OPPOSITION Nо B 3 106 041

 

Mac Guffin, S.L., C/ Henri Dunant 15-17, 28036 Madrid, Spain (opponent), represented by IberianIP, Avenida de la Industria, 32, 28108 Alcobendas; Madrid, Spain (professional representative) 

 

a g a i n s t

 

Macevent Gmbh, Dillenburger Straße 73, 51105 Köln, Germany (applicant), represented by Rechtsanwälte Funkemüllerraimann, Schwanenhöfe Erkrather Strasse 220b, 40233 Düsseldorf, Germany (professional representative).

On 21/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 106 041 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the services of European Union trade mark application No 18 106 917 (figurative mark). The opposition is based on the following trade marks:

 EUTM registration No 1 496 280, (figurative mark)

 EUTM registration No 16 768 053, (figurative mark)

 EUTM registration No 14 297 873, (figurative mark)

 EUTM registration No 12 726 071, (figurative mark)

 Spanish trade mark registration No 2 891 222, ‘OFFMACGUFFIN’ (word mark)

 Spanish trade mark registration No 2 940 310, (figurative mark)

 Spanish trade mark registration No 2 381 567, ‘SEVENTEAM’ (word mark)

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – Spanish trade mark registrations No 2 891 222, ‘OFFMACGUFFIN’, 2 940 310, , and 2 381 567, ‘SEVENTEAM’

 

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. According to Article 46 EUTMR in conjunction with Article 2(2)(h)(iii) and Article 7(2) EUTMDR when invoking Article 8(1) EUTMR only the proprietors and authorised licensees are entitled to file an 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.

On 12/12/2019, Mac Guffin, S.L. (the opponent) filed a notice of opposition claiming as the basis of the opposition, inter alia, Spanish trade mark registration No 2 891 222, ‘OFFMACGUFFIN’, Spanish trade mark registration No 2 940 310 , and Spanish trade mark registration No 2 381 567, ‘SEVENTEAM’. In the notice of opposition, the opponent indicated in the parts dedicated to the earlier marks that the owner/applicant of the aforementioned earlier marks is Oscar María Santiago Saracho. Yet, in the part relating to its entitlement, the opponent also indicated that it is the owner/co-owner of the earlier marks on which the opposition is based, including the aforementioned earlier marks. Finally, in the notice of opposition, the opponent also indicated that it accepted that the necessary information for the earlier trade marks be imported from the relevant online official database, accessible through TMVIEW, and that this source be used for substantiation purposes. According to this information, the only owner of these earlier trade marks is Oscar María Santiago Saracho, not being the opponent owner or co-owner as indicated in the notice of opposition. Since the opponent is not owner or co-owner and has neither indicated nor proved to be an authorised licensee, the opponent has not proven its entitlement to file the opposition on the basis of the aforementioned earlier Spanish trade mark registrations.

According to Article 8(1) and (7) 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, insofar as it is based on these earlier marks.

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 EUTM registration No 16 768 053, , EUTM registration No 14 297 873, , and EUTM registration No 12 726 071, .

a) The goods and services

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

EUTM registration No 16 768 053, – earlier mark (1)

Class 16: Paper cardboard; books, magazines and periodical publications of paper, printed matter; binding articles; photographs; stationery; glue for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic material for packaging (not included in other classes); printers' type; printing blocks.

Class 35: Advertising; business management; business administration; office functions; dissemination of advertising matter and direct mail advertising; advertising, including promotions; assistance in the commercial functions of companies and businesses, including client relationship management; selection of personnel; personnel management for advertising purposes; sales promotion for others; public relations services; import and export services; franchise-issuing in connection with retailing in shops, organisation of exhibitions, events, fairs and shows for commercial, promotional and advertising purposes; event marketing.

