is because this expression is widely used, also in the non-English speaking countries including Germany, and, as the words ‘movie’ and ‘star’ function in German as loanwords from English (der Movie: ‘American name for: film, cinema’ at https://www.duden.de/rechtschreibung/Movie and der Star: ‘someone who has achieved fame in a certain field’ at https://www.duden.de/rechtschreibung/Star, information extracted from Duden Dictionary on 03/05/2021).

The distinctiveness of the verbal part of the earlier mark, that is, ‘MovieStar’ will be low with regard to some of the goods (e.g. recorded and unrecorded sound, image and data carriers of all kinds, as far as included in class 9 (except unexposed film), in particular tapes, cassettes, compact discs, video discs, records, OAT tapes, audio and video tapes, diskettes, CD-ROM, digital versatile discs (DVDs)) and some of the services (i.e. telecommunications) as it could inform about their characteristics (e.g. that they are related to movie stars). With regard to the remaining goods and services the verbal element ‘MovieStar’ is normally distinctive.

The figurative element of a star in the earlier mark reinforces, to some extent, the abovementioned concept conveyed by the verbal elements and it shares their level of distinctiveness. However, when signs consist of both verbal and figurative components, 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).

The contested sign is a word mark composed solely of verbal elements, namely ‘MOVISTAR DATA AS A SERVICE’. The first verbal element ‘MOVISTAR’, as such, does not exist in German. However, the word ‘STAR’ within it will be easily identified. Moreover, the vast majority of the relevant public will perceive the sign as a misspelling of ‘movie star’ or will associate the sign with this expression due to their phonetic proximity or the common inaccurate recollection of the spelling of loanwords (especially if put on services that could have a relation to films). The Opposition Division will focus on this part of the public. Bearing in mind the above, this element will have a low distinctiveness for some of the goods (e.g. electronic publications (electronically-downloadable)) and some of the services (e.g. services relating to the broadcasting of radio and television programmes). It’s because the verbal element ‘MOVISTAR’ could inform about their characteristics (e.g. that they are related to movie stars). Nevertheless, for the remaining goods and services the distinctiveness of this verbal element as a whole is normal.

The contested sign is a word mark and, therefore, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the signs are represented in upper- or lower-case characters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), which is not the case here.

It should be noted that the majority of the German public would not even know whether ‘movie star’ is written as two words or one word only.

A part of the relevant public will identify the English verbal elements ‘DATA AS A SERVICE’ with a term commonly used in the IT sector (also abbreviated as ‘DaaS’). Data as a Service is an information provision and distribution model in which data files (including text, images, sounds, and videos) are made available to customers over a network, typically the Internet. This phrase will have a low distinctiveness for some of the goods and services (e.g. interactive computer software and computer software consultancy). Nevertheless, for the remaining public and for the remaining goods and services the distinctiveness of this element as a whole is normal.

It must be borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in ‘Movi*Star’ of the earlier mark and ‘MOVISTAR’ of the contested sign. They differ in the additional letter ‘E’ in the middle of the earlier sign. They also differ in the composition of the verbal elements in the earlier mark, where upper- and lowercase letters are used to visually split the verbal element into two parts. Finally, they differ in the additional figurative element of the earlier mark and the verbal elements ‘DATA AS A SERVICE’ of the contested sign.

Therefore, as the similarity resides within the verbal elements of the earlier mark and the first verbal element of the contested sign, which share eight letters in the same position with only one additional letter in the earlier mark, the signs are at least similar to a below average degree.

Aurally, it is very likely that the verbal elements ‘MovieStar’ and ‘MOVISTAR’ will be pronounced in the same way (according to the English pronunciation of the words ‘movie star’) by the vast part of the public (as explained above focus on this part of the public is taken by the Opposition Division) associating them with the same concept due to the imperfect recollection of the spelling (for the reasons set out above). In such a case, the signs will be identical with regard to this element and the difference between the signs will be in the additional elements ‘DATA AS A SERVICE’ in the contested sign.

Consumers tend not to pronounce all the elements of signs, simply to economise on words because they take time to pronounce, especially when they are easily separable from the dominant element of the mark (18/09/2012, T-460/11, Bürger, EU:T:2012:432, § 48) and non-distinctive (at least for part of the goods and services), as is the case here. Therefore, it is very plausible that the relevant public will not pronounce the additional verbal elements, namely ‘DATA AS A SERVICE’ of the contested sign, given their length, position and low distinctiveness (the latter at least with regard to some of the goods and services).

Therefore, depending on the public’s perception of the contested sign, the signs are aurally at least similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. As it was explained above the relevant public will associate the earlier mark with the term ‘a famous actor or actress’ (i.e. ‘movie star’) – with regard to the contested sign it will be seen as such by the vast majority of the relevant public.

