OPPOSITION No B 3 100 137

Groupe Canal+ S.A. à directoire et conseil de surveillance, 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

rave the planet gGmbH, Lobeckstraße 35, 10969 Berlin, Germany (applicant), represented by Schulz Kluge Partner Rechtsanwälte, Friedrichstr. 61, 10117 Berlin, Germany (professional representative).

On 26/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 137 is upheld for all the contested services, namely

Class 35 Publication of printed matter for advertising purposes.

Class 41 Music festival services; Providing online electronic publications in the field of music, not downloadable; Arranging of musical events; Musical entertainment; Organization of dancing events; Dance events; Planning and conducting of parties [entertainment]; Club [discotheque] services; Providing online electronic publications, not downloadable; Publication of printed matter.

2. European Union trade mark application No 18 097 715 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 097 715 ‘rave the planet’ (word mark), namely against all the services in Classes 35 and 41. The opposition is based on EU trade mark registration No 9 781 791 . The opponent invoked Article 8(1)(b) EUTMR.

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

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

a) The services

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

Class 35 Business consultancy; Professional business organisation and management assistance and consultancy for industrial and commercial companies; Business information and advice; Commercial advice for consumers (namely consumer information) relating to the choice of computer and telecommunications equipment; Advertising; Rental of advertising space; Dissemination of advertisements; Organisation of promotional and advertising operations to obtain customer loyalty; Publicity columns preparation; Direct mail advertising (tracts, prospectuses, printed matter, samples); Mail-order advertising; Subscriptions to audiovisual programmes, to audio and radio programmes, to newspapers; Subscriptions to video recordings, to sound recordings, to audio and audiovisual media of all kinds; Arranging subscriptions to all information, text, sound and/or image media and in particular in the form of electronic or non-electronic digital publications, multimedia products; Arranging subscriptions to a television channel; Arranging subscriptions to a telephone or computer services (the Internet); Consultancy in the field of data acquisition on the Internet; Publication of publicity texts; Radio and television advertising; Interactive advertising; Business management; Business administration; Office functions; On-line advertising on a computer network; Business information or enquiries; Business research; Commercial or industrial management assistance; Employment agencies; Business or industrial appraisals; Accounting; Document reproduction; Computerized file management; Database management services; Data entry and processing, namely entry, collation, systematic ordering of data; Arranging exhibitions and events for commercial or advertising purposes; Sales promotion (for others); Marketing research; Auctioning; Television promotion with sales offers (sales promotion for others); Administrative management of exhibition sites for commercial or advertising purposes; Public relations; Rental of advertising time (on all means of communication); Retail and wholesale trading of clothing, leather goods, jewellery, pens, stationery, games, playthings, sporting articles; Retailing and wholesaling of audiovisual, computer and telecommunications goods, namely videotapes, televisions, video cassette recorders, personal stereos, tape recorders, radios, hi-fi equipment; Decoders, mobile phones, computers, magnetic tapes, juke boxes for computers, printed circuits, integrated circuits, computer keyboards, compact discs (audio-video), compact discs (read-only memory), couplers (data processing equipment), floppy disks, magnetic data carriers, video screens, scanners, printers for use with computers, interfaces for computers, readers (data processing equipment), computer software (recorded programs), microprocessors, modems, monitors (computer hardware), monitors, computer programs, computers, computer memories, computer peripheral devices, computer programs, recorded, processors (central processing units), computer operating programs, recorded, chips (integrated circuits), retail of aerials; Newsclipping services.

