OPPOSITION No B 2 750 852

Bauer Radio Limited, Media House, Peterborough Business Park Lynch Wood, Peterborough PE2 6EA, United Kingdom (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray's Inn Road, London WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

Juan Huang, 2404, Unit 1, Bldg. 5, Shancuiju, Ronghua Rd., Longgang District, Shenzhen, Guangdong Province, People’s Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo 65 - Local 1 "Llopis & Asociados", E-03012 Alicante, Spain (professional representative).

On 03/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 750 852 is partially upheld, namely for the following contested goods:

Class 9: Tablet computers; Smartphones; Television apparatus; Camcorders; Headphones; DVD players; Baby monitors; Battery chargers; Projection apparatus; Cameras (Cinematographic); Eyeglasses; Cell phone straps; Slide projectors; Chargers for electric batteries; Contact lenses; Data processing apparatus.

2. European Union trade mark application No 15 251 011 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 251 011 , namely against all the goods in Class 9.

The opposition is based on, inter alia, the following three trade mark registrations:

• European Union trade mark registration No 780 353 for the word mark ‘MAGIC’;

• European Union trade mark registration No 4 471 876 for the figurative mark ;

• United Kingdom trade mark registration No 3 026 304 for the word mark ‘MAGIC/magic’.

The opponent invoked Articles 8(1)(b) and 8(5) EUTMR regarding these earlier rights.

The opposition is also based on the non-registered trade mark ‘MAGIC’ (wordmark) in connection with which the opponent invoked Article 8(4) EUTMR.

PRELIMINARY REMARK. SUBSTANTIATION OF EARLIER UK TRADE MARK No. 3 026 304 ‘MAGIC/magic’ (WORDMARK).

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier UK trade mark No. 3 026 304 ‘MAGIC/magic’ (wordmark).

On 17/08/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. After an extension of time requested by the opponent, this time limit expired on 22/02/2017.

Although on 21/02/2017 the opponent filed evidence regarding some of its earlier trade mark registrations (contained in ANNEX 1), the opponent did not submit any evidence concerning the substantiation of this particular earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded under Article 8(1)(b) and 8(5), as far as it is based on this earlier mark.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 780 353 and No 4 471 876.

1. The goods and services

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

European Union trade mark registration No 780 353:

Class 35: Advertising, marketing and promotional services.

Class 38: Telecommunication services; communication services; broadcasting services; television programming; radio broadcasting services; radio programming, broadcasting and production services; wireless transmission and broadcasting of television programmes; cable, satellite and direct to home transmission and distribution of television programmes; cable television, video, subscription television and radio broadcasting and transmission; satellite transmission; teletext services; pay per view television transmission services; video on demand transmissions; rental, leasing or hire of apparatus, installations or components for use in the provision of the aforementioned services.

Class 41: Radio entertainment services; production of radio programmes, entertainment, education and instruction by or relating to television or radio; production, presentation or rental of television or radio programmes and entertainment services; interactive information provided on-line from computer data bases or the Internet; information provided on-line from computer data bases or the Internet; provision of information for accessing via communication and computer networks; arranging, organising, presentation and provision of entertainment services; arranging, organising, presentation and provision of concerts, live entertainment, musical performances; organisation of competitions and awards; arranging and conducting competitions; arranging and conducting award ceremonies; presentation of awards for achievement; education and training services; arranging and conducting courses, conferences, exhibitions, events and seminars; entertainment services; organising, conducting, production of shows, events, displays, parties; organisation of events for cultural, entertainment and sporting purposes; organisation of competitions; organisation of sporting competitions and sports events; publication of printed matter, all the above-mentioned services related to activities of a radio or television station.

European Union trade mark registration No 4 471 876:

Class 9: Publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); electronic publications, electronic magazines; multi-media recordings and publications; computer software, computer programs, data recorded in electronic, optical or magnetic form; data carriers; audio and video recordings; Pre-recorded videos; compact discs; CDI's, CD-ROMs; discs, cassettes and other data carriers containing information recorded in magazine form; computer databases; telecommunication apparatus, mobile telephones, covers for mobile telephones; sunglasses, eyeglasses, covers and cases for sunglasses and eyeglasses.

