PLUS | Decision 2408972 - GROUPE CANAL+, SA v. Werock B.V.

Date Published: Oct 1, 2017

OPPOSITION No B 2 408 972

Groupe Canal+, SA, 1, place du Spectacle, 92130 Issy Les Moulineaux, France (opponent), represented by Brandstorming, 11, rue Lincoln, 75008 Paris, France (professional representative)

a g a i n s t

Werock B.V., Oostelijke Handelskade 751, 1019 BW Amsterdam, The Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative).

On 06/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 408 972 is upheld for all the contested goods and services.

2.        European Union trade mark application No 12 837 209 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 837 209. After partial refusal of the contested mark in opposition proceedings B 2 410 580, the remaining contested goods and services are those in Classes 9, 35, 41 and 42. The opposition is based on French trade mark registration No 3 692 086. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 9: Scientific (except for medical purposes), nautical, surveying, photographic, cinematographic, optical and electro-optical, weighing, measuring, signalling, checking (supervision) and life-saving apparatus and instruments; diving equipment; apparatus and instruments for the supply, distribution, transformation, accumulation, regulation or control of electric current; decoders; electronic data processing apparatus, electric and electronic measuring and checking (supervision) apparatus; teaching apparatus and instruments; apparatus and instruments for recording, transmission, reproduction, storage, encoding, decoding, conversion and processing of sound or images; communications and telecommunications apparatus; audiovisual, telecommunications, data transmission, television apparatus and instruments, remote controls; cassette recorders; video recorders; film cameras; telephones, mobile telephones; personal organisers (PDAs); electronic diaries; radio sets; personal stereos; projectors (projection apparatus); antennas, aerials, satellite dishes; speakers, amplifiers; computers, computer screens, computer keyboards, peripheral devices for computers, modems, decoders, encoders; access devices (apparatus) and access control devices for data processing apparatus; authentication apparatus for use in telecommunications networks; apparatus for scrambling and descrambling signals and retransmissions; digital terminals; video films; CD-ROMs, recording discs, digital video discs (DVDs), video discs and audio discs, digital discs, video tapes; CD-ROM players; digital video discs; digital disc players, magnetic disc players, video and audio disc players, recording disc players; video game cartridges; video game software; video games adapted for use with a television screen; magnetic data carriers; magnetic cards; chip cards; electronic cards; integrated circuits and microcircuits; card readers; electronic components; worldwide computer network data reception monitors; automatic vending machines and mechanisms for coin-operated apparatus; calculating machines, data processing equipment; satellites for scientific and telecommunications use; Spectacles (optical), optical goods, cases for spectacles; smart cards, cards with microprocessors; electronic radio and television programme guide; apparatus and instruments for programming and selection of television programmes; interactive television apparatus and instruments; television screens; computer software (recorded programs); fibre-optic cables and optical cables; electric batteries and cells.

Class 16: Paper and cardboard (untreated, semi-finished); stationery; printed matter; engravings; Lithographic works of art; tickets; photographs; catalogues, newspapers, periodicals, magazines, journals, books, bookmarks, manuals (paper), albums, brochures; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus);bags (enveloppes, pouches) of paper or plastics for packaging; adhesive tape for stationery or household use; membership cards (not magnetic); credit cards (not magnetic); printers' type; printing blocks; writing implements and pens; business cards; postcards; notebooks; note pads; note books; cheque books; holders for cheque books; penholders; nibs; drawing pens; posters; calendars; letter trays; radio and television programme guide; table linen; paper napkins; paper table covers; toilet paper; paper handkerchiefs; face towels of paper; paper flags; stickers (items of stationery); postage stamps; boxes of cardboard or paper; envelopes (stationery), announcements (stationery); school supplies; note papers.

Class 35: Business consultancy; professional business organisation and management assistance and consultancy for industrial and commercial companies; business information and advice; commercial information and advice for consumers (consumer advice shop) relating to the choice of computer and telecommunications equipment; advertising; rental of advertising space; dissemination of advertisements; organisation of promotional and advertising operations to obtain customer loyalty; publicity columns preparation; direct mail advertising (tracts, prospectuses, printed matter, samples); mail-order advertising; subscriptions to audiovisual programmes, to audio and radio programmes, to newspapers; subscriptions to video recordings, to sound recordings, to audio and audiovisual media of all kinds; arranging subscriptions to all information, text, sound and/or image media and in particular in the form of electronic or non-electronic digital publications, multimedia products; arranging subscriptions to a television channel; arranging subscriptions to a telephone or computer services (the Internet); consultancy relating to the entry of data on the Internet; publication of publicity texts; radio and television advertising; interactive advertising; business management; business administration; office functions; on-line advertising on a computer network; business information or enquiries; business research; commercial or industrial management assistance; employment agencies; business or industrial appraisals; accounting; document reproduction; computerized file management; database management services; entry and processing of data, namely entry, collection and systematic ordering of data, rental of computerised files; arranging exhibitions and events for commercial or advertising purposes; sales promotion (for others); marketing research; auctioning; television promotion with sales offers (sales promotion for others);administrative management of exhibition sites for commercial or advertising purposes; public relations; rental of advertising time (on all means of communication); retail and wholesale trading of clothing, leather goods, jewellery, pens, stationery, games, playthings, sporting articles; retailing and wholesaling of audiovisual, computer and telecommunications goods, namely video tapes, television apparatus, video recorders, personal stereos, cassette recorders, radios, hi-fi equipment, decoders, mobile telephones, computers, magnetic tapes (ribbons), juke boxes for computers, printed circuits, integrated circuits, computer keyboards, compact discs (audio-video),

