GEO ALTERNATIVA | Decision 2696501

Date Published: Sep 24, 2017

OPPOSITION No B 2 696 501

Gruner + Jahr GmbH & Co KG, Am Baumwall 11, 20459 Hamburg, Germany (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Geo Alternativa S.L., c/ Antonio Maura, nº 18, 28014 Madrid, Spain (applicant), represented by Isern Patentes y Marcas S.L., Paseo de la Castellana, 115 - 1º Dcha., 28046 Madrid, Spain (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 696 501 is partially upheld, namely for the following contested services:

Class 35:         Advertising, in particular television- and internet advertising; compilation, systematization, updating and maintenance of databases; retail services, also via media such as television, radio or internet, relating to goods of classes 9 and/or 16; arranging of contracts on the purchase and sale of products and the rendering of services for others, also via media such as television, radio or internet.

Class 38:         Telematic communication services; Telecommunications, electronic transmission of data, images, and documents via global computer networks, and the electronic storage and recovery of data and documents, providing of user access to global communication networks or databases

Class 42: Providing of consultancy and engineering relating to the telecommunications sector.

2.        European Union trade mark application No 14 839 633 is rejected for all the above 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 14 839 633. The opposition is based on the following earlier rights:

1. international trade mark registration No 863 134 for the figurative mark , designating the European Union;
2. German trade mark registration No 30 2013 062 241 for the figurative mark ;
3. German trade mark registration No 30 622 991 for the word mark ‘GEO’;
4. German trade mark registration No 30 2010 003 407, for the word mark ‘GEO TELEVISION’;
5. German trade mark registration No 30 2009 049 890, for the figurative mark ;
6. German trade mark registration No 30 2012 054 367 for the word mark ‘GEO thema’,;
7.  German trade mark registration No 30 2009 043 177 for the word mark ‘GEO TV’;
8. German trade mark registration No 30 2010 007 026 for the word mark ‘GEO ADVENTURER’.

In relation to the earlier international trade mark registration No 863 134 and German trade mark registration No 30 622 991, the opponent invoked Articles 8(1)(b) and 8(5) EUTMR. In relation to the remaining earlier rights, the opponent only 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 international trade mark registration No 863 164 and German trade mark registration No 30 2013 062 241 for which applicant did not request proof of use.

1. Earlier international trade mark registration No 863 164 and German trade mark registration No 30 2013 062 241

1. The goods and services

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

International trade mark registration No 863 134

Class 9: Magnetic, optical, magneto-optical and electronic sound and image recording carriers and data memories, in particular CDs, CD ROMs, CD-Is, DVDs, floppy disks, video tapes, recording discs and microfilm, for on and off-line use; tape recorders, equipment for receiving, as well as for recording, transmission and reproduction of sound and images; hardware, in particular data processing apparatus, computers and computer peripheral devices; software; data processing programs, computer operating programs.

Class 16: Printed matter; bookbinding material.

Class 35: Services of an electronic commerce platform, namely presentation of goods and services, reception of orders and order processing services, as well as auditing services for electronic ordering systems; publication of publicity texts; compilation and systemization of information into computer databases.

Class 38: Services in the field of telecommunications; transmission of information to third parties on the Internet; dissemination of information on wireless or cable networks; online content provider services, namely providing user access to a global computer network and information about the Internet; broadcasting of radio and (cable) television programmes.

Class 41: Education, providing of training, entertainment, in particular radio and television entertainment; services of a publisher (except printing); publication and issuing of texts in printed and electronic form as an off-line and online publisher, included in this class; sporting and cultural activities.

Class 42: Computer programming; design and development of database programs; exploitation and management of intellectual property.

German trade mark registration No 30 2013 062 241

Class 9: CDs, DVDs and other digital recording media; software (recorded and downloadable), in particular apps and multimedia products; computer games (software, recorded or downloadable); databases (recorded or downloadable), electronic publications (recorded or downloadable), including multimedia publications; podcasts (recorded or downloadable); videos (recorded or downloadable); recorded data files (recorded or downloadable).