Class 16: Printed matter, printed publications, magazines, journals; periodical publications; newspapers; books; newsletters; guides; printed programmes; tickets; stationery; diaries, calendars, note books, address books, writing implements; pens and pencils; except kitchen rolls, toilet paper, handkerchiefs, cosmetic tissues and wipes.

Class 25: Clothing, footwear, headgear; underwear; beach wear, sports wear; leisurewear; hosiery.

Class 35: Advertising, marketing and promotion services; provision of advertising, marketing and promotional services on-line from computer databases or the internet (including web sites); provision of advertising for accessing via communication and computer networks, including the internet and web sites; business information services; all provided from a computer database or the Internet; provision of product information for accessing via communication and computer networks; provision of commercial information, provision of data and statistical information, computerised data processing, computerised information storage and dissemination and retrieval services; on-line data processing services, compilation, storage, analysis and retrieval of information and data; management of communication networks; compilation of advertisements, compilation of advertisements for use as web pages on the Internet; arranging, conducting and production of exhibitions, shows and events; business support services.

Class 38: Telecommunications services; communication services; broadcasting services; television programming; radio broadcasting; radio programming, broadcasting and production services; wireless transmission and broadcasting of television programmes; cable television programmes; cable television and distribution of television programmes; cable television, video subscription television and radio broadcasting and transmission; computer network communications; transmission and reception of data and information; satellite transmission; teletext services; pay per view television transmission services; video on demand transmissions; rental, leasing or hire of apparatus, installations or components for use in the provision of the aforementioned services; advisory and consultancy services relating to the aforementioned services.

Class 41: Publishing services; services relating to the publication of printed matter, periodical publications, printed publications, books and magazines; publication of material which can be accessed from databases or from the internet; interactive information provided on-line from computer databases or the Internet; information provided on-line from computer databases or the Internet; provision of information for accessing via communication and computer networks; electronic publishing; organisation of competitions and awards; arranging and conducting competitions; arranging and conducting award ceremonies; presentation of awards for achievement; education and training services; arranging and conducting courses, conferences, exhibitions, events and seminars; organising, conducting, production of shows, events, displays, and parties; organisation of events for cultural, entertainment and sporting purposes; organization of competitions; organisation of sporting competitions and sports events; publication of printed matter; advisory and consultancy services relating to the aforesaid services.

The contested goods are the following:

Class 9: Tablet computers; Smartphones; Cabinets for loudspeakers; Television apparatus; Camcorders; Headphones; DVD players; Baby monitors; Battery chargers; Projection apparatus; Cameras (Cinematographic); Eyeglasses; Plugs, sockets and other contacts [electric connections]; Cell phone straps; Slide projectors; Chargers for electric batteries; Contact lenses; Data processing apparatus; Electrical adapters.

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.

The contested tablet computers; television apparatus; baby monitors; data processing apparatus are information technology and audio-visual, multimedia devices used to communicate audio, video or information over a distance via radio waves, optical signals, etc., or along a transmission line. The opponent’s telecommunication apparatus are hardware used for the purposes of telecommunications. Since the 1990s the boundary between telecoms equipment and IT hardware has become blurred as a result of the growth of the internet and its increasing role in the transfer of telecoms data. In this regard, the above-mentioned contested goods are included in the broad category of, or overlap with, the opponent’s telecommunication apparatus. Therefore, they are identical.

The contested smartphones are included in the broad category of the opponent’s mobile telephones. Therefore, they are identical.

Eyeglasses are identically contained in both lists of goods.

The contested camcorders; DVD players; projection apparatus; cameras (cinematographic); slide projectors are recording or reproducing apparatus and are highly similar to the opponent’s data carriers. These goods target the same consumers, are often manufactured by the same companies and provided through the same distribution channels. Furthermore, they are also complementary.

The contested contact lenses are used to correct vision. These goods have the same purpose as the opponent’s eyeglasses. They can coincide in producer, end users and distribution channels. Furthermore, they are goods in competition with each other. Therefore, the goods are similar to a high degree.

The contested headphones; battery chargers; cell phone straps; chargers for electric batteries are accessories of the opponent’s mobile telephones. It is usual for such goods to originate from the same undertaking, to be distributed via the same distribution channels and to target the same end users. Consequently, the goods are similar.

