OPPOSITION No B 2 910 068

Ticketac Société par Actions Simplifiées, 14, Boulevard Hausmann, 75009, Paris, France (opponent), represented by Marion Courtier, 14, Boulevard Haussmann, 75009, Paris, France (employee representative)

a g a i n s t

Tictactickets S.L., Consell de Cent 79 3º 1º, 08015 Barcelona, Spain (applicant), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative).

On 21/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 910 068 is upheld for all the contested services.

2. European Union trade mark application No 16 393 209 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 393 209 . The opposition is based on, inter alia, French trade mark registration No 43 268 245 ‘Ticketac’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

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 French trade mark registration No 43 268 245 ‘Ticketac’.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The date of filing of the contested application is 22/02/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 22/02/2012 to 21/02/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 41: Entertainment; sporting and cultural activities; booking of seats for shows; production of shows; theatre productions.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 18/01/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 30/03/2018 to submit evidence of use of the earlier trade mark. On 30/03/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Exhibit 1: The opponent’s certificate of incorporation. It is in French and is dated 15/03/2018.

Exhibit 2: An extract from the website www.whois.com. It confirms that the domain ticketac.com was registered on 15/01/2004 on behalf of the opponent.

Exhibit 3: Examples of email exchanges between the opponent’s customer service desk and its clients, dated from 22/05/2014 to 06/02/2017, with regard to the sale of tickets for shows and events performed in France. These emails are in French (a translation into English was submitted) and the prices are given in euros. The documents feature the earlier trade mark (as a word mark) and also the following signs: and .

Exhibit 4: extracts from Figaro Scope, a supplement to the French newspaper Le Figaro that provides once-a-week coverage of art and theatre events and leisure and entertainment activities that are held, inter alia, in France. These extracts are dated from April 2013 to November 2016. They are in French and show advertisements for the sale of tickets. The extracts include the following signs: , , and .

Exhibit 5: A gift card valid until 10/12/2015 to be used to buy tickets on www.ticketac.com. It is in French (a translation into English was submitted) and bears the following trade marks: and .

Exhibit 6: Booklets containing, inter alia, prices for placing advertisements on the website www.ticketac.com. These documents are dated 2013, 2014 and 2016. The documents also contain information on the extent of use of this website. For instance, in 2013, the website received more than 600 000 visits per month, there were 850 000 subscribers to the Ticketac newsletter and 800 000 tickets were sold. The documents feature the earlier trade mark (as a word mark) and also the following signs: , , and .

Exhibit 7: A press release dated 13/01/2015 from the French website www.magestionbilletterie.com, which provides information on the ticketing system and ticket companies in France. According to this document, the opponent has been selling tickets for events performed in France since 2004. The press release features the earlier trade mark (as a word mark) and also the following trade marks: and .

Exhibit 8: Examples of order confirmations, invoices and credit notes dated between May 2012 and April 2016 and addressed to clients in France, Switzerland and Belgium. These documents are in French and the prices are given in euros. These documents concern various events held in France. They feature the following trade marks: and .

Exhibit 9: Extracts from the opponent’s official Twitter and Facebook pages. They are in French and are dated between 2012 and 2017. The prices are given in euros and they concern the opponent’s services relating to sales of tickets for events performed in France. The documents feature the earlier trade mark (as a word mark) and also the following trade marks: and .

Exhibit 10: An article from the website www.francetvinfo.fr, published on 06/12/2016, regarding the opponent’s services, namely sales of tickets. It is entitled ‘Le success des sites de reservation de spectacles’; it is in French and it includes a reference to the trade mark in question.

Exhibit 11: Examples of newsletters, dated between 2015 and 2017, sent to the opponent’s clients. They are in French. They concern various events held in France and the prices are given in euros. The newsletters feature the following trade marks: , and .

