OPPOSITION No B 2 848 482

Mediaset España Comunicación, S.A., Ctra. Fuencarral Alcobendas, 4, 28049, Madrid, Spain (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046, Madrid, Spain (professional representative)

a g a i n s t

Sound Diplomacy Holdings Ltd, The Clock House, Station Approach, SL7 1NT, Marlow, United Kingdom (applicant), represented by Monereo, Meyer & Marinel-lo Abogados SL, Paseo de Gracia, 98 4º, 08008, Barcelona, Spain (professional representative).

On 27/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 848 482 is upheld for all the contested services.

2. European Union trade mark application No 16 003 303 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 003 303 for the word mark ‘MUSIC CITIES’. The opposition is based on Spanish trade mark registration No 3 588 026 for the word mark ‘MUSICAL CITIES’. The opponent invoked Article 8(1)(b) 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.

a) The services

The services on which the opposition is based are, among others, the following:

Class 41: Teaching; training; entertainment services; sporting and cultural activities; production of radio and television programmes; radio and television entertainment; videotape production; films production (films); news reporters services; photographic reporting; television entertainment; production of shows; videotaping; on-line publication of electronic books and journals (not downloadable); providing online electronic publications, not downloadable; page layout not for advertising purposes; organisation of musical shows; publication of books; publication of texts, other than publicity texts.

The contested services, after the applicant’s limitation of 23/06/2017, are the following:

Class 41: Organization of debates; organization and conducting of conferences and seminars; consulting services in the field of music; consulting services in the field of music events.

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.

Conferences and seminars are meetings for professionals for education, information, and training purposes. Therefore, organization and conducting of conferences and seminars overlap with the opponent’s teaching and training. Therefore, they are identical. Similarly, organization of debates (being a discussion about a subject on which people have different views) overlap with the opponent’s teaching and training. Therefore, they are identical.

The contested consulting services in the field of music; consulting services in the field of music events are similar to the opponent’s entertainment services as it is not uncommon in the relevant market sector for the provider of entertainment to offer also information in the field of music. They can target the same end users and have the same distribution channels. Furthermore, the services are complementary. Therefore, they are similar.

The applicant argues that the services under comparison are completely different as the contested sign is intended to be used in a series of conventions for professionals that explore how music makes cities better, while the services of the earlier mark refer to a TV program directed at non-professional consumers concerning music originating from different cultures. In this respect the Opposition Division points out that the services must be compared as they are applied for, and no account can be taken of how the parties use or intend to use the signs.

Further, the applicant argues that since the opponent has failed on arguing the alleged identity or similarity of the services (after the applicant’s limitation of the specification of the services), this should imply the dismissal of the opposition since the likelihood of confusion has to be proven by the opponent. In this regards the Opposition Division notes that the degree of similarity of the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it (16/01/2007, T-53/05, Calvo, EU:T:2007:7, § 59). Therefore, the applicant’s allegations are considered as unfounded.

According to the applicant, taking into account that the opposing mark is a Spanish trade mark registered after the IP Translator judgment (Case C-307/10) and contains the entire Nice class heading, it has only been registered for the services that have been individually listed, namely in Class 41: ‘Production of radio and television programs; radio and television entertainment; videotape production; films production (films); news reporters services; photographic reporting; television entertainment; production of shows; videotaping; on-line publication of electronic books and journals (not downloadable); page layout not for advertising purposes; organization of musical shows; publication of books; publication of texts; other than publicity texts’. According to the Guidelines of the Office, Part C Opposition, Section 2 Double identity and likelihood of confusion, Chapter 2 Comparison of goods and services: ‘As regards the scope of protection of national marks, the Office and all national trade mark offices of the European Union issued a Common Communication on the implementation of the ‘IP Translator’ judgment. According to that Communication, the Office interprets the scope of protection of national marks containing class headings as follows (…): Earlier national marks filed after the ‘IP Translator’ judgment: the Office interprets all goods and services covered by the national marks on the basis of their natural and usual meaning’.