However, the contested cabinets for loudspeakers; plugs, sockets and other contacts [electric connections]; electrical adapters are dissimilar to all the earlier goods and services in Classes 9, 16, 25, 35, 38 and 41 protected by both earlier marks. These goods and services have different nature and purpose and are neither in competition nor complementary. Likewise, they also do not share the same producers, end users and distribution channels. Contrary to the opponent’s assertions, these goods are not complementary to its CDs or telecommunications apparatus in Class 9, radio broadcasting services in Class 38, or entertainments services in Class 41, in the sense that one is necessary or very important for the provision of the other (13/04/2011, T-345/09, Puerta de Labastida, EU:T:2011:173, § 51).

Taking into account that the Opposition Division has only found similarity between the contested goods and the some of the goods and services of earlier European Union trade mark registration No 4 471 876, the examination of the opposition will follow on the basis of this earlier right.

2. Relevant public — degree of attention

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

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

The degree of attention may vary from average to high depending on the specific nature and price of the particular goods. This is due to the fact that some of the contested goods such as tablet computers or smartphones may be highly technical and expensive purchases.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common and differing verbal elements of the signs, ‘magic’ and ‘see’, are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

The verbal element ‘magic’, included in both signs, will be understood by the relevant public as ‘the power of apparently influencing events by using mysterious or supernatural forces’ (information extracted from Oxford Dictionaries on 26/07/2017 at www.oxforddictionaries.com). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘see’ of the contested sign will be associated with ‘perceive with the eyes; discern visually’ (information extracted from Oxford Dictionaries on 26/07/2017 at www.oxforddictionaries.com). Bearing in mind that part of the relevant goods are audio-visual, optical and multimedia apparatus and devices, this element is weak for part of these goods, namely for tablet computers; smartphones; television apparatus; camcorders; DVD players; baby monitors; projection apparatus; cameras (cinematographic); eyeglasses; slide projectors; contact lenses; data processing apparatus. It is distinctive for the remaining contested goods, namely for headphones; battery chargers; cell phone straps; chargers for electric batteries.

The signs have no elements that could be considered clearly more dominant than other elements.

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).

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 the distinctive verbal element ‘magic’, written in lower case in both signs. Therefore, the verbal element of the earlier mark is fully contained in the verbal element of the contested sign and placed at the beginning of the latter. However, they differ in the verbal element ‘see’, which has been found weak for a part of the contested goods, as well as in the colours, figurative elements and slightly stylised typefaces of the respective signs, which have, however, a lower impact in the comparison.

Therefore, the signs are visually highly similar or similar to an average degree depending on the distinctiveness of the element ‘see’ as regards the specific contested goods.

Aurally, the pronunciation of the signs coincides in the first two syllables, ‘/ma-gic/’, present identically in both signs. The pronunciation differs in the additional syllable ‘/see/’ of the contested mark, which has no counterpart in the earlier sign and is weak for a relevant part of the contested goods.

Therefore, the signs are aurally highly similar or similar to an average degree depending on the distinctiveness of the element ‘see’ as regards the specific contested goods.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are similar to an average degree depending on the distinctiveness of the element ‘see’ as regards the specific contested goods.

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

4. Distinctiveness of the earlier mark

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

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. In the present case, the earlier trade mark has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the goods and services on which the opposition is based. They target both the public at large and professionals, with a degree of attention that may vary form average to high. The earlier mark has a normal degree of distinctiveness in relation to all the relevant goods.

It has also been concluded that the signs are visually, aurally and conceptually at least similar to an average degree. The differences between the signs are not sufficient to counteract their similarities since they are mainly confined to elements which are weak (at least for part of the contested goods) or with a lower impact within the signs, as explained in detail above.

In addition, account should be 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).

Furthermore, it should also be born in mind that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub brand, a variation of the earlier mark, configured in a different way according to the type of goods which it designates, for example specialised audio-visual goods (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). .

