OPPOSITION No B 3 087 776

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

Canal Q S.A., Travessa Fábrica dos Pentes nº 12 9º, 1250 Lisboa, Portugal (applicant), represented by Márcia Isabel Martinho da Rosa, Rua Rodrigo da Fonseca, nº 82 - 1º Dto, 1250-193 Lisboa, Portugal (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 776 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 036 802 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 036 802 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 4 804 621 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 European Union trade mark registration No 4 804 621 for the figurative mark .

1. The goods and services

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

Class 9: Scientific (other than for medical purposes), nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (inspection), life-saving apparatus and instruments, apparatus and instruments for conducting, distribution, conversion, storage, regulation or control of electric current, electronic decoders; electronic data processing apparatus, electronic measuring and checking (supervision) apparatus, electronic amplifiers, transmitters of electronic signals for editing cinematographic film; teaching apparatus and instruments; apparatus and instruments for recording, transmission, reproduction, storage, encoding, decoding, conversion and processing of sound or images; telecommunications apparatus and instruments, telephone apparatus, audio and video interactive servers, computer servers, connection equipment for computer hardware (namely modems); audiovisual, telecommunications, data communications apparatus and equipment, televisions, remote controls, tape-recorders, radio apparatus, cinema projectors, car radios, aerials, parabolic antennae, loudspeakers, amplifiers, hi-fis, computers, computer keyboards, computer peripheral devices, modems, recorded computer software, decoders, encoders, access and access control devices for data processing apparatus, authentication devices for telecommunications networks; apparatus for scrambling and descrambling signals and retransmissions; apparatus for downloading audio and video content and, in particular, films, television films, musical scores, broadcasts of events, reproduction and remote transmission broadcasting rights; digital terminals, repeaters, satellites; microphones, films (exposed), video recordings and sound recordings, magnetic tapes, videotapes, compact discs (audio-video), optical discs, CD-ROMs, digital video discs, magnetic discs, digital video discs, video cartridges, electronic games consoles; telephones; combined televisions and mobile telephones; magnetic data carriers, magnetic encoded cards, chip cards, electronic cards, electronic money carriers; integrated circuits and microcircuits, card readers, electronic components, sound recording discs; data reception monitors on global computer networks, data transmission servers, automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines and data processing equipment; satellites for scientific and telecommunications use; devices for simultaneous programming and selection of television channels; electronic radio and television programme guide; apparatus and instruments for programming and selection of television programmes; interactive television apparatus and instruments; apparatus and instruments for selecting audio and video works, for composing audio and video on demand programmes; apparatus for the interactive personalisation of audio and video programmes; television screens; software for providing access to computer or data transmission networks, in particular to a world-wide communications network (such as the Internet) or private or restricted access networks (such as an intranet).

Class 35: Advertising; rental of advertising space; dissemination of advertising matter and publicity columns; direct mail advertising (tracts, prospectuses, printed matter, samples); subscription services for restricted access audio-visual programmes, video recordings and newspapers, for others; subscriptions to television and radio programmes, to video recordings and sound recordings and to audiovisual media; publication of publicity texts; radio and television advertising; interactive advertising; business management; business administration; office functions; distribution of leaflets and samples; business consultancy, information or enquiries; business research; commercial or industrial management assistance; business or industrial appraisals; accounting; document reproduction; employment agencies; computerized file management; data entry and data processing, rental of computer files; organization of exhibitions for commercial or advertising purposes; importing and exporting agencies; bill-posting, sales promotion (for others); market research; auctioneering; telepromotion; organisation of commercial events; providing facilities for exhibitions (administration), for commercial or advertising purposes; collection (except transport), for others, of various audiovisual and computer products, sporting articles and clothing, enabling consumers to view and purchase them conveniently in exhibition halls; negotiations and granting of licences and other methods of exploiting rights derived from audio and visual creation (for others); data transmission subscriptions, subscriptions to a computer database, subscriptions to a computer providing access to computer or data transmission networks, in particular for global communications (such as the Internet), or private or restricted access networks (such as an intranet), telephone subscriptions for consultation of information supplied online.

