OPPOSITION No B 2 621 574

John Hayes Mabley, 111 Clarence Road Wimbledon, London SW19 8QB, United Kingdom (opponent), represented by Clarion Solicitors Limited, Elizabeth House, 13-19 Queen Street, Leeds, West Yorkshire LS1 2TW, United Kingdom (professional representative)

a g a i n s t

Hasta que la Muerte nos Separe S.L., Av. de Fuencarral 44, Bloque 6, local 34, 28108 Alcobendas, Spain (applicant), represented by Alexandra Juanas Fabeiro, Calle Conde de Aranda, 20-2º Izda., 28001 Madrid, Spain (professional representative).

On 14/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 621 574 is partially upheld, namely for the following contested services:

Class 41: Circuses; Entertainment in the nature of circuses; Theatre entertainment; Presentation of dramas; Organising of theatre productions; Provision of theatre facilities; Theatre booking services; Artistic management of theatre shows; Planning of plays or musical shows; Direction or presentation of plays; Performance of dance, music and drama; Live entertainment services; Live music performances; Theatrical performances both animated and live action; Cabarets and discotheques; Live musical concerts; Special event planning consultation; Live demonstrations for entertainment; Artistic direction of performing artists; Directing of musical shows; Directing of theatrical shows; Directing of plays; Live entertainment; Musical entertainment; Entertainment by means of concerts; Entertainment by means of roadshows; Interactive entertainment services; Entertainment in the nature of theatre productions; Live comedy shows; Hypnotist shows [entertainment]; Theatrical floor shows provided at performance venues; Providing cultural activities; Provision of recreational activities; Provision of live entertainment; Provision of live shows; Providing information on entertainment through computer networks; Artistic management of musical shows; Road shows being entertainment services; Information relating to entertainment, provided on-line from a computer database or the internet; Entertainment information; Organisation of live performances; Arranging of demonstrations for entertainment purposes; Organising of entertainment; Organisation of shows; Organization of shows for cultural purposes; Organization of cultural shows; Organisation of comedy shows; Organising of shows for entertainment purposes; Organising of stage shows; Arranging of music performances; Organising events for cultural purposes; Organisation of events for cultural, entertainment and sporting purposes; Organising events for entertainment purposes; Organizing cultural and arts events; Organisation of entertainment and cultural events; Organising of sporting events, competitions and sporting tournaments; Musical events (Arranging of -); Organising of recreational events; Arranging of festivals for cultural purposes; Festivals (Organisation of -) for recreational purposes; Arranging of festivals for entertainment purposes; Arranging and conducting of concerts; Organization, production and presentation of theatrical performances; Planning of shows; Preparation of special effects for entertainment purposes; Preparing subtitles for live theatrical events; Presentation of concerts; Presentation of musical concerts; Magic shows (Presentation of -); Presentation of live comedy shows; Presentation of musical performance; Entertainment services; Production of live performances; Theater productions; Production of cabarets; Production of shows; Production of comedy shows; Production of entertainment shows featuring instrumentalists; Production of entertainment shows featuring dancers; Production of entertainment shows featuring dancers and singers; Production of entertainment shows featuring singers; Production of live shows; Production of stage shows; Production of music shows; Production of plays; Provision of cinema or theatre facilities; Theatre productions; Theatrical performances, music performances; Presentation of live performances; Booking of seats for shows; Entertainer services; Advisory services relating to entertainment; Cabarets; Club [cabaret] services; Comedy club services; Music composition services; Singing concert services; Entertainment; Entertainer services utilizing circus skills; Entertainment services in the form of concert performances; Entertainment services for producing live shows; Popular entertainment services; Musical entertainment services; Entertainment services provided by vocalists; Entertainment in the nature of magic shows; Entertainment services by stage production and cabaret; Animated musical entertainment services; Magic show services; Services providing entertainment in the form of live musical performances; Leisure services; Clowning; Audio-visual display presentation services for entertainment purposes; Show production services; Live show production services; Theatre services.

2. European Union trade mark application No 13 780 424 is rejected for all the above services. It may proceed for the remaining goods and services, namely:

Class 16: Printed matter.

Class 35: Advertising.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 780 424. The opposition is based on European Union trade mark registration No 453 068. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) 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 25: Articles of clothing, headwear and footwear.

Class 41: Entertainment services; circuses and circus services.

The contested goods and services are the following:

Class 16: Printed matter.

Class 35: Advertising.

