OPPOSITION Nо B 3 123 177

Groupe Canal+, 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

Koch Films GmbH, Lochhamer Str. 9, 82152 Planegg, Germany (applicant), represented by Stefani Bär, Lochhamer Str. 9, 82152 Planegg b. München, Germany (employee).

On 20/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 123 177 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 180 721 is rejected in its entirety.

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

REASONS

On 04/06/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 180 721 ‘Anime Planet’ (word mark), namely against all the goods and services in Classes 9, 16, 35, 38 and 41. The opposition is based on European Union trade mark registration No 9 781 791 (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 goods and services

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

Class 9: Scientific (except for medical purposes), nautical, surveying, photographic, cinematographic, optical and electro-optical, weighing, measuring, signalling, checking (supervision) and life-saving apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; decoders; electronic apparatus for data processing; electric measuring devices and electronic checking (supervision); teaching apparatus and instruments; apparatus and instruments for recording, transmission, reproduction, storage, encoding, decoding, conversion and processing of sound or images; communications and telecommunications apparatus; audiovisual, telecommunications, data transmission, television apparatus and instruments, remote controls; cassette recorders; video recorders, film cameras; telephones, mobile telephones; personal organisers (PDAs); electronic diaries; radio sets, personal stereos; projectors (projection apparatus); antennas, aerials, satellite dishes; speakers, amplifiers; computers, computer screens, computer keyboards, peripheral devices for computers, modems, decoders, encoders; access devices (apparatus) and access control devices for data processing apparatus; authentication apparatus for use in telecommunications networks; apparatus for scrambling and descrambling signals and retransmissions; digital terminals; video films; CD-ROMs, recording discs, digital video discs (DVDs), video discs and audio discs, digital discs, video tapes; CD players, DVD players, digital disc players, magnetic disc players, video and audio disc players, recording disc players; video game cartridges; video game software; video games adapted for use with a television screen; magnetic data carriers; magnetic cards, chip cards, electronic cards; integrated circuits and microcircuits; card readers; electronic components; worldwide computer network data reception monitors; automatic vending machines and mechanisms for coin-operated apparatus; calculating machines and data processing equipment; satellites for scientific and telecommunications use; spectacles (optics); optical goods, spectacle cases; smart cards, cards with microprocessors; electronic radio and television programme guide; apparatus and instruments for programming and selection of television programmes; interactive television apparatus and instruments; television screens; computer software (recorded programs); fibre-optic cables and optical cables; electric batteries and cells.

Class 16: Paper and cardboard (untreated, semi-finished); stationery; printed matter; engravings; lithographic works of art; tickets; photographs; catalogues, newspapers, periodicals, magazines, journals, books, bookmarks, manuals (paper), albums, brochures; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); bags (enveloppes, pouches) of paper or plastics for packaging; adhesive tape for stationery or household use; membership cards (not magnetic); credit cards (not magnetic); printers’ type; printing blocks; writing implements and pens; business cards, postcards, notebooks, note pads; note books; cheque books; holders for cheque books; penholders, nibs, drawing pens; posters; calendars; letter trays; radio and television programme guide; table linen and paper napkins; paper table covers; toilet paper; paper handkerchiefs; face towels of paper; paper flags; stickers (items of stationery); postage stamps; boxes of cardboard or paper; envelopes (stationery), announcements (stationery); school supplies; note papers.

