DECISION

of the First Board of Appeal

of 18 July 2019

In case R 1369/2018-1

Electronic Systems Software Solutions Inc
1795 Ironstone Manor, Suite 4 Pickering Ontario L1W 3W9 Canada	Applicant / Appellant

represented by FLADGATE LLP, 16 Great Queen Street, WC2B 5DG, London, United Kingdom

v

Perform Investment Limited
Hanover House, Plane Tree Crescent Feltham TW13 7BZ United Kingdom	Opponent / Defendant

represented by BIRD & BIRD LLP, 12 New Fetter Lane, EC4A 1JP, London, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 841 735 (European Union trade mark application No 15 660 517)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), C. Rusconi (Rapporteur) and Ph. von Kapff (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 13 July 2016, Electronic Systems Software Solutions Inc (‘the applicant’) sought to register the word mark

ZoneTV

for the following services as limited on 31 January 2017 (‘the contested services’):

Class 38 - Internet services namely, the operation of an Internet website relating to the development, production, distribution, transmission and broadcast of information and entertainment content, namely television programming and applications; delivery of audio and visual content in the field of entertainment, namely, films, television programs, streaming programs and musical performances via televisions, Set-Top-Boxes (STB), telephones, mobile phones, PDAs and computers; providing a viewer with internet links and online access, via televisions, Set-Top-Boxes (STB), telephones, mobile phones, PDAs, computers, computer networks and the internet to access information and content in the field of entertainment; none of the aforesaid relating to digital agency services, or information, advisory and consultancy services relating to digital advertising and digital marketing;

Class 41 - Entertainment services, namely the development and production of television programming for transmission and broadcast via the media of television, satellite, computer networks, social networking services, computers, Set-Top-Boxes (STB), mobile and handheld electronic devices, PDAs, telephones, the Internet and e-mail; entertainment services namely, the provision of an ongoing television series and television programs through the mediums of television, Set-Top-Boxes (STB), computers, computer networks, mobile and handheld electronic devices, and the Internet; the provision of entertainment content, namely films, television programs, streaming programs and musical performances via television, Set-Top-Boxes (STB), computers, computer networks, telephones, mobile phones, handheld electronic devices, PDAs and the Internet; development, production and distribution of television programming and of specialty and premium television programming for television channels, networks and applications and for companies distributing television programs; development and production of aggregated and curated videos, programs, photographs, meta, images, text and other data accessible via download or streaming methods over the Internet; development and production of television programming and applications for on-line distribution, transmission and broadcast through computer networks, social networking services, computers, mobile phones, handheld devices, PDAs, Set-Top-Boxes (STB), telephones and the Internet; and distribution and sale of audio and video television programming and the provision of such programming to cable and satellite retailers of pay or on demand television and entertainment services and applications for eventual viewing by individual cable and satellite subscribers and other members of the public; none of the aforesaid relating to digital agency services, or information, advisory and consultancy services relating to digital advertising and digital marketing;

Class 42 - Design and development of software executed on computers, televisions, Set-Top-Boxes (STB), mobile and handheld electronic devices, for the streaming or download delivery of aggregated and curated content in all media; providing online, non-downloadable software application to permit consumers to use Set-Top-Boxes (STB), mobile phones and personal communication devices, for uploading, downloading, publishing, streaming, sequential viewing, viewing, previewing, and manipulating videos, programmes, photographs, images, text, electronic programme guides and audio content originating from multiple types of recording, playing, and storage apparatus on local, wide-area and global communications networks; development and production of applications for transmission, distribution and broadcast via the media of television, satellite, computer networks, social networking services, computers, Set-Top-Boxes (STB), mobile and handheld electronic devices, PDAs, telephones, the Internet and e-mail; none of the aforesaid relating to digital agency services, or information, advisory and consultancy services relating to digital advertising and digital marketing.

