OPPOSITION No B 2 360 793

Bauer Radio Limited, 1 Lincoln Court Lincoln Road, Peterborough PE1 2RF, United Kingdom (opponent), represented by Boult Wade Tennant, Verulam Gardens 70 Gray's Inn Road, London WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

Simon Weinstein, Dietrichsteingasse 6/10, 1090 Vienna, Austria (applicant), represented by Zeiner & Zeiner Kooperation Selbstsändiger Rechtsanwälte, Schellinggasse 6, 1010 Vienna, Hans Georg Zeiner Schellinggasse 6, 1010 Vienna, Austria (professional representatives).

On 17/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 360 793 is partially upheld, namely for the following contested services:

Class 35: Retailing and wholesaling, including online, of goods and services in the music sector.

Class 41: Organising, coordination and provision of recreational events; booking of events; performance of music, song, (short) films, radio and television programmes and cultural programmes; ticket reservation and advance sale for events; compilation, gathering, management and providing of data in connection with music or for those interested in music, including via databases searchable online or via apps.

Class 45: Social services, namely arranging groups sharing interests and dating via social networks.

2. European Union trade mark application No 12 317 616 is rejected for all the above services. It may proceed for the remaining services, namely the following:

Class 35: Advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 317 616. After a restriction of the basis of the opposition filed by the opponent on 08/02/2016, the opposition is based on United Kingdom trade mark registration No 2 430 834 for the series of marks and United Kingdom trade mark registration No 3 022 390 for the word mark ‘KISS’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely United Kingdom trade mark registration No 2 430 834 and United Kingdom trade mark registration No 3 022 390.

According to Article 42(2) and (3) EUTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

In the present case the contested trade mark was published on 24/02/2014.

Earlier United Kingdom trade mark registration No 3 022 390 was registered on 28/02/2014. Therefore, as regards this earlier mark the request for proof of use is inadmissible.

As regards the other trade mark on which the opposition is based, namely United Kingdom trade mark registration No 2 430 834, the request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 24/02/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the United Kingdom from 24/02/2009 to 23/02/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, which after a limitation filed by the opponent are the following:

Class 35: Advertising, marketing and promotion services; provision of advertising, marketing and promotional services on-line from computer databases or the Internet (including web sites); provision of advertising for accessing via communication and computer networks, including the Internet and web sites; business information services; all provided from a computer database or the Internet; provision of commercial information, provision of data and statistical information, computerised data processing, computerised information storage and dissemination and retrieval services; on-line data processing services, compilation, storage, analysis and retrieval of information and data; compilation of advertisements, compilation of advertisements for use as web pages on the Internet; arranging, conducting and production of business exhibitions, shows and events; business support services.

Class 38: Telecommunication services; communication services; broadcasting services; television programming; radio broadcasting; wireless transmission and broadcasting of television programmes; broadcasting of cable television programmes; broadcasting of cable television; video subscription television and radio broadcasting and transmission; computer network communications; transmission and reception of data and information, namely SMS messaging services namely sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; message collection and transmission services; transmission, broadcasts, reception and processing of sound, data or images by computer, cable, electronic mail, television or satellite means; receiving and exchanging information, messages, text, sound, images and data; electronic mail services; satellite transmission; teletext services; pay per view television transmission services; video on demand transmissions; rental, leasing or hire of apparatus, installations or components for use in the provision of the aforementioned services; advisory and consultancy services relating to the aforementioned services; pod casting; digital downloads.

Class 41: Publishing services; publication of printed matter, periodical publications, printed publications, books and magazines; publication of printed matter; organisation of competition and awards; arranging and conducting competitions; arranging and conducting award ceremonies; presentation of awards for achievement; education and training services; arranging and conducting courses, conferences, exhibitions, events and seminars; organising, conducting, production of shows, events, displays, and parties; organisation of events for cultural, entertainment and sporting purposes; organisation of competitions; organisation of sporting competitions and sports events; television entertainment services; production and distribution of television programmes; radio entertainment services; production of radio programmes and radio programming production services.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 07/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 07/02/2016 to submit evidence of use of the earlier trade mark. On 08/02/2016, which was the next day after a weekend and is therefore considered to be within the time limit, the opponent submitted evidence of use.