optical compact discs, couplers (data processing equipment), floppy disks, magnetic data carriers, video screens, scanners, printers for use with computers, interfaces for computers, readers (data processing equipment), computer software (recorded programs), microprocessors, modems, monitors (computer hardware), monitors (computer programs), computers, computer memories, computer peripheral devices, computer programs, recorded, processors (central processing units), computer operating programs (recorded), chips (integrated circuits), retail sale of aerials; newsclipping services; automatic telephone answering services.

Class 38: Telecommunications services; communications by computer terminals or by optical fibres; information about telecommunications; news and information agencies; radio communications, communications by telegrams, by telephones or video phones, by television, by personal stereo, by personal video player, by interactive videography; broadcasting (television -); transmission of information by data transmission; transmission of messages, telegrams, images, videos, mail; transmission of information by teleprinter; data communications; radio and television broadcasting; broadcasting of programmes by satellite, by cable, by computer network (in particular via the Internet), by radio networks, by radio-telephone networks and by radio link; broadcasting of audio, audiovisual, cinematographic and multimedia programmes (text and/or still or moving images and/or sound, whether musical or not, of ring tones), whether or not for interactive purposes; electronic advertising (telecommunications); rental of telecommunications equipment and apparatus; rental of remote data transmission apparatus and instruments, namely telephones, fax machines, apparatus for transmitting messages, modems; rental of aerials and satellite dishes; rental of devices (apparatus) for access to interactive audiovisual programmes; leasing access time to telecommunications networks; downloading of video games and digital data ; communications (transmission) on open (Internet) or closed (intranet) global computer networks; online downloading of films and other audio and audiovisual programmes ; transmission of programmes and selection of television channels; providing access to a computer network; providing connections to telecommunications services, to Internet and database services; routing and connecting services for telecommunications; connection by telecommunications to a computer network; telecommunications consultancy; professional consultancy relating to telephony; consultancy in the field of video programme broadcasting; consultancy relating to the transmission of data via the Internet; consultancy relating to providing access to the Internet; information about computing applied telecommunications; sending and receiving video images via the Internet using a computer or mobile telephone; telephone services; cellular telephone services; cellular telephone communication; paging by radio; voice messaging, call forwarding, electronic mail, electronic message transmission; video-conferencing services; video messaging services; video-telephone services; providing access to the Internet (Internet service provider); electronic mail exchange, e-mail services, instant electronic messaging services, noninstantaneous electronic messaging services; transmission of information via the Internet, an extranet and an intranet; transmission of information via secured messaging systems; providing access to electronic conferencing and discussion forums; providing access to Internet websites containing digital music or audiovisual works of all kinds; providing access to telecommunications infrastructures; providing access to search engines on the Internet; providing, namely online transmission of electronic publications.

Class 41: Education; providing of training; entertainment; radio and television entertainment on media of all kinds, namely television, computer, personal stereo, personal video player, personal assistant, mobile phone, computer networks, the Internet; leisure services; sporting and cultural activities; animal training; production of shows, films and television films, of television broadcasts, of documentaries, of debates, of video recordings and sound recordings; rental of video recordings, films, sound recordings, video tapes; motion picture rental; rental of cinema projection apparatus, decoders and audiovisual apparatus and instruments of all kinds, encoders, radio and television sets, audio and video apparatus, cameras, personal stereos, personal video players, stage scenery; production of shows, films, audiovisual, radio and multimedia programmes; movie studios; arranging competitions, shoes, lotteries and games relating to education or entertainment; production of audiovisual, radio and multimedia programmes, texts and/or still or moving images and/or sound, whether musical or not, and/or ring tones, whether or not for interactive purposes; arranging exhibitions, conferences, seminars for cultural or educational purposes; booking of seats for shows; news reporter services; photography, namely photographic services, photographic reporting; photographic reporting; videotaping;consultancy relating to the production of video programmes; game services provided online from a computer network, gaming; casino facilities; editing and publication of text (except publicity texts), sound and video media, multimedia (interactive discs, compact discs, storage discs); electronic online publication of periodicals and books; publication and lending of books and texts (except publicity texts); providing movie theatre facilities; micro publishing.

