DECISION

of the Fifth Board of Appeal

of 12 July 2016

In Case R 874/2014-5

Gruner + Jahr GmbH & Co KG
Am Baumwall 11 DE-20459 Hamburg Germany	Opponent / Appellant

represented by HARTE-BAVENDAMM Rechtsanwälte Partnerschaftsgesellschaft MBB, Am Sandtorkai 77, DE-20457 Hamburg, Germany

v

WEBMEDIAGROUP
11 Rue Quentin Bauchart FR-75008 Paris France	Applicant / Respondent

APPEAL relating to Opposition Proceedings No B 1 986 879 (European Union trade mark application No 10 358 001)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), V. Melgar (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 20 October 2011, WEBMEDIAGROUP (‘the applicant’) sought to register the figurative as amended

in colours ‘blue’ and ‘rose’ in respect of the following list of goods and services:

Class 16 - Paper and cardboard (untreated, semi-finished); stationery; printed matter; tickets; photographs; catalogues, newspapers, periodicals, magazines, journals, books, bookmarks, manuals (paper), albums, brochures; office requisites (other than furniture); instructional and teaching material (except apparatus); bags (envelopes, 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; pens, rulers, writing instruments; business cards, postcards, notebooks, note pads; note books; cheque books; holders for cheque books; penholders, nibs, drawing pens; posters; calendars; letter trays; table linen and table napkins of paper; paper table covers; toilet paper; paper handkerchiefs; face towels of paper; posters; paper flags; stickers (items of stationery); postage stamps; boxes of cardboard or paper; envelopes (stationery), announcements (stationery); school supplies; note papers;

Class 35 - Marketing assistance by providing socio-demographic profiles; business management and organisation consultancy; studies of consumer patterns; dissemination of publicity texts; on-line advertising on a computer network; advertising on mobile phones; direct mail advertising (tracts, prospectuses, printed matter, samples);

Class 38 - Communications by computer terminals or by fibre optic networks; providing internet chat rooms; telecommunications, in particular electronic online transmission of data, messages and information; transmission of information to mobile telephones; transmission of commercial data;

Class 41 - Editing and publication of information on computer networks; entertainment, cultural and educational services; arranging and conducting of colloquiums, lectures or congresses; games offered on-line on a computer network; electronic online publication of periodicals and books.

2. The application was published on 19 December 2011.

3. On 12 March 2012, Gruner + Jahr GmbH & Co KG (‘the opponent’) filed an opposition against the registration of the published trade mark for all the above mentioned goods and services. The opponent claimed likelihood of confusion pursuant to Article 8(1)(b) EUTMR with its earlier German trade mark registration No 30 112 623, for the word mark ‘MOM’, registered on 21 June 2001 for goods and services in Classes 1, 9, 16, 35, 38, 41 and 42.

4. The opposition, following a restriction declared in the course of opposition proceedings, was based on part of the goods and services of the earlier trade mark namely:

Class 9: Electrical and electronic equipment and devices; photographic cinematographic and optical equipment and instruments; data storage media of any kind with and without data; computers and computer software and hardware; multimedia computer programs; video games; devices for recording, transmission and reproduction of sound and/or images; video cassettes, discs and tapes; records, CD-ROMs, CD-Is, DVDs; magnetic and fiber optic data storage media; components of the aforementioned goods; videos and video films; sound and/or image storage equipment, devices and instruments; developed film and undeveloped film; entertainment devices that are connected to televisions;

Class 16: Printed matter; photographs, informational material (except apparatus); magazines, newspapers and books, all the aforementioned goods for women, mothers and expectant mothers;

Class 35: Advertising, sales promotion;

Class 38: Transmission of information, including webpages; supply and transfer of data and other content via the Internet;

Class 41: Publication and release of books, newspapers, magazines and other printed media products, including via the Internet or other on line networks, in a thematic context with women, mothers and expectant mothers; publishing house services in a thematic context with women, mothers and expectant mothers; collection, storage and supply of media content, in particular also including on the Internet and in online networks, in a thematic context with women, mothers and expectant mothers; online services including Internet services, namely transmission, collection and delivery of news and information of all kinds in a thematic context with women, mothers and expectant mothers;

Class 42: Services of a search engine provider; technical consulting on the production of multimedia products; services of a software developer, including programming and consulting; consultancy and production of hardware and software designs and configurations in the areas of electronics, computing and telecommunications; IT consulting, in particular in the Internet media agency sector.

5. On 19 September 2012, the opponent submitted further facts and evidence in support of its opposition.

6. On 5 December 2012, the applicant submitted its observations in reply to the opposition and requested the opponent to provide proof of use of the earlier trade mark. The request was limited to the goods and services in Classes 16, 35, 38 and 41.

7. On 30 April 2013, the opponent submitted proof of use of the earlier German mark.

8. On 20 September 2013, the applicant filed its observations in reply, by way of which the proof of use submitted by the opponent was contested, as well as the alleged likelihood of confusion between the marks.

9. On 7 November 2013, the opponent filed further comments to the applicant’s observations.

10. By its decision of 29 January 2014, (‘the contested decision’), the Opposition Division partially upheld the opposition, namely for the following goods and services:

Class 16: Office requisites (other than furniture); instructional and teaching material (except apparatus);

Class 38: Communications by computer terminals or by fibre optic networks; providing internet chat rooms; telecommunications, in particular electronic online transmission of data, messages and information; transmission of information to mobile telephones; transmission of commercial data;

Class 41: Editing and publication of information on computer networks; entertainment, and educational services; games offered on-line on a computer network; electronic online publication of periodicals and books.

11. In the contested decision the Opposition Division reasoned as follows:

Proof of use

• According to the applicant’s request, proof of use of the earlier mark was limited to the goods and services in conflicting classes 16, 35, 38 and 41.

• The opponent filed the following evidence:

  • Copies of the cover, table of contents and contents of the first issue (01/2011) of the magazine ‘MOM’;

  • Affidavits by Mrs Iliane Weiẞ, assistant publishing director for the ‘BRIGITTE’ group and for the ‘BRIGITTE MOM’ edition;

  • Excerpts concerning the German trade mark in question;

  • Publication dated 27 July 2011, regarding the planned magazine (‘Mom’), German with no translation;

  • Circular dated July 2011, purportedly sent to 2000 potential buyers of advertising space regarding advertising in the magazine ‘Mom’;

  • Copy of an order for advertising in the magazine;

  • Copy of advertising orders;

  • Extracts from the website www.denie.de concerning prices for adverts contained therein (dated 2013);

  • Copy of a judgment regarding use of the German trade mark registration No 30 112 623, for the word mark ‘mom’;

  • Excerpts from a public opinion poll (Allensbacher Markt- under Werbeträgeranalyse” (AWA) regarding ‘Brigitte’ a well-known women’s magazine to which the trade mark at hand is linked;

• The evidence submitted is extremely limited in its probative value and when looking at extent there are no solid indications anywhere in the evidence.

• The documentation submitted does not show any solid convincing evidence to support the opponent’s contentions. The Opposition Division concluded that the evidence furnished by the opponent was insufficient to prove that the earlier mark was genuinely used in the relevant territory during the relevant period of time. The opposition proceeded on the basis of the remaining goods and services for which the proof of use was not requested namely those in Classes 9 and 42.

Likelihood of confusion – the goods and services

• The opposition is based on goods and services in Classes 9 and 42.

