SOUND OF TOMORROW | Decision 2547464 - ID&Q Licenties B.V. v. AH Gastro Consult GmbH & Co. KG

Date Published: Oct 10, 2017

OPPOSITION No B 2 547 464

ID&Q Licenties B.V., Overhoeksplein 54 Floor 13&14, 1031 KS Amsterdam, the Netherlands (opponent), represented by Loyens & Loeff Advocaten-Avocats, Neerveldstraat 101-103, 1200 Brussels, Belgium (professional representative)

a g a i n s t

AH Gastro Consult GmbH & Co. KG, Caspar-Merian-Straße 19, 97877 Wertheim, Germany (applicant), represented by Waller-IP, Patent- und Rechtsanwaltsbüro Stefan Waller, Landshuter Allee 10, 80637 München, Germany (professional representative).

On 14/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 547 464 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 815 436 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 13 815 436. The opposition is based, inter alia, European Union trade mark registration No 10 137 628. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM trade mark No 10 137 628, for which the opponent claimed repute in the EU.

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

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

• The signs must be either identical or similar.

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

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

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

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

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

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

In the present case the contested trade mark was filed on 11/03/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also demonstrate that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9:         Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; electronic publications (downloadable or on data carriers); recording discs (listed twice); gramophone records; compact discs; DVD disks; computer programmes (software); digital (video and/or audio) files to be downloaded (via the Internet).        

Class 25:        Clothing, footwear, headgear.

Class 41:        Entertainment; producing, arranging and conducting of music and dance events; publishing of books, newspapers, periodicals and electronic publications; entertainment, including by electronic means; production of audio and/or video recordings (audio-visual production); providing of information in the field of concerts via computer and communication networks, whether or not by electronic means; instruction services; providing of training; sporting and cultural activities; providing information in the fields of entertainment, movies, music, sports and education over computer networks and global communication networks; entertainment services; film, theatre and performing artists; performing music; concerts; composing, producing, editing and presenting radio and television programmes; arranging parties; conducting award ceremonies; performances of singers and celebrities.

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

On 21/01/2016 and 22/01/2016, within the time limit for substantiation of the opposition, the opponent submitted its first batch of evidence. However, it must be noted that the opponent submitted additional evidence on 25/01/2016. Since this submission was made outside the relevant time period set by the Office for substantiation, this second batch of evidence will not be taken into account. Therefore, the relevant evidence to be taken into account is the following:

• Exhibit 1: various extracts containing references to the history of the music event bearing the trade mark in question, namely ‘Tomorrowland’, in particular:

• extracts from the book We Are Tomorrow, commissioned by the opponent and published by the publishing house Lannoo, in which a reference is made to the outdoor electronic music festival that started in Belgium in 2004 and celebrated its 10th anniversary in 2014;
• extracts from Wikipedia with information about ‘Tomorrowland’, which is portrayed as being one of the biggest electronic music festivals. A reference is made by the opponent to the high demand for festival tickets, which have sold out in the past few years. A further reference is made to the awards and nominations received by the music festival in 2012, 2013 and 2014, in which years it won in the category of ‘Best Music Event’.
• extracts from Wikifestival with more details given about the music festival itself, in particular the price of the festival entrance, namely EUR 237.50 or EUR 290 including camping costs, and the capacity of the festival, which is 180 000 people in total. A further reference is made to the tickets that went on sale in 2013 and that sold out in a short time.

• Exhibit 2: extracts from popular Belgian (Exhibit 2.1 containing more than 25 articles) and international (Exhibit 2.2. containing over 25 articles) periodicals and websites with articles and pictures containing references to the festival, published in the relevant period, and accompanied by translations of the relevant parts into English where necessary. Furthermore, part of the exhibit contains extracts from Belgian newspapers in which references to the opponent’s festival are made on the front pages (Exhibit 2.3). The first two exhibits contain, inter alia, the following articles:

         Belgian articles (with translations of the relevant parts into English):

