OPPOSITION No B 2 700 576

Kinderdagverblijf Bambini B.V., Noordhollandstraat 8, 1081 AT, Amsterdam, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595DA, Den Haag, The Netherlands (professional representative)

a g a i n s t

Inquisizione srl, Via San Giovanni Bosco 23, 56127 Pisa, Italy (applicant), represented by Benedetta Cacialli, Piazza Dei Giudici 2, 50122 Firenze, Italy (professional representative).

On 13/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 700 576 is partially upheld, namely for the following contested services:

Class 35: Arranging and conducting of advertising events; Assistance and advice regarding business organisation and management; Organisation of events for commercial and advertising purposes; Arranging of displays for commercial purposes; Arranging of trade fairs; Arranging of exhibitions for business purposes; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Publicity and sales promotion services; Sales promotions at point of purchase or sale, for others; Presentation of goods on communication media, for retail purposes; Commercial management; Business management for shops; Promotion services; Sales promotion; Commercial trading and consumer information services; Management advisory services related to franchising; Business advice relating to franchising; Business advertising services relating to franchising; Preparing audio-visual presentations for use in advertising.

2. European Union trade mark application No 15 081 805 is rejected for all the above services. It may proceed for the remaining goods and services.

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 15 081 805 . The opposition is based on the Benelux trade mark registration No 915 202  and the Dutch trade name ‘TORTURE MUSEUM‘ (words). The opponent invoked Article 8(1)(b) 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.

1. The goods and services

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

Class 16: Books, brochures, magazines and other printed matter; photographs, posters, cards, office requisites.

Class 35: Organization of exhibitions and expositions for commercial or promotional purposes; publicity; promotion; merchandising; retail services in the field of souvenirs also including office requisites, key chains, posters, photographs, books and magazines, book markers, toys.

Class 41: Organization of exhibitions and expositions for cultural or educational purposes; museum services; giving lectures and presentations with an educational, cultural or artistic nature; publishing of books and other publications, also in electronic form; providing of information relating to cultural and educational subjects; education, providing of training, entertainment and cultural activities.

The contested goods and services are the following:

Class 9: Electronic book readers; Compact discs; DVDs; Software; Interactive computer software; DVD cases; Cases for compact discs; Decorative magnets; Downloadable image files; Electronic agendas; Virtual reality game software; Video recordings; Computer software applications, downloadable; Cinematographic films; Interactive DVDs; Digital organizers; Downloadable electronic books; Video game programs; Computer software packages; Bags adapted for laptops; Cases adapted for notebook computers; Cases for spectacles and sunglasses; Talking books; Electronic publications, downloadable; Downloadable video recordings; Interactive multimedia computer programs; Interactive multimedia computer game programs; Cell phone covers; Audio recordings; Audio visual recordings; Audiovisual apparatus; Digital audio players; Information technology and audiovisual equipment; Audio/visual and photographic devices; Playing devices for sound and image carriers; Recording devices for sound and image carriers; Multi-media recordings; Interactive multimedia software for playing games; Eyeglass lanyards; Parts for spectacles; Spectacle cases.

Class 16: Printed teaching materials; Decalomanias; Pencil sharpeners, electric or non-electric; Bookmarkers; Paper handkerchiefs; Photographs [printed]; Books; Catalogues; Graphic reproductions; Pens; Adhesive labels; Flip books; Writing paper; Nibs; Seals [stamps]; Tickets; Pictures; Paper boxes; Pencil cups; Printed calendars; Office paper stationery; Graphic art reproductions; Notebooks; Pencils; Three dimensional models for educational purposes; Printed visuals; Picture postcards; Blank paper notebooks; Pen boxes; Printed publications; Rubber erasers; Pen clips; Printed guides; Guide books.

Class 20: Mobiles [decoration]; Wind chimes [decoration]; Wickerwork; Statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; Furniture; Decorative window finials; Mirrors (silvered glass); Frames; Works of art of wood, wax, plaster or plastic.

Class 25: Tee-shirts; Hats; Clothing; Foulards [clothing articles].

