OPPOSITION Nо B 3 048 116

 

SC Twins Cafe Srl, Str. Glodeni nr 1-3, sector 2, Bucuresti, Romania (opponent), represented by Milcev Burbea Intellectual Property Office, 14 Doctor Staicovici Street, Sector 5, Bucharest, Romania (professional representative) 

 

a g a i n s t

 

The Really Useful Group Limited, 6 Catherine Street, London WC2B 5JY, United Kingdom (applicant), represented by Boult Wade, S.L., Avda. de Europa, 26 Edif. Ática 5, Planta 2, 28224 Pozuelo de Alarcón (Madrid), Spain (professional representative)

On 10/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 048 116 is partially upheld, namely for the following contested services:

 

Class 38: All the contested services in this class. Class 41: All the contested services in this class, except for publication of books and texts (other than publicity texts); publication of books, texts and journals on-line; publication of audiobooks; publishing; electronic publishing; book publishing; publishing of books; publishing of stories; all the foregoing services available from computer databases, the Internet or via other communications.

2.

European Union trade mark application No 17 442 906 is rejected for all the services as reflected above under point 1 of this dictum. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 15/03/2018, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 442 906 for the word mark 'UNMASKED', namely against all the services in Classes 38 and 41. The opposition is based on Romanian trade mark registrations No 137 462 for the word mark 'UNMASK THE MUSIC' and No 137 461 for the figurative mark . 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 Romanian trade mark registration No 137 462.

 

a) The services

 

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

 

Class 38: Telecommunications.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

 

The contested services are the following:

Class 38: Telecommunications; telecommunications services namely e-mail services and those provided for the Internet; providing user access to the Internet; broadcasting services; broadcasting services via the uploading, downloading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, of electronic media, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, audiobooks and information via the Internet or other computer and communications networks; webcasting services; providing access to a video sharing portal; electronic communication services; transmission of messages, data and content via the Internet and other computer and communications networks; providing online forums, chat rooms, journals, blogs, and list servers for the transmission of messages, comments and multimedia content among users; providing access to databases; transmission of electronic media, multimedia content, videos, audiobooks, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the Internet and other computer and communications networks; providing online community forums for users to post, search, watch, share, critique, rate, and comment on, videos, and other multimedia content; providing digital program distribution of audio and video broadcasts over a global computer network; streaming of electronic media, multimedia content, videos, movies, audiobooks, pictures, images, text, photos, games, user-generated content, audio content via the Internet and other computer and communications networks; all the foregoing services available from computer databases, the Internet or via other communications.

Class 41: Entertainment services; provision of cultural activities; education services; providing of training; production of musicals and any and all and adaptations thereof; production of sound recordings, concerts, dramas, stage shows, television programmes and films; theatrical, musical, television and film entertainment services; ticket agency services; providing theatre facilities; providing cinema facilities; presentation of live performances; rental of motion pictures; organisation of shows; impresario services; publication of books and texts (other than publicity texts); recording studio services; rental of equipment, apparatus and stage scenery for theatrical sets or television studios; rental of sound recordings and video recordings; theatrical production services; providing entertainment information; providing education regarding music, musicals and the theatre; information relating to entertainment or education provided on-line from a computer database or the Internet; electronic games services provided via a computer network namely the Internet; publication of books, texts and journals on-line; providing digital video and audio recordings (not downloadable) via a computer network namely the Internet; rental of audiobooks; publication of audiobooks; providing on-line electronic publications (not downloadable) on-line from databases or the Internet; providing electronic images and artwork (not downloadable) on-line from databases or the Internet; publishing; electronic publishing; book publishing; publishing of books; publishing of stories; all the foregoing services available from computer databases, the Internet or via other communications.

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

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

 

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.

As a preliminary remark it should be noted that all the contested services in Classes 38 and 41 are specified, at the end of the respective lists, with the wording all the foregoing services available from computer databases, the Internet or via other communications. However, since the opponent’s respective services in the same classes do not exclude services available from computer databases, the Internet or via other communications, the specification at the end of the lists of the contested services in Classes 38 and 41 do not affect the outcome of the identity or similarity between the contested services and the opponent’s services, if any. Therefore, while the above-mentioned specification will be taken into account, it will not be mentioned in the comparisons that follow.

 

Contested services in Class 38

Telecommunications are identically covered in both lists of services.

The contested telecommunications services namely e-mail services and those provided for the Internet; providing user access to the Internet; broadcasting services; broadcasting services via the uploading, downloading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, of electronic media, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, audiobooks and information via the Internet or other computer and communications networks; webcasting services; providing access to a video sharing portal; electronic communication services; transmission of messages, data and content via the Internet and other computer and communications networks; providing online forums, chat rooms, journals, blogs, and list servers for the transmission of messages, comments and multimedia content among users; providing access to databases; transmission of electronic media, multimedia content, videos, audiobooks, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the Internet and other computer and communications networks; providing online community forums for users to post, search, watch, share, critique, rate, and comment on, videos, and other multimedia content; providing digital program distribution of audio and video broadcasts over a global computer network; streaming of electronic media, multimedia content, videos, movies, audiobooks, pictures, images, text, photos, games, user-generated content, audio content via the Internet and other computer and communications networks are all different types of telecommunications services and are thus included in the opponent's broad category of telecommunications. Therefore, they are identical.

