OPPOSITION Nо B 3 096 866

 

Deutsche Telekom AG, Friedrich-Ebert-Allee 140, 53113 Bonn, Germany (opponent), represented by Perani & Partners Spa, Piazza Armando Diaz, 7, 20123 Milano, Italy (professional representative) 

 

a g a i n s t

 

Fondazione Arturo Toscanini, Viale Barilla 27/a, 43121 Parma, Italy (applicant), represented by Bugnion S.P.A., Largo Michele Novaro, 1/a, 43121 Parma, Italy (professional representative).

 

On 24/11/2020, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 096 866 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 073 511 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 18 073 511  (figurative mark), namely all the goods and services in Classes 9, 16, 41. The opposition is based on German trade mark registration No 30 2015 044 707 for ‘T’ (Word 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.

a)  The goods and services

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

 

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, supervisory, life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity; Apparatus for recording, transmission, processing and reproduction of sound, image or data; Electrotechnical apparatus, equipment and instruments for use in the fields telecommunications and information technology; Electric devices, apparatus and instruments for transmitting commands [included in class 9]; Magnetic data media; Mechanisms for coin-operated apparatus; Calculators; Data processing equipment; Computers; Recorded and unrecorded data carriers of all kinds [included in class 9]; Compact discs, DVDs and other digital recording media; Computer programs [recorded]; Computer software, including computer games software [downloadable]; Data recorded in electronic form [downloadable]; Electronic publications [downloadable]; Electronic components for automobiles; Software for medical apparatus and instruments.

Class 16: Printed matter; photographs; Office requisites (other than furniture); Instructional and teaching material [except apparatus].

Class 41: Education; Training; Entertainment; sports; cultural activities; Conducting sponsorship events as entertainment events for cultural, sporting, social, ecological purposes; Online services, namely providing information in the field of education, training and entertainment; online providing electronic, non-downloadable publications; Online gaming services; Online publication of electronic books and magazines.

 

The contested goods and services are the following:

 

Class 9: Records [sound recordings]; Musical cassettes; Optical discs; Disks, magnetic; Compact discs [read-only memory].

Class 16: Musical score books; Printed matter; Photographs.

Class 41: Organization of shows [impresario services]; Organisation of entertainment services; Production of shows; Performances (Presentation of live -); Production of music.

An interpretation of the wording of the list of the opponent’s goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods in Class 9, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services in Class 41 to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

Contested goods in Class 9

All the contested goods in this Class, namely Records [sound recordings]; Musical cassettes; Optical discs; Disks, magnetic; Compact discs [read-only memory] are included in the broad category of the opponent´s Recorded and unrecorded data carriers of all kinds [included in class 9]. Therefore, they are identical.

 

Contested goods in Class 16

The contested Printed matter; Photographs are identically mentioned in the opponent´s specification.

The contested Musical score books are included in the broad category of the opponent´s Printed matter. Consequently, these goods are identical.

Contested services in Class 41

All the contested services in this Class, namely Organization of shows [impresario services]; Organisation of entertainment services; Production of shows; Performances (Presentation of live -); Production of music are included in the broad category of the opponent´s Entertainment. Therefore, these services are considered identical.

b)  Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical are directed at the public at large and the business public, active in show business (e.g. services in Class 41). The degree of attention in relation to these goods and services may vary from average to higher than average, depending on their price and the frequency of their purchase.

c)  The signs

 

T
Earlier trade mark	Contested sign

 

The relevant territory is Germany.

 

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 signs coincide completely in their verbal constituent, namely the letter ‘T’, and this letter will be instantly perceived by the relevant public in the relevant territory, albeit its representation is stylised in the contested sign as the right arm of the letter has a shape of a moustache or a feather. This finding is not disputed by the applicant. Furthermore, since it has no descriptive and/or weak meaning in relation to the relevant goods and services, its inherent distinctiveness in relation to them is average.

The applicant claims that a simple letter of the alphabet without particular figurative adornment generally possess a low degree of inherent distinctiveness.

The Opposition Division notes that the Court, in its judgement of 09/09/2010, C-265/09 P, α, EU:C:2010:508, held that the distinctiveness of single-letter trade marks must be assessed according to an examination based on the facts, focusing on the goods or services concerned and the same criteria that apply to other word marks (paras 33-39). Although that judgement deals with absolute grounds, the Office considers that the principle established by the Court (i.e. that the application of the criterion of distinctiveness must be the same for all marks) also applies in inter partes cases when it comes to determining the distinctiveness of single-letter trade marks.

The Court, while acknowledging that it may prove more difficult to establish distinctiveness for marks consisting of a single letter than for other word marks, held that these circumstances do not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law.

The Office considers the ruling to mean that, when establishing the distinctiveness of an earlier mark, it is not correct to rely on assumptions such as a priori statements that consumers are not in the habit of perceiving single letters as trade marks or on generic arguments such as that relating to the availability of signs, given the limited number of letters.

The General Court has since stated in a number of cases that a trade mark containing a single letter or a single numeral may indeed be inherently distinctive (judgments of 08/05/2012, T-101/11, G, EU:T:2012:223, § 50; 06/10/2011, T-176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T-378/12, X, EU:T:2013:574, § 37-51).

In its judgement of 10/05/2011, T-187/10, G, EU:T:2011:202, the General Court dismissed the applicant’s argument that single letters are generally per se devoid of distinctive character and that therefore only their graphic representation would be protected (see paras 38 and 49).

