OPPOSITION No B 3 089 625

Paisley Park Enterprises, Inc., 7801 Audubon Road, 55317 Chanhassen, United States of America (opponent), represented by Potter Clarkson LLP, The Belgrave Centre, Talbot Street, Nottingham NG1 5GG, United Kingdom (professional representative)

a g a i n s t

Down2Earth Music Ltd., 207 Regent Street, London W1B 3HH, United Kingdom (applicant).

On 19/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 625 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 051 609 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 18 051 609 for the word mark ‘THE PRINCE KARMA’. The opposition is based on European Union trade mark registration No 17 878 256 for the word mark 'THE PRINCE ESTATE' and European Union trade mark registration No 15 717 515 for the word mark 'PRINCE'. The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) 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 17 878 256 for the word mark 'THE PRINCE ESTATE'.

a) The goods and services

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

Class 9: Musical sound recordings; musical video recordings; audio and video recordings featuring music performances; downloadable digital audio and video files featuring musical performances; motion picture films featuring music and musical entertainment; educational software featuring instruction in music and guitar playing; computer application software for mobile phones for use in providing musical and live entertainment information and for connecting to a website to purchase tickets, making reservations for concerts and other musical events and for planning tours for musical artists; downloadable ring tones and graphics for mobile phones; downloadable image and graphic files featuring display screen backgrounds or wallpaper, widgets, icons and photographs; downloadable podcasts in the field of music; downloadable electronic publications in the nature of books, magazines, newsletters, pamphlets, booklets and brochures in the field of music and entertainment; electronic game programs; video game software; computer game software and downloadable computer game programs; computer software platforms for social networking; interactive video game programs; computer software to enable uploading, posting, showing, displaying, tagging, blogging or sharing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, music and general interest via the internet or other communications networks with third parties; downloadable virtual goods, namely, consumer programs featuring consumer goods and services in the nature of music, movies, tickets to events, articles of clothing, beauty products, footwear, headwear, outerwear, pets, fashion accessories, sporting goods and household goods for use in online virtual worlds; mobile phone accessories, namely, face plates and cell phone cases and covers; eyewear; sunglasses; decorative magnets; decorative light switch plates; electric signs; computer mouse pads.

Class 25: Clothing and apparel, namely, shirts, tank tops, t-shirts, blouses, vests, jackets, blazers, suits, suit coats, suit sets, tops, sweaters, sweatshirts, fleece tops, thermal tops, jerseys, pullovers, bottoms being clothing, body suits, leggings, dresses, trousers, slacks, pants, jeans, sweatpants, shorts, skirts, clothing wraps, overalls, rompers, uniforms, stoles; athletic wear, namely, shirts, sweatshirts, pants, shorts; outerwear, namely, jackets, coats, overcoats, gloves, mittens, mufflers, earmuffs, boots, snow pants; intimate apparel, namely, bras, underwear, undergarments, panties, boxers, camisoles, sleepwear, pajamas, robes, nightgowns, lingerie; loungewear; swimwear; beachwear; footwear; headwear; hosiery; tights; socks; belts; neckwear, namely, bandanas, scarves, ties, ascots; bibs not of paper; costumes for use in children's dress up play, infantwear, clothing layettes, one piece garments for infants and toddlers; costumes for use in role-playing games; Halloween costumes; novelty headwear with attached wigs, featuring the images, words, designs, lyrics, name, or likeness of the famous musician, recording and performing artist known as Prince.

Class 41: Entertainment services, namely, live musical performances; live stage performances in the nature of concerts; live music shows; live and televised appearances by a professional entertainer featuring musical, dance, and dramatic presentations; live music shows incorporating the presentation of pre-recorded music performances before a live audience; live music performances by multiple artists and related visual displays; live musical performances featuring holograms; providing non-downloadable pre-recorded music, audio recordings featuring music and audiovisual recordings featuring music videos, information in the field of music, and commentary and articles about music on-line via a global computer network; music publishing services; recording studio services; audio recording and production; record and music production; providing recreational activities facilities for others; preparing audiovisual displays and exhibitions in the field of music; operating a museum and providing guided tours of the museum; music events featuring live musical performances; providing theme park services; providing information to fans and fan sites of the late entertainer Prince Rogers Nelson by means of a global network; providing information and commentary online in the field of music; providing an internet website portal featuring links to musical artists' websites featuring musical performances, musical videos, film clips, photographs and other multimedia materials; fan club services; providing online electronic games; educational services, namely, conducting classes, seminars, conferences, and workshops in the field of music, entertainment, diversity and inclusion.

The contested goods and services are the following:

Class 9: Downloadable digital music; Downloadable music files; Downloadable music sound recordings; Electronic sheet music, downloadable; Downloadable musical sound recordings; Downloadable video recordings featuring music; Digital music downloadable from the Internet; Digital music downloadable provided from the internet; Digital music downloadable provided from MP3 internet websites; Digital music downloadable provided from MP3 internet web sites; Downloadable digital music provided from MP3 Internet web sites; Digital music [downloadable] provided from mp3 web sites on the internet; Digital music downloadable provided from a computer database or the internet.