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical and similar (to varying degrees) goods. The relevant public, even professionals with a high degree of attention, may believe that the goods come from the same undertaking or, at least, economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• United Kingdom trade mark registration No 3 026 306 (for goods and services in classes 9, 16, 38 and 41) for the figurative trade mark

• United Kingdom trade mark registration No 2 542 123 (for goods and services in classes 9, 16, 38 and 41)for the figurative trade mark

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods. Moreover, at least the last earlier trade mark is less similar to the contested mark because it contains further elements such as ‘105.4’ which are not present in the contested mark.

The Opposition Division will therefore continue the examination of the opposition regarding the remaining contested goods first in relation to Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims reputation in relation to all the earlier trade mark registrations and all the goods and services protected by these trade marks.

The remaining contested goods are the following:

Class 9: Cabinets for loudspeakers; Plugs, sockets and other contacts [electric connections]; Electrical adapters.

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 of 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: 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.

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 above-mentioned 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.

1. The signs

One of the figurative earlier marks has already been compared with the contested mark above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Regarding the remaining earlier marks, for reasons of procedural economy, the Opposition Division will not proceed to a full comparison with the contested mark, taking into account that all these earlier marks have only minor differences with regard to the one already compared and may be even more similar to the contested mark. The examination will proceed on the assumption that all these trade marks are similar to a high degree to the contested mark.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade marks have a reputation in the United Kingdom.

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

In the present case the contested trade mark was filed on 21/03/2016. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom 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 the following:

European Union trade mark registration No 780 353:

Class 35: Advertising, marketing and promotional services.

Class 38: Telecommunication services; communication services; broadcasting services; television programming; radio broadcasting services; radio programming, broadcasting and production services; wireless transmission and broadcasting of television programmes; cable, satellite and direct to home transmission and distribution of television programmes; cable television, video, subscription television and radio broadcasting and transmission; satellite transmission; teletext services; pay per view television transmission services; video on demand transmissions; rental, leasing or hire of apparatus, installations or components for use in the provision of the aforementioned services.

Class 41: Radio entertainment services; production of radio programmes, entertainment, education and instruction by or relating to television or radio; production, presentation or rental of television or radio programmes and entertainment services; interactive information provided on-line from computer data bases or the Internet; information provided on-line from computer data bases or the Internet; provision of information for accessing via communication and computer networks; arranging, organising, presentation and provision of entertainment services; arranging, organising, presentation and provision of concerts, live entertainment, musical performances; organisation of competitions and awards; arranging and conducting competitions; arranging and conducting award ceremonies; presentation of awards for achievement; education and training services; arranging and conducting courses, conferences, exhibitions, events and seminars; entertainment services; organising, conducting, production of shows, events, displays, parties; organisation of events for cultural, entertainment and sporting purposes; organisation of competitions; organisation of sporting competitions and sports events; publication of printed matter, all the above-mentioned services related to activities of a radio or television station.

European Union trade mark registration No 4 471 876:

Class 9: Publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); electronic publications, electronic magazines; multi-media recordings and publications; computer software, computer programs, data recorded in electronic, optical or magnetic form; data carriers; audio and video recordings; Pre-recorded videos; compact discs; CDI's, CD-ROMs; discs, cassettes and other data carriers containing information recorded in magazine form; computer databases; telecommunication apparatus, mobile telephones, covers for mobile telephones; sunglasses, eyeglasses, covers and cases for sunglasses and eyeglasses.

Class 16: Printed matter, printed publications, magazines, journals; periodical publications; newspapers; books; newsletters; guides; printed programmes; tickets; stationery; diaries, calendars, note books, address books, writing implements; pens and pencils; except kitchen rolls, toilet paper, handkerchiefs, cosmetic tissues and wipes.

Class 25: Clothing, footwear, headgear; underwear; beach wear, sports wear; leisurewear; hosiery.

Class 35: Advertising, marketing and promotion services; provision of advertising, marketing and promotional services on-line from computer databases or the internet (including web sites); provision of advertising for accessing via communication and computer networks, including the internet and web sites; business information services; all provided from a computer database or the Internet; provision of product information for accessing via communication and computer networks; provision of commercial information, provision of data and statistical information, computerised data processing, computerised information storage and dissemination and retrieval services; on-line data processing services, compilation, storage, analysis and retrieval of information and data; management of communication networks; compilation of advertisements, compilation of advertisements for use as web pages on the Internet; arranging, conducting and production of exhibitions, shows and events; business support services.

