OPPOSITION No B 2 864 208

Mood Media Netherlands, Transistorstraat 22, 1322 Almere, Netherlands (opponent), represented by Turquoise Société d’Avocats, 15, rue Beaujon, 75008 Paris, France (professional representative)

a g a i n s t

Tailoradio, Via Oltrocchi 6, 20137 Milano, Italy (applicant), represented by Avvocati Associati Franzosi dal Negro Setti, Via Brera 5, 20121 Milano, Italy (professional representative).

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

DECISION:

1. Opposition No B 2 864 208 is upheld for all the contested services.

2. European Union trade mark application No 16 150 708 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 services of European Union trade mark application No 16 150 708 , namely against all the services in Classes 35 and 42. The opposition is based on European Union trade mark registration No 13 011 341 , for services in Classes 35 and 42. The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The services

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

Class 35: Advertising, including on-line advertising on a computer network; market research and market analysis; opinion polling and statistical studies; rental of advertising equipment, space and media (including online on a global communications network such as the internet); business consultancy and information; organisation of events, exhibitions and trade fairs for commercial or advertising purposes; bill-posting services; publication of publicity texts; professional consultancy relating to advertising and promotion; dissemination, including online, of advertising matter and direct mail advertising; services relating to advertising by the dissemination of recorded messages, sounds and/or images and RADIOs; layout services for advertising purposes, drafting and publication of publicity texts; sales promotion (for others); presentation of goods on communication media, for retail purposes; public relations services; business administration; office functions; business auditing; computerised file and computerised database and data bank management; compilation and management of on-line computer databases and on-line searchable databases; demonstration of goods via communications networks; business management and organisation consultancy provided via computer networks and communications networks; business management; advertising and marketing services, namely, promoting the goods and services of others via computer networks, wireless networks and global communication networks; delivering advertisements and promotional materials to others via electronic mail and over computer networks, wireless networks and global communication networks; marketing analysis and consultancy; marketing studies; advice relating to marketing management; preparation of marketing plans; provision of information relating to marketing; advertising management.

Class 42: Consultancy relating to space planning and technical fitting-out of these spaces for the projection of RADIO, audio and visual content and the dissemination of olfactory content; computer services, namely design of computer software, software packages and computer hardware; software maintenance and updating, computer programming and computer systems analysis; design, testing, research, technical support (engineering) and providing of information relating to data storage, backup systems, computer hardware, computing systems for storage and backup purposes, computer software, telecommunications software and wireless and mobile communications devices; computer software consulting, maintenance of software; computer programming; application service provider services, design (development) of computer software for the creation, downloading, transmission, reception, editing, extraction, encoding, decoding, display, storage and organising of texts, sounds, graphic illustrations, images and electronic publications; graphic design for the compilation of web pages on the internet; creation and management of websites and internal network sites; hosting websites for others; providing search engines for obtaining data via communications networks; providing search engines for obtaining data on a global computer network; providing of information and consultancy relating to all the aforesaid services; creation, for others, of websites (in particular online information directories); providing of search engines for obtaining information on a global computer network connected to the internet; digital imaging services.

The contested services are the following:

Class 35: Business analysis, research and information services; commercial trading and consumer information services; business assistance, management and administrative services.

Class 42: Testing, authentication and quality control; design services; science and technology services.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The terms ‘in particular’ and ‘including’, used in the opponent’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

Contested services in Class 35

Business information services, business management and administrative services are identically contained in both lists of services (including synonyms).

The contested business analysis, research services; business assistance services are included in the broad category of, or overlap with, the opponent’s business management. Therefore, they are identical.

The contested commercial trading and consumer information services are included in the broad category of, or overlap with, the opponent’s business consultancy and information. Therefore, they are identical.

Contested services in Class 42

The contested design services includes, as a broader category, the opponent’s design relating to data storage, backup systems, computer hardware, computing systems for storage and backup purposes, computer software, telecommunications software and wireless and mobile communications devices. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

The contested science and technology services overlap with the opponent’s design, testing, research, technical support (engineering) and providing of information relating to data storage, backup systems, computer hardware, computing systems for storage and backup purposes, computer software, telecommunications software and wireless and mobile communications devices. Therefore, they are identical.

The contested testing, authentication and quality control include, as broader categories, or overlap with the opponent’s design, testing, research, technical support (engineering) relating to data storage, backup systems, computer hardware, computing systems for storage and backup purposes, computer software, telecommunications software and wireless and mobile communications devices. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical are directed 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 services purchased.

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element ‘MOOD’ is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the French-, German-, Greek-, Romanian- and Spanish- speaking parts of the public.

Both marks are figurative.

The earlier mark is composed of the verbal elements ‘MOOD’ and ‘MIX’ written in black upper case letters and separated by a red colon; the verbal element ‘MOOD’ is in bold letters.

The contested mark comprises the verbal elements ‘RADIO’ and ‘MOOD’ written in upper case letters, the verbal element ‘RADIO’ being in grey letters, whereas the verbal element ‘MOOD’ is in bold orange letters. Below them, the verbal elements ‘In-store Radio, made easy’ are written in smaller grey letters. To the left of the verbal elements is a device of a slightly stylised white letter ‘R’ in an orange circle.

The element ‘MOOD’, present in both signs, has no meaning for the relevant public and is, therefore, distinctive.

