OPPOSITION Nо B 3 031 153

 

AEG Presents Ltd, Almack House, 28 King Street, London SW1Y 6QW, United Kingdom (opponent), represented by Kolster OY AB, Salmisaarenaukio 1, 00180 Helsinki, Finland (professional representative) 

 

a g a i n s t

 

Coachilla Oy, Eestintaival 12 B 8, 02280 Espoo, Finland (applicant).

On 15/06/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 031 153 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 17 167 602 is rejected in its entirety.

 

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

 

REASONS

 

On 29/01/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 167 602 COACHILLA (word mark), namely against all goods and services in Classes 9, 42 and 45. The opposition is based on, inter alia, European Union trade mark registration No 15 112 923 . 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.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM registration No 15 112 923 against which there are no pending cancellation proceedings.

 

a) The goods and services

 

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

 

Class 9: Recordings of sound or images; films, records, compact discs, MP3 players, portable digital electronic devices, namely, portable digital music players, portable digital video players, mini discs, laser discs, digital video discs (DVD), digital audio recordings, audio cassettes, video cassettes; magnetic tape; CD-ROM, interactive compact discs; magnetic data carriers, recording discs; computer games, video games, interactive games; digital music provided from the Internet; digital recordings of performing arts entertainment provided from the Internet; sound recordings and images downloadable from the Internet; electronic publications; parts and fittings for all the aforesaid goods.

Class 41: Organisation, production and conducting of performing arts entertainments and festivals, including such services provided on-line from a computer database or the Internet; performance arts and musical entertainment services; festival services, performance of music, dance, comedy, theatre, poetry and circus entertainment, including such services provided on-line from a computer database or the Internet; conducting artistic and musical events; musical concert entertainment; performance and production of music award ceremonies; production and performance of radio and television programmes; production or performance of sound recordings, image recordings, videos, films, concerts and shows; recording studio services; the production or coproduction of entertainment events or concerts; recording and production services; entertainment; live music; provision of amusements; nightclubs; cultural and sporting activities; music and text publishing services; musical and visual entertainment provided on-line from a computer database or the Internet; providing digital music from the Internet; operation of entertainment venues; issuing of concert tickets; management of concerts; information, advice and consultancy in respect of all the aforesaid services.

The contested goods and services are the following:

Class 9: Computer software; computer software for accessing information directories that may be downloaded from the global computer network; computer software applications, downloadable; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for use as an application program interface; computer software for creating social networks, building social networking applications and for allowing data retrieval, upload, download, access, display, marking and management; computer software to enable online journal keeping, streaming and video negotiations or otherwise providing electronic communication or information via computer and communication networks; computer programs for face-to-face marketing; programs and software for smart phones and mobile devices.

Class 42: Maintenance and hosting of websites; designing websites for advertising purposes; providing a website that gives users the ability to upload files to a server; computer services, namely, maintaining an interactive website featuring technology that allows users to manage their online social networking accounts; hosting on-line web facilities for others for managing and sharing on-line content; computer services, namely, hosting electronic facilities in the nature of internet websites, mobile applications and other similar communication platforms for others for organizing and conducting meetings, events and interactive discussions via communication networks; application service provider (asp) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; hosting a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites; providing temporary use of non-downloadable software applications for creating social networks, creating a virtual community, and transmission of files, audio, video, text, graphics and data.

Class 45: On-line social networking services; online social networking services accessible by means of downloadable mobile applications.

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

 

The term ‘including’ used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

However, the term ‘namely’, used in the applicant’s and opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

  

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

 

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

 

Contested goods in Class 9

 

The contested computer software; computer software for accessing information directories that may be downloaded from the global computer network; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for use as an application program interface; computer software for creating social networks, building social networking applications and for allowing data retrieval, upload, download, access, display, marking and management; computer software to enable online journal keeping, streaming and video negotiations or otherwise providing electronic communication or information via computer and communication networks; computer programs for face-to-face marketing overlap with the opponent’s magnetic data carriers as these encompass both pre-recorded (including pre-recorded software) as well as blank media. Therefore, they are identical.

The contested computer software applications, downloadable; programs and software for smart phones and mobile devices overlap with the opponent's computer games and are, therefore, identical.