Class 38: Telecommunications; interactive television broadcasting services relating to the presentation of products; news agencies; radio broadcasting, communications by telegram, by telephone or by videophone, by television, and television broadcasting; transmission of information by data transmission; message sending, transmission of telegrams, computer-aided transmission of images; transmission of information by teleprinter, television programmes, broadcasting of programmes, in particular by computer networks, radio, television, cable, Hertzian wave or satellite and based on video recordings and sound recordings; rental of message sending apparatus; communication by computer terminals; communications (transmission) on open or closed worldwide computer networks; transmission of programmes and selection of television channels; providing access to a computer network; remote loading of video games, digital data, financial services, stocks exchange services; providing connections to a computer network enabling the viewing, selection and then purchase of products from a catalogue or from an Internet site, by mail order or by means of telecommunications; mobile radiotelephony, connecting via telecommunications to an information network, consultancy relating to computers, transmission via data communications of information accessible by access code or terminal, transmission of information by secure messaging systems; broadcasting of videos on mobile telephones; providing access via the global computer network to audio and visual works, namely films, television films, musical scores, broadcasting of events, through the acquisition of reproduction rights; leasing access time to a computer database; downloading of video games, digital data and videos, namely transmission of programs or data by means of telecomputing networks.

Class 41: Education; providing of training; entertainment; television and radio entertainment; sporting and cultural activities; publication of books and magazines; book lending; production of shows, films, television films, television programmes, documentaries, debates, video recordings and sound recordings; theatrical agencies; rental of video recordings and sound recordings, films, phonographic recordings, videotapes, cinema projectors, decoders, encoders, stage scenery and accessories therefor; organisation of competitions, lotteries and games (education or entertainment); production of programmes, broadcasts, debates and documentaries; arranging and conducting of colloquiums, conferences and congresses; organization of exhibitions for cultural and educational purposes; organisation of seminars, of practical training (demonstration); booking of seats for shows; rental of devices (apparatus) for access to interactive audiovisual programmes; news reporter's servives; videotaping; consultancy relating to the production of audiovisual programmes; exhibition site management; providing facilities for exhibitions, for commercial or advertising purposes; publication of texts, of sound and/or visual media and multimedia of any kind (interactive discs, audio-digital compact discs with read-only memory), publication of multimedia programs (computerisation of text and/or of still or moving images and/or of sound, whether or not musical), whether or not for interactive use.

Class 42: Research and development (for others); technical research; technical advice in the development of electronic payments, teleshopping; engineering, professional consultancy relating to computers; environmental protection consultancy; professional consultancy regarding copyright; professional consultancy relating to intellectual property; professional consultancy relating to the authentication of works of art; engineering work (not for construction); rental of automatic vending machines; design, upgrading and rental of computer software; consultancy in the field of computers, computing, telecommunications; computer programming, computer rental; copyright management, design of encryption, decryption and access control systems for television or radio programmes and for any other transmission of information, design of interactive programs and apparatus; website design; technical standardisation; technical research; weather information services; research and development of electronic, computer and audiovisual, scrambling and access control systems in the fields of television, data processing, telecommunications and audiovisual equipment; authentication (origin searches) of electronic messages; certification (quality control, control of origin); leasing access time to telecommunications networks; information about computing applied to telecommunications; hosting of information technology sites on the Internet, creation (design) and management of websites for others, hosting of third party websites, evaluation, appraisal and research in the field of computers, technical project studies, design and development of software; website design.

The contested goods and services are the following:

Class 9: Downloadable sound recordings; pre-recorded videos; prerecorded music videos; prerecorded motion picture videos; downloadable video recordings featuring music; pre-recorded video compact discs; video editing software; computer programs for editing images, sound and video; web application and server software; application software for mobile phones; computer software for mobile phones; computer application software for mobile telephones; computer software to enable the transmission of photographs to mobile telephones; computer programs and software for image processing used for mobile phones; video processors.