Class 41: Education; providing of training; entertainment; sporting and cultural activities, academies (education); animal training; modelling for artists; rental of radio and television sets; rental of video recorders; rental of movie projectors and accessories; rental of sports grounds; rental of videotapes; rental of show scenery; rental of audio equipment; rental of skin diving equipment; rental of lighting apparatus for theatrical sets or television studios; games equipment rental; rental of sports equipment, except vehicles; rental of stadium facilities; rental of sound recordings; rental of toys; rental of motion pictures; rental of tennis courts; rental of video cameras; entertainer services; mobile library services; ticket agency services [entertainment]; calligraphy services; sport camp services; camp services (holiday -) [entertainment]; casino facilities [gambling] (providing -); circuses; conducting fitness classes; health club services [health and fitness training]; night clubs; club services [entertainment or education]; coaching [training]; layout services, other than for advertising purposes; music composition services; timing of sports events; vocational retraining; correspondence courses; discotheque services; dubbing; physical education; religious education; entertainment; rental of stage scenery; music-halls; performances (presentation of live -); production of shows; movie studios; recording studio services; educational examination; cinema presentations; golf facilities (providing -); providing sports facilities; providing amusement arcade services; training (practical -) [demonstration]; photography; gymnastic instruction; videotaping; nursery schools; entertainment information; recreation information; education information; boarding schools; sign language interpretation; gambling; game services provided on-line from a computer network; providing karaoke services; electronic desktop publishing; microfilming; videotape editing; production of television and radio programs; museum facilities (providing -) [presentation, exhibitions]; organization of balls; organisation of sports competitions; organisation of competitions [education or entertainment]; arranging of beauty contests; organisation of fashion shows for entertainment purposes; organization of shows [impresario services]; organization of exhibitions for cultural or educational purposes; planning (party -) [entertainment]; operating of lotteries; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging and conducting of symposiums; workshops (arranging and conducting of -) [training]; vocational guidance [education or training advice]; orchestra services; amusement parks; personal trainer services [fitness training]; library services; videotape production; film production, other than advertising films; production of music; radio entertainment; television entertainment; publication of books; publication of texts, other than publicity texts; publication of electronic books and journals on-line; recreation facilities (providing -); scriptwriting services; writing of texts, other than publicity texts; photographic reporting; news reporters services; theater productions; booking of seats for shows; disc jockey services; educational services provided by schools; language interpreter services; zoological garden services; subtitling; providing on-line electronic publications, not downloadable; translation and interpretation.

EUTM registration No 14 297 873, – earlier mark (2)

Class 9: Electronic publications, downloadable; electronic publications recorded on computer media; weekly publications downloaded in electronic form from the internet; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 38: Telecommunications; data telecommunications, including webpages; provision of access to web pages; access to content, websites and portals; webcasting services; web site forwarding services.

Class 42: Design and development of computer hardware and software; hosting websites on the internet; rental of web servers; building and maintaining websites; consultancy with regard to webpage design; creating electronically stored web pages for online services and the internet; managing the web sites of others; website usability testing services; rental of web servers: providing information on computer technology and programming via a web site.

EUTM registration No 12 726 071, – earlier mark (3)

Class 9: Computer software.

Class 35: Organisation of events for commercial and advertising purposes; providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; advertisement for others on the internet; rental of advertising space on the internet; subscriptions (arranging -) to a telematics, telephone or computer service [internet]; business information services provided online from a global computer network or the internet; business administration services for processing sales made on the internet.

Class 38: Provision of telecommunication access and links to computer databases and to the internet; computer communication and internet access; internet services providers (isps); arranging access to databases on the internet; provision of telecommunications access to databases and the internet; internet service provider services; providing an online interactive bulletin board; providing access to web sites on the internet; providing on-line electronic bulletin board services and chat rooms; provision of electronic communication links.

Class 41: Organising events for entertainment purposes; entertainment provided via the internet; provision of information relating to entertainment online from a computer database of the internet.

Class 42: Provision of search engines for the internet; hosting of internet sites; installation and maintenance of internet access software; providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; constructing an internet platform for electronic commerce; graphic design for the compilation of web pages on the internet; maintenance of software for internet access; rental of software for internet access; development of software solutions for internet providers and internet users.

Following the different limitations of contested goods and services filed by the applicant, the contested services are the following:

Class 35: Shows (conducting business -); organisation of events for commercial and advertising purposes; rental of advertising space on the internet; advertising; response advertising; computerised business promotion; online advertisements; advertising; advertising; advertising; advertising services by means of sandwich board; advertising and marketing; publicity columns preparation; publicity columns preparation; publicity and sales promotion services; promotion of fairs for trade purposes; classified advertising; arrangement of advertising; direct marketing; advertising for others; promotion of musical concerts; promotion of special events; promotion [advertising] of travel; business promotion services provided by audio/visual means; advertising services relating to the provision of business; publicity and sales promotion services; advertising services relating to real property; promotion [advertising] of business; business promotion; advertising services by means of balloon displays; dissemination of advertisements; agency services for arranging business introductions; modelling agency services relating to sales promotions; modelling agency services relating to sales promotions; marketing services; promotional marketing; brand positioning services; product launch services; event marketing; digital marketing; marketing agency services; marketing consulting; advertising and marketing consultancy; internet marketing; advertising, marketing and promotional services; advertising, marketing and promotional services; provision of marketing advisory services for manufacturers; advertising and marketing; planning of marketing strategies; advice relating to marketing management; market campaigns; advertising and marketing services provided via communications channels; marketing services provided by means of digital networks; arranging and conducting of marketing events; production of sound recordings for marketing purposes; advertising agencies; advertising agencies; all of the above listed not related to computers and computer equipment.