Class 16: Printed matter, in particular books, periodicals (magazines) and posters; photographs.

Class 35: Advertising, in particular television- and internet advertising; compilation, systematization, updating and maintenance of databases; retail services, also via media such as television, radio or internet, relating to goods of classes 9 and/or 16; arranging of contracts on the purchase and sale of products and the rendering of services for others, also via media such as television, radio or internet. 

Class 38: Telecommunications, in particular broadcasting of television and radio programs and shows as well as of performances and other shows on the internet and vis other audiovisual media; electronic transmission of data; services of news agencies, namely collection and delivery of news, press releases and other information, also in the form of pictures; providing platforms, portals, blogs, chat rooms, chat lines, communities and forums on the internet and other data networks, providing access to databases; data services of an online provider, namely electronic transmission of information, texts, drawings and images; providing access to software, apps, multimedia products and databases on the internet and other data networks; providing of, as well as telecommunications via, portals on the internet and other data networks. 

Class 41: Education; training; entertainment; sporting and cultural activities; editing and publishing of printed matter (except for advertising purposes); editing and publishing of electronic publications (except for advertising purposes), including multimedia publications; editing and publishing of audio books (except for advertising purposes); editing and publishing of printed and/or electronic works consisting of texts (other than publicity texts) and/or images, also containing films/or music, also in the form of combined works; providing online electronic publications (not downloadable), including multimedia publications; online providing of texts, images, photographs and videos (not downloadable); services of photo agencies, namely photography, photographic reporting and providing (rental) of images and footage; radio, television and internet entertainment; preparation, arrangement, production, compilation and presentation of television and radio shows and programs as well as performances, shows and programs on the internet and other audiovisual media; film (including television film) and audio production; production, compilation, organization, presentation, execution and performance of shows and quiz shows as well as competitions, also via television, radio, Internet and via other audiovisual media; production of video recordings.

Class 42: Design, development, maintenance and updating of computer hardware and software, apps, databases and multimedia products, maintenance of database software; providing temporary use of non-downloadable software, non-downloadable databases and non-downloadable multimedia products; software as a service (SaaS).

The contested goods and services are the following:

Class 4: Natural gas and Electrical energy.

Class 35: Computerised file management; Retailing in shops and via global computer networks of industrial equipment, machinery, tools, utensils, parts and fittings, all of the aforesaid relating to electricity and natural gas; Advertising and marketing services.

Class 36: Financial and monetary affairs relating to electricity and natural gas; Credit and finance relating to electricity and natural gas; Negotiation of energy assets.

Class 37: Building construction, assembly, maintenance and repair of all kinds of electric and gas installations; Commissioning of electric and gas installations.

Class 38: Telematic communication services; Telecommunications, electronic transmission of data, images, and documents via global computer networks, and the electronic storage and recovery of data and documents, providing of user access to global communication networks or databases.

Class 42: Providing of consultancy and engineering relating to the energy, environmental and telecommunications sectors.

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 term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The term ‘namely’ used in the opponent’s list of goods and 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 goods and services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 4

The contested natural gas and electrical energy are dissimilar to all the goods and services of the opponent. They have a different nature and purpose. These goods and services are not in competition nor complementary to each other. They differ also in their distribution channels, sales outlets and they are normally produced or provided by different undertakings.

Contested services in Class 35

The contested computerised file management is included in the broad category of compilation and systemization of information into computer databases. The services are identical.

The contested retailing in shops and via global computer networks of industrial equipment, machinery, tools, utensils, parts and fittings, all of the aforesaid relating to electricity and natural gas are similar to the opponent’s retail services, also via media such as television, radio or internet, relating to goods of classes 9 and/or 16 included in the opponent’s earlier German trade mark registration. Retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use.

The contested advertising and marketing services are closely related to the opponent’s presentation of goods and services. As a consequence, they have the same purpose, target the same end users, are distributed through the same channels and are offered by the same companies that the opponent’s advertising services. Therefore they are considered to be similar.

