OPPOSITION No B 2 980 293

Raab TV-Produktion GmbH, Schanzenstr. 22, 51063 Cologne, Germany (opponent), represented by Fabian Braches, Bonner Str. 172-176, 50968 Cologne, Germany (professional representative)

a g a i n s t

Ивайло Георгиев, кв.Надежда 1, блок 112, вх. 1, ап. 52, 1220 София, Bulgaria (applicant), represented by Kostadin Manev, 73, Patriarh Evtimii Blvd., fl.1, 1463 Sofia, Bulgaria (professional representative).

On 22/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 980 293 is partially upheld, namely for the following contested services:

Class 38: Telecommunication services.

Class 42: IT services.

2. European Union trade mark application No 16 668 717 is rejected for all the above services. It may proceed for the remaining services in Class 35.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 668 717 for the figurative mark . The opposition is based on European Union trade mark registration No 1 925 734, German trade mark registration No 39 926 442 and international trade mark registration No 751 345 designating Benelux, the Czech Republic, Spain, France, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Romania, Slovenia and Slovakia, all for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR in relation to the above earlier rights and in addition Article 8(5) EUTMR for the earlier EUTM. The opponent further based the opposition on the non-registered trade marks ‘TV Total’ (word) and for the territories of Benelux, Bulgaria, Denmark, Germany, Italy, Austria and Poland, and in relation to which the opponent invoked Article 8(4) EUTMR.

For the sake of completeness, the designation ‘EUIPO’ made by the opponent as a territory for assessment under Article 8(4) EUTMR is disregarded as non-registered rights are not regulated under the EU legislation per se but rely on the national law applicable in the relevant territory.

SUBSTANTIATION OF GERMAN TRADE MARK REGISTRATION No 39 926 442

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

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

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

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

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered – Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source – Article 7(3) EUTMDR.

Furthermore, according to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

In the present case, the notice of opposition was not accompanied by any documents (certificate, translation, etc.) as regards the earlier German trade mark on which the opposition is, inter alia, based. Moreover, the goods and services for which that earlier mark was registered and on which the opponent relied by invoking this right only appear in the notice of opposition in their original language, German. Indeed, the opponent relied on online substantiation, however, the online database provides no official translation into the language of the proceedings and also displays the goods and services in German.

On 31/10/2017, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended upon request of the parties for extension of the cooling-off period and expired on 05/01/2020. As commented above, the opponent did not submit the necessary translation of the goods and services.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 751 345 designating France and Austria.

1. The goods and services

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

Class 9: Magnetic data carriers, recording discs, analog and digital sound, image and data carriers, also for interactive use; spectacles.

Class 16: Paper and cardboard and goods made from these materials (included in this class), printed matter, especially newspapers, magazines, books, prospectuses, photos, posters, calendars, postcards and picture postcards, printed stickers, stationery, writing utensils, notebooks, writing pads, plastic materials for packaging (included in this class), playing cards, office appliances and articles (furniture excepted), printed uncoded telephone cards.

Class 18: Leather and imitations of leather and goods made of these materials (included in this class); animal skins and hides; trunks and travelling bags; bags, rucksacks, purses; umbrellas, parasols, walking sticks.

Class 28: Games, playthings; gymnastic and sporting articles (included in this class); decorations for Christmas trees.

Class 38: Telecommunications; internet services, online services, database services, namely providing telecommunications access and links to computer databases, telephone services, facsimile services, printed coded telephone cards services, transmission of music, video and television programs each of them per on demand, per view and per audio, services in connection with online, namely transmission of news and all kind of information as well as supply of access to data networks, especially to the internet.

Class 41: Entertainment, especially radio and television entertainment; sports, cultural and informative events, music and disc jockey shows; producing of music, video and television programs.

Class 42: Creating of websites, leasing access time to computer databases.

The contested services are the following:

Class 35: Advertising, marketing and promotional services.

Class 38: Telecommunication services.

Class 42: IT services.