2. The application was published on 2 November 2016.

3. On 2 February 2017, Perform Investment Limited (‘the opponent’) filed an opposition against the application for all the services.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier rights:

1. UK word mark No 3 149 512 ‘DA ZONE’, filed on 11 February 2016 and registered on 12 May 2016 for the following goods and services:

Class 9 - Software; mobile applications software; software for streaming audiovisual and multimedia content to mobile digital electronic devices; software for searching, organizing, retrieving and recommending audiovisual and multimedia content; application software for use in broadcasting, reception, transmission, delivery and conveyance of audiovisual content, multimedia content, recorded programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information and data, by means of electronic communications systems, telephonic, telegraphic, cable and satellite transmissions and Internet protocol; software for use in video-on-demand and near-video-on-demand broadcasting, reception, transmission, distribution, delivery and conveyance of audiovisual content, multimedia content, television programmes and television shows; software for use in the live broadcast and streaming of sporting events, sporting commentary and other sports-related audiovisual and multimedia content; software for scrambling and descrambling signals and retransmissions; software for providing access to computer or data transmission networks, in particular to a global communications network (such as the Internet) or private or restricted access networks (such as intranets or extranets); telecommunications software and apparatus (including modems) for connection to databases; recorded, downloadable or streamable audiovisual content, multimedia content, programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information and data; podcasts; downloadable electronic publications, including downloadable electronic newsletters, magazines, fanzines, journals, news articles, editorials, texts, television programming schedules, television programming information, sporting events fixtures; downloadable electronic publications of third parties provided via a video-on-demand or near-video-on-demand service; downloadable electronic publications of third parties provided via an over-the-top service; downloadable audiovisual content, multimedia content, programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and podcasts of third parties provided via a video-on-demand or near-video-on-demand service, or via an over-the-top service; electronic publications; electronic publications supplied online from computer databases or from the internet; electronic media on games consoles; electronic databases; electronic databases of audiovisual content, multimedia content, programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and podcasts; pre-recorded tapes and discs including pre-recorded video tapes, cassettes, CDs, DVDs, CD ROMs; interactive collectible trading cards; parts and fittings for the aforesaid goods;

Class 16 - Printed matter; photographs; stationery; adhesives for stationery or household purposes; artists' materials; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes); books; periodical publications; magazines; journals; television programming schedules and television programming information and news; prints; framed prints; photographs; photo albums; posters; postcards; greeting cards; collector cards; envelopes; sticky notes; personal organizers; business cards; notebooks; notepads; drawing pads; calendars; catalogues; writing instruments; pens; fountain pens; pencils; pencil cases; gift bags; gift wrap; folders; binders; document holders; stamps; stickers; parts and fitting for the aforesaid goods; all the aforesaid goods relating to sporting events, sports entertainment, sport and sports;

Class 35 - Rental of advertising space online to others; rental of advertising time in communication media; transmission of publicity of third parties through electronic communications networks, mobile applications and television broadcasting; promotion of products and services of third parties through electronic communications networks, mobile applications and television broadcasting; promotion of goods and services of others through promotional contest games and quizzes; advertising, including promotion and marketing of products and services of third parties through sponsoring arrangements and licence agreements; compilation, management, updating and maintenance of databases; systemisation of data in computer databases; compilation and analysis of statistical data; arranging subscriptions to restricted-access sports media packages for others; arranging subscriptions to restricted-access sports broadcasting and streaming services for others; arranging subscriptions to restricted-access audiovisual content, multimedia content, television programmes, video recordings, audio-visual recordings, movies, music, publications, magazines, text, information and data, for others; consultancy, advisory and information services relating to any of the aforesaid services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels;

Class 36 - Financial sponsorship and funding; financial sponsorship and funding of television programmes, audiovisual content and multimedia content; financial sponsorship of sporting events and sports teams; consultancy, advisory and information services relating to any of the aforesaid services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels;

Class 38 - Broadcasting services; communications and telecommunications; broadcasting of audiovisual content and multimedia content over the internet and other communication networks; streaming of audiovisual content and multimedia content; video-on-demand and near-video-on-demand transmission services; video-on-demand and near-video-on-demand streaming services; over-the-top broadcasting, transmission and delivery of sports-related content; subscription television broadcasting; subscription over-the-top broadcasting; on-line delivered television services; computer-aided transmission of audiovisual broadcasts; interactive television broadcasting services; transmission, broadcast, reception, delivery and conveyance of audiovisual content, multimedia content, recorded programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and podcasts by means of electronic communications systems, telephonic, telegraphic, cable and satellite transmissions and Internet protocol; webcasting services; podcasting services; provision of access and links to computer databases and the Internet; leasing access time to a computer databases; providing user access to the Internet; messaging services; online services for users to share messages, information, comments, photos, audio and/or videos content to form virtual communities and to engage in social networking; providing internet chatrooms, forums and message boards; consultancy, advisory and information services relating to any of the aforesaid services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels;