Contested services in Class 36 and 37

The contested financial and monetary affairs relating to electricity and natural gas; Credit and finance relating to electricity and natural gas; Negotiation of energy assets in Class 36 and building construction, assembly, maintenance and repair of all kinds of electric and gas installations; Commissioning of electric and gas installations in Class 37 are clearly dissimilar to the opponent’s goods and services. They have a totally different purpose and are neither complementary nor in competition. Finally the services concerned would not be provided by the same undertakings, since the fields of activity are very different. In conclusion, the Opposition Division considers that the services are dissimilar.

Contested services in Class 38

The contested telematic communication services; Telecommunications, electronic transmission of data, images, and documents via global computer networks, and the electronic storage and recovery of data and documents, providing of user access to global communication networks or databases are included in the broad category of the opponent’s services in the field of telecommunications. The services are therefore identical.

 

Contested services in Class 42

The contested providing of consultancy and engineering relating to the energy, environmental sectors are specific services, supplied in areas completely unrelated to the opponent’s goods and services. Therefore, they are dissimilar to any of the opponent’s goods and services.

The contested providing of consultancy and engineering relating to the telecommunications sector are similar to the opponent’s services in the field of telecommunications. The contested services play an essential role in the provision of telecommunication services. It is not uncommon for companies to offer under the same brand both telecommunication services, as well as auxiliary services such as consultancy. Moreover, the relevant public coincides and the services may also be complementary.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical or similar are directed at public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the services and the fact that they may be expensive.

2. The signs

International trade mark registration No 863 134 (Earlier Mark 1) German trade mark registration No 30 2013 062 241 (Earlier Mark 2)	GEO ALTERNATIVA
Earlier trade marks	Contested sign

The relevant territory is the European Union for the international registration No 863 134 (hereafter: Earlier Mark 1) and Germany for the German trade mark registration No 30 2013 062 241 (hereafter: Earlier Mark 2).

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 1 is a figurative mark consisting of the word ‘GEO’ written in uppercase grey standard letters. The Earlier Mark 2 is a figurative mark composed of the verbal elements ‘GEO’ and below the word ‘TELEVISION’ in a smaller typeface. Both words are placed against a green rectangular.

The contested sign consists of the word mark ‘GEO ALTERNATIVA’.

The coinciding element of the signs ‘GEO’ will be perceived by a significant part of the public as a prefix “indicating “relating to earth, Earth’. Indeed, this prefix is used in most of the languages of the European Union in compound words, such as ‘geography’, ‘geology’, etc., that relate in some way to the Earth. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The word ‘TELEVISION’ of the Earlier Mark 2 is a basic English word and will be understood by the relevant public in the relevant territory as a very common telecommunication medium. Bearing in mind that part of the relevant are for example telecommunication services it is considered that this element is non-distinctive for at least a part of these services.

The word ‘ALTERNATIVA’ included in the contested sign will be associated by a significant part of the relevant public such as Spanish, Slovenian, Italian, Swedish, Romanian, Croatian and Portuguese, etc. speakers with ‘(of one or more things) available as another possibility or choice’ (see Oxford Dictionary). It is likely that this word may also be understood in other languages of the European Union with the same meaning considering the similar equivalent in their language, (i.e. ‘alternative’ in English, ‘Alternative’ in German). Bearing in mind the relevant services at hand, this element is weak for these services since it give information that the provider of these services provides an alternative to the existing goods and services.

The contested sign has no elements that could be considered clearly more dominant than other elements. The same applies to the Earlier Mark 1 which is composed of one element only. The element ‘GEO’ in the Earlier mark 2 is the dominant element as it is the most eye-catching.

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.

Both, in relation to the Earlier Mark 1 which is slightly stylised and in relation to the Earlier Mark 2 which includes a green background, it also has to be 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).

Visually and aurally, the marks coincide in ‘GEO’. However, they differ in the word ‘ALTERNATIVA’ of the contested mark which was considered to be weak in relation to the relevant services at hand.

The Earlier mark 2 and the contested mark also differ in the additional, non-distinctive element ‘television’ and the green background on which the words are placed.