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

The term ‘especially’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

The contested services are dissimilar to any of the goods and services covered by the earlier mark because they have nothing in common. They differ in their nature, purposes, methods of use, distribution channels and target public. These categories of goods/services will originate from different undertakings. Furthermore, these services are neither complementary nor in competition.

In particular, the contested advertising, marketing and promotional services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

The above services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods (e.g. the goods in Classes 9, 16, 18 and 28) or services (e.g. Classes 38, 41 or 42) may appear in advertisements is insufficient for finding similarity. Therefore, the contested services remain dissimilar to the goods or services being advertised.

The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising, such as data carriers in Class 9 of the opponent’s goods, and printed matter in Class 16. These goods and services are considered dissimilar.

Contested services in Class 38

Telecommunication services are identically contained in both lists of services (including synonyms).

Contested services in Class 42

The contested IT services include, as a broader category, the opponent’s creating of websites, leasing access time to computer databases. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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 services found to be identical are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territories are France and Austria.

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 verbal element ‘TV’ of the signs will be understood as the short form of ‘television’ by the relevant public. Given the nature of the services in question, namely telecommunications and IT services, this element is indicative of their nature or purpose and to that extent only of a limited distinctiveness in both signs.

The verbal element ‘total’ of the signs will be understood as ‘including all or everything; entire; complete’ by the relevant Austrian- and French-speaking parts of the public (information extracted from Larousse on 12/05/2020 at https://www.larousse.fr/dictionnaires/francais/total and from Duden on 12/05/2020 at https://www.duden.de/suchen/dudenonline/total). While this word creates no clear/directly intelligible conceptual unit with the word ‘TV (total)’, it may allude to the fact that the services in question are provided with a broad spectrum of products or in an exhaustive variety or manner. Consequently, albeit vague in its designated meaning, this word is considered to have a somewhat weaker degree of distinctiveness.

Finally, the additional word ‘MY’ of the contested sign is a basic English word serving as ‘the first person singular possessive determiner’. Considering the nature of the services in question (telecom and IT-related services), the Opposition Division is of the opinion that a significant part of the public will perceive the meaning of this word and thus see it as a reference that ‘[a] speaker or writer uses “my” to indicate that something belongs or relates to himself or herself’ (information extracted from Collins Dictionary on 12/05/2020 at https://www.collinsdictionary.com/dictionary/english/my). Taking into account the indicative role of this word in the sign, it is also considered of a lesser degree of distinctiveness as it will merely demonstrate the relation between the speaker and the services covered under the application. The assessment will naturally proceed with respect to the public that perceives the word ‘my’ as meaningful.

As far as the earlier mark is concerned, the figurative element is a clear depiction of a television screen and will be directly perceived as a reinforcement of the concept conveyed by the verbal element ‘TV’. However, the figurative element as a whole bears some distinctiveness due to its fanciful depiction, in particular due to the addition of a pair of horns.

To that extent, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the verbal elements of the sign are considered to play a more significant role than the figurative elements.

Likewise, as regards the contested sign, in general, it is composed of the verbal elements discussed above and the figurative elements, namely a speech bubble depicted in yellow with squared corners, which resembles a TV screen, and a plain black rectangular background of a purely decorative nature. In this case, given the possible relation of the speech bubble or TV screen to the services in question, all related to a sort of communication or telecommunications, the verbal elements may be considered more distinctive than the figurative elements or at least having more impact on the overall impression conveyed by the sign.

Despite the fact that the components of the signs may have slightly different sizes and positions within the overall arrangement, none of these elements may clearly be identified as particularly striking or dominating the overall visual impression.

Visually and aurally, the signs coincide in their verbal elements ‘TV total’, or in its inverted version ‘TOTAL TV’ (in the contested sign), and the sounds thereof. They differ in the additional word ‘MY’ of the contested sign, and in the sound thereof, as well as in the figurative elements that both signs display, as referred to above.

