bluemedia | Decision 2689662 - BLUE MEDIA S.A. v. Frédéric MELLAERTS

Date Published: Oct 1, 2017

OPPOSITION No B 2 689 662

Blue Media S.A., Powstańców Warszawy 6, 81-718 Sopot, Poland (opponent)

a g a i n s t

Frédéric Mellaerts, Romeinsesteenweg 452/1, B-1853 Strombeek-Bever, Belgium (applicant).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 689 662 is partially upheld, namely for the following contested services:

Class 38:         Telecommunication services; computer communication and internet access; provision and rental of telecommunications facilities and equipment; broadcasting services; telephone and mobile telephone services; news agencies; communication of information by electronic means; communication of data by means of telecommunications.

Class 41:        Publishing providing on-line electronic publications, not downloadable; providing online electronic publications in the field of music, not downloadable; providing electronic publications; providing electronic publications relating to language training, not downloadable; providing electronic publications from a global computer network or the internet, not downloadable; publishing a newspaper for customers on the internet; multimedia publishing of printed matter; multimedia publishing of books; publishing of reviews; publishing of documents; providing on-line non-downloadable general feature magazines; publishing of web magazines; publishing of journals; publishing by electronic means; publishing services; digital video, audio and multimedia entertainment publishing services; publishing services, except printing; provision of information relating to publishing; publishing services (including electronic publishing services); publishing services for periodical and non-periodical publications, other than publicity texts; music publishing and music recording services; music publishing services; advisory services relating to publishing; publishing services for books and magazines; on-line publishing services; publishing services carried out by computerised means; electronic text publishing services; providing on-line publications; providing publications from a global computer network or the internet which may be browsed.

Class 42:        Design services; IT services; computer-aided design of video graphics; design services relating to the development of computerised information processing systems; design, creation, hosting and maintenance of internet sites for third parties; constructing an internet platform for electronic commerce; design of telecommunications apparatus and equipment; design of three dimensional displays; design of CD-ROM electronic format for computer databases; design of hardware for compression and decompression of multimedia contents; design of hardware for multimedia data storing and recalling; design of hardware for processing and distribution of multimedia contents; design of hardware for audio and video operators; design of hardware for digital signal processing; homepage and webpage design; design of homepages and websites; computer network design for others; computer website design; designing websites for advertising purposes; computer specification design; computer system design; design services for data processing systems; design and graphic arts design for the creation of web pages on the internet; design and graphic arts design for the creation of web sites; design and creating web sites for others; database design and development; design and development of computer hardware; designing and developing webpages on the internet; design and development of networks; designing and implementing web sites for others; design and development of electronic data security systems; design and maintenance of computer sites for third parties; design and maintenance of web sites for others; designing and implementing network web pages for others; graphic design; computer aided graphic design; graphic design for the compilation of web pages on the internet; web site design consultancy; advice relating to the design of computer hardware; consultancy with regard to webpage design; creating electronically stored web pages for online services and the internet; creating home pages for others; creating of home pages for computer networks; creation of internet web sites; electronic site authoring; creation and provision of web pages to and for third parties; creating, designing and maintaining web sites; creation, design, development and maintenance of web sites for third parties; creating and designing web pages for others; creating and maintaining web sites for others; creating and maintaining computer sites (web sites) for others; creating and updating of home pages for computer networks; development and design of digital sound and image carriers; development, design and updating of home pages; providing a website featuring information in the field of interior design; computer design research; rendering of computer graphics (digital imaging services); website development for others; computer graphics design services; computer-aided engineering services; computer aided design services; computer aided design for manufacturing operations; design services relating to data processing test tools; design services relating to data processing tools; computer-aided engineering design services; internet web site design services; computer design services; design services relating to computer hardware and to computer programmes; web site design and creation services; design and planning services relating to telecommunication equipment; design of computer hardware; advisory services relating to computer hardware design; advisory services relating to computer systems design; design of computer databases; website development services.

2.        European Union trade mark application No 15 170 699 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 170 699. The opposition is based on, inter alia, European Union trade mark registration No 10 153 674. The opponent invoked Article 8(1)(a) and (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.

