TMS | Decision 2611799

Date Published: Sep 24, 2017

OPPOSITION No B 2 611 799

TNS Investigacion de Mercados y Opinion S.L., Cami de Can Calders 4, 08173 Sant Cugat del Valles (Barcelona), Spain (opponent), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative)

a g a i n s t

Dom Maklerski TMS Brokers S.A., ul. Złota 59, 00-120 Warsaw, Poland (applicant), represented by Monika Kowalczyk, Aomb Polska SP. Z O.O., Emilii Plater 53, 28th floor, 00 113 Warszawa, Poland (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 611 799 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 437 008, namely against all the goods and services in Classes 16, 35, 38 and 41. The opposition is based on Spanish trade mark registrations No 2 528 848, 2 705 100 and 3 093 597. The opponent invoked Article 8(1)(b) EUTMR.

‘TNS-GLOBAL’ Earlier Spanish trade mark registration No 2 528 848 ‘TNS DIRECT MAIL’ Earlier Spanish trade mark registration No 2 705 100
Earlier trade mark	Contested sign

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of Spanish trade mark registrations No 2 528 848, 2 705 100 and 3 093 597.

The request was submitted in due time and is admissible in relation to the earlier Spanish trade mark registrations No 2 528 848 and 2 705 100, as they were registered more than five years prior to the relevant date mentioned above.

The request is not admissible for Spanish trade mark registration No 3 093 597, which does not comply with said requirement since it was registered on 07/02/2014.

The contested application was published on 31/08/2015. The opponent was therefore required to prove that the above-mentioned trade marks on which the opposition is based were put to genuine use in Spain from 31/08/2010 to 30/08/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the services on which the opposition is based, namely the following:

Spanish trade mark registrations No 2 528 848:

Class 35:        Services of information, statistics and market research; investigation for business.

Spanish trade mark registrations No 2 705 100:

Class 35:        Services of business information, statistics information and market research; investigation for business.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 09/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 14/08/20169 to submit evidence of use of the earlier trade mark. On 28/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Annex 1:

• An undated printout of the website of the opponent. The document does not refer to the relevant territory, considering that the page is in English and that the domain name of the page does not refer to Spain (www.tnsglobal.com).

• An undated printout of the Spanish website of the opponent (http://www.tnsglobal.es/). The contents of the page all refer to the year 2016, therefore, outside the relevant period.

• An undated printout of a Wikipedia page referring to the history and the field of activity of the opponent. The document does not refer to the relevant territory, considering that the page is in English and that, the domain name of the page does not refer to Spain https://en.wikipedia.org/wiki/Taylor_Nelson_Sofres).

• Two printouts of articles dated outside the relevant period mentioning the earlier mark in connection with market studies. In particular, the evidence refers to the webpage of the Spanish newspaper ‘20 Minutos’ dated 09/06/2016 (http://www.20minutos.es/noticia/2765242/0/movimiento-anti-smartphone-stopphubbing/) and to the web page of the Spanish magazine ‘El Economista’ dated June 2016 according to the opponent (http://www.eleconomista.es/empresasfinanzas/consumo/noticias/7609035/06/16/Como-ahorrar-con-el-alquiler-deproductos-ya-usados.html)

• A printout dated, according to the opponent, June 2016 of the webpage of the Spanish newspaper ‘El País’ mentioning the earlier mark with reference to a study on consumers’ dietary behavior in 2014, hence in the relevant period, carried out by the opponent (http://elpais.com/elpais/2016/06/02/ciencia/1464863315_741975.html).

• A printout of the webpage of the Spanish magazine ‘Mundo recambio y taller’ (http://www.mundorecambioytaller.com/entidades/tns_presenta_el_balance_del_sector_de_automocion_2012_con_cifras_posventa) dated 27/02/2013, therefore, in the relevant period, referring to a report on the automotive market in 2012, carried out by the opponent.

• A printout of the webpage http://www.eventoselpais.com/bigdata/agenda/, showing the agenda of an event organized in collaboration with the Spanish newspaper ‘El País’, where a representative of the opponent attended as speaker. The event took place on 2/06/2016, therefore outside the relevant period.