Class 41 - Entertainment services relating to sporting events, sports entertainment, sport and sports; television entertainment services; entertainment services provided in connection with a video-on-demand or near-video-on-demand service; entertainment, sporting and cultural activities and events; providing non-downloadable audiovisual content, multimedia content, recorded programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information and data, all relating to sporting events, sports entertainment, sport and sports; providing news, information, reviews, and recommendations regarding entertainment, television programmes, movies, sporting events, sports entertainment, sport, sports, audiovisual entertainment content and multimedia entertainment content; providing information in the nature of pre-game and post-game recaps and analysis, line-up introductions, press conferences, venue announcements, historical documentaries, scenes from movies and TV shows, and video highlights, previews, analysis, interviews and discussions regarding sports entertainment, athletes, sports, sport, sporting events, sporting competitions, and sporting venues; organisation, presentation, distribution, syndication, networking and rental of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; organisation, production, presentation and provision of shows, competitions, contests, games, quizzes and events; preparation, development, creation, production and editing of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; non-downloadable audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; provision of audio visual content of third parties relating to entertainment, sport, sports and culture via a video-on-demand service or a video-on-demand service; providing television programs, movies, videos, webcasts, and images of third parties via a global computer network; translation, dubbing and sub-titling services; interactive entertainment services in the nature of interactive television programmes, interactive games, interactive television shows, interactive contests, interactive game shows, interactive competitions, interactive quizzes, interactive studio entertainment, interactive audience participation events and interactive live entertainment services; game services provided on-line from a computer network; online publishing; electronic publishing services; publishing of information relating to sport and sports; provision of non-downloadable electronic publications online, through the Internet, applications or other communication networks, including all the aforesaid with embedded audiovisual content, multimedia content, commentary, videos, music, texts, still or moving images, graphics, cartoons, sound, voice, hyperlinks, or a combination thereof; publication of printed materials, printed publications, electronic publications, periodicals, newsletters, magazines, journals, texts, news articles, editorials, books, posters; fan clubs services; data analysis services relating to sports results, sports personalities, sports and sporting statistics, sports news and sports events; consultancy, advisory and information services relating to any of the aforesaid services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels;

Class 42 - Software consultancy, design, analysis and development services; installation, rental, updating and maintenance of computer software; computer services; design services; computer services for interactive communications and broadcasting; design, development , maintenance and rental of software and digital applications for interactive communications and broadcasting; computer services for storing, accessing, retrieval, broadcasting, transmission, reception, delivery and conveyance of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; design, development , maintenance and rental of software for storing, accessing, retrieval, broadcasting, transmission, reception, delivery and conveyance of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; computer services for accessing databases of entertainment and sporting content and information; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media, videos, video files, photographs, still and moving images, graphics, voice, music, text, messages, news, information, data or information over communication networks; hosting of digital content, websites, webpages, digital applications, audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; computerised data analysis services; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; design, drawing and commissioned writing all for the compilation of web pages on the Internet; development and design services in relation to electronic publishing; operation of search engines; information, advisory and consultancy services relating to any of the aforementioned services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels;

Class 45 - Licensing of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; computer software licensing; management and licensing of intellectual property rights; exploitation of rights in of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; exploitation of copyright protected material; exploitation of transmission rights; licensing multiple user access to databases, audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, podcasts, webcasts, video, video files, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news and information over the Internet and other global networks; online friendship, introduction and social networking services; information, advisory and consultancy services relating to any of the aforementioned services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels.

2. EUTM No 1 318 032 ‘DA ZONE’ (word mark) filed and registered on 28 February 2016 for the following goods and services:

Class 9 - Software; mobile applications software; software for streaming audiovisual and multimedia content to mobile digital electronic devices; software for searching, organizing, retrieving and recommending audiovisual and multimedia content; application software for use in broadcasting, reception, transmission, delivery and conveyance of audiovisual content, multimedia content, recorded programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information and data, by means of electronic communications systems, telephonic, telegraphic, cable and satellite transmissions and Internet protocol; software for use in video-on-demand and near-video-on-demand broadcasting, reception, transmission, distribution, delivery and conveyance of audiovisual content, multimedia content, television programmes and television shows; software for use in the live broadcast and streaming of sporting events, sporting commentary and other sports-related audiovisual and multimedia content; software for scrambling and descrambling signals and retransmissions; software for providing access to computer or data transmission networks, in particular to a global communications network (such as the Internet) or private or restricted access networks (such as intranets or extranets); telecommunications software and apparatus (including modems) for connection to databases; recorded, downloadable or streamable audiovisual content, multimedia content, programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information and data; podcasts; downloadable electronic publications, including downloadable electronic newsletters, magazines, fanzines, journals, news articles, editorials, texts, television programming schedules, television programming information, sporting events fixtures; downloadable electronic publications of third parties provided via a video-on-demand or near-video-on- demand service; downloadable electronic publications of third parties provided via an over- the-top service; downloadable audiovisual content, multimedia content, programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and podcasts of third parties provided via a video-on-demand or near-video-on-demand service, or via an over-the-top service; electronic publications; electronic publications supplied online from computer databases or from the internet; electronic media for use on games consoles; electronic databases; electronic databases of audiovisual content, multimedia content, programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and podcasts; pre-recorded tapes and discs including pre-recorded video tapes, cassettes, CDs, DVDs, CD ROMs; interactive collectible trading cards; parts and fittings for the aforesaid goods;

Class 16 - Printed matter; photographs; stationery; adhesives for stationery or household purposes; artists' materials; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes); books; periodical publications; magazines; journals; television programming schedules and television programming information and news; prints; framed prints; photographs; photo albums; posters; postcards; greeting cards; collector cards; envelopes; sticky notes; personal organizers; business cards; notebooks; notepads; drawing pads; calendars; catalogues; writing instruments; pens; fountain pens; pencils; pencil cases; gift bags; gift wrap; folders; binders; document holders; stamps; stickers; parts and fitting for the aforesaid goods; all the aforesaid goods relating to sporting events, sports entertainment, sport and sports;

Class 36 - Financial sponsorship and funding; financial sponsorship and funding of television programmes, audiovisual content and multimedia content; financial sponsorship of sporting events and sports teams; consultancy, advisory and information services relating to any of the aforesaid services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels;

Class 38 - Broadcasting services; communications and telecommunications; broadcasting of audiovisual content and multimedia content over the internet and other communication networks; streaming of audiovisual content and multimedia content; video-on-demand and near-video-on-demand transmission services; video-on-demand and near-video-on-demand streaming services; over-the-top broadcasting, transmission and delivery of sports-related content; subscription television broadcasting; subscription over-the-top broadcasting; on-line broadcasting of television services; computer-aided transmission of audiovisual broadcasts; interactive television broadcasting services; transmission, broadcast, reception, delivery and conveyance of audiovisual content, multimedia content, recorded programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and podcasts by means of electronic communications systems, telephonic, telegraphic, cable and satellite transmissions and Internet protocol; webcasting services; podcasting services; provision of access and links to computer databases and the Internet; leasing access time to a computer databases; providing user access to the Internet; messaging services; providing forums, chatrooms and message boards for users to share messages, information, comments, photos, audio and/or videos content to form virtual communities and to engage in social networking; providing internet chatrooms, forums and message boards; consultancy, advisory and information services relating to any of the aforesaid services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on- line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels;