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 38: Telecommunications services; communications by computer terminals or by optical fibres; information about telecommunications; news and information agencies; radio communications, communications by telegrams, by telephones or video phones, by television, by personal stereo, by personal video player, by interactive videography; broadcasting (television -); transmission of information by data transmission; transmission of messages, telegrams, images, videos, mail; transmission of information by teleprinter; data communications; radio and television broadcasting; broadcasting of programmes by satellite, by cable, by computer network (in particular via the internet), by radio networks, by radio-telephone networks and by radio link; broadcasting of audio, audiovisual, cinematographic or multimedia programmes, text and/or still or moving images and/or sound, whether musical or not, ringtones, whether or not for interactive purposes; electronic advertising (telecommunications); rental of telecommunications equipment and apparatus; rental of data transmission apparatus and instruments namely telephones, facsimile machines, apparatus for transmitting messages, modems; rental of aerials and satellite dishes; rental of devices (apparatus) for access to interactive audiovisual programmes; leasing access time to telecommunications networks; providing services to download video games, digital data, communications (transmission) on open (internet) or closed (intranet) global computer networks; online downloading of films and other audio and audiovisual programmes; transmission of programmes and selection of television channels; providing access to a computer network; providing connections to telecommunications services, to internet and database services; routing and connecting services for telecommunications; connection by telecommunications to a computer network; telecommunications consultancy; professional consultancy relating to telephony; consultancy in the field of video programme broadcasting; consultancy relating to the transmission of data via the internet; consultancy relating to providing access to the internet; sending and receiving video images via the internet using a computer or mobile telephone; telephone services; cellular telephone services; cellular telephone communication; paging by radio; voice messaging, call forwarding, electronic mail, electronic message transmission; video-conferencing services; video messaging services; video-telephone services; answering machines (telecommunications); providing access to the internet (internet service provider); electronic mail exchange, e-mail services, instant electronic messaging services, non-instantaneous electronic messaging services; transmission of information via the internet, an extranet and an intranet; transmission of information via secured messaging systems; providing access to electronic conferencing and discussion forums; providing access to internet websites containing digital music or audiovisual works of all kinds; providing access to telecommunications infrastructures; providing access to search engines on the internet; transmission of electronic publications online; rental of decoders and encoders.

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 goods and services are the following:

Class 9: Cinematographic films; films, exposed; entertainment software; media software; films, exposed; pre-recorded DVDs; downloadable media; data storage media; apparatus for the transmission of images; apparatus for the reproduction of images; computers; photosensitive media [films, exposed]; photographic media [films, exposed].

Class 16: Flyers; booklets; catalogues; catalogues relating to computer software; packaging materials; plastic materials for packaging; posters; cardboard packaging; paperboard; printed matter; poster books.

Class 35: Distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; advertising; online advertisements; advertising and marketing; cinema advertising; advertising via electronic media and specifically the internet; provision of space on web-sites for advertising goods and services; advertising, marketing and promotional services; business assistance, management and administrative services; advertising services provided via the internet; sales promotion using audiovisual media; sales promotion; sales promotion; advertising, marketing and promotional services; business administration.

Class 38: Transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the internet; audio, video and multimedia broadcasting via the internet and other communications networks; broadcasting of audiovisual and multimedia content via the internet; telecommunication services; provision of information relating to media communications; communication by electronic means.

Class 41: Publication of newspapers, periodicals, catalogs and brochures; film production services; rental of motion pictures; entertainment by film; presentation of films; rental of motion pictures; entertainment services in the form of motion pictures; provision of on-line entertainment; entertainment services; entertainment services; entertainment; on-line gaming services; rental of motion pictures; film production for entertainment purposes; interactive entertainment services; live entertainment; production of cinematographic films; entertainment provided via the internet; entertainment, sporting and cultural activities; information about entertainment and entertainment events provided via online networks and the internet.

Contested goods in Class 9

The contested cinematographic films; films, exposed; entertainment software; media software; films, exposed; pre-recorded DVDs; downloadable media; data storage media; apparatus for the transmission of images; apparatus for the reproduction of images; computers; photosensitive media [films, exposed]; photographic media [films, exposed] are identical to the opponent’s video films; computer software (recorded programs); video game software; CD-ROMs, recording discs, digital video discs (DVDs), video discs and audio discs, digital discs, video tapes; computers; apparatus and instruments for recording, transmission, reproduction, storage, encoding, decoding, conversion and processing of sound or images either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

