OPPOSITION No B 2 661 000

Really Epic Dog Ltd, 8 Lincoln’s Inn Field, London WC2A 3BP, United Kingdom (opponent), represented by Reddie & Grose LLP, 16 Theobalds Road, London WC1X 8PL, United Kingdom (professional representative)

a g a i n s t

Raincat Online Services, South Bank House, Barrow Street 6th Floor, Dublin 4, Dublin, Ireland (applicant).

On 24/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 661 000 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 902 308 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 902 308. The opposition is based on inter alia, United Kingdom trade mark registration No 2 655 868, in regard to which the opponent invoked Article 8(1)(b) EUTMR. In regard to other earlier rights, the opponent invoked Article 8(1)(b) and 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.

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 United Kingdom trade mark registration No 2 655 868.

1. The goods and services

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

Class 7: Automatic vending machines.

Class 9: SIM cards, telephone handsets, tablet computers and personal digital assistants; computer software, namely communications software; online digital downloads, namely ringtones, screensavers, wallpapers, MP3 files.

Class 35: Advertising services; business management; business administration; office functions.

Class 41: Entertainment; sporting and cultural activities; electronic games services provided on the internet; online electronic publications and digital music.

Class 42: Scientific and technological services; research and development in relation to technological services; design and development of hardware and software.

The contested goods and services are the following:

Class 9: Computer software for advertising.

Class 35: Advertising; advertising and marketing; online advertisements; preparation of advertising material; consultancy relating to advertising; preparation of advertisements; arrangement of advertising; advertising analysis; bill-posting; direct marketing; advertising agencies; advertising research; advertising of business web sites; on-line advertising on a computer network; collection of information relating to advertising; information services relating to advertising; advertisement via mobile phone networks; promotion, advertising and marketing of on-line websites; advertising particularly services for the promotion of goods; analysis of the public awareness of advertising; research services relating to advertising; services to determine the audience affected by advertisements; advertising through all public communication means; dissemination of advertising for others via the internet; preparation of mailing lists for direct mail advertising services [other than selling]; advertising, marketing and promotional consultancy, advisory and assistance services; provision of space on web-sites for advertising goods and services; dissemination of advertising for others via an on-line communications network on the Internet.

Class 42: Hosting electronic memory space on the Internet for advertising goods and services.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 9

The opponent’s computer software, namely communications software is usually an application or program designed to pass information from one system to another. Such software, for instance, provides remote access to systems and transmits files in a multitude of formats between computers. The contested computer software for advertising is generally related to help the user to advertise on computer devices and/or a range of websites, etc. The goods in comparison overlap as the communications software could be used specifically for the purpose of connecting the user in advertising network system or to advertising platforms. It is, therefore, considered that the goods are identical.

Contested services in Class 35

The opponent’s 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, which 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.

The contested advertising; advertising and marketing; online advertisements; preparation of advertising material; consultancy relating to advertising; preparation of advertisements; arrangement of advertising; advertising analysis; bill-posting; direct marketing; advertising agencies; advertising research; advertising of business web sites; on-line advertising on a computer network; collection of information relating to advertising; information services relating to advertising; advertisement via mobile phone networks; promotion, advertising and marketing of on-line websites; advertising particularly services for the promotion of goods; analysis of the public awareness of advertising; research services relating to advertising; services to determine the audience affected by advertisements; advertising through all public communication means; dissemination of advertising for others via the internet; preparation of mailing lists for direct mail advertising services [other than selling]; advertising, marketing and promotional consultancy, advisory and assistance services; provision of space on web-sites for advertising goods and services; dissemination of advertising for others via an on-line communications network on the Internet are by their nature a variety of advertising services. These are, therefore, included in the broader category of the opponent’s services. The services are considered to be identical.

Contested services in Class 42

The contested hosting electronic memory space on the Internet for advertising goods and services are by their nature technological services. These are, therefore included in the broader category of the opponent’s technological services. The services are considered identical.

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 goods and services found to be identical are directed at the public at large, but also at some business customers, such as those looking for specific advertisement solutions for their business. The degree of attention may vary from average to higher than average depending on the specific purposes and/or prices of the relevant goods and services.

3. The signs

RED TOUCH MEDIA	Red.m
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

Both signs are word marks; the earlier mark consists of the elements ‘RED’, ‘TOUCH’ and ‘MEDIA’, and the contested sign of ‘Red’ and the letter ‘m’, separated by a dot. 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, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in lower or upper case letters.