Class 35: Producing promotional videotapes, video discs, and audio visual recordings; production of advertising films; production of television and radio advertisements; production and distribution of radio and television commercials; scriptwriting for advertising purposes; promotion, advertising and marketing of on-line websites; on-line promotion of computer networks and websites; retail services in relation to computer software; online retail services for downloadable and pre-recorded music and movies; online advertisements.

Class 38: Communications by telegraph; radio, telephone, telegraph communication services; video-on-demand transmission; broadcasting of television programs using video-on-demand and pay-per-view television services; providing online forums; data bank interconnection services; providing access to databases; providing telecommunications connections to a global computer network; providing telecommunications connections to a global computer network or databases; transmission of electronic mail; electronic transmission of mail and messages; data transmission by electronic mail; transmission of electronic mail [e-mail data services]; transmission of digital files; streaming of data; transmission of sound or visual recordings over networks; provision of telecommunication access to films and television programs provided via a video-on-demand service; video uploading services; transmission of sound, video and information; provision of electronic video links; interactive transmission of video over digital networks; providing access to a video sharing portal; transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the internet; information relating to communications; mobile telephone communication services; telephone and mobile telephone services; television broadcasting services for mobile phones; video broadcasting.

Class 39: Physical storage of electronically stored data or documents; physical storage of electronically stored digital data, photographs, audio and image files; physical storage of electronically stored data, documents, digital photographs, music, images, video, and computer games; physical storage of electronically stored digital video files.

Class 40: Providing information relating to the processing of cinematographic films.

Class 41: Academies [education]; rental of cinematographic apparatus; rental of movie projectors and accessories; leasing of motion picture projectors; recording studio services for television; rental of scenery for television studios; rental of lighting apparatus for television studios; rental of video cameras; rental of video cassette recorders; rental of videotapes; rental of videotapes, videocassettes and videograms; rental of video tapes and motion pictures; rental of motion pictures; rental of motion pictures and of sound recordings; production of sound recordings; rental of sound recordings; rental of sound and image recordings; presentation of variety shows; providing films, not downloadable, via video-on-demand services; providing on-line music, not downloadable; providing online electronic publications in the field of music, not downloadable; providing television programmes, not downloadable, via video-on-demand services; provision of multimedia entertainment programs by television, broadband, wireless and on-line services; videotape production; video editing; production of musical videos; production of training videos; video rental services; video production services; lending libraries for videos; providing on-line videos, not downloadable; studio services for the recording of videos; provision of video recording studio facilities; provision of video recording studio services; hosting [organising] awards relating to videos; special effects animation services for film and video; post-production editing services in the field of music, videos and film; radio entertainment; provision of radio and television entertainment services; dubbing; videotape editing; editing of video recordings; audio and video editing services; presentation of live performances; showing of films; exhibition of video films; cinema presentations; exhibition of video film sound tracks; videotaping; video recording services; audio and video recording services; provision of automated video recording services; audio, film, video and television recording services; sound recording and video entertainment services; rental of apparatus for the recording of video signals; recording, film, video and television studio services; rental of sound and video recording apparatus; education information; entertainment information; recreation information; subtitling; microfilming; microfilming for others; organisation and presentation of shows; arranging of entertainment shows; organization of cosplay entertainment events; production of shows; film production, other than advertising films; production of documentaries; production of video cassettes; production of cinematographic films; theatre production; production of television features; production of television films; production of audio-visual recordings; production of music; production of radio and television programmes; television and radio programme preparation and production; television, radio and film production; production of plays; publication of books; publication of texts, other than publicity texts; online publication of electronic books and journals; publication of online guide books, travel maps, city directories and listings for use by travellers, not downloadable; scriptwriting, other than for advertising purposes; screenplay writing; scriptwriting services; writing of texts; booking of seats for shows; entertainer services; entertainment services; movie studio services; recording studio services; providing multi-media entertainment via a website; provision of online tutorials.