Class 41 - Entertainment services relating to sporting events, sports entertainment, sport and sports; television entertainment services; entertainment services provided in connection with a video-on-demand or near-video-on-demand service; entertainment, sporting and cultural activities and events; providing non-downloadable audiovisual content, multimedia content, recorded programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information and data, all relating to sporting events, sports entertainment, sport and sports; providing news, information, reviews, and recommendations regarding entertainment, television programmes, movies, sporting events, sports entertainment, sport, sports, audiovisual entertainment content and multimedia entertainment content; providing information in the nature of pre-game and post-game recaps and analysis, line-up introductions, press conferences, venue announcements, historical documentaries, scenes from movies and TV shows, and video highlights, previews, analysis, interviews and discussions regarding sports entertainment, athletes, sports, sport, sporting events, sporting competitions, and sporting venues; organisation, presentation, distribution and rental of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; organisation, production, presentation and provision of shows, competitions, contests, games, quizzes and events; preparation, development, creation, production and editing of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; provision of non-downloadable audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; provision of audio visual content of third parties relating to entertainment, sport, sports and culture via a vidco-on-demand service or a video-on-demand service; providing television programs, movies, videos, webcasts, and images of third parties via a global computer network; translation, dubbing and sub-titling services; interactive entertainment services in the nature of interactive television programmes, interactive games, interactive television shows, interactive contests, interactive game shows, interactive competitions, interactive quizzes, interactive studio entertainment, interactive audience participation events and interactive live entertainment services; game services provided on-line from a computer network; online publishing; electronic publishing services; publishing of information relating to sport and sports; provision of non-downloadable electronic publications online, through the internet, applications or other communication networks, including all the aforesaid with embedded audiovisual content, multimedia content, commentary, videos, music, texts, still or moving images, graphics, cartoons, sound, voice, hyperlinks, or a combination thereof; publication of printed materials, printed publications, electronic publications, periodicals, newsletters, magazines, journals, texts, news articles, editorials, books, posters; fan clubs services in the nature of entertainment; data analysis services relating to sports results, sports personalities, sports and sporting statistics, sports news and sports events; consultancy, advisory and information services relating to any of the aforesaid services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels;

Class 45 - Licensing of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; computer software licensing; management and licensing of intellectual property rights; exploitation of rights in of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; exploitation of copyright protected material; exploitation of transmission rights; licensing multiple user access to databases, audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, podcasts, webcasts, video, video files, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news and information over the Internet and other global networks; online friendship, introduction and social networking services; information, advisory and consultancy services relating to any of the aforementioned services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on- line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels; none of the aforesaid services relating to digital agency services.

6. In the observations filed in support of opposition, the opponent submitted that the contested trademark should be refused registration because it is highly similar to the earlier marks and would be used to distinguish identical or very similar services.

7. The applicant denied any similarity between the marks on the ground that the shared element (the word ‘ZONE’), being a commonplace word in the English language, has a low distinctiveness. The applicant argued that ‘DA’, being an informal US spelling of article ‘the’, is the dominant and distinctive element of the earlier mark and that the differences between ‘TV’ and ‘DA’ were sufficient to rule out confusion.

8. By decision of 22 May 2018, the Opposition Division refused the trade mark applied for, as regards all the contested services, on the ground that there is a likelihood of confusion with the earlier mark in the United Kingdom for the following reasons:

• The services of the contested mark are, when compared with those of the earlier mark, identical as regards Classes 38 and 42, and identical and similar as regards Class 41;

• These services are directed at the public at large and at business customers with specific professional knowledge or expertise whose level of attention may vary from average to higher than average;

• The signs are visually and aurally similar to an average degree and conceptually similar at least to an average degree on account of the coinciding distinctive element ‘ZONE’ (meaning ‘an area’); the difference consisting of the word ‘DA’ in the earlier mark - that will be understood as meaningless or as an informal spelling of ‘the’ - and the word ‘TV’ in the contested sign, does not significantly alter the overall impression of similarity;

• The earlier mark has no meaning for the services and accordingly enjoys a normal distinctiveness.

Submissions and arguments of the parties

9. On 16 July 2018, the applicant filed an appeal, requesting that the decision (‘the contested decision’) be annulled and that the opposition be dismissed. The applicant submits, in the statement of grounds dated 22 September 2018, that its mark causes no likelihood of confusion for the following reasons:

• The decision is based on an erroneous interpretation of the words included in the earlier mark: the word ‘ZONE’ designates, in the context of the services claimed, an area, a chatroom or page on the internet and has accordingly a low distinctive character; the term ‘DA’ means ‘THE’ for part of the public but is meaningless for another part and has, therefore, a significant impact on the overall impression caused by the mark; it is that term which gives the earlier mark its distinctive character;

• Too much emphasis was given, in the comparison of the marks, to the shared element ‘ZONE’ and too little was given to the presence of the element ‘DA’, which differs from ‘TV’ and is, moreover, placed at the beginning of the earlier mark; the marks should have been considered visually, aurally and conceptually dissimilar or, at best, similar to a very low degree;

• Considered globally, the two marks produce different overall impressions.

