OPPOSITION No B 2 592 494
Groupe Canal+, SA, 1, place du Spectacle, 92130 Issy Les Moulineaux, France (opponent), represented by Brandstorming, 11, rue Lincoln, 75008 Paris, France (professional representative)
a g a i n s t
Sky International AG, Stockerhof, Dreikönigstrasse 31a, 8002 Zurich, Switzerland (applicant), represented by CMS Cameron McKenna Nabarro Olswang, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom (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
PROOF OF USE request with regard to IR No 1 025 864
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based namely international trade mark registration No 1 025 864 and French mark registration No 3 636 873 and the Office subsequently asked the opponent to provide such evidence. However, earlier international trade mark registration No 1 025 864 was under no such obligation of use.
With regard to International registrations article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.
The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 02/12/2010 and the contested trade mark was published on 13/07/2015. Therefore, there is less than five years between the registration date of the International registration and the publication of the contested mark meaning that the request for proof of use is inadmissible as far as the earlier international trade mark is concerned.
Therefore, unlike the earlier French mark, there is no need to examine the proof of use in relation to the International registration and, consequently, for reasons of economy of proceedings the Opposition Division will therefore proceed with the examination of the opposition on the basis of this earlier right.
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 will 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 claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.
Reputation of the earlier trade mark
According to the opponent, the earlier International trade mark registration has a reputation in France.
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 27/01/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in France 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: Photographic, cinematographic, apparatus and instruments; apparatus and instruments for recording, transmitting, reproducing, storing, encrypting, decrypting, transforming and processing sound or images; audiovisual, appliances and instruments; videos; CD-ROMs, recording discs, digital video discs (DVDs), videodiscs and sound discs, digital discs, videotapes; magnetic recording media.
Class 38: Telecommunication services; information on telecommunications; television broadcasting; television broadcasts, radio broadcasts; programme broadcasting by satellite, cable, via computer networks (especially via the Internet), via radio networks, via wireless networks and by radio relay channels; broadcasting audio, audiovisual, cinematographic and multimedia programmes (texts and/or images (still or moving) and/or sounds musical or not, ringtones) for interactive or other use; rental of access devices (apparatus) to interactive audiovisual programmes; online downloading services for films and other audio and audiovisual programmes; services transmitting television programmes and selections of channels; services for transmitting and receiving video images via the Internet by means of a computer or a mobile telephone; Rental of access time to telecommunication networks.
Class 41: Entertainment; radio and television entertainment on any media namely television set, computer, personal stereo, portable video player, PDA, mobile telephone, computer networks, the Internet; production of shows, films, television films, televised broadcasts, reports, debates, video recordings, sound recordings; rental of videograms, films, sound recordings, video tapes; rental of motion pictures; rental of cinematographic projection apparatus, set-top boxes, encoding devices, radio and television sets, audio and video apparatus, cameras, personal stereos, portable video players; production of shows, films, audiovisual, radio and multimedia programmes; editing of audiovisual, radio and multimedia programmes, texts and/or images, fixed or animated, and/or sounds musical or not, and/or ringtones, for interactive or other use; Rental of set-top boxes and all kinds of audiovisual apparatus and instruments.
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 05/05/2016 and 09/05/2016 the opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents, most if which is partially translated insofar it is in French and not in the language of proceedings:
Le Cube decoder
Press articles dated November 2008 from Satellite Today, Business Wire, M2 Presswire and Inside Satellite TV 2008 announcing that the company Pace delivers IP set-top box, named ‘+Le Cube’ to the opponent in France.
Several articles about Canal+ and Pace winning the trophy of the IPTV World Series in the category Best Hybrid Broadcast-IP Video delivery Solution.
Some films on youtube from the period 2013-2015 about the launch of ‘le Cube’ and other promotional material for this decoder.
Press articles from published in various newspaper and websites such as Les Echos, El Figaro, Economie, 20minutes.fr, teleloisirs.fr, lexpress.fr, universfreebox.fr, telesatellite.com and maxiscience.com mostly from June 2015 announcing the launch of the following new decoder
Two certificates dated 24/09/2015 of the opponent’s director of products and services marketing, one mentioning the total number of decoders ‘+ Le Cube’ made to date and one certifying the total amount of subscribers in April 2015.
Print screens from various websites such as programm-tv.net, tv loisirs, Playtv.fr, franceinfo.fr, enpleinlucarne.net, saveursdunet.com showing TV program listings mentioning inter alia the opponent’s TV channels in 2013 and 2014 such as the following overview on http://playtv.fr:
Print screens from the opponent’s websites like cine+, foot+, rugby+, maison+, cuisine+, golf+ and infosport+ showing TV programming lists from the period 2011-2015.
Screenshots of the opponent’s Facebook and Twitter and Google+ home pages showing the sign dated 08/04/2016.
Information in the press about the opponent’s TV channels (period 2010-2016)
Wikipedia articles about the opponent’s different TV channels such as foot+, rugby+, cuisine+, sport+, cine+, maison+, golf+, infosport+, and cube canal+ and extracts from its Facebook pages cuisine+, cine+, golf+ and infosport+.
Article published on www.lareclame.fr from May 2014 mentioning about the opponent’s earlier mark that: ‘The chain reinvents the great success of movie posters with his iconic sign ‘+’’.