OPPOSITION Nо B 2 890 831

 

Sport1 Gmbh, Münchener Str. 101g, 85737 Ismaning, Germany (opponent), represented by Zirngibl Rechtsanwälte Partnerschaft Mbb, Karlstraße 23, 80333 München, Germany (professional representative) 

 

a g a i n s t

 

Société Française du Radiotéléphone - SFR, 16 Rue du Général Alain de Boissieu, 75015 Paris, France (applicant), represented by Cabinet Vidon Marques & Juridique PI, 16b, Rue Jouanet - B.P. 90333, Technopôle Atalante, 35703 Rennes Cedex 7, France (professional representative).

 

On 09/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 2 890 831 is upheld for all the contested services.

 

2.	European Union trade mark application No 16 161 317 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the services of European Union trade mark application No 16 161 317  (figurative mark), namely against all the services in Classes 35, 38 and 41. The opposition is based on the following earlier rights:

• German trade mark registration No 30 2013 004 460 (figurative), in relation to which he opponent invoked Article 8(1)(b) EUTMR.

• International trade mark registration No 1 221 100 designating Austria (figurative), in relation to which the opponent invoked Article 8(1)(b) EUTMR.

• Company-name ‘Sport1 GmbH’, claimed to enjoy protection in Germany in relation to operation of a television station and development, marketing and organisation of any digital media and any media services, and in relation to which the opponent invoked Article 8(4) EUTMR.

 

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

 

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

 

The 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 German trade mark registration No 30 2013 004 460 .

a) The goods and services

PRELIMINARY REMARK on the basis of the opposition

In his arguments and after listing all the confronted goods and services, the opponent explained the following (emphasis added):

“Given this, it becomes obvious that the services covered by the Contested Trademark in classes 35, 38 and 41 are identical or at least highly similar to the respective goods and services of the Opponent's Trademarks”

In this regard, the applicant claimed the following:

However, the Opposition Division notes that the opponent has not requested to limit the goods and services on which the opposition is based, but refers in the comparison to the ones he considers more similar to the contested ones.

Therefore, the applicant´s claim in this regard is based on a misinterpretation of the opponent´s arguments, and is therefore considered unfounded and must be set aside.

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

 

Class 9: Apparatus for recording, receiving, transmission, processing, conversion, output and reproduction of speech, text, sound and images; apparatus, instruments and equipment for telecommunications.

Class 35: Advertising; business management services; business management and organization consultancy services; business administration; office functions.

Class 38: Telecommunications; provision of access to data networks; telephone services; electronic transmission of data, text, sound and images; radio and television broadcasts/programmes via wireless and cable networks; provision of access to data in computer networks.

Class 41: Teaching, education; entertainment; cultural activities; rental of sound and image recordings; organisation and presentation of shows; publication and issuing of books, periodicals and further printed matter (other than for advertising purposes) in particular on video and audio topics (other than for advertising purposes); recording studio services; rental of sound and image recordings on video and/or audio cassette, tape and disc as well as video games (computer games).

The contested services are the following:

Class 35: Subscriptions to a telecommunication service; telephone subscriptions; arranging subscriptions to a radiotelephone service; subscriptions to a radio message service; arranging subscriptions to an internet connection offer; arranging subscriptions to a support service for the operation of radiotelephone and telephone goods and services; arranging subscriptions to wireless local area networks; arranging of subscriptions to a centre providing access to a computer network or network for the transmission of data, sound, images or moving images; subscriptions to a database server, subscriptions to a centre providing access to computer or data transmission networks, in particular for world-wide communications (such as the internet), or private or restricted access networks (such as an intranet); electronic newspaper subscriptions; subscriptions to data transmission services; subscriptions to data transmission databases; subscriptions to computer databases; information services in relation to updating databases; data recording and processing, namely capturing, collating, systematic ordering of data; computerised file management, in particular of image and sound files; compilation of information into computer databases; systemization of information into computer databases; telephone answering (for unavailable subscribers); dissemination of advertising matter, publication of publicity texts, rental of advertising space, sales promotion for others, display, distribution and dissemination of advertising material, namely samples; organisation of exhibitions and trade fairs for commercial or advertising purposes; demonstration of goods; arranging newspaper subscriptions for others; rental of advertising time on communication media; dissemination of business or advertising information via telematic means; dissemination of business or advertising information via electronic means, via wireless networks (short or long distance), global communications networks (the internet) or private or restricted access networks (intranets); dissemination of business or advertising information by telephone, radiotelephone, television, cable or satellite; retailing of articles for telephony, telecommunications and radiotelephony, namely retailing of telephones, mobile telephones, smartphones, radiotelephones, multiservice boxes, radio messaging apparatus, apparatus for recording, transmission, reproduction and processing of text, data, sound, images and moving images, domestic digital terminals; electronic commerce (e-commerce), namely providing of information on telecommunications goods and services for advertising and/or sales purposes; electronic commerce (e-commerce), namely retailing, online, of telephones, mobile telephones, smartphones, radiotelephones, multiservice boxes, radio messaging apparatus, apparatus for recording, transmission, reproduction and processing of text, data, sound, images and moving images, domestic digital terminals; presentation of goods on communication media, for retail purposes; distribution and dissemination of advertising matter in the context of a loyalty scheme, namely telecommunications apparatus; organization of business operations to obtain customer loyalty; customer loyalty promotion and advertising operations; consumers (commercial information and advice for -) [consumer advice shop]; news clipping services; advertising in the popular and professional press; press advertising services; arranging subscriptions to a television channel.