Assessment of the evidence

The evidence submitted as proof of use can include documents such as invoices, price lists, affidavits, catalogues, surveys, turnover and sales figures, press cuttings, samples of products/packaging, advertisements, offers made to potential clients and other documents confirming that the mark has been genuinely used on the market. The opponent submitted some of the aforesaid documents, such as invoices, emails, press articles, a gift card, advertisements, newsletters and extracts from official social media pages (Facebook and Twitter), all featuring the trade mark in question. It should be emphasised that the final outcome depends on the overall assessment of the evidence in the particular case.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The applicant argues that some of the evidence originates from the opponent. According to the opponent, the probative value of this kind of evidence, namely evidence originating from the interested party, is generally given less weight than that of 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 material does not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such material has to be considered as having less probative value than physical evidence, for example promotional materials or invoices (e.g. Exhibits 3, 5, 8 and 11) or evidence originating from independent sources (e.g. Exhibits 4, 7 and 10). Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Place of use

The documents (e.g. Exhibits 3, 4, 6, 7 and 8) show that the place of use was predominantly France. This can be inferred from the language of these documents, that is, French, the currency mentioned (euros) and some addresses in France. According to the evidence, all of the events for which tickets were either offered or sold took place in France. Therefore, the evidence relates to the relevant territory.

Time of use

The majority of the decisive evidence is dated within the relevant period. Therefore, the evidence relates to the relevant time.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely Exhibits 3-11, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. According to the evidence, the opponent registered its website www.ticketac.com in 2004 and, since then, it has been successfully selling tickets for events performed in France. The opponent’s success in attracting customers and selling tickets presented by it (Exhibit 6) has been confirmed by an independent source (Exhibit 10). Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

Nature of use: use as a trade mark and use of the mark as registered

Nature of use requires, inter alia, that the trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

The evidence shows that the mark has been used in accordance with its function and as registered for all the services for which it is registered. It concerns the opponent’s activities in the field of offering and selling tickets for various events. The Opposition Division is of the opinion that the evidence shows that the earlier trade mark was used in such a way as to establish a clear link between the services and the company responsible for their marketing. Therefore, the evidence demonstrates that the opponent’s mark was used to identify the commercial origin of the services in question.

In the context of Rule 22(3) EUTMIR (in the version in force before 01/10/2017, now Article 10(3) EUTMDR), the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR (in the version in force before 01/10/2017, now Article 18(1)(a) EUTMR), and of its use for the goods and services for which it is registered.

The mark ‘Ticketac’ is registered as a word mark and is used by the opponent in this form and also in a figurative form as shown above (e.g. and ).

The applicant argues that the evidence shows, however, that the opponent used the earlier mark in combination with other words and figurative elements. According to the applicant, some of the materials included in the evidence show that the opponent used the other earlier trade mark invoked, namely French trade mark registration No 93 643 985 . It should be noted, however, that the earlier trade mark (French trade mark registration No 43 268 245 ‘Ticketac’), which is a word mark, can be used in any form. It is often necessary to use a particular layout or to include additional verbal or figurative elements in a word mark to attract the public’s attention. In the present case, the earlier trade mark is clearly perceptible and the additional verbal elements, for instance ‘.com.’ and ‘Sortez malin!’, are either descriptive or laudatory. The use of a registered word mark together with these kinds of indications in general constitutes not use of a variant but use of the mark itself. Consequently, this use of the mark does not alter its distinctive character. Therefore, it is considered that the opponent’s trade mark, ‘Ticketac’, was used as registered.

Overall assessment

In the present case, the Opposition Division is of the opinion that the evidence, assessed as a whole, is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory for some of the services for which it is registered.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence proves use only for booking of seats for shows (Class 41).

The opponent did not submit any evidence regarding the other services on which the opposition is based, namely entertainment; sporting and cultural activities; production of shows; theatre productions in Class 41.

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) for the abovementioned services.

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 41: Booking of seats for shows.

The contested services are the following:

Class 41: Online sale of tickets for sporting, cultural and entertainment events.

The contested online sale of tickets for sporting, cultural and entertainment events are included in the broad category of the opponent’s booking of seats for shows. Therefore, they are identical.

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 the public at large. The degree of attention is considered average.

3. The signs

Ticketac
Earlier trade mark	Contested sign

The relevant territory is France.

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

The earlier mark is a word mark, ‘Ticketac’. In the case of word marks, it is the word as such that is protected and not its written form.