Class 38: Telecommunications services; communication services; broadcasting services; television programming; radio broadcasting; radio programming, broadcasting and production services; wireless transmission and broadcasting of television programmes; cable television programmes; cable television and distribution of television programmes; cable television, video subscription television and radio broadcasting and transmission; computer network communications; transmission and reception of data and information; satellite transmission; teletext services; pay per view television transmission services; video on demand transmissions; rental, leasing or hire of apparatus, installations or components for use in the provision of the aforementioned services; advisory and consultancy services relating to the aforementioned services.

Class 41: Publishing services; services relating to the publication of printed matter, periodical publications, printed publications, books and magazines; publication of material which can be accessed from databases or from the internet; interactive information provided on-line from computer databases or the Internet; information provided on-line from computer databases or the Internet; provision of information for accessing via communication and computer networks; electronic publishing; organisation of competitions and awards; arranging and conducting competitions; arranging and conducting award ceremonies; presentation of awards for achievement; education and training services; arranging and conducting courses, conferences, exhibitions, events and seminars; organising, conducting, production of shows, events, displays, and parties; organisation of events for cultural, entertainment and sporting purposes; organization of competitions; organisation of sporting competitions and sports events; publication of printed matter; advisory and consultancy services relating to the aforesaid services.

United Kingdom trade mark registration No 3 026 306:

Class 9: Downloadable application software; downloadable mobile application software for mobile devices; downloadable mobile application software for phones and tablets; computer software for use as an application programming interface (API); multi-media recordings and publications; computer software, computer programs, data recorded in electronic, optical or magnetic form; data carriers; audio and video recordings; pre-recorded music compact discs; pre-recorded videos and DVDs; CDI's, CD-ROMs; discs, cassettes and other data carriers.

Class 16: Printed matter in the form of promotional goods relating to a radio broadcasting station; car stickers.

Class 38: Telecommunication services; communication services; broadcasting services; television programming; radio broadcasting; radio programming broadcasting and production services; wireless transmission and broadcasting of television programmes; cable, television programmes; cable television and distribution of television programmes; cable television, video subscription television and radio broadcasting and transmission; computer network communications; transmission and reception of data and information; satellite transmission; teletext services; pay per view television transmission services; video on demand transmissions; providing access to software applications through a website; rental, leasing or hire of apparatus, installations or components for use in the provision of the aforementioned services; advisory and consultancy services relating to the aforementioned services.

Class 41: Music, radio, entertainment services; inter-active information relating to music and radio broadcasting provided on-line from computer databases or the Internet; information relating to entertainment, music and radio broadcasting provided on-line from computer databases or the Internet; provision of information relating to entertainment, music and radio broadcasting for access via communication and computer networks; organization of competitions and awards through a radio broadcasting station; organization, conducting, production of shows, events, displays and parties; provision of information relating to entertainment, sporting and cultural activities for accessing by means of software applications; provision of music and music entertainment for accessing by means of software applications; provision of radio broadcasts for accessing by means of software applications; provision of radio entertainment services for accessing by means of software applications; provision of competitions for accessing by means of software applications.

United Kingdom trade mark registration No 2 542 123:

Class 9: Publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); electronic publications, electronic magazines; multi-media recordings and publications; data recorded in electronic, optical or magnetic form; data carriers; audio and visual recordings; pre-recorded videos; CDs; CDI's, CD-ROMS; discs, cassettes and other data carriers containing information recorded in magazine form; mobile telephones, covers for mobile telephones; sunglasses, eyeglasses, covers and cases for sunglasses and eyeglasses.

Class 16: Printed matter, printed publications, magazines, journals; periodical publications; newspapers; books; newsletters; guides; printed programmes; writing implements; pens, pencils, car stickers.