Class 38: Telecommunications; telephone and cellular telephone communications; radio communications; telephone services; telecommunications; communications via radio; communications by cellular phones; transfer of calls, call forwarding; communication of information on the list of telephone subscribers; voice mail services; message sending; telegraph services; facsimile transmission; satellite transmission; transmission and dissemination of text, data, sound, images and moving images, messages, photographs and music; transmission and reception of electronic messages; broadcasting (transmission) of information in the field of telecommunications by telephone, radiotelephone, data transmission or electronic means; dissemination and providing (transmission) of multimedia content on global communications networks (the internet); data transmission network information services; communications by computer terminals; communication by computer terminals; electronic mail and electronic messaging services; dissemination of information in the field of telecommunications by electronic means, in particular for global communications networks (the internet) or private or restricted access networks (intranets), providing of access to national and international server centres; providing user access to the internet; providing access to a data transmission network via radio; providing (transmission, uploading or downloading) of photographs, images, music and sound from a computer database or the internet; providing access to wireless telephone, radiotelephone or data transmission networks (short range or long range) or to global communications networks (such as the internet) or private or restricted access networks (such as an intranet), to global communications servers (such as the internet) or to private or restricted access communications servers (such as an intranet); transmission, uploading and downloading of application software; providing (transmission, uploading and downloading) of computer applications for mobile telephones and electronic tablets; providing internet chat rooms; rental of telephones, radiotelephones, smartphones; rental of telecommunications apparatus for the reproduction, transmission and processing of text, data, sound, images, moving images, messages, photographs and music; leasing access time to a computer database server and to the internet; news and information agencies, information relating to telecommunications, broadcasting of radio programs; television broadcasting; dissemination of information in the field of telecommunications by television, cable or satellite; television broadcasting; radio broadcasting; televisual communications via a telephone network; assistance in the event of a breakdown of a radiotelephony and telephony and telecommunications product or service, namely rental of radiotelephony, telephony and telecommunications apparatus; transmission of programmes and selection of television channels; dissemination of sporting information on global communications networks (the internet); broadcasting of audiovisual programmes via computer terminals; broadcasting of audiovisual programmes on global communications networks (such as the internet) or private or restricted access networks (such as an intranet), or by cable, satellite or wave.

Class 41: Information relating to games, entertainment and education; organisation of games, operating lotteries, organisation of competitions with the awarding of prizes (education or entertainment); booking of seats for shows, arranging and conducting of colloquiums, conferences, congresses; organisation and conducting of competitions (education or entertainment); arranging and conducting of educational examinations; organisation of exhibitions for cultural, artistic or educational purposes; organisation of sports competitions; organisation of shows; providing museum facilities (presentation, exhibitions); television entertainment; radio entertainment; arranging and conducting entertainment, games; entertainer services; tuition, correspondence courses; tuition; practical training demonstrations; workshops (arranging and conducting of -) [training]; rental of sound recordings, video tapes, audio apparatus, video apparatus; recording and processing of sound (recording studios); recording and processing of images (filming); rental of apparatus for recording, reproduction and processing of data, namely cd writers, dvd burners; rental of apparatus for recording sound, images and moving images, namely rental of audio apparatus, video cameras, video recorders, radio and television sets, dictaphones, DVD players/recorders, CD writers, DVD burners, cameras; library services; publication of books; mobile library services; production of shows and films; rental of sound recordings, audio apparatus, video tapes, video cameras; videotape editing; editing of radio programmes; editing of television programmes; videotaping; production of audiovisual programmes, shows, films, television broadcasts; sports reporting. 

