OPPOSITION No B 2 984 311

Zeki Cirak, Bart Verhallenplein 111, 3122 TG Schiedam, Netherlands (opponent), represented by Merkenbureau Bouma B.V., Beurs WTC – Beursplein 37, room 313, 3011 AA Rotterdam, Netherlands (professional representative)

a g a i n s t

020 Vision B.V., Willem Brocadesdreef 172, 2132 PV Hoofddorp, Netherlands (applicant), represented by Rise, Frederik van Eedenplein 4 2106 ED, Heemstede, Netherlands (professional representative).

On 21/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 984 311 is partially upheld, namely for the following contested goods and services:

Class 9: Magnetic data media; electronic publications; tape cassettes; digital audio discs; DVDs; videotapes; digital image and audio files, downloadable from a computer database or the internet.

Class 35: Advertising and advertising agency services; dissemination of advertising matter, advertising messages and promotional material; rental of advertising space; providing advertising space for advertising purposes; office functions relating to orders placed on the internet; advertising for services of others, enabling customers to conveniently view and compare the services of those sellers; merchandising; managing and implementing consumer loyalty schemes and office functions for loyalty schemes based on discounts or incentives; consultancy and information relating to the aforesaid services; including the aforesaid services provided via electronic and telecommunication means, including the internet and mobile telephone networks.

Class 41: Entertainment; cultural activities; entertainment; music festival services; arranging and conducting of concerts; production, arranging and performing of music and dance events, festivals, concerts and other events for entertainment; performing artists, including conducting of music and dance events, festivals, concerts and other events for entertainment; booking of artists for music and dance events, festivals, concerts and other events for entertainment; reservation and booking of tickets for music and dance events, festivals, concerts and other events for entertainment; publishing of books, newspapers, magazines (periodicals), computer software and electronic publications; compiling, producing, editing and executing of interactive audio-visual multimedia productions; provision of information in the field of entertainment; consultancy and information relating to the aforesaid services; including the aforesaid services provided via electronic and telecommunication means, including the internet and mobile telephone networks.

2. European Union trade mark application No 16 950 313 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 950 313 , namely against all the goods and services in Classes 9, 35 and 41. The opposition is based on Benelux trade mark registration No 948 330 . The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods and services

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

Class 16: Printed matter, namely publications, periodicals, magazines, newsletters and books; photographs, transfer printing plates, graphic reproductions, lithographs and process engravings or prints; posters; promotional printed matter; printed programs; pamphlets; office articles (except furniture); illustrations; calendars; writing instruments; music sheets; writing equipment cases; address books; trading cards, other than for games; stickers; paper bags; paper handkerchiefs; newspapers.

Class 35: Advertising; commercial management; business mediation relating to the commercialization of goods or services; arranging and holding of advertising and publicity events; organization of promotional campaigns and activities, including openings, demonstrations and presentations of goods; marketing studies and operations; organization of fairs and exhibitions for commercial and advertising purposes; merchandising.

Class 41: Arranging and holding of musical, sporting, educational, cultural and leisure events, fêtes and events; relaxation; conducting music and entertainment programs, including via radio, television and the Internet; publishing and distribution of books, newspapers, magazines and periodicals, as well as electronic publications; publishing (including via the Internet) of sound and image media, also on data carriers, namely CDs and gramophone records.

The contested goods and services are the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data media; phonograph records; electronic publications; phonograph records; tape cassettes; digital audio discs; DVDs; videotapes; computer programs (software); digital image and audio files, downloadable from a computer database or the internet.

Class 35: Advertising and advertising agency services; dissemination of advertising matter, advertising messages and promotional material; rental of advertising space; providing advertising space for advertising purposes; office functions relating to orders placed on the internet; advertising for services of others, enabling customers to conveniently view and compare the services of those sellers; merchandising; retailing or wholesaling in connection with clothing, footwear, headgear, bags, jewellery, watches, spectacles and sunglasses, cosmetics, umbrellas, playthings, gymnastic and sporting articles, buttons, key rings (trinkets or fobs), apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs, digital image and audio files, downloadable from a computer database or the internet; managing and implementing consumer loyalty schemes and office functions for loyalty schemes based on discounts or incentives; consultancy and information relating to the aforesaid services; including the aforesaid services provided via electronic and telecommunication means, including the internet and mobile telephone networks.

