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OPPOSITION DIVISION |
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OPPOSITION No B 2 477 126
Sesame Workshop, One Lincoln Plaza, New York 10023, United States of America (opponent), represented by Joshi Worldwide IP, Citypoint, 1 Ropemaker Street, London EC2Y 9HT, United Kingdom (professional representative)
a g a i n s t
Alibaba Group Holding Limited, Fourth Floor, One Capital Place, P.O. Box 847, George Town, Grand Cayman, Cayman Islands (applicant), represented by Dechert LLP, 160 Queen Victoria Street, London EC4V 4QQ, United Kingdom (professional representative).
On 31/01/2017, the Opposition Division takes the following
DECISION:
1. Opposition
No B
Class 9: Computer programs; software for processing electronic payments to and from others; authentication software; computer software supplied on the Internet; on-line electronic publications (downloadable from the Internet or a computer network or a computer database); downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet; Downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; Downloadable computer software for accessing, viewing, and controlling remote computers and computer networks; Downloadable electronic publications in the nature of articles, papers, and instructional materials in the fields of telecommunications, the Internet, training, business, sales, and marketing; computer software, computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal media players; mobile telephones; smart phones; digital cameras; computer workstations; servers; computer and telecommunications networking hardware; computer network adaptors, switches, routers and hubs; wireless and wired modems and communication cards and devices; laptop holders, computer bags; computer hardware and firmware; computer software (including software downloadable from the Internet); compact discs; digital music (downloadable from the Internet); telecommunications apparatus; mouse mats; mobile phone handsets; mobile phone accessories; downloadable games, pictures, motion pictures, movies and music; mobile radio and television broadcasting units; television broadcasting equipment; cameras; video cameras; headphones; ear pieces; speakers; Global Positioning System (GPS) apparatus and equipment; computer, electronic and video games programmes and software (including software downloadable from the Internet); liquid crystal displays for telecommunications and electronic equipment; set top box; remote control; data storage programs; spectacles and sunglasses; signboards; encoded or magnetic bank credit, debit, cash and identification cards; automatic teller machines, cash dispensers; all included in class 9 but excluding automation and control systems for opening and closing doors and windows and parts and fittings thereof, automation for moving doors and windows of all kinds, locks and apparatus for burglar-proof doors, automatic gates, powered systems for large heavy industrial doors, apparatus for controlling entrances, automatic control apparatus, geared motors and operating mechanisms; and not including any of the aforesaid goods specifically for use with or as parts and fittings for conveyors, elevators, lifts, platform lifts, moving pavements, moving platforms, moving walkways, moving steps, escalotors and related carriers.
Class 16: Newspapers; magazines; periodicals; journals; paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; books, pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels; carry bags of paper, cardboard and plastic; printed telephone, facsimile, electronic mail and web site directories; cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards; marketing and promotional materials; printed advertisements; user manuals; packaging materials; tissues; handkerchiefs made of paper; models and figurines made of paper; paper party bags; all included in class 16.
Class 35: Wholesale and retail services of photographic, life-saving and teaching apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, calculating machines, data processing equipment and computers, computer programs, computer software, computer peripherals, notebook computers, laptop computers, portable computers, handheld computers, personal digital assistants, personal medial players, mobiles telephones, smart phones, digital cameras, computer workstations, servers, computer and telecommunications networking hardware, computer network adaptors, switches, routers and hubs, wireless and wired modems and communication cards and devices, computer hardware and firmware, computer software (including software downloadable from the internet), compact discs, digital music (downloadable from the internet), telecommunication apparatus, mouse mats, downloadable games, pictures, motion pictures, movies and music, mobile radio and television broadcasting units, television broadcasting equipment, cameras, video cameras, headphones, ear pieces, speakers, Global Positioning System (GPS) apparatus and equipment, computer, electronic and video games programmes and software (including software downloadable from the internet), liquid crystal displays for telecommunications and electronic equipment, data storage programs, spectacles and sunglasses, automatic teller machines, cash dispensers, magazines, paper, cardboard, printed matter, stationery, adhesives for stationery purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), books, carry bags of paper, packaging materials, tissues, handkerchiefs made of paper, models and figurines made of paper, paper party bags, telephones, electronic and telecommunications goods, computer hardware and computer software, apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images and/or sound, computers, calculating machines, electrical, photographic, apparatus and instruments, spectacles and sun glasses, magazine, paper and cardboard products, typewriters and office requisites, packaging materials, playthings and sporting articles.
Class 38: Telecommunications services; providing web-based multimedia teleconferencing, videoconferencing, and online meeting services that allow simultaneous and asynchronous viewing, sharing, editing, and discussion of documents, data, and images by participants via a web browser; providing customers with online access to online reports regarding the performance, effectiveness, and status of web-based applications, teleconferences, videoconferences, and meetings; providing users with secure remote access via the Internet to private computer networks; providing online collaboration services allowing users to access applications, platforms, jointly-shared documents, data, task lists, and discussion forums; Internet broadcasting services, providing an online database of information regarding web-based broadcasting complaint submission platform; provision of telecommunication access and links to computer database and to the Internet; electronic communication services; interactive telecommunications services; telecommunication of information (web pages), computer programs and data; providing telecommunications connections to the Internet or data bases; provision of telecommunication access to world-wide web facilities and structures; communication by computer terminals; communication by fibre optic networks; computer aided transmission of messages and images; facsimile transmission; message sending; paging services; rental of modems; data communication services by electronic means; rental of telecommunication equipment; electronic message sending, receiving and forwarding services; collection, transmission and delivery of data by electronic means; collection, transmission and delivery of mail messages, still picture and/or moving picture information such as characters, messages, music and images, telegrams, information and data by mechanical, electronic, telephone, telex, cable, computer and satellite means; transmission, broadcast and reception of audio, video, still and moving images and data whether in compressed or uncompressed form and whether in real or delayed time; electronic messaging, conferencing and order-transmission services; video conferencing services; communication by electronic bulletin board that enables users to perform a real-time interactive talk between a computer terminal and an electronic bulletin board containing still picture and moving picture information and voice information such as characters; providing electronic bulletin boards and message boards for transmission of messages; provision of online discussion forums; television broadcasting services; broadcasting and transmission of radio and television programmes; music broadcasting; transmission of music, films, interactive programmes, videos, electronic computer games; transmission of information relating to on-line shopping and general retail services; video-on-demand transmission services; news agency services; providing access to computer database on the global computer network for searching and retrieving information, data, web sites and resources available on computer networks; providing user access to a computer database containing electronic publications, bulletin boards, database and information accessible via computer; operation of chat rooms (chat room services); multiple user access to global computer information networks for the transfer and dissemination of a wide range of information; providing access to a website on a global computer network by which third parties can offer goods and services, place and fulfill orders, enter into contracts and transact business; providing access to an interactive website on a global computer network for third parties to post information, respond to requests and place and fulfill orders for products, services and business opportunities; communication services, namely, text and numeric digital messaging services; transmission of information by data communications for assisting decision making; transmission of information through video communication systems; web conferencing services; electronic communication services for establishing virtual chatrooms via text messaging; providing electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business leads and opportunities; providing an online interactive bulletin board for the posting, promotion, sale and resale of items via a global computer network; providing electronic mail and electronic mail forwarding services; audio and video communication via computers and computer networks, and via a global communications network; providing computer access and leasing access time to online interactive bulletin boards and databases; providing access to a web site on a global computer network by which third parties can offer goods and services, place and fulfill orders, enter into contracts and transact business; providing access to electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business opportunities; providing access to electronic calendar, address book and electronic notebook, via local and global computer networks; providing distant video and/or telephone conferencing access and facilities; consultancy, information and advisory services relating to the aforesaid services; providing direct connection services between computer users for exchanging data; all included in class 38.
Class 41: Education; providing of training; education, training and instruction services relating to telecommunications, computers, computer programs, web site design, e-commerce, business management and advertising; provision of education, recreation, instruction, tuition and training both interactive and non-interactive; design of educational courses, examinations and qualifications; arranging, conducting and provision of conferences, conventions, congresses, seminars and training workshops; training services in relation to occupation health and safety, and environmental conservation; provision of cigar classes, wine tasting classes; providing education information about research materials and agency thereof; arranging, organizing, planning and management of seminars; animal training; direction in producing broadcasting programs; instructional services relating to operation of machines and equipment, including audiovisual equipment, which is used for the production of broadcasting programs; educational and training programs in the field of risk management; educational and training programs relating to certification; provision of information relating to education, training, entertainment, recreation, sporting, social and cultural activities; current affairs and breaking news provided by satellite television transmission, the Internet or by other electronic means; provision of information, data, graphics, sound, music, videos, animation and text for entertainment purpose; television, radio and film production; preparation and production of television programmes; preparation of entertainment, educational, documentary and news programmes for broadcasting; news reporters’ services; entertainment; entertainment provided via electronic and digital interactive media; electronic games services provided by means of the Internet; arranging, organizing, hosting and conducting concerts; arranging, organizing, hosting and conducting events and competitions for education or entertainment purposes; arranging, organizing, hosting and conducting game shows and quests; entertainment ticket agency services; information relating to entertainment or education, provided online from a computer database or the Internet; providing digital music (not downloadable) from the Internet; providing digital music (not downloadable) from MP3 (Moving Picture Experts Group-1 audio layer 3) Internet web sites; entertainment and education services relating to planning, production and distribution of sound, images, digital music, movies, live or recorded audio, visual or audiovisual material for broadcasting on terrestrial cable, satellite channels, the Internet, wireless or wire-link systems and other means of communications; music entertainment services; rental of sound recordings; game services; band performances; club entertainment, discotheque, fashion show and night club services; club services relating to entertainment, education and cultural services; providing audio and visual studios; providing facilities for movies, shows, plays, music or educational training; entertainment booking agencies; rental and leasing of motion pictures (cine-films); rental and leasing of musical instruments; rental and leasing of television programmes; rental and leasing of television sets; lending libraries; archive library services; subtitling services; providing video games, computer games, sound or images, or movies through telecommunication or computer networks; providing online computer games and contests; rental of pre-recorded video tapes; rental and leasing of game machines; lending of arcade game equipment; lending of pictures; photography; provision of news; lottery services; sporting and cultural activities; arranging, organizing, hosting and conducting singing competitions; information relating to sporting or cultural events, provision of club recreation, sporting and gymnasium facilities; organizing and conducting exhibitions, fashion shows, educational shows and cultural shows and performances; art exhibition and gallery services; art gallery services relating to fine arts leasing; providing sports facilities; publication of texts, books and journals (others than publicity texts); publication of diagrams, images and photographs; publication of newspapers, magazines and periodicals; providing on-line electronic publications (not downloadable); consultancy, information and advisory services relating to the aforesaid services; all included in class 41.
Class 42: Design and development of computer hardware and software; computer services in connection with transmitting information, data, documents, and images over the Internet; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services providing software in the fields of web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software applications; technical support services relating to computer software and applications provided online, by email and by telephone; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, engage in social networking, and exchange documents; computer technology advice provided to Internet users by means of a support hotline; computer service relating to creating indexes of information, sites and resources on computer networks; providing search engines; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players; design of mobile telephones and smart phones; design of digital cameras; computer services; computer programming; computer integration services; computer analysis services; computer programming in relation to the defence against virus; computer system software services; computer software design; computer system design; design and development of webpages; hosting webpages for others; hosting computer application software for searching and retrieving information from databases and computer networks; providing technical information at the specific request of end-users by means of telephone or global computer network; consultancy services in relation to computer software; computer services relating to customized searching of computer databases and websites; computer and electronic signal coding and decoding; conversion of physical data and documents into electronic media format; testing and evaluation services;; computer and network information services; provision of computer security risk management programs; computer security information, knowledge, and testing services; quality assurance services; computer services relating to certification of business transactions and preparation of reports therefor; access control to (security services for-) computers, electronic networks and databases; security of data transmission and of transactions via computer networks; consultancy in the field of data security; technological consultancy concerning securing telecommunications; computerized communication network security services; providing information in the fields of Internet, world wide web and computerized communication network security and the secure transmission of data and information; consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services, secure data and information transmission services; authentication services for computer security; on-line authentication of electronic signatures; consultancy, information and advisory services relating to the aforesaid services; electronic data storage; providing computer links to third party web sites to facilitate e-commerce and real world business transactions; rental of entertainment software; all included in class 42; but not including any of the aforesaid services provided specifically for or for use with conveyors, elevators, lifts, platform lifts, moving pavements, moving platforms, moving walkways, moving steps, escalotors and related carriers, or software thereof.