Class 25: Clothing; Beach clothing; Tops [clothing]; Shorts [clothing]; Weatherproof clothing; Playsuits [clothing]; Motorcyclists' clothing; Bottoms [clothing]; Athletic clothing; Bodies [clothing]; Ladies' clothing; Slips [clothing]; Leather clothing; Casual clothing; Denims [clothing]; Linen clothing; Dance clothing; Belts [clothing]; Waterproof clothing; Jackets [clothing]; Party hats [clothing]; Hats (Paper -) [clothing]; Water-resistant clothing; Women's clothing; Clothing for sports.

Class 41: Entertainment services; Interactive entertainment services; Online entertainment services; Entertainment club services; Video entertainment services; Popular entertainment services; Audio entertainment services; Radio entertainment services; Musical entertainment services; Music entertainment services; Corporate entertainment services; Tv entertainment services; Television entertainment services; Cinematographic entertainment services; Live entertainment services; Nightclub services [entertainment]; Live entertainment production services; Fan club services (entertainment); Internet radio entertainment services; Radio and television entertainment services; Television and radio entertainment services; Exhibition services for entertainment purposes; Entertainment services provided by hotels; Entertainment services performed by musicians; Entertainment services provided by vocalists; Entertainment services performed by singers; Entertainment services provided by radio; Entertainment services in the form of musical group performances; Provision of entertainment services through the media of audio tapes.

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.

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 downloadable digital music; downloadable music files; downloadable music sound recordings; electronic sheet music, downloadable; downloadable musical sound recordings; digital music downloadable from the internet; digital music downloadable provided from the internet; digital music downloadable provided from mp3 internet websites; digital music downloadable provided from mp3 internet web sites; downloadable digital music provided from mp3 internet web sites; digital music [downloadable] provided from mp3 web sites on the internet; digital music downloadable provided from a computer database or the internet are included in the broad category of, or overlap with, the opponent’s musical sound recordings. The latter encompass any kind of recording, including digital recordings. Therefore, they are identical.

The contested downloadable video recordings featuring music are included in the broad category of, or overlap with, the opponent’s musical video recordings. Therefore, they are identical.

Contested goods in Class 25

Beach clothing; tops [clothing]; shorts [clothing]; bottoms [clothing]; athletic clothing; bodies [clothing]; jackets [clothing]; denims [clothing]; clothing for sports and belts [clothing] are identically contained in both lists of goods (including synonyms and slightly different wordings).

The contested clothing includes, as a broader category, or overlap with, the opponent’s clothing and apparel, namely, shirts, tank tops, t-shirts, blouses, vests, jackets, blazers, suits, suit coats, suit sets, tops, sweaters, sweatshirts, fleece tops, thermal tops, jerseys, pullovers, bottoms being clothing, body suits, leggings, dresses, trousers, slacks, pants, jeans, sweatpants, shorts, skirts, clothing wraps, overalls, rompers, uniforms, stoles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested slips [clothing] are included in the broad category of, or overlap with, the opponent’s intimate apparel, namely, bras, underwear, undergarments, panties, boxers, camisoles, sleepwear, pajamas, robes, nightgowns, lingerie. Therefore, they are identical.

The contested weatherproof clothing; waterproof clothing and water-resistant clothing include, as broader categories, or overlap with, the opponent’s jackets which also cover water- and weatherproof items. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested playsuits [clothing] are included in the broad category of, or overlap with, the opponent’s one piece garments for infants and toddlers. Therefore, they are identical.

The contested motorcyclists' clothing; leather clothing include, as broader categories, or overlap with, the opponent’s jackets which also cover jackets for motorcyclists and leather jackets. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested casual clothing includes, as a broader category, or overlap with, the opponent’s sweatshirts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dance clothing overlap with the opponent’s athletic wear, namely, shirts, sweatshirts, pants, shorts. Therefore, they are identical.

The contested linen clothing includes, as a broader category, or overlap with, the opponent’s suits. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested party hats [clothing]; hats (paper -) [clothing] are included in the broad category of, or overlap with, the opponent’s headwear. Therefore, they are identical.

The contested ladies’ clothing and women's clothing include, as broader categories, or overlap with, the opponent’s skirts. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 41

The contested fan club services (entertainment) are identically contained in both lists of services.

The contested entertainment club services include, as a broader category, or overlap with, the opponent’s fan club services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested entertainment services; popular entertainment services; corporate entertainment services; live entertainment services; live entertainment production services as well as musical entertainment services; music entertainment services as well as entertainment services performed by musicians; entertainment services provided by vocalists; entertainment services performed by singers and entertainment services in the form of musical group performances all include, as broader categories, or overlap with, the opponent’s entertainment services, namely, live musical performances. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested interactive entertainment services; online entertainment services include, as broader categories, or overlap with, the opponent’s providing online electronic games. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested exhibition services for entertainment purposes are included in the broad category of, or overlap with, the opponent’s preparing audiovisual displays and exhibitions in the field of music. Therefore, they are identical.

