ATHENS PARTY 104 FM | Decision 2714437
Date Published: Sep 22, 2017
OPPOSITION No B 2 714 437
Ioannis Fakis, Megalou Konstantinou 1, 40200 Elassona, Greece (opponent), represented by Law Firm Thanos Masoulas & Partners, Sina 11, 106-80 Athens, Greece (professional representative)
a g a i n s t
Metron Media S.A., Frantzi 2, 11745 Athens, Greece (applicant), represented by Maria Kostopoulou, 27A Voukourestiou Str, 10679 Athens, Greece (professional representative).
On 07/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 714 437 is upheld for all the contested services.
2. European Union trade mark application No 15 420 111 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 420 111. The opposition is based, inter alia, on Greek trade mark registration No 205 636. With regard to the aforementioned trade mark the opponent invoked Article 8(1)(b) and 8(5) EUTMR. Furthermore, the opponent invoked Article 8(4) EUTMR in relation to the other earlier rights on which the opposition is based.
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 Greek trade mark registration No 205 636.
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 services
The services on which the opposition is based are the following:
Class 35: Merchandising.
Class 38: Telecommunications.
Class 41: Training services; entertainment.
The contested services are the following:
Class 38: Telecommunication services; Broadcasting services; Broadcasting and transmission of radio programs; Audio broadcasting; Transmission of podcasts; Rental of radio and television broadcasting facilities; Music broadcasting; Broadcasting of programmes via the internet; Transmission of radio programs; Transmission of audio data via the Internet; Radio broadcasting of information and other programs; Internet radio broadcasting services.
Class 41: Education, entertainment and sports; Conducting of entertainment events; Organization of shows for cultural purposes; Arranging of demonstrations for entertainment purposes; Musical events (Arranging of -); Arranging of demonstrations for cultural purposes; Arranging of presentations for entertainment purposes; Arranging of festivals for cultural purposes; Musical concerts by radio; Organising events for entertainment purposes; Fetes (Organisation of -) for recreational purposes; Fetes (Organisation of -) for cultural purposes; Organising of festivals; Pop music concerts (Organisation of -); Organizing cultural and arts events; Production of entertainment shows featuring instrumentalists; Production of entertainment shows featuring singers; Production of radio and television programmes; Production of entertainment shows featuring dancers and singers; Production of music shows; Organisation of entertainment services; Presentation of live entertainment events; Performing of music and singing; Providing entertainment information; Provision of entertainment information via the Internet; Provision of entertainment information by electronic means; Providing information in the field of music; Arranging, conducting and organisation of concerts; Radio entertainment; Entertainment services provided on-line from a computer database or the internet.
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 38
Telecommunication services are identically contained in both lists of services (including synonyms).
As regards the remaining services covered by the contested trade mark, namely broadcasting services; broadcasting and transmission of radio programs; audio broadcasting; transmission of podcasts; rental of radio and television broadcasting facilities; music broadcasting; broadcasting of programmes via the internet; transmission of radio programs; transmission of audio data via the Internet; radio broadcasting of information and other programs; Internet radio broadcasting services the Opposition Division considers them all belong to the general group of telecommunication services. The telecommunications and broadcasting, to which the opponent’s services belong, have been converging and nowadays it is difficult to draw a clear line between the two. It is not uncommon for companies to offer under the same brand both telecommunication and broadcasting services. In many cases, they will be able to provide their clients with a full package of integrated solutions, comprising a whole series of auxiliary services designed to allow the user to access the telecommunication network and benefit from the possibilities offered by an interactive environment. Consequently, the Opposition Division considers these services to be identical.
Contested services in Class 41
Entertainment is identically contained in both lists of services.