Class 41: Circuses; Entertainment in the nature of circuses; Theatre entertainment; Presentation of dramas; Organising of theatre productions; Provision of theatre facilities; Theatre booking services; Artistic management of theatre shows; Planning of plays or musical shows; Direction or presentation of plays; Performance of dance, music and drama; Live entertainment services; Live music performances; Theatrical performances both animated and live action; Cabarets and discotheques; Live musical concerts; Special event planning consultation; Live demonstrations for entertainment; Artistic direction of performing artists; Directing of musical shows; Directing of theatrical shows; Directing of plays; Live entertainment; Musical entertainment; Entertainment by means of concerts; Entertainment by means of roadshows; Interactive entertainment services; Entertainment in the nature of theatre productions; Live comedy shows; Hypnotist shows [entertainment]; Theatrical floor shows provided at performance venues; Providing cultural activities; Provision of recreational activities; Provision of live entertainment; Provision of live shows; Providing information on entertainment through computer networks; Artistic management of musical shows; Road shows being entertainment services; Information relating to entertainment, provided on-line from a computer database or the internet; Entertainment information; Organisation of live performances; Arranging of demonstrations for entertainment purposes; Organising of entertainment; Organisation of shows; Organization of shows for cultural purposes; Organization of cultural shows; Organisation of comedy shows; Organising of shows for entertainment purposes; Organising of stage shows; Arranging of music performances; Organising events for cultural purposes; Organisation of events for cultural, entertainment and sporting purposes; Organising events for entertainment purposes; Organizing cultural and arts events; Organisation of entertainment and cultural events; Organising of sporting events, competitions and sporting tournaments; Musical events (Arranging of -); Organising of recreational events; Arranging of festivals for cultural purposes; Festivals (Organisation of -) for recreational purposes; Arranging of festivals for entertainment purposes; Arranging and conducting of concerts; Organization, production and presentation of theatrical performances; Planning of shows; Preparation of special effects for entertainment purposes; Preparing subtitles for live theatrical events; Presentation of concerts; Presentation of musical concerts; Magic shows (Presentation of -); Presentation of live comedy shows; Presentation of musical performance; Entertainment services; Production of live performances; Theatre productions; Production of cabarets; Production of shows; Production of comedy shows; Production of entertainment shows featuring instrumentalists; Production of entertainment shows featuring dancers; Production of entertainment shows featuring dancers and singers; Production of entertainment shows featuring singers; Production of live shows; Production of stage shows; Production of music shows; Production of plays; Provision of cinema or theatre facilities; Theatre productions; Theatrical performances, music performances; Presentation of live performances; Booking of seats for shows; Entertainer services; Advisory services relating to entertainment; Cabarets; Club [cabaret] services; Comedy club services; Music composition services; Singing concert services; Entertainment; Entertainer services utilizing circus skills; Entertainment services in the form of concert performances; Entertainment services for producing live shows; Popular entertainment services; Musical entertainment services; Entertainment services provided by vocalists; Entertainment in the nature of magic shows; Entertainment services by stage production and cabaret; Animated musical entertainment services; Magic show services; Services providing entertainment in the form of live musical performances; Leisure services; Clowning; Audio-visual display presentation services for entertainment purposes; Show production services; Live show production services; Theatre services.

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 16

The contested printed matter is dissimilar to the opponent’s goods and services in Classes 25 (items of clothing, footwear and headgear) and 41 (entertainment services). These sets of goods and services differ in nature, purpose and method of use. They do not have the same commercial origin and distribution channels. They are not in competition with each other or complementary either. Therefore, they are considered dissimilar.

Contested services in Class 35

The contested advertising 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, who 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.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. Contrary to the arguments of the opponent the contested advertising has no relevant connection with the opponent’s entertainment services or the opponent’s goods in Class 25. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is not similar to the goods or services being advertised and the contested services are dissimilar to the opponent’s goods and services.

Contested services in Class 41

The contested circuses; entertainment in the nature of circuses; entertainment services; entertainment are identically contained in both lists of services (including synonyms).