The contested video entertainment services; audio entertainment services include, as broader categories, or overlap with, the opponent’s providing an internet website portal featuring links to musical artists' websites featuring musical performances, musical videos, film clips, photographs and other multimedia materials. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested nightclub services [entertainment] and entertainment services provided by hotels include, as broader categories, or overlap with, the opponent’s entertainment services, namely, live musical performances. Nightclubs and hotels offer the performance of live music as integral part of their entertainment services for guests, for instance in a hotel casino, bar or lounge or in a nightclub as one of the main services a nightclub has to offer, for instance the performance of a DJ or a live band. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested radio entertainment services (listed three times); internet radio entertainment services; entertainment services provided by radio include, as broader categories, or overlap with, the opponent’s live music shows. The latter is a form of entertainment that is typically produced, among others, by radio stations (as part of their regular program offered to their audience). Radio stations do not only play pre-recorded music but also organise events which feature live artists, such as, for instance, DJs playing live, broadcasted from a nightclub or a classical concert broadcasted live on the radio. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested TV entertainment services; television entertainment services (listed three times); as well as cinematographic entertainment services include, as broader categories, or overlap with, the opponent’s live and televised appearances by a professional entertainer featuring musical, dance, and dramatic presentations. Similar the above mentioned radio-related services, TV stations offer, as part of their entertainment services for their audience, live events filmed with the equipment of the TV station. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested provision of entertainment services through the media of audio tapes and the opponent’s record and music production are closely linked as music production involves the production of audio tapes (no matter whether this is done in a proper studio or nowadays at home with computer equipment). Thus, the production of music is required before audio tapes are commercialised to entertain an audience. This renders the services complementary. They target the same public and are offered through the same channels. In cases, in which the artist is also the producer they come from the same provider. Consequently, these services are similar.

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 and services found to be identical or similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

THE PRINCE ESTATE	THE PRINCE KARMA
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 elements ‘THE PRINCE’ are meaningful for the part of the public in the relevant territory which understands English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The elements ‘THE PRINCE’ are understood as reference to ‘a (male) sovereign ruler; a monarch (information extracted from Oxford English Dictionary at https://oed.com/view/Entry/151403?rskey=HRv0sm&result=1&isAdvanced=false#eid on 11/08/2020). Since there is no relationship with the goods and services at issue, the element ‘PRINCE’ is distinctive to a normal degree.

The first element of the conflicting signs, ‘THE’, is an English definite article and a basic English word which will be recognised as such by the English-speaking public in the relevant territory and will be perceived as fulfilling the purpose of introducing the following word(s) and not as an indicator of origin. This element has, therefore, a limited distinctiveness (06/02/2020, T-135/19, LaTV3D, ECLI:EU:T:2020:36, § 40).

The element ‘ESTATE’ means ‘a landed property; usually, one of considerable extent’ (information extracted from Oxford English Dictionary at https://oed.com/view/Entry/64556?rskey=gFy4Vd&result=1&isAdvanced=false#eid on 11/08/2020). The element ‘KARMA’ in the contested sign is a term coining ‘the sum of a person's actions in one of his successive states of existence, regarded as determining his fate in the next’ (information extracted from Oxford English Dictionary at https://oed.com/view/Entry/102561?redirectedFrom=Karma#eid on 11/08/2020).

Since there is no relationship with the goods and services at issue, both elements are distinctive to a normal degree.

Taking the aforementioned into account, the earlier mark as a whole conveys the reference to the land owned by a prince while the contested sign as a whole refers to the Karma of a prince.

Neither the earlier mark nor the contested sign has an element that could be considered clearly more dominant than other elements.

Visually and aurally, the marks are similar to the extent that they coincide in the first two words ‘THE PRINCE’ and in their sound. They also coincide in their structure and length. On the other hand, they differ in the third term ‘ESTATE’ in the earlier mark versus ‘KARMA’ in the contested sign as well as in their sound.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30). This applies to the elements ‘THE PRINCE’ in both signs.

Therefore, irrespective of the distinctiveness of the different elements in the signs, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, as both contain a reference to a prince, the signs are conceptually similar to an average degree.

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 and services in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods and services have been found to be identical and similar and are directed at the public at large.

The conflicting signs share the identical initial words ‘THE PRINCE’, thus two out of three terms are identically contained in both signs in the same order. The only difference lies in the third word of each mark; ‘ESTATE’ in the earlier mark and ‘KARMA’ in the contested mark. However, this difference lies at the end of each of the signs where the consumers do not tend to focus their attention and, for this reason, it is insufficient to exclude the similarity of the signs. Therefore, even if one takes into account that the element ‘THE’ has only a limited distinctiveness, the conflicting signs are visually and aurally similar to an average extent.

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).

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.

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 17 878 256 for the word mark 'THE PRINCE ESTATE'. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the European Union trade mark registration No 17 878 256 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Martin MITURA

Christian STEUDTNER

María del Carmen COBOS PALOMO

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.