Class 35: Arranging and conducting of advertising events; Assistance and advice regarding business organisation and management; Organisation of events for commercial and advertising purposes; Arranging of displays for commercial purposes; Arranging of trade fairs; Arranging of exhibitions for business purposes; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Retail services in relation to downloadable electronic publications; Retail services in relation to downloadable music files; Retail services connected with the sale of furniture; Publicity and sales promotion services; Sales promotions at point of purchase or sale, for others; Presentation of goods on communication media, for retail purposes; Commercial management; Business management for shops; Negotiation and conclusion of commercial transactions for third parties; Arranging the buying of goods for others; Promotion services; Sales promotion; Business administration; Commercial administration of the licensing of the goods and services of others; Commercial trading and consumer information services; Management advisory services related to franchising; Business advice relating to franchising; Business advertising services relating to franchising; Retail services connected with stationery; Retail store services in the field of clothing; Retail services in relation to computer hardware; Preparing audio-visual presentations for use in advertising.

Class 41: Arranging of displays for cultural purposes; Recording studios; Production of audio/visual presentations; Conducting of exhibitions for entertainment purposes; Publication of magazines; Publication of periodicals and books in electronic form; Providing on-line electronic publications, not downloadable; Video and audio rental services; Publication of catalogs; Consultancy and information services relating to arranging, conducting and organisation of workshops; Publication of newspapers, periodicals, catalogs and brochures; Museum services; Providing museum facilities [presentation, exhibitions]; Organisation of entertainment and cultural events; Consultancy services in the field of entertainment; Arranging, conducting and organisation of seminars; Arranging, conducting and organisation of workshops; Arranging of conferences; Consultancy and information services relating to arranging, conducting and organisation of colloquiums; Provision of training courses; Organization of exhibitions for cultural or educational purposes; Organisation of educational events; Publishing services; Electronic desktop publishing; Publishing services for books and magazines; Production of sound recordings; Rental of audio-visual recordings; Rental of audio-visual apparatus; Services for the publication of guide books; Sound recording services; Audio and video recording services; Audio-visual display presentation services for entertainment purposes; Audio and video production, and photography; Digital video, audio and multimedia entertainment publishing services; Entertainment services; Cinematographic entertainment services; Library services; Electronic library services; Mobile library services; Arranging of exhibitions for educational purposes; Arranging of exhibitions for training purposes; Rental of teaching instruments; Rental of show scenery; Rental of scenery for television studios.

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 ‘including’, used in the opponent’s list of services in Class 35, 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’slist of services in Class 35 to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the 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 goods in Class 9

The contested software; interactive computer software; virtual reality game software; computer software applications, downloadable; video game programs; computer software packages; interactive multimedia computer programs; interactive multimedia computer game programs; interactive multimedia software for playing games are similar to the opponent’s publishing of books and other publications, also in electronic form in Class 41 as they have the same purpose. They usually coincide in producer and relevant public.

The contested downloadable image files; video recordings; interactive DVDs; downloadable electronic books; talking books; electronic publications, downloadable; downloadable video recordings; audio recordings; audio visual recordings; multi-media recordings; electronic agendas; digital organizers are similar to the opponent’s books, brochures, magazines and other printed matter in Class 16 as they have the same purpose. They usually coincide in producer and relevant public. Furthermore they are in competition.

The contested decorative magnets can be used in a number of ways and serve a variety of purposes. Amongst others, they are routinely used as a decorative or functional piece of stationery at home (e.g. fridge magnets) or in the office environment (e.g. board magnets) to hold reminders or sheets of paper in presentations. Consequently, they are similar to the opponent’s office requisites in Class 16 as they have the same purpose. They usually coincide in relevant public and distribution channels.

The contested cinematographic films are similar to the opponent’s entertainment in Class 41 which includes, among other things, film production services. Consequently, these goods and services have the same purpose. They usually coincide in producer and relevant public.