The contested conducting of entertainment events; arranging of demonstrations for entertainment purposes; arranging of presentations for entertainment purposes; organising events for entertainment purposes; production of entertainment shows featuring instrumentalists; production of entertainment shows featuring singers; production of entertainment shows featuring dancers and singers; organisation of entertainment services; presentation of live entertainment events; radio entertainment; entertainment services provided on-line from a computer database or the internet; musical events (arranging of -); musical concerts by radio; fetes (organisation of -) for recreational purposes; organising of festivals; pop music concerts (organisation of -); production of music shows; performing of music and singing; arranging, conducting and organisation of concerts; arranging, conducting and organisation of concerts; arranging, conducting and organisation of concerts are included in the broad category of the opponent’s entertainment. Therefore, they are identical.
The contested education includes, as a broader category, the opponent’s training services. It is impossible for the Opposition Division to filter these services from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant’s services, they are considered identical to the opponent’s services.
The contested providing entertainment information; provision of entertainment information via the Internet; provision of entertainment information by electronic means; providing information in the field of music pertain to providing information about entertainment and therefore are similar to the opponent’s entertainment. They are usually provided by the same provider, target the same public, have the same distribution channels and are complementary.
The contested sports; organization of shows for cultural purposes; arranging of demonstrations for cultural purposes; arranging of festivals for cultural purposes; fetes (organisation of -) for cultural purposes; organizing cultural and arts events; production of radio and television programmes are similar to the opponent’s entertainment. They have the same purpose. They can coincide in end user and distribution channels.
- 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 and similar are directed both at the public at large and professionals. The degree of attention paid by them during the purchase of the services is deemed to vary from average to higher than average, depending on the characteristics of those services (e.g. their price).
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Greece.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a figurative mark containing the verbal elements ‘Party’ and ‘Radio’ as well as an expression ’97.1 FM’. These elements are placed on a yellow and ivory rectangle background. The word ‘Party’ is situated at the top of the mark and is larger than the expression ’97.1 FM’ (which is placed below) and much larger than the word ‘Radio’ (which is located at the bottom of the letter ‘P’ of the word ‘Party’).
Although these verbal elements are in English, they will be understood by the relevant public as ‘party’ (i.e. ‘a social event, often in someone's home, at which people enjoy themselves doing things such as eating, drinking, dancing, talking, or playing games’, information extracted from Collins Dictionary on 16/08/2017 at www.collinsdictionary.com/dictionary/english/party) and ‘radio’ (i.e. ‘the broadcasting of programmes for the public to listen to, by sending out signals from a transmitter’, information extracted from Collins Dictionary on 16/08/2017 at www.collinsdictionary.com/dictionary/english/radio_1). It should be noted that both words ‘radio’ and ‘party’ are rather common English words, the latter especially among young people. Furthermore, the expression ’97.1 FM’ stands for ‘the modulation of a radio or other wave by variation of its frequency, especially to carry an audio signal’ (information extracted from Oxford Dictionary on 16/08/2017 at www.en.oxforddictionaries.com/definition/us/frequency_modulation). It should be noted that the abbreviation ’FM’ is commonly used worldwide.
The word ‘radio’ and the expression ’97.1 FM’ will describe some characteristics of some of the relevant services (i.e. telecommunications and entertainment). With regard to these services they are therefore non-distinctive. For the rest of the services on which the opposition is based these words are distinctive to an average degree. The word ‘party’ will be perceived as fanciful and distinctive to an average degree in relation to most of the relevant services (e.g. merchandising; training services and telecommunications). For the rest of the services this word’s distinctiveness is lower than average as it alludes to their characteristics (i.e. entertainment).
The contested sign is a figurative mark composed of words and some figurative elements. The figurative element is a circular background in purple with a circular rim in silver. All verbal and numerical elements are placed on the purple part of the background. They are: ‘Party’, ‘fm’, ‘104’ and ‘Athens’ (all in white). On the background, in a central position, appears the word ‘Party’ written in bold standard title case letters. Above it there is the number ‘104’ and below it is the word ‘Athens’ written in non-bold standard title case letters. On the right, next to the letter ‘y’, appears the acronym ‘fm’ presented in written in standard lower case letters.
