MINUS ONE | Decision 2716044
Date Published: Sep 25, 2017
OPPOSITION No B 2 716 044
Minus Inc., 2010-1055 West Georgia Street, P.O. Box 11140, Vancouver, British Columbia V6E 3P3, Canada (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative)
a g a i n s t
Minus One Ltd Cyprus., 3 Makarios III Ave., Loukaides Court, 4th Floor, 4000 Mesa Geitonia Limassol, Cyprus (applicant), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595DA Den Haag, The Netherlands (professional representative).
On 12/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 716 044 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 004 484 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 004 484. The opposition is based on European Union trade mark registration No 12 449 823. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Abacuses; Accounting machines; Accumulators, electric; Acid hydrometers; Acidimeters for batteries; Acoustic conduits; Acoustic couplers; Actinometers; Adding machines; Aerials; Aerometers; Agendas (Electronic -); Air analysis apparatus; Alarm bells, electric; Alarms; Alcoholmeters; Alidades; Altimeters; Ammeters; Amplifiers; Amplifying tubes; Anemometers; Animated cartoons; Anode batteries; Anodes; Answering machines; Anti-glare glasses; Anti-glare visors; Anti-interference devices [electricity]; Anti-theft warning apparatus; Anticathodes; Apertometers [optics]; Armatures [electricity]; Asbestos clothing for protection against fire; Asbestos gloves for protection against accidents; Asbestos screens for firemen; Astronomy (Apparatus and instruments for -); Audiovisual teaching apparatus; Automated teller machines (ATM); Azimuth instruments; Balances [steelyards]; Balancing apparatus; Bar code readers; Barometers; Batteries, electric; Batteries, electric, for vehicles; Batteries for lighting; Battery boxes; Battery chargers; Battery jars; Beacons, luminous; Bells [warning devices]; Betatrons; Binoculars; Blinkers [signalling lights]; Blueprint apparatus; Boiler control instruments; Branch boxes [electricity]; Breathing apparatus, except for artificial respiration; Breathing apparatus for underwater swimming; Buzzers; Cabinets for loudspeakers; Cables, electric; Calculating disks; Calculating machines; Calibrating rings; Calipers; Camcorders; Cameras [photography]; Capacitors; Capillary tubes; Carpenters’ rules; Carriers for dark plates [photography]; Cases especially made for photographic apparatus and instruments; Cases fitted with dissecting instruments [microscopy]; Cash registers; Cassette players; Cathodes; Cathodic anti-corrosion apparatus; Cell phone straps; Centering apparatus for photographic transparencies; Chargers for electric batteries; Chemistry apparatus and instruments; Chips [integrated circuits]; Choking coils [impedance]; Chromatography apparatus for laboratory use; Chronographs [time recording apparatus]; Cinematographic cameras; Cinematographic film, exposed; Circuit breakers; Circuit closers; Cleaning apparatus for phonograph records; Clinometers; Clothing especially made for laboratories; Clothing for protection against accidents, irradiation and fire; Clothing for protection against fire; Coaxial cables; Coils, electric; Coin-operated apparatus (Mechanisms for -); Coin-operated mechanisms for television sets; Collectors, electric; Commutation (Electric apparatus for -); Commutators; Compact disc players; Compact discs [audio-video]; Compact discs [read-only memory]; Comparators; Compasses (Directional -); Compasses [measuring instruments]; Computer game programs; Computer keyboards; Computer memory devices; Computer operating programs, recorded; Computer peripheral devices; Computer programmes [programs], recorded; Computer programs [downloadable software]; Computer software, recorded; Computers; Conductors, electric; Connections for electric lines; Connectors [electricity]; Contact lenses; Contacts, electric; Containers for contact lenses; Containers for microscope slides; Control panels [electricity]; Converters, electric; Copper wire, insulated; Correcting lenses [optics]; Cosmographic instruments; Counter-operated apparatus (Mechanisms for -); Couplers [data processing equipment]; Couplings, electric; Covers for electric outlets; Crash test dummies; Cupels [laboratory]; Current rectifiers; Cyclotrons; Darkroom