Class 41: Entertainment; cultural activities; entertainment; music festival services; arranging and conducting of concerts; production, arranging and performing of music and dance events, festivals, concerts and other events for entertainment; performing artists, including conducting of music and dance events, festivals, concerts and other events for entertainment; booking of artists for music and dance events, festivals, concerts and other events for entertainment; reservation and booking of tickets for music and dance events, festivals, concerts and other events for entertainment; publishing of books, newspapers, magazines (periodicals), computer software and electronic publications; compiling, producing, editing and executing of interactive audio-visual multimedia productions; provision of information in the field of entertainment; consultancy and information relating to the aforesaid services; including the aforesaid services provided via electronic and telecommunication means, including the internet and mobile telephone networks.

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 goods in Class 9

The contested magnetic data media; electronic publications; audio files, downloadable from a computer database or the internet; tape cassettes; digital audio discs; DVDs; videotapes are similar to the opponent’s printed matter, namely publications, periodicals, magazines, newsletters and books because they have the same purpose, are in competition and coincide in end user and producer.

The contested digital image, downloadable from a computer database or the internet are similar to the opponent’s publishing (including via the Internet) of image media because they are complementary and coincide in distribution channels, end user and producer.

The contested apparatus for recording, transmission or reproduction of sound or images; phonograph records (listed twice); computer programs (software) are dissimilar to all the goods and services covered by the earlier right because they have nothing in common, since they are of a different nature and purpose, do not follow the same method of use, are neither complementary nor in competition, do not share the same distribution channels and are produced by different companies.

Contested services in Class 35

Merchandising is identically contained in both lists of services (including synonyms).

The contested advertising and advertising agency services; dissemination of advertising matter, advertising messages and promotional material; rental of advertising space; providing advertising space for advertising purposes; advertising for services of others, enabling customers to conveniently view and compare the services of those sellers; managing and implementing consumer loyalty schemes and office functions for loyalty schemes based on discounts or incentives are included in or overlap with the broad category of the opponent’s advertising. Therefore, they are identical.

The contested office functions relating to orders placed on the internet are similar to the opponent’s business mediation relating to the commercialization of goods or services because they are complementary and coincide in distribution channels, end user and provider.

The contested retailing or wholesaling in connection with clothing, footwear, headgear, bags, jewellery, watches, spectacles and sunglasses, cosmetics, umbrellas, playthings, gymnastic and sporting articles, buttons, key rings (trinkets or fobs), apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs, digital image and audio files, downloadable from a computer database or the internet are dissimilar to all goods covered by the earlier right because they have nothing in common. Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale). Retail and wholesale services relating to the sale of particular goods and other goods are not similar. In principle, goods are not similar to services. Too broad a protection would be given to retail or wholesale services if similarity were found even where the goods sold at retail were highly similar to the goods covered by the other mark.

These contested retailing or wholesaling services are also dissimilar to all the services covered by the earlier right because, while the contested services relate to the sale of goods to the public in relatively small quantities for use or consumption rather than for resale, the opponents’ services relate to the provision of advertising and marketing services or to the organisation of events and publication or distribution services.

Consultancy and information relating to the aforesaid services refer to providing a user with materials (general or specific) about a matter or service and to providing advice tailored to the circumstances or needs of a user and recommending specific courses of action for the user. These services are similar to the opponent’s services in Class 35 that are similar or identical to the contested services in Class 35, since they are complementary and coincide in distribution channels, end user and provider.

The fact that the aforesaid services can be also provided via electronic and telecommunication means, including the internet and mobile telephone networks does not affect the comparison.

Contested services in Class 41

The contested entertainment (listed twice); provision of information in the field of entertainment include, as a broader category, the opponent’s conducting music and entertainment programs. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

The contested cultural activities; music festival services; arranging and conducting of concerts; production, arranging and performing of music and dance events, festivals, concerts and other events for entertainment; performing artists, including conducting of music and dance events, festivals, concerts and other events for entertainment; booking of artists for music and dance events, festivals, concerts and other events for entertainment; reservation and booking of tickets for music and dance events, festivals, concerts and other events for entertainment are included in the broad category of the opponent’s arranging and holding of musical, sporting, educational, cultural and leisure events, fêtes and events. Therefore, they are identical.

The contested publishing of books, newspapers, magazines (periodicals), computer software and electronic publications overlap with the opponent’s publishing (including via the Internet) of image media. Therefore, they are identical.