Class 41 Providing of training; Providing of training; Entertainment; Radio and television entertainment on media of all kinds, namely television, computer, personal stereo, personal video player, personal assistant, mobile phone, computer networks, the Internet; Leisure services; Sporting and cultural activities; Animal training; Production of shows, films and television films, of television broadcasts, of documentaries, of debates, of video recordings and sound recordings; Rental of video recordings, films, sound recordings, video tapes; Motion picture rental; Rental of movie projectors; Audiovisual apparatus and instruments of all kinds, radios and televisions, audio and video apparatus, cameras, personal stereos, personal video players; Theater decorations; Production of shows, films, audiovisual, radio and multimedia programs; Movie studios; Arranging competitions, shoes, lotteries and games relating to education or entertainment; Production of audiovisual, radio and multimedia programs, text and/or still or moving images, and/or sound, whether musical or not, and/or ring tones, whether or not for interactive purposes; Arranging exhibitions, conferences, seminars for cultural or educational purposes; Booking of seats for shows; News reporter services; Photography, namely photographic services, photographic reporting; Videotaping; Consultancy relating to the production of video programs; Game services provided online from a computer network, gaming; Casino facilities; Editing and publication of text (except publicity texts), sound and video media, multimedia (interactive discs, compact discs, storage discs); Electronic online publication of periodicals and books; Publication and lending of books and texts (except publicity texts); Providing movie theatre facilities; Micro publishing.

The contested services are the following:

Class 35 Publication of printed matter for advertising purposes.

Class 41 Music festival services; Providing online electronic publications in the field of music, not downloadable; Arranging of musical events; Musical entertainment; Organization of dancing events; Dance events; Planning and conducting of parties [entertainment]; Club [discotheque] services; Providing online electronic publications, not downloadable; Publication of printed matter.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘in particular’ used in the opponent’s list of services, indicates that the specific 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 services 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.

As far as the applicant argues that it operates in a completely different field than the opponent it must be held that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

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 services in Class 35

The contested publication of printed matter for advertising purposes overlaps with the opponent’s publication of publicity texts. Therefore, they are identical.

Contested services in Class 41

The contested music festival services; arranging of musical events; musical entertainment; organization of dancing events; dance events; planning and conducting of parties [entertainment]; club [discotheque] services are included in the broad category or overlap with the opponent’s entertainment. Therefore, they are identical.

The contested publication of printed matter overlaps with the opponent’s publication and lending of books and texts (except publicity texts). Therefore, they are identical.

The contested providing online electronic publications in the field of music, not downloadable; providing online electronic publications, not downloadable are similar to the opponent’s electronic online publication of periodicals and books as they have the same purpose. They usually coincide in producer and relevant public.

b) Relevant public — degree of attention

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

In the present case, the services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

c) The signs

	rave the planet
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.

All the verbal elements of the marks will be understood by English speakers. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The contested mark is a word mark. Its scope of protection extends to the words as such, irrespective of their specific depiction. Therefore, differences in the use of upper/lower case letters are immaterial for the comparison.

The element PLANET of the contested mark is an English word that denotes a large, round object in space that moves around a star. The word PLANETE of the earlier mark will be associated with the same meaning due to it close resemblance to the English word planet.

The element PLANETE of the earlier mark may somewhat allude to the content of some of the earlier mark’s services, such as electronic online publication of periodicals and books in Class 41 and insofar its distinctiveness is limited. Otherwise it has no relation to the relevant services of the earlier mark and is therefore distinctive. The element PLANET of the contested mark may equally allude to the content of some of the contested services in Class 41 such as providing online electronic publications, not downloadable insofar as these publications might contain information about planets. For the rest of the contested services it is however distinctive.

The ‘plus’ sign of the earlier mark merely indicates a claim of added value of the relevant services; it forms part of the promotional vocabulary that any undertaking is entitled to use and is therefore non-distinctive (28/19/2010, R1096/2010 ‘PLUS+’, § 8).

The article THE of the contested sign merely serves to specify the following noun PLANET as a particular member of its class and therefore it will be perceived as less distinctive than the noun it specifies.

