OPPOSITION No B 2 745 092

OPPOSITION DIVISION

OPPOSITION No B 2 745 092

Universitat Internacional Valenciana-Valencian International University, S.L., C/ Gorgos, 5-7, 46021, Valencia, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014, Madrid, Spain (professional representative)

a g a i n s t

PCCW OTT (Hong Kong) Limited, 41st Floor, PCCW Tower, Taikoo Place, 979 King's Road, Quarry Bay, Hong Kong Special Administrative Region of the People's Republic of China (applicant) represented by Bomhard IP S.L., C/Bilbao 1, 5º, 03001 Alicante, Spain (professional representative).

On 23/08/2018, the Opposition Division takes the following

DECISION:

Opposition B 2 745 092 is partially upheld, namely for the following contested goods and services:

Class 9: CD-ROM discs featuring music, stories, games and activities, computer game programs; CD-ROMs featuring music and films for children; CD-ROMs featuring music and motion picture sound tracks; CDs and DVDs featuring animation, music, and entertainment programs for children; CDs and DVDs featuring sound and video in the fields of music; CDs and DVDs featuring sound and video in the fields of music, live action programs, motion pictures and animated cartoons; DVD programs featuring music and motion picture sound tracks; DVD-RAMs (Random Access Memories) for use in the field of music; downloadable music files; MP3 players (portable digital music players); apparatus for singing with pre-recorded background music and with lyrics shown on a screen; application software installed in personal computers to transfer music data from personal computers to HDD (Hard Disc Drive) audio players; audio and video apparatus with sing along devices with pre-recorded background music and with lyric shown on a screen; audio and video recordings featuring music and/or animation; audio and video tapes featuring music; audio tapes featuring comedy, drama, action, adventure, animation and music information; cases adapted for portable digital music players; compact discs (of music to help babies sleep); compact discs and pre-recorded audio discs featuring music; compact discs containing music, graphics or computer programs; compact discs recorded with music; computer hardware used for computer music reproduction; computer music software for communication devices; computer search engine software in the field of music and entertainment; computer software and programs used for computer music reproduction; digital music (downloadable from the Internet); digital music recorders and players; downloadable audio recordings in the field of computer and video gaming, music and gaming culture provided over the internet and wireless telecommunications networks; downloadable audio recordings, video recordings, music, sounds, images, text, publications, signals, software, information, data and code provided via telecommunications networks, by online delivery and by way of the Internet and the world wide web; media for recording, carrying, storing, processing, manipulating, transmitting, broadcasting, retrieving and reproducing music, sounds, images, text, and information; music recordings; pre-recorded compact discs featuring music; pre-recorded optical discs featuring music; recorded music discs; sound recorded compact discs featuring music; voice mail system; telephone dialling apparatus by vocal synthesizer; answering machine; telephone answering apparatus; automatic answering apparatus for communications apparatus; computer programs; computer software supplied on the Internet; on-line electronic publications (downloadable from the Internet or a computer network or a computer database); computers, computer hardware and software, computer peripherals; computer firmware; computer software development tools for social networking and social networking applications; scientific, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) and teaching apparatus and instruments; apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images, and/or sound; satellites; satellite dishes; satellite apparatus; portable apparatus for receiving and sending satellite transmissions; satellite broadcasting instruments; satellite earth stations; satellite receivers; satellite television receiving apparatus; satellite communications equipment; satellite transceivers; target surveillance apparatus; satellite television transmission uplink scrambling apparatus; transmitting apparatus for satellite broadcast; receiving antennas for satellite broadcast; satellite boxes; satellite navigational apparatus; intercommunication satellites electronic television satellite apparatus; audiovisual apparatus for use in satellite; broadcasting satellite earth stations; digital point of sale material and electronic signage; satellite television signal scramblers; video conferencing apparatus; telephones, pagers, mobile phones, facsimile machines; apparatus and instruments for displaying and/or printing out data, information, pictures and/or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; video tapes, audio cassettes, compact discs, floppy discs, CD ROMS and DVD ROMS; data processing equipment; computer software for browsing and/or searching of data, or enabling browsing and/or searching on a computer network or the Internet; cards, wires, discs and semiconductor devices carrying computer programs; telecommunications apparatus, instruments, networks and circuitry; cables, cable installations, optical fibres, optical communication apparatus and circuitry, all for telecommunication purposes; electronic and computer apparatus and instruments for debiting and/or crediting financial accounts and/or for paying for goods or services; machine-readable debit and/or credit and/or charge cards; electronic and computer apparatus, instruments and software for communicating with computer networks and the world-wide web; computer software for connecting computer network users to design pages and sites on the world wide web; computer hardware and software for database management; computer hardware and software for decompressing digital media; television, radio, video and audio apparatus, equipment and devices; digital music (downloadable) provided from the Internet and computer networks; MP3 (moving picture experts group-1 audio layer 3) players; downloadable pictures, motion pictures, movies, music and game programmes; computer software for event scheduling and for managing, viewing and editing address books and personal and professional contact information; apparatus for coding and decoding signals; apparatus for use in broadcasting, transmission, receiving, processing, reproducing, encoding and decoding of digital signals; electronic circuits and components all for processing, coding and decoding electronic radio frequency and optical signals; speech processors, amplifiers, receivers and transmitters; alarm systems; security cameras; mobile radio and television broadcasting units; cameras; video cameras; headphones; ear pieces; speakers; GPS (Global Positioning System) apparatus and equipment; computer, electronic and video games programmes and electronic equipment; liquid crystal displays for telecommunications and electronic equipment; set top box; decoders; remote control; mouse pads; integrated circuits; data storage programs; servers; web-based online systems for booking satellite capacity and for the automated remote-control of satellite transmission equipment; pedometer; dongles; cloud computing operating system; data center storage devices; cloud computer networks and applications; computer software platforms for cloud computing networks and applications; computer software to enable users to program, view and distribute audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication networks; computer software for use with satellite and/or GPS (Global Positioning System) navigation systems for navigation, route and trip planning, and electronic mapping; computer software used in mobile phones that allows users to play and download electronic games, listen to and download ring tones and music, and view and download data, software, screen savers and wallpapers; TV encoders; apparatus for image processing; apparatus for receiving television signals; apparatus or devices for communal aerial broadcast distribution; apparatus or devices for satellite antenna televisions; apparatus or instruments for closed circuit television systems; broadcasting apparatus and instruments; broadcasting satellite tuners; computer software for satellite television programming; multimedia players; wireless televisions; downloadable software to be distributed online that allows subscribers to utilize VOIP communication, virtual community and social networking services; and parts and fittings for all the aforesaid goods; all included in Class 9.