• A printout of the webpage of the Spanish magazine ‘Marketing directo’ (http://www.marketingdirecto.com/anunciantes-general/anunciantes/el-sectorautomocion-es-el-3%C2%BA-en-el-ranking-de-notoriedad-publicitaria-seguntns/) dated 08/03/2012, therefore, in the relevant period, referring to the same report on the automotive market in 2012 carried out by the opponent seen above.

• A printout of the webpage http://www.tnsglobal.es/sites/tnsglobal.es/files/NdP%20Eurobar%C3%B3metro%20turismo_serv_0.html displaying a press release by the opponent, dated 23/03/2016 but referring to a study of 2015, hence in the relevant period.

• Undated presentation of a study on e-commerce, ‘Connected life’, carried out by the opponent in the relevant period (from March to June 2014) (http://www.tnsglobal.es/sites/tnsglobal.es/files/TNS_Connected_Life_Cerrando_el_gap_del_comercio_electronico_Links.pdf). It is not possible to infer from this document or the others the scope of distribution of said piece of evidence

• Six undated printouts of the opponent’s profiles on various social networks and websites; namely, Facebook (http://www.facebook.com/pages/TNSSpain/155554491199928), Linkedin (http://www.linkedin.com/company/tnsspain), YouTube (http://www.tnsglobal.es/actualidad/estudios-de-mercadopublicos/los-blogs-de-tns), the blog of the opponent (http://www.tnsglobal.es/actualidad/estudios-de-mercadopublicos/los-blogs-de-tns), Slideshare (http://www.slideshare.net/TNSspain) and Pinterest (http://pinterest.com/tnsspain/).

• A printout of the Twitter page of the opponent, opened in December 2010 (https://twitter.com/tnsspain), therefore, referring to the relevant period.  

Annex 2: 14 Invoices where the name of the opponent appears as buyer of products and/or services from companies located outside of the relevant territory.

Preliminary remark on the translation of the evidence.

According to Rule 22(6) EUTMIR, where the evidence supplied is not in the language of the opposition proceedings, the Office may require the opponent to submit a translation of that evidence in that language, within a period specified by the Office.

On 21/11/2016, the Office invited the opponent to submit translation of the evidence before 26/01/2017.  On 30/12/2016, within the time limit, the opponent submitted a partial translation of the evidence.

Even if it is in general up to the opponent to evaluate whether a complete translation of all the evidence submitted is necessary, the means of evidence will only be taken into account insofar as a translation has been produced or insofar as the means of evidence are self-explanatory regardless of their textual components.

The Opposition Division considers that the translation provided was satisfactory, also in the light of the fact that some of the documents were sufficiently self-explanatory in their untranslated parts.

Earlier Spanish trade mark registration No 2 705 100 ‘TNS DIRECT MAIL’.

In accordance with Rule 22(3) EUTMIR, the indications and evidence required to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. These requirements for proof of use are cumulative (05/10/2010, T92/09, ‘STRATEGI’, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. The sufficiency of the indication and proof as to the place, time, extent and nature of use has to be determined by considering the entirety of the evidence submitted.

At this point, the Opposition Division considers it appropriate to begin the assessment of the evidence with the criterion of nature of use.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the evidence provided refers to the mark ‘TNS’ or ‘TNS GLOBAL’.

The words ‘DIRECT MAIL’ of the earlier trade mark registration are not recognizable by the relevant public as meaningful terms used in relation to the relevant services. It cannot be ruled out that a part of the public will have an understanding of the mentioned English words (for instance because the word ‘DIRECT’ is very close to its Spanish equivalent ‘directo’); however they have no connection with the relevant services. In any case, these elements must be considered distinctive.

Where a mark is composed of several distinctive elements, an alteration of those distinctive elements or its omission or replacement by another element will mean that the distinctive character is altered. The evidence provided displays a mark that lacks some of its distinctive element, namely the words ‘DIRECT MAIL’.

