OPPOSITION No B 2 534 884

Viva Media GmbH, Stralauer Allee 6, 10245  Berlin, Germany (opponent), represented by R.G.C. Jenkins & Co, 26 Caxton Street, London  SW1H  0RJ, United Kingdom (professional representative)

a g a i n s t

Cooperativa Madrileña de Ferreteros-Comafe S.Coop., Calle Rey Pastor nº 8, 28914 Leganés (Madrid), Spain (applicant), represented by José Francisco Ibáñez González, Plaza Conde del Valle de Suchil, 3 - 1º I, 28015 Madrid, Spain (professional representative).

On 24/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 534 884 is upheld for all the contested services, namely:

Class 38: Telecommunication services.

2. European Union trade mark application No 13 767 108 is rejected for all the contested services. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 767 108, namely against all the services in Class 38. The opposition is based on, inter alia, European Union trade mark registration No 5 062 039. The opponent invoked Article 8(1)(b), 8(5) and 8(4) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 5 062 039.

1. The goods and services

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

Class 38: Broadcasting and transmission of radio and television programmes; broadcasting of cinematographic films and of audiovisual programmes; broadcasting, dissemination and transmission of visual images, audio information, graphics, data and other information, using radio, telecommunications apparatus, electronic media or the internet; cable and satellite broadcasting and transmission services; wireless mobile phone services; providing wireless transmission of uploading and downloading ring tones, voice, music, MP3s, graphics, games, video images, information and news via a global computer network to a wireless mobile communication device; sending and receiving voice and text messages between wireless mobile communications; providing on-line voting system via the internet or a wireless communication device; internet services including communication services, namely transmitting streamed sound and audio-visual recordings via the internet; provision of multi-user access to computer networks for the transfer and dissemination of a wide range of information; providing access to downloadable information for wireless mobile communication device.

The contested services are the following:

Class 38: Telecommunication services.

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

The term ‘including’, used in the opponent’s list of services, indicates that the specific 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, also used in the opponent’s list of 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 services.

The contested telecommunication services consist in the science and technology of communication at a distance by transmission of electrical impulses, electromagnetic waves, or optical pulses, as by telephone, radio, television, or computer network. Therefore it encompasses, as a broad category, the opponent’s broadcasting, dissemination and transmission of visual images, audio information, graphics, data and other information, using radio, telecommunications apparatus, electronic media or the internet. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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 identical are directed at the public at large as well as business customers with specific professional knowledge or expertise. Telecommunication services is a broad category of services and the level of attention will, therefore, vary between average and high, depending on the exact content of the services in question.

3. The signs

VIVA
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 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Spanish-speaking part of the relevant public.

The earlier mark is the word mark ‘VIVA’. It has no element considered to be more distinctive or dominant (visually eye-catching) than other elements. Moreover, it must be borne in mind that, in the case of the earlier word mark, the word as such is protected, not its written form. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RADIOCOM, ECR II-80, ECLI :EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is represented in lower or upper case letters.

The contested sign consists of a dark-blue rectangle containing stone-like devices, the larger one in pink and two smaller ones to the right in white. The larger device contains the verbal element ‘vivahogar’ and, underneath it, in a much smaller size, the expression ‘BEAUTY IS SMART’, all in white lettering, with the letter combination ‘VIVA’ in bold.

The verbal elements ‘viva’ and ‘hogar’ are written in different typescripts, and therefore the relevant public will most likely regard them as two distinct components, despite the fact that they are not separated by a space.

The English word ‘SMART’ in the contested sign will be understood by the relevant public as meaning ‘operating as if by human intelligence by using automatic computer control’ (information extracted from the Collins English Dictionary on 18/07/2016) because it is a basic English word commonly used in the telecommunications field throughout the European Union, for example in expressions such as ‘Smart-TV’ or ‘Smartphone’. Therefore, this verbal element is considered to have a low degree of distinctive character in relation to telecommunications services. Moreover, the verbal expression ‘BEAUTY IS SMART’ in the contested sign will be seen as a promotional advertising slogan by the English-speaking part of the relevant public, which will not attribute too much importance to it as a whole due to its low degree of distinctiveness.

The blue rectangle in the contested sign is not considered to be distinctive, as it is a common geometric shape widely used in trade marks and is merely of a decorative nature.

The verbal element ‘hogar’ and the verbal expression ‘BEAUTY IS SMART’ are less dominant than the other, most prominent, element, ‘viva’, of the contested sign, the former because it is in a lighter typeface and the latter because of its much smaller size.