Moreover, the element ‘MIX’ of the earlier mark will be associated with ‘mixture’ and will be perceived by the relevant public as referring to ‘something that is mixed’ (information extracted from Dex Online on 10/07/2018 at https://dexonline.ro/definitie/mix). There are also similar equivalents in most languages of the European Union (the verbs ‘mixer’ in French and ‘mischen’ or ‘mixen’ in German, the noun ‘mixtura’ in Spanish, etc.). Furthermore, the Greek equivalent is pronounced in the same way as ‘mix’. Bearing in mind that the relevant services could be combined, it is considered that this element is weak for these services. The relevant public that understands the meaning of this element will not pay as much attention to it as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

Furthermore, the earlier sign contains a less distinctive figurative element of a purely decorative nature, namely the red colon separating the verbal elements.

The applicant argues that the words ‘RADIO’ and ‘MOOD’ would be perceived as composing a single verbal element. The Opposition Division does not agree with the applicant on this issue, as the verbal elements will be perceived separately, given that they are written in different colours, with one being in bold.

The verbal element ‘RADIO’ of the contested sign will be understood by the relevant public, as meaning, inter alia, ‘broadcasts broadcasted through sound waves’ or ‘sound transmission system using electromagnetic waves, comprising transmitting and receiving devices’ (information extracted from Dex Online on 10/07/2018 at https://dexonline.ro/definitie/radio). Bearing in mind the relevant services, it is considered that this element is weak for them, as they could be provided using radio broadcasts (in the case of the relevant services in Class 35) or concern sound transmission systems using electromagnetic waves (in the case of the relevant services in Class 42). The relevant public understands the meaning of this element and will not pay as much attention to it as to the other, more distinctive, elements of the mark. Consequently, contrary to the applicant’s argument, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The rest of the verbal elements of the contested sign have no meaning for the relevant public, and are, therefore, distinctive. Moreover, the figurative element of the letter ‘R’ in an orange circle in the contested sign will be associated with the letter ‘R’ and, as it is not descriptive, allusive or otherwise weak for the relevant services, this element is considered distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The verbal elements ‘RADIO’ and ‘MOOD’ are the co-dominant elements in the contested mark due to their sizes.

Visually, the signs coincide in the verbal element ‘MOOD’, which is the most distinctive element in the earlier mark and one of the co-dominant elements in the contested mark. The signs differ in the verbal elements ‘MIX’ of the earlier mark and ‘RADIO’ of the contested sign, which are weak for the relevant services, as explained above, and therefore have a limited impact on the visual comparison. The signs also differ in the figurative elements, the stylisation and the colours of the marks, as well as in the additional verbal elements ‘In-store Radio, made easy’ (which are written in smaller letters) and the letter ‘R’ in the contested mark, if it is perceived separately as a letter.

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).

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllable(s) /MOOD/, present identically in both signs and forming the most distinctive element in the earlier mark and one of the co-dominant elements in the contested mark. The pronunciation differs in the sound of the additional verbal elements ‘MIX’ of the earlier mark and ‘RADIO’ of the contested sign, which are weak for the relevant services, as explained above, and therefore have a limited impact on the aural comparison. The pronunciation also differs in the sound of the additional verbal elements ‘In-store Radio, made easy’ and in the letter ‘R’ in the contested mark, if these elements are pronounced, given their small size and stylisation, respectively.

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

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘MIX’ of the earlier mark and ‘RADIO’ of the contested sign will be associated with the meanings given above. Therefore, the signs are conceptually dissimilar.

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested services are identical and target the business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high.

From the point of view of the relevant public, the signs are visually and aurally similar to an average degree, inasmuch as they have in common the verbal element ‘MOOD’, which is the most distinctive element in the earlier mark and one of the co-dominant elements in the contested mark. The signs differ in the verbal elements ‘MIX’ of the earlier mark and ‘RADIO’ of the contested sign, which are weak for the relevant services, as explained above, and therefore have a limited impact on the visual and aural comparisons. The signs also differ in their figurative elements, stylisation and colours, as well as in the additional verbal elements ‘In-store Radio, made easy’ (which are written in smaller letters) and the letter ‘R’ in the contested mark. However, figurative elements usually have less impact on the consumer than verbal elements, and the additional verbal elements of the contested mark are likely to be disregarded due to their small size or stylisation.

Although the commonalities in the signs are less obvious than the differences, there is still a likelihood of confusion, as the coinciding element plays an independent distinctive role and it is the most distinctive element in the earlier mark and one of the co-dominant elements in the contested mark.

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).

In the present case, the identity between the services offsets the lesser degree of visual and aural similarity and the conceptual dissimilarity between the signs.

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 services 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 services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In the present case, the contested services could be perceived as originating from a new division of the opponent’s business that provides services using radio transmission and recording systems.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that many trade marks include ‘MOOD’. In support of its argument the applicant refers to several trade mark registrations in the European Union, as well as in Germany, Spain, France and Italy.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘MOOD’. Under these circumstances, the applicant’s claims must be set aside.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the part of the French‑, German-, Greek-, Romanian- and Spanish-speaking parts of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 011 341. It follows that the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cristina CRESPO MOLTO

Francesca DRAGOSTIN

Biruté SATAITE- GONZALEZ

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.