The contested electronic book readers; audiovisual apparatus; digital audio players; information technology and audiovisual equipment; audio/visual and photographic devices; playing devices for sound and image carriers; recording devices for sound and image carriers are consumer electronics serving to reproduce, record or transmit text, images, sound or data. On the other hand, the earlier trade marks protects, in essence, printed matter and office requisites (Class 16), various promotional services and retail sale of souvenirs (Class 35) and services in the field of education, training, entertainment and culture (Class 41). There is nothing that would link the above contested goods to the opponent’s goods and services. They are clearly dissimilar. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods/services, their distribution channels and sales outlets are normally different. In addition, the contested goods are not usual types of souvenirs. Consequently, they cannot be considered similar to the opponent’s retail services in the field of souvenirs in Class 35.

In the absence of any further specification, the contested compact discs; DVDs must be understood as blank compact discs and DVDs (i.e. data carriers as such, not containing any pre-recorded material). They are dissimilar to all the opponent’s goods and services in Classes 16, 35 and 41 as described above. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods/services, their distribution channels and sales outlets are normally different. In addition, blank compact discs and DVDs are not usual types of souvenirs. Consequently, they cannot be considered similar to the opponent’s retail services in the field of souvenirs in Class 35.

For the same reasons, the contested DVD cases; cases for compact discs; bags adapted for laptops; cases adapted for notebook computers; cases for spectacles and sunglasses; cell phone covers; eyeglass lanyards; parts for spectacles; spectacle cases are also considered dissimilar to all the opponent’s goods and services.

Contested goods in Class 16

The contested printed teaching materials; decalcomanias; bookmarkers; photographs [printed]; books; catalogues; graphic reproductions; adhesive labels; flip books; tickets; pictures; printed calendars; graphic art reproductions; notebooks; printed visuals; picture postcards; blank paper notebooks; printed publications; printed guides; guide books are included in the broad category of, or overlap with, the opponent’s books, brochures, magazines and other printed matter. Therefore, they are identical.

The contested pencil sharpeners, electric or non-electric; pens; writing paper; nibs; seals [stamps]; paper boxes; pencil cups; office paper stationery; pencils; pen boxes; rubber erasers; pen clips are included in the broad category of, or overlap with, the opponent’s office requisites. Therefore, they are identical.

The contested three dimensional models for educational purposes are similar to the opponent’s education in Class 41 as they have the same purpose. They usually coincide in producer/provider, relevant public and distribution channels. Furthermore they are complementary.

The contested paper handkerchiefs are personal hygienic products which are clearly dissimilar to all the opponent’s goods and services in Classes 16, 35 and 41 as described above. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods/services, their distribution channels and sales outlets are normally different.

Contested goods in Class 20

The contested goods in this class are, in essence, furniture and various decorative objects. They are clearly dissimilar to all the opponent’s goods and services in Classes 16, 35 and 41. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods/services, their distribution channels and sales outlets are normally different.

Contested goods in Class 25

The contested goods in this class are various clothing and headgear articles. They are clearly dissimilar to all the opponent’s goods and services in Classes 16, 35 and 41. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods/services, their distribution channels and sales outlets are normally different.

Contested services in Class 35

The contested arranging and conducting of advertising events; organisation of events for commercial and advertising purposes; arranging of displays for commercial purposes; arranging of trade fairs; arranging of exhibitions for business purposes are included in the broad category of, or overlap with, the opponent’s organization of exhibitions and expositions for commercial or promotional purposes. Therefore, they are identical.

The contested electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; publicity and sales promotion services; sales promotions at point of purchase or sale, for others; presentation of goods on communication media, for retail purposes; promotion services; sales promotion; business advertising services relating to franchising; preparing audio-visual presentations for use in advertising are included in the broad categories of, or overlap with, the opponent’s publicity; promotion. Therefore, they are identical.

The contested retail services in relation to downloadable electronic publications; retail services in relation to downloadable music files; retail services connected with the sale of furniture; retail services connected with stationery; retail store services in the field of clothing; retail services in relation to computer hardware are considered similar to the opponent’s retail services in the field of souvenirs also including office requisites, key chains, posters, photographs, books and magazines, book markers, toys. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. In addition, for part of the services, they also coincide in relevant public and distribution channels.

The contested assistance and advice regarding business organisation and management; commercial management; business management for shops; commercial trading and consumer information services; management advisory services related to franchising; business advice relating to franchising are similar to a low degree to the opponent’s promotion as they have the same purpose. They usually coincide in relevant public. Some of the services also coincide in provider.