• ‘Tomorrowland once again the best festival’, published in Het Nieuwsblad on 21/05/2015;
• ‘DJ Mag: Tomorrowland is once again the best festival’, published in Gazet van Antwerpen on 21/05/2015;
• ‘From small Belgian festival to a world phenomenon’, published in Gazet van Antwerpen on 02/05/2015;
• ‘This is Tomorrow: the festival movie of Tomorrowland’, published on www.glowmedia.be on 23/12/2015;
• ‘These are the 10 most popular Instagram-accounts among companies, organisations and brands’ (in Belgium), published on www.msn.be on 02/06/2015, where ‘Tomorrowland’ is ranked in first place;
• ‘Tomorrowland Ban Ki-moon receives a place of honour on festival’, published in Gazet van Antwerpen on 28/05/2015 with a reference to the core values of the festival, among which are dignity, respect, diversity and solidarity;
• ‘United Nations interested in Tomorrowland’, published in De Standaard on 28/05/2015;
• ‘Tomorrowland, currently the biggest gobbler’, published on www.skynet.be on 21/05/2015;
• ‘Tomorrowland again proclaimed best festival in the world’, published in FrontView Magazine on 21/05/2015;
• ‘Tomorrowland nominated for Dance Music Awards’, published on www.flandernews.be on 26/01/2011.

International articles

• ‘Belgium’s Tomorrowland music festival makes global impact’, published by the BBC on 28/07/2014; the article states ‘Despite being a relatively new festival Tomorrowland - staged in countryside between Brussels and Antwerp - has emerged as one of the biggest and most popular music events in the world. To mark its tenth anniversary the festival has added an extra weekend, doubling its usual capacity of 180,000 visitors. Despite the extension the 360,000 tickets were all sold out within an hour.’;
• ‘Tomorrowland: inside the world’s biggest electronic music festival’, published by the BBC on 27/07/2014;
• ‘How electronic music industry takes festivals global’, published by CNN on 09/08/2013;
• ‘Tomorrowland voted as the world’s no. 1 festival’, published at DJMag on 20/05/2015;
• ‘We find out why the DJs of Tomorrowland can’t get enough of it’, published by MTV on 29/07/2015;
• ‘Tomorrowland, the World Cup of Dance’, published by Billboard on 30/07/2013;
• ‘Tomorrowland 2014 tickets selling out as fast as the World Cup’, published in The Mirror on 02/07/2014;
• ‘The Tomorrowland Movie Is Now On Netflix’, published on www.thaddrop.com in December 2015;
• ‘Tomorrowland’s official aftermovie shows why there is no better place on earth’, published on www.thaddrop.com on 16/09/2014;
• ‘Tomorrowland sells out in 1 second’, published on www.youredm.com on 16/02/2013.

• Exhibit 3: testimonials from the book We Are Tomorrow by popular DJs who have performed at the Tomorrowland festival in different years and who share their professional and personal experience. In particular, testimonials are made by Armin van Buuren, David Guetta, Martin Solveig, Tiësto, Netsky, Sven Väth, Martin Garrix, Yves V, Moby, Hardwell and Carl Cox, among others.

• Exhibit 4: a list of awards received by the Tomorrowland festival in the past, accompanied by relevant evidence verifying the information, in particular:

• ‘Best Music Event’ at the International Dance Music Awards in 2011, 2012, 2013 and 2014;
• ‘Best International Festival’ at the EMPO Awards in 2014 and 2015;
• ‘Best Festival’ at the Red Bull Elektropedia Awards in 2011, 2012, 2013 and 2014;
• ‘Best Major European Festival’ at the European Festival Awards in 2012;
• ‘Best Festival in the World’ in the DJ Mag magazine in 2014;
• ‘Best Festival’ in the Only For DJ’s magazine in 2011;
• ‘Best Overseas Festival’ at the UK Festival Awards in 2014;
• ‘Best Festival’ at the JIM Awards (Jimmies) in 2013, 2014 and 2015.

