OPPOSITION Nо B 3 074 078

 

Groupe Canal+, 1, Place du Spectacle, 92130 Issy-les-Moulineaux, France (opponent), represented by Santarelli, 49, Avenue des Champs-Elysées, 75008 Paris, France (professional representative)

a g a i n s t

Mitteldeutscher Rundfunk (Anstalt des öffentlichen Rechts), Kantstr. 71-73, 04275 Leipzig, Germany (applicant), represented by Bettina Krause, Hauptstr. 23, 82327 Tutzing, Germany (professional representative).

On 20/04/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 074 078 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

REASONS

 

On 23/01/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 040 395 (figurative mark). The opposition is based on international trade mark registration No 1 025 864 designating the European Union and French trade mark registration No 3 636 873, both for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 two earlier trade marks. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark No 1 025 864 designating the European Union for the figurative mark .

In decision No 19 851 C before the Office, the rights of the proprietor of the earlier international trade mark registration No 1 025 864 designating the European Union have been declared to be revoked in relation to some of the goods and services for which it was registered. This decision is currently under appeal. The Office also received, on 29/07/2020, an application for declaration of revocation (cancellation proceedings No 45 076 C) directed against all the goods and services of the same international trade mark registration. However, as will be seen below, this has no impact whatsoever on the outcome of the present case, and the examination of the present opposition will proceed on the basis of the list of goods and services that was indicated in the notice of opposition which, for the opponent, is the best light in which the opposition can be examined.

a) The goods and services

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

Class 9: Scientific (other than medical), nautical, surveying, photographic, cinematographic, optical and electro-optical, weighing, measuring, signalling, checking (supervision) and life-saving apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; set-top boxes; electronic information processing apparatus, electric apparatus for measurement and electronic control (inspection); teaching apparatus and instruments; apparatus and instruments for recording, transmitting, reproducing, storing, encrypting, decrypting, transforming and processing sound or images; communication and telecommunication apparatus; audiovisual, telecommunication, telematic, television and remote-controlled appliances and instruments; tape recorders; video recorders, cameras; telephones, mobile telephones; personal organisers (PDAs); electronic agendas; radios, personal stereos; projectors (projection apparatus); antennae, satellite dishes; loud-speaker cabinets, amplifiers; computers, computer screens, computer keyboards, computer peripheral devices, modems, set-top boxes, encoders; devices for providing access and for controlling access to data processing apparatus; authentication apparatus designed for telecommunication networks; apparatus for scrambling signals and for descrambling signals as well as for retransmission; digital terminals; videos; CD-ROMs, recording discs, digital video discs (DVDs), videodiscs and sound discs, digital discs, videotapes; players for CD-ROMs, digital video discs, digital discs, magnetic discs, video and audio discs, digital discs, recording discs; video game cartridges; video game software; video games adapted for use with a television screen; magnetic recording media; magnetic cards, integrated circuit cards (smart cards), electronic cards; integrated circuits and micro circuits; card readers; electronic components; monitors used for displaying data received from a global computer network; automatic vending machines and mechanisms for coin-operated apparatus; calculating machines and data processing apparatus; satellites for telecommunication and scientific purposes; spectacles, spectacle cases, optical goods; integrated circuit cards (smart cards), simultaneous programming and television channel selection devices; electronic guides for tv and radio programmes; apparatus and instruments for television programme selection and programming; interactive television apparatus and instruments; television screens; software (recorded programs); fibre-optic cables and optical cables; electric cells and batteries.

Class 14: Jewellery; jewellery; horological and chronometric instruments; precious metals and their alloys; precious stones; cuff links of precious metal; tie pins; key rings; precious metal boxes; sundials; watches and watch bands, diving watches, watch cases.

Class 16: Paper and cardboard (unworked, semi-worked); stationery goods; printed matter; engraved works of art; lithographic works of art; tickets; photographs; catalogues, newspapers, periodicals, magazines, reviews, books, bookmarkers manuals, scrapbooks, pamphlets; artists' materials; paintbrushes; typewriters and office requisites (except furniture); instructional or teaching material (except apparatus); bags and sachets (envelopes, pouches) of paper and plastics, for packaging; adhesive tapes for stationery or household purposes; subscription cards (non-magnetic); credit cards (non-magnetic); printing type; printing blocks; pens, writing instruments; visiting or business cards, postcards, writing or drawing books, scratch pads; note books; cheque books; cheque-book holders; penholders, nibs, drawing pens; posters; calendars; letter trays; television and radio programme guides; paper table linen and napkins; paper tablecloths; toilet paper; paper handkerchiefs; paper face towels; paper flags; stickers (stationery items); postage stamps; cardboard or paper boxes; envelopes (stationery), announcement cards (stationery); school supplies; letter paper.

Class 18: Leather and imitations of leather; trunks, bags and valises, sports bags, rucksacks, school bags; umbrellas; sunshades, parasols; walking sticks; whips, harness and saddlery; school bags; card cases (notecases), wallets, change purses; key cases.

Class 25: Clothing; sports clothing; tee-shirts; footwear; headgear; leather or imitation leather clothing; belts (clothing); furs (clothing); gloves (clothing); scarves, sashes for wear; neckties; hosiery; socks; slippers; sports, beach and ski footwear; underwear; bathing suits; tights; suits.

Class 28: Games; board games; toys; decorations for Christmas trees (except lighting articles); fishing tackle; balls for games and play balloons; billiard tables, cues or balls; card or board games; ice or roller skates; scooters; sailboards, skateboards or surfboards; rackets; skis; protective paddings (parts of sports suits); video game machines, arcade video games.

Class 34: Smokers' articles; cases, caskets and boxes for cigars, tobacco pipes, cigarettes and matches; smokers' lighters; ashtrays for smokers (not of precious metal).