10. In its response dated 26 November 2018, the opponent requested that the appeal be dismissed. The arguments raised in response may be summarised as follows:

• Contrary to what the applicant states, the word ‘ZONE’ is not descriptive for the services to be considered;

• The word marks to be compared are relatively short. Therefore, the central elements are as important as the elements at the beginning and end of the sign;

• The term ‘TV’, within the contested sign, is either not distinctive or endowed with a very low level of distinctiveness;

• The visual, phonetical and conceptual comparison shows that the signs under comparison are highly similar. It should be noted that in the English language, the number of words that commence with ‘Z’ are very few. The word ‘ZONE’, due to the strong sonority given by the letter ‘Z’, will call the attention of the public.

Reasons

11. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

12. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

13. The appeal is nevertheless unfounded because, for the reasons indicated in the contested decision, the trade mark applied for may cause confusion with the earlier marks and should accordingly be refused registration pursuant to Article 8(1)(b) EUTMR.

14. Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity between the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is registered. A likelihood of confusion includes a likelihood of association with the earlier trade mark.

The identity or similarity of the services

15. The services of the contested mark in Class 38 are, in essence, delivery of all sorts of content (information, entertainment) on television, mobile devices, computers. They are identical, in substance, to those covered by the earlier registrations in the same class, even if worded differently. This was also the conclusion reached by the Opposition Division and the applicant did not submit any objections in that regard when filing the appeal.

16. The services of the contested mark in Class 41 are, in essence, entertainment activities in the form of television programmes and videos. They are identical or highly similar, in substance, to those covered by the earlier registrations in the same class, even if worded differently. This was also the conclusion reached by the Opposition Division and the applicant did not submit any objections in that regard when filing the appeal.

17. The services of the contested mark in Class 42 are, in essence, the design and development of software that makes it possible to stream and download content that may be viewed on television and other devices. They are identical, in substance, to those covered by the earlier registrations in the same class, even if worded differently. This was also the conclusion reached by the Opposition Division and the applicant did not submit any objections in that regard when filing the appeal.

The relevant public

18. According to the case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question. For the purposes of that global appreciation, the average consumer of the products or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The contested services and those covered by the earlier registrations are, on one hand Internet services in Class 38 and entertainment services in Class 41 which target both professional and ordinary consumers and, on the other hand, software design services in Class 42 which target professional consumers. The level of attention of these consumers thus varies from average, as regards ordinary consumers, to above average, as regards professional consumers.

19. The earlier registrations extend to the United Kingdom and the rest of the European Union. All the consumers in this territory must therefore be included in the relevant public.

The similarity or identity of the conflicting marks

20. The global appreciation of the likelihood of confusion, as far as it concerns the visual, aural or conceptual similarity of the trade marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (14/10/2003, T-292/01, Bass, EU:T:2003:264, § 47; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

21. Moreover, it follows from the case-law that two marks are similar when they are at least partially identical as regards one or more relevant aspects (24/11/2016, T‑250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 55; 12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 26).

22. The marks ‘ZoneTV’ and ‘DA ZONE’ are protected as word marks. For this reason, the fact that they are represented in lower or upper case does not count as a difference.

23. The marks are visually similar to the extent, firstly, that they contain the same word (‘ZONE’) and, secondly, that this word is accompanied by a two-letter element (‘TV’ and ‘DA’). The accompanying element differs in both its composition and its position with respect to the word ‘ZONE’.

24. The applicant observes that the earlier mark begins with ‘DA’ and that, according to accepted rules on visual perception, consumers’ attention is attracted by the first element of a mark. In the Board’s opinion, the attention of many consumers will be attracted by both elements of the mark and the word ‘ZONE’, despite the fact that it is not the first element, may capture their attention because it is the longest of the two and may evoke a concept that is easier to remember.

25. Considering that the common element of the two marks is longer and may accordingly attract more attention than the elements ‘DA’ or ‘TV’, it is reasonable to rate the similarity as average.

26. Aurally, the marks share the identical sound of the word ‘ZONE’. They differ in the sound ‘DA’ and ‘TV’, although it must be noted that ‘D’ and ‘T’ are dental consonants which have some similarity.

27. Considering the above coincidences and divergences, it is reasonable to rate the aural similarity as average.

28. From a conceptual perspective, it is reasonable to assume that many consumers of the EU will identify the term ‘ZONE’ in the two marks. This is a common word in English, German and French – having similar versions in other languages such as Spanish or Italian – which designates a place or an area. To that extent, the two marks are conceptually identical. They differ as regards the accompanying element, which is ‘TV’ in the later mark – and designates television – and ‘DA’ in the earlier mark and is meaningless for large sections of the consumers who, being unfamiliar with US slang, ignore that ‘DA’ is the informal spelling of the English article ‘THE’.