On 16/07/2015, the opponent filed some evidence to substantiate its opposition and this will also be taken into account for the purposes of the proof of use of the earlier mark. This evidence was the following:

• Exhibit 1: Undated page in English displaying information about the history of “Kiss” as a radio station.

• Exhibit 2: Extract taken from Wikipedia containing information related to the opponent, defined as a “UK radio station”, the first air date of which is 01/09/1990. The audience is indicated as 2.2% as December 2012.

• Exhibit 3: Article taken from the website of the newspaper “The Guardian” dated 07/05/2009 in which audience and number of listeners related to Kiss radio are shown.

• Exhibit 4A-N/5A-F: Images taken from the webpage “Waybackmachine” and related to several screenshots of the opponents’ webpage in which its activity as radio station is displayed. The signs , , , , , are displayed.

• Exhibit 6: Reports produced by the organisation Rajar (Audio measurement), in which the results of a vast survey on UK radio listeners are contained. The reference years are comprised in the period between 2005 and 2015. This survey is mainly about statistical data relating to listener figures and market share for each radio station, both commercial and non-commercial, in the United Kingdom.

• Exhibit 7: Pages taken for the website www.rajar.co.uk containing a description of Rajar Ltd (Radio Joint Audience Research), a company set up in 1992 to align, design and operate a single audience measurement system for the United Kingdom radio industry.

• Exhibit 8: Same article submitted as Exhibit 3.

• Exhibit 9A: Advert from 2011 for a Christmas promotion run by the opponent.

• Exhibit 9B: Picture of a poster advert from 2012 as displayed on a wall.

• Exhibit 9C: Series of screen shots taken from an advert run in May 2012.

• Exhibit 9D: Screenshots from an advert dated October 2014 run on 4OD service (Channel 4’s catch up service), YouTube and television channels such as 4Music.

• Exhibit 10A: Arqiva Commercial Radio Awards 2013 – Breakfast Show of the Year.

• Exhibit 10B: Arqiva Commercial Radio Awards 2011 – Best Branded Contest.

• Exhibit 10C: Arqiva Commercial Radio Awards 2015 – Station Imaging Award & Programmer of the Year.

• Exhibit 10D: Urban Music Awards 2014 – Best Radio Station.

• Exhibit 10E: Sony Radio Academy Awards 2012 – Breakfast Show of the Year.

• Exhibit 11: Screenshot of the front page of the opponent’s YouTube channels containing the KISS logo.

• Exhibit 12: Schedule of the opponent’s trade mark registrations featuring the KISS element.

• Exhibit 13: United Kingdom trade mark registrations related to ‘KISS’ signs.

• Exhibit 14: Extract taken from several webpages containing information related to entertainment events held by KISS in the United Kingdom.

• Exhibit 15: Extract taken from Wikipedia related to the page of “Kisstory”, a UK radio station.

• Exhibit 16A-B: Samples of reference in the press regarding the opponent’s KISS radio station.

• Exhibit 17: Printout dated 02/01/2015 taken from the webpage www.campaignlive.co.uk in which information about a sponsorship deal between the opponent and 20^th Century Fox, a film company, is contained.

Additionally, on 08/02/2016, the opponent submitted the following documents:

• Exhibit 9A-B: Amended versions of the Exhibit 9 of the documents submitted on 16/07/2015.

• Exhibit 11A-B-C: Screenshots from the webpage ‘Youtube’ showing screen grabs, dated 2013, showing the use of the opponent’s sign.

• Exhibit 18: Printout of the registration certificate of United Kingdom trade mark registration No 2 430 834.

• Exhibit 19: Image showing use of the KISS (plus device) mark on a promotional tent at event to advertise the opponent’s services.

• Exhibit 20: Image showing marketing and advertising on the side of a taxi used to advertise the opponent’s services.

• Exhibit 21: Image of advertising and promotional event showing use of the opponent’s trade mark.

• Exhibit 22: Printout taken from the ‘OfCom’ websites, which show the licences granted to the opponent to operate a radio station.

The Court of Justice has held that there is „genuine use‟ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The applicant contests in details the proof filed by the opponent. In particular, it claims that the opponent was not able to demonstrate extent and nature of use of the mark, being a series of mark.

What is clear from the evidence, when taken as a whole, is that the figurative sign “KISS” displayed in the way it is registered as part of the series of mark has been used for a number of years specifically for radio broadcasting and radio entertainment services.