The opponent’s entertainment services are a broad range of activities that may take many forms and cover any service that entertains or amuses people. Consequently, the contested theatre entertainment; performance of dance, music and drama; live entertainment services; live music performances; theatrical performances both animated and live action; cabarets and discotheques; live musical concerts; live demonstrations for entertainment; live entertainment; musical entertainment; entertainment by means of concerts; entertainment by means of roadshows; interactive entertainment services; entertainment in the nature of theatre productions; live comedy shows; hypnotist shows [entertainment]; theatrical floor shows provided at performance venues; provision of live entertainment; provision of live shows; road shows being entertainment services; theatrical performances, music performances; entertainer services; cabarets; club [cabaret] services; comedy club services; popular entertainment services; musical entertainment services; entertainment services provided by vocalists; entertainment in the nature of magic shows; entertainment services by stage production and cabaret; animated musical entertainment services; magic show services; services providing entertainment in the form of live musical performances; clowning; theatre services are included in the broad category of the opponent’s entertainment services. Therefore, they are identical.

The contested presentation of dramas; organising of theatre productions; provision of theatre facilities; theatre booking services; artistic management of theatre shows; planning of plays or musical shows; direction or presentation of plays; special event planning consultation; artistic direction of performing artists; directing of musical shows; directing of theatrical shows; directing of plays; providing information on entertainment through computer networks; artistic management of musical shows; information relating to entertainment, provided on-line from a computer database or the internet; entertainment information; organisation of live performances; arranging of demonstrations for entertainment purposes; organising of entertainment; organisation of shows; organisation of comedy shows; organising of shows for entertainment purposes; organising of stage shows; arranging of music performances; organisation of events for entertainment purposes; organising events for entertainment purposes; organisation of entertainment events; musical events (arranging of -); arranging of festivals for entertainment purposes; arranging and conducting of concerts; organization, production and presentation of theatrical performances; planning of shows; preparation of special effects for entertainment purposes; preparing subtitles for live theatrical events; presentation of concerts; presentation of musical concerts; magic shows (presentation of -); presentation of live comedy shows; presentation of musical performance; production of live performances; theatre productions; production of cabarets; production of shows; production of comedy shows; production of entertainment shows featuring instrumentalists; production of entertainment shows featuring dancers; production of entertainment shows featuring dancers and singers; production of entertainment shows featuring singers; production of live shows; production of stage shows; production of music shows; production of plays; provision of cinema or theatre facilities; theatre productions; presentation of live performances; booking of seats for shows; advisory services relating to entertainment; music composition services; singing concert services; entertainer services utilizing circus skills; entertainment services in the form of concert performances; entertainment services for producing live shows; audio-visual display presentation services for entertainment purposes; show production services; live show production services are in essence entertainment production services, artistic management and directing services, services of organization and presentation of various entertainment events, booking services, etc. These services are at least similar to the opponent’s entertainment services; circuses and circus services. This is because they have the same purpose and may coincide in service provider and relevant public.

The contested providing cultural activities; provision of recreational activities; organization of shows for cultural purposes; organization of cultural shows; organising events for cultural purposes; organisation of events for cultural and sporting purposes; organizing cultural and arts events; organisation of cultural events; organising of sporting events, competitions and sporting tournaments; organising of recreational events; arranging of festivals for cultural purposes; festivals (organisation of -) for recreational purposes; leisure services are various cultural and sports related services. They are similar to the opponent’s entertainment services; circuses and circus services, as they have the same purpose and may coincide in relevant public and distribution channels.

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 or similar are directed at the public at large and at professionals, particularly in the field of entertainment. The degree of attention is considered to vary from average to high depending on the specific services in question and the degree of expertise they imply.

3. The signs

CIRCUS OF HORRORS
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 English-speaking part of the relevant public.

The earlier mark is a word mark consisting of the verbal elements ‘CIRCUS OF HORRORS’.

The contested sign is a figurative mark and consists of the verbal elements ‘CIRCO’, ‘DE LOS’ (separated by a red dot) and ‘HORRORES’, appearing on three levels one above the other between two red lines. The words are written in slightly stylised uppercase red letters.

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements. As regards the contested sign, it is considered that it also has no element that could be considered clearly more dominant (visually eye-catching) than other elements. The applicant argues that the element ‘CIRCO’ is the dominant element of the contested sign. However, the Opposition Division notes that, in spite of the fact that it is slightly bigger than ‘DE LOS HORRORES’, it cannot be said that it is the sole dominant element. This is because the words ‘DE LOS HORRORES’ are clearly noticeable and are in no way overshadowed by the element ‘CIRCO’.

