Publico24 | Decision 2698291
Date Published: Sep 28, 2017
OPPOSITION No B 2 698 291
Pcj - Público, Comuniçao e Jornalismo, S.A, Lugar do Espido, Vía Norte, Maia, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)
a g a i n s t
Publico24 Spółka z Ograniczoną Odpowiedzialnością ul, Targowa 9, 35 064 Rzeszów, Poland (applicant), represented by Katarzyna Sas, Kościuszki 58c, 36-020 Tyczyn, Poland (professional representative).
On 29/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 698 291 is partially upheld, namely for the following contested services:
Class 35: Marketing; Advertising; Radio advertising; Television advertising; Press advertising; Advertising in websites on the Internet; Dissemination of advertising matter; ); Organisation of and participation in trade fairs; Exhibitions and demonstrations; Personnel management consulting;; Rental of advertising space.
2. European Union trade mark application No 13 978 069 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 some of the goods and services of European Union trade mark application No 13 978 069 namely against all of the services in Classes 35 and 42. The opposition is based on European Union trade mark registration No 6 378 921. The opponent invoked Article 8(1) (b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1) (b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The services
The services on which the opposition is based are the following:
Class 35: Advertising, publication of publicity texts, dissemination of advertising matter, arranging newspaper and magazine subscriptions, including online versions.
Class 41: Electronic versions of publications, newspapers, magazines, periodicals, printed matter, guides, engravings and pictures.
The contested services are the following:
Class 35: Marketing; Advertising; Radio advertising; Television advertising; Press advertising; Advertising in websites on the Internet; Dissemination of advertising matter; Presentation of goods via communications media (retailing); Organisation of and participation in trade fairs; Exhibitions and demonstrations; Personnel management consulting; Consumer advice shops; Presentation of goods on communication media, for retail and wholesale purposes; Rental of advertising space.
Class 42: IT services; Software development, programming and implementation; Creating, designing and maintaining web sites; Creation, updating and adapting of computer programs; Creation of computer programmes for data processing; Development and creation of computer programmes for data processing; Platform as a Service [PaaS]; Hosting services and software as a service and rental of software.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested services in Class 35
The contested advertising is identically contained in both lists of services.
The contested marketing; radio advertising; television advertising; press advertising; advertising in websites on the Internet; dissemination of advertising matter; rental of advertising space are included in the broader category of the opponent´s advertising. Therefore, the services are identical.
The contested personnel management consulting is similar to a low degree to the opponent´s advertising. The purpose of advertising services is ‘to reinforce the [business] position in the market’ and the purpose of personnel business management consultancy services consists in organising people and resources efficiently so as to direct activities toward common goals and objectives. These services share the same purpose, relevant public and end producers.
The contested organisation of and participation in trade fairs is considered similar to a low degree to the opponent’s advertising as they share the same purpose (promote goods or services) and end users.
Retail services allow consumers to satisfy different shopping needs at one stop and usually target the general consumer. They can take place in a fixed location, such as the retail stores and wholesale outlets, or in the form of non-shop retailing, that is, over the internet, or by catalogue or mail order. The object of wholesale trade is similar, except that, in this case, the relevant public is the retailer purchasing the goods wholesale (07/07/2005, C-418/02, Praktiker, EU:C:2005:425). The opponent’s advertising services in Class 35 are provided to help other businesses carry out or improve their business. Therefore, in principle, they target a professional public. For all the above, the contested presentation of goods via communications media (retailing); exhibitions and demonstrations; presentation of goods on communication media, for retail and wholesale purposes, are dissimilar to the opponent’s services in Classes 35 and 41. They clearly differ in nature, purpose and end user, and they are provided through different trade channels by different undertakings. Furthermore, they are neither complementary nor in competition.
The contested consumer advice shops are services aimed to provide information such as consumer rights regarding the purchase of goods and services (for example what rights a consumer has when returning goods, what rights a consumer has regarding services paid for and not completed) and are dissimilar to all the opponent´s services in Classes 35 that cover advertising and 41 that are related to electronic publications of different kinds of newspapers and magazines. These services are not in competition with one another nor can they be considered to be complementary. Furthermore, they do not share the same distribution channels and are not directed at the same consumers. They are also unlikely to be provided by the same producers/providers. Therefore, these services are also found to be dissimilar to all the earlier services.
