FUNK-E | Decision 2690603
Date Published: Sep 28, 2017
OPPOSITION No B 2 690 603
Funke Mediengruppe GmbH & Co. KGaA, Friedrichstraße 34-38, 45128 Essen, Germany (opponent), represented by Nesselhauf Rechtsanwälte, Alsterchaussee 40, 20149 Hamburg, Germany (professional representative)
a g a i n s t
Empire of Awesome B.V., Aert van Nesstraat 45, 3012 CA Rotterdam, The Netherlands (applicant), represented by Ploum Lodder Princen, Blaak 28, 3011TA Rotterdam, The Netherlands (professional representative)
On 05/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 690 603 is upheld for all the contested services.
2. European Union trade mark application No 15 069 107 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 069 107. The opposition is based on, inter alia, European Union trade mark registration No 12 254 728. 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 12 254 728.
- The services
The opposition is based on, inter alia, the following services:
Class 35: Advertising; Business management; Business administration; Office functions; Advertisement placement and management; Dissemination of advertising matter; Public relations; Opinion polling; Marketing research, market analysis; Marketing; Compilation, systemisation and updating of data in computer databases, in particular educational and entertainment news content, news clipping services; Publication of printed matter for advertising purposes.
Class 41: Services of a publishing firm, except printing; Entertainment; Education; Providing of training; Sporting and cultural events and activities; Planning of sporting and cultural events; Providing electronic publications (other than for advertising purposes), non-downloadable; Publication of printed matter, in particular books, newspapers and magazines, including in electronic form and on the Internet (non-downloadable and other than for advertising purposes), publication of data, information, images, texts, news, in particular educational and entertainment news content, and of news programmes for transmission via the Internet; Radio or television entertainment; Production of radio and television programmes; Photography.
Class 42: Computer programming; Design and Animation and special-effects design for others website design services and Home page services; Providing of server space (server hosting); Providing search engines for the internet.
The contested services are the following:
Class 35: Advertising and marketing; Services provided by an advertising agency; Production and editing of digital films, videos and animations for advertising purposes; Production and editing of digital explanatory animations for advertising purposes; Advertisement design; Writing of texts for advertising purposes; Consultancy in the field of advertising, including in relation to the development of house styles; Mediation for publicity; Television advertising, radio advertising; Publication of printed advertising matter; Arranging and conducting promotional, advertising and publicity campaigns; Developing, implementing and drawing up strategies for business communication and advertising concepts; Writing and laying out of texts for advertising purposes; Design of logos for advertising purposes; Marketing and marketing consultancy; Consultation in the field of corporate communications; Online marketing; Business consultancy and support in the development, design and marketing of house styles.
Class 41: Entertainment; Production and editing of animated cartoons; Production and editing of explanatory animations; Issue of publications; Publication of content on an online interactive platform; Arranging educational and cultural events and debates; Providing workshops and training.
Class 42: Design and animation expertise; Animation design for others; Design of explanatory animations for others.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The terms ‘in particular’ and ‘including’, used in the opponent’s and the applicant’s lists of services, indicate that the specific services listed after these terms are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce non-exhaustive lists of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 35
The applicant indicates in its observations that the opponent is a German company which describes itself as Germany’s prime media house focusing on regional media, women’s magazines and TV guides and therefore argues that, inter alia, the opponent’s advertising consists of publishing services and that some of the applicant’s services are different from the publishing of magazines and TV guides. However, these arguments are irrelevant because the task of the Opposition Division is to compare the services as registered and as applied for and not as actually used, unless proof of use of the earlier mark has been filed for particular services, which is not the case here.
In this respect, advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.
In view of this, the contested advertising and marketing; services provided by an advertising agency; production and editing of digital films, videos and animations for advertising purposes; production and editing of digital explanatory animations for advertising purposes; advertisement design; writing of texts for advertising purposes; consultancy in the field of advertising, including in relation to the development of house styles; mediation for publicity; television advertising, radio advertising; publication of printed advertising matter; arranging and conducting promotional, advertising and publicity campaigns; developing, implementing and drawing up strategies for advertising concepts; writing and laying out of texts for advertising purposes; design of logos for advertising purposes; marketing and marketing consultancy and online marketing are identical to, included in or overlap with the opponent’s broad category of advertising as registered. Therefore, they are considered identical.
Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning.
Examples of business management activities are business research and appraisals, cost-price analysis and organisational consultancy, since they are all intended to help in determining the strategy of a commercial undertaking. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the management of a business, such as how to efficiently improve productivity, increase market share, deal with competitors, develop new products, communicate with the public, do marketing, research consumer trends, launch new products, create a corporate identity, etc.
The contested developing, implementing and drawing up strategies for business communication concepts; consultation in the field of corporate communications and business consultancy and support in the development, design and marketing of house styles are thus included in the opponent’s broad category of business management. Therefore, they are considered identical.
Contested services in Class 41
Entertainment is identically contained in both lists of services.
The opponent’s services of a publishing firm, except printing overlap with the contested issue of publications and include the contested publication of content on an online interactive platform. Therefore, they are identical.
The contested arranging educational events and debates; providing workshops and training are included in the opponent’s broad category of education. Therefore, they are considered identical.
The contested arranging cultural events and debates are included in the opponent’s cultural events and activities. Therefore, they are considered identical.
The contested production and editing of animated cartoons and production and editing of explanatory animations overlap with the opponent’s production of television programmes. Therefore, they are identical.
The applicant argues that the contested production and editing of explanatory animations are dissimilar to, inter alia, the opponent’s production of television programmes because the applicant’s services are to explain complex processes or complex information whereas the opponent’s services are meant to entertain the consumer. However, the opponent’s production of television programmes is not limited to the production of programmes for entertainment purposes. Therefore, and since there is an overlap between these services as already stated above, the applicant’s arguments that they are dissimilar cannot succeed.
Contested services in Class 42
The contested design and animation expertise; animation design for others and design of explanatory animations for others overlap with the opponent’s design and animation and special-effects design for others website design services and home page services. Therefore, they are identical.
As regards the applicant’s arguments concerning the dissimilarity between the services in Class 42, suffice it to say that the applicant did not provide any arguments in relation to the opponent’s services used in the comparison above but limited its assessment to all the other services covered by the earlier mark in this class. As a result, the applicant’s arguments in this respect are irrelevant.
- 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, some of the services found to be identical are directed both at the general public and at a professional public (such as providing training in Class 41) but most of the services are directed exclusively at business customers with specific professional knowledge or expertise (such as advertising in Class 35 and animation design for others in Class 42). Some of the services are also purchased on an infrequent basis and/or may have important financial consequences for the consumers and will thus be subject to a relatively careful purchasing decision. Therefore, the degree of attention of the relevant public will vary from average to high.
- The signs
Funke | |
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 the word mark ‘Funke’. In the case of word marks, it is the word as such that is protected and not its written form.
The applicant argues that the word ‘Funke’ is a German word which means ‘spark’. In this respect, ‘Funke’ does not only mean ‘spark’ in German but is also a relatively common surname in Germany. Therefore, at least part of the relevant public in Germany will perceive the earlier mark as referring to a surname and not as meaning ‘spark’. Either way, it has no particular meaning in relation to the relevant services and is, therefore, distinctive.
The contested sign is a figurative mark consisting of the verbal element ‘FUNK’ depicted in orange uppercase letters in a slightly stylised typeface followed by a purple interpoint and a purple lowercase ‘e’, albeit in the same size as the verbal element ‘FUNK’. The contested sign has no element that could be considered clearly more dominant than other elements.
The applicant argues that the contested sign, ‘FUNK·e’, is English and means ‘funky’. In this respect, the English-speaking public and part of the non-English-speaking relevant public in the European Union may perceive the verbal element ‘FUNK’ in the contested sign as referring to a state of fear or, in particular, to a style of dance music, especially in relation to some of the contested services, such as entertainment in relation to which it would thus be perceived as only weakly distinctive, if at all.