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

  

The expressions ‘in particular’, used in the list of goods and services of both parties, and the expression ‘such as’, used in the lists of contested services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

However, the term ‘namely’, used in the lists of contested services, to show the relationship of individual goods and/or services listed after it to a broader category preceding them, is exclusive and restricts the scope of protection only to the goods and/or services specifically listed after them.

 

As a further remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

  

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

 

Contested services in Class 35

The contested information services in relation to updating databases; data recording and processing, namely capturing, collating, systematic ordering of data; computerised file management, in particular of image and sound file; compilation of information into computer databases; systemization of information into computer database; telephone answering (for unavailable subscribers) are identical to the opponent´s office functions in Class 35, since these latter ones constitute a broad category that includes the former.

The contested dissemination of advertising matter, publication of publicity texts, rental of advertising space, sales promotion for others, display, distribution and dissemination of advertising material, namely samples; demonstration of goods; rental of advertising time on communication media; dissemination of advertising information via telematic means; dissemination of advertising information via electronic means, via wireless networks (short or long distance), global communications networks (the internet) or private or restricted access networks (intranets); dissemination of advertising information by telephone, radiotelephone, television, cable or satellite; electronic commerce (e-commerce), namely providing of information on telecommunications goods and services for advertising and/or sales purposes; presentation of goods on communication media, for retail purposes; distribution and dissemination of advertising matter in the context of a loyalty scheme, namely telecommunications apparatus; organization of business operations to obtain customer loyalty; customer loyalty promotion and advertising operations; advertising in the popular and professional press; press advertising services are identical to the opponent´s advertising in Class 35, either because the contested services are covered by the broad category of the opponent´s services, or because they overlap.

The contested dissemination of business information via telematic means; dissemination of business information via electronic means, via wireless networks (short or long distance), global communications networks (the internet) or private or restricted access networks (intranets); dissemination of business information by telephone, radiotelephone, television, cable or satellite are identical to the opponent´s business management and organization consultancy services in Class 35, since latter ones constitute a broad category that includes the contested ones.

The contested organisation of exhibitions and trade fairs for commercial or advertising purposes consist of the arrangement of exhibitions or trade fairs to facilitate or encourage the promotion and sale of the client’s goods and services. These services are normally provided by specialised companies in their specific field. As such, the services in question are to be considered similar to the opponent´s advertising services, since these could be offered to third parties in the form of the organisation, arranging and conducting of an exhibition or trade fair on their behalf (see decision of 01/12/2014, R 557/2014-2, TRITON WATER (fig.) / TRITON COATINGS TRITON (fig.) et al., § 31)

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

In this case, the contested retailing of articles for telephony, telecommunications and radiotelephony, namely retailing of telephones, mobile telephones, smartphones, radiotelephones, multiservice boxes, radio messaging apparatus, apparatus for recording, transmission, reproduction and processing of text, data, sound, images and moving images, domestic digital terminals; electronic commerce (e-commerce), namely retailing, online, of telephones, mobile telephones, smartphones, radiotelephones, multiservice boxes, radio messaging apparatus, apparatus for recording, transmission, reproduction and processing of text, data, sound, images and moving images, domestic digital terminals are similar to at least one of the following goods of the opponent in Class 9: apparatus for recording, receiving, transmission, processing, conversion, output and reproduction of speech, text, sound and images; apparatus, instruments and equipment for telecommunications. The reason for this is that the contested retailing services mentioned above are offered in relation to goods that are identical to at least one of the goods in class 9 of the opponent herein listed. The reason for this identity is that either they are identically mentioned in both lists (including synonyms) or the opponent´s goods constitute broad categories that include the goods in relation to which the contested services are offered.

The contested news clipping services are similar to the opponent´s business management services in Class 35, since they can coincide in purpose and distribution channels/points of sale, can be directed at the same consumers and can originate from the same kind of undertakings.