The remaining contested services, namely negotiation and conclusion of commercial transactions for third parties; arranging the buying of goods for others; business administration; commercial administration of the licensing of the goods and services of others, are dissimilar to all the opponent’s goods and services in Classes 16, 35 and 41. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods/services, their distribution channels and sales outlets are normally different.

Contested services in Class 41

Museum services are identically contained in both lists of services.

The contested providing museum facilities [presentation, exhibitions] are included in the broad category of the opponent’s museum services. Consequently, they are identical.

The contested arranging of displays for cultural purposes; organization of exhibitions for cultural or educational purposes; arranging of exhibitions for educational purposes; arranging of exhibitions for training purposes are included in the broad category of, or overlap with, the opponent’s organization of exhibitions and expositions for cultural or educational purposes. Therefore, they are identical.

The contested publication of magazines; publication of periodicals and books in electronic form; providing on-line electronic publications, not downloadable; publication of catalogs; publication of newspapers, periodicals, catalogs and brochures; publishing services; electronic desktop publishing; publishing services for books and magazines; services for the publication of guide books are included in the broad category of, or overlap with, the opponent’s publishing of books and other publications, also in electronic form. Therefore, they are identical.

The contested entertainment services are obviously identical with the opponent’s entertainment.

The contested recording studios; production of audio/visual presentations; conducting of exhibitions for entertainment purposes; video and audio rental services; organisation of entertainment … events; production of sound recordings; rental of audio-visual recordings; rental of audio-visual apparatus; sound recording services; audio and video recording services; audio-visual display presentation services for entertainment purposes; audio and video production, and photography; digital video, audio and multimedia entertainment publishing services; cinematographic entertainment services; rental of show scenery; rental of scenery for television studios; consultancy services in the field of entertainment are included in the broad category of, or overlap with, the opponent’s entertainment. Therefore, they are identical.

The contested consultancy and information services relating to arranging, conducting and organisation of workshops; arranging, conducting and organisation of seminars; arranging, conducting and organisation of workshops; arranging of conferences; consultancy and information services relating to arranging, conducting and organisation of colloquiums; provision of training courses; organisation of educational events; rental of teaching instruments are included in the broad category of, or overlap with, the opponent’s education, providing of training. Therefore, they are identical.

The contested organisation of … cultural events is included in the broad category of, or overlap with, the opponent’s cultural activities. Therefore, they are identical.

The contested library services; electronic library services; mobile library services are similar to the opponent’s cultural activities as they have the same purpose. They usually coincide in producer, 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 goods and services found to be identical or similar (to varying degrees) are directed either at the public at large or at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods/services, the frequency of purchase and their price.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is that of the Benelux countries. Consequently, the relevant languages are French, Dutch and German. Account will also be taken of the fact that English is widely understood by the consumers in the Benelux countries.

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 elements ‘TORTURE MUSEUM’ contained in both marks will be understood throughout the territory of the Benelux countries, either as a whole as an English phrase or because the individual words exist as such in the relevant language (‘TORTURE’ in French, ‘MUSEUM’ in Dutch and German) or they will be understood as an English or French word (‘TORTURE’ by the Dutch or German-speaking public) or they are a universally understandable term (‘MUSEUM’ for the French-speakers).

The elements ‘TORTURE MUSEUM’ will be perceived by the relevant public as designating a certain type of undertaking or establishment, namely a museum that exhibits instruments of torture and provides information about the history of torture.

Many of the relevant goods and services covered by both marks are normally provided by museums (either physically or on the museums‘ websites) or sold in museum shops (which are nowadays a common part of museums). Consequently, the elements ‘TORTURE MUSEUM’ are considered non-distinctive for such goods and services, namely the following:

Earlier trade mark:

Class 16: Books, brochures, magazines and other printed matter; office requisites.

Class 35: Retail services in the field of souvenirs also including office requisites, key chains, posters, photographs, books and magazines, book markers, toys.