Class 42: Research and development of new products (for others); technical research; surveying (engineering), professional consultancy relating to computers, video programme design; operating Internet search engines; design, upgrading and rental of computer software; rental of computer apparatus and instruments, namely screens; consultancy in the field of computer hardware, computer rental; design (creation) of systems for encrypting and decrypting and for controlling access to television or radio programmes, in particular nomad systems and data transmission systems of all kinds; design of interactive programs and apparatus; drawing up technical standards (standardisation), namely drawing up (design) of technical standards for manufactured products and telecommunications services; weather information services; research and development, for others, of electronic, computer and audiovisual, scrambling and access control systems in the fields of television, data processing, telecommunications and audiovisual technology; authentication (origin searches) of electronic messages; computerisation of text and/or still or moving images and/or sound (whether musical or not), of ring tones, whether or not for interactive purposes.

The contested goods and services are the following:

Class 9: Scientific, surveying, weighing, measuring, checking (supervision); Electronic publications, downloadable; Digital data files (downloadable); Audiovisual productions; Audio recordings featuring music; Digital music; Sunglasses; The aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid goods not relating to loyalty schemes in the field of retail.

Class 35: Advertising; Dissemination of advertisements; Mediation for publicity; Promoting the goods and services of others by placing advertisements and promotional articles on an electronic site accessed through computer networks; Mediation in the establishment of business contacts via the Internet (public relations); Presentation of companies on the internet and other media; Negotiating and concluding commercial transactions for others; Market prospecting and analysis; Opinion polling; Organisation of trade fairs and exhibitions for commercial or advertising purposes; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Arranging and conducting of courses, lectures, training sessions, workshops, symposiums, congresses, seminars and other educational activities; Publication, lending and dissemination of software, newsletters, books, newspapers, magazines, guidebooks, TV guides, brochures, posters, business cards and other printed matter; Audiovisual (multimedia) production; Recording studios; Services of editorial offices (non-advertising), in particular the editing of non-advertising texts; Presentation of goods and services using audio-visual productions, for educational purposes; Organising radio and television broadcasts/programmes; Entertainment; The organisation of competitions; Organisation of exhibitions and trade fairs for cultural, sports or educational purposes; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail.

Class 42: Industrial analysis and research services; Information and consultancy relating to the aforesaid services; The aforesaid services also via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in both lists 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 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 9

The contested audiovisual productions; The aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid goods not relating to loyalty schemes in the field of retail overlap with the opponent’s video films as by definition audiovisual productions can be films. These goods are therefore identical.

The contested digital data files (downloadable); Audio recordings featuring music; Digital music; The aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid goods not relating to loyalty schemes in the field of retail are similar to the opponent’s services subscriptions to sound recordings, to audio and audiovisual media of all kinds in Class 35 as they can be provided by the same providers, target the same consumers and are in competition with each other.

The contested goods scientific, surveying, weighing, measuring, checking (supervision); The aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid goods not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s scientific (except for medical purposes), nautical, surveying, photographic, cinematographic, optical and electro-optical, weighing, measuring, signalling, checking (supervision) and life-saving apparatus and instruments; diving equipment and therefore identical.

The contested Sunglasses; The aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid goods not relating to loyalty schemes in the field of retail are included in /overlapping to the opponent’s broad category of Spectacles (optical) and are therefore identical.

The contested Electronic publications, downloadable; The aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid goods not relating to loyalty schemes in the field of retail are highly similar to the opponent’s services electronic online publication of periodicals and books in Class 41 as they have the same purpose. They can coincide in producer and end user. They are also in competition and can be complementary.

Contested services in Class 35

The contested Mediation for publicity; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are highly similar to the opponent’s publication of publicity texts as they can be provided by the same companies, are directed at the same end-consumers and are also complementary.

The contested services promoting the goods and services of others by placing advertisements and promotional articles on an electronic site accessed through computer networks; Mediation in the establishment of business contacts via the Internet (public relations); Presentation of companies on the internet and other media; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s sales promotion (for others) and are therefore identical.

The contested Market prospecting and analysis; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are included in the broad category of business management of the opponent and therefore identical.  

The contested negotiating and concluding commercial transactions for others; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are highly similar to the opponent’s business information and advice as they may be provided by the same companies, are directed at the same end-consumers and are available through the same distribution channels.

The contested Opinion polling; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are highly similar to the opponent’s business information or enquiries as they may be provided by the same companies, are directed at the same end-consumers and are available through the same distribution channels.

The contested Organisation of trade fairs and exhibitions for commercial or advertising purposes; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are included in the opponent’s broad category arranging exhibitions and events for commercial or advertising purposes and therefore identical.

The contested Advertising; Dissemination of advertisements; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s advertising and are therefore identical.