lamps [photography]; Darkrooms [photography]; Data processing apparatus; Decompression chambers; Demagnetizing apparatus for magnetic tapes; Densimeters; Densitometers; Detectors; Diagnostic apparatus, not for medical purposes; Diaphragms [acoustics]; Diaphragms for scientific apparatus; Diaphragms [photography]; Dictating machines; Diffraction apparatus [microscopy]; Discharge tubes, electric, other than for lighting; Disk drives for computers; Disks, magnetic; Distance measuring apparatus; Distance recording apparatus; Distillation apparatus for scientific purposes; Distribution boards [electricity]; Distribution boxes [electricity]; Distribution consoles [electricity]; Divers’ masks; Diving suits; DNA chips; Dog whistles; Dosimeters; Downloadable image files; Downloadable music files; Downloadable ring tones for mobile phones; Dressmakers’ measures; Drying apparatus for photographic prints; Drying racks [photography]; Ducts [electricity]; DVD players; Dynamometers; Ear plugs for divers; Editing appliances for cinematographic films; Egg-candlers; Electric door bells; Electric installations for the remote control of industrial operations; Electric loss indicators; Electricity conduits; Electricity mains (Materials for -) [wires, cables]; Electrified fences; Electrified rails for mounting spot lights; Electro-dynamic apparatus for the remote control of railway points; Electro-dynamic apparatus for the remote control of signals; Electrolysers; Electromagnetic coils; Electronic notice boards; Electronic pens [visual display units]; Electronic pocket translators; Electronic publications, downloadable; Electronic tags for goods; Encoded identification bracelets, magnetic; Encoded magnetic cards; Enlarging apparatus [photography]; Epidiascopes; Ergometers; Exposure meters [light meters]; Extinguishers; Eyeglass cases; Eyeglass chains; Eyeglass cords; Eyeglass frames; Eyepieces; Eyepieces (Instruments containing -); Facsimile machines; False coin detectors; Fermentation (Apparatus for -) [laboratory apparatus]; Fibre [fiber (Am.)] optic cables; Film cutting apparatus; Films, exposed; Filters for respiratory masks; Filters for ultraviolet rays, for photography; Filters [photography]; Fire alarms; Fire beaters; Fire blankets; Fire boats; Fire engines; Fire escapes; Fire hose; Fire hose nozzles; Flash-bulbs [photography]; Flashlights [photography]; Floppy disks; Fluorescent screens; Fog signals, non-explosive; Food analysis apparatus; Frames for photographic transparencies; Franking (Apparatus to check -); Frequency meters; Furniture especially made for laboratories; Fuse wire; Fuses; Galena crystals [detectors]; Galvanic batteries; Galvanic cells; Galvanometers; Garments for protection against fire; Gas testing instruments; Gasometers [measuring instruments]; Gauges; Glass covered with an electrical conductor; Glazing apparatus for photographic prints; Global Positioning System [GPS] apparatus; Gloves for divers; Gloves for protection against accidents; Gloves for protection against X-rays for industrial purposes; Goggles for sports; Grids for batteries; Hands free kits for phones; Head cleaning tapes [recording]; Headphones; Heat regulating apparatus; Heliographic apparatus; Hemline markers; High-frequency apparatus; Holders for electric coils; Holograms; Horns for loudspeakers; Hourglasses; Hydrometers; Hygrometers; Identification sheaths for electric wires; Identification threads for electric wires; Identity cards, magnetic; Ignition (Electric apparatus for remote -); Incubators for bacteria culture; Inductors [electricity]; Integrated circuit cards [smart cards]; Integrated circuits; Intercommunication apparatus; Interfaces for computers; Inverters [electricity]; Invoicing machines; Ionization apparatus not for the treatment of air or water; Jigs [measuring instruments]; Juke boxes for computers; Juke boxes, musical; Junction boxes [electricity]; Junction sleeves for electric cables; Knee-pads for workers; Laboratory centrifuges; Laboratory trays; Lactodensimeters; Lactometers; Laptop computers; Lasers, not for medical purposes; Leather (Appliances for measuring the thickness of -); Lens hoods; Lenses for astrophotography; Letter scales; Levelling instruments; Levels [instruments for determining the horizontal]; Life belts; Life-buoys; Life jackets; Life