BT | Decision 2734138 - BRITISH TELECOMMUNICATIONS public limited company v. BLUETICKET, SERVIÇOS DE BILHÉTICA, S.A.
Date Published: Sep 28, 2017
OPPOSITION No B 2 734 138
British Telecommunications public limited company, 81 Newgate Street, London EC1A 7AJ, United Kingdom (opponent), represented by Bt Group Legal Bernadette Mary Mee, PPC5A, BT Centre 81 Newgate Street, London EC1A 7AJ, United Kingdom (professional representative)
a g a i n s t
Blueticket Serviços De Bilhética S.A., Rossio dos Olivais, Lote 2.13.01A, 1990-231 Lisbon, Portugal (applicant), represented by Raul César Ferreira (Herd.) S.A., Rua do Patrocínio 94, 1399-019 Lisbon, Portugal (professional representative).
On 26/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 734 138 is upheld for all the contested goods and services, namely:
Class 16: Printed tickets (paper).
Class 38: Providing of access to platforms on the Internet for ticket purchase.
Class 41: Ticket reservation services for concerts, shows and entertainment events; ticket information services for concerts, shows and entertainment events.
Class 42: Technology information services.
2. European Union trade mark application No 15 200 736 is rejected for all the contested goods and services. It may proceed for the remaining goods.
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 15 200 736, namely against all the goods and services in Classes 16, 38, 41, 42. The opposition is based on European Union trade mark registration No 1 879 055. The opponent invoked Articles 8(1)(b) and 8(5) 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 goods and services
The goods and services on which the opposition is based are the following:
Class 16: Printed matter; publications; non-encoded telephone cards.
Class 38: Telecommunications services; telecommunication of information (including web pages); electronic mail services; providing user access to the Internet; providing telecommunications connections to the Internet or database; telecommunications portal services.
Class 41: Information and advisory services relating to education, training, entertainment, sport, recreation, theatre, television, the music and publishing; publishing services; reservation booking and ticketing services; on-line and interactive database information services, all relating to the aforesaid services.
Class 42: Information and advisory services all relating to literacy, artistic, musical, design, gardening and careers; reservation services for hotel accommodation and restaurants; on-line and interactive database information services, all relating to the aforesaid services; research and development services, consultancy services and testing services, all relating to telecommunications, communications networks and systems, computer programming, computer software and information systems; computer and telecommunications systems and networks analysis; computer programming services; information and advisory servcies relating to weather, restaurants and news.
The contested goods and services are the following:
Class 16: Printed tickets (paper).
Class 38: Providing of access to platforms on the Internet for ticket purchase.
Class 41: Ticket reservation services for concerts, shows and entertainment events; ticket information services for concerts, shows and entertainment events.
Class 42: Technology information services.
Contested goods in Class 16
Printed tickets (paper) are included in the broad category of the opponent’s Printed matter. Therefore, they are identical.
Contested services in Class 38
The contested providing of access to platforms on the Internet for ticket purchase are included in the broad category of the opponent’s telecommunications services. Therefore, they are identical.
Contested services in Class 41
The contested ticket reservation services for concerts, shows and entertainment events are included in the broad category of the opponent’s reservation booking and ticketing services. Therefore, they are identical.
The contested ticket information services for concerts, shows and entertainment events are included in the broad categories of the opponent’s Information and advisory services relating to education, training, entertainment, recreation, theatre. Therefore, they are identical.
Contested services in Class 42
The contested technology information services include, as a broader category, or overlap with, the opponent’s consultancy services and testing services, all relating to telecommunications, communications networks and systems. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
- 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 found to be identical are directed at the public at large and at customers with specific professional knowledge or expertise.
The degree of attention is average.
- The signs
BT | |
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 letters BT. As it has no meaning for the relevant public and is, therefore, distinctive.
The contested sign is a figurative mark. It contains letters BT in white, placed on red and blue backgrounds. The mark has no elements that could be considered clearly more distinctive or dominant than other elements. However, it is noted, that 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).
Furthermore, as the earlier mark is a word mark, then it's the word that protected and not its written form.
Visually, the signs coincide in the letters BT. However, they differ in their stylisation and device elements of the contested sign.
Therefore, the signs are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters BT and the signs are aurally identical therefore.
Conceptually, neither of the signs has a particular meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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.
The opponent claimed that the earlier trade mark enjoys reputation, 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.
- Global assessment, other arguments and conclusion
The goods and services are identical. The similarities and dissimilarities of the marks have been established above.
The marks share the same distinctive elements BT, the difference being the slight difference in the typeface and stylisation of the contested sign. As mentioned, the additional and differing device elements of the contested mark are perceived, but attributed less attention since the public will more easily refer to the signs in question by their verbal element than by describing their figurative elements.
Moreover, the two signs, in view of the coinciding elements, could be perceived as two different product or service lines coming from the same undertaking or economically-linked undertakings.
In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).
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 European Union trade mark registration No 1 879 055. It follows that the contested trade mark must be rejected for all the contested goods and services.
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 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
José Antonio GARRIDO OTAOLA | Erkki MÜNTER | Julie GOUTARD |
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.