Class 35: Corporate business management services; corporate business management services relating to accommodation strategy, space management, relocation management, lease management, occupancy cost management for offices, retail shops, residential and industrial premises; corporate management consultancy services; business and hotel management and administration; marketing and promotion services; publication of publicity materials; marketing of vacant premises; advertising and promotion services and information services relating thereto; business information services; dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; rental of advertising space; computer data processing; retrieval of data, documents, text, video and files; retrieval of technical information; receipt, storage and provision of computerized business information and data; sales, business, advertising and promotional information services; organization, operation and supervision of customer loyalty, reward and incentive schemes; arranging and management of commercial operations for building customer loyalty, reward and incentive in particular with the provision of customer loyalty cards; Issuance of loyalty, reward and incentive cards; promotional services in the nature of organization, operation, management and supervision of loyalty, reward and incentive schemes; promotion in connection with reward and/or customer loyalty and incentive schemes; promotional services in the nature of management and administration of customer loyalty and incentive programs; promotional services in the nature of organization, operation, management and supervision of sales promotional incentive, reward and loyalty schemes; promotional information and advisory services provided to members and to subscribers of incentive, reward and loyalty schemes and customer advisory services relating to the provision of information pertaining to account balances and transaction details thereof; provision of customer loyalty, incentive and reward programs; management, supervision and promotional services relating to customer loyalty, incentive and reward programs; promoting the sale or provision of the goods or services of third parties through customer loyalty, incentive and reward programs; tracking, compilation and management of business information relating to customer loyalty, incentive and reward programs. telephone answering (for unavailable subscribers); telephone answering [for others]; auctioneering provided on the Internet; personnel management; provision of sales, business, advertising and promotional information through a global computer network; presentation of goods on communication media for retail purposes; retail and wholesale of telephones, electronic and telecommunications goods, computer hardware and computer software, batteries, battery chargers, apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images and/or sound; retail and wholesale of precious metals, jewellery, precious stones, printed matter, stationery and magnetic and non magnetically encoded cards, furniture, picture frames, household and kitchen utensils, textiles, clothing, footwear, headgear, cars, carpets, rugs, games and electronic toys; retail and wholesale of paints, varnishes and lacquers, personal hygiene products, soaps, perfumery, cosmetics, hair and body lotions, essential oils, cleaning and bleaching preparations, candles, pharmaceutical and sanitary preparations; retail and wholesale of ironmongery and small items of metal hardware, cutlery, razors and hand tools, computers, calculating machines, electrical, photographic, cinematographic and optical apparatus and instruments, spectacles and sun glasses, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, silverware, horological and chronometric instruments, musical instruments; retail and wholesale of magazine, cards, paper and cardboard, stationery, printed matter, picture, typewriters and office requisites, leather and imitations of leather, handbags, purses, wallets, leather holders, bags, luggage, umbrellas, mirrors, coat hangers, place mats, dressmaker's articles, bed and table covers, playthings and sporting articles; retail and wholesale of foodstuffs and beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, flour, bread and cakes, condiments, fresh fruit and vegetables, beer, mineral water, fruit juices and other non- alcoholic drinks, alcoholic beverages, floral products, tobacco, smokers' articles and matches; retailing of foods and household utensils; direct mail advertising; hotel management services [for others]; ordering services [for others]; provision of business information via the Internet; secretarial services; providing statistical information; organisation of exhibitions for commercial or advertising purposes; business services relating to compilation and rental of mailing lists; leasing of electronic office equipment; business investigation; business administration services for the processing of sales made on the Internet; sales promotion (for others), procurement services for others (purchasing goods and services for other businesses); sales promotion by means of issuance and adjustment of trading stamps; referral services and personal placement; import-export clearance agencies (import-export agency services); agency for newspapers subscriptions; document reproduction; operation of electronic calculators, typewriters, telex machines, and related office machines (office function); transcription (including stencil-paper writing); provision of business information by means of reception, information and guidance for building visitors; rental and leasing of typewriters, copy machines and word processors; employment information; business management of sporting facilities (for others); customer relationship management; business management services relating to electronic commerce; accounting; registration services for credit cards, charge cards, cash cards, cheque guarantee cards, debit cards, payment cards, financial cards and purchase cards; advertising and promotion services in the field of entertainment, music, motion pictures, television, cable television, satellite television, radio and on-line broadcasting; business advisory services relating to intellectual property; film advertising; information services relating to opinion polls; layout services for advertising purposes; copy writing services; consultancy, information, management and advisory services relating to all the aforesaid services; all included in Class 35.