Class 35: Business consulting; professional assistance and advice in business organization and management for industrial and commercial enterprises; business consulting and information; commercial advice intended for consumers (namely consumer information) related to choice of computer and telecommunication equipment; compiling and organizing data in files; advertising; rental of advertising space; dissemination of advertisements; organization of promotional and advertising operations with a view to developing customer loyalty; drafting of advertising mailing; dissemination of advertising material (leaflets, prospectuses, printed matter, samples); direct mail advertising; arranging of audiovisual programme, audio and radio programme and newspaper subscriptions for others; services of subscription to videograms, phonographic recordings, to all audio and audiovisual media; arranging subscriptions to all kinds of information media, texts, sound and/or images and especially in the form of publications electronic or not, digital, multimedia products; subscription services to a television channel; services of subscription to a telephone or computer (internet) service; publication of advertising texts; radio and television advertising; interactive advertising; business management; business administration; office functions; online advertising on a computer network; business information or inquiries; business research; commercial or industrial management assistance; employment agencies; business or industrial appraisals; accounting; document reproduction; computer file management; database management services; data input and processing services namely data input, compilation and systemization, computer file rental; organization of exhibitions and public events for commercial or advertising purposes; sales promotion for others; marketing research; auctioneering; teleshopping with offer of sales; administrative management of exhibition sites for commercial or advertising purposes; public relations; rental of advertising time on any communication media; retail and wholesale sales of clothing articles, leather goods, jewellery, pens, stationery, games, toys, sports articles; retail and wholesale sale of audiovisual, computer and telecommunications products namely videotapes, televisions, video recorders, personal stereos, tape recorders, radio, high-fidelity (hi-fi) equipment, set-top boxes, mobile telephones, computers, magnetic tapes, record changers (computing), printed circuits, integrated circuits, computer keyboards, compact discs (audio-video), compact optical discs, couplers (data processing equipment), diskettes, magnetic data media, video screens, scanners, printers for use with computers, interfaces for computers, readers (data processing equipment), software (recorded programs), microprocessors, modems, monitors, monitors (computer programs), computers, computer memories, computer peripheral devices, recorded computer programs, processors (central processing units), recorded computer operating programs, chips (integrated circuits), retail sale of aerials; press review services.

Class 38: Telecommunication services; communications via computer terminals or via fibre-optic networks; information on telecommunications; press and information agencies (news); communications via radio, telegraph, telephone or visiophone, by personal stereo, by personal video player, by videophone, by interactive videography via videophone; television broadcasting; information transmission services via data communication networks; sending of messages, telegrams, images, videos, despatches; transmission of data by teletypewriter; teletransmission; television broadcasts, radio broadcasts; programme broadcasting by satellite, cable, via computer networks (especially via the Internet), via radio networks, via wireless networks and by radio relay channels; broadcasting audio, audiovisual, cinematographic and multimedia programmes (texts and/or images (still or moving) and/or sounds musical or not, ringtones) for interactive or other use; electronic display services (telecommunications); rental of telecommunication equipment; rental of remote computing and data communication apparatus namely telephones, facsimile machines, message transmission apparatus, modems, personal stereos; rental of aerials and parabolic aerials; rental of access devices (apparatus) to interactive audiovisual programmes; communications (transmission) over an open global computer network (the Internet) or a closed network (intranets); online downloading services for films and other audio and audiovisual programmes; services transmitting television programmes and selections of channels; provision of access to a computer network; providing connections to telecommunication services, to Internet services and to databases; telecommunications gateway services; services of linking by telecommunications to a global computer network; consulting in telecommunications; services for transmitting and receiving video images via the Internet by means of a computer or a mobile telephone; telephone services; cellular telephone services; cellular telephone communication; radio paging; voicemail, call forwarding, automatic answering machines and electronic mail, electronic message transmission services; video-conferencing services; video messaging services; video-telephone services; services to provide access to the Internet (Internet service providers); electronic correspondence exchange services, electronic mail services, instant electronic messaging services, non-instant electronic message services; information transmission services by means of Internet, extranet and intranet networks; information transmission services by means of secure messaging systems; providing access to electronic conferencing and chat rooms; providing access to Web sites on the Internet containing digital music or any audiovisual work; providing access to telecommunications infrastructures; providing access to search engines on the Internet; rental of access time to telecommunication networks; services for downloading video games and digitized data.

Class 41: Education; providing of training; entertainment; radio and television entertainment on any media namely television set, computer, personal stereo, portable video player, PDA, mobile telephone, computer networks, the Internet; providing recreation facilities; sporting and cultural activities; animal training; production of shows, films, television films, televised broadcasts, reports, debates, video recordings, sound recordings; rental of videograms, films, sound recordings, video tapes; rental of motion pictures; rental of cinematographic projection apparatus, set-top boxes, encoding devices, radio and television sets, audio and video apparatus, cameras, personal stereos, portable video players, theatre scenery and accessories therefor; production of shows, films, audiovisual, radio and multimedia programmes; film studios; organization of competitions, shows, lotteries, and games for education or entertainment; editing of audiovisual, radio and multimedia programmes, texts and/or images, fixed or animated, and/or sounds musical or not, and/or ringtones, for interactive or other use; organization of exhibitions, conferences, seminars for cultural or educational purposes; booking of seats for shows; services provided by news reporters; photographic reporting; videotaping; online game services (from a communication network), gambling services; casino services; editing and publishing of texts (other than advertising texts), multimedia, audio and video media (interactive discs, compact discs, storage discs); electronic publishing of books and periodicals online; publication and loan of books and texts (other than advertising texts); providing electronic publications online; providing cinema facilities; electronic desktop publishing; rental of set-top boxes and all kinds of audiovisual apparatus and instruments.

Class 42: Research and development of new products; technical research; expert reports of engineers, professional consulting in computers, telephony, video programmes, the Internet; services for operating search engines on the Internet; software design, development, updating and rental; consulting concerning computers and concerning computer rental; photographic services, namely taking photographs, photographic reporting; design and development of design of coding, decoding, access control systems for television and radio programmes, especially mobile users and all information transmission systems; design (development) of interactive programs and apparatus; services of technical establishment of standards (standardisation), services of standardisation, namely development (design) of technical standards for manufactured products and telecommunications services; weather forecasting services; research and development of electronic, computer and audiovisual, scrambling and access control systems in the field of television, computing, telecommunications and the audiovisual sector; electronic message authentication (research of origin) services; information on computing applied to telecommunications; computer formatting of texts and/or images, fixed for interactive or other use.

The contested goods and services are the following:

Class 9: Sound recording carriers; image carriers and data media of all kinds; magnetic data media; phonograph records; compact discs (audio-video); DVDs (sound, image); audio tapes; musical cassettes and video cassettes; compact discs [read-only memory]; DAT tapes; floppy discs; recorded mechanical, magnetic, magneto-optical, optical and electronic data carriers for sound and/or images and/or data; encoded telephone cards; identity cards, encoded; games software; screen saver programs (software); mouse pads; eyeglasses, sunglasses and cases therefor; database programs (software); computer software, including downloadable software for computers and mobile terminals; network-supporting computer software (netware); electronic publications, downloadable; electronic flashing lights (luminous signals); downloadable ring tones for mobile phones; downloadable music files; photographic apparatus, visual and photographic apparatus; software for interactive television; smart cards; electronic and optical data carriers; visual and photographic apparatus.