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 European Union trade mark registration No 10 153 674.

1. The goods and services

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

Class 9: Interactive computer programs; computer programs (software that can be transferred to another carrier); computer programs for face-to-face marketing; computer programmes for use in telecommunications; computer programs for use in insurance; computer programmes for use in database management.

Class 35: Business management; business administration; office functions; computer file management; data search in computer files for others; computerized file management; systemisation of information in to computer databases.

Class 36: Insurance; financial activity; bank services; payment settlement, banking operations; financial consultation; financial consultancy; financial operations; financial services; financial transactions; financial exchange services.

Class 38: Telecommunications; message sending; computer aided transmission of messages and images; transmission of digital information; electronic mail, message sending; online transmission of information; transmission of information by electronic mail; transmission of information by electronic means; communication services for the transmission of information by electronic means; communication services for the transmission of information; providing telecommunications connections to a global computer network; communication by computer terminals; electronic transmission of data and documents via computer terminals and electronic devices; communications between computer terminals; cellular telephone communication.

Class 42: Design and development of computer hardware and software; updating of computer software; duplication of computer programs; computer software design; design of computer systems; computer software technical support services; computer programming; installation of computer software.

The contested services are the following:

Class 38: Telecommunication services; computer communication and internet access; provision and rental of telecommunications facilities and equipment; broadcasting services; telephone and mobile telephone services; news agencies; communication of information by electronic means; communication of data by means of telecommunications.

Class 41: Publishing and reporting; issue of publications; layout services, other than for advertising purposes; providing on-line electronic publications, not downloadable; providing online electronic publications in the field of music, not downloadable; providing electronic publications; providing electronic publications relating to language training, not downloadable; providing electronic publications from a global computer network or the internet, not downloadable; publication of posters; publishing a newspaper for customers on the internet; editing of printed matter containing pictures, other than for advertising purposes; multimedia publishing of printed matter; multimedia publishing of books; editing of written texts; publishing of reviews; publishing of documents; publication of books; publication of newspapers, periodicals, catalogs and brochures; publication of educational books; publication of booklets; publication of magazines; providing on-line non-downloadable general feature magazines; publication of electronic magazines; publication of manuals; publication of training manuals; publication of material which can be accessed from databases or from the internet; publication of multimedia material online; publication of educational teaching materials; publication of material on magnetic or optical data media; publication of printed matter; publication of printed matter relating to intellectual property rights; publication of printed matter and printed publications; publication of periodicals and books in electronic form; publication of electronic books and periodicals on the internet; publication of printed matter in electronic form; publication of printed matter in electronic form on the internet; publication of printed matter, other than publicity texts; publication of printed matter, other than publicity texts, in electronic form; publication of printed matter, also in electronic form, except for advertising purposes; publication of prospectuses; publishing of web magazines; publishing of journals; publication of consumer magazines; publication and edition of books; on-line publication of electronic books and journals (non-downloadable); publication of online guide books, travel maps, city directories and listings for use by travellers, not downloadable; publishing by electronic means; publication of electronic books and journals on-line; electronic publication of texts and printed matter, other than publicity texts, on the internet; scriptwriting services; writing of texts; writing of texts, other than publicity texts; writing and publishing of texts, other than publicity texts; news syndication reporting; news syndication for the broadcasting industry; publishing services; digital video, audio and multimedia entertainment publishing services; publishing services, except printing; provision of information relating to publishing; provision of video recording studio services; publishing services (including electronic publishing services); publishing services for periodical and non-periodical publications, other than publicity texts; music publishing and music recording services; music publishing services; consultation services relating to the publication of magazines; consultation services relating to the publication of written texts; advisory services relating to publishing; consultation services relating to the publication of books; news programming services for transmission across the internet; news programme services; news programme services for radio or television; services for the publication of guide books; publishing services for books and magazines; on-line publishing services; publishing services carried out by computerised means; electronic text publishing services; electronic online publication of periodicals and books; providing on-line publications; providing publications from a global computer network or the internet which may be browsed; news reporters services; writing services for blogs.

