OPPOSITION No B 3 050 138

Vevo LLC, 4 Times Square, 10036 New York, United States of America (opponent), represented by Spheriens, Piazza della Libertà 13 - Viale Don Minzoni 1, 50129, Firenze, Italy (professional representative)

a g a i n s t

Fedele Lovino, Via Corsica 168/D, 76012 Canosa Di Puglia, Italy (applicant), represented by Onofrio Musco, Via Monte Sabotino 6, 76011 Bisceglie Italy (professional representative).

On 30/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 138 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 566 911 for the figurative mark . The opposition is based on European Union trade mark registrations No 8 201 071 for the word mark 'VEVO', No 9 658 089 for the word mark 'VEVO GO SHOWS', No 10 434 124 for the word mark 'VEVO LIFT' and No 10 879 179 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to all these earlier marks.

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 European Union trade mark registrations No 8 201 071 and No 10 434 124.

a) The goods and services

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

1) European Union trade mark registration No 8 201 071

Class 35: Promoting the interests of musicians, singers, songwriters, musical performers and artists; distribution of musical sound recording and video recordings through the Internet; retail store services and computerized on-line retail store services featuring CD's, cassettes, musical DVD's, videocassettes, musical records, downloadable prerecorded music and audio-visual content, musical event ticketing, clothing, collectibles, posters, prints, books, programs, glass ware, jewelry, calendars, accessories and other merchandise; subscriptions to books, reviews, newspapers, electronic journals or comic books in the field of music; preparing audio-visual displays in the field of music and musical entertainment; promoting goods and services of others by arranging for sponsors to affiliate their goods and services with professional sports, entertainment, or other events in the field of music, through the Internet; advertising, including promotion of products and services of third parties through sponsoring arrangements and license agreements relating to international sports, entertainment and music events; providing information about the goods and services of others via a global computer network; musical contests and incentive award programs to promote the sale of products and services of others.

Class 38: Streaming or transmitting streamed audio, video and audio-visual recordings via the internet; providing on line facilities for real-time interaction with other computer users concerning music and entertainment; digital and electronic transmission of voice, data, sound, images, audio and video content, and messages in the fields of music and musical entertainment.

Class 41: Entertainment services; entertainment services including programs in the fields of music and entertainment distributed on line, mobile communication devices, wireless devices, radio, in the fields of music and entertainment; providing on line entertainment in the fields of music and entertainment; providing online entertainment, namely providing audio, video and audio-visual recordings in the field of music and entertainment; entertainment services, namely providing on line non-downloadable prerecorded musical sound and video recordings via a global computer network; entertainment in the nature of ongoing live concerts and performances by musical artists and groups; entertainment services, namely, providing on-line reviews of music, musical artists and music videos; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all on line via a global computer network; preparing audio-visual displays in the field of music; production, publishing and distribution of audio, video and audiovideo recordings; sweepstake services; entertainment services, namely, conducting contests.

2) European Union trade mark registration No 10 434 124

Class 41: Entertainment services including programs distributed in all media including online, mobile communication devices, wireless devices, and television in the field of emerging musical artists and performers; providing online entertainment in the field of emerging musical artists and performers; providing entertainment for use with mobile communication devices in the field of emerging musical artists and performers; providing nondownloadable video recordings distributed in all media including online, mobile communication devices, wireless devices, and television featuring emerging musical artists and performers; providing a website and online profile pages featuring recorded music, musical videos, related video clips, photographs, and other entertainment information about emerging musical artists and performers; providing non-downloadable musical sound recordings distributed in all media including online, mobile communication devices, wireless devices, and television in the field of emerging musical artists and performers; provision of information relating to entertainment, namely online retail sites that feature downloadable musical sound recordings, musical sound recordings, downloadable musical audio visual recordings, and musical visual recordings in the field of emerging musical artists and performers.

Class 45: Online social networking services provided through a music and musical artist community website in the field of emerging musical artists and performers; online social networking in the fields of emerging musical artists and performers.