Class 42: Electronic storage of videos; hosting a website for the electronic storage of digital photographs and videos; electronic storage of files and documents; updating of computer software; maintenance and updating of computer software; rental of web servers; off-site data backup; computer and information technology consultancy services; creating and designing website-based indexes of information for others [information technology services]; computer programming; computer software design; providing information on computer technology and programming via a web site; maintenance of computer software; creating and maintaining websites for mobile phones; creating and maintaining websites for cellular phones; providing temporary use of on-line non-downloadable software for web site development.

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 ‘in particular’ and ‘such as’, 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 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 video editing software; computer programs for editing images, sound and video; web application and server software; application software for mobile phones; computer software for mobile phones; computer application software for mobile telephones; computer software to enable the transmission of photographs to mobile telephones; computer programs and software for image processing used for mobile phones are included in the broad category of, or overlap with, the opponent’s recorded computer software. Therefore, they are identical.

The contested video processors is included in the broad category of the opponent’s apparatus and instruments for recording, transmission, reproduction, storage, encoding, decoding, conversion and processing of sound or images. Therefore, they are identical.

The contested downloadable sound recordings; pre-recorded videos; prerecorded music videos; prerecorded motion picture videos; downloadable video recordings featuring music; pre-recorded video compact discs; are similar to the opponent’s recorded computer software. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 35

The contested producing promotional videotapes, video discs, and audio visual recordings; production of advertising films; production of television and radio advertisements; production and distribution of radio and television commercials; scriptwriting for advertising purposes; promotion, advertising and marketing of on-line websites; on-line promotion of computer networks and websites; online advertisements are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale).

Moreover, the Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34).

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. In the above, the contested retail services in relation to computer software are similar to the opponent’s recorded computer software. Likewise, the contested online retail services for downloadable and pre-recorded music and movies are similar to the opponent’s video recordings and sound recordings.

Contested services in Class 38

The contested communications by telegraph; radio, telephone, telegraph communication services; video-on-demand transmission; broadcasting of television programs using video-on-demand and pay-per-view television services; providing online forums; data bank interconnection services; providing access to databases; providing telecommunications connections to a global computer network; providing telecommunications connections to a global computer network or databases; transmission of electronic mail; electronic transmission of mail and messages; data transmission by electronic mail; transmission of electronic mail [e-mail data services]; transmission of digital files; streaming of data; transmission of sound or visual recordings over networks; provision of telecommunication access to films and television programs provided via a video-on-demand service; video uploading services; transmission of sound, video and information; provision of electronic video links; interactive transmission of video over digital networks; providing access to a video sharing portal; transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the internet; information relating to communications; mobile telephone communication services; telephone and mobile telephone services; television broadcasting services for mobile phones; video broadcasting are various telecommunication services. Therefore, they are included in the broad category of, or overlap with, the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 39

The contested physical storage of electronically stored data or documents; physical storage of electronically stored digital data, photographs, audio and image files; physical storage of electronically stored data, documents, digital photographs, music, images, video, and computer games; physical storage of electronically stored digital video files are similar to the opponent’s hosting of third party websites in Class 42. In fact, these services are complementary and in any event will be perceived as such by the non-specialised or non-professional part of the relevant public, in that the earlier hosting of third party websites will provide the space on the internet necessary to store and give access to the electronic media, documents, files and so forth (i.e. ‘virtual storage’) referred to in the contested services of Class 39 (i.e. ‘physical storage’). The services may thus also be perceived as originating from the same companies. Furthermore, distribution channels might also coincide (by analogy 27/08/2018, R1815/2017-5, CALVADRIVE / CALVACOM).

Contested services in Class 40

The contested providing information relating to the processing of cinematographic films is similar to the opponent’s production of films in Class 41. It is considered that film processing might be one of the necessary activities in the course of film production, rendering them complementary. Furthermore, the services may be carried out by the same undertakings and targeted at the same public through the same distribution channels.

Contested services in Class 41

Booking of seats for shows; videotaping; entertainment services; production of shows; publication of books are identically contained in both lists of services (including synonyms).