The element ‘RED’, included in both signs, will be understood by the public in the relevant territory as referring to the colour red. As this element is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The element ‘TOUCH’ of the earlier mark will be understood by the public in the relevant territory as the English word ‘touch’, meaning, inter alia, ‘the sense by which the texture and other qualities of objects can be experienced when they come in contact with a part of the body surface, esp. the tips of the fingers; the quality of an object as perceived by this sense; feel; feeling’ (information extracted from http://dictionary.reverso.net/english-definition/touch). As this element is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive. Furthermore, the combination of elements ‘RED TOUCH’ in the earlier mark does not convey a specific meaning different from the separate concepts of the elements ‘RED’ and ‘TOUCH’.

The element ‘MEDIA’ of the earlier mark will be understood by the public in the relevant territory as ‘a plural of medium [‘a means or agency for communicating or diffusing information, news, etc., to the public’]; the means of communication that reach large numbers of people, such as television, newspapers, and radio; of or relating to the mass media’ (information extracted from http://dictionary.reverso.net/english-definition/media). Due to the concept of the element ‘MEDIA’, which is largely used to refer to news providers in general or to a specific provider, the earlier sign as a whole could be perceived as referring to a news provider (television station, newspaper, etc.).

Bearing in mind that the relevant goods and services are communications software, as well as advertising services and technological services, the element ‘MEDIA’ is considered weak for the relevant goods, namely for communications software in Class 9 of the earlier sign, as it refers to their purpose (to be used as means for providing information/certain kinds of data). For the relevant services, this element is distinctive.

Furthermore, the element ‘RED’ in the contested sign will be perceived in the meaning specified above. The letter ‘m’ and the dot (.) in the contested sign would be perceived as such.

The opponent claims that the element ´.m´ of the contested sign is likely to be perceived as denoting to ´a mobile version of websites for optimised browsing on phones or tablets whose address start with letter /.m/´. The opponent provides two printouts from websites: one form https://developers.google.com, explaining that ´[a] common setup would be pages on www.example.com serving desktop users with corresponding pages served on m.example.com for mobile users’. The second printout is from http://m.flashcores.co.uk, with a title on the excerpt ‘FlashScores.co.uk Mobile’. It is noted, however, that the two examples given by the opponent refer to a website and a given example of a website, where the letter ‘m’ is followed by a dot and the respective domain name and top level domain name. There is, however, no indication or an example that would show that the particular sequence of ‘.m’, namely the letter ‘m’ following the dot (.) is used for the claimed mobile version of websites. Therefore, the argument of the opponent has to be set aside.

Since both signs are word marks, they contain no elements which are clearly more eye-catching than others.

Furthermore, the signs have the same first element, namely ‘RED’ that plays independent role in both signs, as it is clearly separated from the other elements in both signs (either by a space or by a dot). Consumers generally tend to focus on the beginning (the first element) 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, the coincidence in the first elements of the signs is of material importance when assessing the likelihood of confusion for the relevant public.

As specified above, conceptually, the element ‘RED’, included in both signs, will be associated with the provided meaning. The signs would differ in the concept of the elements ‘TOUCH’ and ‘MEDIA’ (the latter being of limited distinctiveness for the relevant goods) of the earlier mark, as well as in the concept of the letter ‘m’ and the dot of the contested sign.

As the signs coincide in the distinctive element ‘RED’, which further plays an independent role in both signs, the signs are considered conceptually at least lowly similar.

Visually and aurally, the signs coincide in the element (and the sounds) ‘RED’ and the letter (and the sound) ‘M’, being a single letter after the dot (.) in the contested sign and the first letter of the element ‘MEDIA’ of the earlier mark. Furthermore, the element ‘RED’ is the first element of both signs. The signs differ in the element (and sounds) ‘TOUCH’ and the sequence (and sounds) ‘*EDIA’ of the earlier mark, as well as in the dot (which may or may not be pronounced) of the contested sign.

Therefore, as the signs coincide in their first element (being distinctive), which also forms a larger part of the contested sign, the signs are considered visually and aurally similar at least 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element (for the relevant goods) in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

As has been concluded above, the contested goods and services were found identical to those of the earlier mark. The degree of attention may vary from average to higher than average when choosing the relevant goods and services.

It is taken into account 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/services covered are from the same or economically linked undertakings.

Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. It has been also established above that the signs are visually and aurally similar at least to an average degree and are conceptually linked on the basis of the coinciding element ‘RED’, being the first, clearly separated (either by a space or by a dot) and perceptible element in both signs.

It is furthermore noted that 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, the identity between the relevant goods and services offset any lesser degree of similarity between the signs under comparison.

In the light of the foregoing, also taking into account the principle of interdependence mentioned above, the degree of similarity between the marks at issue is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that that goods and services found to be identical originate from the same undertaking or economically linked undertakings, even when the degree of attention is higher than average.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 2 655 868. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right UK trade mark registration No 2 655 868 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and 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 ground of the opposition, namely 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.

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

Irina SOTIROVA

Julie GOUTARD

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.