The contested subscriptions to a telecommunication service; telephone subscriptions; arranging subscriptions to a radiotelephone service; subscriptions to a radio message service; arranging subscriptions to an internet connection offer; arranging subscriptions to a support service for the operation of radiotelephone and telephone goods and services; arranging subscriptions to wireless local area networks; arranging of subscriptions to a centre providing access to a computer network or network for the transmission of data, sound, images or moving images; subscriptions to a database server, subscriptions to a centre providing access to computer or data transmission networks, in particular for world-wide communications (such as the internet), or private or restricted access networks (such as an intranet); electronic newspaper subscriptions; subscriptions to data transmission services; subscriptions to data transmission databases; subscriptions to computer databases; arranging newspaper subscriptions for others; arranging subscriptions to a television channel consist of subscription services, offered in relation to different kinds of goods or services. These services consist of giving consumers access to a good or service regularly, usually for a particular sum of money, although sometimes they are also free (e.g. to build brand loyalty). This kind of services are usually offered by companies different from the ones actually producing the goods or services to which the subscriptions relate. These contested services are offered from business to business, in order to help companies manage the regular sale of goods or services to the companies actually producing/offering them.

The opponent´s business administration services in Class 35 consist of organising people and resources efficiently so as to direct activities towards common goals and objectives. These services enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. These services are rendered by, inter alia, outsourcing companies.

The contested services listed above (i.e. the subscription services) are considered similar to at least a low degree to the opponent´s business administration, since they can coincide in purpose, distribution channels, can be directed at the same consumers and originate from the same kind of undertakings.

The contested consumers (commercial information and advice for -) [consumer advice shop] consist of consumer information services. As such, they are similar to a low degree to the opponent´s advertising services in Class 35, since they can be directed at the same consumers and can coincide in purpose.

Contested services in Class 38 listed above are all identical to the opponent´s telecommunications services in the same class, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include the contested services (e.g. the contested telephone and cellular telephone communications are covered by the opponent´s broad category of telecommunications services)

Contested services in Class 41

The contested information relating to games, entertainment and education; organisation of games, operating lotteries, organisation of competitions with the awarding of prizes (education or entertainment); arranging and conducting of colloquiums, conferences, congresses; organisation and conducting of competitions (education or entertainment); arranging and conducting of educational examinations; organisation of exhibitions for cultural, artistic or educational purposes; television entertainment; radio entertainment; arranging and conducting entertainment, games; entertainer services; tuition, correspondence courses; tuition; practical training demonstrations; workshops (arranging and conducting of -) [training]; recording and processing of images (filming); production of shows and films; videotape editing; editing of radio programmes; editing of television programmes; videotaping; production of audiovisual programmes, shows, films, television broadcasts are identical to at least one of the following services of the opponent in Class 41: teaching; education; entertainment; cultural activities. The reason for identity is that either the same services are found in both lists (including synonyms) or the contested services are covered by at least one of the broad categories of the opponent’s services.

The contested providing museum facilities (presentation, exhibitions) are covered by the opponent´s broad category of cultural activities in Class 41, and therefore, they are considered identical.

The contested rental of rental of sound recordings, video tapes (listed twice) are covered by the opponent’s list of services in Class 41, either identically or by the use of synonyms. Therefore they are considered identical.

The contested rental of audio apparatus, video apparatus; rental of apparatus for recording, reproduction and processing of data, namely CD writers, DVD burners; rental of apparatus for recording sound, images and moving images, namely rental of audio apparatus, video cameras, video recorders, radio and television sets, dictaphones, DVD players/recorders, CD writers, DVD burners, cameras rental of audio apparatus, video cameras are identical to the opponent´s entertainment services, since the contested services consist of the provision of entertainment facilities and, as such, they are frequently offered as part of the opponent´s entertainment services.

The contested recording and processing of sound (recording studios) are identical (synonyms) to the opponent´s recording studio services in the same class.

The contested publication of books are identical to the opponent´s publication of books (other than for advertising purposes) in particular on video and audio topics (other than for advertising purposes) in Class 41, since they are synonym expressions to refer to the same goods, despite the opponent´s services being accompanied by an example (see definition of ‘in particular’ above).

The contested sports reporting can be done in different ways, for instance in paper or via online publications. Therefore, these contested services overlap with the opponent´s publication and issuing of periodicals and further printed matter (other than for advertising purposes) in particular on video and audio topics (other than for advertising purposes), since the content of these latter ones could be related to sports. Therefore, they are considered identical.

The contested booking of seats for shows; organisation of shows are similar to the opponent´s entertainment since they are complementary, coincide in distribution channels/points of sale and are directed at the same consumers.

The contested organisation of sports competitions are similar to the opponent´s entertainment services in the same class, since they can coincide in purpose, coincide in distribution channels and can be directed at the same consumers.