Therefore, the omission in distinctive elements alters the distinctive character of the earlier Spanish trade mark registration No 2 705 100, unlike Spanish trade mark registration No 2 528 848 ‘TNS-GLOBAL’, due to the fact that the hyphen is a non-distinctive punctuation mark and that the word ‘GLOBAL’ is considered descriptive of the nature of the provision of the relevant services, therefore, also non-distinctive (and, in any case, part of the evidence provided displays the words ‘TNS GLOBAL’).

In view of the above, the Opposition Division considers that the evidence does not show use of Spanish trade mark registration No 2 705 100 as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

As stated above, the factors of time, place, extent and nature of use are cumulative. This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as the nature of use does not fulfil the legal requirements, it is not necessary to assess the other criteria. Therefore, the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

Consequently, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR, insofar it refers to Spanish trade mark registration No 2 705 100.

Earlier Spanish trade mark registration No 2 528 848 ‘TNS-GLOBAL’.

Regarding Spanish trade mark registration No 2 528 848, the Opposition Division considers it appropriate to focus the assessment of the evidence on the criteria of extent of use.

It is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T334/01, Hipoviton, EU:T:2004:223, § 35). Furthermore, the Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C40/01, Minimax, EU:C:2003:145, § 39).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use. The evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and/or services and the structure of the relevant market (30/04/2008, T131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).

In the case at hand, in order to demonstrate the genuine use of the earlier Spanish trade mark, the opponent submitted 17 internet printouts (included in Annex 1), the presentation of a market study (contained in Annex 1) and 14 invoices (Annex 2).

Regarding the invoices provided, the Opposition division observes that, in order to demonstrate the extent of use of the trade mark, the invoices shall refer to the selling or provisions of the relevant goods and/or services. This evidence indeed is able to show that the goods and/or services were put on the market using the trade mark. Nonetheless, the documentation submitted by the opponent refers to purchases made by the opponent from other companies. While said pieces of evidence show that the opponent is indeed an enterprise active of the market, these invoices do not provide the Opposition Division with any information on the use of the mark ‘TNS-GLOBAL’. Therefore, it cannot be taken into consideration in the present assessment.

Regarding the remaining documentation, namely the printouts from the internet and the presentation of a study carried out by the opponent, the Opposition Division observes that the great majority of said evidence is undated or dated outside of the relevant period.

If the applicant requests so, according to Article 42(2) EUTMR the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested mark, the earlier trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered. In the present case, this means that the relevant period of time is from 31/08/2010 to 30/05/2015 inclusive.

Admittedly, material submitted without any indication of date of use may, in the context of an overall assessment, still be relevant and taken into consideration in conjunction with other pieces of evidence that are dated (judgment of 17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 33). Nonetheless, only four out of the 17 printouts submitted are in or refer to the relevant period, namely, the two articles regarding a report on the automotive sector of the opponent, the article on a study on consumers’ dietary behavior carried out by the opponent and the Twitter page of the latter.

Such evidence cannot be considered convincing.  Indeed, also with reference to the whole evidence of Annex 1 except the presentation of the study ‘Connected life’, the presence of the trade mark on websites can show inter alia the nature of its use or the fact that products or services bearing the mark have been offered to the public. However, the mere presence of a trade mark on a website is, of itself, not sufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided. Therefore, despite the fact that the internet printouts filed contain references to the signs ‘TNS’ and thus show a certain use of the earlier mark in connection with some of the relevant services, they do not give any indications regarding the territorial extent and/or scale of the use, or the frequency and regularity of use of the earlier mark.

Regarding the printout from Wikipedia, it shall be considered not suitable to endorse the statements provided. In fact, such evidence comes from a non-reliable internet source (Wikipedia is a collaborative encyclopedia subject to changes and free external interpolation); moreover, it merely provides information on the opponent, without containing any references to the actual use of the earlier mark. Finally, as observed above, it is undated and does not refer to the relevant territory.

Also the presentation of the study ‘Connect life’ conducted by the applicant (Annex 1) does not provide sufficient information on the use of the earlier trade mark, since it does not contain any reference to the distribution of such document, therefore, on the territorial scope and intensity of use of the mark.

When evaluating the evidence submitted, the Opposition Division has to make an overall assessment, and all the circumstances of the case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Individual items of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with the other documents and information submitted.

