OPPOSITION Nо B 3 120 514

Match Group, LLC., P.O. Box 25458, 75225 Dallas, Texas, United States of America (opponent), represented by Barker Brettell Sweden AB, Östermalmsgatan 87, SE-114 59 Stockholm, Sweden (professional representative)

a g a i n s t

Kurt Van Den Branden, Graaf De Smet De Naeyerlaan 11-0202, 8400 Oostende, Belgium (applicant).

On 14/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 120 514 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 179 902 is rejected in its entirety.

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

REASONS

On 14/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 179 902 (figurative mark). The opposition is based on, inter alia, Bulgarian trade mark registration No 108 863 (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.

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 Bulgarian trade mark registration No 108 863.

a) The goods and services

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

Class 9: Downloadable software in the nature of a mobile application for internet-based dating and introduction; downloadable software in the nature of a mobile application in the field of social media, namely, for sending status updates to subscribers of web feeds, uploading and downloading electronic files to share with others.

Class 42: Providing a website featuring technology in the field of social media, namely, a website that enables users to send status updates to subscribers of web feeds, upload and download electronic files to share with others.

Class 45: Dating services; internet based social networking, introduction and dating services; dating agency services including conducting and processing testing for personal and physical attractiveness, and consultancy for creating personal user profiles for meeting other people.

The contested goods and services are the following:

Class 9: Downloadable computer software and applications for dating, matchmaking, personal introduction services; telecommunications software; downloadable computer software and applications for the sending of messages, audio files, video files or pictures.

Class 45: Internet based dating, matchmaking and personal introduction services; dating services; on-line social networking services.

An interpretation of the wording of the list of 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 and services, indicates that the specific goods and 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 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.

Contested goods in Class 9

The contested downloadable computer software and applications for the sending of messages, audio files, video files or pictures; telecommunications software overlap with the opponent’s downloadable software in the nature of a mobile application in the field of social media, namely, for sending status updates to subscribers of web feeds, uploading and downloading electronic files to share with others. Therefore, they are identical.

The contested downloadable computer software and applications for dating, matchmaking, personal introduction services overlap with the opponent’s downloadable software in the nature of a mobile application for internet-based dating and introduction. Therefore, they are identical.

Contested services in Class 45

Dating services; on-line social networking services; internet based dating services; internet based personal introduction services are identically contained in both lists of services (including synonyms).

The contested internet based matchmaking services overlap with the opponent’s internet based dating services. 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 and services found to be identical are directed at the public at large, while some of them are specialised goods, such as telecommunications software, that may be directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, due to the specialised nature of the aforementioned goods.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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 figurative mark is composed of the verbal element ‘match’ in a standard dark blue font and a figurative element of a heart is depicted in the upper right corner of the verbal element. The verbal element ‘match’ has no meaning for the Bulgarian-speaking public. For part of the public, it might be read as ‘ma/tʃ/’ (‘мач’), which means ‘game’ in the sense of a football game (information extracted from Rechnik on 09/07/2021 at http://rechnik.info/%D0%BC%D0%B0%D1%87). Bearing in mind the nature of the goods and services in question, this element is distinctive in both scenarios. The heart element lacks distinctiveness as it is a classic depiction of a heart, which, in addition to its obvious connection with dating services and software, is also a commonly used symbol of an expression of love or of a positive feeling towards something. Therefore, it is a banal laudatory and promotional symbol, which has a more specific connection to most of the relevant goods and service on account of their connection to ‘love’. The font of the verbal element ‘match’ is non-distinctive, due to its very simplistic stylisation, which is insufficient to indicate a commercial origin. Lastly, the verbal element ‘match’ is the dominant element due to its size and position.

