OPPOSITION Nо B 3 106 015

 

TV 2 Danmark A/S, Rugaardsvej 25, 5000 Odense C, Denmark (opponent), represented by Lassen Ricard, Amaliegade 31, 1256 København K, Denmark (professional representative) 

 

a g a i n s t

 

Solutio GmbH & Co. KG Zahnärztliche Software und Praxismanagement, Max-Eyth-Straße 42, 71088 Holzgerlingen, Germany (applicant), represented by BRP Renaud und Partner mbB, Königstr. 28, 70173 Stuttgart, Germany (professional representative).

On 24/02/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 106 015 is upheld for all the contested services, namely:

 

	Class 38: Telecommunication services.
2.		European Union trade mark application No 18 118 315 is rejected for all the contested services. It may proceed for the remaining goods and services.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 118 315 ‘CHARLY’ (word mark), namely against all the services in Class 38. The opposition is based on Danish trade mark registrations No VR 200 400 908 and No VR 200 400 907 for the word marks ‘Charlie’ and ‘TV 2 Charlie’ respectively. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

Preliminary remark

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 Danish trade mark registration No VR 200 400 908. The other earlier right on which the opposition is based, namely Danish trade mark registration No VR 200 400 907, will be examined only if it may have an impact on the outcome of this decision.

 

PROOF OF USE

  

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

 

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade mark were registered more than five years prior to the relevant date mentioned above.

 

The date of priority of the contested application is 22/03/2019. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Denmark from 22/03/2014 to 21/03/2019 inclusive.

Furthermore, the evidence must show use of the trade marks for the services on which the opposition is based, namely the following:

 

Class 38: Computer-aided transmission of messages and images, telecommunication activities, broadcasting activities, television programmes regardless of distribution and financing method, communication and services, for example, programmes, discussion forums, games and the like via computer screens, mobile phones and similar media, provision of electronic bulletin, boards, electronic mail, radio programmes, provision of user access to internet portals with description and screening of TV programmes, and exchange of information and images.

 

On 06/07/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 11/09/2020 to submit evidence of use of the earlier trade mark. On 07/09/2020, within the time limit, the opponent submitted evidence of use.

 

The evidence to be taken into account is the following:

 

 Exhibits 6 to 9: statistics from ‘Slots- og Kulturstyrelsen’, the Danish Agency for Culture and Palaces, showing the most viewed TV-channels calculated by audience share (%) in Denmark for 2014 (exhibit 9), 2015 (exhibit 8), 2016-2017 (exhibit 7) and 2018-2019 (exhibit 6), with a translation into the language of the proceedings.

All statistics quote ‘Kantar Gallup Viewer Examination’ as their source.

The statistics show that TV2 Charlie was in the top five of most viewed TV channels in the period 2014 to 2019, except in 2015 when it ranked at the sixth position. In 2019, TV2 Charlie is the fourth most viewed TV channel.

 Exhibit 10: an undated document deriving from the opponent showing the average number of daily visitors on ‘TV2.DK Charlie’ and on ‘TV2 PLAY Charlie’ in 2019, namely 332 average daily visitors for the former and 892 average daily visitors for the latter.

 

 Exhibits 11, 12 and 14: screenshots from the following websites taken via the Wayback Machine web archive:

- six screenshots, dated between 23/09/2014 and 11/05/2019, from Tvguide.dk (https://www.tvquide.dk/), showing television programs of some television channels including TV2 Charlie (exhibit 11);

- five screenshots, dated between 20/09/2014 and 25/06/2018, from TV2 PLAY's online platform (https://play.tv2.dk/charlie/) showing television programs on TV2 Play and TV2 Charlie (exhibit 12);

- two screenshots, dated 25/06/2017 and 29/07/2018, from https://yousee.dk/ showing channels that are accessible through the platform Yousee.dk, and including TV2 Charlie (exhibit 14).

 Exhibit 13: a chart of the share of the Danish population (12+ years) using TV2 PLAY, and indicating amongst others the number of people using TV2 PLAY at least one to three times per month. The chart covers the period 2014 to 2019.

Kantar Index DK/Gallup is indicated as source of this chart, and it is explained that the data have been verified on 02/09/2020 by a director of Kantar.

In 2014, six out of 100 persons used TV2 PLAY at least one to three times per month. This number of persons has increased every following year, up to 27 out of 100 persons in 2019.