Class 35: Business management; business administration; office functions; updating and maintenance of data in computer databases, systematic ordering of data in computer databases, collating and compiling of data in computer databases; computerized file management; market research opinion polls; publication of printed matter, including in electronic form, for advertising purposes; retailing, including by means of teleshopping channels and online mail order or catalogue mail order, in the fields of electronic goods, namely trading in relation to sound recording carriers and data media, printed matter, stationery, office requisites, bag makers' goods and saddlery, furnishings and decorations, tents and tarpaulins, clothing, shoes and textile goods, toys, sporting goods, foodstuffs and beverages, agricultural products, horticultural products and forestry products, tobacco goods and other luxury foods and alcohol.

Class 38: Providing access to databases; leasing access time to global computer networks; providing access to internet applications; providing of communications means via online blogs; providing access to online blogs; providing access to blogs; electronic exchange of messages via chat lines, chatrooms and internet forums; providing internet chat rooms; providing access to online games via global computer networks (internet); teletext services; telecommunications via interactive speech dialogue systems (IVR - Interactive Voice Response); access to content, websites and portals; providing internet forums for the exchange of information and ideas on topics of all kinds; providing access to information on the internet, in particular including being part of internet communities and websites and including sms (short message systems); transmission of short messages (SMS) and images, speech, sound, music and text messages, between mobile telecommunications devices; telephone communications and services; communications by cellular phones.

Class 41: Education; providing of training; sporting and cultural activities; film, sound, video film and television production; production of entertainment programmes, specifically for the internet; arranging shows, quizzes and musical events; musical performances; providing online electronic publications, not downloadable; publication of online publications, other than for advertising purposes; publishing printed matter, other than for advertising purposes; arranging concerts, theatre and entertainment events, conferences, meetings, seminars, courses, symposiums, exhibitions for cultural and educational purposes, and lectures for cultural, entertainment and educational purposes; arranging of readings for cultural, entertainment and educational purposes; scriptwriting services; organisation of competitions and awards; operating of lotteries; website editing (support services); conducting interactive games on the Internet.

Class 42: Server administration; design and creation of homepages and web sites; design and development of computersoftware; creating specific EDP software for advertising; investigations, research in databases and on the internet, for others, for scientific and research purposes; updating of database software; storage of information in computerised databases; installation and maintenance of database software; creating internet applications in the form of software; computer programming; providing of chat platforms, including in the context of virtual communications platforms; providing digital media platforms for the exchange of messages and information of all kinds on the internet, including by converting formats into speech, sound, images, text, data or other output media.

Class 45: Intellectual property consultancy; legal services; legal services; trading in film licences, television licences and video licences; licensing of computer software [legal services]; mediation; legal research; providing of legal advice and legal representation; domain names (registration of -) [legal services]; licensing of industrial property rights and copyright; issuing licences for franchising concepts; copyright management.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a figurative mark consisting of a white cross placed in the middle of a black square. The sign as a whole may also be associated with the Red Cross, the medical or pharmacy sectors, the Swiss flag or the Christian religion. The simple cross is a commonplace symbol that consumers encounter in a wide range of contexts. Hence, the cross alone is unlikely to be perceived as an indication of commercial origin (15/02/2010, R 1606/2008‑4, Green Cross (fig.), § 12).

However, part of the public may also perceive it as a stylised mathematical symbol ‘+’, used for addition operations and written and pronounced ‘plus’ in many languages, in particular English and French. When perceived as this mathematical sign, the ‘+’ will be perceived in relation to the goods and services in question as a laudatory or augmenting element, in that it generally indicates a superior value or quantity (03/03/2010, T‑321/07, A+, EU:T:2010:64, § 41-42; 12/12/2014, T‑591/13, News+, EU:T:2014:1074, § 29). In other words, it conveys an indefinite yet positive message of ‘something more’ and is therefore laudatory. Furthermore, it is frequently used in the course of trade merely to inform the public that the goods and services concerned are of better quality or have something extra with respect to the normal standard of goods and services on the market. Consequently, the mathematical symbol ‘+’ cannot fulfil the function of an indicator of origin and lacks inherent distinctiveness. However, to some extent, there is a minimal degree of distinctiveness arising from the combination of the simple black square and the white cross.

As the opponent argues, the verbal element ‘dab’ of the contested sign may refer to the abbreviation for ‘Digital Audio Broadcasting’, although this meaning is unlikely to be perceived by a large part of the public. The figurative element of the contested sign may be associated by part of the relevant public with a ‘radio’, namely with the electronic apparatus. The relevant public will perceive the element ‘+’ of the contested sign as the mathematical symbol indicating superior value or quantity, as explained above. Each of these elements per se has a low degree of distinctiveness or is non-distinctive if perceived as stated above because, at least for part of the goods and services and part of the public, these elements describe their nature or their characteristics.

Therefore, several scenarios are possible, as there is always at least part of the relevant public that will not understand some of the elements in question or may associate them with different concepts. For instance, part of the relevant public will not associate the verbal element ‘dab’ with the abbreviation for ‘Digital Audio Broadcasting’, while English-speaking consumers may associate it with the concept in English of a small amount of a substance or a light touch. Other consumers may simply perceive the element ‘dab’ as meaningless. Furthermore, part of the public may not perceive the depiction of a radio in the contested sign.

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

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 and from top to bottom, which makes the part placed at the left or top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the symbol ‘+’, which lacks distinctiveness per se. However, it is depicted in a very different manner in each sign. In the earlier mark the symbol ‘+’ is big, white and placed in the centre of a black square, whereas in the contested sign the symbol ‘+’ is depicted in green against a white background and placed at the right of the sign. Its stylisation is also different, as the strokes in the contested sign are thinner and their corners are rounded in contrast to those of the earlier mark. The signs also differ in the figurative element and the colours of the contested sign. Visually, the signs are similar at most to a very low degree.

Aurally, the signs may coincide in the pronunciation of the mathematical symbol ‘+’, such as ‘plus’ in most of the languages of the relevant territory, ‘más’ in Spanish or ‘mais’ in Portuguese. The pronunciation differs in the sound of the word ‘dab’ of the contested sign which, albeit weak for part of the relevant public, will be pronounced and has no counterpart in the earlier mark. In this case, bearing in mind that the symbol ‘+’ is non-distinctive, the signs are aurally similar at most to a low degree.