Visually, the signs coincide to the extent that the earlier mark, ‘VIVA’, is reproduced at the beginning of the contested sign. The position of the coinciding element is particularly important, as consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Moreover, it must be emphasised that the coinciding element is also the dominant verbal element of the contested sign.

The signs differ in the additional figurative and verbal elements, ‘hogar’ and ‘BEAUTY IS SMART’, of the contested sign although, as explained above, these elements are of secondary importance compared with the most prominent element, ‘viva’. In addition, it must be borne in mind 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). Therefore, the verbal elements of the contested sign are considered to have more impact than its figurative components, in particular its dominant verbal element, ‘viva’.

In the light of the foregoing, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘VIVA’, which constitute the entirety of the earlier mark and are reproduced at the beginning of the contested sign, which is the part to which consumers will pay most attention.

The pronunciation differs in the sound of the letter combination ‘hogar’, which has no counterpart in the earlier sign. It is considered unlikely that the verbal expression ‘BEAUTY IS SMART’ of the contested sign will be pronounced because of its much smaller lettering, which is barely legible.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the verbal element ‘VIVA’, present in both signs, will be seen by a part of the relevant public as an exclamation expressing approval or support, given that it is used as such in several Member States of the European Union, for example the United Kingdom, Italy or Portugal, and has close equivalents in others, such as France (vive).

The secondary verbal element, ‘hogar’, in the contested sign has no particular meaning for the relevant public and will be seen as a fanciful or foreign word.

The verbal expression ‘BEAUTY IS SMART’ in the contested sign will be understood by the English-speaking part of the public. Moreover, as seen above, the English word ‘SMART’ will be understood by the relevant public as meaning ‘operating as if by human intelligence by using automatic computer control’ (information extracted from the Collins English Dictionary on 18/07/2016). Nevertheless, it has been shown above that the importance of the aforementioned elements is limited due to their secondary character, as well as their low degree of distinctiveness for the English-speaking part of the public, if not all the relevant public in the case of the word ‘SMART’ in relation to telecommunications services.

The stone-like devices of the contested sign will be perceived as such by the relevant public.

As a result, for the part of the public that will perceive a meaning in the verbal element ‘VIVA’, the signs are conceptually similar to an average degree.

As for the rest of the public, since the earlier sign will not be associated with any meaning, the signs are not conceptually similar.

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.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the 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.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or 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, the relevant public is composed of the general public and professionals. The degree of attention varies between average and high.

The contested services are identical to the services covered by the earlier mark.

The earlier mark ‘VIVA’ is entirely reproduced at the beginning of the contested sign, in which it is also the dominant verbal element, resulting in visual, aural and conceptual – for some – coincidences. Conversely, the differences between the signs are mostly confined to elements that are secondary and/or have a low degree of distinctiveness or to components having less visual impact.

In addition, it must be borne in mind that the earlier mark has, at least, a normal degree of distinctiveness.

Account is taken of the fact 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).

Moreover, a heightened degree of attention in the case of specialised services does not automatically lead to a finding of no likelihood of confusion; all other factors have to be taken into account. When there is a strong likelihood of confusion created by other factors, such as close overall similarity of the marks and the identity of the goods, the attention of the relevant public cannot be relied upon to prevent confusion (26/02/2010, R 1562/2008-2, VICTORY SLIMS, § 51).

It must also be borne in mind that 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 or services covered are from the same or economically linked undertakings. Therefore, the reproduction of the earlier mark in the contested sign is considered sufficient to find a likelihood of confusion.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks registered in Class 38 that include the element ‘VIVA’. In support of its argument, the applicant refers to various European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘VIVA’ in relation to telecommunication services. Under these circumstances, the applicant’s claims must be set aside.

The applicant refers also 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings because, in the judgment of 29/09/2011, T‑107/10, Naturaviva, EU:T:2011:551, the coinciding letters, ‘VIVA’, are at the end of the contested sign, unlike in the present case, and the goods and services involved are not in the same classes. Therefore, the findings therein cannot apply to the case in question.

Considering all the above, there is a likelihood of confusion on the part of the non-Spanish speaking part of the public. 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 well founded on the basis of the opponent’s European Union trade mark registration No 5 062 039. 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.

As earlier European Union trade mark registration No 5 062 039 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 grounds of the opposition, namely Article 8(5) and 8(5) EUTMR.

COSTS

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Loreto URRACA LUQUE

Marta GARCÍA COLLADOMarion GAILLARD

Vít MAHELKA

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.