The contested academies [education]; provision of online tutorials; education information are included in the broad category of, or overlap with, the opponent’s education. Therefore, they are identical.

The contested rental of cinematographic apparatus; rental of movie projectors and accessories; leasing of motion picture projectors; rental of scenery for television studios; rental of videotapes; rental of videotapes, videocassettes and videograms; rental of video tapes and motion pictures; rental of motion pictures; rental of motion pictures and of sound recordings; rental of sound recordings; rental of sound and image recordings; video rental services; lending libraries for videos are either identically included in both lists of services, or included in the broad category of, or overlap with, the opponent’s rental of video recordings and sound recordings, films, phonographic recordings, videotapes, cinema projectors, decoders, encoders, stage scenery and accessories therefor. Therefore, they are identical.

The contested radio entertainment; provision of radio and television entertainment services; presentation of live performances; showing of films; exhibition of video films; cinema presentations; exhibition of video film sound tracks; sound recording and video entertainment services; entertainment information; recreation information; entertainer services; providing multi-media entertainment via a website; arranging of entertainment shows; organization of cosplay entertainment events; presentation of variety shows; providing films, not downloadable, via video-on-demand services; providing on-line music, not downloadable; providing online electronic publications in the field of music, not downloadable; providing television programmes, not downloadable, via video-on-demand services; provision of multimedia entertainment programs by television, broadband, wireless and on-line services; providing on-line videos, not downloadable; organisation and presentation of shows are included in the broad category of, or overlap with, the opponent’s entertainment. Therefore, they are identical.

The contested publication of texts, other than publicity texts is included in the broad category of the opponent’s publication of texts. Therefore, they are identical.

The contested online publication of electronic books and journals; publication of online guide books, travel maps, city directories and listings for use by travellers, not downloadable are included in the broad category of, or overlap with, the opponent’s publication of books and magazines. Therefore, they are identical.

The contested recording studio services for television; production of sound recordings; videotape production; production of musical videos; production of training videos; video production services; studio services for the recording of videos; provision of video recording studio facilities; provision of video recording studio services; special effects animation services for film and video; film production, other than advertising films; production of documentaries; production of video cassettes; production of cinematographic films; theatre production; production of television features; production of television films; production of audio-visual recordings; production of music; production of radio and television programmes; television and radio programme preparation and production; television, radio and film production; production of plays; movie studio services; recording studio services; video recording services; audio and video recording services; provision of automated video recording services; audio, film, video and television recording services; recording, film, video and television studio services; microfilming; microfilming for others are included in the broad category of, or overlap with, the opponent’s production of shows, films, television films, television programmes, documentaries, debates, video recordings and sound recordings. Therefore, they are identical.

The contested rental of lighting apparatus for television studios; rental of video cameras; rental of video cassette recorders; rental of apparatus for the recording of video signals; rental of sound and video recording apparatus are at least similar to the opponent’s rental of video recordings and sound recordings, films, phonographic recordings, videotapes, cinema projectors, decoders, encoders, stage scenery and accessories therefor. This is because they at least share their nature, provider, relevant public and distribution channels.

The contested hosting [organising] awards relating to videos is similar to the opponent’s organisation of competitions (education or entertainment). They have the same nature. They usually coincide in provider, relevant public and distribution channels.

The contested dubbing; videotape editing; editing of video recordings; video editing; post-production editing services in the field of music, videos and film; audio and video editing services; subtitling; scriptwriting, other than for advertising purposes; screenplay writing; scriptwriting services; writing of texts are similar to the opponent’s

production of shows, films, television films, television programmes, documentaries, debates, video recordings and sound recordings. They usually coincide at least in purpose (entertainment) and also there is a complementary relationship between them, since the contested services are indispensable for the furnishing of the opponent’s services. Some might also be provided by the same provider.

Contested services in Class 42

Computer programming; computer software design; computer consultancy services are identically contained in both lists of services (including synonyms).

The contested information technology consultancy services overlaps with the opponent’s consultancy in the field of computers. Therefore, they are identical.