Conceptually, the signs refer to an identical concept, namely the mathematical symbol ‘+’ which is a non-distinctive element. Bearing in mind that the additional concepts in the contested sign are weak or non-distinctive for part of the relevant public, the signs are conceptually similar at most to a low 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.

According to the opponent, the earlier trade mark has acquired a strong reputation in the European Union, and especially in France, in connection with part of the goods and services for which it is registered, namely:

Class 9: Set-top boxes; apparatus and instruments for recording, transmitting, reproducing, storing, encrypting, decrypting, transforming and processing sound or images; communication and telecommunication apparatus; audiovisual, telecommunication, telematic, television and remote-controlled appliances and instruments; encoders; devices for providing access and for controlling access to data processing apparatus; authentication apparatus designed for telecommunication networks; apparatus for scrambling signals and for descrambling signals as well as for retransmission; digital terminals; simultaneous programming and television channel selection devices; electronic guides for tv and radio programmes; apparatus and instruments for television programme selection and programming; interactive television apparatus and instruments.

Class 35: Commercial advice intended for consumers (namely consumer information) related to choice of computer and telecommunication equipment; arranging of audiovisual programme, audio programme subscriptions for others; services of subscription to videograms, to all audio and audiovisual media; arranging subscriptions to all kinds of information media, texts, sound and/or images and especially in the form of publications electronic or not, digital, multimedia products; subscription services to a television channel.

Class 38: Telecommunication services; information on telecommunications; television broadcasting; teletransmission; television broadcasts; programme broadcasting by satellite, cable, via computer networks (especially via the Internet), via radio networks, via wireless networks and by radio relay channels; broadcasting audiovisual, cinematographic and multimedia programmes (texts and/or images (still or moving) and/or sounds musical or not, ringtones) for interactive or other use; rental of telecommunication equipment; rental of aerials and parabolic aerials; rental of access devices (apparatus) to interactive audiovisual programmes; communications (transmission) over an open global computer network (the Internet) or a closed network (intranets); online downloading services for films and other audio and audiovisual programmes; services transmitting television programmes and selections of channels; providing connections to telecommunication services, to Internet services and to databases; services for transmitting and receiving video images via the Internet by means of a computer or a mobile telephone; providing access to Web sites on the Internet containing digital music or any audiovisual work; providing access to telecommunications infrastructures; rental of access time to telecommunication networks.

Class 41: Entertainment; television entertainment on any media namely television set, computer, personal stereo, portable video player, PDA, mobile telephone, computer networks, the Internet; providing recreation facilities; production of shows, films, television films, televised broadcasts, reports, debates, video recordings, sound recordings; rental of videograms, films, sound recordings, video tapes; rental of motion pictures; rental of cinematographic projection apparatus, set-top boxes, encoding devices, radio and television sets, audio and video apparatus, cameras, personal stereos, portable video players, theatre scenery and accessories therefor; production of shows, films, audiovisual, radio and multimedia programmes; film studios; rental of set-top boxes and all kinds of audiovisual apparatus and instruments.

Class 42: Design and development of design of coding, decoding, access control systems for television and radio programmes, especially mobile users and all information transmission systems; design (development) of interactive programs and apparatus; services of technical establishment of standards (standardisation), services of standardisation, namely development (design) of technical standards for manufactured products and telecommunications services; research and development of electronic, computer and audiovisual, scrambling and access control systems in the field of television, computing, telecommunications and the audiovisual sector; information on computing applied to telecommunications.

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).

On 12/06/2019, the opponent submitted evidence and indicated that its submissions were ‘confidential’ and expressed a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Opposition Division does not consider these submissions confidential.

˗ Annex 1: extracts in French (partially translated into English), dated 09/04/2019, from Wikipedia related to ‘+Le CUBE’, explaining the technical evolution of this device in 2010 and 2013.

˗ Annex 4: extracts in English and/or French (with partial translations), dated from 2016 to 2019, from Wikipedia and other sources such as the website www.canalplusgroup.com about Vivendi, the Canal+ Group (the opponent) and ‘Canal+’ (the television channel). The information mainly relates to the French market. However, it also shows that ‘Canal+’ was launched in other markets.

˗ Annex 5: extracts dated 09/04/2019 from Facebook, Twitter and Instagram pages. They show 2 976 061 followers on Facebook, more than 3 million on Twitter and more than 224 000 on Instagram and depict the following signs: , , , , , . This annex also includes a Vivendi press release, dated 17/05/2018, which states the following about the ‘Canal+ Group’: ‘continuation of recovery with a total of 15.3 million subscribers (+620 000 year-on-year)’.

˗ Annex 6: documents showing use of the signs and/or for the application to access entertainment services (a television channel, broadcasting of various television programmes, etc.) provided by the opponent. The annex also includes press articles from the iTunes website showing the use of the sign in connection with a mobile application launched in 2012 for media and entertainment services (mainly a television channel). The extracts are dated from 2015 to 2018. The application, available via all communication devices (smartphones, tablets, PCs, etc.), makes it possible to watch on demand all the programmes offered by the opponent. According to the opponent, ‘this application has been voted best interface and best digital communication device during the 5th edition of the SOCIAL MEDIA AWARDS ceremony in 2016’ and ‘in a spirit of innovation and modernity, CANAL + has set up a partnership with Apple to broadcast its programmes via the Apple TV 4k’. The excerpts also show between 5 and 10 million downloads of the application from the App Store and a review stating that the application has become an ‘Editor’s Choice’ (according to the opponent, ‘this badge is one of the most prestigious awards in the App Store and rewards the best “apps” on the giant’s Apple platform’).

˗ Annex 7: extracts from the French platform ‘Dailymotion’ and content from YouTube channels broadcasting ‘Canal+’ news and content online. This annex also includes the Canal+ Group 2015 Annual Report, in French with partial translations into English, informing the reader of the turnover and extent of the subscription portfolio (9 463 million in France and 5 886 million outside of France) at the end of December 2014. It shows that ‘Canal+’ is a pay TV leader and also a leader in the publication of premium and theme channels as well as the distribution of pay TV offerings. In total, nearly one in four French households subscribes to a Canal+ Group offer. The international subscriber portfolio shows 2.1 million subscriptions in Poland, 1.6 million in Africa, 0.8 million in Vietnam and 0.5 million ‘overseas’.

