CARAS | Decision 2675687
Date Published: Sep 22, 2017
OPPOSITION No B 2 675 687
SIC - Sociedade Independente de Comunicação, S.A., Estrada da Outurela, Nº 119, 2794 Carnaxide, Portugal (opponent), represented by Furtado - Marcas E Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisboa, Portugal (professional representative)
a g a i n s t
Editorial Televisa International S.A., Av. Vasco de Quiroga 2000, Edif. E., Mexico, D.F. 01210, Mexico (applicant), represented by Lerroux & Fernández-Pacheco, Claudio Coello 124 4º, 28006 Madrid, Spain (professional representative).
On 08/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 675 687 is partially upheld, namely for the following contested goods and services:
Class 16: Periodicals (magazines); newspapers; publications; books, printed matter of all kinds; general feature magazines; social interest magazines; travel magazines; computer magazines; legal journals; music magazines; medical journals; newspapers; daily newspaper; printed periodicals; educational publications; printed publications; periodicals; printed periodicals in the field of tourism; poster magazines; posters made of paper; posters; printed periodicals in the field of figurative arts; printed periodicals in the field of movies; printed periodicals in the field of dance; printed periodicals in the field of plays; promotional publications; printed advertisements; printed matter; books; appointment books; address books; almanacs; banknotes; entry tickets; passenger tickets; printed tickets; prescription reminder pads; score pads; bulletins; newsletters; betting slips; rub down transfers; iron-on transfers of paper; heat transfers; calendars; advent calendars; tear-off calendars; dry transfer characters; caricatures; paper report covers; printed informational folders; informational letters; menu cards; placards of cardboard; mounted posters; advertising posters; printed advertising boards of cardboard; printed advertising boards of paper; catalogues; wallcoverings (books containing samples of -); mail order catalogues; catalogues relating to computer software; printed award certificates; gift certificates; printed certificates; bank checks; cheques; travellers’ cheques; blueprints; barcode ribbons; religious circular letters; printed lessons; collages; printed news releases; comics; trading cards; baseball cards; sports trading cards; trading cards other than for games; crossword puzzles; music note books; magazine covers; printed stories in illustrated form; printed questionnaires; coupons; classified directories; printed lectures; printed matter for instructional purposes; paper emblems; printed emblems; printed emblems [decalcomanias]; checkbook cases; passport cases; cardboard hangtags; printed luggage labels; printed paper labels; handpainted paper wine bottle labels; printed novelty wine labels; printed informational cards; brochures in the field of real estate sales; souvenir programmes; advertising pamphlets; booklets relating to games; forms, printed; order forms; blank forms; printed survey answer sheets; bookkeeping forms; partially printed forms; photographs [printed]; collector’s photographs of players; unmounted and mounted photographs; leather covered diaries; school photographs; passport covers; covers for postage stamps; revolving circular charts; wall charts; printed charts; directories; strategy guidebooks for video games; study guides; hotel directories; computer hardware users guide; decorative paper garlands for parties; printed guides; telephone directories; comic strips; archival storage pages; instruction sheets; score sheets; printed answer sheets; commemorative stamp sheets; photograph album pages; scrapbook pages; timetables; printed timetables; printed horoscopes; prints; lithographic prints; prints in the nature of pictures; art pictures; printed visuals; printed research reports; printed reports; printed consumer reports; law reports; printed invitations; gazetteers; printed paper signs; advertising signs of cardboard; advertising signs of paper; sticker activity books; coupon books; comic books; strategy guide books for card games; billbooks; journals; score books; manuscript books; colouring books; address lists; price lists; computer software operating manuals; computer game instruction manuals; instruction manuals for exercise equipment; instruction manuals for music synthesizers; music instruction manuals; instructional manuals for teaching purposes; computer manuals; computer hardware reference manuals; road maps; maps made of flexible