The earlier trade mark contains words in English and will be understood as a combination of the meaning of the words it consists of, namely ‘a traveling company of acrobats, clowns, and other entertainers that gives performances causing a feeling of fear, shock, or disgust’. The words ‘CIRCO DE LOS HORRORES’ included in the contested sign are in Spanish, but will nevertheless be understood by a substantial part of the relevant English-speaking public as referring to ‘circus of horrors’, as the expression is very close to its English language equivalent and, in particular, to the words ‘circus’ and ‘horrors’. The words ‘de los’ have no particular meaning in English but in view of their smaller length and positioning between the words ‘circo’ and ‘horrores’ they look subordinate to them. Bearing in mind that the relevant services are related to entertainment and/or circuses, it is considered that the inherent distinctiveness of these elements is low as it may indicate the nature, subject matter and/or genre of the services.

Visually, the signs coincide in the sequence of letters ‘CIRC- HORROR-S’ and differ in ‘-US’ and ‘of’ of the earlier mark and ‘-O’, ‘de los’ and the additional ‘-E’ of ‘horrores’ of the contested sign. The main coincidences in the signs are in their verbal elements ‘CIRCUS OF HORRORS’ and ‘CIRCO DE LOS HORRORES’. While it is indeed true that these elements have low distinctiveness, the remaining differences between the signs are found in very few occasional letters. As regards the colour and font of the letters, the red dot and lines in the contested sign, their role is not very strong. This is because 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).

Consequently, in view of all of the above findings, it is considered that the signs are visually similar to a lower than average degree.

Aurally, the coincidences in the signs are due to the sound of the identical letters in the elements ‘CIRCUS OF HORRORS’ of the earlier sign and ‘CIRCO DE LOS HORRORES’ of the contested sign. The pronunciation differs in the sound of the different letters in these elements. The similarities are due to elements with weak inherent distinctiveness. Therefore, it is considered that the signs are aurally similar to a lower than average degree.

Conceptually, as mentioned above, the public in the relevant territory will associate the signs with the same concepts of ‘circus’ and ‘horrors’. The words ‘de los’ have no particular meaning in English. Consequently, the signs have the same concepts of ‘circus’ and ‘horrors’ in common, although the impact of this conceptual overlap must be given its appropriate weight, bearing in mind the weak inherent distinctiveness of these elements. Consequently, taking into account the mentioned circumstances, it is considered that 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.

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 trade mark has a reputation and enjoys a high degree of distinctiveness as a result of its long standing and intensive use among the relevant public in the United Kingdom in connection with part of the goods and services for which it is registered, namely entertainment services; circuses and circus services in Class 41. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

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:

• Annex 1: Copy of the registration of the opponent’s earlier mark.

• Annex 2: Selection of flyers and posters in relation to the ‘Circus of horrors’ show in Germany dated in 1996 and 1997.

• Annex 3- Screenshots sourced from the ‘Internet Archive Wayback Machine’ at https://web.archive.org, showing numerous ‘Circus of Horrors’ tour dates and venues (including contact and booking information) throughout the United Kingdom in 2003, 2004, 2005 (Tenth Anniversary Tour 2005), 2006, 2007, 2008, 2009, 2010, 2011, 2012, 2013, 2014 and 2015.

• Annex 4 – An article entitled ‘Under the skin with the Circus of Horrors’ from bbc.co.uk dated 26/01/2004. The article is advertising the show’s coming to Somerset and it is mentioned, inter alia, that ‘eight years have passed since the Circus of Horrors reared its head at Glasto’.

• Annex 5 – Screenshot of the Pavilion Theatre Glasgow website from 12/02/2006 advertising a forthcoming ‘Circus of Horrors’ performance, including dates, booking information and prices. It is mentioned that ten years passed since the participation of the ‘Circus of Horrors’ at the Glastonbury Festival’96. There are reviews form two people commenting on the ‘Circus of Horrors’ shows.

• Annex 6: An article dated 06/01/2011 from the national newspaper ‘the Guardian’ (a British national newspaper with an average estimated daily paper circulation of over 200,000) which reviews the ‘Circus of Horrors’ show, which as stated in the article ‘began life at Glastonbury 15 years ago’.

• Annex 7 – Article entitled ‘The Circus of Horrors at Cliffs Pavilion, Southend’ dated 18/01/2012 from ‘The Times’ (a British national newspaper with an average estimated daily paper circulation of over 350,000) which reviews the ‘Circus of Horrors’ show and mentions, inter alia, that the circus ‘has nearly 60 British gigs scheduled during the next three months’ and mentions its participation in Britain’s Got Talent show in 2011.