Class 45: Licensing of digital data, still images, moving images, audio and text; consultancy, information and advisory services relating to the aforesaid services; all included in class 45
2. European
Union trade mark application No
3. Each party bears its own costs.
REASONS:
The
opponent filed an opposition against all the goods and services of
European Union trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Audio recordings, compact discs, multimedia software recorded on CD-ROMs, audio cassettes, video recordings, DVDs, downloadable recordings of television programs and cinematographic film for exhibition all featuring educational themes and entertainment directed to children, parents and families; computer game programs, cartridges, cassettes, discs and software; downloadable computer software for use as screensavers and wallpaper; downloadable multimedia content, namely, music, graphics, audio and video recordings featuring educational themes and entertainment directed to children, parents and families, interactive games and downloadable ring tones all for use on computers, cell phones and other mobile devices; computers and computer peripherals, computer peripheral mouse pads; CD players; DVD players; cassette players; calculators; radios; radios incorporating clocks; walkie-talkies; decorative refrigerator magnets; scales; baby monitors; bicycle helmets; life jackets; photographic cameras; video cameras; sunglasses; eyeglasses; eyeglass cases.
Class 16: Printed materials, namely, books, magazines and newsletters all featuring educational themes and entertainment directed to children, parents and families; coloring books; comic books; teachers` guides featuring educational themes and entertainment directed to children, parents and families; address books; personal organizers; autograph books; baby books; birthday books; diaries; paper book covers; bookends; bookmarks; book plates; printed charts; paperweights; photo albums; photographs; stationery; writing paper; writing tablets; note cards; notebooks; ring binders; notepads; folders; document portfolios; stationery-type portfolios; postcards; greeting cards; pens; pencils; pen stands; pencil cases; pencil sharpeners; envelopes; erasers; ring binder dividers; rubber stamps; stamp pads; drawing rulers; staplers; adhesive tape for stationery purposes; adhesive tape dispensers; chalk; chalkboards, construction paper, crayons, markers, modeling clay, modeling clay sets comprised of clay and plastic sculpting tools sold as a unit, drawing sets comprised of paper and pencils; arts and crafts paint kits; printing sets consisting of decorative stamps and paper, stencils, easels, storage boxes; calendars; posters; stickers; paper door knob hangers; heat transfer paper; self adhesive decorative seals; vinyl non-sticker decals; vinyl coated memo board; crepe paper, paper gift tags; gift wrapping paper; paper cake decorations; paper centerpieces; paper doilies; paper bags; paper identification tags; paper napkins; paper party decorations; paper party invitations; paper place mats; paper tablecloths; shelf paper; facial tissue, toilet paper; paper baby bibs; disposable diapers; disposable training pants; bank checks; checkbook covers; address labels.
Class 25: Clothing for men, women, children and infants, namely, shirts, sweatshirts, tank tops, t-shirts, pants, loungewear, overalls, jeans, shorts, vests, socks, leggings, sleepwear, infants` sleepers, pajamas, nightgowns, robes, dresses, jumpers, skirts, sweaters, underwear, non-disposable cloth training pants, swimwear, playsuits, baby bibs not made of paper, cloth diapers, clothing mufflers, clothing scarves, clothing belts, clothing ties, suspenders, headwear, footwear, mittens, gloves, coats, ponchos, snowsuits, smocks, Halloween and Masquerade costumes; play costumes for use in role-playing games.
Class 28: Toys, games and playthings, namely, plush toys, dolls, doll clothing and costumes, doll accessories, yo-yos, hobby craft kits comprising painting sets, action skill games, board games, card games, manipulative puzzles, manipulative games, hand held units for playing electronic games, electronic learning toys, toy film cartridges and viewers, squeeze toys, bath toys, beach toys, multiple activity baby toys, infant toys, baby rattles, baby rattles incorporating teething rings, puppets, bean bags, pull toys, ride-on toys, toy vehicles, toy scooters, ice skates, roller skates, sports balls, beach balls, playground balls, toy foam balls, flying discs, jump ropes, kites, wind up toys, balloons, toy building blocks, construction toys, toy banks, toy shovels, toy pails, toys designed to be attached to car seats, cribs and high chairs, toy musical instruments, toy telephones, toy music boxes; toy building structures, toy action figures and accessories therefor, cases for play accessories, toy environments for use with action figures, play sets for action figures, role playing game sets, toy furniture, toy tools; play costume masks; play doll costumes, masquerade games, air mattresses for recreational use, inflatable swimming pools, swimming aids, namely, pool rings, arm floats for recreational use, and swim floats for recreational use; playground sand boxes; tennis racquets; snow sleds for recreational use; snow boards; party favors in the nature of small toys; party favors in the nature of crackers and noisemakers; Easter egg coloring kits; Christmas tree decorations, ornaments, and skirts; hobby needle craft kits comprised of needlework; paper party favors; paper party hats.
Class 41: Ongoing television program featuring educational themes and entertainment directed to children, parents and families; amusement parks; live theatrical performances; providing online information featuring educational themes and entertainment directed to children, parents and families; providing computer games and activities for children, parents, and families via the internet, all featuring educational themes and entertainment directed to children, parents and families; entertainment services, namely, providing pod casts and web casts, all featuring educational themes and entertainment directed to children, parents and families; providing on-line non-downloadable interactive video games and multimedia computer games.
The contested goods and services are the following:
Class 9: Computer programs; software for processing electronic payments to and from others; authentication software; computer software supplied on the Internet; on-line electronic publications (downloadable from the Internet or a computer network or a computer database); downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet; Downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; Downloadable computer software for accessing, viewing, and controlling remote computers and computer networks; Downloadable electronic publications in the nature of articles, papers, and instructional materials in the fields of telecommunications, the Internet, training, business, sales, and marketing; computer software, computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal media players; mobile telephones; smart phones; digital cameras; computer workstations; servers; computer and telecommunications networking hardware; computer network adaptors, switches, routers and hubs; wireless and wired modems and communication cards and devices; laptop holders, computer bags; computer hardware and firmware; computer software (including software downloadable from the Internet); compact discs; digital music (downloadable from the Internet); telecommunications apparatus; mouse mats; mobile phone handsets; mobile phone accessories; downloadable games, pictures, motion pictures, movies and music; mobile radio and television broadcasting units; television broadcasting equipment; cameras; video cameras; headphones; ear pieces; speakers; Global Positioning System (GPS) apparatus and equipment; computer, electronic and video games programmes and software (including software downloadable from the Internet); liquid crystal displays for telecommunications and electronic equipment; set top box; remote control; data storage programs; spectacles and sunglasses; signboards; encoded or magnetic bank credit, debit, cash and identification cards; automatic teller machines, cash dispensers; all included in class 9 but excluding automation and control systems for opening and closing doors and windows and parts and fittings thereof, automation for moving doors and windows of all kinds, locks and apparatus for burglar-proof doors, automatic gates, powered systems for large heavy industrial doors, apparatus for controlling entrances, automatic control apparatus, geared motors and operating mechanisms; and not including any of the aforesaid goods specifically for use with or as parts and fittings for conveyors, elevators, lifts, platform lifts, moving pavements, moving platforms, moving walkways, moving steps, escalotors and related carriers.
Class 16: Newspapers; magazines; periodicals; journals; paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; books, pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels; carry bags of paper, cardboard and plastic; printed telephone, facsimile, electronic mail and web site directories; cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards; marketing and promotional materials; printed advertisements; user manuals; packaging materials; tissues; handkerchiefs made of paper; models and figurines made of paper; paper party bags; all included in class 16.
Class 35: Advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; advertising agency services; advertising services provided for others; database management; compilation of information into computer databases; business consulting services; business consulting services in the field of web based events, conferences, training programs, learning programs, and seminars; business consulting services in the field of delivering web-based knowledge; business consulting services in the field of online collaboration and collaboration technologies; business consulting services in the fields of sales and marketing; business project management services; business project management services relating to development, set up, staging, production, recording, monitoring and follow-up for web based events, conferences, training programs, learning programs, and seminars; market research and business consulting services; business consultancy services relating to facilitating the transaction of business via local and global computer networks by locating and providing referrals for the delivery of a wide variety of business and consumer products and services; dissemination of business information of goods and services of others via local and global computer networks; business consultancy services relating to providing a web site on a global computer network by which third parties can offer and source goods and services, place, determine the status of and fulfill trade leads and orders, enter into contracts and transact business; providing computerized online ordering services; advertising of goods and services of others via local and global computer networks; international import and export agency services; rental of advertising space on communication media; online trading services relating to electronic auctioneering and providing online business evaluation relating thereto; online retail services of consumer products; providing a directory of third party web sites to facilitate business transactions; business consultancy services relating to operating an electronic marketplace for the buyers and sellers of goods and/or services on a global computer network; business assistance relating to facilitating business transaction via local and global computer networks; corporate management consultancy services; marketing and promotion services; publication of publicity materials; marketing of vacant premises; dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; rental of advertising space; computer data processing; sales, business, promotional information services; telephone answering (for unavailable subscribers); telephone answering (for others); auctioneering provided on the Internet; personnel management; provision of sales, business, advertising and promotional information through a global computer network and via the Internet; presentation of goods on communication media for retail purposes; wholesale and retail services of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, computer programs, software for processing electronic payments to and from others, authentication software, computer software supplied on the Internet, on-line electronic publications (downloadable from the Internet or a computer network or a computer database), downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet, downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser, downloadable computer software for accessing, viewing, and controlling remote computers and computer networks, downloadable electronic publications in the nature of articles, papers, and instructional materials in the fields of telecommunications, the internet, training, business, sales, and marketing, computer software, computer peripherals, notebook computers, laptop computers, portable computers, handheld computers, personal digital assistants, personal medial players, mobiles telephones, smart phones, digital cameras, computer workstations, servers, computer and telecommunications networking hardware, computer network adaptors, switches, routers and hubs, wireless and wired modems and communication cards and devices, laptop holders, computer bags, fire-extinguishing apparatus, computer hardware and firmware, computer software (including software downloadable from the internet), compact discs, digital music (downloadable from the internet), telecommunication apparatus, mouse mats, mobile phone handsets, mobile phone accessories, downloadable games, pictures, motion pictures, movies and music, alarm systems, security cameras, mobile radio and television broadcasting units, television broadcasting equipment, cameras, video cameras, headphones, ear pieces, speakers, Global Positioning System (GPS) apparatus and equipment, computer, electronic and video games programmes and software (including software downloadable from the internet), liquid crystal displays for telecommunications and electronic equipment, set top box, remote control, data storage programs, spectacles and sunglasses, signboards, encoded or magnetic bank credit, debit, cash and identification cards, automatic teller machines, cash dispensers, newspapers, magazines, periodicals, journals, paper, cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printers’ type, printing blocks, books, pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels, carry bags of paper, cardboard and plastic, printed telephone, facsimile, electronic mail and web site directories, cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards, marketing and promotional materials, printed advertisements, user manuals, packaging materials, tissues, handkerchiefs made of paper, models and figurines made of paper, paper party bags, telephones, mobile phone handsets, mobile phone accessories, electronic and telecommunications goods, computer hardware and computer software, batteries, battery chargers, apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images and/or sound, precious metals, jewellery, precious stones, printed matter, stationery and magnetic and non magnetically encoded cards, furniture, picture frames, household and kitchen utensils, glassware, porcelain and earthenware, textiles, clothing, footwear, headgear, laces and embroidery, buttons, ribbons, pins and needles, artificial flowers, carpets, rugs, games and electronic toys, chemicals used in industry, science, photography and agriculture, paints, varnishes and lacquers, personal hygiene products, soaps, perfumery, cosmetics, hair and body lotions, essential oils, cleaning and bleaching preparations, lubricants, fuels, candles, pharmaceutical, veterinary and sanitary preparations, ironmongery and small items of metal hardware, machines and machine tools, cutlery, razors and hand tools, computers, calculating machines, electrical, photographic, cinematographic and optical apparatus and instruments, spectacles and sun glasses, surgical and medical apparatus and instruments, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, firearms, fireworks, silverware, horological and chronometric instruments, musical instruments, magazine, cards, paper and cardboard products, picture, typewriters and office requisites, packaging materials, rubber and plastics for manufacture use, packing and insulating materials, leather and imitations of leather and goods made from these materials, handbags, purses, wallets, leather holders, bags, luggage, umbrellas, mirrors, ropes, string, nets, tents, yarns and threads for textile use, coat hangers, place mats, dressmaker’s articles, bed and table covers, playthings and sporting articles, foodstuffs and beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, flour, bread and cakes, condiments, fresh fruit and vegetables, beer, mineral water, fruit juices and other non-alcoholic drinks, alcoholic beverages, floral products, tobacco, smokers’ articles and matches; direct mail advertising; buying and selling agency services; selection of goods and procurement of goods for individuals and businesses; ordering services [for others]; department store retailing services; supermarket retailing services; secretarial services; provision of business statistical information; organisation of exhibitions for commercial or advertising purposes; business assistance services relating to compilation and rental of mailing lists; business investigation; business administration services for the processing of sales made on the Internet; business referral services and personnel placement; import-export clearance agencies (import-export agency services); agency for newspapers subscriptions; document reproduction; transcription (including stencil-paper writing); rental of office equipment; customer relationship management; business management services relating to electronic commerce; business management and administration services relating to sponsorship programmes; accounting services; charitable services, namely organizing and conducting volunteer programmes and community service projects; consultancy, information and advisory services relating to the aforesaid services; import-export clearance agencies (custom clearance); all included in class 35.
