OPPOSITION No B 3 086 551

Adstream Holdings Pty Limited, Level 5 Tower B, 207 Pacific Highway, NSW 2065, St Leonards, Australia (opponent), represented by Promark, 62 avenue des Champs Elysées, 75008 Paris, France (professional representative)

a g a i n s t

Apis IP-Solutions Training AB, Rosenlundsgatan 54, 118 63 Stockholm, Sweden (applicant).

On 30/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 551 is upheld for all the contested services, namely

Class 35: Advertising, marketing and promotional services.

Class 38: Broadcasting services.

2. European Union trade mark application No 18 034 717 is rejected for all the contested services. It may proceed for the remaining services.

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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 18 034 717 for the word mark ‘Astream’, namely against all the services in Classes 35 and 38. The opposition is based on international trade mark registrations No 1 281 281 and No 1 397 305, designating the European Union for the word mark ‘ADSTREAM’. 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.

a) The services

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

Earlier mark No 1 281 281:

Class 35: Advertising.

Earlier mark No 1 397 305

Class 38: Telecommunications services, including electronic transmission, reception, transfer and delivery of data, documents, digital files, images, photos, videos, digital media contents and audio-visual material.

The contested services are the following:

Class 35: Advertising, marketing and promotional services.

Class 38: Broadcasting services.

Contested services in Class 35

The contested advertising, marketing and promotional services overlap with the opponent’s advertising of earlier mark No 1 281 281 and are therefore considered identical.

Contested services in Class 38

The contested broadcasting services overlap with the opponent’s telecommunications services of earlier mark No 1 397 305 and are therefore considered identical.

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 at issue are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

c) The signs and the distinctiveness of the earlier marks

ADSTREAM	Astream
Earlier trade marks	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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Part of the signs may be meaningful for the English-speaking-part of the professional public in the relevant territory, because they might see the word ‘STREAM’ in both signs. Another part of the public who is not familiar with English, will perceive both signs as meaningless. For reasons of procedural economy, and in order to avoid different linguistic scenarios, the comparison of the signs will focus on the part of the public for whom both signs are meaningless and thus distinctive to an average degree.

Since the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory – and given the lack of a claim for enhanced distinctiveness on the side of the opponent – the distinctiveness of the earlier marks must be seen as normal.

Visually and aurally the signs coincide in their string of letters ‘A*STREAM’. However, they differ in the additional second letter ‘D’ of the earlier marks.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for 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.

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

d) Global assessment, other arguments and conclusion

The identical services target the professional public with an average degree of attention.

The signs are visually and aurally highly similar and the conceptual comparison is not possible. The earlier marks enjoy a normal degree of distinctiveness.

The contested sign is completely contained in the earlier marks, with the only exception of the additional second letter in the earlier marks. The signs have a highly similar rhythm and intonation based on their similar length and their two-syllables structure.

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). Also, the lack of meaning of all the marks is a relevant factor to consider in this regard. Therefore, the difference in one additional letter in the earlier marks may be easily overlooked by the public.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registrations No  1 281 281 and No 1 397 305, designating the European Union. It follows that the contested trade mark must be rejected for all the contested 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.

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

Tzvetelina IANTCHEVA

Sylvie ALBRECHT

Valeria ANCHINI

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.