˗ Annex 8: documents related to a collaboration from 2008 to 2010 with the industrial professional design and branding firm ‘Fuseproject’ to develop a set-top box.

˗ Annex 9: documents showing ‘multimedia boxes’ and other decoders providing various IT services and allowing access to television channels and multiple telecommunication and entertainment services, such as movie broadcasting. The evidence demonstrates that this multimedia box was awarded the IPTV World Series Trophy in 2009 in the category ‘Best Hybrid Broadcast IP Video Delivery Solution’. The sign is affixed for example on the first version (‘G4 version’) of the set-top box and on the ‘multimedia box’, and , called ‘LE CUBE’. Several press articles mention the set-top box ‘LE CUBE’.

˗ Annex 10: an article, dated 17/05/2011, published on www.alloforfait.fr, explaining that the Canal+ Group decided to rename almost all of its channels to more easily identify them. Following the decision, all channels will have a ‘+’ at the end of their name.

˗ Annex 11: copies of the European Union, French and international trade mark registrations owned by the opponent, including signs such as , , , , , , , , , , , , , , , , , , , , , , and , as well as some screenshots from Twitter, the opponent’s French websites (CANAL Boutique, myCANAL and Teletoonplus), Télé-Loisirs.fr and other websites, such as Facebook and the French Wikipedia, showing use of some of these signs. The screenshots are undated except for the Wikipedia screenshots, which are dated 2016.

˗ Annex 12: screen captures of trailers broadcast by the opponent.

˗ Annex 13: various magazines edited by the opponent, dated 2011 and 2012, and sent to its subscribers, showing the sign on the front page. In those dated 2013 and 2014, the sign shown on the front page of the magazine is .

˗ Annex 14: advertising material released in France in 2014. The signs shown in these documents are, inter alia, the following: , , , and .

˗ Annex 15: a press release, dated 2018, indicating that the Canal+ Group launched a television channel of classical music in collaboration with the music label ‘Deutsche Grammophon’. The name of the channel is ‘Deutsche Grammophon +’.

˗ Annex 16: images of a pop-up store operated by the opponent at La Défense, Paris, France, and of the opponent’s store in Vélizy, near Paris. In both cases, the sign is used independently of any other sign. These documents are dated 2014 and 2015.

˗ Annex 17: a survey carried out in French by the company Corsearch / Opened Mind – Pôle Etudes et Conseil Marketing, dated 2014, evaluating the association between the sign or ‘+’ and the channel ‘Canal+’ in France. The sample size was 200 people. The survey results demonstrate that 14 % of the respondents were ‘Canal+’ subscribers, that 11 % spontaneously associated the sign with the opponent before any other entity, and that 10 % also spontaneously associated the sign with ‘Canal+’ (21 % with the Red Cross, 19 % with Switzerland and 12 % with pharmacies). When asked specifically about trade marks, 10 % of the respondents associated the symbol ‘+’ with ‘Canal+’ and 11 % identified the sign with ‘Canal+’.

˗ Annex 18: a survey, dated 23/01/2007, carried out by TNS Sofres, which, according to the opponent, is a French polling company founded in 1963 and now one of the leading marketing and opinion research companies in France. This survey evaluates the association between the sign or ‘+’ and the opponent in France, with a sample size of 488 people. It demonstrates the following spontaneous associations: only 35 % named at least one mark with the logo , and 61 % of this subgroup identified it as a trade mark of ‘Canal+’; 34 % named at least one mark with the logo , and 61 % of this subgroup identified it as a trade mark of ‘Canal+’; 52 % named at least one mark with the logo , and 88 % of this subgroup identified it as a trade mark of ‘Canal+’; and 53 % named at least one mark with the logo , and 88 % of this subgroup identified it as a trade mark of ‘Canal+’. When the respondents were assisted and also shown three other trade marks (Hachette, FNAC and Renault), the results were the following.

˗ Annex 19: a survey, dated 2006, evaluating the associations brought to mind by the sign ‘+’ and the term ‘PLUS’ in France, with a sample size of 1002 individuals. 4 % of the respondents cited ‘Canal+’. When asked specifically about trade marks, 10 % associated the sign ‘+’ and the term ‘PLUS’ with ‘Canal+’.

˗ Annex 20: a survey, dated May 2017, evaluating the association between the signs /‘+’/‘PLUS’ and the opponent in France. Three matched samples of individuals were selected, one for each sign. 4 % of the respondents associated the sign , without any assistance, with ‘Canal+’. When asked specifically about one group or one brand, 6 % associated the sign with ‘Canal+’ and 19 % associated the term ‘PLUS’ with ‘Canal+’. 18 % related the sign to the television/audiovisual sector. When assisted (15 marks were presented), 22 % associated it with ‘Canal+’.

˗ Annex 21: opposition decisions rendered in 2014, 2015, 2016, 2017 and 2019 by the French trade mark office stating that the figurative trade mark ‘+’ has a high degree of distinctiveness in designating a television channel and related services.

˗ Annex 22: screenshots from a video available on YouTube, dated 2014, showing use of the ‘+’ sign during a one-man show by Kyan Khojandi for the opponent’s 30th anniversary.

˗ Annex 23: screenshots of the television programme ‘Le Gros Journal’, broadcast on ‘Canal+’, from 05/09/2016 to 22/09/2017, and presented by Mouloud Achour. The sign ‘+’ is highlighted on the set.

˗ Annex 24: screenshots of the ‘Canal Football Club’ programme, broadcast by the opponent since 2008. They show use of the sign .

˗ Annex 25: extracts from the opponent’s websites www.canalplusgroupe.com, www.mycanal.fr (France) and www.ncplus.pl (Poland). These extracts demonstrate that the sign is systematically used in the address bar as a favicon, in the fields of music, television, television series and movie streaming (live or replay), cinema, sports, and information and news.

˗ Annex 26: a booklet, dated 2015, related to the opponent’s activities in several European Union countries (other than France), in particular in Belgium, Spain and Poland. According to the opponent, Poland is the Group’s second largest market after France, with 2.1 million subscribers in 2014. NC+ is 51 % owned by the Canal+ Group. This Annex also includes a copy of a page from Wikipedia about Canal+ Poland (last edited on 15/08/2018) and extracts from the opponent’s Polish website www.canalplus.pl.