Class 9: Electrical and electronic equipment and devices; photographic cinematographic and optical equipment and instruments; data storage media of any kind with and without data; computers and computer software and hardware; multimedia computer programs; video games; devices for recording, transmission and reproduction of sound and/or images; video cassettes, discs and tapes; records, CD-ROMs, CD-Is, DVDs; magnetic and fiber optic data storage media; components of the aforementioned goods; videos and video films; sound and/or image storage equipment, devices and instruments; developed film and undeveloped film; entertainment devices that are connected to televisions;

Class 42: Services of a software developer; technical consulting on the production of multimedia products; services of a software developer, including programming and consulting; consultancy and production of hardware and software designs and configurations in the areas of electronics, computing and telecommunications; IT consulting, in particular in the Internet media agency sector.

• The contested goods and services are the following:

Class 16: Paper and cardboard (untreated, semi-finished); stationery; printed matter; tickets; photographs; catalogues, newspapers, periodicals, magazines, journals, books, bookmarks, manuals (paper), albums, brochures; office requisites (other than furniture); instructional and teaching material (except apparatus); bags (envelopes, 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; pens, rulers, writing instruments; business cards, postcards, notebooks, note pads; note books; cheque books; holders for cheque books; penholders, nibs, drawing pens; posters; calendars; letter trays; table linen and table napkins of paper; paper table covers; toilet paper; paper handkerchiefs; face towels of paper; posters; paper flags; stickers (items of stationery); postage stamps; boxes of cardboard or paper; envelopes (stationery), announcements (stationery); school supplies; note papers;

Class 35: Marketing assistance by providing socio-demographic profiles; business management and organisation consultancy; studies of consumer patterns; dissemination of publicity texts; on-line advertising on a computer network; advertising on mobile phones; direct mail advertising (tracts, prospectuses, printed matter, samples);

Class 38: Communications by computer terminals or by fibre optic networks; providing internet chat rooms; telecommunications, in particular electronic online transmission of data, messages and information; transmission of information to mobile telephones; transmission of commercial data;

Class 41: Editing and publication of information on computer networks; entertainment, cultural and educational services; arranging and conducting of colloquiums, lectures or congresses; games offered on-line on a computer network; electronic online publication of periodicals and books.

Contested goods in Class 16

• The contested ‘instructional and teaching material (except apparatus)’ are made up of goods that are intended to be used as study aids and includes not only a variety of printed matter for educational purposes but also CD-ROMS, DVD’s and other such multi-media goods. Thus, the ‘computer software and multimedia computer programs’ as found in Class 9 of the earlier right may well have an educational, instructional content and thus have the same purpose as the contested goods and may well derive from the same producers, be directed via the same distribution channels to the same users, leading to similarity.

• The contested ‘office requisites’ is a broad term which includes amongst others typewriters; the earlier right protects ‘computers’ in Class 9. These goods are to a certain extent in competition, particularly as concerns their word processing functions and thus interchangeable. In addition, they may share the same distribution channels, sales outlets and consumers. Despite the broad nature of the contested goods, the fact that they include the aforementioned goods leads to similarity.

• The remaining contested goods consist of a variety of different kinds of paper, cardboard, printed matter, stationery and related office equipment, posters, flags and credit cards. None of these goods coincide with the goods and services of the earlier rights, their nature and purpose differs, as do their producers, consumers and distribution channels. They do not share a complementary nature, nor are they in competition. Thus they are dissimilar.

Contested services in Class 35

• The contested services are provided by specialised companies and comprise of the studying of clients’ needs, providing necessary information and advice for the marketing of products and creating personalised advertising strategies through newspapers, web sites, videos, the Internet, etc. The nature and purpose of these services is fundamentally different from the manufacture of goods, or from the provision of many other services. The mere fact that some goods or services may appear in advertisements is insufficient for finding similarity. Moreover, when comparing these services with those of Class 42 of the earlier right, the latter are IT or Internet related services and again, though the contested services may use the latter there is no interdependent or complementary relationship. Nor are the services in competition. Indeed, as held previously the services do not coincide in any relevant points of contact as their nature and purpose is different; thus on the basis of the aforementioned arguments these contested services are dissimilar to the goods and services of the earlier mark.

Contested services in Class 38

• The contested services in Class 38 allow communication via remote means which not only refer to verbal communication but also the transmission of data, images, and any other forms. The earlier right includes ‘computers and devices for recording, transmission and reproduction of sound and/or images’ from Class 9, which are on the one hand, devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate, or otherwise process information and, on the other, devices used to communicate audio or video information over a distance via radio waves, optical signals, etc. or along a transmission line. There is a link between these goods in Class 9 and the services in Class 38. They are similar both because they are complementary and due to the fact that, even though their nature is different, their purpose and distribution channels are the same.

Contested services in Class 41

• The contested ‘educational services’ are similar to the ‘computer software’ and ‘multimedia computer programs’ as found in Class 9 of the earlier right as the latter may well have an educational, instructional content and thus have the same purpose as the contested goods and may well derive from the same producers and be directed via the same distribution channels to the same users. It is also worth noting that educational providers make, use and distribute such learning resources to their participants.

• The contested ‘electronic online publication of periodicals and books’ and ‘editing and publication of information on computer networks’ are comparable to the ‘data storage media of any kind with and without data’ in Class 9 of the earlier right. The latter may include media containing e-books or literature available in an electronic form, such as encyclopaedias, and it is common practice for these forms of media to also have an online link to access further or more updated information. The contested services therefore lead one to the products. Not only may the goods and services derive from the same undertakings but they are also complementary; thus they are similar.

• The contested ‘games offered on-line on a computer network’ are comparable to ‘video games’ from Class 9 of the earlier right. Although the latter are tangible, while the former are intangible (being virtual), they are both games to be played and it is common practice for providers to offer their products on different platforms, thus meaning that the same game can be both physical or virtual. The goods may well emanate from the same undertakings and be made available to the same consumers; thus they are similar.

• The contested ‘entertainment’ service is a broad term incorporating services intended to amuse or ‘divert’ and includes the aforementioned services that offer games online. Given the broad nature of the aforementioned service and the fact that it cannot be dissected ex officio, the same reasoning is applicable when compared to the same goods from Class 9, and thus they too are similar.

• The contested ‘cultural services’ (any service in the field of intellectual or artistic enhancement) and ‘arranging and conducting of colloquiums, lectures or congresses’ are dissimilar to all the goods and services of the earlier right, their nature and purpose differs as do their producers, consumers and distribution channels; furthermore they are not complementary, nor are they in competition with one another.

The signs

• Visually, the signs are similar to the extent that they coincide in the first and last letter of the earlier mark (M*M). On the other hand, they differ in the first word of the contested sign ‘DIGITAL’ and the ‘U’ replacing the ‘O’ of the earlier right. They also differ in the use of colour, blue and pink for each word of the contested sign. Further, they differ in the three letters of the earlier mark, versus the two words composed of seven and three letters respectively.

• Aurally, the pronunciation of the signs coincides in the sound of the letters ‘M*M’ present identically in both signs, and to that extent, the signs are aurally similar. With respect to the aural difference between ‘U’ and ‘O’, it may not be so clear due to their placement in the midst of identical sounds; as a result, the slight phonetic difference between the vowels may be obscured. The pronunciation differs in ‘DIGITAL’, the first word of the contested sign.