29. The applicant seeks to reduce the relevance of that conceptual coincidence on the ground that the notion of ‘zone’ lacks distinctive character in the context of the ‘services for which the earlier marks are registered’ (Statement of Grounds of Appeal, section 8).

30. The Board preliminarily notes, in this regard, that the ‘services for which the earlier marks are registered’ are, in substance if not in wording, the same as those for which the applicant seeks to register its own mark. As has been noted in the section dedicated to the comparison of the services, the applicant did not dispute that identity (or high similarity). The applicant’s allegations that the term ‘ZONE’ has a weak distinctiveness would imply, logically, that its own mark – whose other element is the generic designation ‘TV’ – entirely lacks any distinctive character as a whole. These allegations would accordingly appear as self-defeating and are not persuasive at all.

31. In the Board’s assessment, on the contrary, the term ‘ZONE’ is not inherently deprived of distinctive character in the area of broadcasting, entertainment and related software development services and no sufficient elements have been brought to support the position that consumers of these services, everywhere in the EU, would attach no distinctive function to that term.

32. It follows that the presence of the same term in the two marks is capable of generating a conceptual similarity, for a significant proportion of consumers, which may be considered as a factor of confusion.

33. The presence of the elements ‘TV’ and ‘DA’ is unlikely to alter the conceptual similarity of the marks for the following reasons. The element ‘TV’ is a well-known abbreviation of ‘television’ and will be considered, given the context in which the contested mark is intended to be used, as a descriptive indication. The element ‘DA’ will either be understood as ‘The’ – in which case it reinforces the meaning of the term ‘Zone’ – or as a meaningless sequence of letters, in which case its conceptual weight is neutral.

Overall assessment of the likelihood of confusion

34. The function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end-user by enabling him/her, without any likelihood of confusion, to distinguish a product or service from those of another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 28).

35. As stated by case-law, a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).

36. In the present case, the services are all identical or, for a small part thereof, highly similar and the signs in conflict are similar to an average degree.

37. This similarity is due to the presence of the same word (‘ZONE’), which does not lack distinctive character and is easily perceived by reasonably observant consumers, in the two marks, independently from the accompanying elements (‘TV’ and ‘DA’). In addition, these accompanying elements are unlikely to attract attention in either marks, though for different reasons: in the case of the later mark, the element (‘TV’) is a common abbreviation of the noun ‘television’; in the case of the earlier mark, the element (‘DA’) is either a meaningless sequence of two letters or the phonetic equivalent of the article ‘the’.

38. It follows that the dominant element in both marks is the word ‘ZONE’ not only because of its length – which makes it visually more prominent – but because of its ability to convey a precise concept (a place, an area) that is not perceived as a description of the characteristics of the services at issue and that consumers may easily remember.

39. Considering that the two marks distinguish the same or very similar services, the Board considers that it is reasonable for the opponent to fear that consumers who know the earlier mark in connection with broadcasting, entertainment services and related software development services and are later offered the same or related services under the applicant’s mark would establish, at the very least, an association between them, in the sense of believing, erroneously, that the companies owning the marks are linked in some way or market concurrently their services under ‘ZONE’-formative marks pursuant to a commercial agreement. This risk of association is envisaged in Article 8(1)(b) EUTMR as a form of risk of confusion and therefore, the refusal of the EUTM application is justified and the contested decision must be upheld.

Costs

40. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the applicant, as the losing party, must bear the opponent’s costs of the opposition and appeal proceedings.

41. As to the appeal proceedings, these consist of the opponent’s costs of professional representation of EUR 550.

42. As to the opposition proceedings, the Opposition Division ordered the applicant to bear the opposition fee of EUR 320 and the opponent’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 1 170.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the opponent’s costs in the appeal proceedings, which are fixed at EUR 550. The total amount to be paid by the applicant in the opposition and appeal proceedings is EUR 1 170.

Signed Th. M. Margellos

Signed C. Rusconi

Signed Ph. von Kapff

Registrar: Signed H.Dijkema