However, ‘Funk’ is also a surname in Germany and a variation of the surname ‘Funke’ and also means ‘radio’ in German. Therefore, although it cannot be excluded that part of the relevant public in Germany may perceive ‘FUNK’ as referring to a style of dance music, at least in relation to some of the contested services, part of the relevant public will perceive it as a reference to the surname ‘Funk’ or as meaning ‘radio’. For the part of the German public that perceives the word ‘FUNK’ as a reference to a surname, it will be perceived as distinctive in relation to all the services in question.
The interpoint contained in the contested sign is a basic punctuation mark and typographical symbol and is therefore devoid of any distinctive character as such.
The ‘e’ letter contained at the end of the contested sign has no particular meaning in relation to the relevant services and is, therefore, distinctive as such. However, it is common practice for companies to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image. Therefore, taking into account that both ‘Funk’ and ‘Funke’ are variations of the same family of surnames in Germany and that the additional interpoint in the contested sign is a basic, non-distinctive punctuation mark, part of the public in Germany may perceive the contested sign as consisting of a fashionable stylisation of the surname ‘Funke’ and thus not perceive the letter ‘e’ as having an independent distinctive role in the contested sign.
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.
Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in Germany who may perceive the signs as surnames as explained above.
Visually, the signs coincide in the same letters ‘F-U-N-K-E’ in the same order. However, they differ in the slight stylisation of the contested sign, the colour combination used and the interpoint featured in the contested sign between the letters ‘K’ and ‘E’, which is, however, non-distinctive.
The applicant contends that inserting a hyphen (or interpoint) can constitute an important difference when it concerns a very short sign given that, in short signs, such differences are more easily perceived. However, in the present case, the contested sign consists of five letters and is therefore, although relatively short, not a very short sign. In addition, as already mentioned above, the interpoint will be perceived as non-distinctive within the contested sign and will therefore have a very limited impact, if at all, on the consumers in the visual impression produced by the sign.
The applicant also claims that the consumers’ focus will be on the orange/purple contrast between the verbal elements ‘FUNK’ and ‘E’ of the contested sign and that they will therefore see two words.
Nevertheless both signs still consist of the same letters ‘F-U-N-K-E’ and consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, even if the last letter in the contested sign is depicted in a different colour, the signs are visually highly similar.
Aurally, depending on whether the contested sign is perceived as consisting of a fashionable stylisation of the surname ‘Funke’ or the surname ‘Funk’ and a separate letter ‘e’, the signs are either identical or otherwise quasi-identical since the only difference between the signs in the latter scenario will be a slight pause between the word ‘FUNK’ and the last letter ‘e’ in the contested sign.
The applicant contends that the contested sign will be pronounced as ‘funky’ in the English-speaking countries of the Union and in Member States where the knowledge of English is regarded as a well-known fact. However, whether or not this is the case is irrelevant as the contested sign will not be pronounced in this way by the public in Germany.
Conceptually, the signs are either identical if perceived as referring to the same surname ‘Funke’ or otherwise highly similar if the contested sign is perceived as referring to the variation of the same family of surnames, ‘Funk’.
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 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
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).
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/services covered are from the same or economically linked undertakings.
In the present case, the contested services are identical to the opponent’s services and the degree of attention of the relevant public will vary from average to high.
The earlier mark has a normal degree of distinctiveness and the signs are visually highly similar and aurally and conceptually either identical/quasi-identical or respectively highly similar, depending on whether the contested sign will be perceived as consisting of the same surname or otherwise as a variation of the same family of surnames.
Therefore, the relevant public, even consumers that will display a high degree of attention, is likely to perceive the contested sign as a fashionable variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49) and is thus likely to believe that the identical services originate from the same or economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public in Germany that will perceive the signs as consisting of the same surname or otherwise as variations of the same family of surnames. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 254 728. It follows that the contested trade mark must be rejected for all the contested services.
As the earlier European Union trade mark registration No 12 254 728 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Milda CERNIAUSKAITE | Sam GYLLING | Oana-Alina STURZA |
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.