OPPOSITION No B 2 313 107

Time Inc. Ltd, Blue Fin Building, 110 Southwark Street, London SE1 0SU, United Kingdom, represented by Sanderson & Co., D2 Knowledge Gateway, Nesfield Road, Colchester, Essex CO4 3ZL, United Kingdom (professional representative)

a g a i n s t

Lyncu Ltd, Yr Henfro, East Street, Newport, Pembrokeshire SA42 0SY, United Kingdom (applicant), represented by Douglas-Jones Mercer, 16 Axis Court, Mallard Way, Swansea Vale, Swansea SA7 0AJ, United Kingdom (professional representative).

On 23/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 313 107 is partially upheld, namely for the following contested services:

Class 35: Advertising by mail order; Bill-posting; Demonstration of goods; Direct mail advertising; Dissemination of advertising matter; Distribution of samples; Layout services for advertising purposes; Marketing; Marketing research; Marketing studies; Modelling for advertising or sales promotion; News clipping services; On-line advertising on a computer network; Organization of exhibitions for commercial or advertising purposes; Organization of fashion shows for promotional purposes; Organization of trade fairs for commercial or advertising purposes; Presentation of goods on communication media, for retail purposes; Production of advertising films; Public relations; Publication of publicity texts; Publicity; Publicity agencies; Publicity columns preparation; Publicity material rental; Rental of advertising space; Rental of advertising time on communication media; Sales promotion for others; Shop window dressing; Sponsorship search; Telemarketing services; Television advertising; Updating of advertising material; business management; Advisory services for business management; Business appraisals; Business auditing; Business efficiency expert services; Business information; Business inquiries; Business investigations; Business management and organization consultancy; Business management assistance; Business management consultancy; Business management of hotels; Business management of performing artists; Business management of sports people; Business organization consultancy; business research; Commercial or industrial management assistance; economic forecasting; Opinion polling

Class 38: Telecommunications; Cable television broadcasting; Cellular telephone communication; Communications by computer terminals; Communications by fiber [fibre] optic networks; Communications by telegrams; Communications by telephone; Computer aided transmission of messages and images; Electronic bulletin board services [telecommunications services]; Electronic mail; Facsimile transmission; Information about telecommunication; Message sending; Paging services [radio, telephone or other means of electronic communication]; Providing access to databases; Providing internet chatrooms; Providing online forums; Providing telecommunication channels for teleshopping services; Providing telecommunications connections to a global computer network; Providing user access to global computer networks; Radio broadcasting; Rental of access time to global computer networks; Rental of facsimile apparatus; Rental of message sending apparatus; Rental of modems; Rental of telecommunication equipment; Rental of telephones; Satellite transmission; Telecommunications routing and junction services; Teleconferencing services; Telegraph services; Telephone services; Television broadcasting; Telex services; Transmission of digital files; Transmission of greeting cards online; Transmission of telegrams; Videoconferencing services; Voice mail services; Wire service; Wireless broadcasting.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Academies [education]; Amusement parks; Amusements; Animal training; Arranging and conducting of colloquiums; Arranging and conducting of concerts; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops [training]; Arranging of beauty contests; Boarding schools; Booking of seats for shows; Bookmobile services; Cinema presentations; Circuses; Club services [entertainment or education]; Coaching [training]; Conducting fitness classes; Correspondence courses; Disc jockey services; Discotheque services; Dubbing; Education information; Educational examination; Electronic desktop publishing; Entertainer services; Entertainment information; Film production, other than advertising films; Gambling; Game services provided on-line from a computer network; Games equipment rental; Gymnastic instruction; Health club services [health and fitness training]; Holiday camp services [entertainment]; Lending libraries; Microfilming; Modelling for artists; Movie studios; Music composition services; Music-halls; News reporters services; Night clubs; Nursery schools; Operating lotteries; Orchestra services; Organization of balls; Organization of competitions [education or entertainment]; Organization of exhibitions for cultural or educational purposes; Organization of fashion shows for entertainment purposes; Organization of shows [impresario services]; Organization of sports competitions; Party planning [entertainment]; Personal trainer services [fitness training]; Photographic reporting; Photography; Physical education; Practical training [demonstration]; Presentation of live performances; Production of music; Production of radio and television programmes; Production of shows; Providing amusement arcade services; Providing casino facilities [gambling]; Providing golf facilities; Providing karaoke services; Providing museum facilities [presentation, exhibitions]; Providing on-line electronic publications, not downloadable; Providing recreation facilities; Providing sports facilities; Publication of books; Publication of electronic books and journals on-line; Publication of texts, other than publicity texts; Radio entertainment; Recording studio services; Recreation information; Religious education; Rental of audio equipment; Rental of camcorders; Rental of cine-films; Rental of lighting apparatus for theatrical sets or television studios; Rental of movie projectors and accessories; Rental of radio and television sets; Rental of show scenery; Rental of skin diving equipment; Rental of sound recordings; Rental of sports equipment, except vehicles; Rental of sports grounds; Rental of stadium facilities; Rental of stage scenery; Rental of tennis courts; Rental of video cassette recorders; Rental of videotapes; Scriptwriting services; Services of schools [education]; Sport camp services; Subtitling; Television entertainment; Theatre productions; Ticket agency services [entertainment]; Timing of sports events; Toy rental; Tuition; Videotape editing; Videotape film production; Videotaping; Vocational guidance [education or training advice]; Vocational retraining; Writing of texts, other than publicity texts; Zoological garden services; none of the aforementioned services in the field of industrial food processing.