However, even in an overall assessment of the evidence, the documents submitted by the opponent do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use. Against this background and in the absence of other supporting documentation, it cannot be determined that the earlier mark has indeed been commercially used during the relevant period in relation to all or some of the relevant services, and that its use was such that it would create or preserve an outlet for the goods and/or services in question.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C40/01, Minimax, EU:C:2003:145, and 12/03/2003, T174/01, Silk Cocoon, EU:T:2003:68).

In the present case, the evidence provided gives very little indications on the extent of use and therefore, even considered as a whole, it is still insufficient to prove, without resorting to probabilities and presumptions, that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

As stated above, the factors of time, place, extent and nature of use are cumulative. This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as extent of use has not been established, it is not necessary to assess the other criteria.

The methods and means of proving genuine use of a mark are unlimited. The above finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the opponent chose to restrict the evidence submitted (15/09/2011, T427/09, Centrotherm, EU:T:2011:480, § 46).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR also insofar is based on Spanish trade mark registrations No 2 528 848.

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

The examination will follow in relation to Spanish trade mark registration No 3 093 597.

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 services

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

Class 35:        Advertising services; organization of competitions for commercial or advertising purposes; information services, and search statistics of market research; business research. Investigation for business.

Class 38:        Broadcast services, transmission and exchange of messages and communications via telephone, data transmission, computer or television set; communication services via computer terminals through international communication networks; services guaranteed of transmission of data, sound and images; services data transmission between network integrated computer systems; data transfer services through telecommunications; services of electronic data transmission; services of television broadcasts; transmission or systematization of written and recorded communications.

Class 41:        Educational services; training; entertainment; sporting and cultural activities; services on organization of awards and competitions; entertainment services provided online from a computer database or internet; services provided electronic games database from or through internet; electronic library services for the provision of electronic information (including information of file) in electronic form of texts..

The contested goods are the following:

Class 16:        Books; magazines [periodicals]; printed training materials; printed teaching materials; forms, printed; printed matter for instructional purposes; advertising posters; posters made of paper; instructional manuals for teaching purposes; study guides; promotional publications; educational publications; printed advertisements; advertising pamphlets; flyers; invitation cards.

Class 35:        Business analysis of markets; business investigations; market research and business analyses; provision of commercial information; economic forecasting; business information for enterprises (provision of -); providing business information in the field of social media; market information services relating to trade reports; market information services relating to market statistics; market information services relating to index levels; business statistical information services; provision of information relating to marketing; market campaigns; direct marketing; promotional marketing; financial marketing; trade marketing [other than selling]; marketing by telephone; event marketing; preparation and realization of media and advertising plans and concepts; development of marketing strategies and concepts; planning of marketing strategies; promotion [advertising] of business; advertising; banner advertising; advertising and marketing; on-line advertising on a computer network; brand strategy services; issuing of publicity leaflets; preparation of publicity documents.

Class 38:        Electronic transmission of messages and data; delivery of messages by electronic media; electronic network communications; data communication by electronic means; data transmission; transmission of data, messages and information; transmission of news and current affairs information; secured data, sound and image transmission services; communication services provided electronically; electronic transmission of documents (services for the -); electronic transmission of information (services for the -); teleconferencing and video conferencing services; message sending, receiving and forwarding; providing internet chatrooms and internet forums; providing access to internet chatrooms; providing access to platforms and portals on the internet; providing access to platforms on the internet; provision of access to web pages; providing access to websites on the internet or any other communications network; providing user access to platforms on the internet.

Class 41:        Publication of texts and images, including in electronic form, except for advertising purposes; publication of educational texts; publication of texts in the form of cd-roms; publication of texts, other than publicity texts; publication of instructional literature; publication of educational teaching materials; publishing by electronic means; publication of documents in the field of training, science, public law and social affairs; electronic publication of texts and printed matter, other than publicity texts, on the internet; production of films for educational purposes; film production, other than advertising films; dvd and cd-rom film production; production of audio/visual presentations; provision of educational information; educational courses relating to finance; correspondence courses relating to investment; correspondence courses relating to personal investment; courses (training -) relating to finance; development of educational materials; design of educational courses, examinations and qualifications; organisation of educational events; developing educational manuals; organising of educational lectures; conducting of educational courses; workshops for training purposes; workshops for educational purposes; provision of training and education; advanced training; business training services; educational seminars; conducting workshops [training].