plastics; printed training materials; printed instructional material on telecommunications; printed material in the nature of color samples; role playing game equipment in the nature of manuals; printed teaching materials; printed menus; handwriting specimens for copying; monographs; printed seminar notes; works of art made of paper; display banners of paper; display banners made of cardboard; newsprint paper; sheet music in printed form; embroidery designs [patterns]; sewing patterns; dressmaking patterns for drawing; paper patterns; clothing patterns; printed patterns; printed patterns for dressmaking; printed patterns for costumes; patterns for making clothes; patterns for dressmaking; knitting patterns; stickers [decalcomanias]; printed curricula; planners [printed matter]; architectural plans; dressmaking stencils for drawing; checkbook covers; paperboard blanks; printed awards; data processing programmes in printed form; printed programmes; computer programmes in printed form; events programmes; prospectuses; pharmaceutical information leaflets; calendar refills; printed recipes sold as a component of food packaging; law digests; flow sheets [printed matter]; printed art reproductions; graphic reproductions; graphic art reproductions; magazines [periodicals]; inflight magazines; strategy guide magazines for card games; strategy guide magazines for video games; savings stamps; stamps; magazine supplements for newspapers; navigation charts for use in sailing craft; score charts; advertisement boards of card; advertisement boards of paper; cheque books; pads of party invitations; trading card milk bottle caps; christmas cards; thank you cards; collectable cards; credit cards without magnetic coding; birthday cards; debit cards without magnetic coding; greeting cards; pop-up greetings cards; printed greeting cards with electronic information stored therein; musical greeting cards; invitation cards; motivational cards; trivia cards; scoring cards; printed recipe cards; reference cards; gift cards; printed mail response cards; visiting cards; flash cards; picture cards; occasion cards; picture postcards; postcards and picture postcards; pre-paid telephone calling cards, not magnetically encoded; removable tattoos [decalcomania]; temporary tattoos; tickets; newspaper comic strips; vouchers of value; gift vouchers; cigar bands; cartoon prints; newspaper cartoons; flyers; decoration and art materials and media; works of art and figurines of paper and cardboard, and architects’ models; stationery and educational supplies; disposable paper products; money holders.
Class 38: Radio broadcasting of audio and visual content; television and radio broadcasting services rendered by cable, satellite or transmitting station; transmission of radio and/or television programmes; network distribution and connection of radio and television programmes, entertainment, news, education and current affairs programmes; operation of a television subscription service (pay TV) including video on demand; news agency services; none of the foregoing services being in the nature of market research, marketing or advertising.
Class 41: Online electronic publication of magazines, periodicals and books (not downloadable via electronic media) in particular in the field of sports, lifestyle, beauty, travel, real estate, fashion, art, electronics, fine dining, jewelry, culture, leisure, shopping, entertainment, health, finances, society and celebrities; Production and presentation of radio and television programmes, of entertainment, news, education and current affairs programmes.
2. European Union trade mark application No 14 736 961 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 736 961, . The opposition is based on, inter alia, European Union trade mark registration No 14 844 617, ‘SIC CARAS’ (word mark). The opponent invoked Article 8(1)(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 14 844 617.
- The goods and services
The services on which the opposition is based are the following:
Class 38: Telecommunications.
Class 41: Text edition including books and magazines; providing of training; organisation and production of sporting and cultural activities, including competitions relating to education or entertainment; production of teaching material distributed through courses, lectures and professional seminars; audio and video production and photography; shows (production of); motion picture film production and distribution; production of television and radio programmes and production of phonograph records.