nets; Life saving apparatus and equipment; Lifesaving rafts; Light dimmers [regulators], electric; Light-emitting diodes [LED]; Light-emitting electronic pointers; Lighting ballasts; Lightning arresters; Limiters [electricity]; Locks, electric; Logs [measuring instruments]; Loudspeakers; Magic lanterns; Magnetic data media; Magnetic encoders; Magnetic tape units for computers; Magnetic tapes; Magnetic wires; Magnets; Magnets (Decorative -); Magnifying glasses [optics]; Manometers; Marine compasses; Marine depth finders; Marking buoys; Marking gauges [joinery]; Masts for wireless aerials; Material testing instruments and machines; Mathematical instruments; Measures; Measuring apparatus; Measuring devices, electric; Measuring glassware; Measuring instruments; Measuring spoons; Mechanical signs; Megaphones; Mercury levels; Metal detectors for industrial or military purposes; Meteorological balloons; Meteorological instruments; Meters; Metronomes; Micrometer screws for optical instruments; Micrometers; Microphones; Microprocessors; Microscopes; Microtomes; Milage recorders for vehicles; Mirrors for inspecting work; Mirrors [optics]; Modems; Money counting and sorting machines; Monitoring apparatus, electric; Monitors [computer hardware]; Monitors [computer programs]; Motor fire engines; Mouse [data processing equipment]; Mouse pads; Nautical apparatus and instruments; Naval signalling apparatus; Navigation apparatus for vehicles [on-board computers]; Navigational instruments; Neon signs; Nets for protection against accidents; Nose clips for divers and swimmers; Notebook computers; Objectives [lenses] [optics]; Observation instruments; Octants; Ohmmeters; Optical apparatus and instruments; Optical character readers; Optical condensers; Optical data media; Optical discs; Optical fibers [fibres] [light conducting filaments]; Optical glass; Optical goods; Optical lamps; Optical lenses; Oscillographs; Ovens for laboratory use; Oxygen transvasing apparatus; Ozonisers [ozonators]; Parking meters; Particle accelerators; Pedometers; Peepholes [magnifying lenses] for doors; Periscopes; Personal stereos; Petrol gauges; Phonograph records; Photocopiers [photographic, electrostatic, thermic]; Photometers; Phototelegraphy apparatus; Photovoltaic cells; Physics (Apparatus and instruments for -); Pince-nez; Pipettes; Plane tables [surveying instruments]; Planimeters; Plates for batteries; Plotters; Plumb bobs; Plumb lines; Pocket calculators; Polarimeters; Portable media players; Portable telephones; Precision balances; Precision measuring apparatus; Pressure indicator plugs for valves; Pressure indicators; Pressure measuring apparatus; Printed circuit boards; Printed circuits; Printers for use with computers; Prisms [optics]; Probes for scientific purposes; Processors [central processing units]; Projection apparatus; Projection screens; Protection devices against Xrays, not for medical purposes; Protection devices for personal use against accidents; Protective helmets; Protective helmets for sports; Protective masks; Protective suits for aviators; Protractors [measuring instruments]; Punched card machines for offices; Push buttons for bells; Pyrometers; Quantity indicators; Racks (Photographic -); Radar apparatus; Radio pagers; Radiological apparatus for industrial purposes; Radiology screens for industrial purposes; Radios; Radiotelegraphy sets; Radiotelephony sets; Railway traffic safety appliances; Readers [data processing equipment]; Receivers (Audio-- and video--); Record player needles (Apparatus for changing -); Record players; Reducers [electricity]; Reflecting discs for wear, for the prevention of traffic accidents; Refractometers; Refractors; Regulating apparatus, electric; Relays, electric; Remote control apparatus; Resistances, electric; Respirators for filtering air; Respirators, other than for artificial respiration; Resuscitation mannequins [teaching apparatus]; Retorts; Retorts’ stands; Revolution counters; Rheostats; Riding helmets; Road signs, luminous or mechanical; Rods for water diviners; Rods [surveying instruments]; Rulers [measuring instruments]; Rules [measuring instruments]; Saccharometers; Safety restraints, other than for vehicle seats and sports equipment; Safety tarpaulins; Salinometers; Satellite navigational apparatus; Satellites for