Class 38: Telecommunication services; provision of telecommunication access and links to computer database and to the Internet; electronic communication services; interactive telecommunications services; telecommunication of information (web pages), computer programs and data; providing telecommunications connections to the Internet or data bases; telecommunication gateway services; computer network communication services; provision of telecommunication access to world-wide web facilities and structures; communication network consultancy; communication by computer terminals; communication by fibre optic networks; computer aided transmission of messages and images; facsimile transmission; message sending; paging services; rental of modems; data communication services by electronic means; telephone services; mobile phone services; telegraph services, telex services; telegraphic-wire services; wire services; satellite communication services; electronic mail service; rental of telecommunication equipment; electronic message sending, receiving and forwarding services; collection, transmission and delivery of data by electronic means; collection, transmission and delivery of mail messages, still picture and/or moving picture information such as characters, messages, music and images, telegrams, information and data by mechanical, electronic, telephone, telex, cable, computer and satellite means; transmission, broadcast and reception of audio, video, still and moving images and data whether in compressed or uncompressed form and whether in real or delayed time; electronic messaging, conferencing and order-transmission services; communication services for video conferencing purposes; satellite video conferencing services; video conferencing services; radio and television communication services; communication services between computers; communication by electronic bulletin board that enables users to perform a real-time interactive talk between a computer terminal and an electronic bulletin board containing still picture and moving picture information and voice information such as characters; providing electronic bulletin boards and message boards for transmission of messages; provision of discussion forums; provision of on-line chat rooms; provision of telecommunication access to signal coding and decoding apparatus; television broadcasting services; broadcasting and transmission of radio and television programmes; cable television broadcasting; music broadcasting; transmission of music, films, interactive programmes, videos, electronic computer games; preparation of reports in relation to the foregoing services; provision of telecommunication facilities for interactive discussion and conversation; telecommunication services provided by means of pre-paid telephone cards; telephone services relating to credit card authorization; providing access to digital music web sites on the Internet; providing telecommunication access to MP3 (Moving Picture Experts Group-1 audio layer 3) web sites on the Internet; delivery of digital music by telecommunications; computerized consultation of telephone directories; transmission of information relating to on-line shopping and general retail services; video-on-demand transmission services; providing voice over Internet protocol (VOIP) peer-to-peer communications; providing a high speed access to area networks and a global computer information network; teletext services; news agency information and news agency services; transmission of news; supply of satellite radio and television broadcasting facilities; operation of transmit and/or receive satellite earth stations (whether fixed or transportable); dissemination of television programmes relayed by satellites, the Internet or by other electronic means; audio and video content streaming services on Internet or via a global computer network; transmission of downloadable audio-visual content in the nature of full-length, partial-length, and clips from motion pictures, television programming, videos, music videos, and music; transmission of video and interactive games; podcasting and webcasting services; provision of online forums, chat rooms over the internet; web messaging services; video-on-demand transmission services; leasing access time to a computer database; providing access to computer database on the global computer network for searching and retrieving information, data, web sites and resources available on computer networks; providing user access to a computer database containing electronic publications and data via computer networks for processing and/or displaying purposes; providing user access to remote computers containing electronic publications, bulletin boards, database and information accessible via computer; operation of chat rooms (chat room services); provision of connectivity services and access to electronic communications networks for transmission or reception of computer software and application software; consultancy in the field of data processing equipment, apparatus for recording, transmission or reproduction of sound or images, all for the transmission, distribution and broadcasting of information, data, graphics, sound, music, videos, animation and text, via satellite systems or landline computer networks, computer hardware, computer software, information technology, telecommunications apparatus, electronic apparatus and instruments and the Internet; broadcasting music, concerts, and radio programs, via a global computer network; broadcasting of music programmes; broadcasting prerecorded videos featuring music and entertainment, television programmes, motion pictures, news, sports, games, cultural events, and entertainment-related programs via a global computer network; delivery of music, sounds, images, text signals and software by on-line means and by means of the Internet and world-wide web; electronic, electric, and digital transmission of voice, data, pictures, music, and video via wireless networks; music broadcasting; providing telecommunication access for users downloading (or transmitting) music data by personal computers or cellular phones; providing telecommunication access to digital music web sites on a global computer network; providing temporary access to a computer database relating to music and sound; providing transmission services relating to video games, music and images via the Internet; transmission of data, messages, video, sound, music, electronic publication and information by computer; transmission of digital music by electronic means; transmission of music and video by electronic communication means; transmission of telephone ring signals, music, images and films through telecommunication network; satellite broadcasting; wireless television broadcasting; consultancy, information and advisory services in relation to the aforesaid services; all included in Class 38.