After a limitation, the contested goods and services are the following:
Class 16: Periodicals (magazines); newspapers; publications; books, printed matter of all kinds; general feature magazines; social interest magazines; travel magazines; computer magazines; legal journals; music magazines; medical journals; newspapers; daily newspaper; printed periodicals; educational publications; printed publications; periodicals; printed periodicals in the field of tourism; poster magazines; posters made of paper; posters; printed periodicals in the field of figurative arts; printed periodicals in the field of movies; printed periodicals in the field of dance; printed periodicals in the field of plays; promotional publications; printed advertisements; printed matter; books; adhesive transfers; appliques in the form of decals; appointment books; address books; almanacs; banknotes; entry tickets; passenger tickets; printed tickets; prescription reminder pads; score pads; bulletins; newsletters; betting slips; rub down transfers; iron-on transfers of paper; 3D decals for use on any surface; heat transfers; calendars; advent calendars; tear-off calendars; dry transfer characters; caricatures; paper report covers; printed informational folders; informational letters; menu cards; placards of cardboard; mounted posters; advertising posters; printed advertising boards of cardboard; printed advertising boards of paper; catalogues; wallcoverings (books containing samples of -); mail order catalogues; catalogues relating to computer software; printed award certificates; gift certificates; printed certificates; bank checks; cheques; travellers’ cheques; blueprints; barcode ribbons; religious circular letters; printed lessons; collages; printed news releases; comics; trading cards; baseball cards; sports trading cards; trading cards other than for games; crossword puzzles; music note books; magazine covers; printed stories in illustrated form; printed questionnaires; coupons; adhesive wall decorations of paper; classified directories; printed lectures; printed matter for instructional purposes; paper emblems; printed emblems; printed emblems [decalcomanias]; checkbook cases; passport cases; cardboard hangtags; printed luggage labels; printed paper labels; handpainted paper wine bottle labels; printed novelty wine labels; printed informational cards; brochures in the field of real estate sales; souvenir programmes; advertising pamphlets; booklets relating to games; forms, printed; order forms; blank forms; printed survey answer sheets; bookkeeping forms; partially printed forms; photographs [printed]; collector’s photographs of players; unmounted and mounted photographs; leather covered diaries; school photographs; passport covers; covers for postage stamps; revolving circular charts; wall charts; printed charts; directories; strategy guidebooks for video games; study guides; hotel directories; computer hardware users guide; decorative paper garlands for parties; printed guides; telephone directories; comic strips; archival storage pages; instruction sheets; score sheets; printed answer sheets; commemorative stamp sheets; photograph album pages; scrapbook pages; timetables; printed timetables; printed horoscopes; prints; lithographic prints; prints in the nature of pictures; art pictures; printed visuals; printed research reports; printed reports; printed consumer reports; law reports; printed invitations; gazetteers; printed paper signs; advertising signs of cardboard; advertising signs of paper; sticker activity books; coupon books; comic books; strategy guide books for card games; billbooks; journals; score books; manuscript books; colouring books; address lists; price lists; computer software operating manuals; computer game instruction manuals; instruction manuals for exercise equipment; instruction manuals for music synthesizers; music instruction manuals; instructional manuals for teaching purposes; computer manuals; computer hardware reference manuals; road maps; maps made of flexible plastics; printed training materials; printed instructional material on telecommunications; printed material in the nature of color samples; role playing game equipment in the nature of manuals; printed teaching materials; printed menus; handwriting specimens for copying; monographs; printed seminar notes; works of art made of paper; display banners of paper; display banners made of cardboard; newsprint paper; sheet music in printed form; embroidery designs [patterns]; sewing patterns; dressmaking patterns for drawing; paper patterns; clothing patterns; printed patterns; printed patterns for dressmaking; printed patterns for costumes; patterns for making clothes; patterns for dressmaking; knitting patterns; stickers [decalcomanias]; printed curricula; planners [printed matter]; architectural plans; dressmaking stencils for drawing; checkbook covers; paperboard blanks; printed awards; data processing programmes in printed form; printed programmes; computer programmes in printed form; events programmes; prospectuses; pharmaceutical information leaflets; calendar refills; printed recipes sold as a component of food packaging; law digests; flow sheets [printed matter]; printed art reproductions; graphic reproductions; graphic art reproductions; magazines [periodicals]; inflight magazines; strategy guide magazines for card games; strategy guide magazines for video games; savings stamps; stamps; magazine supplements for newspapers; navigation charts for use in sailing craft; score charts; advertisement boards of card; advertisement boards of paper; cheque books; pads of party invitations; trading card milk bottle caps; christmas cards; thank you cards; collectable cards; credit cards without magnetic coding; birthday cards; debit cards without magnetic coding; greeting cards; pop-up greetings cards; printed greeting cards with electronic information stored therein; musical greeting cards; invitation cards; motivational cards; trivia cards; scoring cards; printed recipe cards; reference cards; gift cards; printed mail response cards; visiting cards; flash cards; picture cards; occasion cards; picture postcards; postcards and picture postcards; pre-paid telephone calling cards, not magnetically encoded; removable tattoos [decalcomania]; temporary tattoos; tickets; newspaper comic strips; vouchers of value; gift vouchers; cigar bands; cartoon prints; newspaper cartoons; flyers; adhesives for stationery or household purposes; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; filtering materials of paper; decoration and art materials and media; paper and cardboard; works of art and figurines of paper and cardboard, and architects’ models; stationery and educational supplies; disposable paper products; money holders; glue for stationery or household use; pastes and other adhesives for stationery or household purposes; gluten [glue] for stationery or household purposes; gums [adhesives] for stationery or household purposes.
