OPPOSITION Nо B 2 886 789

Sociedad Española de Radiodifusion, S.L., Calle Gran Via 32, 28013 Madrid, Spain (opponent), represented by Baylos, C/ José Lázaro Galdiano 6, 28036 Madrid, Spain (professional representative)

a g a i n s t

Facebook, Inc., 1601 Willow Road, 94025 Menlo Park, United States of America (applicant), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative).

On 09/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 886 789 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 013 302 (figurative mark), namely against all the goods and services in Classes 9 and 38. The opposition is based on Spanish trade mark registration No 2 572 855 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the services invoked, which is the best light in which the opponent’s case can be considered.

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 services on which the opposition is based are the following:

Class 38: Communications and transmissions in general and communication by computer terminals via global computer networks; message sending services; telephone services; radio and television broadcasting; telecommunications by any other element or sensory means that allows communications between people.

Class 41: Education, training and entertainment services; publishing and production of discs, CDs and MCs; musical, cinema and video publications and productions, production of audiovisual recordings, all on any media, including electronic; production, recording and editing of films, radio and television serials and programmes; artists’ services; representation services, organisation, production, development and presentation of live performances, concerts, festivals, awards and competitions; organisation and development of sporting and cultural activities; publishing on any medium, including electronic, of content, books and texts, other than publicity texts; electronic on-line publishing via global computer networks, of content, books and texts, other than publicity texts.

The contested goods and services are the following:

Class 9: Computer software development tools; computer software for use as an application programming interface (API); application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; downloadable e-commerce computer software to allow users to perform electronic business transactions via global computer and communication networks; software for sending electronic message alerts and reminders via the internet; software for transmitting orders and for sending and receiving electronic messages via the internet; downloadable computer software for modifying the appearance and enabling transmission of images, audio visual and video content; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer search engine software.

Class 38: Photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among internet users; providing access to computer, electronic and online databases; telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; providing online forums for communication on topics of general interest; providing online communications links which transfer mobile device and internet users to other local and global online locations; facilitating access to third party websites or to other electronic third party content via a universal login; providing online chat rooms, email and instant messaging services, and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks, namely, uploading, posting, displaying, modifying, tagging, and electronically transmitting data, information, audio and video; voice over IP services; telephony communication services; providing access to computer databases in the fields of social networking, social introduction and dating.

Some of the contested goods and services are identical or similar to the opponent’s services in Class 38. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical or similar to the services in Class 38 of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

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 earlier mark is a figurative mark containing a bold red ‘W’, surrounded by two diagonal ovaloid black lines. Beneath this is the verbal element ‘RADIO’ in black bold upper case.

The contested sign is a figurative mark which contains a white zigzagged line, the right end of which extends and surrounds it. This figurative element may be perceived as a stylised letter ‘W’. It is placed on a black background in the shape of a speech bubble.

The examination will proceed based on the perspective of the public that sees a letter ‘W’ in the contested sign as this will lead to greater similarity between the signs.

The earlier mark’s element ‘W’ has no meaning in relation to the relevant services and is, therefore, distinctive.

The earlier mark’s figurative element consisting of two ovaloid lines surrounding the letter ‘W’ may be perceived as telecommunication waves and is, therefore, weak in relation to the relevant services.

The relevant public will associate the earlier mark’s element ‘RADIO’ with the shortened form of the Spanish word radiodifusión, which refers to radio broadcasting. Bearing in mind that the relevant services are radio broadcasting, or communication and telecommunication services that include radio broadcasting, this element is non-distinctive because it refers to the intended purpose of these services.

The contested sign’s element ‘W’ has no meaning in relation to the relevant goods and services and is, therefore, distinctive.

The figurative element consisting of a black speech bubble is a shape commonly used to indicate a chat in the software and telecommunication fields. It will be perceived by the relevant public as a merely decorative background. Therefore, it is non-distinctive.

According to the Office Guidelines on Opposition, it is the Office’s practice to restrict the notion of the dominant element to the visual impact of the elements of a sign, that is, to use it exclusively to mean ‘visually outstanding’. Therefore, the dominant character of a particular component of a sign is mainly determined by its position, size, dimensions or use of colours, to the extent that they affect its visual impact.