Class 39: Travel arrangement; operating of tours; tour conducting; booking of seats (travel); travel arrangement; travel arrangement; operating of tours; tour operator services for the booking of travel; coordinating travel arrangements for individuals and for groups; agency services for arranging travel; travel agency and booking services; travel agency and booking services; tourist travel reservation services; tour operating and organising; escorting of travellers; planning, arranging and booking of travel; services for arranging the transportation of travellers; arranging the escorting of travellers; tour operating and organising; sightseeing, tour guide and excursion services; arranging of travel tours.

Class 41: Performances (presentation of live -); video editing services for events; reservation services for show tickets; providing entertainment information; providing entertainment information; conducting of cultural events; ticketing and event booking services; organising events for entertainment purposes; production of live shows; presentation of live performances by a musical group; lighting engineering for events; audio engineering services for events; organising events for cultural purposes; entertainment information; ticket reservation for cultural events; presentation of live performances by rock groups; arranging and presenting of live performances; organisation of entertainment and cultural events; production of live performances; organizing cultural and arts events; organization of shows for cultural purposes; live band performances; booking of performing artists for events (services of a promoter); organisation of events for cultural, entertainment and sporting purposes; booking of sports personalities for events (services of a promoter); disc jockeys for parties and special events; master of ceremony services for parties and special events; ticket reservation and booking services for cultural events; special event planning consultation; rental of film studios; rental of apparatus for the recording of audio signals; rental of show scenery; leasing of motion picture cameras; hire of televisions; hire of televisions; video equipment hire.

Class 43: Accommodation services for functions; providing accommodation for functions; rental of furniture; rental of furniture; rental of furniture; rental of floor coverings; rental of internal furnishings; rental of cooking apparatus; rental of cutlery; hiring of rooms for social functions; providing conference rooms; room hire services; booking agency services for hotel accommodation; booking agency services for hotel accommodation; rental of catering equipment; consultancy services in the field of food and drink catering; booking of hotel rooms for travellers; booking of accommodation for travellers.

Some of the contested services are identical or similar to the goods and services on which the opposition is based. 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  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 goods and services assumed to be identical 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.

The Opposition Division finds it appropriate to first compare the contested sign with the earlier marks (1) and (2).

c) The signs

 

Earlier trade marks (1) and (2)	Contested sign

The relevant territory is the European Union.

 

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 trade marks (1) and (2) are figurative marks consisting of the verbal element ‘MacGuffin.’ written in standard lettering of which the first and fourth letters are in upper case. The first three letters are in black while the remaining letters and the dot at the very end are in red. The verbal element ‘MacGuffin’ will be perceived by the relevant public as a surname due to the identical structure to some common Scottish and Irish surnames such as MacKenzie or MacGregor, where the prefix ‘Mac’, meaning son of, is conjoined to a second element which also carries a capital initial letter, such as ‘Kenzie’ or ‘Gregor’ or, in the present case, ‘Guffin’ in the earlier marks. Since the earlier marks bear no relation to the goods and services in question they are distinctive to a normal degree.

The contested sign is a figurative mark composed of the verbal elements ‘mac’ and ‘.event’, both in standard bold lower-case and displayed over two lines, and the words ‘LIVEMARKETING’ and ‘LOCATIONS’ in upper-case separated by a thin vertical bar. All the elements of the sign are in black except for the dot preceding to the word ‘event’ which is in grey. Part of the public, such as the Romanian-, Bulgarian- and French-speaking public, will associate the term ‘Mac’ with a poppy flower, greasy substances and a pimp/procurer, respectively. As it is not directly related to the relevant services, this element is normally distinctive and so is for the public that will perceive it as meaningless.