The Earlier mark 1 and the contested mark are visually and aurally similar to a high degree. On the other hand, the Earlier Mark 2 and the contested mark are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The public in the relevant territory will perceive the concept of ‘geo’ in all of the marks. Moreover, the contested sign also conveys the concept of ‘alternative’ which was found to be weak in relation to the relevant services at hand. The concept of ‘television’ of the Earlier Mark 2 is also considered to be either non-distinctive or weak, as explained above.

Therefore, marks are conceptually 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.

3. Distinctiveness of the earlier marks

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

According to the opponent, the Earlier Mark 1 has been extensively used and enjoys reputation.

In relation to the Earlier Mark 2, the opponent claimed that the distinctiveness must be regarded to be at least normal. It claims also that this mark has reputation due to its long-standing and intensive use on the market for numerous products and that it is in particular well-known for a magazine.

However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 1 and 2 must be seen as normal (despite the presence of (for the part of the services)  non-distinctive element in the Earlier Mark 2 as stated above in section c) of this decision).

4. 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).

The goods and services have been found partially identical, partially similar and partially dissimilar.

The fact that the competing trade marks consist of or start with the word ‘GEO’ as an identifiable element inevitably leads to a high or average degree of visual and aural similarity between them. The marks are also conceptually similar to the extent that both bring to mind the idea of ‘earth’.

The differences between the signs are limited to the stylization of the earlier marks and the additional component ‘ALTERNATIVA’ in the contested sign and ‘TELEVISION’ in the Earlier mark 2. However, the figurative elements of the earlier marks are minimal, as they merely consist of grey capital letters in standard font (Earlier mark 1) or green background (Earlier mark 2). The additional elements ‘ALTERNATIVA’ of the contested mark and ‘TELEVISION’ of the Earlier mark 2, whilst they will not go unnoticed by the consumers, will be given less weight due to the fact that they are either weak (‘alternativa’) or non-distinctive (‘television’) in relation to (some) of the services at issue.

Taking into consideration all the above, the relevant consumers might be led by the visual, aural and partial conceptual coincidences in the element ‘GEO’ to believe that the identical or similar services under the marks come from the same or economically linked undertakings. The public could think that the contested sign is a sub-brand or a brand extension the opponent’s marks.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the public.

It follows from the above that the contested trade mark must be rejected for the 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier international trade mark registration due to its extensive use and reputation as claimed by the opponent and in relation to identical and similar services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The examination of the opposition will continue in relation to the remaining earlier marks.

2. Earlier German trade mark registration No 30 622 991, No 30 2010 003 407, No 30 2012 054 367, No 302 009 049 890, No 30 2009 043 177,  No 30 2010 007 026

1. The goods and services

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

German trade mark registration No 30 622 991

Class 9: Pre-recorded and blank image magnetic, optical, magneto-optical and electronic sound and image recording carriers and data memories, in particular CDs, CD ROMs, CDs, MP3s, DVDs, floppy disks, also for digital data transmission; video tapes, sound recording discs, tape recorders, equipment for receiving, as well as for recording, software; data processing programs, computer operating programs also for digital data transmission; computer programs (downloadable); electronic publications of any kind (downloadable)

Class 16: Printed matter; photographs; bookbinding materials; paper, cardboard and goods of these materials included in this class; instructional and teaching material (except apparatus); stationery; adhesives for paper and stationery or household purposes; artists’ materials, print brushes; typewriters and office requisites (except furniture); plastic packaging material included in this class.

Class 18: Leather and imitations of leather and goods made thereof included in this class; trunks and travelling bags; umbrellas, parasols and walking sticks. 

Class 20: Furniture, mirrors, frames; goods included in this class of wood, cork, reed, cane and wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 25: Clothing, footwear, headgear.

Class 28: Games, playthings; gymnastic and sporting articles included in this class, decorations for Christmas trees.

Class 42: Design and development of software. 

German trade mark registration No 30 2010 003 407

Class 9: Image, sound and data carriers, not included in other classes, in particular CD, CD-ROM, CD-I, DVD; electronic publications (recorded or downloadable).

