OPPOSITION No B 2 570 219

Amelia González, S.L., Calle Nicolás Ortega Pagan, 2, 30003 Murcia, Spain (opponent), represented by Clarke, Modet y Cia. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

WPP Luxembourg Gamma Sarl, 124 Boulevard de la Pétrusse, 2330 Luxembourg, Luxembourg (applicant), represented by Bristows LLP, 100 Victoria Embankment, London EC4Y 0DH, United Kingdom (professional representative).

On 01/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 570 219 is partially upheld, namely for the following contested services:

Class 41: Post-production editing services for advertising and other video and audio communications; none of the aforesaid, being education, providing of training, entertainment, sporting and cultural activities.

2. European Union trade mark application No 13 632 716 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 632 716. The opposition is based on European Union trade mark registration No 8 734 196. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 35: Commercial retailing and wholesaling of jewellery, bags, clothing, textile accessories, belts.

Class 41:

Education; providing of training; entertainment; sporting and cultural activities.

The contested services are the following:

Class 35: Advertising agency services; digital and interactive advertising and marketing services; public relations services; direct marketing advertising services for others; marketing consulting; market research, surveys and analysis; media planning and buying services in connection with advertising; media placement services, namely, placing advertising for others; sales promotion services; customer relationship management services; business and marketing consulting services related to advertising, marketing and brand development; event marketing, namely, arranging and conducting marketing promotional events for others; business marketing consulting services relating to brands and brand development, assessment, analysis, exploitation and promotion; brand creation services, namely, brand concept and brand development services for others; economic forecasting; collection and compilation of business marketing information into computer databases; production of product and company advertising material for others; organising business exhibitions; advisory and consultancy services relating to all the aforesaid services; none of the aforesaid relating to the development, construction and management of real estate; none of the aforesaid being commercial retailing and wholesaling of jewellery, bags, clothing, textile accessories, belts.

Class 41: Post-production editing services for advertising and other video and audio communications; none of the aforesaid, being education, providing of training, entertainment, sporting and cultural activities.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.

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

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

Contested services in Class 35

The applicant´s services are mainly advertising, promotion, marketing, public and customer relations services. These services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. Like advertising services, the applicant´s economic forecasting services and its organisation of business exhibitions in class 35 are mainly rendered to help in business affairs. They are fundamentally different in nature and purpose from the opponent´s tangible goods in class 14. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Furthermore, they differ in their channels of distribution, and are not targeted at the same consumers. They are neither complementary nor are they in competition. They are dissimilar.

They are also dissimilar to the opponent´s commercial retailing and wholesaling of jewellery, bags, clothing, textile accessories and belts in class 35, and education training, entertainment, sporting and cultural services in class 41, which, again, have nothing in common with any of the applicant´s services. Their fields are not directly related, they belong to different areas of activity and they have different purposes. They are also provided by different types of companies. Furthermore, these services are neither complementary nor in competition.

Contested services in Class 41

The post-production editing services for advertising and other video and audio communications are similar to a low degree to the opponent´s entertainment services in class 41, as they have the same purpose. Furthermore, they are complementary.´

The applicant made the following restriction of the above services within these proceedings “none of the aforesaid, being education, providing of training, entertainment, sporting and cultural activities.” However, the similarity of the contested and the opponent’s services is not overcome by this limitation.

2. Relevant public — degree of attention

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

In the present case, the services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise, and also to the general public.

The degree of attention is considered to be average.

3. The signs

	MIRUM
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 element ‘MIRUM’ of both signs has no meaning at least for the relevant English-speaking public and is, therefore, distinctive.

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. For reasons of economy of procedure, the Office finds it appropriate to focus on the English-speaking part of the public.

The contrasting background of the earlier figurative trade mark is purely decorative. The star device, which is set against the background and above the word “MIRUM”, is a decorative element with a laudatory connotation. It is weak for the relevant services, it being a known fact that stars are indicative of quality in general. Although it is depicted in a stylised manner, it will be perceived as alluding to the stellar quality of the entertainment services provided. To this extent, the verbal element is clearly the more distinctive element.

Contrary to the views of the applicant, the marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘MIRUM’, which is the sole element of the contested mark, entirely contained in the earlier sign. However, they differ in the purely decorative, non-distinctive background of the earlier sign, and its star device, which is a weak element for the reason stated above.

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).

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MIR‑UM’, present identically in both signs. The figurative elements of the earlier mark will not be pronounced. Therefore, the signs are aurally identical.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the star device of the earlier mark will be associated with the meaning explained above. To that extent, the signs are not conceptually similar. However, since this figurative element has a lower than average degree of distinctiveness, its impact in the comparison of the signs is reduced.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the distinctiveness of the earlier mark must be seen as normal despite the presence of a non‑distinctive element and a weak element as stated above in section c) of this decision.

5. 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As has been concluded above, some of the services are similar to a low degree. The signs are visually highly similar and aurally identical. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness, and entirely contains the contested mark.

Considering all the above, a likelihood of confusion on the part of the English-speaking part of the relevant public, demonstrating an average degree of attention, may not be ruled out. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 8 734 196. It follows that the contested trade mark must be rejected for the services found to be similar to a low degree.

The remaining 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.

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 will decide a different apportionment of costs.

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

The Opposition Division

Ana MUÑIZ RODRÍGUEZ

Keeva DOHERTY

Judit NEMETH

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.