2. European Union trade mark application No 12 164 018 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 164 018. The opposition is based on European Union trade mark registration No 8 974 156. The opponent invoked Article 8(1)(b) and 8(5) 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.

1. The services

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

Class 35: Advertising; advertising services provided over the internet; advertising of the goods or services of other vendors, enabling customers conveniently to view, compare and or purchase the goods or choose the services of those vendors; advertising services and retail services connected with the sale of musical instruments, domestic white goods, photographic equipment, heating, lighting, cooking, drying and refrigeration equipment, paper, cardboard, stationery and goods made from these materials, leather and imitations of leather, and goods made of these materials such as handbags, purses, wallets and rucksacks, building materials, furniture, mirrors, picture frames, household or kitchen utensils and containers, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags, yarns and threads, for textile use, textiles and textile goods, such as bed and table covers, clothing, footwear, headgear, lace and embroidery, ribbons and braid, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, games and playthings, building construction equipment and materials, telecommunication equipment, sports, camping and outdoor equipment, health and beauty products and equipment, computer and IT equipment, luggage and bags, jewellery and watches, arts and antiques, books and music, flowers and plants, automotive parts, foodstuffs.

Class 38: Telecommunication services; provision of access to electronic messaging systems; internet portal services; electronic bulletin board services; transmission of information by electronic means; operating chat rooms.

Class 41: Entertainment services; on-line electronic publications and newsletters.

Class 42: Operating of search engines.

The contested services are the following:

Class 35: Advertising; Business management; Business administration; Office functions; Accounting; Administrative processing of purchase orders; Advertising by mail order; Advisory services for business management; Arranging newspaper subscriptions for others; Arranging subscriptions to telecommunication services for others; Auctioneering; Bill-posting; Business appraisals; Business auditing; Business efficiency expert services; Business information; Business inquiries; Business investigations; Business management and organization consultancy; Business management assistance; Business management consultancy; Business management of hotels; Business management of performing artists; Business management of sports people; Business organization consultancy; Business research; Commercial administration of the licensing of the goods and services of others; Commercial information agencies; Commercial information and advice for consumers [consumer advice shop]; Commercial or industrial management assistance; Compilation of information into computer databases; Compilation of statistics; Computerized file management; Cost price analysis; Data search in computer files for others; Demonstration of goods; Direct mail advertising; Dissemination of advertising matter; Distribution of samples; Document reproduction; Drawing up of statements of accounts; Economic forecasting; Employment agencies; Import-export agencies; Invoicing; Layout services for advertising purposes; Marketing; Marketing research; Marketing studies; Modelling for advertising or sales promotion; News clipping services; Office machines and equipment rental; On-line advertising on a computer network; Opinion polling; Organization of exhibitions for commercial or advertising purposes; Organization of fashion shows for promotional purposes; Organization of trade fairs for commercial or advertising purposes; Outsourcing services [business assistance]; Payroll preparation; Personnel management consultancy; Personnel recruitment; Photocopying services; Presentation of goods on communication media, for retail purposes; Price comparison services; Procurement services for others [purchasing goods and services for other businesses]; Production of advertising films; Professional business consultancy; Psychological testing for the selection of personnel; Public relations; Publication of publicity texts; Publicity; Publicity agencies; Publicity columns preparation; Publicity material rental; Radio advertising; Relocation services for businesses; Rental of advertising space; Rental of advertising time on communication media; Rental of photocopying machines; Rental of vending machines; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Sales promotion for others; Secretarial services; Shop window dressing; Shorthand; Sponsorship search; Systemization of information into computer databases; Tax preparation; Telemarketing services; Telephone answering for unavailable subscribers; Television advertising; Transcription; Typing; Updating of advertising material; Word processing; Writing of publicity texts.

Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs; Accident insurance underwriting; Accommodation bureaux [apartments]; Actuarial services; Antique appraisal; Apartment house management; Art appraisal; Banking; Brokerage; Brokerage of carbon credits; Business liquidation services, financial; Charitable fund raising; Check [cheque] verification; Clearing, financial; Credit bureaux; Credit card services; Customs brokerage; Debit card services; Debt advisory services; Debt collection agencies; Deposits of valuables; Electronic funds transfer; Exchanging money; Factoring; Fiduciary; Financial analysis; Financial consultancy; Financial evaluation [insurance, banking, real estate]; Financial evaluation of wool; Financial information; Financial management; Financial sponsorship; Financial valuation of standing timber; Financing services; Fire insurance underwriting; Fiscal valuations; Fund investments; Guarantees; Health insurance underwriting; Hire-purchase financing; Home banking; Housing agents; Instalment loans; Insurance brokerage; Insurance consultancy; Insurance information; Insurance underwriting; Issuance of credit cards; Issue of tokens of value; Issuing of travellers' checks [cheques]; Jewelry appraisal; Leasing of farms; Leasing of real estate; Lending against security; Life insurance underwriting; Loans [financing]; Marine insurance underwriting; Mortgage banking; Mutual funds; Numismatic appraisal; Organization of collections; Pawnbrokerage; Provident fund services; Real estate agencies; Real estate appraisal; Real estate management; Rent collection; Rental of offices [real estate]; Renting of flats; Repair costs evaluation [financial appraisal]; Retirement payment services; Safe deposit services; Savings bank services; Securities brokerage; Stamp appraisal; Stock brokerage services; Stock exchange quotations.