On 28/04/2020, after the time limit for substantiation, the opponent submitted additional evidence to prove genuine use. In exercising its discretionary power pursuant to Article 95(2) EUTMR, the Office has considered the evidence submitted in the context of proof of use as supplementary evidence to prove enhanced distinctiveness through use and reputation.

The opponent indicated that its submissions of 28/04/2020 were ‘confidential’ and expressed a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Opposition Division does not consider these submissions confidential.

The additional evidence submitted is the following:

˗ Enclosure 1: booklets/brochures presenting the Canal+ Group, dated 2013, 2014 and 2015, showing use of the sign .

˗ Enclosures 2 and 3: a Wikipedia page (the last modification of which is dated 2019) presenting the opponent’s parent company (Vivendi), and extracts from the Vivendi and Canal+ Group websites, dated 2016 and 2019, presenting the Canal+ Group.

˗ Enclosures 4a to 4e: Vivendi’s annual reports from 2014 to 2018. The key figures are the following (at the end of 2018):

- Revenue: 5.166 billion euros

- Number of subscribers: 16.2 million, including 3.1 million from partnerships with telecom operators

- Breakdown of revenue, in millions of euros

- Pay TV in France: 3,137

- Pay TV abroad: 1,567

- Studiocanal: 462

- Breakdown of subscriber portfolio, in millions

- Mainland France: 8.3

- Abroad: 7.9

- Content investment: 3 billion euros.

˗ Enclosures 5a and 5b: Vivendi press release, dated 2018, and an extract from Vivendi’s website, presenting key figures of the Canal+ Group’s position in the audiovisual/media sector. This document refers to the Canal+ Group’s continued recovery, with a total of 15.3 million subscribers (an increase of 620,000 year on year).

˗ Enclosure 6: screenshots of the website www.cnews.fr extracted from the Internet Archive’s ‘WayBack Machine’, dated 2017, showing use (as a favicon) of the signs and .

˗ Enclosure 7: extracts from Vivendi’s website, dated 2019, presenting ‘Canal+ International’. ‘Canal+ International’ broadcasts 30 channels adapted to each of its geographic areas. In Poland, ‘Canal+ International’ offers 8 packages and 145 television channels, radio stations and services.

˗ Enclosure 8: images of set-top boxes/decoders bearing the sign , and a Wikipedia article related to the ‘Cube Canal+’, officially named ‘+ The Cube’ (‘+ Le Cube’ in French). This enclosure also includes an article from www.telesatellite.com, dated 2015, showing a set-top box.

˗ Enclosure 9: several website extracts, dated 2009, showing that the opponent’s set-top boxes bearing the mark won various awards. The opponent won an IPTV World Series award for the ‘Best Hybrid Broadcast-IP Video Delivery Solution or Service’. The award was presented for ‘+LE CUBE’, Europe’s first satellite / IP-hybrid set-top box to use the Ethernet port for VOD services, at the IPTV World Forum Awards on 25/03/2009. The opponent also won the Red Dot Product Design Award 2016 (‘The origins of this award date back to 1955: it appraises the best products created every year’), the Gold award at the International Design Awards 2016 (‘The International Design Awards are a group of awards that recognise, celebrate and promote design visionaries and emerging talent in architecture, interior, product, graphic and fashion design’) and the Gold award at the SPARK Awards 2016.

˗ Enclosure 10: documents showing use of the signs and/or for the application to access entertainment services (television channel, broadcasting of various television programmes, etc.) provided by the opponent. It appears that, in ‘App Store’, the application is ranked fourth for entertainment applications. Screenshots of a video displayed on Youtube related to the launch of the application.

˗ Enclosure 11: extracts from the App Store website about the opponent’s application/platform ‘Canal Touch’, identified by the sign .

˗ Enclosure 11a: press articles and extracts from various websites, dated from 2013 to 2016, about the opponent’s application/platform ‘Canal Touch’, identified by the sign .

˗ Enclosures 12 and 13: flyers and mailings, as well as invoices related to the flyers. These documents are dated from 2013 to 2016.

˗ Enclosure 14: images showing use of the sign in connection with many products, and corresponding invoices.

˗ Enclosure 15: extracts from websites (in particular social networks), dated from 2014 to 2018.

˗ Enclosure 16: press releases and website extracts, dated 2018.

˗ Enclosures 17-20: surveys and opinion polls, dated 2006, 2007, 2014 and 2017. These documents have already been described in the evidence related to the enhanced distinctiveness of the earlier mark.

˗ Enclosure 21: opposition decisions issued by the French trade mark office (INPI) involving the earlier trade mark .

˗ Enclosure 22: screenshots from a video available on Youtube and press articles about this video, dated 2014.

˗ Enclosures 23-26: website extracts, dated from 2016 to 2017.

˗ Enclosure 27: screenshots of a video clip uploaded on 16/08/2015, with 157 214 views, showing use of the sign ‘+’ throughout the video clip.

˗ Enclosures 28 and 29: a website extract showing programme schedules for the 2015-2017 and 2019-2020 seasons.

˗ Enclosure 30: extracts from the opponent’s website, dated from 2013 to 2015.

˗ Enclosure 31: flyers, dated 2013.

˗ Enclosure 32: screenshots of video clips available on Youtube, dated 2013.

˗ Enclosure 33: a Wikipedia page showing the functionalities of different versions of the opponent’s set-top boxes bearing the sign , dated from 2013 to 2018.

˗ Enclosure 34: website extracts, dated 2013 and 2015.

˗ Enclosure 35: statements from the opponent’s Marketing Director and accompanying figures, dated 2014 and 2015.

˗ Enclosure 36: a poster promoting the launch of a set-top box bearing the sign (along with its hard disk), dated 2014.

˗ Enclosure 37: an extract from Twitter providing information to subscribers about a set-top box bearing the sign , dated 2014-2015.

˗ Enclosure 38: website extracts, dated 2015.

˗ Enclosure 39: a press release dated 2015: this piece of evidence shows that the online music streaming service “Deezer” is available via the opponent’s set-top box, which expands the functionality of the device.

˗ Enclosure 40: a guide or manual, dated 2015, presenting the functions and characteristics of a set-top box bearing the sign (e.g. internet, antenna or satellite connections; video on demand; and information about television channels and television programmes).

˗ Enclosure 41: an extract from the opponent’s website showing set-top boxes bearing the sign .

˗ Enclosure 42: an extract from the opponent’s website, dated 2016, related to the presentation of a new set-top box bearing the sign .