The contested library services; mobile library services are similar to the opponent´s teaching services in Class 41, since they can coincide in purpose, distribution channels, can be directed at the same consumers and can originate from the same kind of undertakings.

For the sake of completeness, the Opposition Division notes that the applicant has not submitted any arguments or evidence that could contradict the findings above.

 

b) Relevant public — degree of attention

 

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

 

In the present case, the goods and services found to be identical or similar (to varying degrees) are directed in part at the public at large (e.g. booking of seats for shows) and in part also at professionals (e.g. production of films).

 

The degree of attention paid during their purchase is deemed to vary from average to high. A high degree of attention is likely to be paid in relation to part of the goods and services, for instance those that are not frequently purchased and that can be expensive (e.g. production of films).

 

c) The signs

 

Earlier trade mark	Contested sign

 

 

The relevant territory is Germany.

 

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

The element ‘sport’ in both marks is the German word used to refer to activities that need a physical effort and skill, frequently in the form of games or other competitive leisure activities.

The distinctiveness of the term ‘sport’ in both marks varies depending on the specific goods or services in relation to which it is used. The word ‘sport’ is distinctive in relation to the goods and/or services for which it is not perceived as descriptive or allusive of their characteristics (e.g. the opponent´s office functions). However, ‘sport’ is of lower than average distinctive character when used in relation to the goods or services that could be somehow related to sports, and in relation to which it can be seen as allusive of their characteristics (e.g. the opponent´s entertainment services), since the word ‘sport’ could be seen as indicating that the entertainment services are somehow related to sports. Lastly, the word ‘sport’ is void of distinctive character in relation to some of the contested services, namely those clearly related to the definition of ‘sport’ (see definition above), and in relation to which the term is clearly descriptive (e.g. the contested dissemination of sporting information on global communications networks (the internet); organisation of sports competitions; sports reporting). However, it must be noted that the word ‘sport’ is not totally void of distinctive character in relation to any of the goods or services of the opponent, in relation to which identity or similarity (to varying degrees) with the contested ones has been found.

The number ‘1’ in both marks can be seen, as claimed by the applicant, as evocative of the quality of the goods or services (being the first in ranking compared to others), and therefore of positive characteristics of the goods (e.g. quality) or as a reference to the number of the channel (e.g. television channel) where the content can be found. It is therefore of lower than average distinctive character.

The applicant argues that consumers will perceive letters ‘SFR’ in the contested sign as the acronym for the applicant´s name. However, the Opposition Division considers that, unless evidence was filed proving the contrary, consumers in the relevant territory cannot be expected to know that letters ‘SFR’ stand for the applicant’s name. In this case, the applicant has not submitted evidence that could demonstrate his claim, and it is therefore considered that the relevant public will perceive ‘SFR’ as a meaningless combination of letters, of average distinctive character.

The red square in the contested sign is merely decorative and of, at most, a low degree of distinctive character. It is a common shape merely used as a frame or background of the letters ‘SFR’. Therefore, this element is of limited impact, contrary to the applicant´s arguments in this regard, claiming that this element will catch consumer´s attention.

Furthermore, 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 red square of the contested sign is of limited impact, also for this reason.

The signs do not have any element more dominant (visually eye-catching) than others.

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. In the contested sign the first element read and pronounced is ‘SFR’. However, the element ‘sport1’ on the right side of the mark is depicted in black bold letters and is bigger than ‘SFR’. This is likely to lead consumers to focus their attention on this element with the same intensity than to ‘SFR’.

 

Visually, the signs coincide in the combination of elements ‘sport 1 / SPORT 1’, which constitutes the entire earlier mark, and one part of the contested sign. This coinciding combination is depicted in very similar ways in both marks, namely with regular dark letters, and the number ‘1’ is depicted in both marks in a different colour than the word preceding it, and in italics.

The signs differ in colour and in the distinctive element ‘SFR’ inside a red frame or background in the contested sign. As explained above, the square is of, at most, a low degree of distinctive character.

Taking into account the explanations as regards the distinctiveness of the elements in the marks, it is considered that the signs are visually similar to, at least, a low degree.

 

Aurally, the signs coincide in the sound of the coinciding combination of elements ‘s-p-o-r-t’ and ‘1’, which constitutes the entire earlier mark, and one part of the contested sign. The signs differ in the pronunciation of ‘SFR’ of the contested sign.

Taking into account the explanations as regards the distinctiveness of the elements in the marks, it is considered that the signs are aurally similar to, at least, a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as having the concept of the combination of elements ‘sport’ and of ‘1’.