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; clearing and reconciling financial transactions via a global computer network; online banking services and financial services; credit card services, processing and transmission of bills and payments thereof, and providing insurance for financial transactions; funds transfer services; transmission of funds by electronic means for others; transfer of payments for others via the internet; financial services in the nature of billing and payment processing services; arrangement and management of leases and tenancy; renting and leasing of real estate; real estate appraisal; real estate valuation, real estate financing, real estate investment; real estate brokerage services; real estate agency services; housing agency services; actuarial services; real estate management and consultancy services; rent collection; rental of offices (real estate); rental of apartments and flats; provision of financial information via the Internet; safety deposit and issuing of travel vouchers services; capital investments; financial evaluation [insurance, banking, real estate]; financial and asset management services; insurance and financial services; financial services provided by telecommunication means; financial consultancy and advisory services; home banking; banking services provided on-line from a computer databases or the Internet; securities brokerage services, stock exchange quotation services; stocks and bonds brokerage, financial analysis; debit card services, charge card services and cheque guarantee services; banking, savings account and investment services; financial clearing services; credit verification via global computer information network; electronic credit risk management services; electronic purchase payment and electronic bill payment services; financial accounts debiting and crediting services; electronic banking services; issuance of stored value cards, charge cards and debit cards; telephone credit cards services; information services relating to finance and insurance, provided online from a computer database or Internet; agency for collection of gas and electricity fees; antique appraisal; art appraisal; jewelry appraisal; used car appraisal; tax information supply; charitable fund raising; organizing of charitable collections; charitable collections; rental of paper money and coin counting or processing machines; rental of cash dispensers or automated-teller machines; online payment services; rental and/or leasing of safes; consultancy, information and advisory services relating to the aforesaid services; all included in class 36.
Class 38: Telecommunications services; providing web-based multimedia teleconferencing, videoconferencing, and online meeting services that allow simultaneous and asynchronous viewing, sharing, editing, and discussion of documents, data, and images by participants via a web browser; providing customers with online access to online reports regarding the performance, effectiveness, and status of web-based applications, teleconferences, videoconferences, and meetings; providing users with secure remote access via the Internet to private computer networks; providing online collaboration services allowing users to access applications, platforms, jointly-shared documents, data, task lists, and discussion forums; Internet broadcasting services, providing an online database of information regarding web-based broadcasting complaint submission platform; provision of telecommunication access and links to computer database and to the Internet; electronic communication services; interactive telecommunications services; telecommunication of information (web pages), computer programs and data; providing telecommunications connections to the Internet or data bases; provision of telecommunication access to world-wide web facilities and structures; communication by computer terminals; communication by fibre optic networks; computer aided transmission of messages and images; facsimile transmission; message sending; paging services; rental of modems; data communication services by electronic means; rental of telecommunication equipment; electronic message sending, receiving and forwarding services; collection, transmission and delivery of data by electronic means; collection, transmission and delivery of mail messages, still picture and/or moving picture information such as characters, messages, music and images, telegrams, information and data by mechanical, electronic, telephone, telex, cable, computer and satellite means; transmission, broadcast and reception of audio, video, still and moving images and data whether in compressed or uncompressed form and whether in real or delayed time; electronic messaging, conferencing and order-transmission services; video conferencing services; communication by electronic bulletin board that enables users to perform a real-time interactive talk between a computer terminal and an electronic bulletin board containing still picture and moving picture information and voice information such as characters; providing electronic bulletin boards and message boards for transmission of messages; provision of online discussion forums; television broadcasting services; broadcasting and transmission of radio and television programmes; music broadcasting; transmission of music, films, interactive programmes, videos, electronic computer games; transmission of information relating to on-line shopping and general retail services; video-on-demand transmission services; news agency services; providing access to computer database on the global computer network for searching and retrieving information, data, web sites and resources available on computer networks; providing user access to a computer database containing electronic publications, bulletin boards, database and information accessible via computer; operation of chat rooms (chat room services); multiple user access to global computer information networks for the transfer and dissemination of a wide range of information; providing access to a website on a global computer network by which third parties can offer goods and services, place and fulfill orders, enter into contracts and transact business; providing access to an interactive website on a global computer network for third parties to post information, respond to requests and place and fulfill orders for products, services and business opportunities; communication services, namely, text and numeric digital messaging services; transmission of information by data communications for assisting decision making; transmission of information through video communication systems; web conferencing services; electronic communication services for establishing virtual chatrooms via text messaging; providing electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business leads and opportunities; providing an online interactive bulletin board for the posting, promotion, sale and resale of items via a global computer network; providing electronic mail and electronic mail forwarding services; audio and video communication via computers and computer networks, and via a global communications network; providing computer access and leasing access time to online interactive bulletin boards and databases; providing access to a web site on a global computer network by which third parties can offer goods and services, place and fulfill orders, enter into contracts and transact business; providing access to electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business opportunities; providing access to electronic calendar, address book and electronic notebook, via local and global computer networks; providing distant video and/or telephone conferencing access and facilities; consultancy, information and advisory services relating to the aforesaid services; providing direct connection services between computer users for exchanging data; all included in class 38.
Class 39: Transport; packaging and storage of goods; travel arrangement; storage of electronically-stored data or documents; transportation information; shipbrokerage; car transport; air transport; vehicle rental; water supplying; message delivery; reservation (travel-); transport by pipeline; delivery of goods by mail order; courier services [messages or merchandise]; transport services in the nature of transport management; car rental services; car parking services; yacht and/or boat trips; travel agency services; travel reservation and travel information services; travel ticket agency services; arranging travel and information therefor, all provided on-line from a computer database or the Internet; provision of information relating to travel and tourism through the Internet or through telecommunication networks; transport of goods and passengers; packaging; providing road and traffic information, chauffeur services; loading and unloading of cargo; freight brokerage; removal services; brokerage for rental, leasing, selling, purchasing and/or chartering of ships and/or boats; salvage and refloating of ships and/or boats; piloting; gas distribution and supply; electricity distribution and supply; heat distribution and supply; water distribution and supply; mooring facility services; rental of warehouses; providing flying areas; providing toll road; rental and/or leasing of wheelchairs; management of parking spaces; rental and/or leasing of airplanes; rental and/or leasing of containers; rental and/or leasing of bicycles; rental and/or leasing of cars; rental and/or leasing of ships and/or boats; rental and/or leasing of man-powered vehicles; rental and/or leasing of mechanical parking systems; rental and/or leasing of pallets; rental and/or leasing of packaging or wrapping machines; rental and/or leasing of refrigerator; collection of domestic waste and trash; collection of industrial waste and trash; consultancy, information and advisory services relating to the aforesaid services; all included in class 39.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; publication of texts, books and journals (others than publicity texts); publication of diagrams, images and photographs; publication of newspapers, magazines and periodicals; education, training and instruction services relating to telecommunications, computers, computer programs, web site design, e-commerce, business management and advertising; provision of education, recreation, instruction, tuition and training both interactive and non-interactive; design of educational courses, examinations and qualifications; entertainment provided via electronic and digital interactive media; electronic games services provided by means of the Internet; provision of information relating to education, training, entertainment, recreation, sporting, social and cultural activities; providing on-line electronic publications (not downloadable); arranging, organizing, hosting and conducting singing competitions; arranging, organizing, hosting and conducting concerts; arranging, organizing, hosting and conducting events and competitions for education or entertainment purposes; arranging, organizing, hosting and conducting game shows and quests; entertainment ticket agency services; information relating to entertainment or education, provided online from a computer database or the Internet; providing digital music (not downloadable) from the Internet; providing digital music (not downloadable) from MP3 (Moving Picture Experts Group-1 audio layer 3) Internet web sites; entertainment and education services relating to planning, production and distribution of sound, images, digital music, movies, live or recorded audio, visual or audiovisual material for broadcasting on terrestrial cable, satellite channels, the Internet, wireless or wire-link systems and other means of communications; music entertainment services; rental of sound recordings; preparation of entertainment, educational, documentary and news programmes for broadcasting; news reporters’ services; information relating to sporting or cultural events, current affairs and breaking news provided by satellite television transmission, the Internet or by other electronic means; television, radio and film production; preparation and production of television programmes; provision of information, data, graphics, sound, music, videos, animation and text for entertainment purpose; game services; provision of club recreation, sporting and gymnasium facilities; band performances; club entertainment, discotheque, fashion show and night club services; club services relating to entertainment, education and cultural services; arranging, conducting and provision of conferences, conventions, congresses, seminars and training workshops; organizing and conducting exhibitions, fashion shows, educational shows and cultural shows and performances; art exhibition and gallery services; art gallery services relating to fine arts leasing; training services in relation to occupation health and safety, and environmental conservation; provision of cigar classes, wine tasting classes; providing education information about research materials and agency thereof; arranging, organizing, planning and management of seminars; animal training; direction in producing broadcasting programs; instructional services relating to operation of machines and equipment, including audiovisual equipment, which is used for the production of broadcasting programs; providing audio and visual studios; providing sports facilities; providing facilities for movies, shows, plays, music or educational training; entertainment booking agencies; rental and leasing of motion pictures (cine-films); rental and leasing of musical instruments; rental and leasing of television programmes; rental and leasing of television sets; lending libraries; archive library services; subtitling services; sign language interpretation services; providing video games, computer games, sound or images, or movies through telecommunication or computer networks; providing online computer games and contests; rental of pre-recorded video tapes; rental and leasing of game machines; lending of arcade game equipment; lending of pictures; photography; translation; language interpretation; educational and training programs in the field of risk management; educational and training programs relating to certification; provision of news; lottery services; consultancy, information and advisory services relating to the aforesaid services; all included in class 41.
Class 42: Design and development of computer hardware and software; computer services in connection with transmitting information, data, documents, and images over the Internet; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services providing software in the fields of web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software applications; technical support services relating to computer software and applications provided online, by email and by telephone; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, engage in social networking, and exchange documents; computer technology advice provided to Internet users by means of a support hotline; computer service relating to creating indexes of information, sites and resources on computer networks; providing search engines; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players; design of mobile telephones and smart phones; design of digital cameras; computer services; computer programming; computer integration services; computer analysis services; computer programming in relation to the defence against virus; computer system software services; computer software design; computer system design; design and development of webpages; hosting webpages for others; hosting computer application software for searching and retrieving information from databases and computer networks; providing technical information at the specific request of end-users by means of telephone or global computer network; consultancy services in relation to computer software; computer services relating to customized searching of computer databases and websites; computer and electronic signal coding and decoding; conversion of physical data and documents into electronic media format; testing and evaluation services; architectural and design services; interior designs of buildings, offices and apartments; computer and network information services; provision of computer security risk management programs; computer security information, knowledge, and testing services; quality assurance services; computer services relating to certification of business transactions and preparation of reports therefor; access control to (security services for-) computers, electronic networks and databases; security of data transmission and of transactions via computer networks; consultancy in the field of data security; technological consultancy concerning securing telecommunications; computerized communication network security services; providing information in the fields of Internet, world wide web and computerized communication network security and the secure transmission of data and information; consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services, secure data and information transmission services; authentication services for computer security; on-line authentication of electronic signatures; consultancy, information and advisory services relating to the aforesaid services; electronic data storage; providing computer links to third party web sites to facilitate e-commerce and real world business transactions; rental of entertainment software; all included in class 42; but not including any of the aforesaid services provided specifically for or for use with conveyors, elevators, lifts, platform lifts, moving pavements, moving platforms, moving walkways, moving steps, escalotors and related carriers, or software thereof.