Class 38: Telecommunication services; communication services; broadcasting services; the provision of televsion programmes; radio broadcasting; the provision of radio programmes, broadcasting and production services; wireless transmission and broadcasting of television programmes; cable television programmes; cable television and distribution of television programmes; cable television, video subscription television and radio broadcasting and transmission; computer network communications; transmission and reception of data and information; satellite transmission; television screen based information, broadcasting and retrieval services; pay per view television transmission services; video on demand transmissions; rental, leasing or hire of apparatus, installations or components for use in the provision of the aforementioned services; advisory and consultancy services relating to the aforementioned services.

Class 41: Publishing services; services relating to the publication of printed matter, periodical publications, printed publications, books and magazines; publication of material which can be accessed from databases or from the Internet; interactive information relating to education, entertainment, sport and cultural activities provided on-line from computer databases or the Internet; information relating to education, entertainment, sport and cultural activities provided on-line from computer databases or the Internet; provision of information relating to education, entertainment, sport and cultural activities for accessing via communication and computer networks; electronic publishing. Organisation of competition and awards; arranging and conducting competitions; arranging and conducting award ceremonies; presentation of awards for achievement; education and training services; arranging and conducting courses, conferences, exhibitions, events and seminars; organising, conducting, production of shows, events, displays, and parties; organisation of events for cultural, entertainment and sporting purposes; organisation of competitions; organisation of sporting competitions and sports events; radio broadcasting entertainment services; television broadcasting entertainment services; radio entertainment services; television entertainment services; publication of printed matter; advisory and consultancy services relating to the aforesaid.

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.

On 21/02/2017 the opponent submitted the following evidence:

• ANNEX 3: Quarterly summary of radio listening (for the period ending 3^rd April 2016) by ‘RAJAR Audio measurement’. According to the figures shown in the RAJAR survey, in the first quarter of 2016 Magic London had a weekly reach of approximately 1.7 million listeners (15% of the population of London) and a 4.4% share in the Total Survey Area (TSA), which, according to the opponent, is defined as the percentage of total listening time accounted for by a station in its TSA in an average week and is obtained by dividing the station’s total hours by all radio total hours in the TSA. Furthermore, it had approximately 3 million weekly listeners across the United Kingdom (6% of the total population of the country) and a 1.8% share in the TSA.

• ANNEX 4: Printout of an article from www.campaignlive.co.uk mentioning the launch of Magic Radio as a national radio station from January 2015 and the growth of the radio station network a 31.2% in the first quarter of 2015 with 3.6 million listeners, together with a triplication of its marketing budget. The article also mentions that Magic Radio station is small compared to the big radio stations like Heart or Capital radio with 8.9 and 7 million listeners, respectively.

• ANNEX 5: Printouts from the Magic radio web page www.magic.co.uk dated 13/02/2017 showing the use of the Magic earlier right for radio broadcasting. This document also contains a printout from the opponent’s website www.magic1054.co.uk, the online home of Magic 105.4 FM, broadcasting across London on 105.4 FM and also on digital radio, obtained via the Wayback Machine web archive and dated 28/06/2003.

• ANNEX 6: Printouts from the Magic radio Youtube channel, dated 20/02/2017, showing the use of the earlier right. According to this document, it has 8,533 subscribers and had 11,358,477 views since the creation of the channel in 06/07/2011.

• ANNEX 7: Copies of a selection of examples showing use of the various Magic marks including the following:

• A cover of a compilation CD called ‘Magic The Collection’. It is undated but the opponent indicates it is from 2015.

• An events poster featuring the music stars ‘Take That’ presented by Magic in concert in London on 24/04/2015.

• An online advertisement found in the opponent’s web page advertising a campaign to win tickets to Magic’s private party with Robbie Williams in 10/12/2013.

• A copy of an undated Magic Radio advertisement that according to the opponent was broadcast across the UK on several TV channels.

• An undated photograph from inside a radio station showing a presenter (Kate Thornton) and the Magic trade mark depicted on the microphone.

• Printouts of online competitions by Magic radio in collaboration with Sky TV (undated), Visit Scotland (dated 29/05/2015), The Secret Life of Walter Mitty film (undated) and Quantas Airline (dated 29/05/2015).

• Printouts of other online competitions by Magic radio with IKEA (undated) and Monopoly (dated 29/05/2015).

• Printout of online competition ‘Magic Music Makes Money’ (undated).