Given the coincidences in the signs and taking into account the distinctiveness of their components, as described above, the signs are found visually similar to an average degree and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings and given that the additional word ‘MY’ in the contested sign or the figurative elements will not divert their common concepts significantly, the signs are considered conceptually highly similar.

As explained above, the figurative elements of the signs (TV screens or speech bubble) simply reinforce the word TV or relate to the services in question (e.g. telecommunications) and will merely be seen as an embellishment rather than elements conveying differing and distinctive concepts.

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 clear/univocal meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, considering its fanciful figurative element, the distinctiveness of the earlier mark in its totality must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical and partly dissimilar. They target the public at large, whose degree of attention will be average. The earlier mark is considered to enjoy a normal degree of distinctiveness as a whole.

As established above, the signs are visually similar to an average degree and aurally and conceptually highly similar on account of their coinciding verbal elements ‘TV’ and ‘total’. Account is taken of the fact 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).

A coincidence in an element with a low degree of distinctiveness will not on its own lead to the likelihood of confusion. However, there may be a likelihood of confusion if the other elements are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar. There may also be a likelihood of confusion if the overall impression of the marks is highly similar or identical.

In the present case, despite the coincidence in elements of somewhat limited distinctiveness (‘TV’ and ‘total’), the signs convey a sufficiently similar overall impression, especially when seen in the same market sectors. As previously explained, the signs only differ in aspects of a weak degree of distinctiveness or less weight in the perception of the signs, in particular the additional word ‘MY’ of the contested sign and the figurative elements that both signs display. These elements are not found to have as much weight in the perception of the signs as to completely counteract the similarities discussed above, and lead to safely distinguishing between the signs in the same commercial environment.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). The services in question are found identical, which is a factor for further consideration when assessing the similarities between the signs as emphasised above.

Therefore, in light of all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Austrian- and French- speaking public and therefore the opposition is partly well founded on the basis of the opponent’s international registration designating France and Austria.

It follows that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

For the sake of completeness, the international registration designating the remaining territories not examined above will lead to the same outcome as they are registered for the same or less (in the case of Spain) goods and services.

The opponent has also based its opposition on the European Union trade mark registration No 1 925 734 registered for Classes 9, 14, 16, 18, 24, 25, 28, 38, 41 and 42. It is obvious that the mark is identical to the one compared above and covers the same, slightly expanded (additional Classes 14, 24 and 25) or essentially similar scope of goods and services. The same findings as in the comparison above apply in respect to the additional goods in Classes 14, 24 and 25 or of the services, despite the slightly different wording used. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

REPUTATION — ARTICLE 8(5) EUTMR IN RELATION TO EUTM No 1 925 734

In addition, the opponent claimed that its earlier EUTM No 1 925 734 enjoys reputation in relation in the European Union in relation to the goods and services mentioned in the notice of opposition.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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

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

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

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 31/10/2017, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended upon request of the parties for extension of the cooling-off period and expired on 05/01/2020.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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

Finally, the opponent based the opposition on the other signs used in the course of trade: ‘TV Total’ (word) and for the territories of Benelux, Bulgaria, Denmark, Germany, Italy, Austria and Poland.

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

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

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

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

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

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

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

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

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

Likewise, as shown in the previous section of Reputation, the opponent did not submit any evidence to show use within the relevant period for submitting further facts and evidence, namely until 05/01/2020.

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

OVERALL CONCLUSION

As a result, the opposition is upheld for the services in Classes 38 and 42, however, it is not successful as far as the contested services in Class 35 are concerned.

For the sake of completeness, the fact that the earlier EUTM is at present the subject of cancellation proceedings remains immaterial as the opposition was not found successful on the basis of this earlier right for both grounds invoked in relation to it, namely Article 8(1)(b) and Article 8(5) EUTMR. Consequently, to the note of the applicant, suspension of the proceedings would not have led to any different effect.

COSTS

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

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

The Opposition Division

Sylvie ALBRECHT

Manuela RUSEVA

Valeria ANCHINI

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.