Class 42: Design services; IT services; computer-aided design of video graphics; design services relating to the development of computerised information processing systems; design of fashion accessories; design of ornamental layouts; animation and special-effects design for others; animation design for others; commercial art design; design of mechanical, electromechanical and optoelectronic apparatus and instruments; packaging design for others; design, creation, hosting and maintenance of internet sites for third parties; design of instruments; art work design; constructing an internet platform for electronic commerce; design of diagnostic apparatus and equipment; brochure design; design of electric circuit boards; design of mechanical and micromechanical components; design of optical and microoptical components; design of telecommunications apparatus and equipment; design of three dimensional displays; design of CD-ROM electronic format for computer databases; design of graphics and of livery for corporate identity; design of games; design of board-games; toy design; design of logos for corporate identity; design of logos for t-shirts; design of brand names; designing of packaging and wrapping materials; design of office automation equipment; design of printed material; design of hardware for compression and decompression of multimedia contents; design of hardware for multimedia data storing and recalling; design of hardware for processing and distribution of multimedia contents; design of hardware for audio and video operators; design of hardware for digital signal processing; design of models; new product design; homepage and webpage design; design of homepages and websites; design of typefaces; product design; design of industrial products; computer network design for others; computer website design; designing websites for advertising purposes; computer specification design; design of exhibition stands; design of blinds; computer system design; design services for data processing systems; design and graphic arts design for the creation of web pages on the internet; design and graphic arts design for the creation of web sites; design and creating web sites for others; database design and development; design and development of computer hardware; design and development of testing and analysis methods; design and development of new technology for others; designing and developing webpages on the internet; product design and development; design and development of multimedia products; design and development of networks; designing and implementing web sites for others; design and development of electronic data security systems; design and maintenance of computer sites for third parties; design and maintenance of web sites for others; designing and implementing network web pages for others; graphic design; computer aided graphic design; graphic design for the compilation of web pages on the internet; industrial and graphic art design; web site design consultancy; consultancy relating to the design of packaging; advice relating to the design of computer hardware; consultancy with regard to webpage design; product development consultation; professional consultancy relating to industrial design; jewellery design services; creating electronically stored web pages for online services and the internet; creating home pages for others; creating of home pages for computer networks; creation of internet web sites; electronic site authoring; creation and provision of web pages to and for third parties; creating, designing and maintaining web sites; creation, design, development and maintenance of web sites for third parties; creating and designing web pages for others; creating and maintaining web sites for others; creating and maintaining computer sites (web sites) for others; creating and updating of home pages for computer networks; product development; product development for others; development and design of digital sound and image carriers; development, design and updating of home pages; providing a website featuring information in the field of interior design; providing information in the field of product design; providing information in the field of product development; preparation of reports relating to graphic arts design; preparation of design parameters for visual images; preparation of reports relating to design; preparation of reports relating to industrial design; computer design research; research relating to design; product research and development; set design for theatrical enterprises; rendering of computer graphics (digital imaging services); brand design services; shopfitting design consultancy services; website development for others; illustration services (design); graphic illustration services for others; computer graphics design services; engineering services; computer-aided engineering services; computer aided design services; computer aided design for manufacturing operations; design services relating to data processing test tools; design services relating to data processing tools; design services relating to the publication of documents; graphic art design; industrial packaging design services; design of signs; computer-aided engineering design services; packaging design; design services relating to metal-working tools; internet web site design services; textile design services; computer design services; design services relating to computer hardware and to computer programmes; design services relating to the reproduction of documents; web site design and creation services; design and planning services relating to telecommunication equipment; commercial design services; retail design services; custom design services; design of computer hardware; advisory services relating to computer hardware design; advisory services relating to computer systems design; consultancy in the field of technological design; design of computer databases; website development services.

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; computer communication and internet access; communication of information by electronic means are identically contained in both lists of services (including synonyms).