The English word ‘event’ will be understood as a planned public or social occasion by the English-speaking public, as well as by the Spanish-, Portuguese- and Italian-speaking public due to the closed proximity of the term to their equivalent word ‘evento’. This element is non-distinctive for this part of the public and for all services which are related to events organisation in Classes 35 and 41. It is however distinctive for the remaining services, and also for the part of the public that will not grasp any meaning in this word. The verbal element ‘LIVEMARKETING’ makes reference to a marketing strategy that directly engages consumers and invites and encourages them to participate in the evolution of a brand or brand experience and it will be understood as such by the English speaking public. Since a direct link can be established to advertising and marketing services in Class 35 for this part of the public, this word is non-distinctive. The word ‘LOCATIONS’ will be understood by its literal meaning by part of the public, such as the English-speaking public, whereas it is meaningless for another part of the public. As the term can refer to the provision of locations together with the services in Classes 41 and 43, it has a limited distinctive character. Nevertheless, it is distinctive for the remaining services as well as for the public which perceives such term as meaningless. The elements ‘mac’ and ‘.event’ in the contested sign are the dominant elements as they are the most eye-catching.

The stylisation of verbal elements in both signs will be merely perceived as a graphical means of bringing the verbal elements to the attention of the public and therefore, its impact on the comparison of the signs is limited.

Visually, the signs coincide in their first letters ‘MAC’, which constitutes three out of the nine letters that form the earlier marks and the first word of the contested sign. Apart from the slight difference in the respective stylization of this element (including the capitalisation of the first letter ‘M in the earlier mark vs the use of lower-case in the contested sign), the signs differ in all their remaining elements described above, in their colours and in their respective get-up and structure. It should be noted that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35) and that, for the assessment of the similarity of the signs, the entirety of the signs has to be considered rather than simply parts of the signs. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs only coincides in the first syllable ‘MAC’, present identically in both signs. The pronunciation differs in the sound of the letters of ‘GUFFIN’ in the earlier marks and of ‘EVENT’ in the contested sign. The words ‘LIVEMARKETING’ and ‘LOCATIONS’ of the contested sign are not likely to be pronounced because consumers tend to shorten marks containing several words (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, the signs are conceptually dissimilar. For the part of the public that perceives a meaning in only one of the signs, the signs are not conceptually similar.

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 marks

 

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 claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim.

 

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks, each as a whole, have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested services have been assumed to be identical to the opponent’s goods and services. The degree of attentiveness of the relevant public varies from average to high. The earlier marks have a normal degree of inherent distinctiveness.

The signs are visually and aurally similar to a low degree whereas conceptually, the signs are either dissimilar or not similar. The visual and aural similarities between the sign are limited to the first three letters of the signs ‘MAC/mac’. While it is true, as argued by the opponent, that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark, it must be stressed that this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. In the present case, the common letters constitute only a part of the single verbal element of the earlier marks while in the contested sign ‘mac’ is an element with an independent role within a complex sign, which is arranged over three lines. It is apparent that the additional parts and elements of the signs and the different layout clearly outweigh the similarities originating from only three letters. This is so even if, for part of the relevant public, some of the elements of the contested mark are non-distinctive or of limited distinctiveness for some of the services concerned. Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35). As already indicated above, it would be wrong to discard comparing elements of signs just because they are non-distinctive for some services and a part of the public. Furthermore, the different meanings that consumers will perceive either in both or just one of the signs, clearly neutralise their similarities.

The opponent refers in its observations to the judgment of 05/10/2011, T-118/09, Bloomclothes, EU:T:2011:563. However, this case is not comparable with the present case since in that case, the earlier mark was fully contained and clearly identifiable in the beginning of the contested sign, circumstance that does not occur in the case at hand where the signs are, moreover, either conceptually dissimilar or not similar as seen above.

Considering all the above, the Opposition Division considers that the differences between the signs are sufficient to counteract the low degree of visual and aural similarity between the signs in their overall impression, even for identical services.

Therefore, the opposition must be rejected as far as earlier EUTM registrations No 16 768 053, No 14 297 873 and No 12 726 071 are concerned. The opposition will continue in relation with earlier mark (3).

f) The signs

 

Earlier trade mark (3)	Contested sign

The relevant territory is the European Union.

The earlier mark is a figurative mark composed by the verbal elements ‘e eventoring’ written in black standard lower-case, except for the letter ‘o’ which is represented by a blue hexagon, and the first letter ‘e’ which is in white against a blue hexagonal background. The word ‘eventoring’ is meaningless as such and, therefore, distinctive to a normal degree. However, it is likely that part of the public such as the English-, Spanish-, Portuguese- and Italian-speaking public will perceive in ‘eventoring’ an allusion to the words ‘event’ (in English) or ‘evento’ (in Spanish, Portuguese and Italian). For this part of the public the prefix ‘event(o)-’ of the sign is, therefore, non-distinctive for all services which are related to events organisation in Classes 35 and 41 whereas it is normally distinctive for the remaining part of the public. The letter ‘e’ will be perceived as a reference to the initial of the word ‘eventoring’ and it is distinctive to a normal degree whereas its hexagonal background will be merely perceived as decorative. The stylization of the earlier mark, including the hexagon that stands for the letter ‘o’ will merely be perceived as a graphical means of bringing the verbal elements to the attention of the public and therefore, its impact on the comparison is limited.