Contested services in Class 41

Providing of training; entertainment services; education services; provision of cultural activities are identically covered in both lists of services (including by synonyms).

The contested providing education regarding music, musicals and the theatre; information relating to education provided on-line from a computer database or the Internet are included in the opponent's broad category of education. Therefore, they are identical.

The contested theatrical production services; providing entertainment information; providing cinema facilities; presentation of live performances; organisation of shows; impresario services; recording studio services; production of musicals and any and all and adaptations thereof; production of sound recordings, concerts, dramas, stage shows, television programmes and films; theatrical, musical, television and film entertainment services; providing theatre facilities; rental of equipment, apparatus and stage scenery for theatrical sets or television studios; electronic games services provided via a computer network namely the Internet; information relating to entertainment provided on-line from a computer database or the Internet consist of or include different types of entertainment services and are thus included in, or overlap with, the opponent's broad category of entertainment. Therefore, they are identical.

The contested rental of motion pictures; rental of sound recordings and video recordings; rental of audiobooks; providing digital video and audio recordings (not downloadable) via a computer network namely the Internet; providing on-line electronic publications (not downloadable) on-line from databases or the Internet; providing electronic images and artwork (not downloadable) on-line from databases or the Internet, if not identical to the broad category of the opponent’s services of entertainment because they are included therein or overlap, are all at least similar to the opponent’s services since they can at least target the same relevant public, share the same distribution channels and be provided by the same undertakings.

The contested ticket agency services include services such as booking of seats for concerts and the opponent's services of entertainment include services such as the organisation of concerts. Consequently, the services under comparison can target the same relevant public, share the same distribution channels and be complementary. Therefore, they are similar.

In view of the above considerations, the applicant’s allegations that the contested ticket agency services; recording studio services; providing on-line electronic publications (not downloadable) on-line from databases or the Internet and providing electronic images and artwork (not downloadable) on-line from databases or the Internet are dissimilar to all of the opponent’s services must be set aside as unfounded.

However, the Opposition Division agrees that the contested electronic publishing; publishing of books; book publishing; publishing; publishing of stories; publication of books and texts (other than publicity texts); publication of audiobooks; publication of books, texts and journals on-line are not identical or similar to any of the opponent’s services in Classes 38 or 41 as also put forward by the applicant. These contested services consist of different publishing services which concern the activity of making text (or other content) available to the general public through copying, editing, production and printing (including its electronic equivalents) of the content in question. Therefore, they do not have the same nature or purpose as the opponent’s services in Classes 38 and 41 which essentially consist of services of telecommunications, education, entertainment as well as sporting and cultural activities. Furthermore, they do not target the same relevant public since they satisfy different needs, are not found in the same distribution channels or are usually provided by the same undertakings. Moreover, the services under comparison are not complementary to each other or in competition. Therefore, they are dissimilar.

For the sake of clarity, the opponent claims that the earlier marks containing the entire headings of Classes 38 and 41 were filed before the 'IP Translator' judgment and that, in accordance with the practice of the Romanian Trade Mark Office, the earlier marks must therefore be considered to encompass not only the services covered by the literal meaning of the general indications making up the respective class headings but also all terms included in the alphabetical list of services in the respective classes of the Nice Edition in force at the time of filing of those marks. In order to support this claim, the opponent refers to the Common Communication on the implementation of 'IP Translator'.

However, the Court delivered its ruling in Case C-307/10 'IP Translator' on 19/06/2012 and the earlier Romanian trade marks on which the opposition is based were filed on 19/12/2014 and 04/02/2015 respectively. As a result, neither of the earlier marks invoked was filed before the delivery of the 'IP Translator' judgment as contended by the opponent. Furthermore, irrespective of how the scope of protection of Romanian marks applied for after the 'IP Translator' judgment is interpreted by the Romanian Trade Mark Office, as per table 5 contained in the Common Communication on the implementation of 'IP Translator' referred to by the opponent, the scope of protection of national trade marks, including Romanian marks, containing all the general indications of the Nice class headings but filed after this judgment is to be interpreted only on the basis of the literal meaning of the general indications or terms covered.

Therefore, the scope of protection of the earlier marks invoked in these proceedings cannot be interpreted by the Office to extend to any terms that cannot be understood as being included under the literal meaning of the general indications listed in the specifications covered by the earlier marks as set out above. As a result, this argument of the opponent must be set aside as unfounded and cannot change the reasoning or outcome reached in the comparisons made.

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 services found to be identical or (at least) similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

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

 

c) The signs

UNMASK THE MUSIC	UNMASKED
Earlier trade mark	Contested sign

 

The relevant territory is Romania.