scientific purposes; Scales; Scanners [data processing equipment]; Screens for photoengraving; Screens [photography]; Screwtapping gauges; Semi-conductors; Sextants; Sheaths for electric cables; Shoes for protection against accidents, irradiation and fire; Shutter releases [photography]; Shutters [photography]; Sighting telescopes for firearms; Signal bells; Signal lanterns; Signalling buoys; Signalling panels, luminous or mechanical; Signalling whistles; Signals, luminous or mechanical; Signs, luminous; Simulators for the steering and control of vehicles; Sirens; Skins (Apparatus for measuring the thickness of -); Slide calipers; Slide projectors; Slide-rules; Slides [photography]; Smoke detectors; Sockets, plugs and other contacts [electric connections]; Socks, electrically heated; Solar batteries; Solderers’ helmets; Solenoid valves [electromagnetic switches]; Sonars; Sound alarms; Sound locating instruments; Sound recording apparatus; Sound recording carriers; Sound recording strips; Sound reproduction apparatus; Sound transmitting apparatus; Sounding apparatus and machines; Sounding leads; Sounding lines; Spark-guards; Speaking tubes; Spectacle cases; Spectacle frames; Spectacle glasses; Spectacles [optics]; Spectrograph apparatus; Spectroscopes; Speed checking apparatus for vehicles; Speed indicators; Speed measuring apparatus [photography]; Speed regulators for record players; Spherometers; Spirit levels; Spools [photography]; Sprinkler systems for fire protection; Stage lighting regulators; Stands for photographic apparatus; Starter cables for motors; Steering apparatus, automatic, for vehicles; Step up transformers; Stereoscopes; Stereoscopic apparatus; Stills for laboratory experiments; Styli for record players; Sulphitometers; Sunglasses; Surveying apparatus and instruments; Surveying chains; Surveying instruments; Surveyors’ levels; Switchboards; Switchboxes [electricity]; Switches, electric; Tachometers; Taperecorders; Taximeters; Teaching apparatus; Teeth protectors; Telegraph wires; Telegraphs [apparatus]; Telemeters; Telephone apparatus; Telephone receivers; Telephone transmitters; Telephone wires; Teleprinters; Teleprompters; Telerupters; Telescopes; Television apparatus; Temperature indicators; Terminals [electricity]; Test tubes; Testing apparatus not for medical purposes; Theft prevention installations, electric; Theodolites; Thermionic tubes; Thermometers, not for medical purposes; Thermostats; Thermostats for vehicles; Ticket dispensers; Time clocks [time recording devices]; Time recording apparatus; Time switches, automatic; Tires (Automatic indicators of low pressure in vehicle -); Tone arms for record players; Totalizators; Traffic-light apparatus [signalling devices]; Transformers [electricity]; Transistors [electronic]; Transmitters of electronic signals; Transmitters [telecommunication]; Transmitting sets [telecommunication]; Transponders; Triodes; Tripods [for cameras]; Urinometers; USB flash drives; Vacuum gauges; Vacuum tubes [radio]; Variometers; Vehicle breakdown warning triangles; Vehicle radios; Verniers; Video cassettes; Video game cartridges; Video recorders; Video screens; Video telephones; Videotapes; Viewfinders, photographic; Viscosimeters; Voltage regulators for vehicles; Voltage surge protectors; Voltmeters; Voting machines; Wafers [silicon slices]; Waistcoats (Bullet-proof -); Waling glasses; Walkie-talkies; Washing trays [photography]; Water level indicators; Wavemeters; Weighbridges; Weighing apparatus and instruments; Weighing machines; Weights; Whistle alarms; Wind socks for indicating wind direction; Wire connectors [electricity]; Wires, electric; Word processors; Workmen’s protective face-shields; Wrist rests for use with computers; X-ray apparatus not for medical purposes; X-ray films, exposed; X-ray photographs, other than for medical purposes; X-ray tubes not for medical purposes; X-rays producing apparatus and installations, not for medical purposes; Prerecorded compact discs, vinyl records, digital video discs, downloadable audio and audio-visual files in the nature of .MP3, .WMA, .WAV, RM, .WMV and .SWF files, all of the foregoing containing music; USB cards; laptop computer bags and cellular, smartphone and handheld computer accessories namely, carry cases, protective cases and face plates.