Contested goods in Class 16

The contested flyers; booklets; catalogues; catalogues relating to computer software; packaging materials; plastic materials for packaging; posters; cardboard packaging; paperboard; printed matter; poster books are identical to the opponent’s printed matter; boxes of cardboard or paper; bags (envelopes, pouches) of paper or plastics for packaging; artists’ materials either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

Contested services in Class 35

The abovementioned contested services in this class are advertising, marketing, sales promotion, business assistance, management and administration services. They are identical to the opponent’s advertising; sales promotion (for others); business consultancy; professional business organisation and management assistance and consultancy for industrial and commercial companies; business management; business administration either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

Contested services in Class 38

The contested transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the internet; audio, video and multimedia broadcasting via the internet and other communications networks; broadcasting of audiovisual and multimedia content via the internet; telecommunication services; provision of information relating to media communications; communication by electronic means are identical to the opponent’s telecommunications services either because they are identically contained in both lists or because the opponent’s services include, the contested services.

Contested services in Class 41

Entertainment services (listed twice in the list of the contested services); entertainment; entertainment, sporting and cultural activities are identically contained in both lists of services (including synonyms).

The contested live entertainment; interactive entertainment services; entertainment services in the form of motion pictures; information about entertainment and entertainment events provided via online networks and the Internet; entertainment provided via the internet; on-line gaming services; rental of motion pictures (listed three times); entertainment by film; presentation of films; provision of on-line entertainment are included in the opponent’s broad category of entertainment. The contested film production services; film production for entertainment purposes; production of cinematographic films are included in the opponent’s broad category of production of shows, films, audiovisual, radio and multimedia programs. The contested publication of newspapers, periodicals, catalogs and brochures overlaps with the opponent’s publication and lending of books and texts (except publicity texts). Therefore, all these services 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 and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to relatively high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

c) The signs

	Anime 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.

The earlier mark is a figurative mark, composed of the verbal element ‘PLANETE’ followed by the symbol ‘+’ on a dark rectangular background placed against a red solid circle. The contested sign is a word mark, ‘Anime Planet’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, the difference in that the contested sign is depicted in title-case letters, when the verbal element of the earlier mark is depicted in upper-case letters, is irrelevant. To simplify the analysis and comparison of the signs, the contested sign will be referred to in upper-case letters.

The verbal elements of the signs, namely, ‘PLANETE’ and ‘PLANET’, will be associated with a meaning in certain territories, for example in territories where English and French are spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- and French-speaking part of the public in the EU, as it finds that the meaning of these terms and the ensuing conceptual links between the signs increases the similarity between them.

The verbal element of the earlier mark will be recognised by the French-speaking public as the word ‘PLANÈTE’, despite the fact that the accent on the first ‘E’ is barely visible; it will be understood as ‘a large round object in space that moves around a star’ (information extracted from the Larousse French Dictionary online on 09/07/2021 at https://www.larousse.fr/dictionnaires/francais/plan%c3%a8te/61389). The verbal element ‘PLANET’ of the contested sign is the equivalent word in English. Due to the evident similarity of these terms, which coincide almost entirely, they will convey the same meaning, as outlined above, to both English- and French-speaking consumers, who will recognise them as linguistic equivalents of the same noun, that is, ‘planet’.

The applicant claims that the verbal element ‘PLANETE’ is non-distinctive, as it is a generic term to give the impression of size, scope, importance and significance to the consumer. However, even though the words ‘PLANETE’/‘PLANET’ may somehow suggest the broad availability or the distribution scale of the relevant goods and services, it is considered that this allusion is conveyed in a sufficiently vague and unusual manner, which does not impair the distinctiveness of these elements. Indeed, other terms would normally be used for informational/descriptive or otherwise non-distinctive purposes, such as an indication that the goods and services are available ‘globally’ and/or are offered ‘world-wide’. In other words, the public will be prone to interpreting these words primarily as a fanciful and distinctive indication in relation to the relevant goods and services. Therefore, since the link between the relevant goods and services and the words in question is too faint, it is considered that these verbal elements are at most vaguely allusive, but still enjoy a normal degree of inherent distinctiveness (02/03/2017, R 904/2016‑1, PLANET) in relation to the relevant goods and services.