• Conceptually, ‘MUM’ is featured in the Duden Online dictionary as a colloquial English term for ‘mother’. Although it is not a German word, its inclusion in the dictionary may mean that the relevant public understand it as such. ‘MOM’ is also colloquial terminology for ‘mother’ used mostly in America, though also in parts of the UK and Ireland, it is held that at least the English speaking part of the public will understand it as such leading to conceptual identity to this degree. Whilst for those who do not understand it, the signs are not conceptually similar.

• ‘DIGITAL’ is a German adjective referring to digital technology, namely numerical digits and their use in representing data (numbers, times) in computing and electronics.

Distinctive and dominant element of the signs

• The earlier mark has no element which could be clearly considered more distinctive than other elements.

• The element ‘DIGITAL’ will be associated with digital technology and is understood as referring to anything that is ‘electronic’, IT based, or available online. Particularly with regard to the similar services, the relevant public will understand it as implying that the services are available online, or geared to be used online. This may also be understood with respect to the similar goods which can also have online or virtual counterparts. The public understands the meaning of this term and will not pay as much attention to this weak element as to the other more distinctive element of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

• The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Distinctiveness of the earlier mark

• In the present case, the earlier trade mark as a whole has no meaning in relation to any of the goods and services at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Relevant public – level of attention

• The goods and services found to be similar are directed at the public at large as well as business customers with specific professional knowledge or expertise. The level of attention may vary from average to high.

Global assessment, other arguments and conclusion

• Firstly, with respect to those goods and services found dissimilar there is no likelihood of confusion since similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR

• With respect to those goods and services found similar, the adjective ‘DIGITAL’ is a weak part of the mark which will therefore not be taken as an indication of origin due to its descriptive connotations.

• The earlier mark is a three lettered word of which the first and last letter coincide with the remaining three lettered term of the contested mark. Although the second letters are different, they are both vowels and aurally the difference is not so significant given its positioning.

• The signs are conceptually identical and at least part of the relevant public will be aware of this. Further, this term is distinctive with regards to the goods and services at issue and is featured in a completely independent manner within the contested sign. The use of different colours also marks a visible separation between the two components.

• Part of the contested sign, namely ‘MUM’ will be focused on as an indication of origin and clearly the similarity with the earlier mark will lead at least part of the relevant public to perceive the signs as deriving from the same undertaking or, as the case may be, from economically-linked undertakings.

• Consumers may believe that the contested mark’s goods are connected in some way to those of the earlier mark, e.g. as a sub brand, or a variation of the earlier mark, configured in a different way according to the type of goods and services which it designates.

• The Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s German trade mark registration.

12. On 28 March 2014, the opponent filed an appeal against the contested decision, requesting that the decision be set aside as amended rejected. The statement of grounds of the appeal was received on 28 May 2014.

13. On 25 July 2014 the EUTM applicant’s representative notified the Office of its cancellation of representation. The proceedings continued directly with the applicant. However, due to the fact that the applicant’s address was unknown, the subsequent notification of 19/11/2014 failed. Therefore, the Office proceeded in accordance to the Rules 61 and 66 CTMIR and Decision No EX-05-6 of the President of the Office of 27/07/2005 and issued a public notification on 11/05/2015 on its website. No observations were submitted by the applicant.

Submissions and arguments of the parties

14. The arguments raised in the statement of grounds may be summarised as follows:

Proof of use

• The Opposition Division wrongly held that the evidence submitted was not sufficient to prove genuine use of the earlier mark and, therefore, ignored all the goods and services in Classes 16, 35, 38 and 41, for which proof of use was requested.

• Part of the evidence submitted was not considered:

• Copies of the first issue of the magazine ‘MOM’ 1/2011 – physical evidence;

• Publication of 27 July 2011 in ‘textintern’, being an independent source and therefore of the high probative value;

• The judgement of the Regional Court in Hamburg was wrongly considered as not having any probative value. It is an incorrect statement that the judgment contained no information as to how the Court arrived at the conclusion of genuine use of the mark. The opponent quoted the relevant excerpt from the judgement indicating the main findings.

• The assessment of the probative value of the affidavit was incomplete and incorrect. The Opposition Division has given no significance to the affidavit. It did not take into account all of the relevant aspects as regards its probability and veracity. The statement in the affidavit is confirmed by the further evidence, in particular that in attachments 3, 4, 6, 8, 9, 10, 11, 12, 13 and 15. Furthermore its contents have been wrongly assessed. In particular, contrary to the findings in the decision, it includes the number of sales of the first issue of the magazine, estimated at ‘approximately 70 000 copies’.

• The affidavit confirms the significant volume of sales (70 000 copies), the even higher print run, the fact that the magazine was available all over Germany, and that it has been published continuously twice a year; this attests to the extent of use.

• The evidence was inappropriately broken up into isolated pieces and was not assessed globally and under consideration of all the facts and circumstances relevant to establishing whether the commercial use was real. In particular, the Opposition Decision failed to recognize that not every item of evidence needs to refer to all conditions of use; instead it wrongly examined only the extent of use. While the affidavit refers to extent of use, the further evidence confirms the place, time and nature of use.

• The evidence filed is sufficient proof of use of the earlier mark, in particular with regard to the goods: ‘printed matter; magazines for women, mothers and expectant mothers; advertising, publication and release of magazines, including via the Internet or other on line networks, in a thematic context with women, mothers and expectant mothers; publishing house services in a thematic context with women, mothers and expectant mothers’.

• The opponent files the following supplementary evidence:

• Copies of covers of six subsequent issues of the magazine ‘MOM’ between 2011 and 2014.

• Additional affidavit signed by Mr Rainer Stӧber, an employee (sales manager in charge of the ‘MOM’) of the Deutscher Pressevertrieb (in charge of distribution of ‘MOM’ magazine), the subsidiary of the Gruner + Jahr AG & Co KG.

• Packing and loading list concerning the delivery of the first issue of the magazine ‘MOM’ in magazine format to resellers and in pocket format.

• Order confirmations and invoices for advertising spaces booked in the first issue of the ‘MOM’ magazine.

Similarity of goods and services based on the goods in Class 9

• The opposition was wrongly rejected as regards the following contested goods and services: ‘printed matter; newspapers, periodicals, magazines, journals, books, manuals (paper); arranging and conducting of colloquiums, lectures or congress’.

Class 16 of the contested application

• The goods in Class 9 of the earlier mark, in particular: ‘data storage media of any kind with and without data; computer software; multimedia computer programs; records, CD-ROMs, CD-Is, DVDs; components of the aforementioned goods’ are also similar to the contested goods in Class 16: ‘printed matter; newspapers; periodicals; magazines; journals; books; manuals (paper)’.

• Various contents are published in paper, as well as in electronic version and are stored on various kinds of data carriers. Therefore, the goods under comparison share the same nature and serve the same purpose, namely that of providing information.

• Moreover, the same content published in paper is usually accompanied by a CD-ROM or DVD in the case of books or apps in the case of magazines; furthermore, certain contents are available exclusively in electronic version, such as manuals. Consequently, the goods under comparison are also complementary and substitutable.

• The distribution channels are also overlapping, as e.g. book shops sell the contents in printed form as well as on data storage media.

• The public naturally believe that these goods originate from the same companies.

• Additionally, the earlier mark is explicitly registered for ‘components of the aforementioned goods’. ‘Typical components of CD-Roms, Cds and alike are inlays and cover cards, which are printed matter by nature.’