Class 41: Publication of texts, books and journals (others than publicity texts); providing on-line journals, namely, blogs, featuring user-defined content; publication of diagrams, images and photographs; education, training and instruction services relating to telecommunications, computers, computer programs, web site design, e-commerce, business management and advertising, health care, sporting and cultural events; provision of education, recreation, instruction, tuition and training both interactive and non-interactive; design of educational courses, examinations and qualifications; consultancy services relating to the designing of training courses; entertainment provided via electronic and digital interactive media; electronic games services provided by means of the Internet; provision of information relating to education, training, entertainment, recreation, sporting, social and cultural activities; providing on-line electronic publications (not downloadable); arranging, organizing, hosting and conducting singing competitions; arranging, organizing, hosting and conducting concerts; arranging, organizing, hosting and conducting events and competitions for education or entertainment purposes; entertainment ticket agency services; information relating to entertainment or education, provided online from a computer database or the Internet; providing digital music (not downloadable) from the Internet; providing digital music (not downloadable) from MP3 (Moving Picture Experts Group-1 audio layer 3) Internet web sites; entertainment and education services relating to planning, production and distribution of sound, images, digital music, movies, live or recorded audio, visual or audiovisual material for broadcasting on terrestrial cable, satellite channels, the Internet, wireless or wire-link systems and other means of communications; music entertainment services; rental of sound recordings; preparation of entertainment programmes for broadcasting; preparation of documentary programmes for broadcasting; preparation of news programmes for broadcasting; provision of news; reporters' services; information relating to sporting or cultural events, current affairs and breaking news provided by satellite television transmission, the Internet or by other electronic means; television, radio and film production; satellite television performances; satellite television series; satellite television shows; provision of information, data, graphics, sound, music, videos, animation and text for entertainment purpose; game services; provision of club recreation, sporting and gymnasium facilities; health clubs for physical exercise; band performances; club entertainment, discotheque, fashion show (entertainment) and night club services; club services relating to entertainment, education and cultural services; organizing of sporting and cultural services; arranging, conducting and provision of conferences, conventions, congresses, seminars and training workshops; organizing and conducting exhibitions, fashion shows (entertainment), educational shows and cultural shows and performances; art exhibition and gallery services; gallery services relating to fine arts leasing; education services; training services in relation to occupation health and safety, environmental conservation; provision of cigar classes, wine tasting classes; entertainment services; providing education information about research materials and agency thereof; arranging, organizing, planning and management of seminars; animal training; exhibiting plants; exhibition of gardens; exhibition of caves; exhibiting animals; direction in producing broadcasting programs; instructional services relating to operation of machines and equipment, including audiovisual equipment, which is used for the production of broadcasting programs; providing audio and visual studios; providing sports facilities; providing facilities for movies, shows, plays, music or educational training; entertainment booking agencies; rental and leasing of movie projectors and accessories; rental and leasing of motion pictures (cine-films); rental and leasing of toys; rental and leasing of musical instruments; rental and leasing of skiing equipment; rental and leasing of skin diving equipment; rental and leasing of television sets; lending libraries; archive library services; providing video games, computer games, sound or images, or movies through telecommunication or computer networks; providing online computer games and contests; rental and leasing of radio sets; rental of records and pre-recorded magnetic tapes; rental of pre-recorded video tapes; rental and leasing of photographic negative; rental and leasing of photographic positives; rental and leasing of machines and instruments for use in amusement parks and pleasure grounds; rental and leasing of game machines; lending of game equipment; lending of arcade game equipment; lending of pictures; photography; online video entertainment services; providing audio-visual content and online information in the fields of entertainment, education, infotainment, news, sporting, cultural and training activities; providing online interactive resource (entertainment services) and programming guides on the subjects of motion pictures, television programming, videos, music videos, and music; rental and leasing of cameras; rental and leasing of fishing machines and implements; music composition services; production of music; advisory services relating to music; arranging and conducting award presentation ceremony for education, music, film, broadcasting and television series program; arranging and conducting music competitions; arranging for ticket reservations for movies, music and artistic performances, provided via a global computer network; arranging of live music shows; arranging of music shows; booking of seats for music concerts; composition of music; distribution [other than transportation] of motion pictures, television programs and music recordings; music club services; music concert services; music contests (planning, conducting and organization of); music hall services; music library services; music performances; music production services; music publishing services; music recording services; music teaching; online information services in the fields of music and entertainment; organizing and arranging of music competitions; organizing festivals featuring music and artistic performances; organizing music camps for children; performance of music; planning and conducting contests relating to shows, plays, or music; production and distribution [other than transportation] of music television videos; production and providing of facilities for singing with pre-recorded background music and with lyrics shown on monitors; providing information in relation to singing with pre-recorded background music and visual background with lyric shown on a screen using communication by computer terminals; production and publication of records, audiotapes and tapes for singing with pre-recorded background music and with lyric shown on its screen; providing facilities for singing with pre-recorded background music and with lyric shown on screen; providing pre-recorded background music with or without visual background and/or lyric shown on a screen for singing using communication by computer terminals; production of music programmes via computer networks; production of music video discs; production of music video programs for broadcast on computer networks; providing an online newsletter about computer and video gaming, music and gaming culture; providing digital music [non-downloadable] from MP3 (moving picture experts group-1 audio layer 3) Internet web sites; providing digital music [non-downloadable] from the Internet; providing facilities for music; providing information relating to music via Internet; providing on-line non-downloadable music; publication of music books; publication of music compositions; arranging beauty contests; fan club services [entertainment]; providing inflight entertainment; laser show services; live entertainment services; live stage shows; microfilming; modelling for artists; on-line video-playing services relating to entertainment; organisation of entertainment competitions; organisation of film festivals; consultancy, information and advisory services relating to the aforesaid services; all included in class 41; none of the above being or being related to education.

Class 42: Computer service relating to creating indexes of information, sites and resources on computer networks; computer programming; computer integration services; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; creating and maintaining web sites; hosting web sites of others; installation, maintenance and repair of computer software and computer programs, updating of computer software, computer services relating to recovery of computer data, computer software design; design and engineering design services relating to telecommunications systems and apparatus; testing of computing, telecommunication, electrical and electronic apparatus and instruments; computer systems analysis; computer database development; rental and leasing of computers, computer apparatus, computer software and computer data; computer services relating to home shopping services provided from the Internet; computer and electronic signal coding and decoding; design and development of computer hardware; design of computer databases and electronic record formats; computer and software support and maintenance services; design of computer software and hardware for use in telecommunications and voice over Internet protocol (VOIP) applications, data transmission and instant messaging services; design and development of computer systems, software and network; design of network and communications apparatus; network systems analysis and design; providing temporary use of online, non-downloadable computer software that allows subscribers to utilize VOIP communication, virtual community and social networking services; design of computer software and hardware for use in web-based online systems for booking satellite capacity and for the automated remote-control of satellite transmission equipment; technical advisory and consulting services; monitoring of apparatus for recording, transmission or reproduction of sound or images for the transmission, distribution and broadcasting of information, data, graphics, sound, music, videos, animation and text, via satellite systems or computer networks; monitoring of data processing equipment, computer hardware, telecommunication apparatus, digital point of sale material and electronic signage; cloud computing consultation services; meteorological information; architecture; surveying; geological survey, research and prospecting; testing, screening and research of pharmaceutical, cosmetics and food; research for building construction and city planning; testing and research for prevention of pollution; electrical testing and research; civil engineering testing and research; testing, inspection and research for agriculture, livestock breeding and marine product industries; rental and leasing of measuring apparatus and instruments; rental and leasing of fixing equipment; rental and leasing of ultrasonic diagnostic equipment (other than for medical purposes); consultancy and advisory services relating to energy conservation; energy auditing; environmental design services; environmental conservation and management; testing and evaluation of occupational health and safety; architectural and design services; interior designs of buildings, offices and apartments; application service provider services providing communication services for uploading, posting, displaying, sharing or otherwise providing communication means for exchange of electronic media over the Internet; application software services; creation of on-line social network sites; hosting social network sites; cloud computing services, namely providing computer services to enable downloading and uploading data; cloud computing services, namely providing computer services for storing data and computer software; brand design; design of animation and comics; design of digital art images for commercial use; digitalizing video and/or audio media into electronic format; image digitization; operating search engines; electronic storage of data, documents, text, video and files; electronic storage of technical information; leasing of data processing and storage apparatus; rental of entertainment software; consultancy, information and advisory services relating to the aforesaid services; all included in Class 42.

2. European Union trade mark application No 15 067 507 is rejected for all the above goods and services. It may proceed for the remaining services (part of the services in classes 35, 41 and 45).

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 067 507 , (namely against the goods and services in Classes 9, 35, 38, 41, 42 and 45). The opposition is based on Spanish trade mark registration No 2 941 771 VIU. The opponent invoked Article 8(1) (b) EUTMR.