The element RAVE of the contested sign denotes big events at which people dance to electronic music. It is non-distinctive for part of the contested services in Class 41, i.e. music festival services; arranging of musical events; musical entertainment; organization of dancing events; dance events; planning and conducting of parties [entertainment]; club [discotheque] services, and it is weak for the rest of the services in Class 41, as it may allude to their content (publications about rave events). It has no direct meaning in relation to the services in Class 35 though and insofar it is considered distinctive.

Contrary to the applicant’s opinion the contested mark as a whole does not have a clear meaning in English. Therefore, the concepts of ‘rave’ and ‘(the) planet’ will rather be perceived on their own and not as a conceptual unit with an overall meaning.

The figurative elements of the earlier mark (a red sphere and grey rectangle) are basic geometric devices and merely decorative. Furthermore, the sphere may be seen as merely reinforcing the meaning of the word PLANETE given that planets have the shape of a sphere. Therefore, these elements are non-distinctive. The mark has no element that could be considered clearly more dominant than other elements.

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).

Visually, the signs coincide in the letters PLANET* and differ in their other elements, as explained above. Taking into account the distinctiveness of the respective elements and their impact on the consumer and the fact that the earlier mark’s element PLANETE constitutes its most distinctive element in any possible scenario, the signs are at least similar to an average degree.

Aurally, the signs coincide in the letters PLANET* and differ in the additional letters ******E PLUS of the earlier mark and RAVE THE ****** of the contested mark. Taking into account the distinctiveness of the respective elements and their impact on the consumer and the fact that the earlier mark’s element PLANETE constitutes its most distinctive element in any possible scenario the signs are at least similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs coincide insofar as they will be associated with the concept of ‘planet’, with the minor difference that the contested sign refers to one particular planet on account of the additional article ‘the’. The concept of the plus symbol of the earlier mark is non-distinctive and therefore cannot influence the conceptual comparison. The additional concept of RAVE in the contested sign is partially weak, partially non-distinctive and partially distinctive, depending on the services concerned. However, taking into account that the earlier mark’s element PLANETE constitutes its most distinctive element in any scenario, there is at least an average degree of conceptual similarity.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for some of the services in question (see above under section c) of this decision). The mark has a normal degree of distinctiveness for the remaining services in relation to which it has no meaning from the perspective of the public in the relevant territory.

e) Global assessment, other arguments and conclusion

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.

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).

There is a likelihood of confusion for identical and similar services, even for highly attentive consumers, as the signs are similar on all levels of the comparison. The concept of ‘planet’ in both marks is distinctive for most of the services and even where it is not fully distinctive it cannot alter the fact that the element PLANETE and its concept still represent the most distinctive element of the earlier mark, its figurative elements and the plus symbol being entirely devoid of distinctive character, and that it is almost entirely reproduced within the contested mark. For the services for which the meaning of planet has limited distinctiveness it must be noted that the differing meaning of RAVE in the contested sign is equally limited in its distinctiveness. And for the services where RAVE is distinctive (Class 35), it must be noted that they are identical to the opponent’s services and the coinciding concept of planet is fully distinctive. Given that the English-speaking public, due to the lack of overall meaning of ‘rave the planet’, will rather split it up into the concepts of RAVE and ‘(THE) PLANET’, and therefore easily identify the coinciding concept of ‘planet’ in both marks, which in any scenario constitutes the most distinctive element of the earlier mark, it can not be excluded that the signs may at least be associated with a common commercial origin on account of these elements. Indeed, it is conceivable that the relevant consumer might perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The fact that the earlier mark’s inherent distinctiveness may be limited for some of the services cannot alter these findings because the services are mostly identical (otherwise similar) and there is in any case a considerable degree of similarity between the signs. In that respect it must be noted that the Court has emphasised on several occasions that even a finding of a low distinctive character for the earlier trade mark does not prevent a finding of a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

The applicant argues that its company and its goals are well-known and filed various items of evidence to substantiate this claim. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

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 and in relation to identical services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Denitza STOYANOVA-VALCHANOVA

Tobias KLEE

Lars HELBERT

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.