Class 37: Building construction; Repair; Installation services; Air conditioning apparatus installation and repair; Airplane maintenance and repair; Anti-rust treatment for vehicles; Artificial snow-making services; Asphalting; Boiler cleaning and repair; Bricklaying; Building construction supervision; Building insulating; Building of fair stalls and shops; Building sealing; Burglar alarm installation and repair; Burner maintenance and repair; Cabinet making [repair]; Car wash; Carpentry services; Chimney sweeping; Cleaning of buildings [exterior surface]; Cleaning of buildings [interior]; Cleaning of clothing; Clock and watch repair; Clothing repair; Construction; Construction consultation; Construction information; Demolition of buildings; Diaper cleaning; Disinfecting; Drilling of deep oil or gas-wells; Drilling of wells; Dry cleaning; Electric appliance installation and repair; Factory construction; Film projector repair and maintenance; Fire alarm installation and repair; Freezing equipment installation and repair; Fur care, cleaning and repair; Furnace installation and repair; Furniture maintenance; Furniture restoration; Harbour construction; Heating equipment installation and repair; Installation, maintenance and repair of computer hardware; Installation of doors and windows; Interference suppression in electrical apparatus; Irrigation devices installation and repair; Kitchen equipment installation; Knife sharpening; Laundering; Leather care, cleaning and repair; Lift installation and repair; Linen ironing; Masonry; Mending clothing; Mining extraction; Motor vehicle maintenance and repair; Office machines and equipment installation, maintenance and repair; Painting, interior and exterior; Painting or repair of signs; Parasol repair; Photographic apparatus repair; Pier breakwater building; Pipeline construction and maintenance; Plastering; Plumbing; Pressing of clothing; Pumicing; Pump repair; Quarrying services; Rat exterminating; Re-tinning; Rebuilding engines that have been worn or partially destroyed; Rebuilding machines that have been worn or partially destroyed; Refilling of toner cartridges; Renovation of clothing; Rental of bulldozers; Rental of cleaning machines; Rental of construction equipment; Rental of cranes [construction equipment]; Rental of drainage pumps; Rental of excavators; Rental of road sweeping machines; Repair information; Repair of security locks; Restoration of musical instruments; Restoration of works of art; Retreading of tires; Riveting; Road paving; Roofing services; Rustproofing; Safe maintenance and repair; Sanding; Scaffolding; Shipbuilding; Shoe repair; Street cleaning; Strong-room maintenance and repair; Swimming-pool maintenance; Telephone installation and repair; Umbrella repair; Underwater construction; Underwater repair; Upholstering; Upholstery repair; Varnishing; Vehicle breakdown assistance [repair]; Vehicle cleaning; Vehicle greasing; Vehicle maintenance; Vehicle polishing; Vehicle service stations [refuelling and maintenance]; Vehicle wash; Vermin exterminating, other than for agriculture; Vulcanization of tires [repair]; Wallpapering; Warehouse construction and repair; Washing; Washing of linen; Window cleaning; none of the aforementioned services in the field of industrial food processing.