The contested sign is a figurative sign consisting of the words ‘tictac’ and ‘tickets.es’. The latter is placed below the former. The verbal elements are depicted in standard lower case letters. The verbal elements ‘tictac’ and ‘.es’ are in black, whereas the word ‘tickets’ is in pink. All of the verbal elements are placed against a rectangle with slightly rounded corners and angled edges. The rectangle is in white, but its edges are partly in black and partly in pink. The background is likely to be perceived as a ticket, as it features a barcode.

The word ‘Ticketac’ as such has no meaning in French and is therefore distinctive for the services in question. Due to its pronunciation, it may be associated with the word ‘tictac’, as the letters ‘**ck****’ will be pronounced as a single letter ‘k’ and the letter ‘****e***’ will be hardly audible.

The word ‘tictac’ of the contested sign in French means ‘a uniform noise resulting from regular movement, in particular of a clock’ (information extracted from Larousse Dictionary on 05/11/2018 at www.larousse.fr). It has no direct meaning for the services in question and is therefore distinctive.

The word ‘tickets’ of the contested sign will be perceived as the plural form of the French word ‘ticket’, that is, a small, official piece of paper or card which shows that you have paid to enter a place such as a theatre, a cinema or a sports ground.

Bearing in mind that the relevant services are online sale of tickets for sporting, cultural and entertainment events, the word ‘ticket’ is non-distinctive for these services.

Furthermore, the verbal element ‘.es’ of the contested sign is the top-level domain for Spain. Therefore, it is considered a suffix that indicates that the element is a web address. It will be perceived as an indication that the services at issue are available online. Therefore, it is a non-distinctive element of the sign (even taken together with the word ‘ticket’).

The background of the contested sign, featuring a barcode will be perceived as a ticket, and therefore it is non-distinctive.

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. Therefore, the public will focus on the verbal element ‘tictac’ in the contested sign. 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). Taking into account that the verbal elements ‘ticket’ and ‘.es’ of the contested sign are non-distinctive, it is considered that the public will focus its attention on the word ‘tictac’.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘tic**tac’ (earlier mark) / ‘tictac’ (contested sign). However, they differ in the middle letters of the earlier mark, that is, ‘ke’. They also differ in the verbal element ‘ticket.es’ of the contested sign and its figurative elements, as described above. Reference is made to the conclusions reached above regarding the distinctiveness of the elements of the signs.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛tic**tac’, present identically in both signs. As explained above, the letters ‘**ck****’ in the earlier mark will be pronounced as a single letter ‘k’ and the letter ‘****e***’ of this sign will hardly be audible. The pronunciation differs in the sound of the letters ‘tickets.es’ of the contested sign, although they are non-distinctive, as explained above.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, they are conceptually highly similar.

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.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The services are identical and they target the general public, which has an average degree of attention. The signs are visually similar to an average degree, aurally similar to at least an average degree and conceptually highly similar. Furthermore, the earlier mark has a normal degree of distinctiveness.

The only differences between the signs lie in the middle letters of the earlier mark, namely ‘***ke***’, and the verbal element ‘ticket.es’ of the contested sign, as well as in the contested sign’s figurative elements. However, as explained above, the letters ‘**ck****’ of the earlier mark will be pronounced as a single letter ‘k’ and the letter ‘****e***’ of this sign will hardly be audible, resulting in the pronunciation of the earlier mark being very similar to the pronunciation of the distinctive verbal element ‘tictac’ of the contested sign. Furthermore, as explained above, the verbal element ‘tickets.es’ of the contested sign lacks distinctiveness and its figurative elements are of a decorative nature. These verbal and figurative elements cannot serve as a badge of origin. This makes the signs very similar. The differences between the signs cannot therefore outweigh their aforementioned visual, aural and conceptual similarities.

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).

The applicant refers to previous judgments and decisions of the Office to support its arguments (e.g. 23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65). However, the Office is not bound by its previous decisions or judgments, 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.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, as they concern different factual circumstances, including different trade marks.

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 French trade mark registration No 43 268 245 ‘Ticketac’ (word mark). It follows that the contested trade mark must be rejected for all the contested services.

As earlier French trade mark registration No 43 268 245 ‘Ticketac’ (word mark) 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Irina SOTIROVA

Michal KRUK

Loreto URRACA LUQUE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.