• Exhibit 5: extracts from various social media pages, in particular Facebook (Exhibit 5.1), Twitter (Exhibit 5.2), YouTube (Exhibit 5.3) and Instagram (Exhibit 5.4), demonstrating the number of followers of and subscribers to the opponent’s official pages for the Tomorrowland festival. By way of example, the official Facebook page has more than 8.2 million followers; likewise, Tomorrowland has 1.9 million followers on Twitter and there are more than 4.7 million subscribers to the opponent’s YouTube’s channel. Statistics about the percentage of followers from European Union Member States are provided for the opponent’s Facebook page, where it may be seen that EU followers represent a significant part of the festival’s global fanbase (Exhibit 5.9.). Furthermore, the opponent provided relevant information (available at www.socialbrakers.com on 21/01/2016) about its official Facebook page, which is ranked as the third most visited Belgian Facebook page (Exhibit 5.5). In addition, the opponent’s Instagram page is shown to be the most popular Belgian Instagram account on the social networks. Finally, the opponent submits extracts from its YouTube channel containing illustrations of the Aftermovie editions of Tomorrowland for the years 2011-2015, (Exhibit 5.12) and provides details about the number of views by the relevant public, for instance 11 million views in 2015, 45 million views in 2014, 99 million views in 2013 and 132 million views in 2012.

• Exhibit 6: extracts from the opponent’s official internet store, www.store.tomorrowland.com, illustrating a wide range of clothing and various accessories bearing the mark ‘Tomorrowland’ and available for online purchase.

• Exhibit 7: a list of the portfolio of the opponent’s European Union, national and international trade mark registrations bearing the verbal element ‘Tomorrowland’ (Exhibit 7.1), which are mostly registered for goods and services in Classes 9, 25, 35, 38 and 41. The portfolio of trade marks is accompanied by the registration certifications of the relevant rights. The exhibit also contains references to various of the opponent’s promotional campaigns and communications in relation to its trade mark (Exhibit 7.2), including the television series People of Tomorrow, the online community ‘People of Tomorrow’ and the book We Are Tomorrow.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use, especially in the past 10 years, and is generally known in the relevant entertainment market not only in the territory of the European Union but also in a more global context. Furthermore, it has been shown that the opponent’s festival bearing the trade mark ‘Tomorrowland’ is one of the leading annual music entertainment events and is particularly reputed among the public in the European Union. This has been attested by diverse independent sources, including reliable Belgian and international media that refer to the Tomorrowland festival as, inter alia, the ‘world’s biggest electronic music festival’ or ‘the world’s no. 1 festival’.

As is evident from the opponent’s social media presence, the Tomorrowland festival has an extremely high number of active fans. Furthermore, as demonstrated by the statistics, the relevant public of the European Union comprises a significant part of the target public of the opponent’s festival and, therefore, the Opposition Division concludes that reputation has been proven for the relevant territory. Although sales figures have not been directly illustrated through invoices or other financial documents, they may be deduced from the information contained in Exhibit 1 (the number and prices of tickets sold over the years) that the opponent is a solid provider of entertainment services that have had significant commercial success. Other factors that must be taken into account are the prestigious national (regarding European Union Member States) and international awards won by the opponent during the relevant period, which are listed in Exhibit 4.

As a result, the solid marketing expenditure, the active internet presence illustrated by the evidence and the various references in the national and international press to the opponent’s festival success all unequivocally demonstrate that the mark enjoys a high degree of recognition among the relevant public, in particular the public in the European Union.

On the basis of the above, the Opposition Division concludes that the earlier trade mark, ‘Tomorrowland’, has a reputation in the European Union, in particular in Belgium, for some of the services for which the opponent has claimed reputation, namely for entertainment, in particular producing, arranging and conducting of music and dance events. However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to entertainment, in particular producing, arranging and conducting of music and dance events, whereas there is no or little reference to the remaining goods in Classes 9 and 25. This is clear, for example, from the press articles and advertisements, in which mainly music events are mentioned.

2. The signs

TOMORROWLAND
Earlier trade mark	Contested sign

The relevant territory is the European Union.

For reasons of procedural economy the Opposition Division will limit the assessment of the signs to the perception of the English-speaking part of the public in the territory of the European Union.