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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 applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, Spanish trade mark No 2 941 771 VIU, which was registered on 24/11/2010. The date of priority of the contested trade mark is 08/09/2015. The earlier trade mark was, therefore, registered less than five years prior to the relevant date, the opponent (being still within the grace period), is not required to prove genuine use of its mark and the parties arguments in relation to use must, therefore, be disregarded.

As the request is inadmissible, the marks fall to be examined pursuant to 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 goods and services

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

Class 9: electronic publications (downloadable), scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), 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 discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 16: teaching material (except apparatus); paper and articles made of paper not included in other classes; cardboard and articles made of cardboard not included in other classes; printed matter; printed publications (newspapers, magazines or books); bookbinding material; photographs, stationery; adhesives for stationery or household purposes; artists' materials, paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); printers' type and printing blocks; plastic materials for packaging (not included in other classes)

Class 35: advertising services and assistance services with regard to the operation or management of commercial or industrial companies, business administration, office functions, import-export agencies. sales services whether retail, wholesale or via global computer networks; commercial exclusivity and representation services, franchise-issuing services relating to assistance in the running and/or management of a commercial business.

Class 38: telecommunications; communications via computer terminals and digital communications via global computer networks; broadcasting of radio and television programs.

Class 39: transport, packaging, storage and distribution of goods; travel arrangement; and, in particular, distribution of all types of teaching and training material.

Class 41: education, providing of training and entertainment; sporting and cultural activities.

Class 42: scientific and technological services and research and design relating thereto; industrial or scientific analysis and research services for medical purposes; design and development of computer hardware and software; services provided by people, individually or collectively, relaying to the theoretical or practical aspects of complex areas of activity; said services are provided by representatives of professions such as: chemisis, physicisis, engineers, computer experts; services provided by engineers dealing with appraisals, valuations, research and reports in the scientific and technological fields.

The contested goods and services are, after several limitations made by the applicant in the specification, the following:

Class 9: CD-ROM discs featuring music, stories, games and activities, computer game programs; CD-ROMs featuring music and films for children; CD-ROMs featuring music and motion picture sound tracks; CDs and DVDs featuring animation, music, and entertainment programs for children; CDs and DVDs featuring sound and video in the fields of music; CDs and DVDs featuring sound and video in the fields of music, live action programs, motion pictures and animated cartoons; DVD programs featuring music and motion picture sound tracks; DVD-RAMs (Random Access Memories) for use in the field of music; downloadable music files; MP3 players (portable digital music players); apparatus for singing with pre-recorded background music and with lyrics shown on a screen; application software installed in personal computers to transfer music data from personal computers to HDD (Hard Disc Drive) audio players; audio and video apparatus with sing along devices with pre-recorded background music and with lyric shown on a screen; audio and video recordings featuring music and/or animation; audio and video tapes featuring music; audio tapes featuring comedy, drama, action, adventure, animation and music information; cases adapted for portable digital music players; compact discs (of music to help babies sleep); compact discs and pre-recorded audio discs featuring music; compact discs containing music, graphics or computer programs; compact discs recorded with music; computer hardware used for computer music reproduction; computer music software for communication devices; computer search engine software in the field of music and entertainment; computer software and programs used for computer music reproduction; digital music (downloadable from the Internet); digital music recorders and players; downloadable audio recordings in the field of computer and video gaming, music and gaming culture provided over the internet and wireless telecommunications networks; downloadable audio recordings, video recordings, music, sounds, images, text, publications, signals, software, information, data and code provided via telecommunications networks, by online delivery and by way of the Internet and the world wide web; media for recording, carrying, storing, processing, manipulating, transmitting, broadcasting, retrieving and reproducing music, sounds, images, text, and information; music recordings; pre-recorded compact discs featuring music; pre-recorded optical discs featuring music; recorded music discs; sound recorded compact discs featuring music; voice mail system; telephone dialling apparatus by vocal synthesizer; answering machine; telephone answering apparatus; automatic answering apparatus for communications apparatus; computer programs; computer software supplied on the Internet; on-line electronic publications (downloadable from the Internet or a computer network or a computer database); computers, computer hardware and software, computer peripherals; computer firmware; computer software development tools for social networking and social networking applications; scientific, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) and teaching apparatus and instruments; apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images, and/or sound; satellites; satellite dishes; satellite apparatus; portable apparatus for receiving and sending satellite transmissions; satellite broadcasting instruments; satellite earth stations; satellite receivers; satellite television receiving apparatus; satellite communications equipment; satellite transceivers; target surveillance apparatus; satellite television transmission uplink scrambling apparatus; transmitting apparatus for satellite broadcast; receiving antennas for satellite broadcast; satellite boxes; satellite navigational apparatus; intercommunication satellites electronic television satellite apparatus; audiovisual apparatus for use in satellite; broadcasting satellite earth stations; digital point of sale material and electronic signage; satellite television signal scramblers; video conferencing apparatus; telephones, pagers, mobile phones, facsimile machines; apparatus and instruments for displaying and/or printing out data, information, pictures and/or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; video tapes, audio cassettes, compact discs, floppy discs, CD ROMS and DVD ROMS; data processing equipment; computer software for browsing and/or searching of data, or enabling browsing and/or searching on a computer network or the Internet; cards, wires, discs and semiconductor devices carrying computer programs; telecommunications apparatus, instruments, networks and circuitry; cables, cable installations, optical fibres, optical communication apparatus and circuitry, all for telecommunication purposes; electronic and computer apparatus and instruments for debiting and/or crediting financial accounts and/or for paying for goods or services; machine-readable debit and/or credit and/or charge cards; electronic and computer apparatus, instruments and software for communicating with computer networks and the world-wide web; computer software for connecting computer network users to design pages and sites on the world wide web; computer hardware and software for database management; computer hardware and software for decompressing digital media; television, radio, video and audio apparatus, equipment and devices; digital music (downloadable) provided from the Internet and computer networks; MP3 (moving picture experts group-1 audio layer 3) players; downloadable pictures, motion pictures, movies, music and game programmes; computer software for event scheduling and for managing, viewing and editing address books and personal and professional contact information; apparatus for coding and decoding signals; apparatus for use in broadcasting, transmission, receiving, processing, reproducing, encoding and decoding of digital signals; electronic circuits and components all for processing, coding and decoding electronic radio frequency and optical signals; speech processors, amplifiers, receivers and transmitters; alarm systems; security cameras; mobile radio and television broadcasting units; cameras; video cameras; headphones; ear pieces; speakers; GPS (Global Positioning System) apparatus and equipment; computer, electronic and video games programmes and electronic equipment; liquid crystal displays for telecommunications and electronic equipment; set top box; decoders; remote control; mouse pads; integrated circuits; data storage programs; servers; web-based online systems for booking satellite capacity and for the automated remote-control of satellite transmission equipment; pedometer; dongles; cloud computing operating system; data center storage devices; cloud computer networks and applications; computer software platforms for cloud computing networks and applications; computer software to enable users to program, view and distribute audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication networks; computer software for use with satellite and/or GPS (Global Positioning System) navigation systems for navigation, route and trip planning, and electronic mapping; computer software used in mobile phones that allows users to play and download electronic games, listen to and download ring tones and music, and view and download data, software, screen savers and wallpapers; TV encoders; apparatus for image processing; apparatus for receiving television signals; apparatus or devices for communal aerial broadcast distribution; apparatus or devices for satellite antenna televisions; apparatus or instruments for closed circuit television systems; broadcasting apparatus and instruments; broadcasting satellite tuners; computer software for satellite television programming; multimedia players; wireless televisions; downloadable software to be distributed online that allows subscribers to utilize VOIP communication, virtual community and social networking services; and parts and fittings for all the aforesaid goods; all included in Class 9.