Class 16: Printed matter.

Class 35: Advertising; advertising agencies; compilation, systematization, updating and administration of information in computer databases.

Class 38: Telecommunications; gathering and supplying of information and press releases; broadcasting of film, television, radio, videotext and teletext programmes or transmissions as well as broadcasting of television and radio programmes and electronic transmission of data on the internet and via other audiovisual media and for receiving on stationary or mobile terminals; telecommunication services, in particular video-on-demand (VOD), broadcasting of interactive television, pay-TV, cable television broadcasting, transmission via satellite and via DSL, [digital subscriber line], digital transmission of news and data; internet transmission services (IPTV); providing of access to electronic programme guides on data networks; subscription television broadcasting services, in particular pay-TV and video-on-demand; providing of access to chat forums, chat rooms and chat lines; providing of access to databases.

Class 41: Entertainment, in particular television entertainment; production of film, television, radio, videotext and teletext programmes and broadcast (other than for advertising purposes); film production; video film production; editorial consulting with regard to television and radio broadcasting services as well as for transmission of performances on the internet and via other audiovisual media, other than for advertising purposes; production of radio and television programmes and development of television formats and television content; publication of material (other than for advertising purposes) in printed and electronic form with editorial contents in the course of online and offline publishing house operations, included in this class; cultural and sporting activities; education; providing of training.

German trade mark registration No 30 2012 054 367

Class 9: Magnetic data carriers, recording discs; CDs, DVDs and other. Digital recording media; software (recorded or downloadable), in particular apps; electronic publications (recorded or downloadable); podcasts (audio files); computer games (recorded or downloadable).

Class 16: Instructional and teaching material (except apparatus); photographs; printed matter.

Class 35: Advertising, in particular the publication of advertisements for third parties.

Class 38: Telecommunications, in particular providing platforms, portals, chatrooms and forums on the Internet; services of news agencies, namely, gathering and delivering news and information as images.

Class 41: Education; training; entertainment, including radio and television entertainment; cultural activities; publishing services (except printing); editing and publishing of printed matter (except for advertising purposes); editing and publishing of electronic publications (except for advertising purposes); publishing and publication of audio books (except for advertising purposes); editing and publishing of texts (other than publicity texts) and/or images and/or movies and/or music works, in particular multimedia works; providing of electronic publications (not downloadable) on the Internet; services of photo agencies, namely photography, photographic reporting and providing (rental) of images and movies.

German trade mark registration No 302 009 049 890

Class 9: Recorded and unrecorded electronic sound/image carriers, data memories, in particular COs, CD-ROMs, CD-is, MP3s, DVDs, floppy discs, video tapes, microfilms each for online and offline operations, all for digital data transmission; apparatus for recording, transmission, reception or reproduction of sound and images, software; data processing programs; computer operating programs; telescopes; microscopes; electronic publications (downloadable).

Class 14: Horological instruments; jewellery.

Class 15: Musical instruments, namely keyboards.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; office requisites (except furniture); instructional and teaching material (except apparatus).

Class 20: Furniture, mirrors, picture frames. 

Class 24: Textiles and textile goods, not included in other classes; bed and table covers.

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings, labs (plaything), microscope sets for children. experimenting sets: gymnastic and sporting articles not included in other classes.

Class 39:Travel arrangement.

Class 41: Education; providing of training; entertainment; services of a publishing house (excluded printing services); publication of material in printed and electronic form for online and offline publishing house operations; publication of audio books; publication of works consisting of texts (other than publicity texts) and/or printed matter with images and/or films, in particular multimedia works, included in this class, each also tor transmission via digital data networks; sporting and cultural activities; electronic publications (not downloadable).

Class 42: Design and development of computer software. 

German trade mark registration No 30 2009 043 177

Class 9: Image, sound and data carriers, not included in other classes, in particular CD, CD-ROM, CD-I, DVD; electronic publications (recorded or downloadable).

Class 16: Printed matter.