The Wikipedia article states that “Kiss” is a radio station broadcasting in the United Kingdom since 1990. Also, the information provided in the reports produced by the organisation Rajar shows clearly that “Kiss” enjoys a certain position in the market of radio stations in the United Kingdom.

Therefore, there is undisputed evidence that the mark has been used during the relevant time frame. Furthermore, it cannot be denied that the place of use is the United Kingdom. As for the extent of use, there are certainly no accounting documents as such, but the information from third parties points to a very high degree of trade mark awareness, so it is obvious that the mark was used publicly, and that the use was not merely token. Moreover, in relation to the nature of use, the sign has been used as a trade mark, that is to say, in relation to a service, and as registered, either as a word mark or with stylisations that complies with the provisions of Article 15 EUTMR because the alterations do not affect the distinctive character of the mark.

In relation to the services for which the use of the earlier mark has been proved, the Opposition Division must agree with the applicant when it states that the mark has not been used in connection with all the services for which it is registered on which the opposition is based, namely the services in Classes 35, 38 and 41.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In particular, the Opposition Division notes that the documents only concern the following services:

Class 38: Broadcasting services; radio broadcasting; radio broadcasting and transmission.

Class 41: Organising, conducting, production of shows, events, displays, and parties; organisation of events for cultural and entertainment purposes; radio entertainment services.

No mention of other services is made in any of the documents submitted by the opponent’s.

Therefore, the Opposition Division considers that the evidence shows genuine use of

the trade mark only for the following services:

Class 38: Broadcasting services; radio broadcasting; radio broadcasting and transmission.

Class 41: Organising, conducting, production of shows, events, displays, and parties; organisation of events for cultural and entertainment purposes; radio entertainment services.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition as regards United Kingdom trade mark registration No 2 430 834.

However, the opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate, for the moment, to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 3 022 390 and only in case it is necessary further examine the opposition insofar as it is based also on United Kingdom trade mark registration No 2 430 834.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR (UK 3 022 390)

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 goods and services

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

Class 9: Downloadable application software; downloadable mobile application software for mobile devices; downloadable mobile application software phones and tablets; computer software for use as an application programming interface (API).

Class 41: Providing use of software applications through a website; Entertainment services provided via a website; radio entertainment services provided via a website; competitions provided via a website; provision of information relating to entertainment, sporting and cultural activities for accessing by means of software applications; provision of music and music entertainment for accessing by means of software applications; provision of radio broadcasts for accessing by means of software applications; provision of radio entertainment services for accessing by means of software applications; provision of competitions for accessing by means of software applications.

The contested services are the following:

Class 35: Advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music; retailing and wholesaling, including online, of goods and services in the music sector.

Class 41: Organising, coordination and provision of recreational events; booking of events; performance of music, song, (short) films, radio and television programmes and cultural programmes; ticket reservation and advance sale for events; compilation, gathering, management and providing of data in connection with music or for those interested in music, including via databases searchable online or via apps.

Class 45: Social services, namely arranging groups sharing interests and dating via social networks.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the applicant list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

As regards the contested retailing and wholesaling, including online, of goods and services in the music sector account must be taken on the fact that retail services concerning the sale of particular goods and services are similar to a low degree to those particular goods and services. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods and services are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing and wholesaling, including online, of goods and services in the music sector are similar to a low degree to the opponent’s provision of music and music entertainment for accessing by means of software applications in Class 41 and to downloadable application software in Class 9, which also include application software for music.

The contested advertising, including online, in particular advertisements, for others are not related to the opponent’s goods and services in Classes 9 and 41. The contested 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 a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. Contrary to the arguments of the opponent the contested advertising, including online, in particular advertisements, for others have no relevant connection with the opponent’s goods and services in Classes 9 and 41. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is not similar to the goods or services being advertised and the contested services are dissimilar to the opponent’s goods and services.

The same conclusion can be delineated as regards the contested employment agencies, in particular in connection with music or for those interested in music. These services share no points of contact with the opponent’s goods and services in Classes 9 and 41. The mentioned services covered by the contested mark refer to employment agencies. They have very specific purposes which are not covered by the goods and services of the earlier mark. The services under comparison are provided by different companies. They are considered dissimilar.