The symbol ‘+’ of the earlier mark will be identified as a mathematical symbol referring to the concepts of addition, increase or improvement. This element usually refers to a positive notion in the mind of the public, as it is often used to indicate increased quality or quantity (a ‘plus’), and it will be perceived as a laudatory symbol (19/09/2018, R 477/2018‑4, 1+ (fig.) / ONE + SYSTEM (fig.)), rather than an element particularly related to the goods and services provided by the opponent’s company. Therefore, this element has no distinctiveness as such.

The verbal element ‘ANIME’ of the contested sign will be understood by the relevant public as referring to ‘a style of Japanese film and television animation, typically aimed at adults as well as children’ (information extracted from Lexico on 09/07/2021 at https://www.lexico.com/en/definition/anime and the Larousse French Dictionary online on 09/07/2021 at https://www.larousse.fr/dictionnaires/francais/anime/10911047). Contrary to the applicant’s arguments, it is non-distinctive for at least part of the relevant goods and services in Classes 9, 38 and 41, which relate to films, broadcasting and entertainment, and weak for various printed matter and publication services in Classes 16 and 41, as it may allude to their content. However, since it has no direct meaning in relation to packaging materials in Class 16 and the services in Class 35, it will retain its normal degree of distinctiveness for these goods and services.

As regards the figurative elements of the earlier mark, the red circle is suggestive of the idea of a planet and will reinforce the concept conveyed by the word ‘PLANETE’. However, per se, this element, being a basic geometrical shape, possesses a limited degree of distinctiveness. Likewise, the dark rectangle containing the designation ‘PLANETE +’ is a simple geometrical shape, merely serving as a background for the verbal elements, and will not be attributed any trade mark significance by the relevant consumers.

Account is also taken of the fact that 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). Consequently, consumers will tend to focus their attention on the verbal elements of the earlier mark, rather than on its figurative aspects, which may be perceived as visual aids to reinforce the concept, or as mere embellishment.

Visually, the second verbal element of the contested sign, ‘PLANET’, is fully incorporated in the sole verbal element ‘PLANETE’ of the earlier mark and differs only in its last letter. The verbal element ‘PLANETE’ is the most distinctive element of the earlier mark, which will be perceived as an indication of commercial origin of the goods and services, given the clearly lesser importance of its figurative elements and the element ‘+’ (for the reasons explained above).

The signs differ essentially in the verbal element ‘ANIME’ of the contested sign, the initial position of which, however, does not make the abovementioned similarity less perceptible, especially for the goods and services for which this element is weak or non-distinctive. Even for the remaining goods and services, the verbal element ‘PLANET’ still plays an independent distinctive role in the contested sign and the fact that it reproduces almost entirely the sole verbal element of the earlier mark will not go unnoticed by the relevant consumers. Therefore, the signs are visually similar to at least a below-average degree.

Aurally, the verbal elements ‘PLANETE’/’PLANET’ will be pronounced in almost identical or, at least, very similar ways by the relevant public on which the present assessment focuses. The pronunciation of the signs differs in the sound of the symbol ‘+’ of the earlier mark (pronounced as ‘plus’) and the verbal element ‘ANIME’ of the contested sign. However, taking into account the weight attributed to these differing elements (as explained above), the relevant public will immediately perceive the overlap in the distinctive elements ‘PLANETE’/’PLANET’ even for the goods and services for which ‘ANIME’ has an average degree of distinctiveness. Therefore, the signs are aurally similar to at least 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’. Contrary to the applicant’s arguments, the contested sign as a whole does not form a conceptual unit and its semantic content is the result of the simple sum of its parts. Therefore, the abovementioned commonality will be clearly perceived by the relevant consumers. The concept of the ‘plus’ symbol of the earlier mark is non-distinctive and therefore does not have much impact on the conceptual comparison. The distinctiveness of the additional concept of ‘ANIME’ in the contested sign varies depending on the goods and services concerned. However, taking into account that coinciding verbal elements ‘PLANETE’/’PLANET’ play an independent distinctive role in both marks, the signs are conceptually similar to at least 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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some elements with a limited distinctiveness in the mark, as stated above in section c) of this decision.