The contested electronic storage of videos; hosting a website for the electronic storage of digital photographs and videos; electronic storage of files and documents are included in the broad category of, or overlap with, the opponent’s hosting of third party websites. Therefore, they are identical.

The contested updating of computer software; maintenance and updating of computer software; maintenance of computer software are included in the broad category of, or overlap with, the opponent’s computer programming. Therefore, they are identical.

The contested providing information on computer technology and programming via a web site overlaps with the opponent’s information about computing applied to telecommunications. Therefore, they are identical.

The contested creating and maintaining websites for mobile phones; creating and maintaining websites for cellular phones; creating and designing website-based indexes of information for others [information technology services] are included in the broad category of, or overlap with, the opponent’s creation (design) and management of websites for others. Therefore, they are identical.

The contested providing temporary use of on-line non-downloadable software for web site development overlaps with the opponent’s rental of computer software. Therefore, they are identical.

The contested off-site data backup is similar to the opponent’s computer programming. They usually coincide in producer, relevant public and distribution channels.

The contested rental of web servers is highly similar to the opponent’s rental of computer software. They have the same nature, distribution channels, customers, providers and method of use. They can be also complementary to each other.

2. 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 partly directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. the goods in Class 9) and partly directed at business consumers only (e.g. the advertising services in Class 35).

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

3. 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).

Both signs contain the same verbal elements ‘CANAL’/’canal’ and ‘PLAY’/’play’. Although in the earlier mark there is no space between these two elements, the public will perceive them as two separate words. This is because they are depicted against different backgrounds, in grey and black respectively, and also due to the fact that these verbal elements are meaningful (explanations below), at least for the majority of the public. The contested sign contains also a figurative device , depicted between the words ‘canal’ and ‘play’, which will be perceived most likely as the stylised letter ‘Q’.

The word ‘CANAL’/‘canal’ as such exists in several languages (e.g. French, Spanish, Romanian and Portuguese) or is very similar to its equivalents in some languages of the European Union (e.g. ‘canale’ in Italian, ‘kanaal’ in Dutch, ‘kanal’ in German, Danish and Swedish, ‘kanał’ in Polish and ‘канал’ [canal/kanal] in Bulgarian). Furthermore, this term has been extensively used in the audio-visual sector which is a globalised market. Consequently, it will be understood by the vast majority of the public. Taking the above into account, the word ‘CANAL’ is weak for the goods and services that are related to broadcasting (and similar goods and services, e.g. in the field of television and radio) as it describes their characteristics (by analogy 07/06/2016, R 1867/2015-2, KABELPLUS / CANAL+, § 34 and 18/07/2007, R 114/2007-2, CANALROCIO / CANAL OCIO). For the remaining goods (e.g. video processors) and services (e.g. physical storage of electronically stored data or documents), this verbal element is normally distinctive.

Furthermore, the Opposition Division is of the opinion that it is immediately possible to recognise the common English word, ‘play’. This word is a simple term that will also be understood by consumers without a great deal of knowledge of the English language, that is, by the vast majority of the EU public (by analogy 31/10/2019, R 2353/2018-1, PLAYMO / AIMO). The word ‘PLAY’ will be understood as the action of producing sounds or recorded images (of a musical instrument, music player, or other device). Another meaning of the word ‘PLAY’ is the action of engaging in a game (or activity) for enjoyment (10/07/2018, R 94/2018-2, STARZPLAY / STAR PLAY). Bearing in mind that some of the relevant goods and services are entertainment-related, including television and radio production/dissemination, this element is weak for these goods and services. For the remaining goods (e.g. video processors) and services (e.g. physical storage of electronically stored data or documents), this verbal element is normally distinctive.

The element between ‘canal’ and ‘play’ in the contested sign will be perceived as the letter ‘Q’ of the alphabet and it can be reasonably assumed that no other, specific meaning will be attributed to it. It is therefore normally distinctive, for all the goods and services.