The contested provision and rental of telecommunications facilities and equipment; broadcasting services; telephone and mobile telephone services; news agencies; communication of data by means of telecommunications are included in the broad category of, or overlap with, the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 41

The contested publishing; publishing a newspaper for customers on the internet; multimedia publishing of printed matter; multimedia publishing of books; publishing of reviews; publishing of documents; publishing of web magazines; publishing of journals; publishing by electronic means; publishing services; digital video, audio and multimedia entertainment publishing services; publishing services, except printing; provision of information relating to publishing; publishing services (including electronic publishing services); publishing services for periodical and non-periodical publications, other than publicity texts; music publishing and music recording services; music publishing services; advisory services relating to publishing; publishing services for books and magazines; on-line publishing services; publishing services carried out by computerised means; electronic text publishing services are publishing services. These services are considered similar to the opponent’s interactive computer programs; computer programs (software that can be transferred to another carrier) in Class 9. These goods and services have the same purpose. Moreover, they can coincide in their producers and end users.

The same applies to the contested providing on-line electronic publications, not downloadable; providing online electronic publications in the field of music, not downloadable; providing electronic publications; providing electronic publications relating to language training, not downloadable; providing electronic publications from a global computer network or the internet, not downloadable; providing on-line non-downloadable general feature magazines; providing on-line publications; providing publications from a global computer network or the internet which may be browsed, which are also considered similar to the opponent’s interactive computer programs; computer programs (software that can be transferred to another carrier) in Class 9. These goods and services have the same purpose. Moreover, they can coincide in their producers and end users.

The remaining contested services consist mainly of reporting, editing and publication services, whereas the opponent’s goods and services are mainly software (Class 9), business management, business administration and office functions (Class 35), financial and insurance services (Class 36), telecommunications (Class 38) and design and development of computer hardware and software and computer programming (Class 42). These goods and services differ in their natures, methods of use and purposes. They also differ in their end users, distribution channels and producers/providers. Finally, they are neither in competition with each other nor complementary to each other. Therefore, the contested reporting; issue of publications; layout services, other than for advertising purposes; publication of posters; editing of printed matter containing pictures, other than for advertising purposes; editing of written texts; publication of books; publication of newspapers, periodicals, catalogs and brochures; publication of educational books; publication of booklets; publication of magazines; publication of electronic magazines; publication of manuals; publication of training manuals; publication of material which can be accessed from databases or from the internet; publication of multimedia material online; publication of educational teaching materials; publication of material on magnetic or optical data media; publication of printed matter; publication of printed matter relating to intellectual property rights; publication of printed matter and printed publications; publication of periodicals and books in electronic form; publication of electronic books and periodicals on the internet; publication of printed matter in electronic form; publication of printed matter in electronic form on the internet; publication of printed matter, other than publicity texts; publication of printed matter, other than publicity texts, in electronic form; publication of printed matter, also in electronic form, except for advertising purposes; publication of prospectuses; publication of consumer magazines; publication and edition of books; on-line publication of electronic books and journals (non-downloadable); publication of online guide books, travel maps, city directories and listings for use by travellers, not downloadable; publication of electronic books and journals on-line; electronic publication of texts and printed matter, other than publicity texts, on the internet; scriptwriting services; writing of texts; writing of texts, other than publicity texts; writing and publishing of texts, other than publicity texts; news syndication reporting; news syndication for the broadcasting industry; provision of video recording studio services; consultation services relating to the publication of magazines; consultation services relating to the publication of written texts; consultation services relating to the publication of books; news programming services for transmission across the internet; news programme services; news programme services for radio or television; services for the publication of guide books; electronic online publication of periodicals and books; news reporters services; writing services for blogs are considered dissimilar to the opponent’s goods and services.