Some of the contested goods and services are identical to goods and services on which the opposition is based (e.g. markets research in Class 35). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to the goods and services of the earlier mark.

2. 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 deemed to be identical are directed at both the public at large and entrepreneurs. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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, C251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark including several elements. First a pink background containing in its lower border the depiction of white cheering hands. The background is a mere carrier of the remaining elements of the mark and, therefore, has no distinctive character and limited relevance in the present comparison. Regarding the depiction of cheering hands, it has no connection with the relevant goods and services and it is, therefore, distinctive.

Second, the mark contains in central position the words ‘FAN’, ‘PAGE’ and ‘AWARDS’, respectively in bold white, grey and pink typefaces. A part of the relevant public may understand the meaning of said words, which have no connection with the relevant goods and services. Another part will not perceive any meaning in said components of the mark. In any case, they are distinctive.

Third, in the top left side of the mark, there are the letters ‘TNS’ in white bold characters and in a smaller dimension than the other verbal elements of the mark. The combination of letters is meaningless, therefore distinctive.

The contested sign is a figurative mark containing the meaningless and distinctive letters ‘TMS’ in black bold character. The mark also contains a figurative element composed of a graphic device that may resemble a distinctive letter ‘S’ or curved line.

The graphic device is depicted on a red square background – which is a non-distinctive carrier of the first element.

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). Therefore, the word elements of the signs have more significance than their respective graphic devices.

Visually, the signs coincide in the letters ‘T*S’ contained in both the marks. However, they differ in the central letter of said element (i.e. ‘M’ in the contested sign and ‘N’ in the earlier mark) and in all the other distinctive elements of the marks described above, which are also placed in different ways and depicted in different colors.

The marks do not have the same length (four versus one or two verbal elements, depending on the perception of consumers of the letter ‘S’/curve line) and structure. Therefore, they are visually similar to a low degree.

Aurally, the signs coincide in the letters ‘T*S’ contained in both the marks. However, they differ in the central letter of said element (i.e. ‘M’ in the contested sign and ‘N’ in the earlier mark) and in all the other distinctive elements of the marks, namely the words ‘FAN’, ‘PAGE’ and ‘AWARDS’ of the earlier mark that has no counterpart in the contested sign and in the letter ‘S’ of the contested sign for the part of the public that does not see such figurative element as a curved line. Therefore, the similarity of the signs is limited to a low degree.

Conceptually, bearing in mind that single letters do not convey any specific concept,  for the part of the public that does not understand the words ‘FAN’, ‘PAGE’ and ‘AWARDS’ of the earlier mark,  neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

For the part of the public that does understand the above-mentioned elements, the marks are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The relevant goods have been considered identical and target both the professional and the general public, whose level of attention is average. The earlier mark has a normal degree of distinctive character.

The signs have been considered visually and aurally similar only to a low degree, while a conceptual comparison is not possible for a part of the public, due to the lack of meaning of the words contained in the marks. For the remaining part of the public, the marks have been considered conceptually not similar.

In fact, the tenuous similarities between the marks are overshadowed by the relevant differences in their length and structure, as well as their intonation and rhythm, when pronounced. Admittedly, some of the elements of the marks have or may have limited relevance due to their graphic nature and/or lack of distinctive character. However, they contribute – together with the numerous distinctive elements (in particular of the earlier mark which is very complex) – to create a different overall impression in the relevant consumers.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services; a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C39/97, Canon, EU:C:1998:442, § 17). In the present case, however, taking into account the overall impression of the signs, it is considered that the visual and aural differences cannot be outweighed by the (assumed) identity between the relevant goods, for the reasons explained above.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the public even assuming that the relevant goods and services are identical. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca CANGERI SERRANO

Orsola LAMBERTI

Michele M. BENEDETTI-ALOISI

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.