OPPOSITION No B 2 500 109
Elove Entertainment Limited, Trident Chambers, P.O. Box 146, Road Town, Tortola 1110, British Virgin Islands (opponent), represented by P.E. Enterprise, S.L., Gran Via 81, planta 5°, Dpto. 9, 48011 Bilbao (Vizcaya), Spain (professional representative)
a g a i n s t
interact, Guldvergsgade 51D, 1 sal., 2200 Copenhagen, Denmark (applicant), represented by Accura Advokatpartnerselskab, Tuborg Boulevard 1, 2900 Hellerup, Denmark (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
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
During the proceedings, on 13/08/2015, the earlier EUTM in question was partially refused in opposition proceedings No B 2 396 953. This decision became final.
After the partial refusal in the mentioned opposition, the remaining services on which the opposition is based are the following:
Class 35: Price comparison services; commercial information agencies; administrative processing of purchase orders; cost price analysis; auctioneering; marketing studies; opinion polling; demonstration of goods; business research; business investigations; business inquiries; business management assistance; business management consultancy; marketing research; economic forecasting; compilation of information into computer databases; systemization of information into computer databases; compilation of statistics; distribution of samples; commercial or industrial management assistance; computerized file management; commercial information and advice for consumers (consumer advice shop); writing of publicity texts; news clipping services; business appraisals; arranging subscriptions to telecommunication services for others; advertising by mail order; publicity material rental; publicity columns preparation; bill-posting; outdoor advertising; direct mail advertising; word processing; television advertising.
Class 42: Industrial design; Research and development for others.
Class 45: Legal services; Registration of domain names; Copyright management; Intellectual property consultancy; Intellectual property watching services; Licensing of computer software; Security services for the protection of property and individuals;.
The contested goods and services are the following:
Class 9: Application software; Software.
Class 35: Advertising; Advertising, marketing and promotional consultancy, advisory and assistance services; Rental of advertising space on the internet; Providing and rental of advertising space on the internet; Computerized file management; Systemization of information into computer databases; Compiling of information into computer databases; Compilation of information into computer databases; Collection and systematisation of information into computer databases; On-line advertising on a computer network; Advertising, including on-line advertising on a computer network.
Class 41: Party planning [entertainment]; Organisation of parties; Fetes (Organisation of -) for entertainment purposes.
Class 45: Marriage agencies; Dating services; Social escort agency services; Escorting in society [chaperoning]; On-line social networking services; dating services provided through social networking.
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 contested application software; software have no relevant points in common with the opponent’s services in Classes 35, 42 and 45. The goods software have absolutely no relevant connections with the opponent’s services, since they have completely distinct natures and purposes. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar
Contested services in Class 35
The contested advertising include, as a broader category, the opponent’s outdoor advertising. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical.
The contested compiling of information into computer databases; Compilation of information into computer databases; Collection and systematisation of information into computer databases; Systemization of information into computer databases are identically contained in both lists of services (including synonyms). The services are identical.
The contested advertising, marketing and promotional consultancy, advisory and assistance services consist of providing others with expert advice in the sale of their goods and services by suggesting or advising on how to better promote their launch and/or sale, or how to better reinforce the client’s position in the market and acquire competitive advantage through publicity. In order to fulfil this target, the companies or individuals providing consultancy might recommend or suggest using many different means and products. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice on how to better market their products and services; it is not rare for companies providing consultancy in advertising matters to also provide or organise the recommended measures to implement the advised or suggested marketing strategy, such as online advertising, organising promotional events, etc. Based on the above, the contested advertising, marketing and promotional consultancy, advisory and assistance services are similar to the opponent’s outdoor advertising, as they may be rendered by the same companies through the same distribution channels and target the same relevant public.
The contested rental of advertising space on the internet; providing and rental of advertising space on the internet are highly similar to the opponent outdoor advertising as these services may be offered by the same or linked undertakings, have the same purpose and target the same public. Furthermore, they are complementary.
The contested computerized file management overlap with the opponent’s compilation of information into computer databases. The services are identical.
The contested on-line advertising on a computer network is closely related to the opponent outdoor advertising as these services may be offered by the same or linked undertakings, have the same purpose and target the same public. Furthermore, they are complementary. These services are therefore highly similar.
The contested advertising, including on-line advertising on a computer network include, as a broader category, the opponent’s outdoor advertising. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical.
Contested services in Class 41
The contested party planning [entertainment]; Organisation of parties; Fetes (Organisation of -) for entertainment purposes have no relevant points in common with the opponent’s services in Classes 35, 38, 42 and 45. The contested services are essentially entertainment and have no relevant connections with the opponent’s services, since they have distinct natures and purposes. Contrary to what the opponent stated in its submissions, they do not originate from the same industry, let alone the same undertakings. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.