 

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 English words 'UNMASK' in the earlier mark and 'UNMASKED' of which the contested sign consists cannot be considered to be basic English words. Therefore, they are unlikely to generally be understood by the public in the relevant territory but will rather be perceived as fanciful words conveying no clear or direct meaning. Therefore, they are distinctive to a normal degree.

However, the definite article 'THE' in the earlier mark is part of basic English vocabulary (see, to this effect, 24/06/2014, T-330/12, The Hut, EU:T:2014:569, § 44) and will therefore be perceived by the public in the relevant territory as a determiner of the subsequent word 'MUSIC'. In this respect, 'MUSIC' is also a basic English word and, furthermore, very close to the Romanian word 'muzică' (or even 'muzica' in its definite form) and will therefore be perceived as meaning 'an art form consisting of sequences of sounds in time, esp tones of definite pitch organized melodically, harmonically, rhythmically and according to tone colour' (information extracted from Collins English Dictionary on 01/06/2021 at www.collinsdictionary.com/dictionary/english/music). Consequently, the words 'THE MUSIC' will be understood as a conceptual unit referring to a type of art in its definite form as explained above. Therefore, this verbal element in the earlier mark will be perceived either as referring to the nature, intended purpose or subject matter of the services provided in Class 41 or as a reference to the intended field of application of the services in Class 38 and, as a result, is at most of weak distinctive character.

Consequently, the applicant’s assertion that the three words making up the earlier mark are one complete phrase and that no one word is more distinctive than the others cannot be upheld.

It should also be borne in mind, as pointed out by the opponent, that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the initial and most distinctive element/sound of the earlier mark, 'UNMASK', is fully contained at the beginning of the only element/sound of which the contested sign consists, 'UNMASKED' and, to this extent, the signs thus coincide in their first six letters/sounds and only differ in the additional two letters/sounds '******ED' at the end of the contested sign’s verbal element. The signs also differ in the additional verbal element/sound 'THE MUSIC' in the earlier mark which is not present in the contested sign. However, for the reasons set out above, this additional element is at most weak and present at the end of the earlier mark and will thus have less impact in the overall impression produced by the earlier mark on the relevant consumers.

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

  

Conceptually, the applicant argues that the marks differ because 'UNMASK THE MUSIC' as a phrase is a call to action and likely to be perceived as having the meaning of exposing a concealed truth or fact about music, for example the identity of a performer, whereas 'UNMASKED' of which the contested sign consists conveys a much more nebulous concept which will not necessarily relate to music but may mean overt (e.g. 'an unmasked contempt for authority') or simply the act of not wearing a mask.

However, for the reasons set out above, the signs as a whole do not have any clear or direct meaning for the public in the relevant territory. Furthermore, although the verbal element 'THE MUSIC' of the earlier mark will be associated with the meaning explained above, hence the signs are not conceptually similar to this extent, this does not constitute a significant difference between the signs given the at most weak distinctive character of the concept in question.

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

 

d) Distinctiveness of the earlier mark

 

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

 

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no clear or direct meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the, at most, weak element 'THE MUSIC' in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

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).

 

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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

 

In the present case, the services concerned are partly identical or (at least) similar and partly dissimilar and the degree of attention of the relevant public may vary from average to high.

The distinctiveness of the earlier mark as a whole is normal and the signs are visually and aurally similar to an average degree on account of the considerable coincidences in the initial and most distinctive element of the earlier mark, 'UNMASK', and the only element of which the contested sign consists, 'UNMASKED'. Furthermore, even if the signs are not conceptually similar to the extent that the additional verbal element 'THE MUSIC' in the earlier mark conveys a meaning, this is insufficient to help consumers more easily distinguish between the signs in view of the at most weak distinctive character of the concept in question as explained above in section c) of this decision.

Indeed, consumers will primarily retain the initial distinctive word 'UNMASK' of the earlier mark which is fully included at the beginning of the only element 'UNMASKED' of the contested sign and they will also have to rely on their imperfect recollection of the signs when acquiring the services concerned, even in relation to those for which a high degree of attention may be paid.

As a result, bearing in mind the overall similarities between the signs and the identity or (at least) similarity between the services concerned, consumers are likely to believe that those services offered under the signs in dispute originate from the same undertaking, or economically linked undertakings as the case may be.

 

Therefore, the Opposition Division finds that there is a likelihood of confusion on the part of the public in the relevant territory within the meaning of Article 8(1)(b) and the opposition is thus partly well founded on the basis of the opponent’s Romanian trade mark registration No 137 462.

 

It follows from the above that the contested trade mark must be rejected for the services found to be identical or (at least) similar to those of the earlier trade mark.

 

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

 

The opponent has also based its opposition on the following earlier trade mark:

 Romanian trade mark registration No 137 461 for the figurative mark covering the same services in Classes 38 and 41 as those set out above in section a) of this decision in relation to the earlier mark for which a likelihood of confusion has already been assessed.

Since this mark covers the same scope of services, the outcome cannot be different with respect to the dissimilar services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

COSTS

 

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

 

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

 

 

 

The Opposition Division

 

 

Francesca DRAGOSTIN

Sam GYLLING

Biruté SATAITE-GONZALEZ

 

 

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.