Class 38: Telecommunications; broadcasting of film, television, radio, videotext and teletext programmes or transmissions as well as broadcasting of television and radio programmes and electronic transmission of data on the Internet and via other audiovisual media and for receiving on stationary or mobile terminals, telecommunication services, in particular video-on-demand (VOD), interactive television, pay-TV, cable television broadcasting, transmission via satellite, DSL (digital subscriber line), digital transmission of news and data; Internet transmission services (IPTV); providing of access to electronic programme guides on data networks; subscription television broadcasting services, in particular pay-TV and video on demand; providing of access to chat forums, chat rooms and chat lines.

Class 41: Entertainment, in particular television entertainment; production of film, television, radio, videotext and teletext programmes and broadcast (other than for advertising purposes); film production; video film production; editorial consulting with regard to television and radio broadcasting services as well as for transmission of performances on the internet and via other audiovisual media, other than for advertising purposes; production of radio and television programmes and development of television formats and television content; publication of material (other than for advertising purposes) in printed and electronic form with editorial contents in the course of online and offline publishing house operations, included in this class; cultural and sporting activities; education; providing of training.

German trade mark registration No 30 2010 007 026

Class 12: Vehicles for transport on water, in particular ships; accessories for water vehicles (not included in other classes).

Class 16: Printed matter, in particular books, prospectuses, pamphlets, newspapers and magazines; photographs, postcards; calendars, cards, catalogues.

Class 39: Transport; transport of persons and goods, in particular by ships; arranging, booking and organizing of travel.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; film and video production services; production of radio and television programmes; cinema and video presentations.

Class 43: Temporary accommodation, services for providing food and drink, providing temporary accommodation on ships.

The remaining contested goods and services are the following:

Class 4: Natural gas and Electrical energy.

Class 36: Financial and monetary affairs relating to electricity and natural gas; Credit and finance relating to electricity and natural gas; Negotiation of energy assets.

Class 37: Building construction, assembly, maintenance and repair of all kinds of electric and gas installations; Commissioning of electric and gas installations.

Class 42: Providing of consultancy and engineering relating to the energy, environmental sectors.

Contested goods in Classes 4, 36, 37, 42

The remaining contested goods and services in Classes 4, 36, 37 and 42 listed above are dissimilar to all the opponent’s goods and services included in the German trade mark registrations No 30 622 991, No 30 2010 003 407, No 30 2012 054 367, No 302 009 049 890, No 30 2009 043 177 and No 30 2010 007 026. They have a different nature and purpose. These goods and services are not in competition nor complementary to each other. They differ also in their distribution channels, sales outlets and they are normally produced or provided by different undertakings.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use in relation to the earlier German trade mark registrations No 30 622 991, No 30 2010 003 407, No 30 2009 049 890, No 30 2009 043 177, No 30 2010 007 026 filed by the opponent.

For the sake of completeness, it has to be noted that this finding would still be valid even if the earlier German trade mark registration No 30 622 991, for which enhanced distinctiveness and reputation were claimed, were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims that the International registration No 863 134  (Earlier Mark 1 compared above) has a reputation in the European Union.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier mark

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 26/11/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9: Magnetic, optical, magneto-optical and electronic sound and image recording carriers and data memories, in particular CDs, CD ROMs, CD-Is, DVDs, floppy disks, video tapes, recording discs and microfilm, for on and off-line use; tape recorders, equipment for receiving, as well as for recording, transmission and reproduction of sound and images; hardware, in particular data processing apparatus, computers and computer peripheral devices; software; data processing programs, computer operating programs.

Class 16: Printed matter; bookbinding material.

Class 35: Services of an electronic commerce platform, namely presentation of goods and services, reception of orders and order processing services, as well as auditing services for electronic ordering systems; publication of publicity texts; compilation and systemization of information into computer databases.

Class 38: Services in the field of telecommunications; transmission of information to third parties on the Internet; dissemination of information on wireless or cable networks; online content provider services, namely providing user access to a global computer network and information about the Internet; broadcasting of radio and (cable) television programmes.