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.

The contested goods and services are identical and they target the public at large and the professional public, with the degree of attention varying from average to relatively high. The degree of distinctiveness of the earlier mark is normal.

The signs are visually similar to at least a below-average degree, and aurally and conceptually similar to at least an average degree. As detailed in section c) of this decision, one of the verbal elements, playing an independent distinctive role in the contested sign, reproduces almost entirely the sole distinctive verbal element of the earlier mark. Admittedly, the remaining differing verbal and figurative elements in both marks will not go unnoticed by the relevant consumers. However, given the low degree of distinctiveness, or even non-distinctiveness, of these elements in the earlier mark, they will have a limited impact and the differing verbal element ‘ANIME’ of the contested sign, even if distinctive for some of the goods and services, will not overshadow the abovementioned commonality. In addition, there is a clear conceptual link between the signs, which is weighted in favour of likelihood of confusion.

Moreover, 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 applies to the present case, as the identity between the goods and services offsets the somewhat lesser degree of visual similarity between the signs.

Likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the relevant signs directly, conclude that they designate different lines of goods or services from the same or from economically linked undertakings. It is common practice nowadays for companies to make small variations in their trade marks, for example, by changing/adding verbal elements or changing the arrangement of the signs, in order to name a new line of goods or services, or related brand extensions. Given that the earlier mark’s sole verbal element is fully reproduced as the independent distinctive element of the contested sign, it is highly conceivable that the relevant consumers may perceive the contested sign as a variation or newer amended version of the earlier mark when encountering the marks in the context of identical goods and services. Therefore, they might be led to believe that the goods and services in question come from the same or economically linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that many trade marks include the word ‘planet’ or ‘planete’. In support of its argument the applicant refers to several European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘PLANETE’. Under these circumstances, the applicant’s claims must be set aside.

The applicant argued that its mark ‘ANIME PLANET’ is aimed only at consumers interested in anime content, whereas the earlier mark is primarily known in connection with the broadcasting of documentaries and is especially known in French-speaking countries in the audio-visual/broadcasting field. According to the applicant, ‘ANIME PLANET’ is widely known as a major anime brand in Germany, the applicant operates in a different field from the opponent, their consumers differ and the contested sign will not be confused with the earlier mark. To support its arguments, the applicant submitted information about the applicant’s company, its activity, on-line shop, examples of the customer research from the applicant’s social media advertisements and examples of promotional material.

Firstly, the right to an EU trade mark begins on the date when the EU trade mark application is filed and not before, and from that date on the EU trade mark has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EU trade mark application falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EU trade mark application are irrelevant because the rights of the opponent, insofar as they predate the EU trade mark application, are earlier than the applicant’s EU trade mark application.

Secondly, the applicant’s argument that the parties are active in different commercial fields is misguided. The examination of the likelihood of confusion carried out by the Office is a prospective examination, in contrast to trade mark infringement situations. For this reason, specific marketing strategies are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58).

Lastly, likelihood of confusion means a probability of confusion on the part of the relevant consumer and does not require actual confusion. As expressly confirmed by the Court: ‘…it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (24/11/2005, T‑346/04, Arthur et Félicie, EU:T:2005:420, § 69).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion or, at least, likelihood of association, on the part of the English and French-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 9 781 791.

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 or reputation as claimed by the opponent. 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

Rosario GURRIERI

Rasa BARAKAUSKIENĖ

Irena LYUDMILOVA LECHEVA

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.