The earlier mark also includes the rectangular background in grey and black on which both verbal elements are written, whereas in the contested sign they are depicted against the rectangular orange background. These backgrounds serve merely decorative purposes. It should be emphasised that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). The stylisation of the letters, except for the letter ‘Q’ in the contested sign, is very commonplace, and consumers would not specifically pay any attention to it. The stylisation of the letter ‘Q’ is also not particularly memorable and serves decorative purposes with limited impact on the perception of the sign.

It remains unclear why the applicant considers these decorative features of the representation of the signs, namely the used colours and stylisation of letters as elements that will specifically attract the attention of the consumers. As noted above, background shapes and colours are often used in distinctive signs, which however are perceived simply as the background used to present the verbal elements or other elements that are intended to focus the attention and be perceived as the origin identifier in the signs. Nothing in the case at hand is considered to deviate from the above rule on the perception of the signs’ elements and the role of the verbal components when compared to other elements of figurative nature.

The applicant also states that there are many marks which contain the coinciding elements but provides no proof in this respect and the Opposition Division would not therefore consider the possible impact of such situation, if it were to be an actual fact.

The signs in conflict have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal elements ‘CANAL’/’canal’ and ‘PLAY’/‘play’. They also coincide in structure, where the verbal elements are horizontally represented on one line and positioned against a rectangular background shape. They differ in the letter ‘Q’ which is placed between the words ‘canal’ and ‘play’ in the contested sign. They also differ in the stylisation of their letters, including the letter ‘Q’ of the contested sign, as well as the colours used, which as said above, will have at most a limited impact in the overall assessment of the sigs.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛CANAL’/’canal’ and ‘PLAY’/’play’, present identically in both signs. The pronunciation differs in the sound of the letter ‛Q’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning, the signs are conceptually highly similar.

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

4. 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 direct meaning for some of the goods and services in question from the perspective of the public in the relevant territory. For the remaining part of the goods and services the verbal elements are weak in relation to the relevant public as indicated above. Therefore, the distinctiveness of the earlier mark must be seen as normal for some of the goods and services and weak with regard to the other goods and services.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

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 contested goods and services are partly identical and partly similar (to varying degrees). They target the general public and professionals whose degree of attention varies from average to high. The signs are visually similar to an average degree. Aurally and conceptually, as explained above, the signs are highly similar. Furthermore, the earlier mark has a normal degree of distinctiveness for part of the goods and services, while it is weak for another part.

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). 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).

It is acknowledged that for part of the goods and services the earlier mark is of reduced distinctiveness. Nevertheless, it is settled case-law that the finding of a weaker distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. The distinctive character of the earlier mark is one of the factors to be taken into account when assessing the likelihood of confusion and as stated above, there is interdependence between the relevant factors, which is relevant for the final outcome. Thus, even in a case involving an earlier mark of a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, FLEXI AIR, ECLI:EU:T:2005:102, § 61).

In the case at hand the sole two verbal elements of the earlier mark are identically contained in the contested one in the same order, which moreover has the same layout, where the verbal elements are horizontally depicted in one line and positioned in a rectangular background shape. Thus, the main difference is that the stylised letter ‘Q’ is depicted in the contested sign between the verbal elements ’canal’ and ’play’. As already noted, the other differences between the signs lie in elements or aspects of limited impact, if any at all. It is particularly noted that the coinciding ‘canal play’ does not constitute a fixed expression and therefore, even though the two words might have weak connotations for part of the goods and services, it is particularly relevant that the same two (even though weak for part of the goods and services) words are positioned in the same order in both signs.

Furthermore, the goods and services are mostly identical, where in fact the goods and services for which the earlier mark is weakly distinctive are identical.

Considering all the above and the interdependence principle, there is a likelihood of confusion on the part of the public, including for the goods and services for which the earlier mark is of reduced distinctiveness.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 804 621 for the figurative mark . It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right European Union trade mark registration No 4 804 621 for the figurative mark 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

Teodora TSENOVA-PETROVA

Michal KRUK

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.