Class 45: Personal and social services rendered by others to meet the needs of individuals in relation to dispute resolutions and intellectual property rights protection; social work services; dating services; legal services; domain name registration services; guard and security services; personal safety services; rental of apparel; licensing of digital data, still images, moving images, audio and text; creation, compilation and maintenance of a register of domain names; baggage inspection for security purposes; personal background investigation services; security services for the protection of property and individuals; funeral services; consultancy, information and advisory services relating to the aforesaid services; all included in class 45.
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 ‘such as’ and ‘including’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce 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’s list of goods and 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 goods and services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 goods in Class 9
The opponent’s list of goods contains the following limitation: all included in class 9 but excluding automation and control systems for opening and closing doors and windows and parts and fittings thereof, automation for moving doors and windows of all kinds, locks and apparatus for burglar-proof doors, automatic gates, powered systems for large heavy industrial doors, apparatus for controlling entrances, automatic control apparatus, geared motors and operating mechanisms; and not including any of the aforesaid goods specifically for use with or as parts and fittings for conveyors, elevators, lifts, platform lifts, moving pavements, moving platforms, moving walkways, moving steps, escalators and related carriers. This limitation has no impact on the comparison, since the contested goods are not specifically related to any of these goods. Therefore, this limitation will not be mentioned in every individual comparison below.
The contested computer programs; computer software; computer software supplied on the Internet; computer software (including software downloadable from the Internet) include, as broader categories, or overlap with the opponent’s computer game programs and software. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
Computer peripherals; compact discs; video cameras; sunglasses are identically included in the lists of goods and services of both marks.
The contested notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal media players; computer workstations; servers; computer and telecommunications networking hardware; computer network adaptors, switches, routers and hubs; wireless and wired modems and communication cards and devices; computer hardware and firmware; headphones; ear pieces; speakers; liquid crystal displays for telecommunications and electronic equipment are included in the broad category of the opponent’s computers and computer peripherals. Therefore, they are identical.
The contested mobile telephones; smart phones are identical to the opponent’s cell phones, as they are synonymous.
The contested telecommunications apparatus includes, as a broader category, the opponent’s cell phones. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested digital cameras; cameras include, as a broader category, or overlap with the opponent’s video cameras. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested mouse mats are identical to the opponent’s computer peripheral mouse pads, as they are synonymous.
The contested digital music (downloadable from the Internet) is identical to the opponent’s downloadable multimedia content, namely, music, as they are synonymous.
The contested downloadable games, pictures, motion pictures, movies and music are identical to the opponent’s downloadable multimedia content, namely, music, graphics, audio and video recordings featuring educational themes and entertainment directed to children, parents and families; downloadable recordings of television programs and cinematographic film for exhibition all featuring educational themes and entertainment directed to children, parents and families, as they are synonymous or they overlap to some extent.
The contested mobile radio and television broadcasting units; television broadcasting equipment are included in the broad category of the opponent’s computers. Therefore, they are identical.
The contested Global Positioning System (GPS) apparatus and equipment are included in the broad category of the opponent’s other mobile devices. Therefore, they are identical.
The contested spectacles are identical to the opponent’s eyeglasses, as they are synonymous.
The contested automatic teller machines; cash dispensers are included in the broad category of the opponent’s calculators; therefore, they are identical.
The contested software for processing electronic payments to and from others; authentication software; downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet; downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; downloadable computer software for accessing, viewing, and controlling remote computers and computer networks; computer, electronic and video games programmes and software (including software downloadable from the Internet); data storage programs are similar to the opponent’s computer game programs and software. These goods have the same nature, are produced by the same undertakings, can target the same end users and are distributed through the same channels.
The contested on-line electronic publications (downloadable from the Internet or a computer network or a computer database); downloadable electronic publications in the nature of articles, papers, and instructional materials in the fields of telecommunications, the Internet, training, business, sales, and marketing are similar to the opponent’s downloadable multimedia content, namely, music, graphics, audio and video recordings featuring educational themes and entertainment directed to children, parents and families. These goods are complementary, are provided by the same undertakings through the same distribution channels and target the same end users.
The contested laptop holders, computer bags are similar to the opponent’s computer peripheral mouse pads, as they are all computer accessories that can be produced by the same undertakings, are distributed through the same channels and target the same end users.
The contested mobile phone handsets; mobile phone accessories are similar to the opponent’s cell phones. These goods are complementary, are often produced by the same undertakings, are distributed through the same channels and target the same end users.
The contested set top box; remote control are similar to the opponent’s CD players; DVD players; cassette players; radios. These goods are complementary, are produced by the same undertakings, are distributed through the same channels and target the same end users.
The contested encoded or magnetic bank credit, debit, cash cards are similar to a low degree to the opponent’s bank checks in Class 16. The contested encoded or magnetic identification cards are similar to a low degree to the opponent’s paper identification tags. These goods have the same purpose, can be in competition and target the same end users.
The contested signboards are similar to a low degree to the opponent’s life jackets. These goods may have the same purpose, namely ensuring safety. They can be sold through the same channels and they can have the same producers.
Contested goods in Class 16
The contested printed matter; magazines; books include, as broader categories, the opponent’s printed materials, namely, books, magazines all featuring educational themes and entertainment directed to children, parents and families. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
Stationery; adhesives for stationery purposes are identically included in the lists of goods and services of both marks.
The contested artists’ materials include, as a broader category, the opponent’s arts and crafts paint kits. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested paint brushes are included in the broad category of the opponent’s arts and crafts paint kits. Therefore, they are identical.
The contested instructional and teaching material (except apparatus) includes, as a broader category, the opponent’s teachers’ guides featuring educational themes and entertainment directed to children, parents and families. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested packaging materials include, as a broader category, the opponent’s gift wrapping paper. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested carry bags of paper are identical to the opponent’s paper bags.
The contested paper, cardboard are included in the broad category of the opponent’s stationery. Therefore, they are identical.
The contested paper party bags are included in the broad category of the opponent’s paper bags. Therefore, they are identical.
The contested tissues; handkerchiefs made of paper are identical to the opponent’s facial tissues, as they are synonymous.
The contested models and figurines made of paper are included in the broad category of the opponent’s paper party decorations. Therefore, they are identical.
The contested typewriters and office requisites (except furniture) include, as a broader category, the opponent’s adhesive tape dispensers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested adhesives for household purposes are similar to a high degree to the opponent’s stationery, as they have the same purpose and nature. They can have the same producers and end users.
The contested bookbinding material is similar to a high degree to the opponent’s adhesive tape for stationery purposes, as bookbinding material includes adhesives and glues for bookbinding. These goods have the same purpose and nature. They can have the same producers and distribution channels.
The contested newspapers; periodicals; journals; photographs; pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels; marketing and promotional materials; printed advertisements; user manuals; printed telephone, facsimile, electronic mail and web site directories are similar to the opponent’s printed materials, namely, books, magazines and newsletters all featuring educational themes and entertainment directed to children, parents and families. These goods have the same nature (they are all printed material), are produced by the same undertakings and can target the same end users.
The contested plastic materials for packaging (not included in other classes) are similar to the opponent’s gift wrapping paper. These goods have the same purpose, are distributed through the same channels and target the same end users.
The contested carry bags of cardboard and plastic are similar to the opponent’s paper bags. These goods have the same nature and purpose. Furthermore, they are produced by the same undertakings, are distributed through the same channels and target the same end users.
The contested cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards are similar to the opponent’s bank checks. These goods have the same purpose and method of use and are provided by the same undertakings.
The contested printers’ type; printing blocks are similar to the opponent’s printing sets consisting of decorative stamps and paper, stencils, easels, storage boxes. These goods have the same purpose. They can have the same producers, end users and distribution channels.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. 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 are offered for sale. Furthermore, they target the same public.
Therefore, the contested wholesale and retail services of photographic, life-saving and teaching apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, calculating machines, data processing equipment and computers, computer programs, computer software, computer peripherals, notebook computers, laptop computers, portable computers, handheld computers, personal digital assistants, personal medial players, mobiles telephones, smart phones, digital cameras, computer workstations, servers, computer and telecommunications networking hardware, computer network adaptors, switches, routers and hubs, wireless and wired modems and communication cards and devices, computer hardware and firmware, computer software (including software downloadable from the internet), compact discs, digital music (downloadable from the internet), telecommunication apparatus, mouse mats, downloadable games, pictures, motion pictures, movies and music, mobile radio and television broadcasting units, television broadcasting equipment, cameras, video cameras, headphones, ear pieces, speakers, Global Positioning System (GPS) apparatus and equipment, computer, electronic and video games programmes and software (including software downloadable from the internet), liquid crystal displays for telecommunications and electronic equipment, data storage programs, spectacles and sunglasses, automatic teller machines, cash dispensers, magazines, paper, cardboard, printed matter, stationery, adhesives for stationery purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), books, carry bags of paper, packaging materials, tissues, handkerchiefs made of paper, models and figurines made of paper, paper party bags, telephones, electronic and telecommunications goods, computer hardware and computer software, apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images and/or sound, computers, calculating machines, electrical, photographic, apparatus and instruments, spectacles and sun glasses, magazine, paper and cardboard products, typewriters and office requisites, packaging materials, playthings and sporting articles are similar to a low degree to the opponent’s goods in Classes 9, 16 and 28.
Retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary. Therefore, the contested online retail services of consumer products; department store retailing services; supermarket retailing services are dissimilar to all the opponent’s goods in Classes 9, 16, 25 and 28. These services are also dissimilar to the opponent’s services in Class 41, which are mainly entertainment services.
The contested wholesale and retail services of scientific, nautical, surveying, cinematographic, optical, weighing, measuring, signalling, checking (supervision), apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, mechanisms for coin-operated apparatus, cash registers, software for processing electronic payments to and from others, authentication software, computer software supplied on the Internet, on-line electronic publications (downloadable from the Internet or a computer network or a computer database), downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet, downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser, downloadable computer software for accessing, viewing, and controlling remote computers and computer networks, downloadable electronic publications in the nature of articles, papers, and instructional materials in the fields of telecommunications, the internet, training, business, sales, and marketing, laptop holders, computer bags, fire-extinguishing apparatus, mobile phone handsets, mobile phone accessories, alarm systems, security cameras, set top box, remote control, signboards, encoded or magnetic bank credit, debit, cash and identification cards, newspapers, periodicals, journals, bookbinding material, photographs, adhesives for household purposes, plastic materials for packaging, printers’ type, printing blocks, pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels, cardboard and plastic, printed telephone, facsimile, electronic mail and web site directories, cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards, marketing and promotional materials, printed advertisements, user manuals, mobile phone handsets, mobile phone accessories, batteries, battery chargers, precious metals, jewellery, precious stones, magnetic and non magnetically encoded cards, furniture, picture frames, household and kitchen utensils, glassware, porcelain and earthenware, textiles, clothing, footwear, headgear, laces and embroidery, buttons, ribbons, pins and needles, artificial flowers, carpets, rugs, games and electronic toys, chemicals used in industry, science, photography and agriculture, paints, varnishes and lacquers, personal hygiene products, soaps, perfumery, cosmetics, hair and body lotions, essential oils, cleaning and bleaching preparations, lubricants, fuels, candles, pharmaceutical, veterinary and sanitary preparations, ironmongery and small items of metal hardware, machines and machine tools, cutlery, razors and hand tools, cinematographic and optical apparatus and instruments, surgical and medical apparatus and instruments, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, firearms, fireworks, silverware, horological and chronometric instruments, musical instruments, cards, picture, rubber and plastics for manufacture use, packing and insulating materials, leather and imitations of leather and goods made from these materials, handbags, purses, wallets, leather holders, bags, luggage, umbrellas, mirrors, ropes, string, nets, tents, yarns and threads for textile use, coat hangers, place mats, dressmaker’s articles, bed and table covers, foodstuffs and beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, flour, bread and cakes, condiments, fresh fruit and vegetables, beer, mineral water, fruit juices and other non-alcoholic drinks, alcoholic beverages, floral products, tobacco, smokers’ articles and matches and the opponent’s goods in Classes 9, 16, 25 and 28 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.