Consequently, whilst registered earlier trade marks consisting of a single letter (or numeral) represented in standard characters enjoy a presumption of validity, ultimately their degree of inherent distinctiveness will have to be assessed with reference to the goods and/or services concerned.

The above considerations apply both to single-letter/-numeral trade marks represented in standard characters (i.e. word marks) and to stylised single-letter/-numeral trade marks.

As regards the goods in Class 9, being recorded and unrecorded data carriers, printed matter and photographs in Class 16 or entertainment services in Class 41, the Opposition Division is of the opinion that the single letter mark ‘T’ is not intrinsically non-distinctive or even weak as it does not convey any information regarding the essential characteristics of these goods and services. Therefore, its inherent distinctiveness must be considered to be average in relation to them.

The figurative components of the contested sign are reduced to a non-distinctive blue circle on which the letter ‘T’ is placed and a shape of a moustache/feather constituting a right arm of this letter, which will rather be seen as an element of its stylisation. Therefore, the Opposition Division cannot share the applicant’s view that a drawing of a moustache/feather constitutes the dominant element of the contested sign.

Consequently, the contested sign has no element that could be considered to be more dominant than the others. Additionally, the typeface, in which the remaining part of this letter is depicted is manifestly commonplace. It is for this reason that the verbal element of the contested sign is considered to be more distinctive/relevant than its figurative components.

The earlier mark, being a word mark has no elements that could be more dominant (visually outstanding) than other elements.

Visually, the signs coincide in the letter ‘T’, which constitutes the entirety of the earlier mark and the only verbal element of the contested sign. They differ in the graphical stylisation of the contested sign, as analysed above.

Consequently, the signs are considered visually similar at least to an average degree.

The signs are aurally identical as the figurative features of the contested sign are not subject of an aural comparison.

As to the conceptual comparison, even if the relevant public perceives the concept of a feather or a moustache in the contested sign, its impact on the comparison of the signs is limited. These figurative components constitute the structural elements of the letter ‘T’, as analysed above. Bearing in mind the above mentioned, the signs are conceptually similar to a high degree, as they both refer to the same letter.

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.

In the present case, 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 meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e)  Global assessment, other arguments and conclusion

In the present case, the goods and services have been found identical. The signs are considered visually similar at least to an average degree, while aurally they are identical and conceptually highly similar.

The signs have in common the letter ‘T’, which constitutes the only element of the earlier mark and the most distinctive element of the contested sign. The visual differences between the signs, as established above, are clearly insufficient to create sufficient distance between them. The stylisation of the contested sign is not such as to obviate the likelihood of confusion between the signs.

Account is also 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). However, 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).

Furthermore, Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Indeed, in the present case, the relevant consumers may legitimately believe that the contested trade mark is a new brand line or a recent promotional product of the earlier mark ‘T’ mark because it is a common market practice for brands to identify new version or a new sub-brand of the main (‘house’) brand. In the present case, consumers may legitimately believe that the figurative contested trade mark composed of the stylized single letter ‘T’ belongs to the opponent’s company, which provides identical goods and services to the opponent’s goods and services.

The applicant argues that the overall impression of the signs has an extreme relevance when the marks to be compared are short and the accent should be put on the graphical and visual comparison of the signs.

In this regard, the Opposition Division fully agrees with the applicant’s view and refers to the above-mentioned conclusions regarding a similar overall impression given by the signs caused by their common distinctive verbal element and the limited impact of the remaining graphical futures of the contested sign. Furthermore, for this precise reason, the signs have been found visually similar at least to an average degree in the present case. Moreover, they are aurally identical and conceptually highly similar.

Additionally, the applicant refers to some examples of decisions rendered by the Office from the Guidelines regarding a comparison of the one-letter signs to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. Additionally, it must be emphasized that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. The changes in the Office practice must also be taken into account. For this reason, even in cases based on comparable facts and involving similar legal problems, the outcome may still vary due to the different submissions made by the parties and the evidence they present. In any case, as mentioned above, in the judgement of 10/05/2011, T-187/10, G, EU:T:2011:202, the General Court dismissed the applicant’s argument that single letters are generally per se devoid of distinctive character and that, therefore, only their graphic representation would be protected (see paras 38 and 49).

In the present case, the examples from the Office Guidelines referred to by the applicant are not relevant to the present proceedings. In fact, in some of these cases, the signs were found to be visually dissimilar due to different elements of stylisations of the single-letter signs, which, have been found to be dominant and, therefore, the final outcomes of these cases were those of no likelihood of confusion. As mentioned above, the changes in the Office practice must also be taken into account when analysing a particular case.

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). This principle applies to the case at hand because the conflicting goods and services are identical.

The fact that conflicting signs comprise the same single letter can lead to a finding of visual similarity between them, depending on the particular way the letters are depicted, which is very relevant for the case at issue. In the present case, the relevant public will perceive the letter ‘T’ in both signs, albeit it is somewhat stylised in the contested sign. As established above, the figurative components of the contested sign do not constitute elements that will help the relevant public effectively distinguish between the signs in question, in particular, in relation to the identical goods and services, as mentioned above. Consequently, the applicant’s arguments in this regard must be set aside.

Considering all the above and especially, the above-mentioned interdependence principle, there is a likelihood of confusion in a form of a likelihood of association on the part of the public.

The opposition is, therefore, well found on the basis of the opponent’s German trade mark registration No 302 015 044 707 and the contested trade mark must be rejected in its entirety.

 

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

 

 

Gueorgui IVANOV

Monika CISZEWSKA

Liliya YORDANOVA

 

 

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.