Contested services in Class 42

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

The contested IT services; computer-aided design of video graphics; design services relating to the development of computerised information processing systems; design, creation, hosting and maintenance of internet sites for third parties; constructing an internet platform for electronic commerce; design of telecommunications apparatus and equipment; design of three dimensional displays; design of CD-ROM electronic format for computer databases; design of hardware for compression and decompression of multimedia contents; design of hardware for multimedia data storing and recalling; design of hardware for processing and distribution of multimedia contents; design of hardware for audio and video operators; design of hardware for digital signal processing; homepage and webpage design; design of homepages and websites; computer network design for others; computer website design; designing websites for advertising purposes; computer specification design;; computer system design; design services for data processing systems; design and graphic arts design for the creation of web pages on the internet; design and graphic arts design for the creation of web sites; design and creating web sites for others; database design and development; design and development of computer hardware; designing and developing webpages on the internet; design and development of networks; designing and implementing web sites for others; design and development of electronic data security systems; design and maintenance of computer sites for third parties; design and maintenance of web sites for others; designing and implementing network web pages for others; graphic design; computer aided graphic design; graphic design for the compilation of web pages on the internet; creating electronically stored web pages for online services and the internet; creating home pages for others; creating of home pages for computer networks; creation of internet web sites; electronic site authoring; creation and provision of web pages to and for third parties; creating, designing and maintaining web sites; creation, design, development and maintenance of web sites for third parties; creating and designing web pages for others; creating and maintaining web sites for others; creating and maintaining computer sites (web sites) for others; creating and updating of home pages for computer networks; development and design of digital sound and image carriers; development, design and updating of home pages; providing a website featuring information in the field of interior design; computer design research; rendering of computer graphics (digital imaging services); website development for others; computer graphics design services; computer-aided engineering services; computer aided design services; computer aided design for manufacturing operations; design services relating to data processing test tools; design services relating to data processing tools; computer-aided engineering design services; Internet web site design services; computer design services; design services relating to computer hardware and to computer programmes; web site design and creation services; design and planning services relating to telecommunication equipment; design of computer hardware; design of computer databases; website development services are identical to the opponent’s design and development of computer hardware and software; updating of computer software; duplication of computer programs; computer software design; design of computer systems; computer software technical support services; computer programming; installation of computer software, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in or overlap with the contested services.

As regards the contested web site design consultancy; advice relating to the design of computer hardware; consultancy with regard to webpage design; advisory services relating to computer hardware design; advisory services relating to computer systems design, the Office considers that a connection exists between those services and the opponent’s design and development of computer hardware and software; computer software technical support services; computer programming. In fact, it is not uncommon in the relevant market sector for the provider of design and development of computer hardware and software; computer software technical support services; computer programming to also provide advisory and consultancy services. These services can coincide in their producers, end users and distribution channels. Furthermore, they are complementary. Therefore, the Office considers that these services are similar.

The remaining contested services, design of fashion accessories; design of ornamental layouts; animation and special-effects design for others; animation design for others; commercial art design; design of mechanical, electromechanical and optoelectronic apparatus and instruments; packaging design for others; design of instruments; art work design; design of diagnostic apparatus and equipment; brochure design; design of electric circuit boards; design of mechanical and micromechanical components; design of optical and microoptical components; design of graphics and of livery for corporate identity; design of games; design of board-games; toy design; design of logos for corporate identity; design of logos for t-shirts; design of brand names; designing of packaging and wrapping materials; design of office automation equipment; design of printed material; design of models; new product design; design of typefaces; product design; design of industrial products; design of exhibition stands; design of blinds; design and development of testing and analysis methods; design and development of new technology for others; product design and development; design and development of multimedia products; industrial and graphic art design; consultancy relating to the design of packaging; product development consultation; professional consultancy relating to industrial design; jewellery design services; product development; product development for others; providing information in the field of product design; providing information in the field of product development; preparation of reports relating to graphic arts design; preparation of design parameters for visual images; preparation of reports relating to design; preparation of reports relating to industrial design; research relating to design; product research and development; set design for theatrical enterprises; brand design services; shopfitting design consultancy services; illustration services (design); graphic illustration services for others; engineering services; design services relating to the publication of documents; graphic art design; industrial packaging design services; design of signs; packaging design; design services relating to metal-working tools; textile design services; design services relating to the reproduction of documents; commercial design services; retail design services; custom design services; consultancy in the field of technological design, are very specific design services. Although they have the same nature as the opponent’s services in Class 42, they differ from the opponent’s services in their methods of use, purposes, end users, distribution channels and producers/providers. Finally, they are neither in competition with each other nor complementary to each other. These services are dissimilar.