• Annex 8 – Selection of ‘Circus of Horrors’ promotional flyers relating to numerous performances in the UK dated in 2007, 2009, 2010, 2011, 2012, 2013, 2014, 2015 and 2016.

• Annex 9 – Article about ‘The Circus of Horrors’ from ‘The Sun’ (a British national newspaper with an average estimated daily paper circulation of over 2,000,000) which reviews a ‘Circus of Horrors’ show stage act from the current tour and includes an overview of the circus over the years.

• Annex 10 - Article entitled ‘Britain’s got talent act Circus of Horrors have already worked with Ant and Dec’ dated 15/04/2011 from ‘The Daily Mirror’ (a British national newspaper with an average estimated daily paper circulation of over 900,000) which reviews the ‘Circus of Horrors’ shows and mentions, inter alia, that the circus ‘were one of the acts signed up for Prince Charles’ 50^th birthday party in 1998’.

• Annex 11 – Screenshot of the stills from YouTube demonstrating the number of views of the ‘The Circus of Horrors-Britain’s Got Talent 2011 Audition’ (viewed over 748,000 times).

• Annex 12 – Article in relation to ‘Britain’s got talent unusual ‘Circus of Horrors’ act’ dated 14/05/2011 from ‘Metro’ (a free newspaper published in a tabloid format in the UK with an average estimated daily circulation of over 1,000,000).

• Annex 13 – Screenshot of the advertisement for the BBC One ‘One Show’ (a main stream television show in the UK) of 28/02/2014 featuring the ‘Circus of Horrors’.

• Annex 14 – Extract of an article from the Lyric Theatre in London’s West End mentioning that the ‘Circus of Horrors’ show ran from 28 October 2013 to 15 December 2013 at the Lyric Theatre.

• Annex 15 – Screenshots from 2015, 2014, 2013, 2012, 2011 and 2010 of the official Facebook page www.facebook.com/TheCircusOfHorrors showing various posts and that it has over 19,500 likes.

• Annex 16 – Screenshot of official Twitter page of the ‘Circus of Horrors’ showing it has over 8,000 followers.

• Annex 17 – Screenshot of YouTube illustrating ‘Circus of Horrors’ clips of 2012, 2013 and 2014 available to view by the public. For example, the ‘Circus of Horrors 2014/2015 Night of the Zombie’ was viewed over 158,000 times and ‘the Circus of Horrors 2013’ was viewed over 28,000 times.

• Annex 18 – Screenshot of iTunes appstore featuring a ‘Circus of Horrors’ application.

• Annex 19 – Screenshot of ‘Circus of Horrors’ own online merchandise shop at circusofhorrors.co.uk showing various items for sale, such as clothing, mugs, posters, etc.

• Annex 20 – Copy of the ‘Circus of Horrors’ Official Souvenir Brochure 2007 The Asylum – Souvenir Brochure Summary’.

• Annex 21 – Screenshot from amazon.co.uk showing a book for sale, in particular featuring the autobiography of the creator of the ‘Circus of Horrors’.

• Annex 22 – Screenshot showing DVDs for sale on amazon.co.uk, in particular a DVD entitled ‘Undead & Alive’, DVD called the ‘Circus of Horrors - The Asylum’ and the ‘Night of the Zombie’.

• Annex 23 – Screenshot of CDs for sale on amazon.co.uk such as ‘Welcome to the Freakshow’ and ‘From Hell, Beauty & the Beast, Jeepster’.

• Annex 24 –Review (undated) in Spanish about ‘Circus of Horrors’ and an English translation thereof. The opponent indicated it is from a magazine in Spain.

• Annex 25 – Screenshot showing various ‘Circus of Horrors’ merchandise for sale on amazon.es.

• Annex 26 – iTunes Screenshot of ‘Circus of Horrors’ music for sale.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired an enhanced degree of distinctiveness through its use on the market of the United Kingdom.

Taking into account all the pieces of evidence in combination with one another, it cannot be denied that the opponent has used its mark extensively and continuously in the UK since 1995. The press articles, the participation in numerous events throughout the relevant territory as well as the advertisements suggest intensive marketing efforts and use, and show that the trade mark has gained a certain position and recognition in the relevant market.

The applicant argues that the trade mark is not used as registered, as the mark is used with graphic elements. While, indeed there are instances in the evidence, in which the opponent’s sign is represented in different colours and in slightly stylised letters, or at times appears written in two lines, it is considered that these uses are acceptable variations (see by analogy Article 15(1)(a) EUTMR). The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50). In the present case, the slight variations in colour, font or graphic layout of the sign are only graphic changes that are less important than the verbal elements. Consequently, it is considered that the sign is used as registered and/or as acceptable variations.