Class 41 of the contested application

• While the Opposition Division correctly held that the earlier mark’s goods in Class 9 ‘computer software, multimedia computer programs’ are similar to the contested services in Class 41 ‘educational services’, it has overlooked that the same applies to the contested services ‘arranging and conducting of colloquiums, lectures or congresses’ in Class 41, as they are educational services by nature too.

Reasons

15. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible. It is also well founded for the reasons explained below.

Scope of the appeal

16. In the present case the applicant has not appealed the contested decision. Therefore, the part of the decision upholding the opposition for part of the contested goods and services in Classes 16, 38 and 41 has become final. As a consequence, the matter to be decided on in this appeal filed by the opponent is limited to the assessment of the proof of use and to the contested goods and services for which the opposition was rejected as listed below:

Class 16: Paper and cardboard (untreated, semi-finished); stationery; printed matter; tickets; photographs; catalogues, newspapers, periodicals, magazines, journals, books, bookmarks, manuals (paper), albums, brochures; bags (envelopes, 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; pens, rulers, writing instruments; business cards, postcards, notebooks, note pads; note books; cheque books; holders for cheque books; penholders, nibs, drawing pens; posters; calendars; letter trays; table linen and table napkins of paper; paper table covers; toilet paper; paper handkerchiefs; face towels of paper; posters; paper flags; stickers (items of stationery); postage stamps; boxes of cardboard or paper; envelopes (stationery), announcements (stationery); school supplies; note papers;

Class 35: Marketing assistance by providing socio-demographic profiles; business management and organisation consultancy; studies of consumer patterns; dissemination of publicity texts; on-line advertising on a computer network; advertising on mobile phones; direct mail advertising (tracts, prospectuses, printed matter, samples);

Class 41: Cultural services; arranging and conducting of colloquiums, lectures or congresses.

On the belated evidence submitted on appeal

17. Together with its grounds of appeal, the opponent introduced further evidence for the purposes of showing genuine use of its earlier German trade mark:

• Copies of covers of six subsequent issues of the magazine ‘MOM’ between 2011 and 2014, to German customers (annex 18).

• Additional affidavit signed by Mr Rainer Stӧber, an employee (sales manager in charge of the ‘MOM’) of the Deutscher Pressevertrieb (in charge of distribution of ‘MOM’ magazine), the subsidiary of the Gruner + Jahr AG & Co KG (annex 19 and 19a).

• Packing and loading list concerning the delivery of the first issue of the magazine ‘MOM’ in magazine format to resellers (annex 20 and 20a); and in pocket format (annex 21).

• Order confirmations and invoices for advertising spaces booked in the first issue of the ‘MOM’ magazine (annex 22).

18. According to Article 76(2) EUTMR, the Office may disregard facts or evidence which are not submitted in due time by the parties concerned.

19. As the Court has held, it results from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of EUTMR and that the EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (13/03/2007, C-29/05 P, Arcol, EU:C:2007:162, § 42), and (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 22), that is to say, after the time-limit set by the Opposition Division and, as the case may be, for the first time before the Board of Appeal.

20. In stating that the latter ‘may’, in such a case, decide to disregard evidence, Article 76(2) CTMIR grants the Office a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (13/03/2007, C-29/05 P, Arcol, EU:C:2007:162, § 43), and (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 23).

21. Although the first subparagraph of Rule 50(1) CTMIR lays down the principle that the provisions relating to proceedings before the department which has made the decision against which the appeal is brought are to be applicable to appeal proceedings mutatis mutandis, the third subparagraph of Rule 50(1) CTMIR constitutes a special rule derogating from that principle (03/10/2013, C-120/12 P, Proti Snack, EU:C:2013:638, § 28).

22. Under the third subparagraph of Rule 50(1) CTMIR, where the appeal is directed against a decision of an Opposition Division, the Board of Appeal must limit its examination of the appeal to facts and evidence presented within the time-limits set or specified by the Opposition Division, unless the Board considers that additional or supplementary facts and evidence must be taken into account pursuant to Article 76(2) EUTMR (03/10/2013, C-120/12 P, Proti Snack, EU:C:2013:638, § 31).

23. The Implementing Regulation therefore expressly provides that the Board of Appeal enjoys, when examining an appeal directed against a decision of the Opposition Division, the discretion deriving from the third subparagraph of Rule 50(1) CTMIR and from Article 76(2) EUTMR to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time-limits set or specified by the Opposition Division (03/10/2013, C-120/12 P, Proti Snack, EU:C:2013:638, § 32).

24. In that regard, the Court has held, inter alia, that where the Office is called upon to give judgment in the context of opposition proceedings, taking into account facts or evidence produced late is particularly likely to be justified where the Office considers, first, that the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (judgments of 13/03/2007, C-29/05 P, Arcol, EU:C:2007:162, § 44), and of 26/09/2013, C-610/11 P, Centrotherm, EU:C:2013:912, § 112).

25. While exercising its discretion the Board should also consider whether the evidence presented for the first time before the Board is supplementary and intended to strengthen or to clarify the content of the initial evidence (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28; 28/03/2012, T-214/08, Outburst, EU:T:2012:161, § 51).

26. In the case at hand, the conditions for accepting the belated evidence submitted by the opponent have been met.

27. The information given at the appeal stage (see paragraph 17 supra) is ‘supplementary’ and ‘complementary’ to the earlier information, as it further specifies and serves to support the alleged sales of ‘MOM’ magazine in Germany during the relevant time period (regarding ‘supplementary’ and ‘complementary’ evidence, see judgment of 11/12/2014, T-235/12, Shape of a blade of grass in a bottle, EU:T:2014:1058, § 89). The evidence filed belatedly is also ‘genuinely relevant’ to the outcome of the opposition brought before the Office since, had it been taken into account by the Opposition Division, it would most likely have affected the Opposition Division’s findings and, in turn, its decision.

28. Furthermore, the stage in the proceedings at which the late production of evidence arose and the circumstances surrounding it do not argue against such evidence being taken into account by the Board, especially since the opponent produced it at an early stage in the proceedings, i.e. with its statement of grounds, thereby allowing the applicant to examine the evidence and to submit its observations in reply, and allowing the Board to exercise its discretion in an objective, reasoned manner to decide whether or not to take it into account.

29. In view of the above, the Board finds it justified to allow the evidence filed belatedly and, thus, to take it into account when assessing the use of the earlier German trade mark.

Proof of use

30. Pursuant to Rule 22(3) CTMIR, the indications and evidence for furnishing proof of use shall consist of indications concerning the place, time, extent and nature of use of the earlier trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

31. In order to assess whether a trade mark has been put to genuine use in a particular case, an overall assessment of the documents in the file must be carried out, taking account of all the relevant factors in the case. In such an assessment, regard must be made to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (19/12/2012, C-149/11, ‘Leno’, EU:C:2012:816, §29; 27/01/2004, C-259/02, ‘Laboratoire de la mer’, EU:C:2004:50, § 27; 11/03/2003, C-40/01, ‘Minimax’, EU:C:2003: 145 § 37).

32. Rule 22(3) CTMIR does not state that each item of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use. Thus, items of evidence taken together may establish the necessary facts, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (16/11/2011, T-308/06, ‘Buffalo Milke’, EU:T:2011:675, §61; 24/05/2012, T-152/11, ‘Mad’, EU:T:2012:263, §33,34).