Contested services in Class 41

The contested organising, coordination and provision of recreational events; booking of events; performance of music, song, (short) films, radio and television programmes and cultural programmes; ticket reservation and advance sale for events; compilation, gathering, management and providing of data in connection with music or for those interested in music, including via databases searchable online or via apps are either identical or similar to the services protected by the earlier mark in Class 41. Some of the services are included in others, such as the contested Performance of radio programmes in relation to the radio entertainment services provided via a website and, since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services. Some other services are similar because they are complementary and provided by the same undertakings and target the same end users, such as the contested booking of events and the opponent’s provision of information relating to entertainment, sporting and cultural activities for accessing by means of software applications. Moreover, many services are part and parcel of entertainment services provided via a website, as the services are offered complementarily by the same undertakings.

Contested services in Class 45

The contested social services, namely arranging groups sharing interests and dating via social networks share some points of contact with the opponent’s entertainment services provided via a website in Class 41. The purpose of these services is, to a certain extent, the same, since sharing interest and dating can be considered as a kind of entertainment. Moreover, nature, relevant public and distribution channels of these services are the same. For these reasons, these services are deemed to be similar.

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 goods and services found to be identical or similar to different degrees are mainly directed at the public at large. The degree of attention is expected to be average.

3. The signs

KISS	MUSIKISS
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

Both marks in dispute are word marks. The earlier mark is “KISS” while the contested mark is “MUSIKISS”. The word “KISS” will be recognized in both signs as designating the touch or caress with the lips. As regards the contested sign, it can be expected that the consumers will understand the first four letter ‘MUSI-‘ as a reference to the word ‘MUSIC’, also in view of the fact that the fifth letter ‘K’ does aurally coincide with the letter ‘C’.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The element ‘MUSI-’ of the contested sign will be associated with the word ‘MUSIC’. Bearing in mind that some of the relevant services are related or can be related to music, this element is non-distinctive for part of these services, namely for all the services found to be identical or similar to various degrees in Classes 35, 41 and, as concerns social services, namely arranging groups sharing interests via social networks, also Class 45. As concerns the remaining services in Class 45, namely social services, namely arranging groups sharing dating via social networks the contested sign has no elements that could be considered clearly more distinctive than other elements.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘KISS’, which are the whole of the earlier mark and the last four letters of the contested sign. However, they differ in the additional first four letters ‘MUSI’ of the contested sign, which for at least a part of the services are a non-distinctive element.

Therefore, the signs are highly similar in case the element ‘MUSI’ is to be deemed non-distinctive and similar to an average degree in relation to those services for which these four letters are distinctive.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛KISS’, present identically in both signs. The pronunciation differs in the sound of the letters ‘MUSI’ of the contested mark, which have no counterpart in the earlier sign.

Also in the case of the aural comparison, a distinction must be made depending on the perception of the four letters ‘MUSI’ of the contested sign. The signs are highly similar in case the element ‘MUSI’ is to be deemed non-distinctive and similar to an average degree in relation to those services for which these four letters are distinctive.

Conceptually, for those services in relation to which the part of the public will regard the element ‘MUSI’ as a non-distinctive element the signs are highly similar since they both contain the word ‘KISS’. The signs are similar to an average for the remaining services in Class 45, in relation to which the letters ‘MUSI’, which clearly recall the concept of ‘music’, is distinctive.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services covered by the trade marks in dispute have been found partly identical, partly similar to various degrees and partly dissimilar. The level of attention is expected to be average and the distinctiveness of the earlier mark must be seen as normal.

The earlier mark ‘KISS’ and the contested mark ‘MUSIKISS’ display a high or average degree of similarity depending on the goods and services. In fact, as regards the services that can be related to music, namely the services in Classes 35 and 41, the element ‘MUSI’ will be seen as non-distinctive. For what concerns the remaining services in Class 45, this element is distinctive. Moreover, account must be taken on the fact that in any case the earlier mark is fully included in the contested sign. The coinciding element ‘KISS’ plays an independent distinctive role in both signs, independently on the understating of the remaining elements of the contested sign.

Moreover, it is crucial not to obliterate the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s United Kingdom trade mark registration No 3 022 390.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested services, namely advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music in Class 35 are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

It is therefore necessary to consider the opposition also insofar as it is based on the remaining earlier mark, namely United Kingdom trade mark registration No 2 430 834, as concerns the remaining contested services.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR (UK 3 022 390)

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.

