culture | Decision 2499328 - Etat français, représenté par le Ministère de la culture et de la communication v. Derek Karikari Owusu
Date Published: Sep 28, 2017
OPPOSITION No B 2 499 328
Etat français, represented by Ministère de la culture et de la communication, 182 rue Saint-Honoré, 75001 Paris, France (opponent), represented by Danielle Bourlange, Agence du Patrimoine Immatériel de l'Etat (Etat français), Atrium- 5, place des Vins-de-France, 75012 Paris, France (employee representative)
a g a i n s t
Derek Karikari Owusu, Viktorkaplanstrasse 13/39/4, 1220 Wien, Austria (applicant).
On 29/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 499 328 is upheld for all the contested services, namely:
Class 41: Publishing of web magazines; publication of magazines; publication of books, magazines, almanacs and journals; organisation of entertainment and cultural events; entertainment, sporting and cultural activities; sporting and cultural activities; sporting and cultural activities; sporting and cultural activities; sporting and cultural activities; arranging of competitions for cultural purposes; photo editing; on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; cultural activities; providing cultural activities; arranging of conferences relating to cultural activities; arranging of seminars relating to cultural activities; special event planning consultation; organisation of ceremonial events; performances (presentation of live -); live band performances; production of live performances; all of the aforesaid services solely in connection with clothing/fashion, all the aforesaid services other than for radio stations.
2. European Union trade mark application No 13 570 601 is rejected for all the contested services. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 350.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 570 601, namely against all of the services in Class 41. The opposition is based on French trade mark registration No 3 933 930. 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 services
The services on which the opposition is based are, inter alia, the following:
Class 35: Organization of events.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; entertainment or education information; leisure services; publication of books; lending libraries; film production on video and electromagnetic tapes; rental of motion pictures; rental of sound recordings; videotape editing; organization of competitions [education or entertainment]; arranging and conducting of colloquiums, symposiums, conferences or congress; organization of exhibitions for cultural or educational purposes; on-line games services; gambling; publication of electronic books and journals on-line; electronic desktop publishing; digital imaging services; cultural and digital information; providing museum facilities [presentation, exhibitions].
The contested services are the following:
Class 41: Publishing of web magazines; publication of magazines; publication of books, magazines, almanacs and journals; organisation of entertainment and cultural events; entertainment, sporting and cultural activities; sporting and cultural activities; sporting and cultural activities; sporting and cultural activities; sporting and cultural activities; arranging of competitions for cultural purposes; photo editing; on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; cultural activities; providing cultural activities; arranging of conferences relating to cultural activities; arranging of seminars relating to cultural activities; special event planning consultation; organisation of ceremonial events; performances (presentation of live -); live band performances; production of live performances; all of the aforesaid services solely in connection with clothing/fashion, all the aforesaid services other than for radio stations.
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 41
The services publication of books; sporting and cultural activities; sporting and cultural activities; sporting and cultural activities; sporting and cultural activities; sporting and cultural activities; sporting and cultural activities; cultural activities; providing cultural activities; entertainment, all of the aforesaid services solely in connection with clothing/fashion, all the aforesaid services other than for radio stations are included in the corresponding terms without limitation contained in the earlier list of services. Therefore, they are considered identical.
An almanac is a handbook, typically published annually, containing information of general interest or on a sport or pastime. A journal is a newspaper or magazine that deals with a particular subject or a professional activity; a periodical publication containing articles and illustrations, often a particular subject or aimed at a particular readership (see Oxford Dictionaries). Publication covers all kind of publications, this means online and offline. Therefore, the contested services publishing of web magazines all of the aforesaid services solely in connection with clothing/fashion, all the aforesaid services other than for radio stations overlap with publication of journals on-line since a journal can be published as well in the format of a magazine. They are considered identical.
The contested services publication of magazines; publication of magazines, almanacs and journals;all of the aforesaid services solely in connection with clothing/fashion, all the aforesaid services other than for radio stations overlap with the opponent’s services of publication of books; publication of electronic books and journals on-line. There are considered identical.
The contested service photo editing; all of the aforesaid services solely in connection with clothing/fashion, all the aforesaid services other than for radio stations is included in digital imaging services as registered for the earlier mark. Therefore, the services are identical.
The contested service on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; all of the aforesaid services solely in connection with clothing/fashion, all the aforesaid services other than for radio stations are contained in the broader category of the services of the earlier mark lending libraries. Therefore, the services are identical.