Taking into account the explanations as regards the distinctiveness of the elements in the marks, it is considered that the signs are conceptually similar to, at least, an average degree.

 

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

 

d) Distinctiveness of the earlier mark

 

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

  

The opponent claims the following:

“The Opponent's Trademarks enjoy enhanced distinctiveness in particular due to their intensity and continuity of use and the scope of revenue with the products distributed and services provided under the Opponent's Trademarks.”

“due to the intensive use of the Opponent's Trademarks in regard to the goods and services the sign is protected for, the continuous increase of the Opponent as well as the geographic wide spread with goods and services throughout Germany, Austria and Switzerland the degree of distinctiveness of the Opponent's Trademarks has been enhanced.”

And, after the substantiation period, it explained the following:

“The Opponent's Trademarks enjoy an enhanced degree of distinctiveness regarding the relevant services in classes 35, 38 and 41 in particular due to their intensity and continuity of use and the scope of revenue with the products distributed and services provided under the Opponent's Trademarks.”

Therefore, according to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in the course of the years in, inter alia, Germany, and in connection with all the goods and services for which it is registered.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence on several dates, namely 24/09/2019 (i.e. within the substantiation period) and on 18/05/2020 (i.e. after the substantiation period). The Opposition Division will only examine the evidence submitted on 24/09/2020, and will only refer to the rest of evidence if necessary.

 

On 24/09/2019, the opponent submitted, inter alia, the following evidence:

• ANNEX 3 – screenshot from the opponent´s website, https://www.sport1.de, in German (with translation) published on 25/1/2019. The sign appears used as part of the opponent´s company name, and within the text as a trade mark.

The text explains that “The leading 360º German-language sports platform focuses on high-quality live sports, dedicated competence in sports and a substantiated and entertaining way of reporting.”

• ANNEX 4 – screenshot from the opponent´s website, https://www.sport1.de, in German dated June 2019. The screenshot shows the programming of various sports-related TV shows in various sport1 channels.

The mark is used in word and figurative format, and sometimes with little variations, for instance as follows:

In relation to this document, the opponent explained the following:

“By using the Opponent's Trademarks the Opponent operates in a variety of different areas and channels of the media sector, e.g. TV, online, mobile, audio, social media, live stream, TV, video with different content (various kinds of sports programs, sports reporting, teleshopping, documentaries, car broadcasts and sport clips).”

• ANNEX 5 - Annual financial statement of the year 2016 in German, accompanied by an English translation of the main parts of the German document. The title of the document is “Annual report”, “Status report for business year 2016 of Sport1 GmbH” and the information it contains refers mainly to the territory of Germany. The source is https://www.bundesanzeiger.de/. Some of the sources for the information contained in the document are “AG F/Gf K-Fernsehforschung ; TV Scope, 0 1 I 0 1 120 1 6 to 31 I 1 2120 16 ; SPO RT 1 media research”, or “Triton Digital, January to December 2015 I 2016” according to the document itself.

The document contains, inter alia, the following information (exact figures and percentages have been omitted), accompanied by tables and charts where the percentages and figures are shown.

“2.3.3 Analysis of non-financial performance indicators

European Gup brings new broadcast records - ln 2016, SPORT1 achieved outstanding ratings on free TV with the Live broadcasts of the UEFA Europa League: The two quarter-final matches between Dortmund and Liverpool in Aprilwere marked by (…) million and (…) million viewers on average (…) the previous record of (…) million viewers in 1993 significantly exceeded. ln addition to reach, the market shares (…) percent and (…) percent also marked new record values since the start of broadcasting. In addition to the UEFA Europa League, the Bundesliga and 2nd league formats such as "Der Volkswagen Doppelpass" and "Hattrick Live", the live broadcasts of the lce Hockey World Championship and the Darts World Championship belonged also to the program highlights with Reach of well over (…) million viewers in some cases. ln 2016, SPORT1's transmissions reached a total of more than 30 times an average of over (…) million viewers”

“Market share stable despite EM and Olympics - Thanks to its attractive programming portfolio, SPORT1 was able to maintain its market share in free TV despite the Competition from the European Football Championships and the Summer Olympics is on a par with (…) in terms of market share, and with the (…) year old men (…) only slightly below the previous year's level”

The document also contains information as regards the use of the earlier mark in relation to services such as Pay-TV, the services in the mobile segment, apps, mobile website, development of video downloads, SPORT1.fm streaming sessions (radio) and of the significant number of website/page visits and impressions. Some of this content is the following:

