OPPOSITION Nо B 3 102 335

 

Metamorfoza Ltd., Bukovacka cesta 174, 100000 Zagreb, Croatia (opponent), represented by Mladen Vukmir, Gramaca 2 L, 10000 Zagreb, Croatia (professional representative) 

 

a g a i n s t

 

Michael Posch, Franz-Siller-Weg 87, 1120 Wien, Austria (applicant).

 

On 09/11/2020, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 102 335 is rejected in its entirety.

 

2.	The opponent bears the costs.

 

REASONS

 

The opponent filed an opposition against all the services of European Union trade mark application No 18 099 723 for the figurative mark . The opposition is based on German trade mark registration No 302 017 009 459 and Austrian trade mark registration No 291 182, both 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.

 

 

a) The services

 

The services on which the opposition is based are the same for both earlier trade mark registrations and are the following:

Class 41: Education; training; entertainment; sporting and cultural activities.

The contested services are the following:

 

Class 41: Museum services; running of museums; museum exhibitions; museum facilities (provision of -) for exhibitions; museum facilities (provision of -) for presentations; providing museum facilities and services.  

The contested services, which all revolve around museum activities, are included in the broad category of, or overlap with, the opponent’s cultural activities. 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 services found to be identical are directed at the public at large and at professionals.

The degree of attention may vary from average to high, depending on the sophistication, specialised nature, or terms and conditions of the services purchased.

 

 

c) The signs

 

Earlier trade marks	Contested sign

 

The relevant territories are Germany and Austria.

 

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 earlier marks are figurative marks composed of the German verbal elements ‘MUSEUM DER ILLUSIONEN’ written in standard black, bold, upper-case characters underneath a large geometric figurative element. The verbal elements form a meaningful expression (‘museum of illusions’) which refers to a museum specialized in the deception through the effect of a work of art that allows representation to be experienced as reality (information extracted from Duden on 04/11/2020 at https://www.duden.de/rechtschreibung/Illusion). Since the verbal expression describes the characteristics of the relevant services, it is non-distinctive. With respect to the figurative element of the earlier marks, the opponent claims that it consists of an elaborated form which is reminding of the letter ‘M’. However, the Opposition Division finds that the letter ‘M’ is not readily recognizable in the figurative element, which is merely a set of two semi-arches depicted in irregular (Escherian) perspectives that are impossible in natural form and a small cube. Therefore, it will be assessed as an abstract geometric figure hence as normally distinctive in relation to the relevant services (02/12/2019, R 663/2019-2, MUSEUM OF ILLUSIONS (fig.) / MUSEUM OF ILLUSIONS (fig.), § 29). However, even if a part of the public would see the letter ‘M’, this element’s distinctiveness would not be impaired or reduced considering its fanciful representation that requires several mental steps in order for the consumers to recognise the hidden letter.

The contested sign is also a figurative mark composed of verbal and figurative elements. The German verbal elements ‘Illusionen Museum Berlin’ written in standard black, bold, sentence-case characters will be understood by the relevant public to form the meaningful expression ‘illusions museum of Berlin’, therefore, the same considerations made above regarding its distinctiveness must be applied. The additional word ‘Berlin’ is also non-distinctive, as it indicates the place in which the services are offered. The figurative elements of the contested sign consist of a red square and two irregular shapes in blue and green, placed on top of the sign. According to the opponent, the latter shapes resemble, and are likely to represent, the letters ‘M’ and ‘B’, with the only aim of emphasizing the verbal elements. Even if this perception were to be confirmed by part of the public, these elements’ distinctiveness would not be impaired or reduced due to their high stylization that impedes an immediate recognition of the letters. Moreover, there will be another part of the public for which these figurative elements do not convey any meaning and, notwithstanding the fact that the red element is a rather simple square, in its combination with the other figurative elements, will have an average degree of inherent distinctiveness.

The signs at issue have no element that could be considered clearly more dominant than other elements.

  

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 (and from top to bottom), which makes the part placed at the left of the sign (the initial part and the upper part) the one that first catches the attention of the reader.

  

Visually, the signs share the words ‘Illusionen’ and ‘Museum’ but are placed in different positions. They differ in the words ‘DER’ of the earlier marks and ‘Berlin’ of the contested sign, and in the figurative elements of the signs and their stylisations. For those who will see the letters ‘M’ and ‘MB’ in the figurative elements, the signs will also coincide in the letter ‘M’.

 

Therefore, considering the distinctiveness of the various elements, the signs are visually similar at best to a low degree.

 

Aurally, the sound of the words ‘Illusionen’ and ‘Museum’ coincides, but these words are placed in different positions. They differ in the words ‘DER’ of the earlier marks and ‘Berlin’ of the contested sign. For those who will read the letters ‘M’ and ‘MB’ in the figurative elements, the signs will also coincide in the sound of the letter ‘M’.

Therefore, considering the lack of distinctiveness of the verbal elements of the signs, the latter are aurally similar at best to a low degree.

  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the coinciding words ‘Illusionen’ and ‘Museum’, including the word ‘DER’ of the earlier marks to form the expression ‘MUSEUM DER ILLUSIONEN’, will evoke the same concepts, it is not sufficient to establish any conceptual similarity, as these elements are non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful figurative elements, which have no meaning. For the public that will perceive the letter ‘M’ in all the signs at issue, since it will clearly refer to the initial letter of ‘Museum’, it will have no impact. The same applies for the letter ‘B’ of the contested sign. Since this will refer to the initial letter of ‘Berlin’, it will have no impact. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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 marks

 

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

 

The opponent claimed that the earlier trade marks, due to their unusual figurative element, constant use and quality of the services provided, enjoy at least an average degree of distinctiveness but did not file any evidence in order to prove enhanced distinctiveness.

 

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of non-distinctive elements in the marks, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

 

In the present case, the services are identical and target the general and the professional public with a degree of attention that varies from average to high.

The earlier marks have a normal degree of distinctiveness.

The signs are only lowly similar, at best, visually and aurally and the conceptual aspect does not influence the assessment of the similarity of the signs. This is due to the fact that, although the signs coincide in the elements ‘Illusionen Museum’ and their meaning, these elements are non-distinctive. The different structure of the verbal elements (‘MUSEUM DER ILLUSIONEN’ v ‘Illusionen Museum’), the additional (although equally non-distinctive) element ‘Berlin’ in the contested sign, and especially the additional distinctive figurative elements of the signs, contribute to create a sufficient distance between the overall impression of the signs.

 

Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

The opponent refers to some annexes according to which there was an agreement between the parties that was later infringed. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed. Moreover, it is recalled that the current procedure concerns the registration and not the infringement of a trade mark. In registration proceedings, no proof of infringement is required. It follows that the opponent’s provision of documents relating to the potential infringement of its trade marks is equally not addressed. Therefore, the opponent’s claims must be set aside.

 

Considering all the above, even with identical services, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

 

 

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

 

 

 

 

The Opposition Division

 

 

Rosario GURRIERI

Valeria ANCHINI

Meglena BENOVA

 

 

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.