33. In the case at hand, the opponent had to prove use of its earlier German trade mark registration No 30 112 623, for the word ‘MOM’ during the period from 19 December 2006 to 18 December 2011 including for the part of the goods and services in Classes 16, 35, 38 and 41:

Class 16: Printed matter; photographs, informational material (except apparatus); magazines, newspapers and books, all the aforementioned goods for women, mothers and expectant mothers;

Class 35: Advertising, sales promotion;

Class 38: Transmission of information, including webpages; supply and transfer of data and other content via the Internet;

Class 41: Publication and release of books, newspapers, magazines and other printed media products, including via the Internet or other on line networks, in a thematic context with women, mothers and expectant mothers; publishing house services in a thematic context with women, mothers and expectant mothers; collection, storage and supply of media content, in particular also including on the Internet and in online networks, in a thematic context with women, mothers and expectant mothers; online services including Internet services, namely transmission, collection and delivery of news and information of all kinds in a thematic context with women, mothers and expectant mothers.

34. The evidence submitted before the Opposition Division and during the appeal procedure can be summarised as follows:

• Copies of the cover, table of contents, impress first issue (01/2011) of the magazine ‘MOM’ with translation (annex 3, 3a);

• Two originals of the first issue (01/2011) of the magazine ‘MOM’ (annex 4);

• Affidavits by Mrs Iliane Weiẞ, assistant publishing director for the ‘BRIGITTE’ group and for the ‘BRIGITTE MOM’ edition, with translation (annex 5, 5a);

• Cover of the magazine ‘MOM’ (01/2012) (annex 6);

• Screenshots from the website www.gujmedia.com (annex 7);

• Excerpts concerning the German trade mark in question, with translation (annex 8, 8a);

• Article in ‘text intern’ dated 27 July 2011, regarding the planned magazine (‘Mom’), German with no translation (annex 9);

• Circular dated July 2011, sent to potential buyers of advertising space regarding advertising in the magazine ‘Mom’ (annex 10);

• Copy of an order for advertising in the magazine (annex 11);

• Extracts from the website www.denie.de regarding domain mom-magazin.de (annex 12);

• Screenshots of the internet presence of ‘MOM’ (annex 13);

• Extracts from the German Trade Mark Law, § 55, 49, 26 MarkenG, with translation (annex 14, 14a);

• Judgment of the Regional Court of Hamburg, with translation (annex 15, 15a)

• Excerpts from a public opinion poll (Allensbacher Markt- under Werbeträgeranalyse” (AWA), with translation (annex 16, 16a);

• Covers of magazines in the ‘Brigitte’ product family (annex 17)

• Copies of covers of 6 subsequent issues of the magazine ‘MOM’ between 2011 and 2014, to German customers (annex 18).

• Additional affidavit signed by Mr Rainer Stӧber, an employee (sales manager in charge of the ‘MOM’) of the Deutscher Pressevertrieb (in charge of distribution of ‘MOM’ magazine), the subsidiary of the Gruner + Jahr AG & Co KG, with translation (annex 19 and 19a).

• Packing and loading list concerning the delivery of the first issue of the magazine ‘MOM’ in magazine format to resellers, with translation (annex 20 and 20a); and in pocket format (annex 21).

• Order confirmations and invoices for advertising space booked in the first issue of the ‘MOM’ magazine (annex 22).

35. In the contested decision the Opposition Division concluded that the evidence furnished by the opponent was insufficient to prove that the earlier mark was genuinely used in the relevant territory during the relevant period of time. Unfortunately, the contested decision provides only limited further reasoning which does not enable the Board to ascertain on what basis the Opposition Division came to its conclusion regarding the alleged lack of genuine use of the earlier German trade mark.

Origin of the documents

36. It follows from settled case-law that, in order to be regarded as conclusive evidence, an affidavit issued by the party or an executive manager of that party ought to be corroborated by relevant invoices or other independent documentary evidence unrelated to the interested party (13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156, § 38-39 and 15/12/2005, T‑262/04, Briquet à pierre, EU:T:2005:463, § 79).

37. In relation to the evidence analysed by the Opposition Division and from the pleadings of the applicant, much weight was given to the affidavit by Mrs Iliane Weiß, assistant publishing director for the ‘BRIGITTE’ group and for the ‘BRIGITTE MOM’ edition, who states, inter alia the figures relating to the print run, ‘sold’ circulation and frequency of publications. Given that the statement in the affidavit was drawn up by an employee of the opponent’s company, and was not supported by any additional proof, the Opposition Division gave it less weight. However, when considering the evidence submitted as a whole, the Board sees no good reason to question the reliability of those statements in the affidavit. In the Board’s view, its content is sufficiently corroborated by the supporting evidence submitted before the Opposition Division and, on appeal, before the Board.

38. Although the volume of sold copies amounting to 70 000 as stated in the affidavit is not confirmed by any other evidence, it does not preclude the evidentiary value of the remaining statements in the document and confirmed by independent sources.

39. In line with statements of Mrs Iliane Weiẞ is the affidavit by Mr Rainer Stӧber, an employee (sales manager in charge of the ‘MOM’) of the Deutscher Pressevertrieb (in charge of distribution of ‘MOM’ magazine), the subsidiary of the Gruner + Jahr AG & Co KG (dated 14 May 2014), who states the print runs of the first issue, the on-sale-date of the magazine, provides information as to the magazine being distributed in the whole territory of Germany as well as stating the sales prices and sales figures of the first issue. The affidavit further contains information about the second issue of the magazine ‘MOM’. In this regard, the Board notes that the evidence from distributors should, generally, be given less weight, since it is less likely that their evidence presents an independent perspective (28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 54-56). However, again, the statements in this affidavit are corroborated by further evidence.

Judgment of the Hamburg Regional Court

40. The intention of the European Union legislature must be understood as meaning that the mechanisms put in place by the legislation are aimed at guaranteeing uniform protection of the European Union trade mark throughout the territory of the Union.

41. It follows from an equally consistent line of decisions that, while the EUIPO is not bound by decisions made by national authorities, it may nevertheless take those decisions into consideration, without them being binding or even determinative, as indicia in the assessment of the facts of the case (18/03/2016, WINNETOU, T‑501/13, ECLI:EU:T:2016:161, § 36 and case-law cited).

42. The opponent submitted as evidence the judgment of the Regional Court in Hamburg of 29/01/2013 in a cancellation action for non-use of the German trade mark ‘mom’, no 301 12 623 (case No 312 O 650/11), which is the basis in the opposition case, subject to the present appeal. Notwithstanding the decision of the court, (genuine use was proved in Germany for part of the goods and services in Classes 16, 35 and 41), the Board will consider the judgment, prima facie, as a relevant factual aspect, the potential impact of which ought to have been assessed for the outcome of the dispute before it. In failing to do so, the Board would not be assessing all the relevant factual aspects of the case before it with the required diligence (25/03/2015, T-378/13, PINK LADY, ECLI:EU:T:2015:186, § 49-51). In addition, the Board of Appeal is required, pursuant to the order of 12 February 2009 in Bild digital and ZVS (C‑39/08 and C‑43/08, EU:C:2009:91), to take into account the judgement, because it deals with the same mark, came from a higher national court, is related to identical goods and services and had been handed down shortly after the contested EUTM was filed.