Class 41: Education, providing of training, entertainment, in particular radio and television entertainment; services of a publisher (except printing); publication and issuing of texts in printed and electronic form as an off-line and online publisher, included in this class; sporting and cultural activities.

Class 42: Computer programming; design and development of database programs; exploitation and management of intellectual property.

        

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 22/11/2016, the opponent submitted the following evidence:

• Exhibit 1: extract from the opponent’s website www.guj.de in which it is stated that GEO is a leading monthly reportage magazine in the German speaking region. It was founded in 1979.  
• Exhibit 2: Copies of pictures of different  ‘GEO’ Magazine covers from different years (i.e. 2006-2014)
• Exhibit 3: Statistics showing the distribution and sales figures of the magazine ‘GEO’ for the years 1979 until 2011 from which it is claimed that the opponent’s sales on average 400.000 copies per year in Germany since the last 30 years. This information is extracted from www.pz.online which is an independent company; 
• Exhibit 4: an extract from the website www.pz-online.de, showing sales numbers for the period from 2012 until 2015 for the opponent’s magazine ‘GEO’ (i.e. EUR 295.507 for the year 2012);
• Exhibit 5: a table which shows sales information for the year 2005 for different magazines. According to the document ‘GEO’ magazine was best sold magazine (i.e. 452.323 EUR in 2005);
• Exhibit 6: an extract from www.pz-online.de showing the sales numbers for GEO magazine (295.507 in 2012);Exhibit 7: an extract from ‘AWA 2009 Allensbacher Marktanalyse Werbeträgeranalyse’ in German, showing information about the public awareness of different GEO magazines (i.e. GEO saison, GEO epoche, GEO special). The AWA is a yearly analysis which is conducted and published by the neutral institution for public opinion polls Allensbach evaluating media and their market. According to the table, 66,2% people above age 14 knew ‘GEO’ brand in 2009.
• Exhibit 8: an extract from ‘AWA 2011 Allensbacher Marktanalyse Werbeträgeranalyse, showing public awareness of the trade mark GEO in relation to magazines in 2011 (i.e. 65,5% of the German public older than 14 years of age);
• Exhibit 9: an extract from AWA 2012 Allensbacher Marktanalyse Werbeträgeranalyse, showing public awareness for 2012 (65,1% of the German public older than 14 years);
• Exhibit 10: an extract from AWA 2013 Allensbacher Marktanalyse Werbeträgeranalyse, showing public awareness for 2013 (64,9% of the German public older than 14 years)
• Exhibit 11: an extract from AWA 2014 Allensbacher Marktanalyse Werbeträgeranalyse, showing public awareness for 2014 (64,4% of the German public older than 14 years)
• Exhibit 12: an extract from AWA 2015 Allensbacher Marktanalyse Werbeträgeranalyse, showing public awareness for 2015 AWA (64,8% of the German public older than 14 years)
• Exhibit 13: an extract from AWA 2016 Allensbacher Marktanalyse Werbeträgeranalyse, showing public awareness for 2016 (63,3% of the German public older than 14 years)
• Exhibit 14: an extract from the opponent’s website www.guj.de, showing covers of GEO magazines published in different EU countries and circulation figures for the magazines.
• Exhibit 15: covers of ‘GEO special’, ‘GEO saison’, ‘GEO wissen’, ‘GEO epoche’ magazines as well as circulation figures from the opponent’s website www.guj.de.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Germany for some of the goods for which the opponent has claimed reputation.

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time at least within Germany. This is shown by the extracts and market analysis, which show evidence of magazine sales over a range of years, a market position since 2005 gained by the magazine and an awareness of the magazine by the general public of approximately two thirds in repeated year surveys. It is clear from the evidence that the earlier trade mark has been subject to longstanding and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources.

The goods which are shown to be reputed are those of a magazine; the evidence mentions also websites and a television program in conjunction with the trade mark, but the evidence regarding the market share or the public recognition of the trade mark with these goods or services is not sufficient. Other goods and services such as those in Classes 9, 35, 38, 41 and 42, are not mentioned at all.