6. The services

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

Class 38: Broadcasting services; radio broadcasting; radio broadcasting and transmission.

Class 41: Organising, conducting, production of shows, events, displays, and parties; organisation of events for cultural and entertainment purposes; radio entertainment services.

The remaining contested services are the following:

Class 35: Advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

As already seen above in the previous sections of the present decision, the contested advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music have a particular, specific nature. They do not share any point of contact with opponent’s services now under comparison. Their purpose, origin and distribution channels are not the same. The fact that advertising can be done, for instance, via radios, does not constitute an element to find these services similar. Neither are these services complementary or in competition. Thus, they must be considered dissimilar.

7. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as regards the remaining services in Class 35, namely advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

8. Additional claims - Family of marks

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘KISS’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series.

As regards the remaining services of the contested mark, namely advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music in Class 35, as they have been found to be dissimilar to all of the goods and services covered by the two earlier marks on which the opposition is based and since no proof of use has been submitted as regards any further good or services, also in the case of the claim of family of marks one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled. Thus, this claim must be also rejected.

The Opposition Division will now examine the opposition insofar as is based on Article 8(5) EUTMR and in relation to both marks on which the opposition is based.

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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR as evidence filed in order to provide the proof of the use of United Kingdom trade mark registration No 2 430 834, although not the entirety of it is now to be taken into account, since the evidence submitted on 08/02/2016 was submitted after the expiration of the time limit, i.e. 16/07/2015, granted in order to substantiate the earlier rights.

For reasons of procedural economy the Opposition Division assumes, to the benefit of the opponent and without further analysis of the above evidence, that the earlier United Kingdom trade mark registration No 2 430 834 enjoys a reputation for all the services for which use has been shown since, necessarily, services for which use has not been proven cannot enjoy a reputation, that is to say the following:

Class 38: Broadcasting services; radio broadcasting; radio broadcasting and transmission.

Class 41: Organising, conducting, production of shows, events, displays, and parties; organisation of events for cultural and entertainment purposes; radio entertainment services.

Contextually, the Opposition Division will assume that the earlier United Kingdom trade mark registration No 3 022 390 enjoys a reputation for all the goods and services for which it is registered, namely the following:

Class 9: Downloadable application software; downloadable mobile application software for mobile devices; downloadable mobile application software phones and tablets; computer software for use as an application programming interface (API).

Class 41: Providing use of software applications through a website; Entertainment services provided via a website; radio entertainment services provided via a website; competitions provided via a website; provision of information relating to entertainment, sporting and cultural activities for accessing by means of software applications; provision of music and music entertainment for accessing by means of software applications; provision of radio broadcasts for accessing by means of software applications; provision of radio entertainment services for accessing by means of software applications; provision of competitions for accessing by means of software applications.

2. The ‘link’ between the signs

As seen above, the earlier marks are deemed to be reputed. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51 and 52.)

In the present case, there is no overlap between the relevant sections of the public for the trade marks in dispute. The remaining contested services, namely advertising, including online, in particular advertisements, for others; employment agencies, in particular in connection with music or for those interested in music in Class 35 are aimed at professionals while the goods and services for which a reputation has been assumed are aimed at the general public.

Given that the public for the contested trade mark is completely distinct from the relevant section of the public among which the earlier trade mark enjoys a reputation, no association will be made between the signs.

Also, account must be taken on the fact that the goods and services are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public.

In the present case, when analysing the nature of the goods and services, consideration must be given to the fact that the services in question – which broadly speaking as seen above are specialised services in Class 35 aimed at companies on one hand and goods and services aimed at the general public on the other – belong to completely distinct industries and constitute market sectors that have no material overlap and, in essence, have nothing whatsoever in common.

The goods and services under comparison do not have the same nature and are neither in competition with each other nor complementary. In addition, they are not commonly provided by the same undertakings and nor do they have the same distribution channels.

For the sake of completeness it must be also noted that the opponent in its observations has not even mentioned any possible motive related to the existence of relevant factors for the examination of a ‘link’, an in particular in relation to the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected also insofar as it is based on this ground.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Edith Elisabeth VAN DEN EEDE

Andrea VALISA

Vita VORONECKAITE

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.