“Pay-TV penetration remains at a high level - The pay-TV channel Sport1+ recorded approx. (…) % as of December 31 ,2016. million subscribers compared to approximately 2.04 million subscribers at the end of 2015”

“Sustained increase in cumulative online and mobile reach - with an average of (…) million page impressions (Pls) and (…) million visits per month, SPORT1 increased its cumulative online and mobile reach for the full year 2016 from (…). Above all, the mobile sector, and editorially the European Handball Championships, the UEFA Europa League, the UEFA EURO 2016rM in France, the Summer Olympics in Rio and the Darts World Cup in December have contributed to this positive development”

“Continuous growth in the mobile segment - with an average of (…) million Pls per month (…), growth in the mobile segment continued in 2016. The positive Development in the mobile segment is also attributable to the optimization of SPORT1's apps and mobile website”

• ANNEX 6 - Extracts from the opponent´s website, www.sport1.de, in German, and dated September 2019. The document shows the opponent's trade marks being used online, next to the different tabs in which the content of the website is distributed (i.e. per sport, such as football, motorsport, etc.) and next to what are called “MIT Videos” of sports-related content. The website of the opponent shows that also ‘LIVE’, ‘TV’, ‘VIDEOS’ and ‘Shop’ are available.

• ANNEX 7 – Table with figures and market shares for the whole year 2016 and under the title ‘Hitliste SPORT1 2016’. The source of the information is AGF in cooperation with GfK, TV Scope. According to the opponent, the document shows "Figures about market shares and details about market leadership of the Opponent by using the Opponent's Trademarks in the field of sports TV shows and sports platforms on the Reporting Date”.

The document shows the overall views and the number of viewers in millions, and in relation to some of the broadcasts, there is a significant market share (e.g. over 20%). The broadcasts are all clearly related to the fields of sports, including the broadcast of football games and other competitions, such as the ‘Darts World Championships’.

• ANNEX 8 – lnvoices from different dates of 2016. The documents are in German, and accompanied by translations. The name of the opponent appears in the invoices as one of the parties involved in the sale, and both parties in the invoices have their addresses in Germany. The earlier mark is used in word format as part of the opponent´s name and together with some of the goods/services in relation to which the invoices are issued. In some cases, the earlier mark is used together with small additional elements, for instance ‘Sport1+’ or ‘Sport HD Plus’.

The invoices were issued in relation to: Charges feeding in Sport1 + September 2016, Feeding feed Digital SD, Feeding fee digitat HD, Feeding fee analog, Sport1 HD Plus Kanal inclusive transmission, Signal receplion (SDl, ASl. TSoIP), Digital Uplink ry HD-Quality 6, Opta & Omnisport Servicas - Ssptember 2016.

The opponent explains that the invoices were issued by the opponent to customers/business partners or from customers/business partners to the opponent in the area of sports TV broadcasts and sports platforms.

• ANNEX 9 - Pay-TV License Agreement. Although one of the parties of the agreement has been deleted for confidentiality purposes, the opponent explains that it is a license agreement between the opponent and an Austrian company in connection with the broadcasting of sports TV programs in Austria dated 30 July 2013 which is still in force.

The agreement describes the content of the TV programs being licensed, and which are all related to different sports. The TV channels are meant to broadcast sports games or competitions, as well as sports-related programs. The license agreement also refers to ‘Video on-demand’, ‘Delivery ofChanncl and VoD Programs’, ‘Maintennnce’, and establishes the conditions for marketing and advertising within the TV channels.

The earlier mark is used, either as such or together with small additional elements, for instance ‘Sport1+’ or ‘Sport1 US’.

The opponent also includes the following claim: ”ln addition, the enhanced distinctiveness of the Opponent's Trademarks can be assumed by the fact that several word trademarks ‘sport1’ have been registered for the Opponent, e.g.: ‘Sport1 - Das Sport Fernsehen’ (DE 302009067324), ’SPORT1 +’ (DE 302010041512)’ and that ‘As already mentioned in the Statement of Grounds numerous other trademarks containing the element ‘sport1’ are registered in favour of the Opponent, including: Word trademark 'SPORT1 +’ (DE 30 2010 041 512); Word trademark ‘Sport1 - Das Sport Fernsehen’ (DE 30 2009 067 324); Word trademark ‘SPORT1 Wetten’ (DE 30 2011 035 145). Figurative trademark 'SPORT1 HD' (DE 3020130044649).”