Class 25: Clothing, headgear; Aprons [clothing]; Ascots; Babies’ pants [clothing]; Bandanas [neckerchiefs]; Bath robes; Bath slippers; Bathing caps; Bathing trunks; Beach clothes; Belts [clothing]; Berets; Bibs, not of paper; Boas [necklets]; Bodices [lingerie]; Brassieres; Breeches for wear; Camisoles; Cap peaks; Caps [headwear]; Chasubles; Clothing; Clothing for gymnastics; Clothing of imitations of leather; Clothing of leather; Coats; Collar protectors; Combinations [clothing]; Corselets; Corsets [underclothing]; Cuffs; Cyclists’ clothing; Detachable collars; Dress shields; Dresses; Dressing gowns; Ear muffs [clothing]; Fishing vests; Fittings of metal for footwear; Footmuffs, not electrically heated; Fur stoles; Furs [clothing]; Gabardines [clothing]; Gaiter straps; Galoshes; Garters; Girdles; Gloves [clothing]; Hat frames [skeletons]; Hats; Headbands [clothing]; Headgear for wear; Heelpieces for stockings; Heels; Hoods [clothing]; Hosiery; Jackets [clothing]; Jerseys [clothing]; Jumper dresses; Knitwear [clothing]; Layettes [clothing]; Leg warmers; Leggings [trousers]; Liveries; Maniples; Mantillas; Masquerade costumes; Mitres [hats]; Mittens; Money belts [clothing]; Motorists’ clothing; Muffs [clothing]; Neckties; Outerclothing; Pants; Paper clothing; Paper hats [clothing]; Parkas; Pelerines; Pelisses; Petticoats; Pocket squares; Pockets for clothing; Ponchos; Pullovers; Pyjamas; Ready-made clothing; Ready-made linings [parts of clothing]; Saris; Sarongs; Sashes for wear; Scarfs; Shawls; Shirt fronts; Shirt yokes; Shirts; Shoes; Short-sleeve shirts; Shoulder wraps; Shower caps; Singlets; Ski boots; Ski gloves; Skirts; Skorts; Skull caps; Sleep masks; Slippers; Slips [undergarments]; Smocks; Sock suspenders; Socks; Spats; Stocking suspenders; Stockings; Stockings [sweat-absorbent]; Stuff jackets [clothing]; Suits; Suspenders; Sweaters; Swimsuits; Teddies [undergarments]; Tee-shirts; Tights; Tips for footwear; Togas; Top hats; Topcoats; Trousers; Turbans; Underpants; Underwear; Underwear (Anti-sweat -); Uniforms; Veils [clothing]; Vests; Waterproof clothing; Wet suits for water skiing; Wimples; T-shirts; sweatshirts, lanyards, scarves; swim suits.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; production of television and radio programs; distribution of television and radio programs for others; production and publishing of music, providing online entertainment, namely providing sound and video recordings in the field of music and music based entertainment; entertainment services, namely providing on line non-downloadable prerecorded musical sound and video recordings via a global computer network; fan clubs; development and dissemination of educational materials of others in the field of music and entertainment; radio entertainment production and distribution; audio and sound recording and production; record production; videotape production; production of motion picture films; distribution of motion picture films; television program syndication; entertainment in the nature of ongoing television programs in the field of music and entertainment; entertainment, namely a continuing music and entertainment show distributed over television, satellite, audio, and video media; publication of books and magazines; entertainment in the nature of ongoing radio programs; entertainment in the nature of live concerts and performances by musical artists and groups; entertainment services, namely personal appearances by musical groups, musical artists and celebrities; entertainment services in the nature of performances rendered by musical artists through the medium of television, radio, and audio and video recordings; entertainment services, namely recorded performances by musical artists; educational and entertainment services, namely, production and presentation of television shows, sports events, fashion shows, game shows, music shows, award shows and comedy shows before live audiences which are all broadcast live or taped for later broadcast; entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials; entertainment services, namely, providing on-line reviews of music, musical artists and music videos; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; entertainment services namely live, televised and movie appearances by a professional entertainer; conducting entertainment exhibitions in the nature of music festivals; entertainment services, namely, conducting exhibitions in the field of music and the arts; organizing exhibitions for entertainment purposes featuring music and the arts; and publishing of web magazines; distribution of music; distribution of musical sound recordings and video recordings; preparing audio-visual displays in the field of music; maintaining a library of recorded music tor licensing purposes; music publishing services; recording studio services.
The contested goods and services, following a limitation, are the following:
Class 9: Pre-recorded image, data and sound carriers, including CDs, and DVDs containing music and videos of a band; Downloadable sound, audio-visual and video files, namely music and video clips of a band, including to be played via streaming; Electronic and digital publications, downloadable or on data carriers, in relation to a band.
Class 25: Clothing, headgear, footwear, namely clothing and headgear for promotion of bands.
Class 41: Bands; Production and writing of music and songs of a band; Producing and providing of audio and/or video recordings of a band.
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 ‘including’, used in the applicant’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).
However, the term ‘namely’, used in the applicant’s and opponent’s lists 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.