Class 41: Organization of exhibitions and expositions for cultural or educational purposes; museum services; publishing of books and other publications, also in electronic form; education, providing of training, entertainment and cultural activities.

Contested sign:

Class 9: Software; Interactive computer software; Decorative magnets; Downloadable image files; Electronic agendas; Virtual reality game software; Video recordings; Computer software applications, downloadable; Cinematographic films; Interactive DVDs; Digital organizers; Downloadable electronic books; Video game programs; Computer software packages; Talking books; Electronic publications, downloadable; Downloadable video recordings; Interactive multimedia computer programs; Interactive multimedia computer game programs; Audio recordings; Audio visual recordings; Multi-media recordings; Interactive multimedia software for playing games;

Class 16: Printed teaching materials; Decalomanias; Pencil sharpeners, electric or non-electric; Bookmarkers; Photographs [printed]; Books; Catalogues; Graphic reproductions; Pens; Adhesive labels; Flip books; Writing paper; Nibs; Seals [stamps]; Tickets; Pictures; Paper boxes; Pencil cups; Printed calendars; Office paper stationery; Graphic art reproductions; Notebooks; Pencils; Three dimensional models for educational purposes; Printed visuals; Picture postcards; Blank paper notebooks; Pen boxes; Printed publications; Rubber erasers; Pen clips; Printed guides; Guide books.

Class 35: Retail services in relation to downloadable electronic publications; Retail services connected with stationery; Retail store services in the field of clothing.

Class 41: all the contested services.

However, for other relevant services which are not normally provided by museums as a service for third parties, the elements ‘TORTURE MUSEUM’ are normally distinctive because they have no clear relation to those particular services. Hence, the elements ‘TORTURE MUSEUM’ are normally distinctive for the following services:

Earlier trade mark:

Class 35: Organization of exhibitions and expositions for commercial or promotional purposes; publicity; promotion.

Contested sign:

Class 35: Arranging and conducting of advertising events; Assistance and advice regarding business organisation and management; Organisation of events for commercial and advertising purposes; Arranging of displays for commercial purposes; Arranging of trade fairs; Arranging of exhibitions for business purposes; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Retail services in relation to downloadable music files; Retail services connected with the sale of furniture; Publicity and sales promotion services; Sales promotions at point of purchase or sale, for others; Presentation of goods on communication media, for retail purposes; Commercial management; Business management for shops; Promotion services; Sales promotion; Commercial trading and consumer information services; Management advisory services related to franchising; Business advice relating to franchising; Business advertising services relating to franchising; Retail services in relation to computer hardware; Preparing audio-visual presentations for use in advertising.

The stylised red letter ‘T’ in the earlier trade mark has some degree of distinctiveness due to its stylisation.

By the same token, the stylised letter ‘t’ within a black square has some degree of distinctiveness due to its stylisation.

The black rectangle serving as a background in the earlier trade mark is a common geometrical shape in a basic colour. Consequently, it is non-distinctive.

The marks have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the elements ‘TORTURE MUSEUM’ depicted one underneath the other in both marks. Although both signs contain a stylised single letter ‘T’, it is depicted in a different form, colour and context. In the case of the earlier mark, the single letter is an upper case ‘T’ depicted in a historical red typeface, representing the second letter ‘T’ in the word ‘TORTURE’. On the other hand, in the contested sign the single letter is a lower case ‘t’ depicted as a separate black and white element on the left side of the elements ‘TORTURE MUSEUM’.

The fact whether the elements ‘TORTURE MUSEUM’ are non-distinctive (either in one or both marks) or normally distinctive (in both marks) has a decisive impact on the outcome of the visual comparison.

In the former case, the signs overlap only in non-distinctive elements (either in one or both marks). This means that the overlap cannot cause any visual similarity because non-distinctive elements have no weight and cannot serve as a badge of origin and the outcome of the comparison depends on the comparison between the stylised single letter ‘T’/’t’. Given that this letter has a different form, colour and position in the marks, the signs as a whole are considered visually dissimilar.