Class 35: Retailing, wholesaling and sale via global communication networks of magazines, periodicals, books, publications, CD-ROMs, DVDs and promotional articles, namely foodstuffs, clothing, cosmetics, cologne, jewellery, clocks and watches, sporting articles and electronic goods.
Class 38: Radio broadcasting of audio and visual content; television and radio broadcasting services rendered by cable, satellite or transmitting station; transmission of radio and/or television programmes; network distribution and connection of radio and television programmes, entertainment, news, education and current affairs programmes; operation of a television subscription service (pay TV) including video on demand; news agency services; none of the foregoing services being in the nature of market research, marketing or advertising.
Class 41: Online electronic publication of magazines, periodicals and books (not downloadable via electronic media) in particular in the field of sports, lifestyle, beauty, travel, real estate, fashion, art, electronics, fine dining, jewelry, culture, leisure, shopping, entertainment, health, finances, society and celebrities; Production and presentation of radio and television programmes, of entertainment, news, education and current affairs programmes.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The terms ‘in particular’ and ‘including’, used in the applicant’s and opponent’s lists of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 goods in Class 16
The contested periodicals (magazines); newspapers; publications; books, printed matter of all kinds; general feature magazines; social interest magazines; travel magazines; computer magazines; legal journals; music magazines; medical journals; newspapers; daily newspaper; printed periodicals; educational publications; printed publications; periodicals; printed periodicals in the field of tourism; poster magazines; posters made of paper; posters; printed periodicals in the field of figurative arts; printed periodicals in the field of movies; printed periodicals in the field of dance; printed periodicals in the field of plays; promotional publications; printed advertisements; printed matter; books; appointment books; address books; almanacs; banknotes; entry tickets; passenger tickets; printed tickets; prescription reminder pads; score pads; bulletins; newsletters; betting slips; rub down transfers; iron-on transfers of paper; heat transfers; calendars; advent calendars; tear-off calendars; dry transfer characters; caricatures; paper report covers; printed informational folders; informational letters; menu cards; placards of cardboard; mounted posters; advertising posters; printed advertising boards of cardboard; printed advertising boards of paper; catalogues; wallcoverings (books containing samples of -); mail order catalogues; catalogues relating to computer software; printed award certificates; gift certificates; printed certificates; bank checks; cheques; travellers’ cheques; blueprints; barcode ribbons; religious circular letters; printed lessons; collages; printed news releases; comics; trading cards; baseball cards; sports trading cards; trading cards other than for games; crossword puzzles; music note books; magazine covers; printed stories in illustrated form; printed questionnaires; coupons; classified directories; printed lectures; printed matter for instructional purposes; paper emblems; printed emblems; printed emblems [decalcomanias]; checkbook cases; passport cases; cardboard hangtags; printed luggage labels; printed paper labels; handpainted paper wine bottle labels; printed novelty wine labels; printed informational cards; brochures in the field of real estate sales; souvenir programmes; advertising pamphlets; booklets relating to games; forms, printed; order forms; blank forms; printed survey answer sheets; bookkeeping forms; partially printed forms; photographs [printed]; collector’s photographs of players; unmounted and mounted photographs; leather covered diaries; school photographs; passport covers; covers for postage stamps; revolving circular charts; wall charts; printed charts; directories; strategy guidebooks for video games; study guides; hotel directories; computer hardware users guide; decorative paper garlands for parties; printed guides; telephone directories; comic strips; archival storage pages; instruction sheets; score sheets; printed answer sheets; commemorative stamp sheets; photograph album pages; scrapbook pages; timetables; printed timetables; printed horoscopes; prints; lithographic prints; prints in the nature of pictures; art pictures; printed visuals; printed research reports; printed reports; printed consumer reports; law reports; printed invitations; gazetteers; printed paper signs; advertising signs of