OPPOSITION No B 2 534 595
Heinrich Bauer Verlag KG, Burchardstraße 11, 20095 Hamburg, Germany (opponent), represented by Erlburg Rechtsanwaltsgesellschaft mbH, Friedrichstraße 88, 10117 Berlin, Germany (professional representative)
a g a i n s t
Telefonica S.A., Gran Vía 28, 28013 Madrid, Spain (applicant), represented by Intecser Consultoría, Calle Goya 127, 28009 Madrid, Spain (professional representative).
On 30/09/2020, the Opposition Division takes the following
1. Opposition No B 2 534 595 is upheld for all the contested services.
2. European Union trade mark application No 13 765 912 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the services of European Union trade mark application No 13 765 912 , namely against all the services in Classes 35, 38 and 41. The opposition is based on German trade mark registration No 302 009 025 166 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), 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 mark on which the opposition is based.
In the present case, the contested trade mark was published on 17/03/2015.
In order to determine the date of commencement of the five years grace period in respect of a national mark, national law is relevant. The commencement of this period depends on the registration procedure of the Member States (14/06/2007, C-246/05, Le Chef de Cuisine, EU:C:2007:340, § 26-28). Consequently, the term ‘registration’ is to be interpreted as the ‘date of the completion of the registration procedure’ as defined by national law (Article 16(1) of Directive (EU) 2015/2436).
In German national proceedings the opposition period is applied as a post-registration procedure. As indicated in the corresponding extract of the opponent’s German trade mark No 302 009 025 166, this mark had an opposition proceeding pending, which concluded on 21/02/2019. Consequently at the time of publication of the contested EUTM application, the earlier mark was not under the use requirement as the five years’ grace period commences from the date of the closure of the opposition period.
Therefore, the request for proof of use is inadmissible.
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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Recorded and unrecorded sound, image and data carriers of all kinds, as far as included in class 9 (except unexposed film), In particular tapes, cassettes, compact discs, video discs, records, OAT tapes, audio and video tapes, diskettes, CD-ROM, digital versatile discs (DVDs ); apparatus for recording, transmission or reproduction of sound, images and data; calculating machines, data processing equipment and computers, computer software [recorded or downloadable]; glasses [optics], spectacle cases, electronic publications [downloadable].
Class 16: Paper, cardboard (carton) and goods made from these materials (included in class 16), in particular paper napkins, paper handkerchiefs, toilet paper, household paper and paper towels, printed matter, in particular magazines, newspapers, books, catalogs and brochures, book binding material, photographs; instructional and teaching material (except apparatus); stationery, posters, decals, trading cards [stationery]; adhesives for stationery or household purposes; artists' materials; typewriters and office requisites (except furniture); plastic materials for packaging, included in class 16 included; printers' type, printing blocks.
Class 35: Advertising research, namely sales, marketing and opinion research; advertising purposes distribution of goods, especially of leaflets, prospectuses, printed matter and samples; arranging advertising contracts or third parties; Advertising, in particular radio, television, cinema, print, videotext and teletext advertising, public relations [ public Relations], development of marketing concepts; rental of advertising material; arranging advertising contracts, rental of advertising films; rental of advertising space, including in electronic form on the Internet; business management; business administration; office functions; systemization and compilation of data in computer databases; updating of data in computer data bases, administrative processing of purchase orders for goods and services (Including teleshopping ), in particular order taking, order processing, order routing, handling of complaints and supply demands and placement of orders; provision of information (Information) and consultancy for consumers in trade and business affairs [consumer advice ]; publication of printed matter for advertising purposes.