Therefore, the conceptual similarity is at least average.

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

 

d) Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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 below average for some of the goods and services in question, namely the ones having ‘movie stars’ as their subject matter. The mark has a normal degree of distinctiveness for the remaining goods and services in relation to which it has no descriptive, allusive or otherwise non-distinctive meaning from the perspective of the relevant public.

 

e) Global assessment, other arguments and conclusion

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 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 goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar. They target the public at large and professionals whose degree of attention may vary from average to high. The signs are visually similar to at least a below average degree and aurally at least similar to an above average degree. The conceptual similarity is at least average. As explained above the earlier mark’s distinctiveness is below average for some of the goods and services in question and normal for the remaining goods and services.

In the present case, eight out of nine letters of the earlier mark are included in the same positions in the contested sign’s first element. The signs differ in the additional letter ‘E’ in the middle of the earlier mark (that is the last letter of its first word), which might be easily overlooked. Phonetically, at least ‘MovieStar’ and ‘MOVISTAR’ will be pronounced in the same way as explained in section c) of the decision. The marks will also be associated at least with the concept of a famous actor or actress (i.e. ‘movie star’).

It must be borne in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54). Therefore, it must be considered that a difference in the middle letter of words that could be perceived as loanwords, could be easily overlooked.

As for the stylisation and the figurative element of the earlier sign and the additional verbal element ‘DATA AS A SERVICE’ in the contested sign, it is conceivable that the differences will be noticed by the consumers. Nevertheless, this does not exclude the possibility of a likelihood of confusion on the part of the public. This is because it is common practice for manufacturers and service providers to make variations in their trade marks, for example by altering the font or colours, or by adding verbal or figurative elements to endow them with a new, modern image. Consumers are well accustomed to marks being stylised and embellished with logotypes and other devices (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, even taking into account a high degree of attention, and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 302 009 025 166.

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 varying degrees) to those of the earlier trade mark.

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) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

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

REPUTATION — ARTICLE 8(5) EUTMR 

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

 

According to the opponent, the earlier trade mark has a reputation in Germany.

Reputation implies a knowledge threshold that 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 31/07/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Germany prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely

Class 9: Recorded and unrecorded sound, image and data carriers of all kinds, as far as included in class 9 (except unexposed film), In particular tapes, cassettes, compact discs, video discs, records, OAT tapes, audio and video tapes, diskettes, CD-ROM, digital versatile discs (DVDs ); apparatus for recording, transmission or reproduction of sound, images and data; calculating machines, data processing equipment and computers, computer software [recorded or downloadable]; glasses [optics], spectacle cases, electronic publications [downloadable].

Class 16: Paper, cardboard (carton) and goods made from these materials (included in class 16), in particular paper napkins, paper handkerchiefs, toilet paper, household paper and paper towels, printed matter, in particular magazines, newspapers, books, catalogs and brochures, book binding material, photographs; instructional and teaching material (except apparatus); stationery, posters, decals, trading cards [stationery]; adhesives for stationery or household purposes; artists' materials; typewriters and office requisites (except furniture); plastic materials for packaging, included in class 16 included; printers' type, printing blocks.

Class 35: Advertising research, namely sales, marketing and opinion research; advertising purposes distribution of goods, especially of leaflets, prospectuses, printed matter and samples; arranging advertising contracts or third parties; advertising, in particular radio, television, cinema, print, videotext and teletext advertising, public relations [public relations], development of marketing concepts; rental of advertising material; arranging advertising contracts, rental of advertising films; rental of advertising space, including in electronic form on the internet; business management; business administration; office functions; systemization and compilation of data in computer databases; updating of data in computer data bases, administrative processing of purchase orders for goods and services (including teleshopping), in particular order taking, order processing, order routing, handling of complaints and supply demands and placement of orders; provision of information (information) and consultancy for consumers in trade and business affairs [consumer advice]; publication of printed matter for advertising purposes.

Class 38: Telecommunications, electronic transmission and routing of voice, images, documents, messages and data, telephone services, including through a hotline or call center; mobile radio telephone services, email services, fax services, services of press agencies, providing access to data bases on computer networks; leasing access time to computer databases, electronic display, broadcast and transmission of film, television, radio, videotext, teletext programs or transmissions; providing access to information and information services for retrieval from the Internet and from other data networks, providing access to information on the Internet about computer games, video games, and information about so related products; telecommunications by means of platforms and portals on the Internet, in particular by means of an on line information center for customer service related to publishing products, advice and Information about telecommunications; providing access to a global computer network; conference call services, rental of telecommunication equipment; providing telecommunications channels for teleshopping services and electronic marketplaces; electronic exchange of messages via chat lines, chat roams and Internet forums; forwarding of messages of all kinds to Internet addresses (Web messaging ); procuring access to data bases.