The earlier mark is a word mark, ‘TOMORROWLAND’, and the contested sign is a figurative mark consisting of the expression ‘SOUND OF TOMORROW’, in which ‘TOMORROW’ is written in large capital letters below the words ‘SOUND OF’, which are depicted in much smaller letters and are incorporated in a device of a shining sun.

The word ‘TOMORROW’ and the device of a shining sun are the more eye-catching or dominant elements in the contested sign due to their larger size and their positions in the sign.

The earlier mark is considered distinctive in relation to the relevant services. However, the contested sign’s verbal element ‘SOUND OF’ may be allusive for some of the goods and services for which the application was filed, in particular for some of the goods in Class 9 regarding audio data carriers, as well as for some services in Class 41, such as dance and entertainment music. Therefore, the relevant public will understand this expression and most probably perceive it as a reference to the nature of the goods as audio, dance or music related. Consequently, less attention will be paid to this element in those cases.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘TOMORROW’, which is the initial part of the earlier mark and a co-dominant verbal element in the contested sign. However, they differ in the second part of the earlier mark, ‘LAND’, in the additional verbal expression ‘SOUND OF’, which precedes the word ‘TOMORROW’ in the contested sign, and in the additional figurative element of a sun. Taking into account the relevant reasons mentioned above, the signs are visually similar 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 ‘TOMORROW’, present identically in both signs. The pronunciation differs in the sound of the additional words ‘SOUND OF’ in the contested sign and of the verbal element ‘LAND’ in the earlier mark. Taking into account the relevant reasons mentioned above, the signs are aurally similar to an average degree.

Conceptually, the public will perceive the earlier sign as consisting of two main concepts, namely ‘tomorrow’, which will be understood as meaning ‘the day after today’, and ‘land’, which may be seen as a poetic reference to a ‘country’ or as ‘ground’. The concepts in combination will be most likely to be perceived as meaning ‘the land of tomorrow’. The contested sign, in addition to the concept of ‘tomorrow’, will also contain the concept of ‘sound’ meaning something that you hear. However, since the signs will both be associated with the concept of ‘tomorrow’, they are conceptually similar to an average degree.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar to a certain degree.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to a certain degree. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

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

∙        the degree of similarity between the signs;

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

∙        the strength of the earlier mark’s reputation;

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

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

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

As concluded above, the signs are similar to an average degree from the visual, aural and conceptual perspectives, to the extent that they have in common the letters ‘TOMORROW’, which form an English word meaning ‘the day after today’, and which is considered of average distinctiveness for all the relevant goods and services covered by both signs.

Furthermore, the earlier trade mark enjoys reputation for entertainment, in particular producing, arranging and conducting of music and dance events.

Insofar as it concerns the conflicting goods and services, before further examination, it is appropriate to recall that the opposition is directed against the following goods and services:

Class 9: With audio, in particular music, Recorded sound recording carriers; Recorded optical and/or magnetic data carriers containing films; Recorded DVDs, compact discs and other image carriers and/or sound recording carriers; Downloadable digital music and/or film, provided via the internet.

Class 25: Clothing, apparel; Tee-shirts; Headgear, in particular baseball caps.

Class 41: Entertaining guests; Club services and discotheque services, In particular performance of dance and entertainment music; Entertainment provided by a discotheque or club; Arranging of cultural and/or sporting activities.

Class 43: Providing food and drink, in particular in clubs or discotheques; Temporary accommodation.

The Opposition Division notes that a clear connection exists between the opponent’s reputed entertainment services and the contested goods in Classes 9 and 25, which are different sound-related appliances and devices and clothing and headgear. This connection is inevitably based on the merchandising particularities of festival events, as the relevant public usually expects to be able to purchase accompanying derivative products, for instance DVDs of the live recording of the festival or T-shirts bearing the name of the festival. This was supported by the evidence listed above, demonstrating that such products are offered online on the official website of the festival.