The same also applies when the abovementioned contested services are compared with the opponent’s goods and services in Classes 9, 35, 36 and 38. These goods and services differ in their natures, methods of use, purposes, end users, distribution channels and producers/providers. Finally, they are neither in competition with each other nor complementary to each other. These goods and services are dissimilar.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of purchase and their price.

3. The signs

Blue Media	bluemedia
Earlier trade mark	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 mark is a word mark composed of two words, ‘Blue’ and ‘Media’.

The contested sign is also a word mark and, although it is composed of one verbal element, ‘bluemedia’, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, the contested sign will be perceived as the words ‘BLUE’ and ‘MEDIA’.

The word ‘blue’, of both signs, is the English term for the colour blue and is part of the basic English vocabulary (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 30). Consequently, it will be understood by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The element ‘MEDIA’, included in both signs, will be understood by the public in the relevant territory as meaning ‘a plural of medium’ (medium meaning ‘a means or agency for communicating or diffusing information, news, etc., to the public’), ‘the means of communication that reach large numbers of people, such as television, newspapers, and radio’, ‘of or relating to the mass media’ (information extracted from Reverso Dictionary on 31/03/2017 at http://dictionary.reverso.net/english-definition/media). As the word ‘MEDIA’ is largely used to refer to news providers in general or to a specific provider, this element is weak for some of the relevant services, namely the services concerning news and multimedia. For the rest of the relevant goods and services, this element is distinctive.

Visually, the signs coincide in the words ‘BLUE’ and ‘MEDIA’. On the other hand, the signs differ in the fact that the earlier mark is written as two words, while the contested sign is written as one word.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters /B/L/U/E/M/E/D/I/A/, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as having the same meaning, specified above, the signs are conceptually identical.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no 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 weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. They target the public at large and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

The signs are visually highly similar, and aurally and conceptually identical to the extent that they coincide in the words ‘BLUE’ and ‘MEDIA’. On the other hand, the signs differ in the fact that the earlier mark is written as two words, while the contested sign is written as one word.

In this respect, it should be noted that consumers tend to remember similarities rather than dissimilarities between signs. In addition, account should also be 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).

Moreover, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the high degree of visual similarity together with the aural and conceptual identity between the signs, on the one hand, and the identity or similarity between some of the services, on the other hand, lead to a likelihood of confusion on the part of the public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 153 674.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to the goods and services of the earlier trade mark.

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

The opponent has also based its opposition on the following earlier mark: European Union trade mark No 12 503 439, , for interactive multimedia computer programs; programs for computers; programs (computer -) [downloadable software]; computer programmes for use in telecommunications; computer programmes for data processing; computer software programs for database management; computer databases; software in Class 9; direct marketing; direct marketing; direct marketing; advertising, marketing and promotional services; commercial trading and consumer information services; computerised file management; advertising services provided via a data base; market research by means of a computer data base; provision of commercial business information by means of a computer database; computerised file management in Class 35; insurance; banking insurance; financial affairs; banking; banking; automated payment services; financial transfers and transactions, and payment services; currency trading and exchange services; investment services; loan and credit, and lease-finance services; online banking; electronic banking via a global computer network [internet banking]; financial banking; personal finance services; computerised financial services; provision of financial services by means of a global computer network or the internet; financial services relating to savings; financial intermediary services; payment processing; payment processing; financial payment services; electronic payment services; banking; currency trading and exchange services; financial database services relating to foreign exchange; on-line real-time currency trading; foreign currency services in Class 36; telecommunications; information about telecommunication; electronic advertising (telecommunications); telecommunications by e-mail; telecommunication of information (including web pages); on-line information services relating to telecommunications; message sending; transmission of information on-line; electronic transmission of mail and messages; communication services for the transmission of information by electronic means; communication services for the transmission of information; providing telecommunications connections to a global computer network; communications by computer terminals; cellular telephone communication; communications by computer terminals in Class 38; and design of software; software as a service [SaaS]; computer programming; installation of computer software in Class 42.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements, which are not present in the contested trade mark. Moreover, it covers the same or a narrower scope of the goods and services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the services are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Cristina CRESPO MOLTO

Francesca DINU

Janja FELC

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.