SUZUKI MUSIC | Decision 2715293
Date Published: Sep 25, 2017
OPPOSITION No B 2 715 293
International Suzuki Association, 212 S. Cottonwood Drive, Richardson, Texas 75080, United States of America (opponent), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative).
a g a i n s t
Yungok Ku, 406-4, Sanghasin-gil, Banpo-myeon, Gongju-si, Chungcheongnam-do, 314-923, South Korea (holder), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative).
On 28/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 715 293 is upheld for all the contested goods and services.
2. International registration No 1 265 283 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 265 283. The opposition is based on European trade mark registration No 13 879 549. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Musical recordings; downloadable musical recordings; electronic publications relating to children's musical education.
Class 16: Printed music; sheet music; musical scores; printed musical instruction books.
Class 41: Tutorials, courses, seminars and lessons relating to music; musical entertainment services; music publishing services.
The contested goods and services are the following:
Class 9: Pre-recorded music recorded on electronic media; downloadable music files; pre-recorded music audiotapes; pre-recorded music compact discs; phonograph records.
Class 16: Books for use in the teaching of music; composition books; printed matter except books and periodicals; teaching materials except apparatus; books; periodicals; periodical magazines; printed publications; school writing books; study books or papers.
Class 41: Music academies; providing educational examination relating to music; educational research services relating to music; providing information relating to music education; providing music education and instruction via the Internet; providing educational examination relating to music via the Internet; piano instruction; piano academies; music performances; production of music performances; production of music; planning services for movies, shows, plays or musical performances; production of audio tapes; editing of audio-tapes; disc recording; distribution of audio recordings; production of audio recordings; publication of education materials; publication of books; on-line publication of electronic books and journals, not downloadable.
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
Downloadable music files are identically contained in both lists of goods (including synonyms).
The contested pre-recorded music recorded on electronic media; pre-recorded music audiotapes; pre-recorded music compact discs; phonograph records are included in the broad category of the opponent’s musical recordings. Therefore, they are identical.
Contested goods in Class 16
The contested books for use in the teaching of music; composition books; teaching materials except apparatus; books; printed publications; school writing books; study books or papers includes, as broader categories, or overlap with, the opponent’s printed musical instruction books. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested printed matter except books and periodicals include, as broader category the opponent’s sheet music. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested periodicals; periodical magazines are similar to the opponent’s printed musical instruction books. These goods have the same purpose and method of use. They can also be in competition and share the same distribution channels.
Contested services in Class 41
The contested piano academies overlap with the opponent’s tutorials, courses, seminars and lessons relating to music considering that these services can relate to piano music. Therefore, they are identical.
The contested music academies include, as broader categories the opponent’s tutorials, courses, seminars and lessons relating to music. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The opponent’s tutorials, courses, seminars and lessons relating to music require some preparations beforehand and is also normally finalised with a test or examination. Therefore, the contested providing educational examination relating to music; educational research services relating to music; providing information relating to music education; providing music education and instruction via the Internet; providing educational examination relating to music via the Internet; piano instruction are included in the broad category of the opponent’s tutorials, courses, seminars and lessons relating to music. Therefore, they are identical.
The contested music performances; production of music performances; production of music; planning services for movies, shows, plays or musical performances; production of audio tapes; editing of audio-tapes; disc recording; distribution of audio recordings; production of audio recordings are included, or overlap with, the broad category of the opponent’s musical entertainment services. The contested planning services for movies, shows and plays could be movies, shows and plays of a musical nature and hence overlap with the opponent’s services. Therefore, they are identical.
The contested publication of education materials; publication of books; on-line publication of electronic books and journals, not downloadable includes, as broader categories, or overlap with, the opponent’s music publishing services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar are directed at the public at large.
The degree of attention is considered to be average.
- The signs
SUZUKI | |
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 contested sign is a highly stylised figurative sign made up of the following barely legible expression, ‘SUZUKI MUSIC’. However it cannot be excluded that part of the public will be able to read these words in the mark or parts of them. Nevertheless, the other part of the public will not be able to read the expression and only see a colourful figure.