The applicant also seeks protection for entertainment services in Class 41, which are considered identical or at least similar to the opponent’s reputed services. Furthermore, a connection may also be found between the opponent’s festival events and the contested services in Class 43, which consist of providing temporary accommodation and food and drinks. As demonstrated in the evidence, as well as the festival passes, the opponent offers to purchasers full pass facilities, including camping and the provision of food and beverages.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark, ‘SOUND OF TOMORROW’, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following:

• […] by reason of a transfer of the image of the mark or of the characteristics that it projects to the goods identified by the identical or similar sign, there is a clear exploitation on the coat-tails of the mark with a reputation.
• […] the distinctive character of a mark is compromised where the mark’s ability to identify the goods and services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the latter mark leads to dispersion of the identity and hold upon the public mind of the earlier marks.

In other words, use of the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark and be detrimental to the distinctive character of the earlier trade mark.

As seen above, the earlier trade mark was found to have a reputation for some services in Class 41, namely for entertainment, in particular producing, arranging and conducting of music and dance events, and the contested goods and services have been referred to above.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

• the opponent’s mark, ‘Tomorrowland’, and part thereof, ‘Tomorrow’, are widely known in the relevant market and have an attractive power and a very high advertising value;
• the applicant will use the word ‘Tomorrow’ as a vehicle to generate consumer interest in its own goods and services, which are identical or highly similar, or at least connected, to the services for which ‘Tomorrowland’ is reputed;
• the applicant is allowed to take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its mark;
• use of the contested mark will stimulate the success of the applicant’s goods and services to an extent that is disproportionally large in comparison with the size of its promotional investment.

In addition, the opponent also provides the Opposition Division with a solid line of argument and evidence illustrating real commercial use of the applicant’s mark (Exhibit 8.1). The opponent also recalls that ‘case-law therefore in no way limits to the mark applied for the relevant evidence to be taken into consideration for the purposes of establishing a risk of free-riding (the risk that unfair advantage will be taken of the distinctive character or the repute of the earlier trade marks), but allows account also to be taken of any evidence intended to facilitate that analysis of the probabilities as regards the intentions of the proprietor of the trade mark applied for, and — a fortiori — any evidence relating to the actual commercial use of the mark applied for’ (11/12/2014, T-480/12, MASTER, EU:T:2014:1062, § 88). In particular, the opponent puts forward the following arguments:

• the applicant’s trade mark is used for the same genre of music for which the opponent’s mark is reputed, namely electronic dance music;
• apart from the figurative mark for which protection is sought, the applicant also uses the verbal elements ‘SOUND OF TOMORROW’, thus altering the distinctive character of the sign and reinforcing the similarity between the two conflicting signs;
• the applicant refers directly to the opponent’s trade mark ‘Tomorrowland’ by delivering messages on social media, as well as in its promotional communications.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

As is evident from the above conclusions, not only do the applicant and the opponent operate in the same relevant entertainment field but the earlier mark and the contested sign target consumers with the same melomanic interest (in electronic music). The connection between the goods and services in the relevant sectors was illustrated above in section c) of this decision, in which the contested goods in Classes 9 and 25 were considered common merchandising products with a direct relationship with the entertainment sector in which the opponent operates, and it was stated that it is expected that accommodation and food and beverages will be provided by the event organiser or by economically linked undertakings.

Furthermore, the opponent has also demonstrated different use of unauthorised references to the earlier mark in public spaces, whereby the contested sign has been mentioned, seen or referred to throughout the applicant’s communication channels and promotional materials (e.g. Facebook, Vimeo and other music fan sites).

In addition, the opponent points out that its event is a leading festival in the territory of the European Union that ‘conveys a message of an international, dynamic, magical and positive music event’ and, furthermore, that it is a ‘successful and fast-growing [music event]’. In such cases, an association with or at least a reminder of the earlier mark when encountering the contested sign (a link) will naturally transfer some of the opponent’s image and positive attributions to the contested sign for which the applicant has not made the proportional marketing or business efforts.

Therefore, on the basis of all these findings, the Opposition Division concludes that the contested trade mark will inevitably take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other forms of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may take three different forms. For an opposition to be well founded in this respect, it is sufficient if only one of these forms is found to occur. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other forms also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

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

Volker MENSING

Patricia LOPEZ FERNANDEZ DE CORRES

Gueorgui IVANOV

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.