The weak distinctive character of an element of a complex mark does not necessarily imply that this element cannot constitute a dominant element since, because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them (13/06/2006, T‑153/03, Peau de vache, EU:T:2006:157, § 32). Consequently, the fact that a component of a mark may or may not be considered non-distinctive (or as having a low degree of distinctiveness) has no bearing on the assessment of its dominant character.

Therefore, contrary to the opponent’s arguments, the earlier mark has no element that could be considered clearly more dominant than other elements. This is because the weak figurative elements surrounding the letter ‘W’ are at the same level as the letter ‘W’, and the non-distinctive verbal element ‘RADIO’ is not so much smaller than the letter ‘W’ as to be eclipsed by it.

The contested sign also has no element that could be considered clearly more dominant than other elements.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs both include the letter ‘W’, although depicted in a very different style. The letter ‘W’ of the earlier mark is depicted in red, in a rather standard stylisation. In the contested sign, the letter ‘W’ is depicted in white with its right edge elongated to form an incomplete circle surrounding the letter. The middle of the earlier mark’s letter ‘W’ is lower than the outer lines and its vertices are straight. However, in the contested sign, the vertices are all the same height and are rounded. The earlier mark’s letter ‘W’ is surrounded by two diagonal, ovaloid black lines which have no counterparts in the contested sign. The signs also differ in the earlier mark’s additional non-distinctive verbal element ‘RADIO’ and in the non-distinctive black background of the contested sign. The signs differ in their overall visual impression.

Therefore, the signs are not visually similar.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‘W’, present identically in both signs. The pronunciation differs in the syllables ‘RA-DIO’ of the earlier mark’s non-distinctive element.

Therefore, the signs are aurally similar to a very high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning, namely the letter ‘W’. However, the marks also include other figurative elements, namely the ovaloid lines (which are weak) and the non-distinctive element ‘RADIO’ of the earlier mark, and the non-distinctive figurative element in the contested sign. Therefore, the marks are conceptually similar to a very high degree.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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 weak and non-distinctive elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

All the contested goods and services have been assumed to be identical or similar to the opponent’s services in Class 38 and target both the public at large and a professional public whose level of attention varies from average to high. The perspective taken in the comparison of the signs has been to consider the contested sign as representing the letter ‘W’.

The signs are aurally and conceptually similar to a very high degree. However, taking into account that the signs are short, they have no visual similarity because the differences between them are immediately noticeable and result in a different overall visual impression.

Both signs depict a letter ‘W’. As to the overall assessment of likelihood of confusion, the General Court has made it clear that the fact that two trade marks consisting of the same letter (or of the same sequence of letters) are found to be identical from an aural and a conceptual point of view is relevant when it comes to assessing the existence of a likelihood of confusion. In such cases, it is only when the later trade mark causes a sufficiently different visual impression that a likelihood of confusion can be safely ruled out (10/05/2011, T‑187/10, G, EU:T:2011:202, § 60).

Consequently, a likelihood of confusion can be safely excluded when two conflicting signs, albeit containing or consisting of the same single letter or a combination of letters not recognisable as a word, are stylised in a sufficiently different way or contain a sufficiently different figurative element so that their different overall graphical representation eclipses the common verbal element.

The visual differences between the signs at issue make it possible to exclude a likelihood of confusion for all the contested goods and services, even though they have been assumed to be identical or similar.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings.

The signs compared in the cases cited by the opponent, opposition decisions Nos B 2 725 961, B 2 631 961, B 1 394 743, B 462 657 and B 2 790 577 are not comparable with the marks at issue. Those signs showed features that lead them to have a certain degree of visual similarity, while the signs at issue are visually dissimilar.

Considering all the above, even assuming that the contested goods and services are identical or similar to the opponent’s services in Class 38, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Likewise, even if the contested goods and services were identical or similar to the opponent’s services in Class 41, the differences between the signs would be even greater, because the earlier mark’s figurative element (oval shapes) and verbal element (‘RADIO’) are distinctive. Therefore, there would be no likelihood of confusion in this case either.

This absence of a likelihood of confusion equally applies to the part of the public for which the contested sign is not seen as a letter. This is because, as a result of this perception, the signs will not share any conceptual similarity, and that part of the public will perceive the signs as being even less similar.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Victoria DAFAUCE MENÉNDEZ

Vít MAHELKA

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.