With regard to the applicant’s goods in Class 25, although the term ‘namely’ is exclusive and restricts the scope of protection only to the specifically listed goods, footwear does not include clothing and headgear, as these goods are considered similar to each other. It was the applicant’s intention to designate footwear on the one hand and clothing and headgear on the other. Consequently, the Opposition Division interprets the list of goods in Class 25 as designating footwear of all kinds and clothing and headgear for promotion of bands.
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 9
The contested pre-recorded image, data and sound carriers, including CDs, and DVDs containing music and videos of a band overlap with the opponent’s prerecorded compact discs, vinyl records, digital video discs, all of the foregoing containing music. Therefore, they are identical.
The contested downloadable sound, audio-visual and video files, namely music and video clips of a band, including to be played via streaming are included in the broad categories of the opponent’s downloadable image files; downloadable music files. Therefore, they are identical.
Electronic and digital publications, downloadable in relation to a band are included in the broad category of the opponent’s electronic publications, downloadable. Therefore, they are identical.
Electronic and digital publications on data carriers, in relation to a band are similar to a high degree to the opponent’s electronic publications, downloadable, as they have similar natures and purposes and they can be in competition. These goods target the same public, are usually distributed via the same channels and can be offered by the same undertaking or economically linked undertakings.
Contested goods in Class 25
Clothing, headgear, namely clothing and headgear for promotion of bands are included in the broad categories of the opponent’s clothing, headgear. Therefore, they are identical.
The contested footwear includes, as a broader category, the opponent’s shoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested services in Class 41
The contested bands are included in the broad category of the opponent’s entertainment. Therefore, they are identical.
Production and writing of music and songs of a band; producing and providing of audio and/or video recordings of a band are included in the broad category of the opponent’s production and publishing of music, providing online entertainment, namely providing sound and video recordings in the field of music and music based entertainment. Therefore, they are identical.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services found to be identical 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 average.
- The signs
MINUS ONE | |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, German- and Polish-speaking parts of the public.
The earlier sign is figurative and is composed of the bold white characters ‘M*NUS’ with a black outline placed against a white background. The second character in the sign is formed by two rectangles joined together; as its depiction is somewhat fanciful, it will be perceived as a figurative element and not as a particular letter. The opponent argues that this element depicts a minus sign, ‘–’; however, as the central line is not separated from the borders of the rectangles, it is rather unlikely that the relevant public would perceive it as a minus sign. The applicant argues that the earlier sign will be pronounced ‘MENUS’ or ‘MONUS’ and the opponent argues that it can be pronounced ‘MINUS’; however, as stated above, the second character of the earlier sign, due to its fanciful depiction, is not likely to be perceived as any particular letter but rather as a figurative element.
The contested sign is a word mark, ‘MINUS ONE’.
The element ‘MINUS’ of the contested sign will be understood by the relevant public as ‘less’ or ‘disadvantage’ or as having a value or designating a quantity of less than zero. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
The element ‘ONE’ of the contested sign is a very basic English word, which will be understood as indicating the numeral ‘1’. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
The marks have no elements that could be considered clearly more dominant than other elements.
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, the signs coincide in the distinctive element ‘M*NUS’. However, they differ in the letter ‘I’ and the word ‘ONE’ of the contested sign and in the graphic depiction and figurative element of the earlier sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛M*NUS’, present identically in both signs. The pronunciation differs in the sound of the letter ‘I’ and the word ‛ONE’ of the contested mark, which have no counterparts in the earlier sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign as ‘–1’, which is, as explained above, the first negative integer closest to zero, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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 mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
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).
In the present case, the goods and services are identical and similar to a high degree and they target the public at large and business customers with specific professional knowledge or expertise with an average degree of attention.
The signs are visually and aurally similar to an average degree to the extent that they coincide in the letters ‘M*NUS’.
In view of the foregoing and particularly because the visual and aural similarity between the marks lies in the distinctive element ‘M*NUS’, which they have in common, which is at the beginning of the contested mark and plays an independent role in both signs, the Opposition Division is of the opinion that the similarities cannot be outweighed by the dissimilarities between the marks, and that the relevant public would believe that the goods and services that are identical and similar to a high degree come from the same undertaking or from economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-; German-; and Polish-speaking parts of the public. 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 12 499 823. It follows that the contested trade mark must be rejected for all the contested goods and services.
Since the opposition is 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 opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Boyana NAYDENOVA | Katarzyna ZANIECKA | Frédérique SULPICE |
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.