The contested goods, after a partial rejection in parallel opposition proceedings B 3 049 346, are the following:

Class 18: Umbrellas and parasols; suitcases; boxes made of leather; shoulder belts; straps for handbags.

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

The term ‘including’, used in the opponent’s list of services, indicates that the specific 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 opponent’s list of 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 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.

The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod, parasols are light umbrellas carried for protection from the sun. The contested suitcases; boxes made of leather are bags and boxes used for carrying things when travelling or for storage, shoulder belts; straps for handbags are strips of leather or fabric which, when placed over one shoulder, are used as a support for handbags or other objects.

They have nothing in common with the opponent’s services in Classes 35 (mainly distribution of musical sound and video recordings, retail services in relation to a variety of goods, all being different to the contested goods, promotional and advertising services), 38 (mainly telecommunications and electronic data transmission), 41 (mainly entertainment services) and 45 (online social networking services) that could justify finding a level of similarity between them under the Canon criteria. Apart from being different in nature, since services are intangible whereas goods are tangible, the compared goods and services serve very different purposes and they are neither in competition nor complementary. Moreover, they usually have different distribution channels and origins. Therefore, they are dissimilar.

It should be noted that, contrary to the opponent’s submission, although the earlier trade mark No 1 contains retail store services featuring accessories and other merchandise, the wording of the specific goods is vague and drafted in very general terms. Due to the vagueness of the terms ‘accessories and other merchandise’, the specification of retail services relating to these goods is not precise enough either and their natural meaning cannot be sufficiently identified. Consequently, these services are also not similar to the contested goods in Class 18.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

As regards the other two earlier trade marks invoked by the opponent, they cover the same or a narrower scope of services. Therefore the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those earlier rights either.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

The Opposition Division will continue with the examination of the remaining ground of the opposition, namely Article 8(5) EUTMR,

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 8 201 071 for the word mark 'VEVO', for which the opponent claimed repute in the EU.

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.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 07/12/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 35: Promoting the interests of musicians, singers, songwriters, musical performers and artists; distribution of musical sound recording and video recordings; computerized on-line ordering services in the field of music and entertainment and on-line gift ordering services; retail store services and computerized on-line retail store services featuring CD’s, cassettes, DVD’s, videocassettes, records, downloadable pre-recorded music and audio-visual content, event ticketing, clothing, collectibles, posters, prints, books, programs, glass ware, jewelery, calendars, accessories and other merchandise; retail store services available through interactive television featuring CD’s, cassettes, DVD’s, videocassettes, records, event ticketing, clothing, collectibles, posters, prints, books, programs, glassware, jewelry, calendars, accessories and other merchandise, retail store services available through mobile telephones featuring CD’s, cassettes, DVD’S, videocassettes, records, downloadable pre-recorded music and audio-visual content, event ticketing, clothing, collectibles, posters, prints, books, programs, glassware, jewelry, calendars, accessories and other merchandise; subscriptions to books, reviews, newspapers, electronic journals or comic books; preparing audio-visual displays in the field of music and entertainment, and/or for use in advertising; participation in tradeshows, exhibitions and fairs in the field of sports, music and entertainment and/or for business and advertising purposes; conducting and online tradeshow exhibition, in the field of sports, music, musical concerts and videos; promoting goods and services of others by arranging for sponsors to affiliate their goods and services with professional sports, entertainment, music competitions, concerts or other events; advertising, including promotion of products and services of third parties through sponsoring arrangements and license agreements relating to international sports, entertainment and music events; providing information about the goods and services of others via a global computer network; contests and incentive award programs to promote the sale of products and services of others.

Class 38: Streaming or transmitting streamed audio, video and audio-visual recordings via the internet; providing online facilities for real-time interaction with other computer users concerning music and entertainment, and for social networking purposes; providing online chat rooms and forums and electronic bulletin boards for transmission of messages among users concerning music and entertainment; digital and electronic transmission of voice, data, sound, images, audio and video content, and messages in the fields of sports, music and entertainment; digital and electronic transmission of voice, data, sound, images, audio and video content, and messages in the fields of sports, music and entertainment.