Class 35: Corporate business management services relating to accommodation strategy, space management, relocation management, lease management, occupancy cost management for offices, retail shops, residential and industrial premises; business and hotel management and administration; marketing and promotion services; publication of publicity materials; marketing of vacant premises; advertising and promotion services and information services relating thereto; business information services; dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; rental of advertising space; retrieval of data, documents, text, video and files; retrieval of technical information; receipt, storage and provision of computerized business information and data; sales, business, advertising and promotional information services; organization, operation and supervision of customer loyalty, reward and incentive schemes; Issuance of loyalty, reward and incentive cards; promotional services in the nature of organization, operation, management and supervision of loyalty, reward and incentive schemes; promotion in connection with reward and/or customer loyalty and incentive schemes; promotional information and advisory services provided to members and to subscribers of incentive, reward and loyalty schemes and customer advisory services relating to the provision of information pertaining to account balances and transaction details thereof; provision of customer loyalty, incentive and reward programs; management, supervision and promotional services relating to customer loyalty, incentive and reward programs; promoting the sale or provision of the goods or services of third parties through customer loyalty, incentive and reward programs; telephone answering (for unavailable subscribers); telephone answering [for others]; auctioneering provided on the Internet; personnel management; retail and wholesale of telephones, electronic and telecommunications goods, computer hardware and computer software, batteries, battery chargers, apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images and/or sound; retail and wholesale of precious metals, jewellery, precious stones, printed matter, stationery and magnetic and non magnetically encoded cards, furniture, picture frames, household and kitchen utensils, cars, carpets, rugs, games and electronic toys; retail and wholesale of paints, varnishes and lacquers, personal hygiene products, soaps, perfumery, cosmetics, hair and body lotions, essential oils, cleaning and bleaching preparations, candles, pharmaceutical and sanitary preparations; retail and wholesale of ironmongery and small items of metal hardware, cutlery, razors and hand tools, computers, calculating machines, electrical, photographic, cinematographic and optical apparatus and instruments, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, silverware, horological and chronometric instruments, musical instruments; retail and wholesale of magazine, cards, paper and cardboard, stationery, printed matter, picture, typewriters and office requisites, leather and imitations of leather, handbags, purses, wallets, leather holders, bags, luggage, umbrellas, mirrors, coat hangers, place mats, dressmaker's articles, bed and table covers, playthings and sporting articles; retail and wholesale of foodstuffs and beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, flour, bread and cakes, condiments, fresh fruit and vegetables, beer, mineral water, fruit juices and other non- alcoholic drinks, alcoholic beverages, floral products, tobacco, smokers' articles and matches; retailing of foods and household utensils; direct mail advertising; hotel management services [for others]; ordering services [for others]; secretarial services; organisation of exhibitions for commercial or advertising purposes; business services relating to compilation and rental of mailing lists; leasing of electronic office equipment; business investigation; sales promotion (for others), procurement services for others (purchasing goods and services for other businesses); sales promotion by means of issuance and adjustment of trading stamps; referral services and personal placement; import-export clearance agencies (import-export agency services); agency for newspapers subscriptions; document reproduction; operation of electronic calculators, typewriters, telex machines, and related office machines (office function); transcription (including stencil-paper writing); provision of business information by means of reception, information and guidance for building visitors; rental and leasing of typewriters, copy machines and word processors; employment information; rental and leasing of vending machines; business management of sporting facilities (for others); accounting; registration services for credit cards, charge cards, cash cards, cheque guarantee cards, debit cards, payment cards, financial cards and purchase cards; advertising and promotion services in the field of entertainment, music, motion pictures, television, cable television, satellite television, radio and on-line broadcasting; business advisory services relating to intellectual property; film advertising; layout services for advertising purposes; copy writing services; consultancy, information, management and advisory services relating to all the aforesaid services; all included in Class 35.