Class 38: Telecommunications; Cable television broadcasting; Cellular telephone communication; Communications by computer terminals; Communications by fiber [fibre] optic networks; Communications by telegrams; Communications by telephone; Computer aided transmission of messages and images; Electronic bulletin board services [telecommunications services]; Electronic mail; Facsimile transmission; Information about telecommunication; Message sending; Paging services [radio, telephone or other means of electronic communication]; Providing access to databases; Providing internet chatrooms; Providing online forums; Providing telecommunication channels for teleshopping services; Providing telecommunications connections to a global computer network; Providing user access to global computer networks; Radio broadcasting; Rental of access time to global computer networks; Rental of facsimile apparatus; Rental of message sending apparatus; Rental of modems; Rental of telecommunication equipment; Rental of telephones; Satellite transmission; Telecommunications routing and junction services; Teleconferencing services; Telegraph services; Telephone services; Television broadcasting; Telex services; Transmission of digital files; Transmission of greeting cards online; Transmission of telegrams; Videoconferencing services; Voice mail services; Wire service; Wireless broadcasting.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Academies [education]; Amusement parks; Amusements; Animal training; Arranging and conducting of colloquiums; Arranging and conducting of concerts; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops [training]; Arranging of beauty contests; Boarding schools; Booking of seats for shows; Bookmobile services; Calligraphy services; Cinema presentations; Circuses; Club services [entertainment or education]; Coaching [training]; Conducting fitness classes; Correspondence courses; Disc jockey services; Discotheque services; Dubbing; Education information; Educational examination; Electronic desktop publishing; Entertainer services; Entertainment information; Film production, other than advertising films; Gambling; Game services provided on-line from a computer network; Games equipment rental; Gymnastic instruction; Health club services [health and fitness training]; Holiday camp services [entertainment]; Language interpreter services; Layout services, other than for advertising purposes; Lending libraries; Microfilming; Modelling for artists; Movie studios; Music composition services; Music-halls; News reporters services; Night clubs; Nursery schools; Operating lotteries; Orchestra services; Organization of balls; Organization of competitions [education or entertainment]; Organization of exhibitions for cultural or educational purposes; Organization of fashion shows for entertainment purposes; Organization of shows [impresario services]; Organization of sports competitions; Party planning [entertainment]; Personal trainer services [fitness training]; Photographic reporting; Photography; Physical education; Practical training [demonstration]; Presentation of live performances; Production of music; Production of radio and television programmes; Production of shows; Providing amusement arcade services; Providing casino facilities [gambling]; Providing golf facilities; Providing karaoke services; Providing museum facilities [presentation, exhibitions]; Providing on-line electronic publications, not downloadable; Providing recreation facilities; Providing sports facilities; Publication of books; Publication of electronic books and journals on-line; Publication of texts, other than publicity texts; Radio entertainment; Recording studio services; Recreation information; Religious education; Rental of audio equipment; Rental of camcorders; Rental of cine-films; Rental of lighting apparatus for theatrical sets or television studios; Rental of movie projectors and accessories; Rental of radio and television sets; Rental of show scenery; Rental of skin diving equipment; Rental of sound recordings; Rental of sports equipment, except vehicles; Rental of sports grounds; Rental of stadium facilities; Rental of stage scenery; Rental of tennis courts; Rental of video cassette recorders; Rental of videotapes; Scriptwriting services; Services of schools [education]; Sign language interpretation; Sport camp services; Subtitling; Television entertainment; Theatre productions; Ticket agency services [entertainment]; Timing of sports events; Toy rental; Translation; Tuition; Videotape editing; Videotape film production; Videotaping; Vocational guidance [education or training advice]; Vocational retraining; Writing of texts, other than publicity texts; Zoological garden services; none of the aforementioned services in the field of industrial food processing.

Class 43: Services for providing food and drink; Temporary accommodation; Accommodation bureaux [hotels, boarding houses]; Bar services; Boarding for animals; Boarding house bookings; Boarding houses; Cafés; Cafeterias; Canteens; Day-nurseries [crèches]; Food and drink catering; Holiday camp services [lodging]; Hotel reservations; Hotels; Motels; Providing campground facilities; Rental of chairs, tables, table linen, glassware; Rental of cooking apparatus; Rental of drinking water dispensers; Rental of lighting apparatus other than for theatrical sets or television studios; Rental of meeting rooms; Rental of temporary accommodation; Rental of tents; Rental of transportable buildings; Restaurants; Retirement homes; Self-service restaurants; Snack-bars; Temporary accommodation reservations; Tourist homes.

Contested services in Class 35

The contested advertising is identically contained in both lists of services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.

The contested Advertising by mail order; Bill-posting; Demonstration of goods; Direct mail advertising; Dissemination of advertising matter; Distribution of samples; Layout services for advertising purposes; Marketing; Marketing research; Marketing studies; Modelling for advertising or sales promotion; News clipping services; On-line advertising on a computer network; Organization of exhibitions for commercial or advertising purposes; Organization of fashion shows for promotional purposes; Organization of trade fairs for commercial or advertising purposes; Presentation of goods on communication media, for retail purposes; Production of advertising films; Public relations; Publication of publicity texts; Publicity; Publicity agencies; Publicity columns preparation; Publicity material rental; Rental of advertising space; Rental of advertising time on communication media; Sales promotion for others; Shop window dressing; Sponsorship search; Telemarketing services; Television advertising; Updating of advertising material overlap or are included in the broad category of the opponent's advertising. The services are identical.

The contested business management services consist of the organisation and coordination of the activities of a business to achieve defined objectives. Therefore, management services also consist of the interlocking functions of creating corporate policy and organising, planning, controlling and directing an organisation’s resources to achieve the objectives of that policy. These services are lowly similar to the opponent’s advertising as they have the same purpose. Furthermore, they can coincide in producer and end user.