• ANNEX 8: Copies of examples of advertising campaigns to promote the Magic radio station featuring the mark:

• An undated poster about a new show by presenter Mel Giedroyc.

• A copy of the previously presented Magic Radio advertisement ran on TV (according to the opponent, from February 2015).

• Picture of an outdoor campaign showing a billboard of Magic Radio on the wall of a building (according to the opponent, from March 2015).

• Copy of an undated advertisement by Magic Radio proposing a competition in order to win a digital radio.

• A picture showing a ‘Magic 105.4’ advertisement on the side of a bus (undated, but according to the opponent it is from May 2014).

• A copy of a Magic Radio advertisement dated 08/05/2013 about ‘The Denise Van Outen Show’, according to the opponent presented in the press.

• A copy of a Magic Radio advertisement (undated), according to the opponent presented on the press in 2012.

• A copy of a billboard, according to the opponent aimed to be fixed in busses side in 2007, proposing a competition in order to win George Michael tickets.

• ANNEX 9: Printout of the web page of Westfield London shopping centre indicating that it attracted footfall of 27.5 million in 2014 with transport links through underground, bus, cycle bays, car and pedestrian routes. The opponent explains in its observations that its bus campaigns were present on over 1,000 buses across a two week period close to and within the Westfield Shopping centres in London.

• ANNEX 10: Copy of an advertisement for Magic Radio in ‘Take a Break magazine’ dated 19/01/2015.

• ANNEX 11: Copy of a number of advertisements for Magic Radio from April 2008 to August 2013.

• ANNEX 12: Copies of the Magic Radio Twitter (31,000 followers), Facebook (88,791 likes) and Google+ (64 followers) pages, dated 06/12/2016.

• ANNEX 13: printout from the websites iTunes and Google Play dated 21/02/2017, showing the Magic Radio app available to download.

The opponent also includes in its observations, among other information, turnover and advertising figures, including data from 2008 to 2016 (estimated for this last year), with a turnover of Pounds Sterling 15,800,000 and an expenditure on advertising of Pounds Sterling 3,700,000 for 2015. However, these figures are not supported by any evidence.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Reputation requires recognition of the mark by a significant part of the relevant public. In making that assessment, 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, § 22).

Pursuant to Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R 0437/2014-1, SALSA/SALSA (fig.) et al.).

Regarding the assessment of the evidence submitted, and in particular, regarding the kind of statements provided by the opponent in its statement of grounds about turnover and advertising figures, these can be considered to be similar to an affidavit or Witness Statement. In this regard, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1) (f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the laws of the country in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent 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. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. In general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence or evidence originating from independent sources.

In the present case, the information contained in the opponent’s observations is not corroborated by solid, objective evidence in terms of turnover and advertising figures. The fact that the opponent’s Twitter, Facebook or Google+ pages or its Youtube channel have a number of followers, likes, subscribers or views is not sufficient to prove reputation because the social media profiles do not present a clear and reliable picture about the degree of recognition of the trade marks on the market. Even if some (partially undated) examples of advertising and an audio measurement survey for the first quarter of 2016 have been submitted, this evidence does not provide sufficient indications of the extent of recognition of the earlier trade marks by the relevant public. Furthermore, these figures are not put into the context of the market and competitors in question and, therefore they provide no information from which the Opposition Division could conclude that the marks had acquired reputation.

On the contrary, even if the evidence shows some use of the trade marks in relation to radio broadcasting, the evidence provides little information on the extent of such use and, indeed, it shows that Magic Radio is still far below from the biggest radio stations in the UK and the opponent has not submitted any survey on mark’s recognition nor press clips in this regard that may provide some light regarding the reputation of the earlier trade marks.

As a result, in the absence of sufficient independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier marks by the relevant public at the relevant date, the market share held by the marks, the position they occupy in the market in relation to competitors’ services, the duration, extent and geographical area of their use or the extent to which they have been promoted, it is concluded that the evidence does not show that the trade marks are known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

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.