Class 41: Entertainment, in particular radio and television entertainment, and entertainment on the internet, advice and information an entertainment, even on the internet, conducting games on the internet, film production, video production, production of radio, television and radio broadcasts; create texts (except for advertising purposes), in particular for video and teletext programs; movie rental [movie rental]; publication of printed matter other than for advertising purposes), in particular of magazines, newspapers, books; education; training; sports and cultural activities.

Class 42: Technical advice; server administration, electronic data storage and electronic data security, even In computer databases; design and development of programs for data processing, design and creating home pages and Internet pages; rental and maintenance of memory space far websites, for others (hosting); investigations and research in data bases and on the Internet for computer technology and scientific research, advice and information about telecommunications technology; providing or rental of electronic memory space (webspace) on the Internet, rental of computer software.

The opposition is directed against the following remaining goods and services:

Class 9: Fire-extinguishing apparatus; coin change dispensers and mechanisms for coin-operated apparatus; coin-operated mechanisms for television sets; optical fibre sensors; electronic sensors; synchro sensors; scientific, surveying, weighing, measuring, checking apparatus and instruments; apparatus and instruments for switching, transforming, regulating or controlling electricity.

Class 42: Inspection of motor vehicles [for roadworthiness]; providing of meteorological information via mobile telephone; cloud seeding; quality control; industrial design.

In order to determine the mark’s level of reputation, 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.

The opponent, on 29/06/2020, submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 Enclosure 1: Excerpts from the website www.bauermedia.com, where it is stated that the Bauer Group (which the opponent claims to be a part of) publishes magazines, makes radio programmes and designs digital formats in 17 countries on four continents. The printing date is 10/08/2019. The earlier mark is not mentioned, nor any variation of it.

 Enclosure 2: Excerpts from the website www.ivw.de in German where the sale numbers of the magazine ‘TV Movie’ in the years 2010-2019 are given. The earlier mark is not mentioned, nor any variation of it.

 Enclosure 3: An excerpt from the website www.dwdl.de (one page), dated 14/02/2014, in German, which mentions that ‘MovieStar’ is a trade mark of ‘TV movie’ (according to the opponent ‘"The "MovieStar", the hallmark of Bauer's TV magazine shall be even further in the focus of all communication measures’). Only the word mark ‘MovieStar’ is mentioned (the earlier mark is not shown in a version as registered).

 Enclosure 4: An excerpt from the German Wikipedia about the ‘TV Movie’ magazine. According to the opponent ‘Wikipedia names the 5-point star "MovieStar" as a known quality reference of the magazine "TV Movie"’. The print date is 10/08/2019. Only the word mark ‘MovieStar’ is mentioned (the earlier mark is not shown in a version as registered).

 Enclosure 5: An excerpt from the website www.baueradvertising.com with information about the magazine ‘TV movie’ and a comment that ‘TVMovie.de with the well-known "MovieStar" completes the competence of the print brand’. The document is undated. Only the word mark ‘MovieStar’ is mentioned (the earlier mark is not shown in a version as registered).

As mentioned above, in order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (14/09/1999, C‑375/97, Chevy, EU:C: 1999:408, § 22-23; 25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 34).

In assessing recognition, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

It must be noted that when assessing the evidence, the Opposition Division makes a distinction between documents and statements coming from the sphere of the interested parties themselves and statements drawn up by an independent source, following the established case-law. Statements from the parties (or from entities in the same commercial group) are not in themselves sufficient to prove reputation. They need to be corroborated by additional evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

The evidence submitted in this case is scarce and mainly consists of website extracts coming from the opponent’s sphere. The Wikipedia printout (Enclosure 4) is also not a fully reliable source since its information can be amended by any of Wikipedia’s users. Nevertheless, even if the Opposition Division were to find all the submitted information credible, the evidence as a whole would still not be enough to find the earlier mark reputed.

The evidence shows at most that the Bauer Group has been successfully operating in the market, including as the publisher of the ‘TV movie’ magazine. However, it is not the recognition of the publisher and all its different products (sold under different trade marks) that is the subject matter of these proceedings. The Opposition Division focuses solely on the recognition of the earlier mark amongst the relevant public. From the evidence submitted it is not even clear if the earlier mark in its registered form is used at all on the market. None of the evidence depicts the mark as registered. It is also unclear what goods or services the sign is supposed to identify.

Therefore, it must be concluded that the evidence as a whole provides no information on the recognition of it by the relevant public. Under these circumstances, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark enjoys a reputation in the relevant territory.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence that could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested 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

Helen Louise MOSBACK

Michal KRUK

Saida CRABBE

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.