OPPOSITION No B 2 451 386
Rheinische Post Verlagsgesellschaft mbH, Zülpicher Str. 10, 40196 Düsseldorf, Germany (opponent), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative)
a g a i n s t
RMP, 161 Rue du Faubourg Saint Honore, 75008 Paris, France (applicant), represented by Regimbeau, 20, rue de Chazelles, 75847 Paris Cédex 17, France (professional representative).
On 15/08/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods and services
of European Union trade mark application No
PRELIMINARY REMARK ON PROOF OF USE
At the applicant’s request, the opponent submitted proof of use of its earlier mark.
For reasons of procedural economy, the Opposition Division will first analyse the likelihood of confusion and will analyse the proof of use only if it is deemed necessary.
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: Machine recognizable data carriers of all kinds and software provided with information (as far as contained in class 9), particularly digital and analogue recording media with e.g. cultural and scientific and industrial and technical information; programmed floppy disks, ROM video cassettes, compact disks and chip disks as well as sound/picture (except unexposed films) and video recording media, particularly for presenting cultural, sports and scientific information and industrial respectively technical information; chip cards, as far as contained in class 9.
Class 16: Printed matter and published matters, namely magazines, newspapers, brochures and books; photographic matters, photographs (as far as contained in class 16).
Class 41: Publication and issue of printed and published matters, namely magazines, newspapers, brochures and books.
The contested goods and services are the following:
Class 16: Printed matter; newspapers.
Class 35: Direct mail advertising; publication of publicity texts.
An interpretation of the wording of the lists of goods and services is required to determine the scope of protection of these goods and services.
The terms ‘particularly’, ‘e.g.’ and ‘as well as’, used in the opponent’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 opponent’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 16
Considering the meaning of the word ‘namely’ (explained above), used in the opponent’s list of goods, the contested newspapers are also in the opponent’s list of goods and, therefore, these goods are identical.
The contested printed matter includes, as a broader category, the opponent’s printed matter, namely magazines, newspapers, brochures and books. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested services in Class 35
The opponent’s publication and issue of printed and published matters, namely magazines, newspapers, brochures and books entail the creation and making of the printed goods mentioned.
The contested publication of publicity texts is similar to the opponent’s publication and issue of printed and published matters, namely magazines, newspapers, brochures and books in Class 41. Although these services have different purposes (considering that they are in different classes, with the contested services serving advertising purposes and the opponent’s services serving purposes other than advertising) and target different publics, the nature of these services is the same. One company can offer different types of publication services through the same distribution channels.
The contested direct mail advertising is a type of advertising service that entails ‘contacting carefully targeted prospects with custom tailored offers or promotional material (such as brochures, circulars, letters, newsletters) on one-to-one basis via ordinary mail or email’ (information extracted from BusinessDictionary.com at http://www.businessdictionary.com). There is a certain similarity between this service and the opponent’s publication and issue of printed and published matters, namely brochures in Class 41, as they may be complementary (in the sense that the provider of the opponent’s services could design and print brochures and the provider of the contested services could distribute them) or in competition (as the provider of the contested services could also arrange the printing of brochures on behalf of the end consumer as well as distributing them). Therefore, these services are similar to a low degree.
Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar to various degrees are directed at the public at large as well as business consumers with specific professional knowledge or expertise. The degree of attention will vary from average to higher than average depending on the specific goods and services; for example, there will be an average degree of attention for goods for daily use, such as newspapers, and there will be a higher than average degree of attention for services that require a more substantial investment on behalf of the contracting party, such as direct mail advertising.
Earlier trade mark
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 earlier mark is a word mark consisting of two letters, ‘RP’, that have no perceptible meaning in relation to the relevant goods and services and is therefore of average distinctiveness.
The contested sign is a figurative mark composed of the highly stylised blue letters ‘RMP’ and the word ‘DIGITAL’ depicted in small blue standard letters. The letters ‘RMP’ have no apparent meaning in relation to the relevant goods and services and are therefore distinctive to an average degree. Furthermore, they are stylised in a sophisticated way: the first vertical line of the letter ‘M’ is missing and the vertical lines of the letters ‘R’ and ‘P’ are incomplete, such that only small square dots are visible. This results in a very fanciful stylisation that is particularly prominent in the case of the letter ‘P’, as the lack of the vertical line gives it a particularly unusual appearance.
The word ‘DIGITAL’ will be understood by the majority of the relevant public as meaning ‘relating to, using, or storing data or information in the form of digital signals’ (according to Oxford Dictionaries online). The word ‘digital’, with this meaning, exists in many languages (e.g. German, Spanish and Latvian) with the same or very similar spellings, and, in relation to the relevant goods and services, it will be perceived as a reference to content available or provided in a digital form or, in the case of the printed goods in Class 16, their subject matter (e.g. newspapers covering issues relating to digital technology). Therefore, this word is non-distinctive in relation to the goods and services for this part of the public. Furthermore, the word ‘DIGITAL’ is depicted in letters that are significantly smaller than the letters ‘RMP’ and, therefore, the element ‘RMP’ is dominant (visually eye-catching). For these reasons, the element ‘DIGITAL’ plays a minor role in the mark. Although a part of the public will not understand the word ‘DIGITAL’, as the equivalent words in some of the relevant languages are different (e.g. ‘skaitmeninis’ in Lithuanian and ‘cyfrowy’ in Polish), resulting in this word being of average distinctiveness for this part of the public, this element would still be of lesser importance, due to its small size in comparison to the letters ‘RMP’.