Class 38: Telecommunications, electronic transmission and routing of voice, images, documents, messages and data, telephone services, including through a hotline or call center; mobile radio telephone services, email services, fax services, services of press agencies, providing access to data bases on computer networks; leasing access time to computer databases, electronic display, broadcast and transmission of film, television, radio, videotext, teletext programs or transmissions; providing access to information and information services for retrieval from the Internet and from other data networks, providing access to information on the Internet about computer games, video games, and information about so related products; telecommunications by means of platforms and portals on the Internet, in particular by means of an on line information center for customer service related to publishing products, advice and Information about telecommunications; providing access to a global computer network; conference call services, rental of telecommunication equipment; providing telecommunications channels for teleshopping services and electronic marketplaces; electronic exchange of messages via chat lines, chat roams and Internet forums; forwarding of messages of all kinds to Internet addresses (Web messaging ); procuring access to data bases.
Class 41: Entertainment, in particular radio and television entertainment, and entertainment on the Internet, advice and information an entertainment, even on the Internet, conducting games on the Internet, film production, video production, production of radio, television and radio broadcasts; create texts (except for advertising purposes), in particular for video and teletext programs; movie rental [Movie Rental]; publication of printed matter other than for advertising purposes), in particular of magazines, newspapers, books; education; training; sports and cultural activities.
Class 42: Technical advice; server administration, electronic data storage and electronic data security, even In computer databases; design and development of programs for data processing, design and creating home pages and Internet pages; rental and maintenance of memory space far websites, for others (hosting); investigations and research in data bases and on the Internet for computer technology and scientific research, advice and information about telecommunications technology; providing or rental of electronic memory space (webspace) on the Internet, rental of computer software.
The contested services are the following:
Class 35: Subscription to a television channel; Arranging subscriptions to telecommunication services for others; Audience rating determination for radio and television broadcasts; Advertisement and publicity services by television, radio, mail; Negotiation and conclusion of commercial transactions for third parties via telecommunication systems; Assistance in the operation or management of commercial or industrial companies, franchise-issuing in relation to business management assistance, business management and organisation advice and consultancy, business appraisals, reports and investigations, business management assistance and consultancy, market studies, market research, advertising; Promotion, advertising and marketing of on-line websites; Exhibitions for commercial or advertising purposes; Retailing in shops and via global computer networks of telephony goods, image and sound transmitters and receivers and data processing equipment and computers and recorded computer programs.
Class 38: Telecommunication services; Television broadcasting; Wireless transmission and broadcasting of television programmes; Television broadcasting; Subscription television broadcasting; Simulcasting broadcast television over global communication networks, the Internet and wireless networks; Broadcasting and transmission of information via networks or the Internet; Broadcasting services; Electronic transmission of data and documents via computer terminals and electronic devices; Telecommunication of information (including web pages); Webcasting services; News agencies, transmission of news and daily events, sending of telegrams; Broadcasting services relating to Internet protocol TV; Provision of access to Internet protocol TV; Internet access services; Provision of wireless application protocol services including those utilising a secure communications channel; Providing telecommunication channels for teleshopping services; Rental of communications channels; Rental of radio transmission apparatus; rental of apparatus for the broadcast of video and audio signals.
Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Television and radio programme preparation and production; Production of television and radio programs.
The terms ‘in particular’ and ‘including’, used in the applicant’s and opponent’s lists 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, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).
However, the term ‘namely’, used in the opponent´s lists of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 services in Class 35
The opponent’s business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity. These services as well as the opponent’s advertising overlap with the contested assistance in the operation or management of commercial or industrial companies, franchise-issuing in relation to business management assistance, business management and organisation advice and consultancy, business appraisals, reports and investigations, business management assistance and consultancy, market studies, market research, advertising; audience rating determination for radio and television broadcasts. Therefore, they are identical.
The contested advertisement and publicity services by television, radio, mail; promotion, advertising and marketing of on-line websites are included in, or overlap with, the opponent’s advertising, in particular radio, television, cinema, print, videotext and teletext advertising, public relations [ public Relations], development of marketing concepts. Therefore, they are identical.
The contested exhibitions for commercial or advertising purposes consist of the arrangement of events, presentations, exhibitions to facilitate or encourage the promotion and sale of the client’s goods and services. As such, the services in question are to be considered similar to the opponent´s advertising (see decision of 01/12/2014, R 557/2014-2, TRITON WATER (fig.) / TRITON COATINGS TRITON (fig.) et al., § 31), as their purpose and the public they are directed at are the same. They can also be rendered by the same entities.