˗ Enclosure 43: an installation guide for a set-top box/decoder bearing the sign , dated 2016. It includes information on subscription cards, card readers, connecting via an antenna, connecting via Wifi or Ethernet cable, broadcasting television channels via DTT, connecting the set-top box to a hard disk, and use of a remote control.

˗ Enclosure 44: a user guide for a set-top box/decoder bearing the sign . It includes a presentation of the decoder and its functions and characteristics, such as internet, antenna or satellite connections; video on demand; and information about television channels and television programmes.

˗ Enclosure 45: an installation guide for a set-top box/decoder bearing the sign , dated 2016.

˗ Enclosure 46: a user guide for a set-top box/decoder bearing the sign , dated 2016.

˗ Enclosure 47: a presentation of a subscriber card which bears the sign , supplied with a subscription to a television channel offer and to the corresponding set-top box.

˗ Enclosure 48: extracts from different mobile application stores showing use of the signs or as the logos of mobile applications/platforms that provide various services such as video on demand or remote control, dated from 2014 to 2018.

˗ Enclosures 49 and 50: website extracts, dated 2014, showing that the application identified by the sign can also fulfil the function of a remote control.

˗ Enclosure 51: screenshots showing that the opponent’s application in the ‘Apple App Store’, identified by the sign , has been ranked in 4th place in the category ‘entertainment’. On the Android store, the application identified by the sign was installed 5 million times in 2018.

˗ Enclosure 52: articles titled, for example, ‘Canal+ comes back this year with its pop up store at the “les 4 Temps” shopping center’ and ‘Come to discover the experience #MyCanal at the new pop-up store @canalplus @canalsat at the CC@creteilsoleil until 23/02’, dated from 2014 to 2016.

˗ Enclosure 53: a document produced by ‘Studioforma Architects’, dated 2015, containing information about the establishment of pop-up stores bearing the sign .

˗ Enclosure 54: extracts from the opponent’s website, dated from 2013 to 2017, showing the opponent’s stores.

˗ Enclosure 55: images of a store where the sign is visible. The store was specially decorated for the opponent’s 30th anniversary in 2014.

˗ Enclosure 56: a website extract showing the opponent’s presence in Rennes, France, since 2015. The sign is visible.

˗ Enclosure 57: website extracts, dated between 2013 and 2017, showing DVD covers. These DVDs contain television series produced and broadcast by the opponent. The DVD covers clearly show the earlier mark in association with the word element ‘CANAL’ as follows: .

˗ Enclosure 58: An image of the closing credits to a television programme produced by the opponent. The sign ‘+’/ appears in association with the term ‘CANAL’.

˗ Enclosure 59: excerpts from trailers, dated from 2013 to 2015, showing different versions of the sign ‘+’.

˗ Enclosure 60: price sheets describing the costs of the reception equipment for accessing the opponent’s services, including the rental of set-top boxes bearing the mark , as well as provision of satellite dishes and satellite installation.

˗ Enclosure 61: magazines published by the opponent for its television programmes (sent to its subscribers from 2011 to 2014), showing use of the sign on the first page.

˗ Enclosure 62: various extracts from websites showing use of the sign ‘+’/ , which is represented on television sets showing several television programmes produced/broadcast by the opponent, dated from 2013 to 2018.

˗ Enclosures 63 to 68: flyers, website and social network extracts, press articles and a Wikipedia page showing use of the sign ‘+’/ in connection with television channels named ‘CUISINE+’, ‘FOOT+’, ‘INFOSPORT+’, ‘MAISON+’, ‘RUGBY+’, and ‘SPORT+’, dated from 2013 to 2018. One example of use is given in its figurative version: .

˗ Enclosure 69: an installation guide for a hard disk, dated 2016. This device is provided with one of the opponent’s set-top boxes and serves to connect the set-top box to the Internet box and to record programs. The sign ‘+’ is depicted on the hard disk as follows: .

˗ Enclosure 70: a user manual for the remote control of one of the opponent’s set-top boxes.

˗ Enclosure 71: press articles and extracts from various websites, dated from 2015 to 2017, about the opponent’s set-top boxes bearing the sign such as or .

˗ Enclosure 71a: a brochure, dated 2015, promoting a new set-top box bearing the sign .

˗ Enclosure 72: screenshots from social networks (Facebook, Twitter and Google), dated from 2016 to 2018, showing use of the sign .

˗ Enclosures 73 and 74: program schedules for the 2015-2016 and 2016-2017 seasons showing the sign on the cover page.

˗ Enclosure 75: an article, dated 2014, titled ‘Canal+ plays on the minimalism of its + for its new campaign’.

˗ Enclosure 76: website extract, dated from 2014 to 2017, showing use of the opponent’s mark associated with ‘CANAL’ or ‘nc’ in Poland.

˗ Enclosure 77: a Polish press article, dated 2014, titled ‘The nc + platform introduces a Wi-Fi decoder and extends the VoD offer’. The sign ‘+’ appears in this article as follows: .

˗ Enclosures 78 and 80: Polish user manuals or guides, dated from 2014 to 2018, related to set-top boxes. The earlier mark is depicted as follows: .

˗ Enclosure 79: a website extract showing that the Polish satellite platform ‘nc+’ introduced a ‘player+’ set-top box in autumn 2017. The earlier mark is shown as follows: .

˗ Enclosure 81: an extract from the Polish website www.ncplus.pl, dated 2018, showing the presence of the opponent’s stores in Poland.

˗ Enclosure 82: a screenshot from a Polish website, dated 2018, showing use of the sign associated with another term in Poland to designate television channels and TV packages.

˗ Enclosure 83: extracts from Polish websites presenting set-top boxes bearing the sign .

˗ Enclosure 84: an Ifop survey in Poland, dated 2017, stating on page 19 that ‘without assistance, the Groupe Canal+ is the first company to be associated with the white cross on a black background’.

˗ Enclosure 85: extracts from television programme grids/schedules in Belgium dated from 2014 to 2015 showing the television channel ‘cuisine +’.

˗ Enclosure 86: a press article, dated 2016, related to a partnership between the opponent and ‘Nethys Group’ to launch a video-on-demand service in Belgium.

˗ Enclosure 87: an advertising campaign, dated 2014, related to screenshots showing use of the sign ‘+’/ in Spain.

˗ Enclosure 88: a screenshot of a Spanish advertisement clip available on Youtube showing use of the sign ‘+’/ .

˗ Enclosure 89: a press article, dated 2018, attesting to the opponent’s presence in Spain for 24 years.

