INTERIM DECISION

of the First Board of Appeal

of 19 November 2020

In joined cases R 1852/2018-1 and R 1853/2018-1

Tailoradio srl
Via Oltrocchi 6 20137 Milano Italy	Applicant / Appellant

represented by AVVOCATI ASSOCIATI FRANZOSI DAL NEGRO SETTI, Via Brera, 5, 20121 Milano, Italy

v

Mood Media Netherlands B.V.
Transistorstraat 22 1322 CE Almere Netherlands	Opponent / Defendant

represented by TURQUOISE SOCIÉTÉ D'AVOCATS, 65, avenue Marceau, 75016 Paris, France

APPEAL relating to Opposition Proceedings No B 2 864 158 (European Union trade mark application No 16 150 691, appeal R 1852/2018-1), No B 2 864 208 (European Union trade mark application No 16 150 708, R 1853/2018-1) and Cancellation proceedings No 27 843 C (European Union trade mark No 13 011 341)

The First Board of Appeal

composed of G. Humphreys (Chairperson), Ph. von Kapff (Rapporteur) and A. Kralik (Member)

Registrar: H. Dijkema

gives the following

Interim decision

Summary of the facts

1. By an application filed on 11 December 2016, tailoradio srl (‘the applicant’) sought to register

1. the figurative mark No 16 150 691

for the following list of services:

Class 35 – Advertising, marketing and promotional services;

Class 42 – IT services.

The applicant claimed the colours:

Grey; Blue; White.

2. the figurative mark No 16 150 708

for the following list of services:

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.

The applicant claimed the colours:

Grey; Orange; White.

2. The application No 16 150 691 was published on 16 December 2016. The application No 16 150 708 was published on 19 December 2016.

3. On 15 March 2017, Mood Media Netherlands (‘the opponent’) filed an opposition against the registration of both published trade mark applications for all the above services. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

4. The oppositions were based on European Union trade mark No 13 011 341

filed on 19 June 2014 and registered on 21 October 2014, for, inter alia, the following services:

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 videos; 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 video, 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.

5. By decisions of 11 July 2018 (‘the contested decision’), the Opposition Division refused both trade marks applied for, for all the contested services on the grounds that there was a likelihood of confusion.

6. On 19 September 2018, the applicant filed appeals against both contested decisions, requesting that both decisions be entirely set aside. The Opposition against the trade mark applied for No 16 150 691 was assigned the appeal R 1852/2018-1.The Opposition against the trade mark applied for No 16 150 708 was assigned the appeal No R 1853/2018-1.

7. On 3 October 2018, the applicant filed a request for the suspension of both proceedings due to its cancellation action against the only earlier right filed on 24 September 2018 by the applicant and currently still pending under No 27 843 C before the Office. The request was based Italian trade mark No. 1 450 228:

which is prior to the opponent’s earlier right, i.e. applied for on 8 March 2011 and registered on 17 May 2011 in Classes 16, 25, 35, 41, 42. The grounds of invalidity request were those laid down in Article 60 in conjunction with Article 8(1)(b) EUTMR and additionally in Article 59 in conjunction with Article 7(1)(b), (c) EUTMR. The request was only directed against Classes 35, 41 and 42, not the Class 38 of the opponent’s EU trade mark.

8. Both statements of grounds of the appeals were received on 15 November 2018.

9. In its responses received on 15 January 2019, the opponent requested that both appeals be dismissed. On the same day in a separate writ, it requested that the suspension request by the applicant be rejected.

10. By interim decision 16/05/2019, R 1852/2018-1, videoMOOD Digital Signage, made easy (fig.) / Mood mix (fig.) & R 1853/2018-1 radioMOOD In-store radio, made easy (fig.) / Mood mix (fig.) the case was suspended until there was a final decision in the cancellation proceedings No 27 843 C.

11. In another parallel cancellation proceedings between the same parties No 15 060 C, by Cancellation Division’s decision 25/06/2019, No 15 060 C, Mood media (EUTM No 5 927 496) the application for revocation was partially rejected. This decision was appeal on 8 August 2019 and was assigned the number R 1767/2019-1.

12. By Cancellation Division’s decision 28/04/2020, 27 843 C, MOOD:MIX (fig.) / STEREO mood tuning my emitions (fig.), the application for a declaration of invalidity was rejected in its entirety. This decision became final on 6 July 2020. The appeal cases at hand were resumed.

13. In another case, in the examination of the EU trade mark application No 17 945 345 for the word mark ‚Moodmusic’ in Classes 7, 9, 35, 38, the application was partially rejected for Classes 9, 35 and 38. This decision was appealed to the Fifth Board of Appeals. By decision 04/05/2020, R 2542/2019-5, Moodmusic, the Fifth Board of Appeals remitted this decision back to the examiner for re-examination because of violation of Article 94(1) EUTMR, without re-assessing Article 7 EUTMR on the substance.

14. By First Board of Appeals’ decision 24/07/2020, R 1767/2019-1, Mood media, the EUTM No 5 927 496 was revoked in its entirety. Against this decision Mood Media Netherlands B.V., i.e. the opponent of the appeal proceedings at hand and the EUTM proprietor in the cancellation No 15 060 C, brought an action before the General Court. The case was assigned the number T‑615/20.

15. On 8 October 2020, the applicant in the appeal proceedings at hand pointed out to the Office that they fully agreed with the assessment of the word ‘MOOD’ in relation to music and media and that the English term ‘mood‘ is well understood by professional public in this area:

16. On 2 November 2020, the opponent replied that the applicant’s communication of 8 October 2020 be rejected as late and filed in bad faith. It requested rather to consider the findings of the parallel cancellation decision No 27 843 C of 28 April 2020 on the distinctive character of the term ‘MOOD’ which the applicant did not appeal:

Reasons

17. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

18. The appeal has certain issues in relation to the revocation No 15 060 C for non‑use of the sign as a trade mark. It is therefore appropriate to suspend the current proceedings pending the outcome of the final judgement of the General Court in the case T‑615/20.

19. Balancing the interests of both parties, the current case must be stayed pursuant to Article 71(1)(a) EUTMDR until a final decision is taken in the above-mentioned cancellation case.

20. Once a final judgement is rendered in the cancellation proceedings No 15 060 C, the parties will be given a possibility to comment on its impact on the appeal cases at hand.

Order

On those grounds,

THE BOARD

hereby:

Suspends the case until there is a final decision in the cancellation proceedings No 15 060 C.

Signed G. Humphreys

Signed Ph. von Kapff

Signed A. Kralik

Registrar: Signed H. Dijkema