OPPOSITION No B 3 023 994

Sociedad Española De Radiodifusion, S.L., Calle Gran Via, 32, 28013 Madrid, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Slightly Mad Studios Pte. Ltd., 1 Scotts Road #21-10, 228208, Shaw Centre, Singapore (applicant), represented by Sheridans, Seventy Six Wardour Street, W1F 0UR, London, United Kingdom (professional representative).

On 21/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 023 994 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 services of European Union trade mark application No 17 075 805 ‘WMD: World of Mass Development’ (word mark), namely against all the services in Class 41.

The opposition is based on Spanish trade mark registration No M 3 661 998  (figurative mark).

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 the following:

Class 41: Editing and production services of radio and television programmes; organisation and/or production of shows; organisation of radio and television entertainment; videotape production; film production; production of radio or television

programmes; news reporters services; photographic reporting; television entertainment; radio and television entertainment; production of shows; videotaping; publication of electronic books and journals online; use of on-line electronic publications (not downloadable by data transmission).

The contested services are the following:

Class 41: Entertainment services; entertainment services in the form of electronic, computer and video games provided by means of the internet and other remote communications device; internet games (non downloadable); organising of games; games (not downloadable) played via a global computer network; providing interactive entertainment services; education and entertainment services in the form of cinematographic, televisual, digital and motion picture films, radio and television programs and shows and for the provision of educational and entertainment information by computer networks, television, mobile telephone, cable and other electronic means; preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; entertainment services in the form of electronic, computer and video games provided by means of the internet, mobile telephone and other remote communications device; publishing of computer and video games and computer and video games software; provision of customised web pages for featuring game player information, including information regarding a player's identity and the player's preferences; publishing of entertainment and educational software; arranging, organizing and conducting conferences and seminars for promotional purposes; audio production; video production; theatre production; music production; publishing; film publishing; media publishing; music publishing.

Both the applicant’s and the opponent’s services are in Class 41. Some of the contested services are identical to opponent’s services such as the opponent’s television entertainment and the applicant’s entertainment services, for example. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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

The degree of attention is considered to be average.

c) The signs

	WMD: World of Mass Development
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 contested sign consists of the verbal elements ‘WMD: World of Mass Development’. Although independently meaningless, ‘WMD’ will be perceived as an acronym of the expression which follows it. ‘World’ is a basic English word and will be understood as a vague reference to something global or international, therefore its distinctiveness is below average. Of the remaining verbal elements, neither ‘mass’ nor ‘development’ has any meaning in Spanish while ‘of’ may be understood as joining the words before and after it. Therefore, the expression as a whole refers rather vaguely to something global or international.

The earlier mark consists of the letters ‘WDM’ in stylized white and pink letters, placed inside black rectangles. Below these letters are the words ‘WORLD DANCE MUSIC’ in black uppercase. Visually, none of these elements clearly dominates the sign. The letter combination ‘WDM’ will be seen as an acronym clarified in the expression ‘WORLD DANCE MUSIC’. This expression will be understood as such in the relevant territory as these can be considered to be basic English words, and ‘dance’ and ‘music’ also have a very similar equivalent in Spanish (‘danza’ and ‘musica’). Since the relevant services are related to entertainment or reporting, this expression is allusive to the possible subject matter of these services, therefore, it has below average distinctiveness. Finally, the figurative elements, colours and stylization will be viewed as rather decorative elements of a limited distinctiveness.

Visually, the signs coincide in the word ‘WORLD’ and the letters in their respective acronyms albeit ‘M’ and ‘D’ are in different positions, and in the earlier mark the letters are represented in a particular stylization and colours. Furthermore, the letters of the acronym in the earlier sign are placed in black rectangles while the one in the contested sign is part of a word mark, in simple fonts. The signs also differ in their additional verbal elements: ‘DANCE MUSIC’ / ‘of Mass Development’. Clearly, these are visually very different words composed of a total of ten letters in the earlier mark and seventeen in the contested sign. Overall, the fact that the signs coincide in a verbal element of low distinctiveness (‘WORLD’) and that their acronyms are composed of the same letters but in different positions is not sufficient to offset the significant visual differences produced by the additional verbal elements, colours and stylization. Therefore, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of their initial letter ‘W’ and in that of their only common verbal element ‘WORLD’. Furthermore, while the signs additionally share the letters ‘M’ and ‘D’, these are in different positions, which substantially limits the aural impact of this coincidence. The signs also differ in the length of their additional words as explained above, which makes the contested sign much longer and it, therefore, sounds different and has distinct rhythm and intonation in comparison to the earlier mark. Overall, the signs are similar to a low degree.

Conceptually, reference is made to the preceding paragraphs concerning the semantic content in the signs. Accordingly, the signs will be associated, through their only common meaningful element ‘WORLD’, with a rather vague concept of international or global services. However, this common element forms part of a meaningful expression in the earlier mark while it is included in an overall meaningless expression in the contested sign. With regard to the signs’ acronyms, they will merely be recognized as abbreviation formed by the initial letters of the signs’ verbal elements, consequently they add no new concept to them. It is, therefore, concluded that the signs are conceptually similar to a very low degree.

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

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 is composed of a particular combination of an acronym, a weakly distinctive expression and colour and figurative elements, as explained above. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The services have been assumed identical while the signs are similar to a low degree visually, aurally and conceptually.

The coincidences between the signs are restricted to a word of low distinctiveness and to the letters of their acronyms. However, even the coinciding letters in their acronyms are in different order, and the additional, differing, verbal elements and the stylization and colours further increase the visual and aural differences, as explained above. In addition, consumers will have no difficulty in understanding the essential concept evoked by the earlier mark while the contested sign is meaningless as a whole and only includes a rather vague semantic content of the element ‘WORLD’. Therefore, it would be unlikely for consumers to confuse the signs.

In its observations, the opponent cites 23/10/2002, T-388/00, ELS, EU:T:2002:260 as well as Opposition Decision B 1 310 160 to support its claim that the inversion of letters does not constitute a significant difference. However, in the present case, the signs also differ in a number of other elements, both verbal and figurative, therefore, it is not analogous to the cases cited in which the marks in conflict essentially consisted of acronyms. The opponent also refers to Opposition Decision B 2 448 036, however, in that case the signs coincided in a distinctive verbal element and there was no inversion of letters in their acronyms while in B 2 524 224, also cited by the opponent, the signs shared two, long, verbal elements and they were found to be conceptually highly similar. In summary, the opponent’s arguments relying on these earlier decisions must be set aside as those cases are not comparable with the present one.

Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Zuzanna STOJKOWICZ

Ferenc GAZDA

Biruté SATAITE-GONZALEZ

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.