The same applies to the contested Advisory services for business management; Business appraisals; Business auditing; Business efficiency expert services; Business information; Business inquiries; Business investigations; Business management and organization consultancy; Business management assistance; Business management consultancy; Business management of hotels; Business management of performing artists; Business management of sports people; Business organization consultancy; business research; Commercial or industrial management assistance; economic forecasting; Opinion polling. These services are all business management services and are therefore lowly similar to the opponent’s advertising. The services have the same purpose. They can coincide in producer and end user.

On the other hand the contested Accounting; administrative processing of purchase orders; business administration; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; compilation of statistics; computerized file management; office functions; auctioneering; commercial administration of the licensing of the goods and services of others; commercial information agencies; Commercial information and advice for consumers [consumer advice shop]; compilation of information into computer databases; cost price analysis; data search in computer files for others; document reproduction; drawing up of statements of accounts; employment agencies; import-export agencies; invoicing; office machines and equipment rental; outsourcing services [business assistance]; payroll preparation; personnel management consultancy; personnel recruitment; photocopying services; price comparison services; procurement services for others [purchasing goods and services for other businesses]; professional business consultancy; psychological testing for the selection of personnel; relocation services for businesses; rental of photocopying machines; rental of vending machines; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; secretarial services; shorthand; systemization of information into computer databases; tax preparation; telephone answering for unavailable subscribers; transcription; typing; word processing; writing of publicity texts are dissimilar to all the opponent’s services. These services are mostly business administration services and office function services. Business administration services consist of organising people and resources efficiently to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation. Office functions include services aimed at performing the day-to-day operations that are required by a business to achieve its commercial purpose. They mainly consist of activities that assist in the running of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, as well as support services, such as the rental of office machines and equipment.

The services under comparison have different natures, purposes and methods of use. They are not complementary to or in competition with each other. Furthermore, they are provided by different undertakings and offered/provided through different distribution channels.

Contested services in Class 38

The contested telecommunications is identically contained in both lists of services (including synonyms).

The contested cable television broadcasting; Cellular telephone communication; Communications by computer terminals; Communications by fiber [fibre] optic networks; Communications by telegrams; Communications by telephone; Computer aided transmission of messages and images; Electronic bulletin board services [telecommunications services]; Electronic mail; Facsimile transmission; Information about telecommunication; Message sending; Paging services [radio, telephone or other means of electronic communication]; Providing access to databases; Providing internet chatrooms; Providing online forums; Providing telecommunication channels for teleshopping services; Providing telecommunications connections to a global computer network; Providing user access to global computer networks; Radio broadcasting; Rental of access time to global computer networks; Rental of facsimile apparatus; Rental of message sending apparatus; Rental of modems; Rental of telecommunication equipment; Rental of telephones; Satellite transmission; Telecommunications routing and junction services; Teleconferencing services; Telegraph services; Telephone services; Television broadcasting; Telex services; Transmission of digital files; Transmission of greeting cards online; Transmission of telegrams; Videoconferencing services; Voice mail services; Wire service; Wireless broadcasting are included in the broad category of the opponent’s telecommunication services. The services are therefore identical.

Contested services in Class 41

The contested entertainment; providing on-line electronic publications, not downloadable; none of the aforementioned services in the field of industrial food processing are identically contained in both lists of services (including synonyms).