Contested services in Class 42:
The contested services IT services; software development, programming and implementation; creating, designing and maintaining web sites; creation, updating and adapting of computer programs; creation of computer programmes for data processing; development and creation of computer programmes for data processing; platform as a Service [PaaS]; hosting services and software as a service and rental of software must be found dissimilar to the opponent’s services in Classes 35 and 41. This is because the services under comparison relate to completely different fields. The applicant’s services refer to IT services, whilst the opponent’s services are related to the fields of publications or advertising which are related to the non-scientific service sector. Consequently they do not serve the same purpose, are not provided by the same undertakings and the target public is not the same. As a consequence they are not in competition with each other, are not interchangeable, and cannot be considered complementary.
- 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 business customers with specific professional knowledge or expertise.
Taking into consideration the specialised nature and the cost of the services in Class 35 and the fact that they may have a significant effect on the success of the business, the degree of attention will be high.
- The signs
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish and Portuguese-speaking parts of the public
The word ‘Público’ included and identifiable as an element both in the earlier and in the contested sign, will be associated by the relevant public as a term used to describe actions, and events that are made or done in such a way that any member of the public or society can see them or be aware of them or something related to people (Information extracted from the Real Academia de la Lengua Española Dictionary and Priberam Portuguese Dictionary). Taking into account that the relevant services are advertising, this word has an average degree of distinctiveness.
The figurative element of the earlier mark does not convey any additional meaning other than a stylised letter ‘P’, and it will most likely be seen as reinforcing the concept of ‘Público’ as it is its initial letter. The degree of distinctiveness of this element must be seen as average.
The numeral ‘24’ and the yellow figurative element depicting a piece of paper containing lines of text portrayed to the left of the verbal element ‘Publico’ have no direct relation with the conflicting services and have, therefore, an average degree of distinctiveness. At this regard, it has to be pointed out 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).
The letter ‘P’ is the most dominant element in the earlier sign whereas the contested sign has no element that can be clearly more dominant than other elements.
Visually, the signs coincide in the presence of the word ‘Publico’. However, the marks differ in the additional number ‘24’ of the contested sign and the figurative elements contained in both signs as explained above. Moreover, the marks also differ in their colours, the earlier mark being a combination of red and white and the contested sign being yellow and black.
Bearing in mind what has been stated above about the lesser impact of the number ‘24’ and the figurative element of the icon page included in the contested sign, it is considered that the signs are visually similar at least to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘/Publico/’, present identically in both signs. The pronunciation differs in the sound of the numeral ‛24’ of the contested mark which has no counterpart in the earlier sign. At regard the letter ‘P’ of the earlier sign, it is most likely to think that it will not be pronounced as it just repeats the initial letter of the word ‘Público’
Therefore, the signs are similar to an above average degree.
Conceptually as stated above, both signs are linked by their common element ‘Publico’ that will be associated with the same meaning.
Since the shared word ‘Público’ has a meaning and enjoys an average degree of distinctiveness and the additional elements in the contested sign are either merely decorative (colours used) or have less impact in the overall impression conveyed by the mark (as regards the numeral ‘24’ and the page icon) the signs are conceptually highly similar.
As the signs have been found similar in at least in one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, although the earlier trade mark has a meaning for the relevant public, it is not descriptive for the services in question. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
A likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.
The services have been found to be identical, similar albeit to a low degree or dissimilar to the opponent’s services.
The similarity between the signs results from the element ‘Publico’ that is readily recognisable in the earlier mark and the most distinctive element of the contested sign. Due to the visual similarity between the signs, and the substantial similarity from an aural and conceptual perspective, a likelihood of confusion exists on the part of the Spanish and Portuguese-speaking parts of the public, even displaying a higher level of attention in respect of the services found to be identical or similar to a low degree.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 6 378 921. It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to a low degree to those of the earlier trade mark.
The rest of the contested 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 services cannot be successful.
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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Ric WASLEY | Alexandra APOSTOLAKIS | Inés GARCÍA LLEDÓ |
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.