cardboard; advertising signs of paper; sticker activity books; coupon books; comic books; strategy guide books for card games; billbooks; journals; score books; manuscript books; colouring books; address lists; price lists; computer software operating manuals; computer game instruction manuals; instruction manuals for exercise equipment; instruction manuals for music synthesizers; music instruction manuals; instructional manuals for teaching purposes; computer manuals; computer hardware reference manuals; road maps; maps made of flexible plastics; printed training materials; printed instructional material on telecommunications; printed material in the nature of color samples; role playing game equipment in the nature of manuals; printed teaching materials; printed menus; handwriting specimens for copying; monographs; printed seminar notes; works of art made of paper; display banners of paper; display banners made of cardboard; newsprint paper; sheet music in printed form; embroidery designs [patterns]; sewing patterns; dressmaking patterns for drawing; paper patterns; clothing patterns; printed patterns; printed patterns for dressmaking; printed patterns for costumes; patterns for making clothes; patterns for dressmaking; knitting patterns; stickers [decalcomanias]; printed curricula; planners [printed matter]; architectural plans; dressmaking stencils for drawing; checkbook covers; paperboard blanks; printed awards; data processing programmes in printed form; printed programmes; computer programmes in printed form; events programmes; prospectuses; pharmaceutical information leaflets; calendar refills; printed recipes sold as a component of food packaging; law digests; flow sheets [printed matter]; printed art reproductions; graphic reproductions; graphic art reproductions; magazines [periodicals]; inflight magazines; strategy guide magazines for card games; strategy guide magazines for video games; savings stamps; stamps; magazine supplements for newspapers; navigation charts for use in sailing craft; score charts; advertisement boards of card; advertisement boards of paper; cheque books; pads of party invitations; trading card milk bottle caps; Christmas cards; thank you cards; collectable cards; credit cards without magnetic coding; birthday cards; debit cards without magnetic coding; greeting cards; pop-up greetings cards; printed greeting cards with electronic information stored therein; musical greeting cards; invitation cards; motivational cards; trivia cards; scoring cards; printed recipe cards; reference cards; gift cards; printed mail response cards; visiting cards; flash cards; picture cards; occasion cards; picture postcards; postcards and picture postcards; pre-paid telephone calling cards, not magnetically encoded; removable tattoos [decalcomania]; temporary tattoos; tickets; newspaper comic strips; vouchers of value; gift vouchers; cigar bands; cartoon prints; newspaper cartoons; flyers; decoration and art materials and media; works of art and figurines of paper and cardboard, and architects’ models; stationery and educational supplies; disposable paper products; money holders are similar to the opponent’s text edition including books and magazines in Class 41, as they can have the same producers. Furthermore, they are complementary.
The same does not apply to the contested adhesive transfers; 3D decals for use on any surface; adhesive wall decorations of paper; appliques in the form of decals; adhesives for stationery or household purposes; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; filtering materials of paper; paper and cardboard; glue for stationery or household use; pastes and other adhesives for stationery or household purposes; gluten [glue] for stationery or household purposes; gums [adhesives] for stationery or household purposes, which consist mainly in adhesive products, paper and cardboard, and goods made of these materials, whereas the opponent’ services consist mainly of telecommunications and editing services, sporting and cultural activities, and the provision of training and film and photography production services. The natures and purposes of these goods are different from those of the opponent’s services. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary. Therefore, they are dissimilar.
Contested services in Class 35
The contested services in Class 35 consist mainly in retail services of certain goods, whereas the opponent’s services consist of telecommunications and editing services, sporting and cultural activities, and the provision of training and film and photography production services. The services have different natures and purposes and target different publics. Their providers are different and they are not complementary or in competition. Therefore, they are dissimilar.