˗ Enclosure 90: a press article related to the opponent’s history in Spain since 1990.

Having examined the material listed above, it appears that the earlier mark is used alone as registered: for example on social networks (Annex 5 and Enclosure 72); on set-top boxes such as the ‘G4 version’ and the ‘multimedia box’ called ‘Le Cube’ or ‘Le Cube S’ (Annex 9 and Enclosures 8, 41-47 and 78-80); in relation to mobile applications (Annex 6 and Enclosures 48-51); and in stores (Annex 16 and Enclosures 52-56). The sign is also used together with many other descriptive elements, such as ‘MAGAZINE’ (Annex 13), ‘CANAL’, ‘CINE’, ‘SPORT’ or ‘TENNIS’, to promote, inter alia, a wide range of television channels all using the ‘+’ symbol (Annex 14 and Enclosures 63-68). The extracts from the opponent’s websites demonstrate that the sign is also used in the address bar as a favicon (Annex 25).

The survey dated 2014 (Annex 17) shows that 14 % of respondents were Canal+ subscribers; that, when asked about trade marks, 10 % spontaneously associated the sign ‘+’ with ‘Canal+’; and that 11 % associated the sign with ‘Canal+’. The Ifop survey dated 2017 (Annex 20), seems to be the most reliable study, because three matched samples of individuals have been selected, one for each of the signs ‘+’, and ‘PLUS’. In the other surveys, the respondents may be influenced by previous questions about the other sign(s). As a matter of fact, the figures from the Ifop survey are not as high as the ones in previous surveys. After having explicitly excluded the mathematic symbol in the question, only 4 % of respondents associated the signs ‘+’, and ‘PLUS’ with ‘Canal+’. However, when asked for a company or group, 22 % associated the sign with ‘Canal+’ and 19 % associated the sign ‘PLUS’ with ‘Canal+’. Other documents, namely the opposition decisions rendered in 2014, 2015 and 2016 by the French trade mark office (Annex 21), state that ‘the device trade mark has an enhanced distinctiveness to designate a television channel and the services related thereto’.

The sign has been intensively used, mainly in France. This is supported by the evidence, which, taken together, reaches a sufficient threshold of probative value. It includes, inter alia, extracts from social networks and platforms, press articles, opinion polls and decisions of the French trade mark office. These documents demonstrate intensive use of the sign and further establish that the mark enjoys a certain degree of recognition at least among the French public.

Considering what has been stated above in section c) of this decision, the inherent distinctiveness of the earlier mark must be seen as low, only slightly above the minimum, thanks to its specific depiction. However, the earlier trade mark has acquired an enhanced distinctiveness, through its use on the market, among a significant part of the relevant public in relation to a television channel and related services in Classes 38 and 41 as well as for set-top boxes in Class 9.

In assessing distinctiveness acquired through use, account should be taken, in particular, of the mark’s inherent characteristics. The evidence shows that, for the abovementioned goods and services, the sign has acquired, through use, a normal degree of distinctiveness above its inherently low degree of distinctiveness. This normal degree of distinctiveness of the sign is the result of the sum of its various elements and the reputation the earlier mark has acquired. As established above, this relates to the earlier mark as a whole, and not to the ‘+’ sign as such.

e) Global assessment, other arguments and conclusion

For reasons of procedural economy, it was assumed that all the goods and services were identical because this assumption cannot change the outcome of the present assessment, mainly because the degree of similarity between the signs is not sufficient to lead to a likelihood of confusion.

For part of the relevant public, the signs are visually similar at most to a very low degree and aurally and conceptually similar at most to a low degree.

The opponent has demonstrated that the earlier mark, which is inherently weak, has acquired enhanced distinctiveness through use. However, this is insufficient to create a likelihood of confusion in this case, because the differences between the signs are clearly perceivable, and the similarities concern the element ‘+’, which is inherently non-distinctive in both signs. The coinciding element will have little impact within the contested sign’s overall impression, and it is not certain to catch consumers’ attention. Indeed, the differences explained above, even if they concern elements with a low degree of distinctiveness or non-distinctive (for a respective part of the relevant public), are clearly noticeable, and the depiction of the coinciding element in the contested sign is sufficiently far removed from the one in the earlier mark. The overall impression given by the marks is different due to the different graphical features and arrangement of the different elements. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

The opponent refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the Opposition Division cannot know what evidence the opponent submitted in each of these cases before the French trade mark office. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. It follows that, even if the facts of the cited previous decisions are to some extent similar to the present case, the outcome may not be the same.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as Article 8(1)(b) EUTMR is concerned.

The opponent has also based its opposition on French trade mark registration No 3 636 873 for the figurative mark . For this mark, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected, because the sign is identical to the one of the earlier mark already examined, namely the international trade mark registration No 1 025 864 designating the European Union and the relevant public of the latter include French consumers. Therefore, as regards earlier French trade mark registration No 3 636 873, no likelihood of confusion exists with respect to those goods and services.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

- The signs must be either identical or similar.

- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

- Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and enhanced distinctiveness of earlier French trade mark registration No 3 636 873 and international trade mark registration No 1 025 864 designating the European Union has already been examined above under the grounds of Article 8(1)(b) EUTMR, as the documents provided by the opponent are the same for both earlier marks. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR, bearing in mind that, as regards earlier French trade mark registration No 3 636 873, the relevant territory is France.

c) The ‘link’ between the signs

As seen above, to some extent, the earlier marks are reputed and the signs are visually similar at most to a very low degree and similar at most to a low degree from the aural and conceptual points of view. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

- the degree of similarity between the signs;

- the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

- the strength of the earlier mark’s reputation;

- the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

- the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the signs share some similarities. The more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 26; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 44). In this case, for part of the public, the signs are visually similar at most to a very low degree and aurally and conceptually similar at most to a low degree. However, the similarities between the signs relate to the element ‘+’, which is inherently non-distinctive due to its laudatory nature and also because it is frequently found in the course of trade. The consumers’ attention will be also attracted by all the additional elements of the contested sign. In the Opposition Division’s view, the differences between the signs and the fact that the coinciding element ‘+’ is inherently non-distinctive prevent any possibility of association between the marks. The reputation or recognition enjoyed by the earlier marks and the fact that the goods and services covered would be identical are not sufficient to find that the relevant public will establish a link between the signs.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

Given that the opposition is not well founded under Articles 8(1)(b) and 8(5) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Andrea VALISA

Benoit VLEMINCQ

Martin MITURA

 

 

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.