Reference is made to the description and considerations regarding the distinctiveness of the different elements of the contested sign made above in the comparison with the other earlier marks, which are equally valid here.

Visually, the signs coincide in the letters ‘event’, placed in the second element of both marks. However, they differ in the remaining elements, as described above and also in the fact that the coinciding letters form part of a longer word in the earlier mark. Account must be taken that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Even if the word ‘eventoring’ is preceded by the device consisting of a letter ‘e’ in a hexagon and constitutes therefore the second element of the sign, that letter ‘e’ in the hexagon is only the repetition of the initial of ‘eventoring’ and while it will not be disregarded given its position, the relevant public will rather focus on ‘eventoring’ because the public will more easily refer to the sign in question by its full verbal element rather than by its initial. Consequently, it will be ‘event’ what it is perceived as the beginning of the earlier mark. In contrast, the verbal element ‘mac’ is the beginning of the contested sign. Bearing in mind the conclusions reached above as to the distinctiveness of the different elements of the signs, it is concluded that the signs are visually similar to a low degree, at best.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced ‘eventoring’ and the contested sign ‘mac event’. The words ‘LIVEMARKETING LOCATIONS’ of the contested sign and the initial ‘e’ of the earlier mark are not likely to be pronounced because consumers tend to shorten marks containing several verbal elements (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). In view of this, although the signs coincide in the sound of the letters ‘EVENT’, they differ in the pronunciation of the ending letters ‘ORING’ in the earlier mark and the first letters ‘MAC’ of the contested sign. This difference in pronunciation in the respective commencements and endings of the signs results in a different rhythm and intonation of the signs overall.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated by part of the public with the concept of event. Yet, this common concept lays in elements (event(o)-/event) which are non-distinctive for some of the relevant services and, as a consequence, the signs are conceptually similar to a very low degree with regard to those services. However, the signs are conceptually similar to an average degree in respect of the remaining goods and services for which ‘event(o)’ is understood but normally distinctive. For the remaining part of the public, neither of the signs has a meaning and a conceptual comparison is not possible. Consequently, the conceptual aspect does not influence the assessment of the similarity of the signs for that part of the public.

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

g) 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 goods and 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 non‑distinctive prefix in the mark for a part of the public and some of the services, as stated above in section c) of this decision.

h) Global assessment, other arguments and conclusion

The goods and services have been assumed to be identical. The degree of attentiveness of the relevant public varies from average to high. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually and aurally similar to a low degree. Conceptually, for part of the public, the signs are either similar to an average degree or to a very low degree, depending on the services. For the remaining part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs. The common letters ‘event’ are arranged differently in both the signs. While in the earlier mark ‘event’ is part of the made up word ‘eventoring’, in the contested sign it is an element which plays an independent role within a complex sign and it is placed on its second line. As mentioned above, the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with part of another mark. Signs must be compared in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35). Even if the signs coincides in some letters there are other elements in the signs that will be easily recalled by consumers, which will make them unlikely to confuse the origin of the goods and services at issue, or assume that these goods come from the same undertaking or from economically linked undertakings. In the present case, account must be held of the different beginning of the signs. As explained above ‘event’ is what consumers perceive as the beginning of the earlier mark whereas it is the independent word ‘mac’ that first catches the attention of consumers in the contested sign.

In view of the foregoing, the Opposition Division considers that there is no likelihood of confusion on the part of the public because the differences between the signs suffice to counteract their similarities in their overall impression created by them, even for identical goods and services.

The opponent has also based its opposition on EUTM registration No 1 496 280, (figurative mark). However, this earlier mark invoked by the opponent is less similar to the contested mark than the marks that have been analysed above. This is because they contain an additional figurative element which is not present in any of the earlier marks analysed above nor in the contested trade mark. Therefore, no likelihood of confusion exists with respect to this EUTM either.

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, 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

 

 

Begoña URIARTE VALIENTE

María del Carmen COBOS PALOMO

Martina GALLE

 

 

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.