The contested subscription to a television channel; arranging subscriptions to telecommunication services for others; negotiation and conclusion of commercial transactions for third parties via telecommunication systems are similar to a low degree to the opponent’s business management. This is because the contested services refer to the arranging of contracts, including subscriptions, which are all more of a business intermediary service: a third party puts sellers and buyers in contact, negotiates between them and receives a commission for this service. Both of the opponent’s services are also aimed at supporting or helping other businesses to do business or to improve their businesses. To that extent, these services may have the same purpose. Companies providing business management services may also provide services such as the negotiation of business contracts for third parties. Finally, both services target the same professional public.
Finally, the contested retailing in shops and via global computer networks of telephony goods, image and sound transmitters and receivers and data processing equipment and computers and recorded computer program are similar to the opponent´s apparatus for recording, transmission or reproduction of sound, images and data; data processing equipment and computers, computer software [recorded or downloadable] in Class 9. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because 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.
All the contested services are included in the broad category of the opponent´s telecommunications. Therefore, they are identical.
Contested services in Class 41
All the contested services, namely education; providing of training; entertainment; sporting and cultural activities; television and radio programme preparation and production; production of television and radio programs are identical to the opponent’s services, either because they are identically contained in both lists (including synonyms) or because the opponent’s entertainment; production of radio, television and radio broadcasts; education; training; sports and cultural activities include the contested services.
b) 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 varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.
c) The signs
Earlier trade mark
The relevant territory is Germany.
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 composed of the words ‘Movie’ and ‘Star’ and a personalised depiction of the latter.
As regards the verbal elements ‘Movie’ and ‘Star’, they form an English expression, which the relevant public will understand as a reference to a famous actor or actress. This is because this expression is widely used, also in the non-English speaking countries including Germany, and, as the words ‘movie’ and ‘star’ function in German as loanwords from English (der Movie: ‘American name for: film, cinema’, information extracted on 25/09/2020 from Duden at https://www.duden.de/rechtschreibung/Movie and der Star: ‘someone who has achieved fame in a certain field’ at https://www.duden.de/rechtschreibung/Star_Kuenstler_Beruehmtheit). As a whole the distinctiveness of this expression is low with regard to the goods and services having their subject matter related to movie stars (e.g. education, training, easing access time to computer databases, electronic display, broadcast and transmission of film, television, radio, videotext, teletext programs or transmissions), but normal distinctiveness with regard to the remaining services (e.g. email services, fax services).
The figurative element of a star reinforces the abovementioned concept conveyed by the verbal elements and therefore shares their level of distinctiveness. However, when signs consist of both verbal and figurative components, 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).
The contested sign is a mark composed of two verbal elements and a figurative device. The first verbal element ‘MOVISTAR’, as such, does not exist in German. However, the word ‘STAR’ within it will be easily identified. Moreover, at least part of the public will perceive the sign as a misspelling of ‘movie star’ or will associate the sign with this expression due to their phonetic proximity or the common inaccurate recollection of the spelling of loanwords (especially if put on services that could have a relation to films). For this part of the public, this element will have reduced distinctiveness for some of the services (e.g. television broadcasting). Nevertheless, for the remaining public and for the remaining services the distinctiveness of this element as a whole is normal (e.g. retailing in shops and via global computer networks of telephony goods).
The relevant public will identify the English verbal element ‘series’ with the German word ‘serie’ meaning ‘a coherent sequence’, ‘number of products of the same type manufactured in the same design’, ‘sequence of programs, publications of books, articles… that belong together in terms of content, thematically and which usually take place at regular intervals’ (extracted on 25/09/2020 from Duden at https://www.duden.de/rechtschreibung/Serie). Although the German plural of this particular word is different, adding ‘S’ is also a way of forming plural in German, for example, in case of words of foreign origin. Therefore, it is likely that the consumers will associate it accordingly. As the meaning of this verbal element directly informs the public that the services are a part of a series/line, it is non-distinctive.