According to the ‘Common Communication on the Common Practice on the General Indications of the Nice Class Headings’ of 28/10/2015 the Trade Mark Offices of the European Union examined all general indications of the Nice class headings with respect to the requisites of clarity and precision. This review has determined that the general indications of Class 41 are acceptable as it was agreed that they are sufficiently clear and precise in accordance with the judgment in IP Translator. Therefore, the earlier mark is clearly protected also for the terms which constitute the class heading. In consequence, the applicant’s allegations have to be regarded as unfounded.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed both at the public at large and professionals. The public’s degree of attentiveness may vary from average to high depending on, in particular the specialised nature, or terms and conditions of the services purchased.

The applicant asserts that the contested sign is aimed for a professional public, in particular, professionals from the creative industry whose degree of attention will be high. The Opposition Division considers that in the present case the relevant public of the services as applied for consists of both, the public at large and professionals. Given the kind of services, the relevant public’s level of attention may vary as stated above.

c) The signs

MUSICAL CITIES	MUSIC CITIES
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 word ‘MUSICAL’ of the earlier mark is a Spanish word that will be understood as ‘1. adj. Belonging or relating to music; 2. adj. That it possesses own characteristics of the music, like the harmony, the sonority, etc. Voice; 3. m. Theatrical or cinematographic genre of Anglo-American origin, which includes as a fundamental element sung and danced parts’ (http://dle.rae.es/?id=Q9E5jP9). Therefore, this word is weak for part of the services, in particular for entertainment services.

The word ‘MUSIC’ of the contested sign given its resemblance to the translation in Spanish, ‘música’, will be perceived as ‘melody, rhythm and harmony, combined’ (http://dle.rae.es/?id=Q9MHl5m). Consequently, ‘MUSIC’ is weak for all the services covered by the contested mark.

According to the allegations of both parties, the word ‘CITIES’ included in both signs will be understood by the relevant public as a plural form of a word ‘city’ meaning ‘a large town’ (https://en.oxforddictionaries.com/definition/city). Since it does not directly describe the characteristics of the services in question, its distinctiveness is average. However, part of the relevant public will not associate the word ‘CITIES’ with any meaning and, therefore, it has an average distinctive character.

Visually and aurally, the signs coincide in ‘MUSIC CITIES’ that constitute the entirety of the contested mark and the first five letters of the first word, ‘MUSICAL’, of the earlier mark and the totality of the second word ‘CITIES’. The coinciding word ‘MUSIC’ has been considered weak for all the services.

The signs differ in two additional final letters, ‘AL’, of the first word of the earlier mark. Since the contested sign is fully included in the earlier mark and the differences are limited to the final two letters of the first word of the earlier mark, the signs at issue are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived by part of the relevant public as referring to the same notion of ‘cities relating to music’, the signs are conceptually identical. For part of the public that will not understand ‘CITIES’, the signs are similar to a low degree, because they overlap in a weak element.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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

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

e) Global assessment, other arguments and conclusion

The services are partially identical and partially similar. The degree of attention of the relevant public may vary from average to high. It has been established that the earlier mark as a whole has a normal degree of distinctiveness. The signs were found visually and aurally similar to a high degree, while conceptually they are identical for part of the public, while for the remaining part, they are conceptually similar to a low degree.

The consumer will perceive an overall impression of similarity between the signs since the differences between them, which are limited to the final additional two letters, ‘AL’, in the earlier mark, are insufficient to distinguish the signs.

The applicant argues that it has been using the contested sign even before the opponent registered its ‘MUSICAL CITIES’ mark. The applicant filed some items of evidence to substantiate this claim. The opposition Division points out that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

It should be borne in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54). The visual and aural high similarity, conceptual identity and the identity and similarity of the services are in the case at issue such as to lead consumers to believe that the services at issue bearing the conflicting marks come from the same undertaking, or from economically-linked undertakings.

The differences between the signs, namely two additional final letters in the earlier mark, are not capable of creating sufficient difference to safely exclude the likelihood of confusion between the signs.

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

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 588 026. It follows that the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ewelina SLIWINSKA

Marzena MACIAK

Monika CISZEWSKA

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.