With regard to the expression ‘104 fm’ and the word ‘party’ the aforesaid explanations shall apply. As far as the word ‘Athens’ is concerned, taking account the services in question and other elements of the contested sign, it will give information to the public that the provider comes from the capital of Greece. This element is merely informative in relation to the relevant services, since it will be perceived as reference to the place of origin. Therefore, it is non-distinctive.
Furthermore, the figurative elements of the earlier mark and the contested sign merely serve as backgrounds for the verbal elements and therefore are rather decorative in nature. Therefore, they are less distinctive.
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).
Bearing in mind the foregoing, and owing to its central position and size, the element ‘Party’ present in both signs will be seen as their dominant element.
Visually, the signs differ in some of the verbal elements contained in the earlier mark (‘Radio’) and the contested sign (‘Athens’). They also differ in their expressions relating to radio frequency modulation, that is ’97,1 FM’ and ’104 FM’ respectively. In addition they differ also in their figurative elements. However, as explained above, these are either non-distinctive or secondary elements in the overall impression of the mark, whereas they coincide in their dominant word ‘Party’. The figurative elements do not create significant differences between the signs as they are rather decorative in nature.
Therefore, the signs are visually similar to an average degree.
Aurally, both signs will be pronounced as follows ‘[PAR] [TY] / [RA] [DIO] / [97,1] [FM]’ (earlier mark) and ‘[104] [FM] / [PAR] [TY] / [A] [THENS]’ (contested sign), if all of these elements are pronounced. However, considering what has been stated above, it is conceivable that the relevant public will refer to the contested mark as ‘PARTY’ only and in this case the signs would be aurally identical. Some part of the public could also mention the expressions ’97,1 FM’ and ’104 FM’ respectively, which are considered to have a secondary character. Therefore, for part of the public, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually similar insofar as they both will be perceived as referring to ‘Party’ and ‘FM’. The signs differ in ‘97.1’ and ‘104’ as well as in the words ‘Radio’ and ‘Athens’ of the earlier mark and the contested sign respectively. Considering the fact that these differing elements are non-distinctive or secondary and the signs coincide in their most dominant element, they are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 meaning for some 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 for these services (i.e. merchandising; training services; telecommunications), despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision. Its distinctiveness is however lower than average with regard to entertainment.
- Global assessment, other arguments and conclusion
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.
As concluded above, the services are either identical or similar, the signs are visually, aurally and conceptually similar to an average degree (even for part of the public aurally identical). Furthermore, the earlier mark as a whole is of normal distinctiveness in relation to some of the relevant services (for the rest its distinctiveness is lower than average), and the relevant public’s attention vary from average to higher than average.
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. In the present case it will be the coinciding word ‘Party’.
The differences between the signs cannot overcome the visual and aural similarities between them, as they are mainly confined to non-distinctive or secondary elements, whereas there are significant similarities between the earlier mark and the contested sign (i.e. the coinciding word ‘Party’). It is very likely that at least a pertinent part of consumers will pronounce only the word ‘Party’ with relevant radio frequency modulation (i.e. ’97,1 FM’ and ’104 FM’), due to the role they play within the overall impression of the mark, when referring to services in question. It should be noted that quite often radio broadcasting services, even in one country, are offered on various frequency modulation.
Account is also 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). Even consumers who pay a high degree of attention (or higher than average) need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).
Consequently, this is likely to lead consumers to believe that the identical and similar services at issue originate from the same provider or related providers.
Considering all the above, there is a likelihood of confusion on the relevant public.
Therefore, the opposition is well founded on the basis of the opponent’s Greek trade mark registration No 205 636, even with regard to the services that are similar and with regard to the services for which distinctiveness of the word element ‘Party’ is lower than average. 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 extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right ‘Party Radio FM 97,1’ 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 rights invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Moreover, 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 grounds of the opposition, namely Article 8(5) and Article 8(4) EUTMR.
COSTS
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Rasa | Michal KRUK | Ana |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.