As for figurative green device of the contested sign depicting a stylised letter ‘M’ in a circle, it will be perceived merely as a depiction of the first letter of the first verbal element of the sign ‘MOVISTAR’, and therefore, in itself, does not add much distinctiveness and conceptual content to the mark. This is because it is common practice for manufacturers and service providers to form figurative elements on the basis of the first letter(s) of the verbal components of the signs. Therefore, the relevant consumers are accustomed to this practice and will generally regard the letter ‘M’ as emphasis added to the verbal element.
Visually, the signs coincide in ‘MOVI*STAR’. They differ in the additional letter ‘E’ in the middle of the earlier sign. They also differ in the composition of the elements in the earlier mark, where upper- and lowercase letters are used to visually split the verbal element into two parts. Finally, they differ in the additional elements of both marks, that is their figurative elements (including the ‘M’ device) and the verbal element ‘SERIES’ of the contested sign.
It must be borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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, as the similarity resides within the sole verbal element of the earlier mark and the first verbal element of the contested sign, the signs are similar to an average degree.
Aurally, it is not unlikely that the verbal elements ‘MovieStar’ and ‘MOVISTAR’ will be pronounced in the same way (according to the English pronunciation of the words ‘movie star’) by part of the public associating them with the same concept due to the imperfect recollection of the spelling (for the reasons set out above). In such case, the signs will be identical with regard to this element and the sole difference between them will be in the additional non-distinctive element ‘SERIES’ in the contested sign.
However, part of the public will not associate the contested sign with the English expression ‘movie star’ (especially if it is put on services with no relation to movies or cinema) and, therefore, this part of the public will pronounce it according to the German pronunciation rules. In such a case, the earlier mark and the first element of the contested sign will differ in one sound /mu:vi:star/ versus /mo:vi:star/. The addition verbal element ‘SERIES’ will create another difference.
Therefore, depending on the public’s perception of the contested sign, the signs are aurally similar to an average to high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Part of the public will associate both with a ‘movie star’, part will only perceive the concept of ‘a star’ in the contested sign. However, the additional element ‘SERIES’ due to its non-distinctive character will not influence the conceptual comparison of the signs as it will not be perceived as a badge of origin.
Therefore, the conceptual similarity varies depending on the public, but is at least average due to the overlap in the concept of a star.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
d) 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for some of the goods and services in question, namely the ones having ‘movie stars’ as their subject matter. The mark has a normal degree of distinctiveness for the remaining goods and services in relation to which it has no descriptive or otherwise non-distinctive meaning from the perspective of the public in the relevant territory.
e) Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
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).
In the present case, eight out of nine letters of the earlier mark are included in the same positions in the contested sign’s first element. The signs differ in the additional letter ‘E’ in the middle of the earlier mark (that is the last letter of its first word), which usually attracts less attention and might be not spotted by the public. Phonetically, ‘MovieStar’ and ‘MOVISTAR’ will either be pronounced identically or almost identically as explained in section c) of the decision. The marks will also be associated at least with the concept of a celebrity, famous person, due to the clearly identifiable ‘STAR’ in both. It must be borne in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, it must be considered that a difference in the middle letter of words that could be perceived as loanwords, could be easily overlooked.
As for the stylisation of the signs and the additional verbal element ‘SERIES’ in the contested sign, it is conceivable that the differences will be noticed by the consumers. Nevertheless, this does not exclude the possibility of a likelihood of confusion on the part of the public. This is because it is common practice for manufacturers and service providers to make variations in their trade marks, for example by altering the font or colours, or by adding verbal or figurative elements to endow them with a new, modern image. Consumers are well accustomed to marks being stylised and embellished with logotypes and other devices (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).
The applicant argues that its EUTM has a reputation and filed various items of evidence to substantiate this claim.
The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well founded on the basis of the opponent’s German trade mark registration. It follows that the contested trade mark must be rejected for all the contested services.
Since the opposition is 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Marta Maria CHYLINSKA
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.