43. In addition, the opponent submitted extracts from German Trade Mark Law, in particular § 26, 49 and 55 (use of a trade mark, revocation proceedings and cancellation proceedings before regular courts in Germany).

44. Although German trade mark law remains harmonized with the Directive to approximate the laws of the Member States relating to trade marks (EU) 2015/2436, and remains in line with the European Union trade mark Regulation (EC) of 26/02/2009, No 207/2009 (EUTMR), the interpretation of the requirement of the proof of use may differ.

45. The Board notes that according to German trade mark law, the use of the trade mark is only required to be shown to be probable (‘glaubhaft zu machen’, see § 43(1)). Thus, for example a sworn witness statement and a product packaging may be sufficient under German law as a means of showing probability. On the other hand, Article 42(2) EUTMR requires the opponent to ‘furnish proof’ of use under the conditions of that provision. For example, an affidavit would only be sufficient to prove genuine use under Article 42(2) EUTMR if the information given in the affidavit was corroborated by further evidence (07/06/2003, T-303/03, ECLI:EU:T:2005:200, Salvita, § 42-45). Consequently, the standards for proving genuine use are higher under the EUTMR than under German law.

46. The Board does not have access to the evidence submitted before the Regional Court in Hamburg and will therefore consider the judgment only as a prima facie indication of use. The Board, in principle being persuaded by other evidence presented before it, gives regard to the statements in the judgment which relate to the release of the first issue of the magazine ‘MOM’, together with its Internet release. In addition, as to the assessment of the genuine use of the trade mark (nature of use) within the meaning of the §26 MarkenG, (see paragraph 58 below) this will be considered only as supplementary evidence.

Territory and time of use

47. In respect of the extent of the time and territory on which the earlier trade mark was genuinely used, the Opposition Division correctly defined the use from 19 December 2006 to 18 December 2011 in Germany.

48. The opponent stated that the trade mark was used for a periodical for women, mothers and expectant mothers that had been sold in Germany since September 2011. All the documents referenced concern the use of its mark in Germany and are dated partially within and partially outside of the relevant time period.

49. Indeed, the Board finds that the first issue (1/2011) of the magazine was released on 7 September 2011. This is stated in the affidavit and is confirmed in the email to potential advertisers and in the judgment (annexes 5, 9, 10, 15).

50. It is necessary to note, that the magazine, since its first release, has been regularly issued twice a year. The opponent submitted the copies of the covers of the six subsequent issues of the magazine ‘MOM’ between 2011 and 2014 (annex 18).

51. Since the magazine is published in German, the resellers’ network (annexes 21, 22) covers the majority of the territory of Germany. The Board takes the territory and the time of use of the trade mark ‘mom’ as properly evidenced.

Nature of use

52. The evidence proves the use of the earlier mark in the form in which it was registered in accordance with Article 42(2) and Article 15(1)(a) EUTMR. In this respect proof of genuine use of an earlier mark which forms the basis of an opposition against a EUTM application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (27/02/2014, T-226/12, Lidl, ECLI:EU:T:2014:98, § 52, 53).

53. The evidence shows the word ‘MOM’ in standard typeface and letters in upper case.

54. It is apparent that the opponent’s word mark is used in combination with another trade mark: ‘Brigitte’. In that regard, it must be recalled that the purpose of Article 15(1)(a) EUTMR, is to avoid imposing strict conformity between the form in which the trade mark is used and the form in which it was registered. Moreover, there is no legal precept in the EU trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43).

55. The sign ‘MOM’ is accompanied with the smaller sized word ‘Brigitte’ (in lower case), which is incorporated in the word ‘MOM’, in a way that the latter clearly dominates the sign. In particular, the word ‘Brigitte’ occupies a half of the first letter ‘M’ of the word ‘MOM’. Furthermore, the words are depicted in different colours and different fonts. The word element ‘Brigitte’ alternatively precedes the word ‘MOM’, for example as presented next to the page numbers in the magazine at the bottom of the pages.

56. As the opponent proved that in 2011 the ‘Brigitte’ magazine and product family was known to 84% of the German public (annex 16, 17), the Board notes that the relevant public will perceive the word ‘MOM’ as a trade mark for an individual product, while the word ‘Brigitte’ will be seen as a well known trade mark for a product group. In fact, it is common practice in trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (see, in this respect, decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42). In the context of the labelling of magazines, joint affixing of separate marks on the same product, is a common commercial practice.

57. The use in a form as registered was also confirmed by the Regional Court of Hamburg (annexes 14, 15) which stated that ‘the use of the sign “MOM”, even in combination with the sign “Brigitte”, constitutes genuine use within the meaning of § 26(1) German Trade Mark Law. In the view of the court chamber, the public would not believe this to be an inseparable overall designation with a uniform indication of origin, but would consider the use of the sign “MOM” as an independent trade mark existing in addition to the second trade mark “Brigitte” in the form of the signs in a series. Concretely, the public will consider the sign “Brigitte” as a designation of the product family and “MOM” as a sign for the concrete product. This understanding is evidenced by the fact that the defendant publishes or has published, apart from the well-known magazine “Brigitte”, other magazines whose titles, in addition to the sign “Brigitte”, consist of or consisted of a further sign, such as “Young Miss” or “Balance”. At least relevant parts of the targeted public will therefore believe that “Brigitte mom” is another magazine of the “Brigitte” series. Moreover, the graphic design, specifically the different coloring, typeface and size of the sign ‘Brigitte’ and ‘MOM’, help to strengthen the impression of two independent marks. It is therefore, not relevant whether and to what extent the defendant additionally used ‘MOM’ as a standalone sign’.

58. The Board endorses this reasoning.

59. The word ‘MOM’ also appears together with the word ‘magazin’, for example when used in the domain name: www.mom-magazin.de. The word ‘magazin’, meaning ‘magazine’ in English is a purely descriptive word and without any effect on the distinctive character of the sign.

Extent of use

60. Concerning the extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

61. The Board cannot agree with the statement of the Opposition Division where it considers the opponent to have failed to submit enough evidence regarding the characteristics of the products and services, or the frequency, regularity and extent of use of the mark. Analysing the submitted evidence, the Board is of the opinion that the goods and services on which the opposition is based and for which the proof of use was requested concern periodicals, advertising and publishing services, including on the Internet (in Classes 16, 35 and 41), which target professionals and the end consumer, in particular women, mothers and expectant mothers.

62. The affidavits and the judgment (annexes 5, 19 and 15) provide exhaustive information regarding the first release of the magazine ‘MOM’, its frequency and the volume of issue. Those statements have been confirmed by independent sources.

63. In particular, the release of the ‘MOM’ magazine was announced for the first time on 27/07/2011 in a publication ‘textintern’, which also shows that the first issue was scheduled on 7 September 2011, with the sales price of EUR 3.80 in normal format and EUR 2.80 in pocket format and a 180 000 print run (annexes 3, 6, 9, 10).

