OPPOSITION Nо B 3 089 600

  

Channel 5 Broadcasting Limited, 17-29 Hawley Crescent, Camden Town, London NW1 8TT, United Kingdom (opponent), represented by Maucher Jenkins, Liebigstr. 39, 80538 München, Germany (professional representative) 

a g a i n s t

Gilles Monnet, 9, rue du Marechal Joffre, 78100 Saint-Germain-en-Laye, France (applicant).

On 13/11/2020, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 089 600 is upheld for all the contested goods.

2.	European Union trade mark application No 18 046 608 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 of European Union trade mark application No 18 046 608  (figurative mark), namely against all the goods in Classes 9 and 28. The opposition is based on, inter alia, European Union Trade Mark registration No 5 955 241, MILKSHAKE! (word mark). The opponent invoked Article 8(1)(a) and 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant states that the opposition should be rejected because the opponent did not prove that the mark on which it relied was in use.

According to Article 10(1) EUTMDR, and the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected. Not only the request, but also the scope of the request, has to be explicit and unambiguous. The Office will accept the request only for goods and services listed literally in the specification of the earlier mark and on which the opposition is based.

On 27/11/2019, the applicant requested the following: Request for details of proof of use: goods of the application are the listed subcategories “Dice; Cups for dice; Parlour games; Toy figures” of class 28,“Games software; Computer game software, downloadable; Computer game software for use with on-line interactive games” of class 9. Additional comments: this request is unconditional and independent of checking of opponent's trade marks registration or not for class subcategories/goods of applicant.

Furthermore, in its statement of 19/07/2020, he explained that: ’The opponent makes the mistake of stating that he “has been asked to prove genuine use of the following marks for the goods for which they are registered in Classes 9 and 28”. Actually, as opposition can be filled only for the goods registered by applicant, opponent is asked to prove genuine use for those specific registered goods. Other proofs of use are irrelevant. Applicant registration: Games software; Computer game software, downloadable; Computer game software for use with on-line interactive games. CLASS 9 Dice; Cups for dice; Parlour games; Toy figures. CLASS 28.

Hence the applicant explicitly requested proof of use from the opponent for the goods listed in its own application, but not the ones listed literally in the specification of the earlier mark.

Since the applicants statement is not an unambiguous request for proof of use for the earlier goods, this request did not comply with the legal requirements mentioned above and has erroneously been treated as a valid request at the proceedings stage. Therefore, the opponent was not under any obligation to submit proof that its earlier trade marks had been put to genuine use. The proof of use submitted will not be examined.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM registration (EU) No 5 955 241.

 

a) The goods

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

Class 9: Cinematographic and photographic films; cameras; sound and video recordings; audio tapes and video tapes; records, discs, tapes, cassettes, cartridges, cards and other carriers all bearing or for use in bearing sound recordings, video recordings, data, images, graphics, text, programs or information; apparatus for recording, transmission or reproduction of sound or images; apparatus for broadcasting, transmission, receiving, processing, reproducing, encoding and decoding of radio and television programmes; magnetic data carriers, recording discs; sound, video and data recording and reproducing apparatus; memory carriers, compact discs, interactive compact discs, CD-ROMs and DVDs, mini-disks, CD-Is; films and programmes prepared for television; electronic publications; publications in electronic form, supplied on-line from databases or from facilities on the Internet; digital music provided from the Internet; digital music provided from MP3 Internet websites; computer games, electronic games; video games, handheld computer games; interactive educational games for use with video apparatus; computer hardware; computer software and firmware; educational software; computer software in electronic form, supplied on-line from databases or from facilities on the Internet; computer software to enable connection to computer databases and the Internet; computer software to enable searching of data; parts and fittings for all the aforesaid goods.

Class 28: Toys; games; playthings; gymnastic and sporting articles not included in other classes; decorations for the Christmas tree; plush toys; dolls; puppets; toy boxes; board games; balloons; balls; bats; board games; building blocks; dolls; flying discs; teddy bears; fairground ride apparatus; playing cards; jigsaw puzzles; swimming pools; toy torches; pedal-propelled wheeled toys; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 9: Games software; Computer game software, downloadable; Computer game software for use with on-line interactive games computer software and firmware

Class 28: Dice; Cups for dice; Parlour games; Toy figures.

Contested goods in Class 9  

The contested Games software; Computer game software, downloadable; Computer game software for use with on-line interactive games are included in the broad category  of, or overlap with, the opponent’s computer software and firmware in Class 9. Therefore, they are identical.

Contested goods in Class 28

The contested  Dice; Cups for dice; Parlour games; Toy figures are included in the broad categories  of, or overlap with, the opponent’s  Toys; games; playthings in Class 28. Therefore, they are 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 goods found to be identical are directed at the public at large, but also at business customers with specific knowledge.

The degree of attention is considered to vary from average to high, depending on the price, and the specialized nature of the goods purchased.

c) The signs

MILKSHAKE!
Earlier trade mark	Contested sign

  

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The 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).  Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The  common element ’MILKSHAKE’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier right is a word mark and protected as such, regardless of the typeface used.

It consists of the word ‘MILKSHAKE’ and an exclamation sign. It refers to beverages which contain milk.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. The exclamation sign in the earlier mark is barely perceptible given that the word consists of nine letters and the exclamation mark is placed at its end. As it is likely to be disregarded by the relevant public, it will not be taken into consideration.

With respect to the relevant goods, ‘MILKSHAKE’ has no descriptive and otherwise weak meaning and is hence of normal distinctiveness.

The contested sign consists of the word ‘MILKSHAKE’ depicted in a slightly fancy typeface, but clearly perceptible. It is also of normal distinctiveness (see above). The stylization used is not particularly fanciful and therefore of a more decorative character.

Visually, the signs coincide in the words ‘MILKSHAKE’, whereby the contested sign has a certain stylization that will mostly be perceived as embellishing the word.

Therefore, the signs are higly similar.

Aurally, the signs will be pronounced identically.  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to milkshakes, the signs are conceptually identical.

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

 d) Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the relevant public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal. 

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.

As stipulated before, the degree of attention of the relevant, English-speaking public is considered to vary from average to high.

Furthermore, there is an identity between the contested goods and the ones of the earlier mark.

When it comes to the visual comparison of the signs, and in absence of any dominant element, the signs are highly similar. On an aural level, the signs are identical. Finally, conceptually the signs are also identical.

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). This holds true also for consumers, who pay a high degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the 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 European Union trade mark registration No 5 955 241. It follows that the contested trade mark must be rejected for all the contested goods under Article 8(1)(b) EUTMR.

Given that the opposition was entirely successful based on earlier right No 5 955 241, there was no need to examine the other earlier right invoked by the opponent, nor Article 8 (1) (a) EUTMR, as the signs are obviously not identical.

As the opposition was entirely successful based on the normal distinctiveness of the earlier right invoked, there was no need to examine the enhanced distinctiveness invoked.

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

 

Peter QUAY

Karin KLÜPFEL

Beatrix STELTER

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.