The contested figurative sign is composed of the verbal element ‘fwbmatch’, depicted in a simple white font against a light blue rectangular background. There is a heart-shaped figurative element preceding it, depicted in white with pieces cut out of the lower, V-shaped, part. The verbal element ‘fwbmatch’ has no meaning as a whole for the relevant public. However, because of the accumulation of consonants that the public cannot pronounce altogether, the consumers will most probably pronounce this element by spelling out its first three letters (f, w and b), followed by the word ‘match’, which, as argued above, may be perceived as ‘game’ by the relevant public. In this case, the verbal component ‘match’ may be recognised within the verbal element by part of the public. The previous stipulations with regards to the meaning and the distinctiveness of the word ‘match’ are also applicable in the contested mark. Therefore, the verbal element ‘fwbmatch’ as a whole is distinctive in both scenarios. The font of the verbal element has no distinctiveness due to its simple stylisation that cannot indicate a commercial origin. The light blue background is equally decorative and non-distinctive. Lastly, the heart-shaped element is slightly more distinctive than the one in the earlier mark because of its more original depiction. However, it still alludes to certain characteristics of the goods and services in question and its distinctiveness remains low. Lastly, there is no element in the contested sign that could be considered more dominant.

Visually, the signs coincide in the distinctive word ‘match’. They differ in the first three letters ‘fwb’ of the contested sign. While both marks contain a figurative element depicting a heart, each depiction is rather different. The marks also differ in the remaining figurative elements of both signs, such as colours and background, which, however, lack distinctiveness. 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). Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘M-A-T-C-H’, present identically in both signs, which are distinctive. The pronunciation differs in the sounds of the letters ‘f-w-b’ of the contested mark, which have no counterparts in the earlier sign. The figurative elements of the signs will not be pronounced and, thus, do not affect the assessment of the similarity. Therefore, the signs are aurally similar to an average degree.

Conceptually, in the case where the word ‘match’ will be associated with a meaning, bearing in mind the previous assertions with regards to the semantic content conveyed by the marks for part of the public, the signs are conceptually similar to at least an average degree. For the part of the public that will see the verbal elements of both signs as meaningless, the marks still convey the concept of a heart. However, the concept of a heart in relation to the relevant goods and services lacks distinctiveness, and a similarity based on this concept is of very little relevance for the overall assessment of similarity between the marks.

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.

The opponent had initially based the opposition on both Article 8(5) and Article 8(1)(b) EUTMR. Subsequently, the opponent limited the grounds of the opposition to Article 8(1)(b) EUTMR and refrained from submitting any evidence regarding the reputation and the enhanced distinctiveness of the earlier mark through use. Therefore, the Opposition Division will consider that he did not explicitly claim that the earlier 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

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.

The goods and services in question are identical.

The relevant public is the public at large and a professional public. The degree of attention is considered to vary from average to high.

The signs are visually and aurally similar to an average degree. Conceptually, they are either similar at least to an average degree, or similar with regards to an element that lacks or has very little distinctiveness, and thus such a similarity does not have a substantial importance to the overall comparison of the signs, as it cannot be considered an indication of origin. The overall similarity of the signs is due to the distinctive verbal element ‘match’ of the earlier mark, which will be perceived, at least by part of the relevant public, as being reproduced within the contested mark. Although the public will not overlook certain differences between the signs, for example the additional letters at the beginning of the contested mark or the different stylisation of the heart-shaped figure in each sign, the likelihood of confusion includes the likelihood of association with the earlier trade mark. It 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. Therefore, in the present case, the relevant public, although aware of the differences between the signs, will nevertheless assume, due to the presence of the verbal element ‘match’ in both signs for identical goods and services, that they are derived from the same undertaking or economically linked undertakings. Moreover, it is a common practice for companies to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new products or service lines, or to endow their trade mark with a new, modernised image. Therefore, it is likely that the relevant consumer will consider the contested sign as a variation of the earlier mark, configured in a different way according to the type of goods and services which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the opposition is well founded on the basis of the opponent’s Bulgarian trade mark registration No 108 863. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier Bulgarian right No 108 863 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).

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, he 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

Michaela SIMANDLOVA

Claudia SCHLIE

Astrid Victoria WÄBER

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.