64. As regards the extent of the distribution, the print run (180 000 of the first issue) is confirmed by the ‘packing and loading lists’ concerning the delivery of the first issue of the magazine ‘MOM’ to the resellers (annexes 20 and 21). Those documents dated August 2011 originate from the distributor, the DPV Deutscher Pressvertrieb, and prove that its first issue was distributed in over 130 000 copies (130 265) in magazine format, while nearly 40 000 (39 926) were distributed in pocket format respectively, to resellers identified by name and address in the whole territory of Germany, and also, (although not strictly relevant for showing genuine use in Germany), in smaller quantities in Austria, Luxembourg and Switzerland, - of which the Board takes note. Notwithstanding the fact that the opponent’s goods are intended for daily use by the end-consumer at relatively low cost, the Board finds that the volume of distribution through different retailers in the whole territory of Germany gives sufficient support for establishing use that is not so low as to constitute merely token, minimal or notional use for the sole purpose of preserving the rights conferred by the mark.

65. Since its first issue in September 2011, the magazine has been regularly released twice a year, with slightly declining print runs of 165 000 copies for the first issue in 2012 (1/2012) and 153 000 for the second issue in 2012 (2/2012) respectively (annexes 5, 7, 19). The covers of the six subsequent issues of the magazine ‘MOM’ (annex 18), although outdated, confirm the extent of the use, which must be qualified as sufficient.

66. The Board considers use of the trade mark ‘MOM’ for goods in Class 16, in particular for ‘printed matter; magazines for women, mothers and expectant mothers’ based on the evidence presented as sufficiently proven (annexes 3, 4, 6, 13, 18). In turn, the use of the trade mark ‘MOM’ for ‘photographs, informational material (except apparatus); newspapers for women, mothers and expectant mothers’ has not been proven by any evidence.

67. In July 2011 the defendant circulated an email to approximately two-thousand different potential buyers of advertising space (annex 10), and received twenty-eight orders (annex 11), for which the opponent attached example invoices, amounting in total to EUR 73 100 (annex 22). That evidence confirms the use of the trade mark ‘MOM’ for professional services, namely ‘advertising’ in Class 35; however, there is no evidence found for ‘sales promotion’ services.

68. There is no evidence of use of the trade mark ‘MOM’ for services in Class 38. The purchase of the domain name ‘mom-magazin.de’ and the screenshots of the online version of the magazine ‘MOM’ (however undated) do not constitute enough evidence of use of the mark for ‘transmission of information, including webpages; supply and transfer of data and other content via the Internet’.

69. Part of the services in Class 41, namely: ‘Publication and release of magazines and other printed media products, including via the Internet or other on line networks’ and ‘publishing house services in a thematic context with women, mothers and expectant mothers’ relate to the publication of magazines and printed matter included in Class 16 in a ‘traditional’ way on paper and on the Internet. While the paper publication leaves no doubt for the Board (annexes 3, 4, 5), it also confirms the Internet presence of the magazine ‘MOM’. The purchase of the domain name ‘mom-magazin.de’ on 28 June 2011 (annex 12); the appearance of the website address www.brigitte-mom.de on the cover of the first issues of the magazine ‘MOM’ (on the top right side); the screenshots of the online version of the first issue of the magazine ‘MOM’, (although undated) confirm its Internet presence (annex 13). The remaining services in Class 41, namely ‘collection, storage and supply of media content, in particular also including on the Internet and in online networks; online services including Internet services, namely transmission, collection and delivery of news and information of all kinds’ have not been substantiated by any evidence.

70. The Board concludes that the trade mark was used as registered for the following goods and services in Classes 16, 35 and 41:

Class 16: Printed matter; magazines for women, mothers and expectant mothers;

Class 35: Advertising;

Class 41: Publication and release of magazines and other printed media products, including via the Internet or other on line networks, in a thematic context with women, mothers and expectant mothers; publishing house services in a thematic context with women, mothers and expectant mothers.

71. As the opponent has proven that the trade mark ‘MOM’ was genuinely used for the abovementioned goods and services in Germany during the relevant time period, the Board will now assess whether the conditions set out in Article 8(1)(b) EUTMR are fulfilled.

Likelihood of confusion - Article 8(1)(b) EUTMR

72. It follows from Article 8(1)(b) EUTMR that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

73. According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see 09/07/2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30 to 33 and the case-law cited).

The relevant public and the consumer’s level of attention

74. The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (see 01/07/2008, T 328/05, Quartz, EU:T:2008:238, § 23). The public’s attentiveness will vary depending on the kinds of goods and services involved (see 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26 and 30.06.2004, T 186/02, Dieselit, EU:T:2004:197, § 38).

75. In the present case, as the earlier right is a German trade mark, the relevant territory in respect of which the likelihood of confusion must be assessed is Germany.

76. As for the relevant public, the goods at issue are aimed at both the general public and professionals.

77. In particular, goods in Class 16 primarily target the public at large. With regard to these goods, which can be bought on a daily basis and are relatively inexpensive, the level of attention displayed by end-users when purchasing the concerned goods will be of an average degree at best.

78. The services in Classes 35 and 41 are directed at the professional public (see, for example, 21/03/2013, T‑353/11, eventer Event Management Systems, EU:T:2013:147, § 31-38; Board of Appeal decision of 4/7/2012 No 2299/2011, Valores de futuro § 17; confirmed in the judgment of 06/12/2013, T‑428/12, EU:T:2013:629, § 21). It can be expected that the level of attentiveness among the professionals will be heightened when purchasing these services, also given that they are normally bought on a less frequent basis and that they might have particular economic importance for the consumers buying them. In that regard, it must be noted that, according to settled case-law, the fact that a type of product is not purchased regularly by the average consumer suggests that that consumer’s level of attention will be fairly high (04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 31). Also, business professionals are likely to have specific knowledge of the services covered by the marks at issue and/or to display, in that regard, a higher level of attentiveness than the public at large (see, to that effect, 15/01/2013, T‑451/11, Gigabyte, EU:T:2013:13, § 38 and the case-law cited).

Comparison of the goods and services

79. It is settled case-law that in assessing the similarity of the goods and services, all the relevant factors relating to those goods and services should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (see 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 37).

80. Where the goods or services covered by the earlier mark include the goods or services covered by the trade mark application, these products are considered identical. This principle also applies where the goods or services covered by the trade mark application include the goods or services covered by the earlier mark (08/03/2013, T-498/10, David .05.er, EU:T:2013:117, § 63).

81. Goods and services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods lies with the same undertaking (01/03/2005, T‑169/03, Sissi Rossi, EU:T:2005:72, § 60).

82. The contested goods, subject of the present appeal are the following:

Class 16: Paper and cardboard (untreated, semi-finished); stationery; printed matter; tickets; photographs; catalogues, newspapers, periodicals, magazines, journals, books, bookmarks, manuals (paper), albums, brochures; bags (envelopes, 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; pens, rulers, writing instruments; business cards, postcards, notebooks, note pads; note books; cheque books; holders for cheque books; penholders, nibs, drawing pens; posters; calendars; letter trays; table linen and table napkins of paper; paper table covers; toilet paper; paper handkerchiefs; face towels of paper; posters; paper flags; stickers (items of stationery); postage stamps; boxes of cardboard or paper; envelopes (stationery), announcements (stationery); school supplies; note papers;

Class 35: Marketing assistance by providing socio-demographic profiles; business management and organisation consultancy; studies of consumer patterns; dissemination of publicity texts; on-line advertising on a computer network; advertising on mobile phones; direct mail advertising (tracts, prospectuses, printed matter, samples);

Class 41: Cultural services; arranging and conducting of colloquiums, lectures or congresses.