The contested advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; trade fairs; opinion polling; data processing; provision of business information; advertising agency services; advertising services provided for others; database management; compilation of information into computer databases; business consulting services; business consulting services in the field of web based events, conferences, training programs, learning programs, and seminars; business consulting services in the field of delivering web-based knowledge; business consulting services in the field of online collaboration and collaboration technologies; business consulting services in the fields of sales and marketing; business project management services; business project management services relating to development, set up, staging, production, recording, monitoring and follow-up for web based events, conferences, training programs, learning programs, and seminars; market research and business consulting services; business consultancy services relating to facilitating the transaction of business via local and global computer networks by locating and providing referrals for the delivery of a wide variety of business and consumer products and services; dissemination of business information of goods and services of others via local and global computer networks; business consultancy services relating to providing a web site on a global computer network by which third parties can offer and source goods and services, place, determine the status of and fulfill trade leads and orders, enter into contracts and transact business; providing computerized online ordering services; advertising of goods and services of others via local and global computer networks; international import and export agency services; rental of advertising space on communication media; online trading services relating to electronic auctioneering and providing online business evaluation relating thereto; providing a directory of third party web sites to facilitate business transactions; business consultancy services relating to operating an electronic marketplace for the buyers and sellers of goods and/or services on a global computer network; business assistance relating to facilitating business transaction via local and global computer networks; corporate management consultancy services; marketing and promotion services; publication of publicity materials; marketing of vacant premises; dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; rental of advertising space; computer data processing; sales, business, promotional information services; telephone answering (for unavailable subscribers); telephone answering (for others); personnel management; provision of sales, business, advertising and promotional information through a global computer network and via the Internet; presentation of goods on communication media for retail purposes; direct mail advertising; buying and selling agency services; selection of goods and procurement of goods for individuals and businesses; ordering services [for others]; secretarial services; provision of business statistical information; organisation of exhibitions for commercial or advertising purposes; business assistance services relating to compilation and rental of mailing lists; business investigation; business administration services for the processing of sales made on the Internet; business referral services and personnel placement; import-export clearance agencies (import-export agency services); agency for newspapers subscriptions; document reproduction; transcription (including stencil-paper writing); rental of office equipment; customer relationship management; business management services relating to electronic commerce; business management and administration services relating to sponsorship programmes; accounting services; charitable services, namely organizing and conducting volunteer programmes and community service projects; consultancy, information and advisory services relating to the aforesaid services; import-export clearance agencies (custom clearance); all included in class 35 are mainly services of advertising, business management, business administration and office functions. The contested auctioneering; auctioneering provided on the Internet refer to a public sale in which goods or property are sold to the highest bidder. These services have nothing relevant in common with the opponent’s goods and services in Classes 9, 16, 25, 28 and 41. They have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users. Therefore, these goods and services are dissimilar.
Contested services in Class 36
The contested insurance; financial affairs; monetary affairs; real estate affairs; clearing and reconciling financial transactions via a global computer network; online banking services and financial services; credit card services, processing and transmission of bills and payments thereof, and providing insurance for financial transactions; funds transfer services; transmission of funds by electronic means for others; transfer of payments for others via the internet; financial services in the nature of billing and payment processing services; arrangement and management of leases and tenancy; renting and leasing of real estate; real estate appraisal; real estate valuation, real estate financing, real estate investment; real estate brokerage services; real estate agency services; housing agency services; actuarial services; real estate management and consultancy services; rent collection; rental of offices (real estate); rental of apartments and flats; provision of financial information via the Internet; safety deposit and issuing of travel vouchers services; capital investments; financial evaluation [insurance, banking, real estate]; financial and asset management services; insurance and financial services; financial services provided by telecommunication means; financial consultancy and advisory services; home banking; banking services provided on-line from a computer databases or the Internet; securities brokerage services, stock exchange quotation services; stocks and bonds brokerage, financial analysis; debit card services, charge card services and cheque guarantee services; banking, savings account and investment services; financial clearing services; credit verification via global computer information network; electronic credit risk management services; electronic purchase payment and electronic bill payment services; financial accounts debiting and crediting services; electronic banking services; issuance of stored value cards, charge cards and debit cards; telephone credit cards services; information services relating to finance and insurance, provided online from a computer database or Internet; agency for collection of gas and electricity fees; antique appraisal; art appraisal; jewelry appraisal; used car appraisal; tax information supply; charitable fund raising; organizing of charitable collections; charitable collections; rental of paper money and coin counting or processing machines; rental of cash dispensers or automated-teller machines; online payment services; rental and/or leasing of safes; consultancy, information and advisory services relating to the aforesaid services; all included in class 36 are mainly services rendered in financial and monetary affairs and services rendered in relation to insurance contracts of all kinds.
These services have nothing relevant in common with the opponent’s goods and services in Classes 9, 16, 25, 28 and 41. They have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users. Therefore, these goods and services are dissimilar.
Contested services in Class 38
The contested telecommunications services; providing web-based multimedia teleconferencing, videoconferencing, and online meeting services that allow simultaneous and asynchronous viewing, sharing, editing, and discussion of documents, data, and images by participants via a web browser; providing customers with online access to online reports regarding the performance, effectiveness, and status of web-based applications, teleconferences, videoconferences, and meetings; providing users with secure remote access via the Internet to private computer networks; providing online collaboration services allowing users to access applications, platforms, jointly-shared documents, data, task lists, and discussion forums; Internet broadcasting services, providing an online database of information regarding web-based broadcasting complaint submission platform; provision of telecommunication access and links to computer database and to the Internet; electronic communication services; interactive telecommunications services; telecommunication of information (web pages), computer programs and data; providing telecommunications connections to the Internet or data bases; provision of telecommunication access to world-wide web facilities and structures; communication by computer terminals; communication by fibre optic networks; computer aided transmission of messages and images; facsimile transmission; message sending; paging services; rental of modems; data communication services by electronic means; rental of telecommunication equipment; electronic message sending, receiving and forwarding services; collection, transmission and delivery of data by electronic means; collection, transmission and delivery of mail messages, still picture and/or moving picture information such as characters, messages, music and images, telegrams, information and data by mechanical, electronic, telephone, telex, cable, computer and satellite means; transmission, broadcast and reception of audio, video, still and moving images and data whether in compressed or uncompressed form and whether in real or delayed time; electronic messaging, conferencing and order-transmission services; video conferencing services; communication by electronic bulletin board that enables users to perform a real-time interactive talk between a computer terminal and an electronic bulletin board containing still picture and moving picture information and voice information such as characters; providing electronic bulletin boards and message boards for transmission of messages; provision of online discussion forums; television broadcasting services; broadcasting and transmission of radio and television programmes; music broadcasting; transmission of music, films, interactive programmes, videos, electronic computer games; transmission of information relating to on-line shopping and general retail services; video-on-demand transmission services; news agency services; providing access to computer database on the global computer network for searching and retrieving information, data, web sites and resources available on computer networks; providing user access to a computer database containing electronic publications, bulletin boards, database and information accessible via computer; operation of chat rooms (chat room services); multiple user access to global computer information networks for the transfer and dissemination of a wide range of information; providing access to a website on a global computer network by which third parties can offer goods and services, place and fulfill orders, enter into contracts and transact business; providing access to an interactive website on a global computer network for third parties to post information, respond to requests and place and fulfill orders for products, services and business opportunities; communication services, namely, text and numeric digital messaging services; transmission of information by data communications for assisting decision making; transmission of information through video communication systems; web conferencing services; electronic communication services for establishing virtual chatrooms via text messaging; providing electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business leads and opportunities; providing an online interactive bulletin board for the posting, promotion, sale and resale of items via a global computer network; providing electronic mail and electronic mail forwarding services; audio and video communication via computers and computer networks, and via a global communications network; providing computer access and leasing access time to online interactive bulletin boards and databases; providing access to a web site on a global computer network by which third parties can offer goods and services, place and fulfill orders, enter into contracts and transact business; providing access to electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business opportunities; providing access to electronic calendar, address book and electronic notebook, via local and global computer networks; providing distant video and/or telephone conferencing access and facilities; consultancy, information and advisory services relating to the aforesaid services; providing direct connection services between computer users for exchanging data; all included in class 38 are various telecommunication services.
These services are similar to the opponent’s computers and cell phones in Class 9. These goods have the same purpose. They can have the same end users and distribution channels. Furthermore, they are complementary.
Contested services in Class 39
The contested transport; packaging and storage of goods; travel arrangement; storage of electronically-stored data or documents; transportation information; shipbrokerage; car transport; air transport; vehicle rental; water supplying; message delivery; reservation (travel-); transport by pipeline; delivery of goods by mail order; courier services [messages or merchandise]; transport services in the nature of transport management; car rental services; car parking services; yacht and/or boat trips; travel agency services; travel reservation and travel information services; travel ticket agency services; arranging travel and information therefor, all provided on-line from a computer database or the Internet; provision of information relating to travel and tourism through the Internet or through telecommunication networks; transport of goods and passengers; packaging; providing road and traffic information, chauffeur services; loading and unloading of cargo; freight brokerage; removal services; brokerage for rental, leasing, selling, purchasing and/or chartering of ships and/or boats; salvage and refloating of ships and/or boats; piloting; gas distribution and supply; electricity distribution and supply; heat distribution and supply; water distribution and supply; mooring facility services; rental of warehouses; providing flying areas; providing toll road; rental and/or leasing of wheelchairs; management of parking spaces; rental and/or leasing of airplanes; rental and/or leasing of containers; rental and/or leasing of bicycles; rental and/or leasing of cars; rental and/or leasing of ships and/or boats; rental and/or leasing of man-powered vehicles; rental and/or leasing of mechanical parking systems; rental and/or leasing of pallets; rental and/or leasing of packaging or wrapping machines; rental and/or leasing of refrigerator; collection of domestic waste and trash; collection of industrial waste and trash; consultancy, information and advisory services relating to the aforesaid services; all included in class 39 are mainly services for the transport of people, animals or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or safekeeping.
These services have nothing relevant in common with the opponent’s goods and services in Classes 9, 16, 25, 28 and 41.
Transport services are not considered similar to goods in Classes 9, 16, 25 and 28. Transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar.
Packaging and storage services refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. Those services are not similar to the goods in Classes 9, 16, 25 and 28 which could be packed or stored. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels and are not in competition. Therefore, these services are dissimilar.
The contested services in Class 39 and the opponent’s goods and services in Classes 9, 16, 25, 28 and 41 have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users. Therefore, these goods and services are dissimilar.
Contested services in Class 41
The contested education; providing of training; education, training and instruction services relating to telecommunications, computers, computer programs, web site design, e-commerce, business management and advertising; provision of education, recreation, instruction, tuition and training both interactive and non-interactive; design of educational courses, examinations and qualifications; arranging, conducting and provision of conferences, conventions, congresses, seminars and training workshops; training services in relation to occupation health and safety, and environmental conservation; provision of cigar classes, wine tasting classes; providing education information about research materials and agency thereof; arranging, organizing, planning and management of seminars; animal training; direction in producing broadcasting programs; instructional services relating to operation of machines and equipment, including audiovisual equipment, which is used for the production of broadcasting programs; educational and training programs in the field of risk management; educational and training programs relating to certification; provision of information relating to education, training, entertainment, recreation, sporting, social and cultural activities; current affairs and breaking news provided by satellite television transmission, the Internet or by other electronic means; provision of information, data, graphics, sound, music, videos, animation and text for entertainment purpose; television, radio and film production; preparation and production of television programmes; preparation of entertainment, educational, documentary and news programmes for broadcasting; news reporters’ services; consultancy, information and advisory services relating to the aforesaid services; all included in class 41 are similar to the opponent’s providing online information featuring educational themes directed to children, parents and families, as they have the same purpose, can be provided by the same undertakings and can target the same relevant public. Some of the services are also distributed through the same channels and are complementary.