The contested services performances (presentation of live -); live band performances; all of the aforesaid services solely in connection with clothing/fashion, all the aforesaid services other than for radio stations are included in the broader term entertainment and therefore identical.
The contested service production of live performances; all of the aforesaid services solely in connection with clothing/fashion, all the aforesaid services other than for radio has the same purpose as entertainment. They can coincide in producer and end user. Therefore, the services are similar.
The term ‘organizing’ means arranging something systematically (Oxford Dictionaries). An event is a thing that happens or takes place, especially one of importance (Oxford Dictionaries). Considering this, the contested services organisation of entertainment and cultural events; arranging of competitions for cultural purposes, arranging of conferences relating to cultural activities; arranging of seminars relating to cultural activities; special event planning consultation; organisation of ceremonial events; all of the aforesaid services solely in connection with clothing/fashion, all the aforesaid services other than for radio stations are considered identical to the services of arranging and conducting of colloquiums, symposiums, conferences or congress; organization of exhibitions for cultural or educational purposes of the earlier trade mark as they can overlap or be included in these terms.
- 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, similar and similar to a high degree are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention will be considered as between average and high depending on the importance of the activities and the events, their budget and the coverage.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is France.
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).
Both signs depict the word ‘CULTURE’ in a stylised manner. The earlier trade mark is depicted on a grey rectangular background with the additional element ‘.fr’.
The element ‘.fr’ will be recognized by the relevant public as an indication for the generic top level domain for France. The relevant public will associate this top level domain with a French website offering the services in particular in France. As it therefore refers to the origin of the services, this element will be considered as non-distinctive (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 63).
The rectangular background of the earlier trade mark will only be perceived as a decoration and therefore as non-distinctive as well.
The element ‘CULTURE’ contained in both trade marks will be perceived with the meaning ‘ensemble des connaissances qui enrichissent l'esprit, affinent le goût et l'esprit critique.’ http://www.larousse.fr/dictionnaires/francais/culture/21072#8syvlBe52T03R8wj.99
[Translation into English: Knowledge that enriches the mind, refines taste and critical thinking].
For the French public, this element is even considering the stylisation and the graphical representation only of very limited distinctiveness for the services that have been found similar, highly similar or identical.
Visually, both signs coincide in the element ‘CULTURE’ that has been found to be of only a very limited distinctiveness for the relevant services. The specific graphical representation of the signs is enhancing the similarity of the signs as both signs are using a font in which parts of the letters are shading off or disappearing. The further additional elements, namely the top level domain ‘.fr’ and the background of the earlier mark, have been found non-distinctive.
Therefore, the signs are similar to at least a low degree.
Aurally, the pronunciation of the signs coincides in the element ‘CULTURE’, present identically in both signs.
Although the signs differ in pronunciation of the element fr. of the earlier mark, this element is non-distinctive and, even if pronounced, has barely any impact on the similarity of the signs.
Therefore, the signs have an average degree of similarity.
Conceptually, as explained before, the earlier trade mark will be perceived with the meaning ‘CULTURE’ where the services are provided using a French website and the contested sign will be perceived with the meaning of ‘CULTURE’. The trade marks coincide in the concept ‘CULTURE’ even if it is of very limited distinctiveness. The element namely‘.fr’ is non-distinctive and will not significantly influence the common concept of the word ‘culture’.
Therefore, conceptually the signs are similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the services in question.
- Global assessment, other arguments and conclusion
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).
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 services have been found identical, similar or highly similar and the signs at least visually lowly similar, phonetically and conceptually similar to an average degree. The attention of the public is varying between average and high.
In general, a coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar. There may also be likelihood of confusion if the overall impression of the marks is highly similar or identical.
There is a likelihood of confusion for the identical and highly similar services because the differences between the signs are only confined to non-distinctive elements and aspects. The similarities on account of the verbal element ‘culture’ with a similar graphical representation are not counteracted by the additional elements of the earlier mark, since they are non-distinctive.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. 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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Especially the similarity in the stylization underlines this finding. The relevant public will perceive due to the similar graphic details the contested mark as a newer dark on white version of the earlier white on dark version. This will be underlined by the similar font (half erased) and the additional top level domain.
Considering all the above, there is a likelihood of confusion on the part of the public, as well for the professional public and for the public with a higher degree of attention.
Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 933 930. It follows that the contested trade mark must be rejected for all the contested 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.
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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Renata COTTRELL | Claudia MARTINI | Denitza STOYANOVA-VALCHANOVA |
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.