The contested Amusement parks; Amusements; Arranging and conducting of concerts; Arranging of beauty contests; Booking of seats for shows; Cinema presentations; Circuses; Club services [entertainment or education]; Disc jockey services; Discotheque services; Dubbing; Entertainer services; Entertainment information; Film production, other than advertising films; Gambling; Game services provided on-line from a computer network; Games equipment rental; Holiday camp services [entertainment]; Microfilming; Modelling for artists; Movie studios; Music composition services; Music-halls; News reporters services; Night clubs; Operating lotteries; Orchestra services; Organization of balls; Organization of competitions [education or entertainment]; Organization of fashion shows for entertainment purposes; Organization of shows [impresario services]; Party planning [entertainment]; Photographic reporting; Photography; Presentation of live performances; Production of music; Production of radio and television programmes; Production of shows; Providing amusement arcade services; Providing casino facilities [gambling];; Providing karaoke services; Radio entertainment; Recording studio services; Rental of audio equipment; Rental of camcorders; Rental of cine-films; Rental of lighting apparatus for theatrical sets or television studios; Rental of movie projectors and accessories; Rental of radio and television sets; Rental of show scenery; Rental of sound recordings; Rental of stage scenery; Rental of video cassette recorders; Rental of videotapes; Scriptwriting services; Subtitling; Television entertainment; Theatre productions; Ticket agency services [entertainment]; Toy rental; Videotape editing; Videotape film production; Videotaping; Writing of texts, other than publicity texts; Zoological garden services; none of the aforementioned services in the field of industrial food processing are included in the broad category of the opponent’s entertainment services. The services are identical.

The contested publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; electronic desktop publishing; none of the aforementioned services in the field of industrial food processing are included in the broad term of on-line electronic publications. The services are identical.

The contested sporting and cultural activities; none of the aforementioned services in the field of industrial food processing are similar to the opponent’s entertainment services as they have the same purpose. They can coincide in end user and distribution channels.

The contested conducting fitness classes; health club services [health and fitness training]; personal trainer services [fitness training]; physical education; providing golf facilities; Organization of sports competitions; Organization of exhibitions for cultural or educational purposes; providing recreation facilities; Sport camp services; providing sports facilities; recreation information; rental of sports grounds; rental of stadium facilities; rental of tennis courts; rental of sports equipment, except vehicles; timing of sports events; rental of skin diving equipment; none of the aforementioned services in the field of industrial food processing are similar to the opponent's entertainment services as they have the same purpose. They can coincide in end user and distribution channels.

The contested lending libraries; bookmobile services; education; education information; educational examination; providing of training; Academies [education]; Animal training; Arranging and conducting of colloquiums; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops [training]; Coaching [training]; Correspondence courses; boarding schools; services of schools [education]; Gymnastic instruction; nursery schools; Tuition; Practical training [demonstration]; Providing museum facilities [presentation, exhibitions]; Religious education; Vocational guidance [education or training advice]; Vocational retraining; none of the aforementioned services in the field of industrial food processing are similar to a low degree to the opponent’s on-line electronic publications as they can coincide in provider, end user and distribution channels. Nowadays, the provision of the contested services relies on online media and publications, for example in cases of distance learning and training or electronic study materials. To this extent, the opponent’s services could be complementary to the contested services, as they may relate to education and training.

On the other hand, the contested calligraphy services; language interpreter services; layout services, other than for advertising purposes; sign language interpretation; translation; none of the aforementioned services in the field of industrial food processing are dissimilar to all the opponent's services. The services under comparison have different natures, purposes and methods of use. They are not complementary to or in competition with each other. Furthermore, they are provided by different undertakings and offered/provided through different distribution channels.

Contested services in Class 36, 37 and 43

The contested services in Class 36 are activities relating to finance and insurance. The contested services in Class 37 involve construction of buildings and the repair or installation of all types of goods. Finally, the contested services in Class 43 include services for providing food and drink and temporary accommodation. These services are obviously dissimilar to all the earlier services in classes 35, 38, 41 and 42. The services have different natures, purposes and methods of use. They are not complementary to or in competition with each other. Furthermore, they are provided by different undertakings and offered/provided through different distribution channels.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to above depending on the goods and services’ exact nature, purpose and price. Indeed, the higher the price of the item, the higher the degree of attention.