The contested entertainment; entertainment provided via electronic and digital interactive media; electronic games services provided by means of the Internet; arranging, organizing, hosting and conducting concerts; arranging, organizing, hosting and conducting events and competitions for education or entertainment purposes; arranging, organizing, hosting and conducting game shows and quests; entertainment ticket agency services; information relating to entertainment or education, provided online from a computer database or the Internet; providing digital music (not downloadable) from the Internet; providing digital music (not downloadable) from MP3 (Moving Picture Experts Group-1 audio layer 3) Internet web sites; entertainment and education services relating to planning, production and distribution of sound, images, digital music, movies, live or recorded audio, visual or audiovisual material for broadcasting on terrestrial cable, satellite channels, the Internet, wireless or wire-link systems and other means of communications; music entertainment services; rental of sound recordings; game services; band performances; club entertainment, discotheque, fashion show and night club services; club services relating to entertainment, education and cultural services; providing audio and visual studios; providing facilities for movies, shows, plays, music or educational training; entertainment booking agencies; rental and leasing of motion pictures (cine-films); rental and leasing of musical instruments; rental and leasing of television programmes; rental and leasing of television sets; lending libraries; archive library services; subtitling services; providing video games, computer games, sound or images, or movies through telecommunication or computer networks; providing online computer games and contests; rental of pre-recorded video tapes; rental and leasing of game machines; lending of arcade game equipment; lending of pictures; photography; provision of news; lottery services; sporting and cultural activities; arranging, organizing, hosting and conducting singing competitions; information relating to sporting or cultural events, provision of club recreation, sporting and gymnasium facilities; organizing and conducting exhibitions, fashion shows, educational shows and cultural shows and performances; art exhibition and gallery services; art gallery services relating to fine arts leasing; providing sports facilities; consultancy, information and advisory services relating to the aforesaid services; all included in class 41 are various services that fall within the broad categories of entertainment, sporting and cultural activities. These services are at least similar to the opponent’s entertainment services, namely, providing pod casts and web casts, all featuring educational themes and entertainment directed to children, parents and families, as they have the same purpose, can be provided by the same undertakings and can target the same relevant public. Some of the services are also distributed through the same channels and are complementary.
The contested publication of texts, books and journals (others than publicity texts); publication of diagrams, images and photographs; publication of newspapers, magazines and periodicals; providing on-line electronic publications (not downloadable); consultancy, information and advisory services relating to the aforesaid services; all included in class 41 are similar to a low degree to the opponent’s entertainment services, namely, providing pod casts and web casts, all featuring educational themes and entertainment directed to children, parents and families, as they can have the same distribution channels. Furthermore, they are complementary.
The contested translation; language interpretation; sign language interpretation services; consultancy, information and advisory services relating to the aforesaid services; all included in class 41 are dissimilar to all the opponent’s services in Class 41, as well as to all the opponent’s goods in Classes 9, 16, 25 and 28. These goods and services have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users.
Contested services in Class 42
The contested design and development of computer hardware and software; computer services in connection with transmitting information, data, documents, and images over the Internet; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services providing software in the fields of web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software applications; technical support services relating to computer software and applications provided online, by email and by telephone; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, engage in social networking, and exchange documents; computer technology advice provided to Internet users by means of a support hotline; computer service relating to creating indexes of information, sites and resources on computer networks; providing search engines; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players; design of mobile telephones and smart phones; design of digital cameras; computer services; computer programming; computer integration services; computer analysis services; computer programming in relation to the defence against virus; computer system software services; computer software design; computer system design; design and development of webpages; hosting webpages for others; hosting computer application software for searching and retrieving information from databases and computer networks; providing technical information at the specific request of end-users by means of telephone or global computer network; consultancy services in relation to computer software; computer services relating to customized searching of computer databases and websites; computer and electronic signal coding and decoding; conversion of physical data and documents into electronic media format; testing and evaluation services; computer and network information services; provision of computer security risk management programs; computer security information, knowledge, and testing services; quality assurance services; computer services relating to certification of business transactions and preparation of reports therefor; access control to (security services for-) computers, electronic networks and databases; security of data transmission and of transactions via computer networks; consultancy in the field of data security; technological consultancy concerning securing telecommunications; computerized communication network security services; providing information in the fields of Internet, world wide web and computerized communication network security and the secure transmission of data and information; consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services, secure data and information transmission services; authentication services for computer security; on-line authentication of electronic signatures; consultancy, information and advisory services relating to the aforesaid services; electronic data storage; providing computer links to third party web sites to facilitate e-commerce and real world business transactions; rental of entertainment software; all included in class 42; but not including any of the aforesaid services provided specifically for or for use with conveyors, elevators, lifts, platform lifts, moving pavements, moving platforms, moving walkways, moving steps, escalotors and related carriers, or software thereof are various IT services. These services are similar to the opponent’s computers in Class 9, as they can have the same producers and end users. Furthermore, they can have the same distribution channels and some of them are complementary.
The contested architectural and design services; interior designs of buildings, offices and apartments are dissimilar to all the opponent’s goods and services in Classes 9, 16, 25, 28 and 41. These goods and services have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users.
Contested services in Class 45
The contested licensing of digital data, still images, moving images, audio and text; consultancy, information and advisory services relating to the aforesaid services; all included in class 45 are similar to the opponent’s downloadable multimedia content, namely, music, graphics, audio and video recordings featuring educational themes and entertainment directed to children, parents and families in Class 9. These goods and services can be provided by the same undertakings through the same distribution channels and target the same end users. Moreover, they are complementary.
The contested personal and social services rendered by others to meet the needs of individuals in relation to dispute resolutions and intellectual property rights protection; social work services; dating services; legal services; domain name registration services; guard and security services; personal safety services; rental of apparel; creation, compilation and maintenance of a register of domain names; baggage inspection for security purposes; personal background investigation services; security services for the protection of property and individuals; funeral services; consultancy, information and advisory services relating to the aforesaid services; all included in class 45 are dissimilar to all the opponent’s goods and services in Classes 9, 16, 25, 28 and 41. These goods and services have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users.
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 and similar to varying degrees are directed at the public at large and at a professional public with specific knowledge or expertise. The degree of attention will vary from average to higher than average depending on the price, nature (i.e. if they are specialised) and conditions of purchase of the goods and services.
The signs
SESAME STREET
|
SESAME
|
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.
Both marks are word marks.
Neither of the marks has any element that could be considered more distinctive or dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the verbal element ‘SESAME’, which constitutes the first element in the earlier mark and the entire contested sign. However, they differ in the verbal element ‘STREET’ of the earlier mark.
The first word of the earlier mark is identical to the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘SESAME’, present identically in both signs. The pronunciation differs in the sound of the word ‘STREET’ in the earlier mark, which has no counterpart in the contested sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the public in the relevant territory will perceive the word ‘SESAME’, included in both marks, as referring to a herbaceous plant or the edible seeds of this plant; the verbal element ‘STREET’, contained in the earlier mark, will be understood as a road in a built-up area. The verbal elements ‘SESAME STREET’ of the earlier mark will be perceived as a whole as referring to a street named after the plant sesame or the edible seeds of this plant. Since the verbal element ‘SESAME’ is contained in both signs and refers to the same meaning in both, the signs are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
The goods and services are partly identical, partly similar to a high degree, partly similar, partly similar to a low degree and partly dissimilar.
The signs are visually, aurally and conceptually similar to an average degree, as they coincide in the word ‘SESAME’, which constitutes the entire contested sign and the first word of the earlier mark.
Taking into account that the contested sign is fully incorporated as an independent element at the beginning of the earlier mark, it is considered that, although average consumers may be capable of detecting certain visual, aural and conceptual differences between the two conflicting signs, the likelihood that they might associate the signs with each other is very real.
From the wording of Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, it is conceivable that the relevant consumer will perceive the mark applied for as a variation of the earlier mark configured in a different way according to the type of goods or services that it designates. It is, therefore, conceivable that the target public may regard the goods and services designated by the trade mark applied for and the earlier mark as belonging to two ranges of goods or services coming, nonetheless, from the same undertaking.
The existence of that likelihood of confusion is reinforced by the fact that the relevant consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. While the relevant public may have a higher than average degree of attention when acquiring some of the contested goods and services, this does not mean that the purchaser always has the opportunity to compare marks side by side, so there will always be some degree of imperfect recollection of the absent mark at the time of acquisition.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to varying degrees to those of the earlier trade mark, with the low degree of similarity between some of the goods and services being counterbalanced by the high degree of similarity between the signs.
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) EUTMR, the opposition based on this article and directed at these services cannot be successful.
Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
The Opposition Division will now further examine the opposition with respect to the dissimilar services and Article 8(5) EUTMR.
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.
The signs
The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.
Reputation of the earlier trade mark
According to the opponent, the earlier trade mark has a reputation in the European Union.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
In the present case the contested trade mark was filed on 14/01/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:
Class 9: Audio recordings, compact discs, multimedia software recorded on CD-ROMs, audio cassettes, video recordings, DVDs, downloadable recordings of television programs and cinematographic film for exhibition all featuring educational themes and entertainment directed to children, parents and families; computer game programs, cartridges, cassettes, discs and software; downloadable computer software for use as screensavers and wallpaper; downloadable multimedia content, namely, music, graphics, audio and video recordings featuring educational themes and entertainment directed to children, parents and families, interactive games and downloadable ring tones all for use on computers, cell phones and other mobile devices; computers and computer peripherals, computer peripheral mouse pads; CD players; DVD players; cassette players; calculators; radios; radios incorporating clocks; walkie-talkies; decorative refrigerator magnets; scales; baby monitors; bicycle helmets; life jackets; photographic cameras; video cameras; sunglasses; eyeglasses; eyeglass cases.
Class 16: Printed materials, namely, books, magazines and newsletters all featuring educational themes and entertainment directed to children, parents and families; coloring books; comic books; teachers` guides featuring educational themes and entertainment directed to children, parents and families; address books; personal organizers; autograph books; baby books; birthday books; diaries; paper book covers; bookends; bookmarks; book plates; printed charts; paperweights; photo albums; photographs; stationery; writing paper; writing tablets; note cards; notebooks; ring binders; notepads; folders; document portfolios; stationery-type portfolios; postcards; greeting cards; pens; pencils; pen stands; pencil cases; pencil sharpeners; envelopes; erasers; ring binder dividers; rubber stamps; stamp pads; drawing rulers; staplers; adhesive tape for stationery purposes; adhesive tape dispensers; chalk; chalkboards, construction paper, crayons, markers, modeling clay, modeling clay sets comprised of clay and plastic sculpting tools sold as a unit, drawing sets comprised of paper and pencils; arts and crafts paint kits; printing sets consisting of decorative stamps and paper, stencils, easels, storage boxes; calendars; posters; stickers; paper door knob hangers; heat transfer paper; self adhesive decorative seals; vinyl non-sticker decals; vinyl coated memo board; crepe paper, paper gift tags; gift wrapping paper; paper cake decorations; paper centerpieces; paper doilies; paper bags; paper identification tags; paper napkins; paper party decorations; paper party invitations; paper place mats; paper tablecloths; shelf paper; facial tissue, toilet paper; paper baby bibs; disposable diapers; disposable training pants; bank checks; checkbook covers; address labels.
Class 25: Clothing for men, women, children and infants, namely, shirts, sweatshirts, tank tops, t-shirts, pants, loungewear, overalls, jeans, shorts, vests, socks, leggings, sleepwear, infants` sleepers, pajamas, nightgowns, robes, dresses, jumpers, skirts, sweaters, underwear, non-disposable cloth training pants, swimwear, playsuits, baby bibs not made of paper, cloth diapers, clothing mufflers, clothing scarves, clothing belts, clothing ties, suspenders, headwear, footwear, mittens, gloves, coats, ponchos, snowsuits, smocks, Halloween and Masquerade costumes; play costumes for use in role-playing games.
Class 28: Toys, games and playthings, namely, plush toys, dolls, doll clothing and costumes, doll accessories, yo-yos, hobby craft kits comprising painting sets, action skill games, board games, card games, manipulative puzzles, manipulative games, hand held units for playing electronic games, electronic learning toys, toy film cartridges and viewers, squeeze toys, bath toys, beach toys, multiple activity baby toys, infant toys, baby rattles, baby rattles incorporating teething rings, puppets, bean bags, pull toys, ride-on toys, toy vehicles, toy scooters, ice skates, roller skates, sports balls, beach balls, playground balls, toy foam balls, flying discs, jump ropes, kites, wind up toys, balloons, toy building blocks, construction toys, toy banks, toy shovels, toy pails, toys designed to be attached to car seats, cribs and high chairs, toy musical instruments, toy telephones, toy music boxes; toy building structures, toy action figures and accessories therefor, cases for play accessories, toy environments for use with action figures, play sets for action figures, role playing game sets, toy furniture, toy tools; play costume masks; play doll costumes, masquerade games, air mattresses for recreational use, inflatable swimming pools, swimming aids, namely, pool rings, arm floats for recreational use, and swim floats for recreational use; playground sand boxes; tennis racquets; snow sleds for recreational use; snow boards; party favors in the nature of small toys; party favors in the nature of crackers and noisemakers; Easter egg coloring kits; Christmas tree decorations, ornaments, and skirts; hobby needle craft kits comprised of needlework; paper party favors; paper party hats.