Contested services in Class 41

The contested Publication, lending and dissemination of software; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are similar to the opponent’s video game software as these goods and services can originate from the same companies, are directed at the same consumers and also share the same distribution channels. Furthermore, these goods and services are also in competition.

The contested Publication, lending and dissemination of newsletters, books, newspapers, magazines, guidebooks, TV guides, brochures, posters, business cards and other printed matter; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail overlap with or are included in the broad categories of the opponent’s editing and publication of text (except publicity texts), sound and video media, multimedia (interactive discs, compact discs, storage discs); electronic online publication of periodicals and books; publication and lending of books and texts (except publicity texts) and are therefore identical.

The contested Recording studios; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail overlap with the opponent’s production of shows, films and television films, of television broadcasts, of documentaries, of debates, of video recordings and sound recordings and are therefore identical.

The contested Services of editorial offices (non-advertising), in particular the editing of non-advertising texts; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail overlap with the opponent’s editing and publication of text (except publicity texts) and are therefore identical.

The contested Presentation of goods and services using audio-visual productions, for educational purposes; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s Education and are therefore identical.

The contested organisation of competitions; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail overlap with the opponent’s category entertainment as the competitions can be held in the field of entertainment, but not all competitions are necessarily in the field of entertainment. These services are therefore identical. 

The contested Organisation of exhibitions and trade fairs for sports purposes; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s sporting and cultural activities and are therefore identical.

The contested Organisation of exhibitions and trade fairs for cultural or educational purposes; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s arranging exhibitions, conferences, seminars for cultural or educational purposes and are therefore identical.

The contested Audiovisual (multimedia) production; Organising radio and television broadcasts/programmes; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s production of shows, films, audiovisual, radio and multimedia programmes and are therefore identical.

The contested Education; Providing of training; Entertainment; Sporting and cultural activities; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are all included in the broad categories of the opponent’s Education; Providing of training; Entertainment; Sporting and cultural activities and therefore identical.

The contested Arranging and conducting of courses, lectures, training sessions, workshops, symposiums, congresses, seminars and other educational activities; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are all included in the broad categories of the opponent’s Education; Providing of training and therefore identical.

Contested services in Class 42

The contested services Industrial analysis Information and consultancy relating to the aforesaid services; The aforesaid services also via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are highly similar to the opponent’s services technical research as they may coincide in provider, end-user, distribution channels and they may also be complementary.

The contested research services; Information and consultancy relating to the aforesaid services; The aforesaid services also via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail overlap with the opponent’s services technical research and are therefore identical.

2. The signs

PLUS	PLUS
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

Since the marks are identical, the similarity of the goods and services is sufficient to affirm a likelihood of confusion (16/12/2009, T-483/08, Giordano Enterprises Ltd., EU: T: 2009: 515, § 32).

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 692 086. It follows that the contested trade mark must be rejected for all the contested goods and services.

The signs were found to be identical and a part of the contested goods and services, namely audiovisual productions; scientific, surveying, weighing, measuring, checking (supervision); The aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid goods not relating to loyalty schemes in the field of retail; promoting the goods and services of others by placing advertisements and promotional articles on an electronic site accessed through computer networks; Mediation in the establishment of business contacts via the Internet (public relations); Presentation of companies on the internet and other media; Market prospecting and analysis; Organisation of trade fairs and exhibitions for commercial or advertising purposes; Advertising; Dissemination of advertisements; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail; Publication, lending and dissemination of newsletters, books, newspapers, magazines, guidebooks, TV guides, brochures, posters, business cards and other printed matter; Recording studios; Services of editorial offices (non-advertising), in particular the editing of non-advertising texts; Presentation of goods and services using audio-visual productions, for educational purposes; organisation of competitions; Organisation of exhibitions and trade fairs for sports purposes; Organisation of exhibitions and trade fairs for cultural or educational purposes; Audiovisual (multimedia) production; Organising radio and television broadcasts/programmes; Education; Providing of training; Entertainment; Sporting and cultural activities; Arranging and conducting of courses, lectures, training sessions, workshops, symposiums, congresses, seminars and other educational activities; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail; research services; Information and consultancy relating to the aforesaid services; The aforesaid services also via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods and services.

Furthermore, the remaining contested goods and services digital data files (downloadable); Audio recordings featuring music; Digital music; Electronic publications, downloadable; The aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid goods not relating to loyalty schemes in the field of retail; Mediation for publicity; negotiating and concluding commercial transactions for others; Opinion polling; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail; Publication, lending and dissemination of software; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail; Industrial analysis Information and consultancy relating to the aforesaid services; The aforesaid services also via electronic channels, including the Internet; The aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; The aforesaid services not relating to loyalty schemes in the field of retail were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

Sigrid DICKMANNS

Lars HELBERT

Claudia MARTINI

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.