3. The signs

LYNKU
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a word mark composed of the meaningless word ‘LYNKU’ written in uppercase typeface. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The contested sign is a figurative mark composed of the word ‘lyncu’ and an expression ‘Discover local with lyncu.com’ placed below the mentioned word in much smaller typeface. The letters ‘lync’ are depicted in dark blue colours and the last letter ‘u’ is depicted in lighter blue colour. On the left side of the word ‘lyncu’ three birds resembling flying swallows are depicted. One of them appears in dark blue colour and with white belly and is bigger than the other two which appear in light blue colour.

The word ‘lyncu’ has no meaning in English. It has a normal degree of distinctiveness in relation to the relevant services. The expression ‘Discover local with lyncu.com’ will be understood by the relevant public (except for the mentioned word ‘lyncu’ which is meaningless) as a promotional slogan inviting the consumers to discover locally with the applicant’s company ‘lyncu’. For the abovementioned reasons, the wording ‘Discover local’ has a weak distinctiveness in relation to all the relevant services, as they consist of customary informative and promotional indications, to which the public will not pay much attention.

The earlier mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the four-letter sequence ‘lyn-u’.

The word ‘lynku’ constitutes the entirety of the earlier mark, and is included, albeit as ‘lyncu’ in the mark as an immediately identifiable component.

The marks differ in the fourth letter ‘k’ versus ‘c’ and in the additional wording ‘Discover local with lyncu.com’ which will be seen as a slogan.

The contested mark is composed of a figurative element of a purely decorative nature which, in principle has a less impact on the consumer than the verbal elements. 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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Considering also the secondary role of the element ‘Discover local’ in the contested mark, and the fact that the coinciding letter sequence constitutes the most distinctive elements 'lyncu' and 'lynku' of the contested mark and the entirety of the earlier sign, the signs are similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘lync/ku’, since in English the letter ‘C’ before the vowel ‘u’ is pronounced in the same way as the letter ‘K’. The pronunciation differs in the sound of the additional wording ‘Discover local’ which lacks any distinguishing capacity and in the words ‘with ‘lyncu.com’.

The pronunciation of the most distinctive element of the contested mark ‘lyncu’, and the earlier mark have the same lengths. The pronunciations of these words also have the same rhythm and intonation. Therefore, the signs are highly similar.

Conceptually, the public in the relevant territory will perceive the wording ‘Discover local with lyncu.com’ as a slogan inviting the consumers to discover local with the applicant’s company ‘lyncu’. This element is therefore considered to have less impact on the consumer than the remaining elements.

The figurative element will be perceived as a flock of three birds resembling flying swallows.

The earlier mark lacks any meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

In the present case, the opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 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.

5. 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 covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). That principle is crucial to the global assessment of likelihood of confusion, particularly as, in the present case, the goods are identical or similar (to a high or average degree), whilst the similarity between the signs (on visual and aural levels) is moderate.

In the present case the services are partially identical, partially similar to various degrees and partially dissimilar.

The signs are visually and aurally similar to a high degree. The similarity between the signs results from the element ‘lynku/lyncu’. Admittedly, the fourth letters ‘K’ and ‘C’ of the mentioned words are not the same, however they are pronounced identically.

Based on all the foregoing, it is considered that there are strong coincidences between the signs, which have a decisive impact, and that the small differences arising from the fourth letters, graphic depictions of the contested mark and the additional wording of the contested mark are not sufficient to counteract the coincidences. Given the identity and similarity between the services, it is likely that consumers will believe that the services come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-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 8 974 156. It follows that the contested trade mark must be rejected for all the contested services found to be identical or similar to those of the earlier trade mark

As regards the goods that are similar to a low degree, it is recalled that 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).

Therefore, the opposition is successful also in relation to the services that are similar to a low degree, as the similarity between the signs, in the present case, is sufficient to offset the somewhat remote similarity between those services.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these services cannot be successful.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 21/02/2014 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended and finally expired on 26/06/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lars HELBERT

Janja FELC

Adriana VAN ROODEN

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.