 Exhibit 15: an undated document displaying – what the opponent explains to be – the results of a ‘Brand Asset Valuator analysis’ made by Young & Rubicam in Denmark in relation to the trade mark TV2 Charlie, showing, on the one hand, TV2 Charlie's development in the whole population and, on the other hand, its development in TV2 Charlie's target group.

The analysis covers the years 2005 to 2019.

 Exhibit 16: a screenshot showing the results of a search for ‘tv2 charlie’ on YouTube.

The opponent’s allegations, inserted in the exhibit itself above the actual screenshot, that the screenshot was taken on 22/07/2020, and that it shows that TV2 Charlie has been uploading videos during the years 2014 to 2019 (explained as follows: ‘6 years ago, with 29.000 views’, ‘1 year ago, with 7700 views’, ‘9 years ago, with 5200 views’ and ‘3 years ago, with 14000 views’) cannot be verified as a result of the poor quality of the screenshot.

It can be established though that there are screenshots of five different videos, each with an accompanying title and summary, and referencing TV2 Charlie.

 Exhibits 17-20: screenshots from social media websites, namely:

- Facebook:

o a screenshot of the Facebook opening page of TV2 Charlie, showing it has over 39.000 followers and its creation date of 11/01/2011 (exhibit 17).

The opponent indicates that the screenshot was made on 23/07/2020.

o screenshots of the opening page of the section ‘Photos’ of the Facebook page of TV2 Charlie and of some uploaded pictures (exhibit 18).

The opponent indicates that the screenshot of the opening page was made on 23/07/2020; on this page it is indicated that ‘131 photos were posted by other people’.

The upload dates of the pictures are between 20/08/2014 and 05/03/2018.

The number of ‘likes’ and comments are indicated for each of the pictures.

o screenshots of the opening page of the section ‘Videos’ of the Facebook page of TV2 Charlie and of some uploaded videos (exhibit 19).

There is no indication of the screenshot date of the opening page.

The opponent has indicated on the exhibit the year(s) of the uploads. Contrary to the aforementioned pictures which refer to a single upload date, the videos have no concrete upload date, but merely an indication of the years that have passed since the upload moment, for instance: ‘1 year ago’ or ‘5 years ago’.

The number of ‘views’ is indicated for all of the videos.

- Instagram:

o screenshots of posts under the hashtag #tv2charlie, made between 07/09/2014 and 23/06/2019 (exhibit 20).

 Exhibit 21: extracts from six annual reports of the opponent from 2014 to 2019, with partial translations into the language of the proceedings.

All reports make reference to ‘the niche channels TV2 ZULU, TV2 CHARLIE, TV2 FRI, TV2 NEWS and TV2 SPORT’, with the annual report 2014 also referring to an additional niche channel ‘TV 2 FILM’.

 Exhibit 22: a screenshot, dated 17/03/2017, from Wikipedia in English on ‘TV 2 Charlie’, taken via the Wayback Machine web archive.

It is explained amongst others that TV 2 Charlie is a ‘Danish television channel owned by TV 2. It was launched on 1 October 2004. The channel Shows own productions and British criminal dramas (…)’.

It is also indicated that the following are ‘Sister channel(s)’: TV 2, TV 2 Zulu, TV 2 Film, TV 2 News and TV 2 Sport.

Assessment of the evidence

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

The evidence shows that the place of use is Denmark. This can be inferred from the language of most of the documents (Danish) as well as their content which clearly refers to Danish television channels, such as the statistics from the Danish Agency for Culture and Palaces submitted as exhibits 6 to 9, and the screenshots from the website Tvguide.dk, from the TV2 PLAY's online platform and the Yousee.dk platform submitted as exhibits 11, 12 and 14 respectively. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period, especially taking into account that the content of documents themselves bearing a printing date that postdates the relevant period clearly refer to facts and events that took place within the relevant period. This is for instance the case for the chart of the share of the Danish population using TV2 PLAY, submitted as exhibit 13, the results of the ‘Brand Asset Valuator analysis’ by Young & Rubicam, submitted as exhibit 15, and the screenshot showing the results of a search for ‘tv2 charlie’ on YouTube, submitted as exhibit 16.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

Use of the mark need not be quantitatively significant for it to be deemed genuine. It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In this respect, the opponent has shown that, under the sign ‘TV 2 Charlie’, it has been broadcasting, and making television content available by other means such as streaming platforms. This broadcasting and streaming has been ongoing since before the beginning of the relevant period, as is evidenced for instance by the screenshot of the Facebook opening page of TV2 Charlie, showing its creation date of 11/01/2011, submitted as exhibit 17.