Visually, the signs coincide in the letters ‘R’ and ‘P’, present in both marks, and which constitute the entirety of the, distinctive, earlier mark and the first and last letters of the dominant and distinctive verbal element of the contested sign. However, they differ in the remaining elements of the contested sign, namely the letter ‘M’ and the word ‘DIGITAL’ (which, however, plays a less important role), as well as in the particularly high degree of stylisation of the coinciding letters and the use of colour.
It has been established in case law that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). However, in the present case, the very distinctive stylisation of the contested sign’s element ‘RMP’ cannot be ignored and results in a significant degree of distinctiveness.
Furthermore, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. In the present case, this is relevant when comparing the earlier mark, which is composed of two letters, and the dominant and the most distinctive element of the contested sign, which is composed of three letters.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, as both the earlier mark, ‘RP’, and the element ‘RMP’ of the contested sign (both distinctive and the latter also dominant) consist of consonants only, they will be pronounced as acronyms, namely each letter will be pronounced individually. The pronunciation of the signs, therefore, coincides in the sound of the letters ‘R’ and ‘P’, and differs in the sound of the letter ‛M’ in the contested sign, which has no counterpart in the earlier sign. This results in the earlier mark, ‘RP’, being pronounced as two syllables and the element ‘RMP’ of the contested sign being pronounced as three syllables. For the reasons indicated above, the element ‘DIGITAL’ of the contested sign plays a less important role than the element ‘RMP’, and it does not notably affect the aural perception of the contested sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, both the earlier mark and the element ‘RMP’ of the contested mark are neutral (have no meaning). If the word ‘DIGITAL’ is not understood, then the conceptual aspect has no bearing on the perception of the signs. However, if the word ‘DIGITAL’ of the contested sign is perceived as meaningful, it is non-distinctive, and, therefore, would not affect the perception of the marks anyway.
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.
During the allotted period for substantiation of the opposition (i.e. until 17/05/2015), the opponent submitted its observations, in which it claimed that the earlier trade mark enjoys enhanced distinctiveness and also indicated that Annex 1 contains printouts from the opponent’s website and further proof illustrating this claim. However, no annex was attached to the submissions and no other documents that would support this claim were submitted until the expiry of the period for substantiation. Furthermore, a mere indication of the website where the Office could possibly find information about the opponent’s mark is, in itself, not sufficient to substantiate this claim. The onus is on the opponent to provide evidence in order to demonstrate the enhanced distinctiveness of the mark, and not on the Office or the applicant.
Furthermore, the evidence that the opponent submitted to prove the use of the mark cannot be taken into account for the purposes of examination of the enhanced distinctiveness of the mark, as the claim of enhanced distinctiveness should have been proven during the substantiation period. The evidence of use was submitted on 09/12/2015 and the substantiation period ended on 17/05/2015. Therefore, these documents cannot be taken into account.
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
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
The goods and services at issue are identical, similar or similar to a low degree and the attention paid during their purchase will vary from average to higher than average depending on the specific goods and services.
The signs are visually similar to a low degree, aurally similar to an average degree and conceptually neutral.
The opponent argues that the coincidence in the beginning and ending of the earlier mark and of the element ‘RMP’ of the contested sign is decisive in this case, as it is sufficient to lead consumers into confusion between the signs. However, the Opposition Division considers that, despite the coincidence in the letters ‘R’ and ‘P’, the signs are not sufficiently similar that such a conclusion can be drawn.
The earlier mark, ‘RP’, and the only distinctive and dominant element, ‘RMP’, of the contested sign are short. Therefore, the fact that they differ in one additional letter in the contested sign is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. It is generally admitted that, with regard to short word marks or elements, the public’s attention focuses on all of the letters, whereas a focus on the beginnings of marks or elements occurs in the case of longer signs.
The Opposition Division considers that, contrary to the opponent’s claim, the middle letter, ‘M’, of the element ‘RMP’ of the contested sign cannot be considered as ‘not clearly perceptible’ or an ‘optical connection between the letters “R” and “P” ’, but instead it is clearly visible and audible. Visually, in the overall composition of the contested sign, this letter occupies a significant, central position and, aurally it makes the element ‘RMP’ one third longer than the earlier mark. Furthermore, this additional letter in the contested sign is not aurally or visually similar to either of the letters present in the earlier mark.
Therefore, the Opposition Division considers that the additional letter ‘M’ and the distinctive stylisation of the letters in the contested sign are clearly perceptible and are sufficient to exclude any likelihood of confusion between the marks.
These differences are clearly sufficient to distinguish between the signs in relation to the services that are similar and similar to a low degree when the degree of attention paid during the purchase of the relevant goods and services is higher than average. However, even in the case of the identical goods, when the degree of attention paid during their purchase is average, the differences between the signs are sufficient to safely exclude the likelihood of confusion, including the likelihood of association. It is unlikely that consumers would believe that, for example, a newspaper called ‘RP’ is related to a newspaper called ‘RMP’, especially considering that the latter has a very distinctive stylisation. Consumers are frequently confronted with abbreviations and letter combinations in their everyday lives and in business, and are accustomed to distinguishing between them, even if they have a coinciding element or elements.
The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.
In the cases referred to by the opponent, the signs under comparison contain either letters that are identical to other letters in the same sign (‘CB’ versus ‘CCB’) or letters that are visually very similar (‘QT’ versus ‘QOT’). However, in the present case, the additional letter ‘M’ of the contested sign’s dominant and distinctive element is neither a repetition of one of the other letters nor visually or aurally similar to any of the letters of the earlier mark.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.