For reasons of procedural economy and in order to take into account the best possible outcome for the opponent, the analysis below will focus on the part of the public that will be able to read the verbal elements in the contested sign. For this part of the public, while the high and colourful stylisation of the mark will indeed be notable, contrary to the holder’s view, it cannot be regarded as dominant since it will precisely be perceived as such, in other words as an integral part of the verbal elements.
The earlier mark is a word mark, ‘SUZUKI’. According to the holder this word is a common surname in Japan and also a well-known violin teaching method. However, contrary to the view of the holder, it is the Opposition Divisions view that the word ‘SUZUKI’ has no meaning (or will be associated with a specific surname or teaching method) in the relevant territory in relation to the relevant goods and services and is therefore distinctive.
As with the earlier mark, the first word of the contested sign, ‘SUZUKI’, has no meaning in relation to the relevant goods and services. The second word, ‘MUSIC’, is a basic English word that will be understood by the relevant public. Considering its meaning and the relevant goods and services this element is considered to be non-distinctive.
Visually, the signs coincide in the verbal element ‘SUZUKI’, whereas they differ in the additional word ‘MUSIC’ and the stylisation of the contested sign. Therefore, the first verbal element of the contested sign and the earlier mark coincide. Taking into account that the second word of the contested sign is non-distinctive, this element is of little impact in the comparison. While part of the public can see and read the verbal elements in the contested sign, it cannot be denied that the sign’s high stylisation creates a noticeable visual distance between the marks despite that their common verbal element.
Therefore, the signs are visually similar to a low 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 ‛SUZUKI’, present identically in both signs whereas they differ in the sound of the word ‛MUSIC’ of the contested sign, which has no counterpart in the earlier mark. However, taking into account that the second verbal element of the contested sign is non-distinctive, this element is of little impact in the comparison.
Therefore, the signs are aurally highly similar.
Conceptually, the common element ‘SUZUKI’ is meaningless and therefore, also considering that the other verbal element, ‘MUSIC’, in the contested sign is non-distinctive and hence have no impact in the comparison, a conceptual comparison is not possible. Consequently, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
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, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital of art. 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
As has been concluded above, the contested goods and services are partly identical and partly similar. The goods and services are directed at the public at large with an average level of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally, the marks in dispute have been found visually similar to a low degree and aurally similar to a high degree. Considering that the coinciding verbal element is meaningless and that the second verbal element is non-distinctive, the conceptual aspect does not influence the assessment of the similarity of the signs.
Although the signs differ in length, the signs coincide in the distinctive verbal element ‘SUZUKI’, which constitutes the earlier mark and is the first element of the contested sign for which it will have the strongest impact on the consumers. Indeed, consumers generally tend to focus on the beginning of a sign. Even though the contested sign is highly stylised, part of the public will clearly see the verbal elements of that sign.
Therefore, it must be held that it is reasonable to find that the relevant public is likely to confuse or associate the marks, in relation to the identical and similar goods and services, or believe that those goods and services come from the same undertaking, or as the case may be, economically-linked undertakings.
In its observations, the holder argues that it owns several registrations with the word ‘SUZUKI’ in South Korea, some of which coexist with the opponent’s earlier marks.
Considering that the relevant territory is the European Union, a possible coexistence in South Korea is irrelevant.
Therefore, this argument of the holder must be rejected as unfounded.
In its observations, the holder argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the word ‘SUZUKI’. In support of its argument the holder refers to several trade mark registrations in the European Union.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘SUZUKI’. Under these circumstances, the holder’s claims must be set aside.
Consequently, it is considered that the similarities between the signs are sufficient to lead to a likelihood of confusion between the marks on the part of the public which will clearly see the verbal elements of contested sign.
Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 13 879 549. It follows that the contested trade mark must be rejected for all the contested 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 holder 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
Adriana VAN ROODEN | Benjamin Erik WINSNER | Martina GALLE |
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.