Consequently, on the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in Germany in connection with the following goods:  Class 16: Magazines (which falls under the broad term of printed matter registered by the earlier international trade mark registration). The Opposition Division considers that in view of the size and population of Germany, the opponent’s international registration has gained a reputation in a substantial part of the European Union and is known by a significant part of the public. Therefore, a reputation in Germany is sufficient to deem the earlier international registration reputed in the European Union as a whole (06/10/2009, C 301/07, Pago, EU:C:2009:611, § 29-30). Finally, it is also worth noting that various decisions taken by the Office, at opposition or appeal level, have already established the reputation of the ‘GEO’ mark for these goods.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to magazines, whereas there is no or little reference to the remaining goods and services.

For the sake of completeness, the Opposition Division notes that the opponent also claimed reputation in relation to its German trade mark registration No 30 622 991 for the word ‘GEO’. The Opposition Division considers that the reputation for magazines in Class 16 in Germany in relation to the earlier international trade mark registration No 863 134 must be recognised also in relation to the mentioned earlier trade mark on which the opponent also based his opposition.

3. The ‘link’ between the signs

As seen above, the earlier international mark No 863 134 designating EU is reputed for magazines in Class 16 and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

In the present case, the goods for which the reputation is proven are magazines. The remaining contested goods and services on the other hand are Natural gas and Electrical energy in Class 4, Financial and monetary affairs relating to electricity and natural gas; Credit and finance relating to electricity and natural gas; Negotiation of energy assets in Class 36, Building construction, assembly, maintenance and repair of all kinds of electric and gas installations; Commissioning of electric and gas installations in class 37 and Providing of consultancy and engineering relating to the energy, environmental sectors in Class 42.

The contested goods and services are dissimilar to the reputed goods magazines. The reputed goods are a printed item intended for popular entertainment, education or information, and in which in each monthly issue various reports are presented to the public. These goods have no real connections with the contested goods and services. It is highly unlikely that someone who would be shopping for magazines in a kiosk or newsagents would also be able, or even expect, to purchase the contested specific goods and services at the same time. The sectors of the remaining goods and services are very specific fields in which particular academic and technical knowledge is paramount and this is clearly different to the opponent’s area of expertise in the field of magazines. Therefore, it is very unlikely that they would be confronted with the two trade marks at the same time.

In addition, it must be noted that there is no overlap between the relevant sections of the public. Indeed, the magazines and the majority of the remaining goods and services in classes 35 and 36 target a different type of public. While the earlier marks were found to have reputation only for magazines, these contested goods and services are aimed mainly to a specific and professional public who pays a high degree of attention when making commercial decisions concerning these goods and services and as such the differences between the signs will bel clearly perceived. Furthermore, famous magazines usually do not operate and carry on brand stretching in the field of these goods and services.

Therefore, given that the goods and services have no points of contact whatsoever and the large gap between the sectors into which the goods and services fall, make it unlikely that the contested trade mark ‘GEO ALTERNATIVA’ would remind the relevant consumer of the earlier marks ‘GEO’, no association will be made between the signs. The consumers are reasonably observant and circumspect. Thus, particularly given that the sectors as well as the technical know-how are different, the consumers will not be confused, even despite the coincidence in the term ‘GEO’.

For the sake of completeness, it must be added that in its observations the opponent has not put forward any coherent line of arguments in order to illustrate how the relevant public would make a mental connection between the signs in dispute, in relation to the abovementioned goods and services.

Furthermore, the opponent did not provide any relevant facts, arguments or evidence which could support the conclusion that the use of the contested trade mark in relation to the goods and services Natural gas and Electrical energy in Class 4, Financial and monetary affairs relating to electricity and natural gas; Credit and finance relating to electricity and natural gas; Negotiation of energy assets in Class 36, Building construction, assembly, maintenance and repair of all kinds of electric and gas installations; Commissioning of electric and gas installations in class 37 and Providing of consultancy and engineering relating to the energy, environmental sectors in Class 42 would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

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

Lars HELBERT

Janja FELC

Francesca CANGERI SERRANO

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.