Class 41: Entertainment services, entertainment services including programs distributed in all media including online, mobile communication devices, wireless devices Television, satellite, radio, in the fields of music and entertainment; providing online entertainment in the fields of music and entertainment; providing online entertainment, namely providing audio, video and audio-visual recordings in the field of music and entertainment; entertainment services, namely providing online non-downloadable prerecorded musical sound and video recordings via a global computer network; entertainment in the nature of ongoing live concerts and performances by musical artists and groups; entertainment services, namely, providing on-line reviews of music, musical artists and music videos; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all online via a global computer network; preparing audio-visual displays in the field of music; production and distribution of television and radio programs, and motion picture films; production , publishing and distribution of audio, video and audio-video recordings; on-line journals, namely blogs featuring music and entertainment; sweepstake services; entertainment services, namely, conducting contests.

After a partial rejection in parallel opposition proceedings, the opposition is directed against the following goods:

Class 18: Umbrellas and parasols; suitcases; boxes made of leather; shoulder belts; straps for handbags.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Exhibit 1: Declaration by the General Counsel of Vevo LLC dated 29/11/2018 stating that his company is the world’s leading music video and entertainment platform with billions of views obtained globally each month. The declaration is backed up by the following evidence:

• Annexure A: schedule of Vevo’s trademarks worldwide.

• Annexure B: numerous press releases from the opponent’s website www.vevo.com and dating from April 2009 to December 2011. Such documents give account inter alia of the launch of the Vevo platform, the companies involved, the business arrangements entered into by Vevo, the shows and the performances of the artists broadcast on the internet through the platform, etc.

• Annexure C: domain name registration particulars for www.vevo.com and printouts from internet archive ‘WayBack Machine’ showing activity of the website since at least 2009.

• Annexure D: screenshots of the opponent’s official Instagram® Facebook®, Twitter® and Pinterest® accounts. Although the extracts show millions of ‘likes’ and followers, these figures are global and apart from Instagram® (for which some EU countries’ extracts are provided), it is not possible to infer more specific information related to the EU market.

• Annexure E: articles from internet publications and websites showing the high popularity of the Vevo brand. All of them are dated in the short period between 14/01/2010 to 09/11/2010, except one which was issued on 25/09/2015. Although some figures reflected in these publications are impressive (e.g. number of visitors/users of the opponent’s platform in 2010), they exclusively relate to the US territory or are worldwide figures.

• Exhibit 2: press clippings in English about inter alia Vevo’s launches dated between 2009 and 2013.

• Exhibit 3: two articles published on the web in English regarding Vevo’s initiatives (dated 05/01/2011 and 01/05/2015 respectively) and printouts from Vevo’s and YouTube® websites (date of printing 14/11/2018) showing number of subscribers to Vevo branded channel (more than 17 millions).

• Exhibit 4: press clippings in English on Vevo’s launch in several EU countries dated between 16/03/2011 and 01/10/2013, including some screenshots of the opponent’s website and Facebook® account.

• Exhibit 5: printout from YouTube® website (date of printing 14/11/2018) showing number of subscribers to Vevo branded channel (page in Italian).

• Exhibit 6: an extract from Wikipedia, printed on 14/11/2018, describing the opponent’s history. It states that the company was founded in 2009 as a joint venture among three major record companies and in December of the same year became the number one most visited music site in the United States.

• Exhibit 7: extracts from the ‘tellyawards’ website dated in 2015 and 2018.

• Exhibit 8: extract from a website reporting that VEVO had in 2015 more than 42 million unique viewers in USA.

• Exhibit 9: extract of an article published on the web reporting about the 10 best digital music start-ups of 2010. Vevo is ranked in the second place.

• Exhibit 10: extract of an article listing digital hotlist 2010 in which Vevo appears in the eighth place. Although it provides figures about the number of views/visits, there is no information about the geographical location of the same.