The Opposition Division will therefore continue the examination of the opposition regarding the remaining contested goods in relation to the last remaining ground of opposition, namely Article 8(4) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

Article 8(4) EUTMR was raised in connection with the non-registered trade mark ‘MAGIC’ used in the course of trade in the United Kingdom in relation to all the goods and services protected by the earlier registered trade marks claimed under Article 8(1)(b) and 8(5), previously listed, including the goods and services protected by the United Kingdom trade mark No 3 026 304 that has been found non-substantiated under these grounds, in particular, the following:

Class 9: Downloadable application software; downloadable mobile application software for mobile devices; downloadable mobile application software phones and tablets; computer software for use as an application programming interface (API); multi-media recordings and publications; computer software, computer programs, data recorded in electronic, optical or magnetic form; data carriers; audio and video recordings; pre-recorded music compact discs; pre-recorded videos and DVDs; CDI's, CD-ROMs; discs, cassettes and other data carriers; none of the aforesaid related to gaming or trading card games.

Class 16: Printed matter in the form of promotional goods relating to a radio broadcasting station; car stickers.

Class 38: Telecommunication services; communication services; broadcasting services; television programming; radio broadcasting; radio programming broadcasting and production services; wireless transmission and broadcasting of television programmes; cable, television programmes; cable television and distribution of television programmes; cable television, video subscription television and radio broadcasting and transmission; providing access to music and music radio related software applications through a website; computer network communications; transmission and reception of data and information; satellite transmission; teletext services; pay per view television transmission services; video on demand transmissions; all the aforesaid services relating to music, sports, travel, dating, celebrity news or current affairs; rental, leasing or hire of apparatus, installations or components for use in the provision of the aforementioned services; advisory and consultancy services relating to the aforementioned services.

Class 41: Broadcasting provided on-line from computer databases or the Internet; information relating to music entertainment, music and music radio broadcasting provided on-line from computer databases or the Internet; provision of information relating to music entertainment, music and music radio broadcasting for access via communication and computer networks; organization of music related competitions and awards through a radio broadcasting station; organization, conducting, production of shows, events, displays and parties, all of the aforesaid relating to music or music entertainment; provision of information relating to music entertainment, sporting and cultural activities for accessing by means of software applications; provision of music and music entertainment for accessing by means of software applications; provision of music radio broadcasts for accessing by means of software applications; provision of music radio entertainment services for accessing by means of software applications; provision of music related competitions for accessing by means of software applications; none of the aforesaid related to gaming or trading card games.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Passing off (non-registered trade marks under the laws of the United Kingdom)

The opposition is based on a non‑registered trade mark used in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

For reasons of procedural economy, the Opposition Division will examine first the second requirement.

1. The opponent’s right vis‑à‑vis the contested trade mark

Misrepresentation (passing off)

The contested trade mark must be likely to lead the public to believe that goods or services to be offered by the applicant are the opponent’s goods or services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods or services in the belief that they are the opponent’s.

Therefore, a comparison of the signs is required. As previously explained under Article 8(5) EUTMR, one of the earlier marks was already compared under Article 8(1)(b) EUTMR and the Opposition Division will proceed in the assumption that all the trade marks are at least similar to an average degree to the contested mark.

Furthermore, the public is unlikely to be misled where the contested goods are dissimilar to the goods and services upon which the opponent’s goodwill has been built. Therefore, the contested goods must be compared to the goods and services for which the opponent has shown that it has acquired goodwill through use.

1. The goods and services

The opposition is still directed against the remaining contested goods, namely the following:

Class 9: Cabinets for loudspeakers; Plugs, sockets and other contacts [electric connections]; Electrical adapters.

Even though the opponent claims in the notice of opposition to be the proprietor of a non-registered trade mark in relation to all the goods and services protected by the earlier registered trade marks claimed under Article 8(1)(b) and 8(5), in its statement of grounds the opponent only mentions goodwill regarding the radio, entertainment and advertising services. Furthermore, as deduced from the evidence of reputation previously analysed, the opponent basically uses its earlier trade marks for radio broadcasting.

At any event, the opponent’s goods and services have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings.

It follows from the above that the remaining contested goods are dissimilar to the goods and services for which the opponent has claimed that it has acquired goodwill through use. Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the applicant’s goods for those of the opponent even if the signs have some similarities. Therefore, the opposition is not well founded under Article 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Rhys MORGAN

Eva Inés PEREZ SANTONJA

Richard BIANCHI

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