Contested services in Class 45
The contested dating services; dating services provided through social networking; marriage agencies; Social escort agency services; Escorting in society [chaperoning]; On-line social networking services have no relevant points in common with the opponent’s services in Classes 35, 42 and 45. The contested services are essentially dating and social networking services and have no relevant connections with the opponent’s services, since they have distinct natures and purposes. Contrary to what the opponent stated in its submissions, they do not originate from the same industry, let alone the same undertakings. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar
Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the services found to be identical or (highly) similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high (in relation to rare purchases implying a high involvement on the part of the public, also for services such as advertising).
love and kids
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 figurative mark, portraying the verbal element ‘LOVEBOOK’, in upper case typeface and a figurative element consisting of a combination of a thick vertical line and of two thinner horizontal lines, in the central part of which there is further placed a heart symbol. The combination of lines may be perceived as a stylised capital letter ‘L’ slightly tilted towards the left or as the incomplete outline of a book.
The word ‘LOVEBOOK’ forming the verbal element of the earlier mark does not exist as such in any of the languages spoken in the relevant territory. It is however settled case-law that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, ‘RESPICUR’, EU:T:2007:46, § 57).
It follows from the foregoing that the element ‘love’ will be understood throughout the relevant territory as referring to, among others, a strong feeling of affection for someone on account of its being a very basic English word. This concept is further reinforced in the contested sign by the figurative element of the heart, a symbol generally used for expressing affection and love, especially (but not exclusively) romantic love. The word 'love' has no meaning in relation to the relevant services at hand and is therefore considered to be distinctive.
A part of the public (for example at least English, Dutch and German speaking part) will also recognise a semantic content in the element ‘book’ (meaning, among other senses, a number of printed or written pages bound together along one edge and usually protected by thick paper or stiff pasteboard cover or a written work or composition, such as a novel, technical manual, or dictionary) as it is an English word which also became included in the German and Dutch language due to words such as “e-book”. Another part of the public will see this word as meaningless. The opponent claimed that the word ‘book’ is not distinctive since it can be related to business activities and social networking. However, it is the opinion of the Opposition Division, that the word ‘book’ is not descriptive, allusive or otherwise weak for the relevant services and is, therefore, considered to be distinctive.
The earlier sign is also composed of a figurative element of a rather banal nature. When the 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 verbal elements are more distinctive than the figurative element which reinforces the meaning of the verbal element 'love'.
The contested mark is a word mark composed of the word ‘love’, the conjunction ‘and’ and the word ‘kids’. The word ‘kids’ will be understood as as indicating that something is directed at children. The public part of the public will understand the term ‘KIDS’ since it is a basic English term, frequently used in marketing, especially in relation to products for kids. This element is not descriptive, allusive or otherwise weak for the relevant services and is, therefore, considered to be distinctive.
The marks under comparison have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the word ‘love’, placed at the beginning of the wording. They differ in the words ‘book’ included in the earlier mark and the wording ‘and kids’ of the contested mark. Furthermore, they also in the figurative element of the earlier mark.
Although generally a consumer normally attaches more importance to the first part of the words, that consideration cannot apply in every case (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 32). In the case at bar, only the first letters ‘love’ of each sign are identical, while the remainder of the opponent’s sign, ‘BOOK’, has no similarity whatsoever in the words ‘AND KIDS’.
The signs are visually similar to a low 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 letters ‛love’, present in both signs. The pronunciation differs in sound of the words ‛book’ of the earlier sign and ‘and kids’ of the contested mark. The earlier mark differs also in that it consists of one word whilst the contested sign is composed of three words. Moreover, there is also aural difference resulting from the contested mark’s word ‘and’. Therefore, the signs are similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The relevant public will understand the sign’s coinciding word element ‘LOVE’ and, therefore, perceive this concept in both signs. A part of the relevant public will also perceive the concept of a ‘book’ in the earlier mark and the concept behind the wording ‘and kids’ in the contested mark. For this part of the public the signs are conceptually similar to a low degree due to the fact that they only coincide in the word ‘love’ and differ in respect of the concepts behind the words 'book' and 'and kids'.
The remaining part of the public, which will only understand the word ‘love’, 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.
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 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
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).
The contested services are partially identical, partially (highly) similar and partially dissimilar. The signs have been found visually and aurally similar to a low degree. In addition, both signs convey the concept of ‘LOVE’.
Although the signs coincide in the element ‘LOVE’, placed at the beginning of the signs, a likelihood of confusion does not exist for consumers since the additional elements are also distinctive, clearly perceivable and visually, aurally and for part of the public also conceptually different.
Considering all the above, and in particular the high level of attention of the relevant public for part of the services, there is no likelihood of confusion even taking into account that the that some of the services are identical.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.