Contested services in Class 38
The contested radio broadcasting of audio and visual content; television and radio broadcasting services rendered by cable, satellite or transmitting station; transmission of radio and/or television programmes; network distribution and connection of radio and television programmes, entertainment, news, education and current affairs programmes; operation of a television subscription service (pay TV) including video on demand; news agency services; none of the foregoing services being in the nature of market research, marketing or advertising are included in the broad category of, or overlap with, the opponent’s telecommunications. Therefore, they are identical.
Contested services in Class 41
Production of radio and television programmes is identically contained in both lists of services.
The contested production of entertainment, news, education and current affairs programmes is included in the broad category of, or overlaps with, the opponent’s production of radio and television programmes. Therefore, they are identical.
The contested presentation of radio and television programmes, of entertainment, news, education and current affairs programmes overlaps with the opponent’s production of radio and television programmes, as many TV or radio programme hosts both produce and present their programmes. Therefore, they are identical.
There is an overlap also between the contested online electronic publication of magazines, periodicals and books (not downloadable via electronic media) in particular in the field of sports, lifestyle, beauty, travel, real estate, fashion, art, electronics, fine dining, jewelry, culture, leisure, shopping, entertainment, health, finances, society and celebrities and the opponent’s text edition including books and magazines. Usually, online electronic magazines, periodicals and books require text editing before they are published online. Therefore, they are identical.
- 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 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 goods and services, as is the case for the services in Class 38 or some services, such as production and presentation of radio and television programmes, of entertainment, news, education and current affairs programmes, in Class 41.
- The signs
SIC CARAS | |
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common element ‘CARAS’ is not meaningful in certain territories, for example, in those countries where Spanish and Portuguese are not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Spanish-speaking and non-Portuguese-speaking parts of the public, such as the English-speaking part of the public.
According to English dictionaries, the element ‘SIC’ of the earlier mark, when written in brackets after a word or expression, is used ‘to indicate to the reader that although the word looks odd or wrong, you intended to write it like that or the original writer wrote it’ (information extracted on 30/08/2017 from Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/sic). It is not excluded that a part of the relevant public will associate this element with this concept, although it is not written in brackets and does not follow a word, but is the first element in the earlier mark. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.
The coinciding element ‘CARAS’ has no specific meaning; therefore, it is distinctive.
The line that underlines the letter ‘C’ in the contested sign has no specific meaning and has a decorative nature; therefore, it is less important.
The earlier mark has no elements that could be considered clearly more distinctive than other elements.
Visually, the signs coincide in the element ‘CARAS’. However, they differ in the element ‘SIC’ of the earlier mark, as well as in the line that underlines the letter ‘C’ in the contested sign, which was found to be less important.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the syllables ‛CA-RAS’, present identically in both signs. The pronunciation differs in the syllable ‛SIC’ of the earlier sign, which has no counterpart in the contested mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although part of the public in the relevant territory will perceive the meaning of the element ‘SIC’ of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the rest of the public, for which the element ‘SIC’ is meaningless, 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 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 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 are partly similar and partly dissimilar to the opponent’s services, whereas the services are partly identical and partly dissimilar to the opponent’s 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.
From the point of view of the relevant public, the signs are visually and aurally similar, inasmuch as they coincide in the verbal element ‘CARAS’, which is the only verbal element of the contested mark. The signs differ in the additional element ‘SIC’ of the earlier mark and in the line that underlines the letter ‘C’ in the contested sign, which was found to be less important.
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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The fact that the contested sign is entirely included in the earlier mark may lead the public to believe that the goods and services at issue derive, at the very least, from companies that are linked economically, in which case the likelihood of confusion must be held to be established (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 31, 32). Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the English-speaking 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 14 844 617. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods and 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 goods and services cannot be successful.
The opponent has also based its opposition on earlier Portuguese trade mark application No 520 744, ‘SIC CARAS’ (word mark), for Telecommunications in Class 38 and Text edition including books and magazines; providing of training; organisation and production of sporting and cultural activities, including competitions relating to education or entertainment; production of teaching material distributed through courses, lectures and professional seminars; audio and video production and photography; shows (production of); motion picture film production and distribution; production of television and radio programmes and production of phonograph records in Class 41.
Since this mark is identical to the one which has been compared and covers the same scope of services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.
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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Erkki MÜNTER | Francesca DRAGOSTIN | Loreto URRACA LUQUE |
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.