Class 41: Publication of texts, books and journals (others than publicity texts); providing on-line journals, namely, blogs, featuring user-defined content; publication of diagrams, images and photographs; provision of recreation both interactive and non-interactive; entertainment provided via electronic and digital interactive media; electronic games services provided by means of the Internet; provision of information relating to entertainment, recreation, sporting, social and cultural activities; providing on-line electronic publications (not downloadable); arranging, organizing, hosting and conducting singing competitions; arranging, organizing, hosting and conducting concerts; arranging, organizing, hosting and conducting events and competitions for entertainment purposes; entertainment ticket agency services; information relating to entertainment provided online from a computer database or the Internet; providing digital music (not downloadable) from the Internet; providing digital music (not downloadable) from MP3 (Moving Picture Experts Group-1 audio layer 3) Internet web sites; entertainment services relating to planning, production and distribution of sound, images, digital music, movies, live or recorded audio, visual or audiovisual material for broadcasting on terrestrial cable, satellite channels, the Internet, wireless or wire-link systems and other means of communications; music entertainment services; rental of sound recordings; preparation of entertainment programmes for broadcasting; preparation of documentary programmes for broadcasting; preparation of news programmes for broadcasting; provision of news; reporters' services; information relating to sporting or cultural events, current affairs and breaking news provided by satellite television transmission, the Internet or by other electronic means; television, radio and film production; satellite television performances; satellite television series; satellite television shows; provision of information, data, graphics, sound, music, videos, animation and text for entertainment purpose; game services; provision of club recreation, sporting and gymnasium facilities; health clubs for physical exercise; band performances; club entertainment, discotheque, fashion show (entertainment) and night club services; club services relating to entertainment and cultural services; organizing of sporting and cultural services; arranging, conducting and provision of conferences, conventions, congresses, seminars and training workshops; organizing and conducting exhibitions, fashion shows (entertainment) and cultural shows and performances; art exhibition and gallery services; gallery services relating to fine arts leasing; entertainment services; arranging, organizing, planning and management of seminars; exhibiting plants; exhibition of gardens; exhibition of caves; exhibiting animals; direction in producing broadcasting programs; instructional services relating to operation of machines and equipment, including audiovisual equipment, which is used for the production of broadcasting programs; providing audio and visual studios; providing sports facilities; providing facilities for movies, shows, plays or music; entertainment booking agencies; rental and leasing of movie projectors and accessories; rental and leasing of motion pictures (cine-films); rental and leasing of toys; rental and leasing of musical instruments; rental and leasing of skiing equipment; rental and leasing of skin diving equipment; rental and leasing of television sets; lending libraries; archive library services; subtitling services; sign language interpretation services; providing video games, computer games, sound or images, or movies through telecommunication or computer networks; providing online computer games and contests; rental and leasing of radio sets; rental of records and pre-recorded magnetic tapes; rental of pre-recorded video tapes; rental and leasing of photographic negative; rental and leasing of photographic positives; rental and leasing of machines and instruments for use in amusement parks and pleasure grounds; rental and leasing of game machines; lending of game equipment; lending of arcade game equipment; lending of pictures; photography; online video entertainment services; providing audio-visual content and online information in the fields of entertainment, infotainment, news, sporting and cultural activities; providing online interactive resource (entertainment services) and programming guides on the subjects of motion pictures, television programming, videos, music videos, and music; rental and leasing of cameras; rental and leasing of fishing machines and implements; translation; interpretation; music composition services; production of music; advisory services relating to music; arranging and conducting award presentation ceremony for music, film, broadcasting and television series program; arranging and conducting music competitions; arranging for ticket reservations for movies, music and artistic performances, provided via a global computer network; arranging of live music shows; arranging of music shows; booking of seats for music concerts; composition of music; distribution [other than transportation] of motion pictures, television programs and music recordings; music club services; music concert services; music contests (planning, conducting and organization of); music hall services; music library services; music performances; music production services; music publishing services; music recording services; online information services in the fields of music and entertainment; organizing and arranging of music competitions; organizing festivals featuring music and artistic performances; organizing music camps for children; performance of music; planning and conducting contests relating to shows, plays, or music; production and distribution [other than transportation] of music television videos; production and providing of facilities for singing with pre-recorded background music and with lyrics shown on monitors; providing information in relation to singing with pre-recorded background music and visual background with lyric shown on a screen using communication by computer terminals; production and publication of records, audiotapes and tapes for singing with pre-recorded background music and with lyric shown on its screen; providing facilities for singing with pre-recorded background music and with lyric shown on screen; providing pre-recorded background music with or without visual background and/or lyric shown on a screen for singing using communication by computer terminals; production of music programmes via computer networks; production of music video discs; production of music video programs for broadcast on computer networks; providing an online newsletter about computer and video gaming, music and gaming culture; providing digital music [non-downloadable] from MP3 (moving picture experts group-1 audio layer 3) Internet web sites; providing digital music [non-downloadable] from the Internet; providing facilities for music; providing information relating to music via Internet; providing on-line non-downloadable music; publication of music books; publication of music compositions; arranging beauty contests; fan club services [entertainment]; providing inflight entertainment; laser show services; live entertainment services; live stage shows; microfilming; modelling for artists; on-line video-playing services relating to entertainment; organisation of entertainment competitions; organisation of film festivals; consultancy, information and advisory services relating to the aforesaid services; all included in class 41; none of the above being or being related to education.

Class 45: Providing social services for the purpose of social networking, dating and introductions via an Internet website; social dating, introduction and networking services; on-line social networking services; user authentication and verification services for payment transactions; licensing of digital data, still images, moving images, multimedia content, video, movies, pictures, images, photos, games, user-generated content, audio and text; exploitation, licensing, management and of intellectual property rights; software licensing; fashion information; registration of domain names; consultancy, information and advisory services relating to the aforesaid services; all included in Class 45.

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 scientific, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) and teaching apparatus and instruments; mechanisms for coin-operated apparatus; data processing equipment; are identically contained in both lists, albeit with some slightly different wording.

The contested electric apparatus and instruments is a term which lacks sufficient clarity and precision and would not have been accepted in the specification of the contested application unless it is interpreted in the context of the rest of the terms that appear between the semi-colons, i.e. as electric scientific, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) and teaching apparatus and instruments, and in this sense it should also be considered to be included, and therefore identical to the goods of the earlier mark mentioned in the previous paragraph.

The rest of the contested goods in this class, with the exception of the parts and fittings for all the aforesaid goods, are included in, or overlap with, the following broad categories of the opponent’s goods: electronic publications (downloadable) (which includes e.g. the contested digital music (downloadable) provided from the Internet and computer networks), measuring apparatus and instruments (including e.g. the contested pedometer); apparatus for recording, transmission or reproduction of sound or images (including e.g. the contested telecommunications apparatus, instruments, networks and circuitry, or the contested digital music recorders and players); magnetic data carriers (including e.g. the contested machine-readable debit and/or credit and/or charge cards); recording discs (including e.g. all the different types of CDs and DVDs covered by the contested application); and data processing equipment (which includes all the contested hardware and software items, such as e.g. the contested computer hardware and software for database management). They are therefore considered to be identical.