Contested services in Class 42

The contested designing websites for advertising purposes; hosting on-line web facilities for others for managing and sharing on-line content; maintenance and hosting of websites; providing a website that gives users the ability to upload files to a server; computer services, namely, maintaining an interactive website featuring technology that allows users to manage their online social networking accounts; computer services, namely, hosting electronic facilities in the nature of internet websites, mobile applications and other similar communication platforms for others for organizing and conducting meetings, events and interactive discussions via communication networks; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; hosting a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites; providing temporary use of non-downloadable software applications for creating social networks, creating a virtual community, and transmission of files, audio, video, text, graphics and data are similar to the opponent's magnetic data carriers. Software developers will also commonly provide software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

Contested services in Class 45

The contested on-line social networking services; online social networking services accessible by means of downloadable mobile applications are similar to a low degree to the to the opponent's entertainment. The Opposition Division deems that there are certain points of contact between these contested services and entertainment services covered by Class 41 of the earlier right. The contested services allow people to meet other people with for example similar social or professional interests. Entertainment services include all kind of activities, which provide amusement or diversion. It follows that their nature is rather different, but their purpose is similar at least to some extent, since all of these aim at increasing the possibility of getting to know other people. Furthermore, even though the contested services are usually provided by undertakings specialized in the specific field, it cannot be excluded that undertakings dealing with entertainment and amusement in general are endowed with a specific branch focusing on gaming for example. Again, these services can be offered through the same channels, for example via internet.

 

b) Relevant public — degree of attention

 

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

 

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

 

The degree of attention is considered to be average.

 

c) The signs

	COACHILLA
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 sign is composed of a stylised verbal element ‘COACHELLA’. However, the stylisation is not of such a nature as to make the word illegible or to draw attention away from it (22/04/2009, R 252/2008‑1. THOMSON / THOMSON (FIG. MARK), § 35). Consequently, the stylisation is of a rather decorative nature. For most of the relevant public this word is meaningless and is, therefore, distinctive. For the sake of completeness, the Opposition Division notes that part of the public may perceive ‘COACHELLA’ as a valley in the Colorado Desert of California, United States of America. From the perspective of the latter part of the public, the word may be of limited distinctiveness as it would be associated with the geographical origin of the goods and services in question.

The contested sign is a word mark ‘COACHILLA’, which is meaningless and, therefore, distinctive.

Visually, the signs coincide in the string of letters ‘COACH*LLA’, differing in the sixth letter ‘E/I’ and in the stylized font of the earlier mark. Consequently, the signs are visually similar to a high degree.

Aurally, and as stated above, the only difference is the letter ‘E/I’ in the sixth position of the sign. However, both are vowels and in some languages the pronunciation is quite similar between these vowels. Consequently, the signs are aurally similar to a high degree.

 

Conceptually, neither of the signs has a meaning for most of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Although part of the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, for this part of the public the signs are not conceptually similar.

 

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in 'Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for the goods and services in question from the perspective of most of the public in the relevant territory. Therefore, for this segment of the public, the distinctiveness of the earlier mark must be seen as normal. For the segment of the public that would know COACHELLA, the distinctiveness of the mark may be limited, as explained above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

According to the case-law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). The signs are visually and aurally similar to a high degree and conceptually either not similar or neutral in the comparison (if not understood), whereas the goods and services are considered partly identical and partly similar to various degrees, including to a low degree. Because of the above similarity between the signs, even for the goods and services found similar to a low degree, there would be likelihood of confusion.

The signs consist of a highly similar word element, ‘COACH*LLA’, differing in the sixth vowel (‘E/I’) and in a moderate stylisation of the earlier sign; these differences are clearly not sufficient to allow consumers, especially taking into account their average degree of attention, to safely distinguish between the signs. The relevant consumer is likely to confuse the marks and believe that the same undertaking is responsible for the provision of the conflicting goods and services, even if they are similar to a low degree only. This conclusion applies also to the part of the public for which ‘COACHELLA’ may be of limited distinctiveness because in the latter case, the high visual and phonetic similarity reinforce the overall impact.

The distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion; however, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark with a limited degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the services covered (13/09/2010, T‑72/08, smartWings, EU:T:2010:395, § 45; 10/07/2012, T‑135/11, Cloralex, EU:T:2012:356, § 35-37; 30/01/2014, C‑422/12 P, Cloralex, EU:C:2014:57, § 43-45; 27/02/2014, T‑25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38). In the present case, both signs include a highly similar verbal element.

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). Considering that the main difference (as the stylization as of decorative nature) is the sixth letter, namely the difference between the vowels ‘E’ and ‘I’, this is not enough to safely keep the signs apart.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 112 923. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 15 112 923 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

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

 

 

 

The Opposition Division

 

 

Denitza STOYANOVA-VALCHANOVA

Astrid Victoria WÄBER

Lucinda CARNEY

 

 

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.