Class 41: Ongoing television program featuring educational themes and entertainment directed to children, parents and families; amusement parks; live theatrical performances; providing online information featuring educational themes and entertainment directed to children, parents and families; providing computer games and activities for children, parents, and families via the internet, all featuring educational themes and entertainment directed to children, parents and families; entertainment services, namely, providing pod casts and web casts, all featuring educational themes and entertainment directed to children, parents and families; providing on-line non-downloadable interactive video games and multimedia computer games.
In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
On 19/10/2015, the opponent submitted the following evidence:
Witness statement of Joseph P. Salvo, Executive Vice-President and General Counsel of the opponent, dated 16/10/2015, stating that, since 1969, the opponent has created and produced the world-famous ‘SESAME STREET’ children’s television programme. The witness statement contains 55 exhibits.
Exhibit 1: Depictions of famous characters in the programme Sesame Street, some created for the European market (i.e. the Netherlands, Germany and Spain).
Exhibit 2: Public figures from around the world that have appeared as guests on Sesame Street or have otherwise expressed their support for the opponent and its educational mission.
Exhibit 3: Printout from the opponent’s website indicating the European – and worldwide – presence of the company. Sesame Street is currently broadcast in over 150 countries around the world. Sesame Street is or has been aired in the following countries of the European Union: Austria, Belgium, Bulgaria, Croatia, the Czech Republic, Denmark, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Luxemburg, Malta, the Netherlands, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden and the UK.
Exhibit 4: Titles and related design marks associated with the various local language Sesame Street co-productions that are, or have been, broadcast and advertised throughout the European Union, and have had extensive associated merchandising programmes.
Exhibit 5: Information noting that Sesame Street has been available to European television audiences since 1971. In addition, local language versions of Sesame Street have been televised in Europe since 1973, for instance Sesamstrasse in Germany, Sesamstraat in the Netherlands, Rue Sesame in France, Barrio Sesamo in Spain, Svenska Sesam in Sweden, Rua Sesamo in Portugal and Ulica Sezamkowa in Poland.
Exhibit 6: Spreadsheet showing the partial reach of Sesame Street programming throughout Europe from 1995 to 2016. For example, Sesame Street seasons 25-33 were licensed in Ireland to Raidió Teilifís Éireann (1995-2001), seasons 23-28 were licensed in Malta to Malta Television (1995-2003) and in the United Kingdom to TVWorks Limited, The Children’s Channel, Buena Vista International Inc., Nickelodeon (1994-2003), etc.
Exhibit 7: Selected ratings reports showing ratings data for the period 2004-2014, prepared by Eurodata TV Worldwide, showing viewership information for Germany, the Netherlands, France, Italy, Spain, Poland and the UK. According to the opponent, these data show that millions of children and families in the European Union watch Sesame Street on a weekly or daily basis.
Exhibit 8: Chart from YouTube Analytics showing European (180 514 489 views) and German (18 232 502 views) viewership of the US Sesame Street’s YouTube channel during the period 2008-2014.
Exhibit 9: Google Analytics chart showing annual European Union user traffic to the site www.sesamestreet.org for the period 2008-2015. For example, the site was visited in the United Kingdom 4 852 434 times, in Spain 784 773 times, in Ireland 763 226 times and in Malta 57 583 times. In total, the website was visited 10 312 633 times by users in 28 European countries.
Exhibit 10: Printouts of pages from the website www.sesamestreet.org, showing images of the Sesame Street logos and characters, and including the ‘Sesame Street store’.
Exhibit 11: Printouts of pages from the website www.sesamstrasse.de
Exhibits 12-15: Copies of Facebook pages, including the official Sesame Street Facebook page, which launched on 03/11/2009 and currently has over 900 000 likes, of which 80 730 are from European Union users; the Sesamstrasse Facebook page has 11 948 likes. There are separate Facebook pages for the show’s famous characters: ‘Cookie Monster’ has 1 734 755 likes from European Union users and ‘Elmo’ has 805 000 likes from European Union users.
Exhibit 16: Breakdown of downloads of computer applications in the European Union between 2009 and 2015, with European users responsible for nearly 625 000 downloads of ‘SESAME STREET’ apps (UK 327 644, Spain 87 684, Netherlands 53 561, Ireland 27 584, etc.).
Exhibit 17: Spreadsheet showing all the current active licensees in Europe (over 100) and the wide range of products being marketed in Europe under these licences. Some of the companies producing and selling ‘SESAME STREET’ merchandise in Europe are Hasbro, Procter & Gamble, H&M, Crocs, etc. According to the opponent, during the period 2011-2014, the licensing activities in the EU under the ‘SESAME STREET’ mark or its local language variant resulted in a gross revenue of nearly USD 17 million.
Exhibit 18: List of licences and licensees in the EU for toys and playthings between 2005 and 2013, with over 150 different licensing partners throughout Europe (i.e. Bambolino, Hasbro, Mattel, etc.).
Exhibit 19: Photographs of ‘SESAME STREET’ toys manufactured and sold by Mattel during the period 2006-2010 and by Hasbro during the period 2011 to present (over 1.3 million units of ‘SESAME STREET’ products have been sold in the EU). Some of the photographs show on the packaging the mark of the toy company, for example ‘Fisher Price’, along with the logo of Sesame Street or one of its local variants.
Exhibit 20: Copies of the 2007 and 2008 catalogues of DealMakers BV (licensee) showing the wide range of toys sold.
Exhibit 21: Royalty statements for the period 2008-2009, prepared and submitted by DealMakers (indicating the number of toys).
Exhibit 22: List of the opponent’s licences and licensees in the EU for health, beauty and personal care products, showing continuous licensing activity from 1999 to present.
Exhibit 23: Royalty statements for GlaxoSmithKline (2008).
Exhibit 24: Photographs of Pampers diaper products featuring the ‘SESAME STREET’ mark and the Elmo character.
Exhibit 25: Photographs of ‘SESAME STREET’ health and beauty products sold throughout Europe by the opponent’s licensees.
Exhibit 26: List of the opponent’s licensees in the European Union for food products, showing licensing activity from 1996 to the present.
Exhibit 27: Royalty statement for licensees in Spain (cookie products) and Benelux (rice cakes and yogurt, fruit jams and syrups).
Exhibits 28-30: Photographs of ‘SESAME STREET’ food products sold in the EU by the opponent’s licensees (in Benelux and Germany).
Exhibit 31: List of licences and licensees in the EU for assorted bags, backpacks, pouches, luggage, umbrellas and wallet products from 1996 to the present.
Exhibit 32: Royalty statements for the licensee Trademark Collection, dated 2009, showing sales of backpacks, bags, purses, umbrellas and wallets in the UK and Ireland and showing sales for those goods in Spain and Benelux.
Exhibits 33-37: Photographs of ‘SESAME STREET’ bags, backpacks, pouches and luggage products sold in the EU (Poland, Bulgaria, the Czech Republic, Hungary, Slovakia, Germany, Austria, Spain and the UK).
Exhibit 38: List of licences and licensees in the European Union for assorted domestic furnishings, bedding, towels, window treatments and children’s furniture from 1995 to present in Germany, Austria, Benelux, Spain, Portugal, France, Poland, the Czech Republic, Slovakia and Italy.
Exhibits 39-42: Photographs of assorted ‘SESAME STREET’ bed linens, towels, pillows, cushions and children’s furniture.
Exhibit 43: Royalty statements for sales of bed linens and cushions in Germany and Austria; sales of curtains, carpets, cushions, children’s furniture, lamps, lunch bags and placemats in Benelux; and sales of children’s chairs in the UK and Ireland for 2008.
Exhibit 44: List of licences and licensees in the EU for clothing and apparel items from 1997 to the present.
Exhibit 45: Royalty statements for the sale of T-shirts, slips, pyjamas, boxer shorts and bathrobes in Benelux.
Exhibit 46: List of licences and licensees for books, magazines and other publications from 1997 to present.
Exhibits 47-51: Photographs of ‘SESAME STREET’ publications and DVDs (Benelux, Poland and Germany).
Exhibits 52-54: Royalty statements for sales of publications and DVDs in Benelux and Poland.
Exhibit 55: List of the opponent’s 79 existing trade mark registrations throughout the European Union for its ‘SESAME STREET’ marks and the show’s characters.
The opponent submitted further evidence on 19/09/2016, after the expiry of the substantiation time limit, consisting of some witness statements. The Opposition Division notes that evidence to prove reputation can be presented only within the time limit granted to substantiate the opposition, which expired, in the present case, on 17/10/2015. Therefore, the evidence submitted on 19/09/2016 cannot be taken into account. In any case, it should be noted that the content of the additional evidence would not change the conclusions on reputation reached in the present decision.
The applicant argues that not all the items of evidence show that the earlier mark acquired a reputation in the relevant market. The applicant’s argument is based on an individual assessment of each item of evidence. However, when assessing reputation, the Opposition Division must consider the evidence in its entirety.
The abovementioned evidence indicates that the earlier trade mark, ‘SESAME STREET’, has been used for a substantial period of time. The evidence relating to the reach of ‘SESAME STREET’ programming throughout Europe from 1995 to 2016 (Exhibit 6), ratings data for the period 2004-2014 prepared by Eurodata TV Worldwide (Exhibit 7), the breakdown of downloads of computer application downloads in the European Union downloads between 2009 and 2015 (Exhibit 16), the number of licences in Europe (Exhibit 17) and the number of visitors to the website www.sesamestreet.org and the Sesame Street Facebook page (Exhibits 12-15) suggest that the trade mark has a consolidated position in at least part of the relevant market, namely in the English-speaking countries of the European Union (Ireland, Malta and the United Kingdom), as in other countries local language variations are mainly used. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.
However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to a television programme named Sesame Street, whereas there is no or little reference to the remaining goods and services.
Despite showing some use of the trade mark for some of the remaining goods and services (e.g. DVDs in Class 9, printed materials in Class 16, clothing in Class 25, toys in Class 28 and providing computer games in Class 41), the evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public with respect to those goods and services. Furthermore, despite the fact that the royalty statements give an indication of how many units were sold, this information is not put into the context of the market and competitors in question. The evidence does not indicate the market share of the trade mark in relation to the remaining goods and services in Classes 9, 16, 25, 28 and 41.
With respect to the goods in Classes 16, 25 and 28, the mark ‘SESAME STREET’ is mainly used in combination with the licensee’s mark, for example ‘Fisher Price’, the latter being perceived as an indication of commercial origin by the relevant public, while the mark ‘SESAME STREET’ will more probably be perceived as a reference to the famous television programme and the content of the goods (e.g. toys containing images of the characters from Sesame Street). Therefore, the use of the mark on various consumer goods actually confirms that the mark ‘SESAME STREET’ has obtained a reputation for a television programme and has become a popular brand licensed to put its name to the sale of a wide variety of goods under other marks.
As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public in relation to the goods and services in question that are not television programmes. Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that its trade mark has a reputation in relation to the goods and services in Classes 9, 16, 25, 28 and 41 that are not television programmes.
Taking the above into account, the Opposition Division concludes that the earlier trade mark has a reputation in Ireland, Malta and the United Kingdom for the following goods and services:
Class 9: Downloadable recordings of television programs all featuring educational themes and entertainment directed to children, parents and families; downloadable multimedia content, namely, audio and video recordings featuring educational themes and entertainment directed to children, parents and families,
Class 41: Ongoing television program featuring educational themes and entertainment directed to children, parents and families.