The contested compiling, producing, editing and executing of interactive audio-visual multimedia productions are similar to a high degree to the opponent’s publishing (including via the Internet) of sound and image media because they are complementary and coincide in distribution channels, end user and provider.

Consultancy and information relating to the aforesaid services refer to providing a user with materials (general or specific) about a matter or service and to providing advice tailored to the circumstances or needs of a user and recommending specific courses of action for the user. These services are identical or similar to the opponent’s services in Class 41 that are identical or similar to the contested services in Class 41, since they are complementary and coincide in distribution channels, end user and provider.

The fact that the aforesaid services can be also provided via electronic and telecommunication means, including the internet and mobile telephone networks does not affect the comparison.

2. Relevant public — degree of attention

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

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

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase, their price, and their terms and conditions.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 figurative trade mark in a golden colour formed by the word ‘ESTIVAL’ preceded by an inverted triangle that could be perceived as a ‘V’ with its top part closed. Part of the public may associate it with the English, Dutch and German word ‘FESTIVAL’ or the French ‘FESTIVALE’ as ‘[a]n organized series of concerts, plays, or films, typically one held annually in the same place’ (information extracted from Oxford Dictionary on 11/01/2019 at https://en.oxforddictionaries.com/definition/festival). In that case it might be allusive since it will refer to some of the relevant services (namely, services in Class 41) and will accordingly have a degree of distinctiveness lower than average, while it will have an average degree of distinctiveness for the rest of the goods and services. At the top left of the sign a spiral-like figurative element unfolds towards the right, winding through two almost imperceptible words (due to their size and contrast with the background), ‘VELVET’ and ‘VILLAINE’, and then down and back through the letters ‘a’ and ‘v’ of the ‘(V)ESTIVAL’ element. The words ‘VELVET’ and ‘VILLAINE’ appear in smaller and thinner letters compared to those used for ‘(V)ESTIVAL’, and since they are not noticeable at first sight they are considered negligible elements. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. As ‘VELVET’ and ‘VILLAINE’ are likely to be disregarded by the relevant public, they will not be taken into consideration for the comparison of the signs. Consequently, the most dominant element of the earlier mark is the word ‘(V)ESTIVAL’.

The contested sign is also a figurative mark formed by the word ‘VESTIVAL’ depicted in a pink bold round-shaped upper-case fonts, with the two letters ‘V’ represented by inverted triangles with a white decorative element on top imitating drops running down. It may also be associated with the word ‘FESTIVAL’, in which case it will also be allusive in relation to some of the relevant services (namely, services in Class 41) and will accordingly have a lower than average degree of distinctiveness for these, while it will have an average degree of distinctiveness for the rest of the goods and services.

Visually, the signs coincide in the sequence ‘ESTIVAL’ and in the shape of the first element (an inverted triangle) that will be perceived as a ‘V’ in the contested sign and that, for part of the public, will also be observed as such in the earlier sign. The signs differ in their graphical display and colours. However, since the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, the signs are visually similar to an average degree. 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).

Aurally, the signs coincide in the sequence ‘ESTIVAL’ and for the part of the public that will perceive the inverted triangle at the beginning of both signs as a ‘V’ they will coincide in the sound of all the letters. Therefore, the signs are aurally highly similar for part of the public and identical for the other part.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the public, the signs will be associated with the same meaning, in which case the signs will be conceptually identical, while for the other part of the public the signs will not be associated with any meaning and accordingly the conceptual comparison is not possible.

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. The distinctiveness of the earlier mark must be seen as normal despite its allusive connotation for some of the services in question, namely in Class 41, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

In the present case, the goods and services are identical and similar to different degrees. The relevant goods and services target the public at large and the services are also directed at business customers. The public’s degree of attention may vary from average to high. Furthermore, the earlier mark has an average degree of distinctiveness.

The signs are visually similar to an average degree, aurally highly similar for part of the public and identical for the other part that will see the inverted triangle of the earlier sign as a ‘V’, and conceptually identical for part of the public and not conceptually comparable for the other part.

There is a likelihood of confusion because the differences between the signs are confined to negligible elements (the words ‘VELVET’ and ‘VILLAINE’) and secondary aspects (the visual display of the signs). Moreover, the signs coincide in their verbal elements for part of the public and in seven out of eight letters for the other part.

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).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 948 330.

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

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ioana MOISESCU

Paloma PERTUSA MARTÍNEZ

Birgit FILTENBORG

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.