As the opponent, not having to show economic success, has proven that it has put the earlier mark to genuine and not token use, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

As regards the nature of use, the evidence exclusively shows use of the earlier mark in combination with the element ‘TV 2’, whether in a written form ‘TV 2 Charlie’ (as for instance in exhibit 11: , or exhibit 12: ) or in a variety of figurative forms, either with the element ‘TV 2’ placed above it or before it, for example:

TV 2 placed above Charlie:

(exhibit 17)

TV 2 placed before Charlie:

(exhibits 11 and 18)

(exhibit 12)

The Opposition Division considers the above to constitute acceptable variations of the earlier mark in its registered form.

With regard to additions, such as the addition of the element ‘TV 2’ in the case at issue, it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time. It is also noted that two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43). This is the case in the aforementioned combinations of the element ‘TV2’ and the earlier mark ‘Charlie’, where the presence of the former has not such an impact as to alter the distinctive character of the latter.

In the present case, the evidence clearly demonstrates that the opponent’s services are provided by the opponent (‘TV 2’) and under the trade mark ‘Charlie’. In its observations the opponent explained that it is one of the largest television broadcasting companies in Denmark and that it has seven TV-channels, including its main channel ‘TV2 Danmark’, which it explained to be a public service channel, and ‘TV2 News’, ‘TV2 Zulu’ and ‘TV2 Charlie’. The opponent also explained that the latter channel was launched on 01/10/2004 as an entertainment channel primarily aimed at an audience in the age group above 50 years old. The evidence submitted indeed proves that the opponent has several channels, all referring to the opponent’s house mark ‘TV 2’ and differentiated from the other channels by their individual marks, such as ‘ZULU’ or ‘Charlie’.

Therefore, and as there is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 47 EUTMR, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory at least for broadcasting activities in Class 38.

At this point, the Opposition Division does not consider it necessary to undertake an assessment of the proof of use in relation to the rest of the services covered by the earlier mark.

Therefore, the Opposition Division will only consider Danish trade mark registration No VR 200 400 908 for the abovementioned services for which genuine use has been established in its further examination of the opposition.

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 and for which genuine use has been proven are the following:

Class 38: Broadcasting activities.

The contested services are the following:

Class 38: Telecommunication services.

The contested telecommunication services include, as a broader category, the opponent’s services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

b) Relevant public — degree of attention

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

In the present case, the services found to be identical are directed at the public at large, whose degree of attention is average.

c) The signs

Charlie	CHARLY
Earlier trade mark	Contested sign

The relevant territory is Denmark.

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 signs at issue are word marks. The earlier mark is composed of the seven-letter word ‘Charlie’, written in a title case lettering, while the contested sign is composed of the six-letter word ‘CHARLY’ in upper case letters. Nevertheless, in the case of word marks without irregular capitalisation, the word as such is protected and not the written form. Therefore, any differences in the use of lower or upper case letters (or combination thereof) are immaterial in the present case.

The signs at issue will be equally seen as reference to the diminutive form of the same male forename ʽCharlesʼ, and are therefore conceptually identical.

Visually, the signs have similar lengths as the earlier mark consists of seven letters and the contested sign of six letters, and coincide in their first five letters ‘CHARL’. The signs differ in their last letters, ‘IE’ in the earlier mark and ‘Y’ in the contested sign. However, 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.

Therefore, the signs are visually similar to an above-average degree.

Aurally, the signs are identical.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 descriptive or otherwise weak 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.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The contested services were found to be identical to the opponent’s services and target the general public whose degree of attention is average. The signs are visually similar to an above-average degree, and aurally and conceptually identical.

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).

The differences lying at the end of the signs at issue are largely outweighed by the fact that all but one letters of the contested sign are fully incorporated in the same order in the earlier mark. Moreover, the signs are conceptually identical in that they both are common diminutives of the male forename Charles and will be pronounced identically.

Therefore, taking into account the identity of the contested services and the relevant public’s imperfect recollection, it cannot be excluded that the relevant consumers will perceive the contested mark as a variation of the earlier mark (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49), and they will therefore assume that the services covered are from the same or economically linked undertakings.

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

Therefore, the opposition is well founded on the basis of the opponent’s Danish trade mark registration No VR 200 400 908. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the aforementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

 

COSTS

 

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

 

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

 

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

 

 

 

The Opposition Division

 

 

Marine DARTEYRE

Christophe DU JARDIN

Martin MITURA

 

 

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.