The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are similar to an average degree. 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 remaining contested services are the following:
Contested services in Class 35
Online retail services of consumer products; department store retailing services; supermarket retailing; wholesale and retail services of scientific, nautical, surveying, cinematographic, optical, weighing, measuring, signalling, checking (supervision), apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, mechanisms for coin-operated apparatus, cash registers, software for processing electronic payments to and from others, authentication software, computer software supplied on the Internet, on-line electronic publications (downloadable from the Internet or a computer network or a computer database), downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet, downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser, downloadable computer software for accessing, viewing, and controlling remote computers and computer networks, downloadable electronic publications in the nature of articles, papers, and instructional materials in the fields of telecommunications, the internet, training, business, sales, and marketing, laptop holders, computer bags, fire-extinguishing apparatus, mobile phone handsets, mobile phone accessories, alarm systems, security cameras, set top box, remote control, signboards, encoded or magnetic bank credit, debit, cash and identification cards, newspapers, periodicals, journals, bookbinding material, photographs, adhesives for household purposes, plastic materials for packaging, printers’ type, printing blocks, pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels, cardboard and plastic, printed telephone, facsimile, electronic mail and web site directories, cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards, marketing and promotional materials, printed advertisements, user manuals, mobile phone handsets, mobile phone accessories, batteries, battery chargers, precious metals, jewellery, precious stones, magnetic and non magnetically encoded cards, furniture, picture frames, household and kitchen utensils, glassware, porcelain and earthenware, textiles, clothing, footwear, headgear, laces and embroidery, buttons, ribbons, pins and needles, artificial flowers, carpets, rugs, games and electronic toys, chemicals used in industry, science, photography and agriculture, paints, varnishes and lacquers, personal hygiene products, soaps, perfumery, cosmetics, hair and body lotions, essential oils, cleaning and bleaching preparations, lubricants, fuels, candles, pharmaceutical, veterinary and sanitary preparations, ironmongery and small items of metal hardware, machines and machine tools, cutlery, razors and hand tools, cinematographic and optical apparatus and instruments, surgical and medical apparatus and instruments, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, firearms, fireworks, silverware, horological and chronometric instruments, musical instruments, cards, picture, rubber and plastics for manufacture use, packing and insulating materials, leather and imitations of leather and goods made from these materials, handbags, purses, wallets, leather holders, bags, luggage, umbrellas, mirrors, ropes, string, nets, tents, yarns and threads for textile use, coat hangers, place mats, dressmaker’s articles, bed and table covers, foodstuffs and beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, flour, bread and cakes, condiments, fresh fruit and vegetables, beer, mineral water, fruit juices and other non-alcoholic drinks, alcoholic beverages, floral products, tobacco, smokers’ articles and matches; advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; trade fairs; opinion polling; data processing; provision of business information; advertising agency services; advertising services provided for others; database management; compilation of information into computer databases; business consulting services; business consulting services in the field of web based events, conferences, training programs, learning programs, and seminars; business consulting services in the field of delivering web-based knowledge; business consulting services in the field of online collaboration and collaboration technologies; business consulting services in the fields of sales and marketing; business project management services; business project management services relating to development, set up, staging, production, recording, monitoring and follow-up for web based events, conferences, training programs, learning programs, and seminars; market research and business consulting services; business consultancy services relating to facilitating the transaction of business via local and global computer networks by locating and providing referrals for the delivery of a wide variety of business and consumer products and services; dissemination of business information of goods and services of others via local and global computer networks; business consultancy services relating to providing a web site on a global computer network by which third parties can offer and source goods and services, place, determine the status of and fulfill trade leads and orders, enter into contracts and transact business; providing computerized online ordering services; advertising of goods and services of others via local and global computer networks; international import and export agency services; rental of advertising space on communication media; online trading services relating to electronic auctioneering and providing online business evaluation relating thereto; providing a directory of third party web sites to facilitate business transactions; business consultancy services relating to operating an electronic marketplace for the buyers and sellers of goods and/or services on a global computer network; business assistance relating to facilitating business transaction via local and global computer networks; corporate management consultancy services; marketing and promotion services; publication of publicity materials; marketing of vacant premises; dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; rental of advertising space; computer data processing; sales, business, promotional information services; telephone answering (for unavailable subscribers); telephone answering (for others); personnel management; provision of sales, business, advertising and promotional information through a global computer network and via the Internet; presentation of goods on communication media for retail purposes; direct mail advertising; buying and selling agency services; selection of goods and procurement of goods for individuals and businesses; ordering services [for others]; secretarial services; provision of business statistical information; organisation of exhibitions for commercial or advertising purposes; business assistance services relating to compilation and rental of mailing lists; business investigation; business administration services for the processing of sales made on the Internet; business referral services and personnel placement; import-export clearance agencies (import-export agency services); agency for newspapers subscriptions; document reproduction; transcription (including stencil-paper writing); rental of office equipment; customer relationship management; business management services relating to electronic commerce; business management and administration services relating to sponsorship programmes; accounting services; charitable services, namely organizing and conducting volunteer programmes and community service projects; consultancy, information and advisory services relating to the aforesaid services; import-export clearance agencies (custom clearance); auctioneering; auctioneering provided on the Internet; all included in class 35.
Contested services in Class 36
Insurance; financial affairs; monetary affairs; real estate affairs; clearing and reconciling financial transactions via a global computer network; online banking services and financial services; credit card services, processing and transmission of bills and payments thereof, and providing insurance for financial transactions; funds transfer services; transmission of funds by electronic means for others; transfer of payments for others via the internet; financial services in the nature of billing and payment processing services; arrangement and management of leases and tenancy; renting and leasing of real estate; real estate appraisal; real estate valuation, real estate financing, real estate investment; real estate brokerage services; real estate agency services; housing agency services; actuarial services; real estate management and consultancy services; rent collection; rental of offices (real estate); rental of apartments and flats; provision of financial information via the Internet; safety deposit and issuing of travel vouchers services; capital investments; financial evaluation [insurance, banking, real estate]; financial and asset management services; insurance and financial services; financial services provided by telecommunication means; financial consultancy and advisory services; home banking; banking services provided on-line from a computer databases or the Internet; securities brokerage services, stock exchange quotation services; stocks and bonds brokerage, financial analysis; debit card services, charge card services and cheque guarantee services; banking, savings account and investment services; financial clearing services; credit verification via global computer information network; electronic credit risk management services; electronic purchase payment and electronic bill payment services; financial accounts debiting and crediting services; electronic banking services; issuance of stored value cards, charge cards and debit cards; telephone credit cards services; information services relating to finance and insurance, provided online from a computer database or Internet; agency for collection of gas and electricity fees; antique appraisal; art appraisal; jewelry appraisal; used car appraisal; tax information supply; charitable fund raising; organizing of charitable collections; charitable collections; rental of paper money and coin counting or processing machines; rental of cash dispensers or automated-teller machines; online payment services; rental and/or leasing of safes; consultancy, information and advisory services relating to the aforesaid services; all included in class 36.
Contested services in Class 39
Transport; packaging and storage of goods; travel arrangement; storage of electronically-stored data or documents; transportation information; shipbrokerage; car transport; air transport; vehicle rental; water supplying; message delivery; reservation (travel-); transport by pipeline; delivery of goods by mail order; courier services [messages or merchandise]; transport services in the nature of transport management; car rental services; car parking services; yacht and/or boat trips; travel agency services; travel reservation and travel information services; travel ticket agency services; arranging travel and information therefor, all provided on-line from a computer database or the Internet; provision of information relating to travel and tourism through the Internet or through telecommunication networks; transport of goods and passengers; packaging; providing road and traffic information, chauffeur services; loading and unloading of cargo; freight brokerage; removal services; brokerage for rental, leasing, selling, purchasing and/or chartering of ships and/or boats; salvage and refloating of ships and/or boats; piloting; gas distribution and supply; electricity distribution and supply; heat distribution and supply; water distribution and supply; mooring facility services; rental of warehouses; providing flying areas; providing toll road; rental and/or leasing of wheelchairs; management of parking spaces; rental and/or leasing of airplanes; rental and/or leasing of containers; rental and/or leasing of bicycles; rental and/or leasing of cars; rental and/or leasing of ships and/or boats; rental and/or leasing of man-powered vehicles; rental and/or leasing of mechanical parking systems; rental and/or leasing of pallets; rental and/or leasing of packaging or wrapping machines; rental and/or leasing of refrigerator; collection of domestic waste and trash; collection of industrial waste and trash; consultancy, information and advisory services relating to the aforesaid services; all included in class 39.
Contested services in Class 41
Translation; language interpretation; sign language interpretation services; consultancy, information and advisory services relating to the aforesaid services; all included in class 41.
Contested services in Class 45
Personal and social services rendered by others to meet the needs of individuals in relation to dispute resolutions and intellectual property rights protection; social work services; dating services; legal services; domain name registration services; guard and security services; personal safety services; rental of apparel; creation, compilation and maintenance of a register of domain names; baggage inspection for security purposes; personal background investigation services; security services for the protection of property and individuals; funeral services; consultancy, information and advisory services relating to the aforesaid services; all included in class 45.
As mentioned above, the earlier mark, ‘SESAME STREET’, has some degree of reputation for downloadable television programmes (Class 9) and ongoing television programmes (Class 41).
The earlier mark, ‘SESAME STREET’, and the contested sign, ‘SESAME’, are similar to an average degree, as they coincide visually, aurally and conceptually in the word ‘Sesame’. However, the importance of the word ‘Street’ in the earlier mark cannot be ignored, as it plays an independent and distinctive role in that mark, constituting an additional concept for the English-speaking public.
As mentioned above, the word ‘SESAME’ on its own will be perceived as referring to a herbaceous plant or the edible seeds of this plant and might be associated with ‘sesame plant’, ‘sesame oil’, ‘sesame seeds’, ‘sesame crackers’, etc. Therefore, the relevant public will not necessarily associate ‘sesame’ with ‘SESAME STREET’, especially taking into account that this word might be somewhat allusive in relation to some of the services in Class 35 (e.g. online retail services of consumer products; department store retailing services; supermarket retailing in Class 35, which might all include retailing of sesame products; on-line electronic publications (downloadable from the Internet or a computer network or a computer database in Class 35, which might relate to publications on sesame or sesame products).
Furthermore, for the services for which ‘SESAME’ is not allusive, it is considered that no association will made with the earlier mark, on the one hand because the earlier mark has an additional distinctive element that creates a meaningful expression that will be perceived as a whole, namely as ‘a street called sesame’, and on the other hand because the goods and services for which the earlier mark has a reputation are very different from the remaining contested services. The reputed goods and services relate to a television programme, while the remaining contested services in Class 35 relate to advertising, business management, business administration, office functions, auctioneering, and retail and wholesale services of goods (e.g. wholesale and retail services of scientific apparatus, downloadable computer software for accessing, viewing, and controlling remote computers and computer networks; furniture, picture frames, household and kitchen utensils; etc.), which have nothing relevant in common with television programmes. As far as the remaining services in Class 41 are concerned, it should be noted that, although television programmes may be translated or subtitled, this will not be sufficient for the relevant public to associate the contested sign, ‘SESAME’, when used for translation; language interpretation; sign language interpretation services, with the earlier mark, as these services are generally not connected to and have a very different nature from entertainment. The remaining services in Class 45 (personal, social and legal services) are very specialised services with a different nature from the opponent’s reputed services relating to the production of television programmes. The absence of any connection between the opponent’s reputed goods and services and the contested services in Classes 36 and 39 is even clearer. The contested insurance; financial affairs; monetary affairs; real estate affairs services in Class 36 and transport; packaging and storage of goods; travel arrangement services in Class 39 have a very different nature from and are in no way related to the opponent’s reputed television programmes or to the entertainment sector in general.
Consequently, while the relevant section of the public for the goods or services covered by the conflicting marks is the same or might overlap to some extent, those goods or services are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.
Taking into account that the opponent’s mark has only been proven to have a certain degree of reputation, that the marks are similar to an average degree (as the contested sign has an additional distinctive word with a specific meaning) and that the goods and services have no real points in common, it is considered that the relevant public will not establish a link between the marks. The opponent did not submit a line of argument that would indicate otherwise.
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.
The Opposition Division will now examine the opposition under Article 8(4) EUTMR.
NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:
the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;
pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;
the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.
The right under the applicable law
The opponent also based its opposition on an unregistered trade mark used in all the countries of the European Union (Bulgaria, Belgium, the Czech Republic, Denmark, Germany, Estonia, Greece, Spain, France, Croatia, Ireland, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom).
According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.
According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.
Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis‑à‑vis a subsequent trade mark.
As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.
Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.
In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely an unregistered trade mark. The opponent submitted, for each country, a copy of the legal provisions and an English translation. However, it did not put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable laws.
Therefore, the opposition is not well founded under Article 8(4) EUTMR.
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
Dorothée SCHLIEPHAKE
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Inés GARCÍA LLEDÓ
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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.
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