The documents submitted, overall, and especially the data contained in Annexes 5 and 7 (e.g. market share figures (percentages) or the figures about the number of viewers (in millions)), clearly show that the earlier mark is well positioned in the relevant market sector at least in the territory of Germany. It appears to have a significant presence in relation to the production and broadcasting of TV shows and videos, Pay-TV services, streaming sessions and a significant presence on Internet, as well in the mobile segment. It is relevant to note that according to the information in Annexes 5 and 7, the most relevant information contained in them originates from companies different from the opponent, referred to as ‘the source/s’.

The type of TV shows broadcasted and the videos produced and broadcasted by the opponent, or that the opponent has made available online, are clearly related to entertainment, namely sports entertainment. This evidence, together with the website screenshots of the opponent, which show that the use of the earlier mark has continued at least until 2019, and the number of website views, clearly shows that the earlier mark is widely used.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark No 30 2013 004 460 has acquired a high degree of distinctiveness through its use in Germany in relation to, at least, part of the services, namely

Class 38: Telecommunications; radio and television broadcasts/programmes via wireless and cable networks.

Class 41: Entertainment.

The earlier mark has a low to average degree of distinctive character in relation to the rest of goods and services, for which the evidence has not demonstrated that it has acquired a high degree of distinctiveness through its use. This is based on the fact that none of the elements forming it are totally void of distinctive character in relation to them, but at least of a lower than average degree (see description of the elements forming the signs in section c) above) and to the particular way in which the elements are positioned.

e) Global assessment, other arguments and conclusion

The goods and services compared are partly identical and partly similar (to varying degrees). They are directed in part at the public at large and in part also at professionals. The degree of attention paid during their purchase is deemed to vary from average to high.

The signs are visually and aurally similar to at least a low degree and conceptually similar to, at least, an average degree. The similarities are found in the combination of elements ‘sport 1’, which are the only elements forming the earlier mark, and the second element of the contested sign. This coinciding combination is depicted in very similar ways in both marks, namely with regular dark letters and the number ‘1’ depicted in both marks in a different colour than the word preceding it, and in italics.

The earlier mark has acquired high degree of distinctiveness through its use in relation of part of the services (See previous section) and it has a low to average degree of distinctive character in relation to the rest of goods and services. As explained in section c), the similarities between the marks are found in the combination of ‘sport’ and ‘1’, which is extremely similarly depicted in both marks.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

 

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/services covered are from the same or economically linked undertakings.

Indeed, in this case 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49), and might not even recall the differences in colour and typeface between the combination of elements ‘sport 1’ in both marks, due to the imperfect recollection explained above.

 

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.

 

The previous cases referred to by the applicant, were opposition decision No  B 1 678 708 and opposition decision No B 1 678 955. These cases are similar to the one herein analysed to the extent that they involve the same or similar signs. However, the goods and services in relation to which identity or similarity has been considered to exist are not the same. Therefore, since the analysis of the distinctiveness of the elements forming the marks must be carried out in relation to the specific goods and/or services in relation to which the mark is used, the same reasoning cannot be followed or the same outcome necessarily reached in the present case.

In addition, in opposition decision No  B 1 678 708, the Opposition Division did not consider necessary to enter into analyzing the evidence submitted by the opponent to demonstrate that the earlier mark/s had acquired enhanced distinctiveness through use, and in opposition decision No B 1 678 955 it was considered that the evidence submitted was not sufficient to prove the opponent´s claim in this regard. However, in the present case, the Opposition Division has considered that the opponent has demonstrated that earlier trade mark No 30 2013 004 460 has acquired a high degree of distinctiveness through its use in Germany in relation to, at least, part of the services, which has been decisive for the outcome reached.

Accordingly, the cases referred to by the applicant are not relevant to the present proceedings, as far as the same reasoning cannot be followed or the same outcome reached.

 

Considering all the above, there is a likelihood of confusion on the part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s national trade mark registration (Germany) No 30 2013 004 460. It follows that the contested trade mark must be rejected for all the contested services.

  

As this earlier German trade mark registration No 30 2013 004 460 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Also, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(4) EUTMR.

Lastly, there is no need to enter into the examination of the evidence submitted by the opponent on 18/05/2020 referred to in section d) above.

 

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, 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

 

 

Eva Inés PÉREZ SANTONJA

María del Carmen SUCH SANCHEZ

Helen Louise MOSBACK

  

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.