• Annex 11: extract of an article published on the web on 2010 media awards reporting about the launch of Vevo online video platform.

The remaining evidence contained in Annexes 12-14 is aimed inter alia at showing proximity between music and fashion industry and is totally unrelated to the question of reputation.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation in the EU.

As regards the declaration above is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary, since such statements have to be considered as having less probative value than evidence originating from independent sources. In the present case, the declaration refers to billions of views that Vevo-branded platform collects every year since 2010 in the EU and the high annual revenues attributable to sales generated from within the EU. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the content of the declaration is supported by the other items of evidence.

In the first place, the Opposition Division notes that the evidence does not include direct indications regarding the public’s awareness of the earlier mark (e.g. surveys or opinion polls) and that no information about the share of the European Union market that the mark holds is provided, either. A large proportion of the documents are printouts from the opponent’s own website (e.g. Annexure B) and do not give any indication of the level of recognition, or even of any actual use of the mark, in the EU. Likewise, the articles contained for example in the Annexure E and in Exhibits 2 and 4 mainly concern US or provide only global figures (mostly concentrated in the years 2009 and 2010). In fact very few pieces of information in these articles can be linked to EU countries and none that might confirm the content of the declaration in relation to the European Union. Few articles just report about the launch of the opponent’s services in some countries like the UK, Spain, Italy and France, but, apart from that, little additional information is provided.

As regards the presence of the opponent in social media and on YouTube®, the documents attached to the declaration (Annexure D and Exhibit 3) do not allow (with the sole possible exception of Instagram®) the Opposition Division to determine what portion of these followers, subscribers or likes, originate from the European Union. The opponent’s mere statements in the declaration are insufficient in that regard. Therefore, these documents are unsuitable to determine the degree of recognition of the mark in the territory concerned. Even if it is assumed that all followers, as evidenced on the Instagram® accounts of the opponent, do originate from the specific territories to which the accounts appear to be directed, the total number of followers from EU countries shown is about half a million, which number for the territory of the entire EU is quite insignificant.

As for Exhibit 6, it is settled case-law that a Wikipedia article constitutes information lacking certainty, as it is taken from a collective encyclopaedia established on the internet, the content of which may be amended at any time and, in certain cases, by any visitor, even anonymously (16/06/2016, T-614/14, Kule, ECLI:EU:T:2016:357 § 47; 10/02/2010, 10 February 2010 T-344/07, (Homezone), EU:T:2010:35, § 46, and 16/11/2011 T-500/10, Puertas Doorsa, not published, EU:T:2011:679, § 55). In any case the article does not focus on EU market and simply reports that VEVO services are available in some EU countries.

As far as the awards and rankings mentioned in Exhibits 7 to 11, they do not give first-hand information about awareness of the trade mark ‘VEVO’ in the EU. In particular, the opponent does not give much detail regarding the awards and if they concern the European Union. Some are clearly US awards, of which EU consumers would most likely not be aware. Furthermore, although some figures mentioned in this evidence are remarkable, they again refer exclusively to the USA and are therefore of scarce assistance for establishing reputation of the earlier mark in the European Union.

Finally, the documents submitted do not shed any light on the revenues and turnover generated by the earlier mark within the EU nor account is given of marketing expenditures or sponsorship activities undertaken by the opponent that may have increased awareness of the opposing sign in the EU.

Therefore, even taken as a whole, the documents do not provide sufficient indication of the earlier trade mark’s exposure to the relevant public and do not allow the Opposition Division to reach a positive finding that the earlier mark has acquired a reputation in the European Union.

These findings equally apply to the other earlier rights for which reputation was claimed by the opponent and Article 8(5) EUTMR was invoked. These marks are made up of the word element ‘VEVO’ and an additional word or figurative element. A fortiori no reputation exists in the EU as regards these marks either.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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

Cristina SENERIO LLOVET

Riccardo RAPONI

Teodora TSENOVA-PETROVA

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.