In the latter case where the elements ‘TORTURE MUSEUM’ are normally distinctive in both marks, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘TORTURE MUSEUM’, present identically in both signs. The pronunciation differs in the sound of the additional single letter ‛T’ of the contested mark (in case it is pronounced by the public), which has no phonetic counterpart in the earlier sign. The stylised red ‘T’ in the earlier mark will not be pronounced separately because it is integrated in the word ‘TORTURE’.

Therefore, depending on whether the elements ‘TORTURE MUSEUM’ are non-distinctive or normally distinctive, the signs are aurally either dissimilar or highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Apart from the meaningful elements ‘TORTURE MUSEUM’, both marks contain the concept of the single letter ‘T’. Even though the ‘T’ in the earlier mark is integrated in the word ‘TORTURE’, it will be perceived also as a separate element due to its stylisation which is different from that of all the other letters of the mark. In addition, the stylisation of the letter ‘T’ in the earlier mark conveys the idea of something historical or medieval which is a concept that is missing in the single letter ‘t’ of the contested sign.

Overall, depending on whether the elements ‘TORTURE MUSEUM’ are normally distinctive, non-distinctive or have a different degree of distinctiveness in each mark, the signs are conceptually either highly similar or similar to an average degree or similar to a low 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the goods and services listed above in section c) for which the elements ‘TORTURE MUSEUM’ are non-distinctive. In this case the only distinctive element of the mark is the stylised letter ‘T’ whose distinctiveness is however low because its stylisation suggests the ancient times when torture was common practice in Europe.

The mark has a normal degree of distinctiveness for the remaining relevant services listed above in section c) for which the elements ‘TORTURE MUSEUM’ are normally distinctive.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar, partly similar to a low degree and partly dissimilar.

The earlier trade mark’s degree of distinctiveness is either low or average, depending on whether the elements ‘TORTURE MUSEUM’ are non-distinctive or normally distinctive for the relevant goods and services.

The goods and services are directed either at the public at large or at business customers and their level of attention will vary between average and high.

The distinctiveness or lack of distinctiveness of the elements ‘TORTURE MUSEUM’ for the individual goods and services at stake here is the pivotal point of this case which determines whether the public will confuse the commercial origin of the goods and services or not.

It is considered that there will be likelihood of confusion only for the contested services in Class 35 which were found identical, similar or similar to a low degree to the opponent’s services in Class 35 and for which the elements ‘TORTURE MUSEUM’ are normally distinctive in both marks. In this scenario, the marks are highly similar visually, aurally and conceptually and the earlier trade mark has an average degree of distinctiveness. All this leads to the conclusion that there will be confusion for the following services:

Class 35: Arranging and conducting of advertising events; Assistance and advice regarding business organisation and management; Organisation of events for commercial and advertising purposes; Arranging of displays for commercial purposes; Arranging of trade fairs; Arranging of exhibitions for business purposes; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Publicity and sales promotion services; Sales promotions at point of purchase or sale, for others; Presentation of goods on communication media, for retail purposes; Commercial management; Business management for shops; Promotion services; Sales promotion; Commercial trading and consumer information services; Management advisory services related to franchising; Business advice relating to franchising; Business advertising services relating to franchising; Preparing audio-visual presentations for use in advertising.

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 partly well founded on the basis of the opponent’s Benelux trade mark registration. It follows from the above that the contested trade mark must be rejected for the above services in Class 35.

In all the other scenarios, the earlier trade mark’s degree of distinctiveness is low and the marks are visually and aurally dissimilar. The only similarity is in the conceptual aspect, namely due to the coincidence in the single letter ‘T’. Nevertheless, since the concept of a single letter is one of the most basic concepts that exist, the public will not attribute much significance to it. Consequently, in this situation the marks are not sufficiently similar and the earlier mark is not sufficiently distinctive in order to cause likelihood of confusion, despite the fact that the remaining contested goods and services are identical or similar to varying degrees. Consequently, the opposition based on Article 8(1)(b) EUTMR and directed at these goods and services must be rejected.

The rest of the contested goods and services are dissimilar. As identity/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.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 24/05/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired, following an extension of the cooling-off period, on 29/07/2018.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Victoria DAFAUCE MENÉNDEZ

Vít MAHELKA

Lucinda CARNEY

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.