In conclusion, the evidence shows that there has been extensive use of the trade mark in respect of entertainment services, namely circus performances; circuses and circus services. The evidence suggests that the trade mark enjoys certain awareness on the UK market for these services.

However, the Opposition Division cannot rely on the evidence to conclude that the mark is known by a significant part of the public. Although the opponent provided documents enabling to conclude a certain degree of awareness, the evidence in its totality is not sufficient to prove that the opponent’s mark is reputed in the relevant territory. In order to prove that its mark has acquired reputation the opponent should have filed more evidence showing the market share held by the mark; how intensive the use of the mark has been; the size of the investment made by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the services as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations. This list is not exhaustive. It is, therefore, held that the opponent failed to prove that its trade mark has a reputation in the United Kingdom within the meaning of Article 8(5) EUTMR.

Nevertheless, as mentioned above, the evidence suggests that there is an enhanced distinctiveness in respect of entertainment services, namely circus performances; circuses and circus services. Although the inherent distinctiveness of the earlier mark is low, the intensive use that has been made of the sign has raised its distinctiveness to at least an average degree or slightly above. Therefore, the distinctiveness of the earlier mark must be seen as at least average or higher than normal in respect of these services within the meaning of Article 8(1)(b) EUTMR.

5. Global assessment, other arguments and conclusion

The contested goods and services are partly identical and similar and partly dissimilar to the opponent’s goods and services. The relevant services are directed at the public at large and at professionals and the degree of attention may vary from average to high depending on the specific services.

Taking into account the inherent distinctive character of the earlier mark in relation to the relevant services, the earlier trade mark and the contested sign are visually and aurally similar to a lower than average degree and conceptually similar to an average degree. Some of the contested services are identical to the opponent’s services. Therefore, taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public in relation to identical services.

The finding of a weak distinctive character of the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in cases involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The Opposition Division highlights the fact that, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes owing to their similarities that they are derived from the same undertaking or indeed an economically-linked undertaking. This is clearly the case and the relevant consumer may see the contested mark as being a brand variation for a different line/branch of services, such as its Spanish counterpart.

As regards the remaining contested services that are found similar (listed above in the comparison) to the opponent’s services (namely both to the opponent’s entertainment services and to circuses and circus services), it must be mentioned that account is taken of the fact that the earlier trade mark has acquired an enhanced degree of distinctiveness through its use on the relevant market in respect of entertainment services, namely circus performances; circuses and circus services. 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 (judgment of judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22). Consequently, bearing in mind that the earlier mark enjoys an enhanced distinctiveness for circus performances; circuses and circus services, the UK consumers might believe that even services which are only similar to the opponent’s circuses and circus services originate from the same undertaking as the ‘Circus of Horrors’ mark.

Bearing in mind the foregoing, including the interdependence principle and the enhanced level of distinctiveness of the earlier mark in the relevant territory for entertainment services, namely circus performances; circuses and circus services, it is concluded that there is a likelihood of confusion on the part of the public also in relation to the similar contested services.

In its observations, the applicant argues that it owns several national and an international trade mark registration (a ‘family of marks’) with the words ‘CIRCO DE LOS HORRORES’ in Spain and in Germany, Italy, Portugal and the United Kingdom, some of them coexisting with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). Therefore, the applicant’s claim is dismissed.

In addition, the applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim. In this regard, it is noted that 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 which 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.

The applicant also claims that the opponent has acquiesced in the use of the contested trade mark application. However, it must be underlined that this defence (Article 54(1) and (2) EUTMR) can be invoked in invalidity proceedings and not in opposition proceedings. Therefore, this argument is irrelevant.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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. It follows from the above that the contested trade mark must be rejected for the services found to be identical and similar to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services cannot be successful. For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.

The Opposition Division will now proceed to examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 shall 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 did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the United Kingdom in relation to the services in Class 41.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to the respective findings which are equally valid under Article 8(5) EUTMR.

It was concluded that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Therefore, the opponent failed to prove that the earlier European trade mark registration No 453 068 has a reputation. As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected, as far as it is based on Article 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. 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 shall 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

Gueorgui IVANOV

Liliya YORDANOVA

Denitza STOYANOVA-VALCHANOVA

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.