Finally, the parts and fittings for all the aforesaid goods (goods that have been found to be identical to those of the earlier mark) can be considered to be at least similar to the opponent’s goods as they will normally coincide in producer, relevant public and distribution channels.

Contested services in Class 35

The various contested retail and wholesale services (including e.g retail of foods and household utensils) all come within the broad category of the opponent´s sales services whether retail, wholesale or via global computer networks. They are identical.

The contested auctioneering provided on the internet services and the opponent´s retail sales services via global computer networks coincide in their nature. Their purpose, in the broadest sense, may also be the same in that they are for bringing together, for the benefit of others, of a variety of goods, enabling consumers to conveniently view and purchase goods by means of electronic media. To that extent these services are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its services, it cannot be assumed that they coincide in other criteria.

The contested operation of electronic calculators, typewriters, telex machines, and related office machines (office functions) are identically included in both lists, albeit with slightly different wording.

The contested import-export clearance agencies (import-export agency services) are identically included in both lists, albeit with slightly different wording.

Apart from the contested rental and leasing of vending machines, the rest of the contested services in this class are included in, or overlap with, the following broad categories of the opponent’s services: advertising (including e.g marketing and promotion services), assistance services with regard to the operation and management of commercial or industrial companies (including e.g consultancy, information and advisory services in relation to all the services in this class), management of companies (including e.g corporate business management services), business administration (including e.g document reproduction).Therefore, they are identical

The contested rental and leasing of vending machines do not come within the broad headings covered by the opponent´s goods. They are specific rental and leasing services which don´t share providers, or coincide in intended purpose or nature. They are not complementary or in competition with the opponent´s business management, business administration, advertising or office function-type services, or even its retail services. Consumers do not perceive them to have the same commercial origin. They are dissimilar.

Contested services in Class 36

The contested services in this class all come under telecommunications services, including the consultancy, information and advisory services related thereto, and are, therefore, identical to the opponent´s telecommunications services e.g the contested telecommunication gateway services are included in or overlap with the broad subcategory of the opponent´s communications via computer terminals and digital communications via global computer networks, and the contested cable television broadcasting are included in or overlap with the opponent´s broadcasting of radio and television programs subcategory.

Contested services in Class 41

The contested subtitling services; sign language interpretation services; translation; interpretation and information and advisory services relating to the aforesaid are dissimilar to the opponent´s education, providing of training and entertainment; sporting and cultural activities in class 41, and to the rest of the goods and services of the earlier mark. They are specialised services which share no common points according to the applicable criteria.

However, the rest of the contested services in Class 41, as limited, correspond to the broad categories of the opponent´s entertainment (e.g the contested laser show services), sporting (e.g the contested health clubs for physical exercise ), and cultural activities (e.g the contested art exhibition and gallery services), and are, therefore, identical. The related rental services and consultancy, information and advisory services which are at least similar to them as they can coincide in producer, relevant public and distribution channels.

Contested services in Class 42

The contested services in class 42 are all computer-related services including services related to their design or development and other science and technology services in complex fields of activity carried out by professionals such as surveyors or engineers, including research services. They are all included in or overlap with the opponent´s services provided by people, individually or collectively, relaying to the theoretical or practical aspects of complex areas of activity; said services are provided by representatives of professions such as: chemisis, physicisis, engineers, computer experts; services provided by engineers dealing with appraisals, valuations, research and reports in the scientific and technological fields in class 42 and are, therefore, identical apart from the contested rental services in this class and the related consultancy, information and advisory services which are at least similar to them as they can coincide in provider, relevant public and distribution channels.

Contested services in Class 45

The contested licensing of digital data, still images, moving images, multimedia content, video, movies, pictures, images, photos, games, user-generated content, audio and text; exploitation, licensing, management and of intellectual property rights;

software licensing; fashion information; registration of domain names; consultancy, information and advisory services relating to the aforesaid services all included in Class 45 are highly specialised services which are dissimilar to the opponent´s goods and services. They share no common points according to the applicable criteria.

The rest of the contested services in class 45, providing social services for the purpose of social networking, dating and introductions via an Internet website; social dating, introduction and networking services; on-line social networking services; user authentication and verification services for payment transactions are at least similar to the opponent´s telecommunications services in Class 38. They are complementary and share a method of use or access. Their relevant public is likely to see them as being interconnected and, therefore, as sharing commercial origin.

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 and 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, specialised nature, or terms and conditions of the goods and services purchased.

The signs

VIU

Earlier trade mark

Contested sign

The relevant territory is Spain.

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 made up of the word ‘VIU’, which is considered to be of average distinctiveness and has no meaning in respect of the goods and services at issue.

The contested sign also features the verbal element ‘VIU’. It is a figurative mark with a slightly stylised font, which is purely decorative and therefore not particularly distinctive, and an additional figurative element at its fore which (in light of the verbal element) is likely to be perceived as the letter ‘V’ on its side within a circular device. In this regard, it should be noted that, 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).

There are no dominant elements.

Visually, the signs coincide in the verbal element ‘VIU’ and differ in the graphic elements of the contested sign, which have less of an impact, as previously mentioned.

Therefore, the signs are visually highly similar.

Aurally, the signs share the sole pronounceable element, the verbal element ‘VIU’.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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 has no meaning (in and of itself) for any of the goods or 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.

Global assessment, other arguments and conclusion

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

Account is taken of the fact 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), and that 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).

The goods and services are identical, similar to various degrees or dissimilar. The signs are visually highly similar and aurally identical. The earlier mark, which is distinctive, is contained in the contested mark. Such differences as exist between the signs are confined to non‑distinctive or secondary elements and aspects.

Therefore, it is reasonable to find that the relevant public is likely to confuse the marks in relation to the identical or similar goods and services, even those which are similar to a lower degree, or believe that those goods and services come from the same undertaking, or as the case may be, economically-linked undertakings, and that this pertains regardless of the level of attention paid.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public, and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 941 771 VIU.

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 and services cannot be successful.

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

José Antonio GARRIDO OTAOLA

Keeva DOHERTY

Loreto URRACA LUQUE

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.

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