83. These goods and services must be compared with the goods and services on which the opposition is based, namely those for which genuine use has been proven, and the remaining goods and services for which the earlier trade mark is registered, but for which the proof of use was not requested, namely:

Class 9: Electrical and electronic equipment and devices; photographic cinematographic and optical equipment and instruments; data storage media of any kind with and without data; computers and computer software and hardware; multimedia computer programs; video games; devices for recording, transmission and reproduction of sound and/or images; video cassettes, discs and tapes; records, CD-ROMs, CD-Is, DVDs; magnetic and fiber optic data storage media; components of the aforementioned goods; videos and video films; sound and/or image storage equipment, devices and instruments; developed film and undeveloped film; entertainment devices that are connected to televisions;

Class 16: Printed matter; magazines for women, mothers and expectant mothers;

Class 35: Advertising;

Class 41: Publication and release of magazines and other printed media products, including via the Internet or other on line networks, in a thematic context with women, mothers and expectant mothers; publishing house services in a thematic context with women, mothers and expectant mothers;

Class 42: Services of a search engine provider; technical consulting on the production of multimedia products; services of a software developer, including programming and consulting; consultancy and production of hardware and software designs and configurations in the areas of electronics, computing and telecommunications; IT consulting, in particular in the Internet media agency sector.

Contested goods in Class 16

84. The contested ‘printed matter’ and ‘magazines’ are identical with the opponent’s ‘Printed matter; magazines for women, mothers and expectant mothers’ in Class 16. The contested: ‘Paper and cardboard (untreated, semi-finished); photographs; catalogues, newspapers, periodicals, journals, books, bookmarks, manuals (paper), albums, brochures; tickets; membership cards (not magnetic); business cards, postcards, notebooks, note pads; note books; posters; calendars; posters; stickers (items of stationery); postage stamps; note papers’, are similar to the opponent’s ‘magazines and printed matter’. These goods are usually sold using the same distribution channels, namely newsagents, or alternatively are placed in the same/adjacent sections of the stores. The average consumer can consider these goods to originate from the same source. Furthermore, some of these items, such as ‘tickets; membership cards (not magnetic); business cards, notebooks, note pads; note books; calendars; stickers (items of stationery); note papers’, frequently appear as gifts accompanying magazines, as so called ‘inserts’ and therefore the similarity is not excluded.

85. The remaining contested goods in Class 16:

‘Stationery; bags (envelopes, pouches) of paper or plastics for packaging; adhesive tape for stationery or household use; credit cards (not magnetic); printers' type; printing blocks; pens, rulers, writing instruments; cheque books; holders for cheque books; penholders, nibs, drawing pens; letter trays; table linen and table napkins of paper; paper table covers; toilet paper; paper handkerchiefs; face towels of paper; paper flags; boxes of cardboard or paper; envelopes (stationery), announcements (stationery); school supplies’.

consist of a variety of different kinds of ‘napkins, towels, stationery and related office equipment; flags and credit cards, writing instruments, envelopes’, etc. None of these goods coincide with the printed matter and magazines of the earlier right, their nature and purpose differs, as do their producers, consumers and distribution channels. They do not share a complementary nature, nor are they in competition. Thus, they are dissimilar.

Contested services in Class 35

86. The contested: ‘dissemination of publicity texts; on-line advertising on a computer network; advertising on mobile phones; direct mail advertising (tracts, prospectuses, printed matter, samples)’ are specific services within the concept of advertising and are therefore similar to the opponent’s services. The Board finds no similarity with the contested ‘marketing assistance by providing socio-demographic profiles; business management and organisation consultancy; studies of consumer pattern’, which consist of specific research services and therefore cannot be included in the concept of advertising.

Contested services in Class 41

87. With regard to the contested ‘cultural services; arranging and conducting of colloquiums, lectures or congresses’, neither the Opposition Division, nor the Board finds similarity with any of the goods and services of the earlier right. Their nature and purpose differs, as do their producers, consumers and distribution channels; furthermore, they are not complementary or in competition with one another.

Comparison of the marks

88. With regard to the comparison of the signs, the Opposition Division’s findings are endorsed by the Board for the same reasons as given in the contested decision, to which the Board refers to avoid unnecessary repetition (pages 9-11 of the contested decision). The opponent does not explicitly contest the Opposition Division’s findings with regard to the comparison of the signs. Nor are these findings challenged by the applicant. Consequently, the comparison of the signs does not represent a controversial issue in the present case. The Board notes that the likelihood of confusion found by the Opposition Division is equally applicable to the goods and services for which similarity was only found at appeal stage by the Board.

89. Therefore, it has to be concluded that the registration of the contested mark for part of goods and services included in Classes 16, and 35, will give rise to a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, with the earlier mark. It follows from the above that the opposition has to be allowed insofar as the identical and similar goods and services are concerned:

Class 16: paper and cardboard (untreated, semi-finished); printed matter; tickets; photographs; catalogues, newspapers, periodicals, magazines, journals, books, bookmarks, manuals (paper), albums, brochures; tickets; membership cards (not magnetic); business cards, postcards, notebooks, note pads; note books; posters; calendars; posters; stickers (items of stationery); postage stamps; note papers’.

Class 35: Dissemination of publicity texts; on-line advertising on a computer network; advertising on mobile phones; direct mail advertising (tracts, prospectuses, printed matter, samples).

The opposition is rejected for the remaining goods and services subject of the appeal.

Costs

90. Since both the appeal and the opposition succeeded only in part, pursuant to Article 85(2) EUTMR, both parties shall be ordered to bear their own fees and costs incurred in the appeal and opposition proceedings.

Order

On those grounds,

THE BOARD

hereby:

1. Partially annuls the contested decision to the extent that it rejected the opposition with respect to:

Class 16: Paper and cardboard (untreated, semi-finished); printed matter; tickets; photographs; catalogues, newspapers, periodicals, magazines, journals, books, bookmarks, manuals (paper), albums, brochures; tickets; membership cards (not magnetic); business cards, postcards, notebooks, note pads; note books; posters; calendars; posters; stickers (items of stationery); postage stamps; note papers’.

Class 35: Dissemination of publicity texts; on-line advertising on a computer network; advertising on mobile phones; direct mail advertising (tracts, prospectuses, printed matter, samples).

2. Rejects the contested EUTM application ‘DIGITAL MUM’, No 10 358 001, for the following goods and services:

Class 16: Office requisites (other than furniture); instructional and teaching material (except apparatus); paper and cardboard (untreated, semi-finished); printed matter; tickets; photographs; catalogues, newspapers, periodicals, magazines, journals, books, bookmarks, manuals (paper), albums, brochures; tickets; membership cards (not magnetic); business cards, postcards, notebooks, note pads; note books; posters; calendars; posters; stickers (items of stationery); postage stamps; note papers’;

Class 35: Dissemination of publicity texts; on-line advertising on a computer network; advertising on mobile phones; direct mail advertising (tracts, prospectuses, printed matter, samples);

Class 38: Communications by computer terminals or by fibre optic networks; providing internet chat rooms; telecommunications, in particular electronic online transmission of data, messages and information; transmission of information to mobile telephones; transmission of commercial data;

Class 41: Editing and publication of information on computer networks; entertainment, and educational services; games offered on-line on a computer network; electronic online publication of periodicals and books.

3. Dismisses the appeal for the remainder;

4. Orders each party to bear its own costs and fees in the opposition and appeal proceedings.

Signed G. Humphreys

Signed V. Melgar

Signed A. Pohlmann

Registrar: Signed H.Dijkema