OPPOSITION No B 2 553 306

 

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

a g a i n s t

 

Kplus konzept GmbH,  Stoffeler Straße 14, 40227 Düsseldorf, Germany (applicant), represented by V. Woedtke & Partner, Königsallee 30, 40212 Düsseldorf, Germany (professional representative).

 

On 30/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 553 306 is rejected in its entirety.

 

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

 

 

REASONS:

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 438 585. The opposition is based on European Union trade mark registration No 8 699 291 and French trade mark registration No (08)3 600 780. The opponent invoked Article 8(1)(b) EUTMR.

 

Preliminary remark regarding the claim of reputation (Article 8(5) EUTMR)

 

Rule 15(2)(c) EUTMIR stipulates that the notice of opposition must contain an indication of the grounds on which the opposition is based.

 

In the case at hand, the opponent stated in the notice of opposition that the opposition was based on Article 8(1)(b) EUTMR in respect of both earlier rights.

 

It is noted, that the contested trade mark application was published on 21/04/2015 and the three month opposition period ended therefore on 21/07/2015.

 

However, on 04/12/2015 the opponent stated “due to a long and regular use and to the important promotional investments made by the Opponent since its first filing, the earlier trademarks have acquired a high reputation in France”. Therefore, the opposition should have been based also on Article 8(5) EUTMR.

 

The opponent cannot extend the basis of the opposition after the expiry of the opposition period. Consequently, the Office finds that the opposition was only duly entered as far as based on 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 699 291.

 

 

1. The goods and services

 

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

 

Class 9: Apparatus and instruments for recording, transmission, reproduction, of sound or images; audiovisual, telecommunications, apparatus and instruments; decoders.

 

Class 35: Advertising; dissemination of advertisements; organisation of promotional and advertising operations to obtain customer loyalty; direct mail advertising (tracts, prospectuses, printed matter, samples); mail-order advertising; subscriptions to video recordings, to sound recordings, to audio and audiovisual media of all kinds; radio and television advertising; interactive advertising; on-line advertising on a computer network; arranging exhibitions and events for commercial or advertising purposes; administrative management of exhibition sites for commercial or advertising purposes.

 

Class 41: Entertainment; production of video recordings and sound recordings; rental of video recordings, films, sound recordings, video tapes; rental of decoders and audiovisual apparatus and instruments of all kinds; videotaping; editing and publication of sound and video media, multimedia (interactive discs, compact discs, storage discs); texts).

 

The contested goods and services are the following:

 

Class 9: Apparatus and instruments for transmission or reproduction of sound or images.

 

Class 35: Arranging of exhibitions for advertising purposes; Exhibitions (Conducting) for advertising purposes; Arranging of exhibitions for business purposes; Exhibitions (Conducting -) for business purposes; Advertising by visual, olfactory and acoustic presentation of goods and services (multisensory presentation).

 

Class 41: Production of entertainment in the form of sound recordings; Production of entertainment in the form of video tapes; Services for the showing of video recordings; Entertainment.

 

Some of the contested goods and services are identical to goods and services on which the opposition is based. 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 goods and services were identical to those 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 and services assumed to be identical are addressed to the public at large but also to professionals. Relevant end-consumers display a normal degree of attentiveness towards the goods and services at issue, professionals a high degree of attentiveness.

 

 

3. 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).

 

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

 

The earlier mark is a figurative mark consisting of the word element ’LE CUBE’ written in grey standard upper case characters, preceded by a ‘+’ sign within a black square.

 

The contested sign consists of the wording ‘emotionQube’ written in black, slightly elongated but otherwise stylised letters in lower case, except the letter ‘Q’. Although signs cannot be artificially dissected, it must be taken into account that when a sign contains sequences of letters that constitute words, prefixes or suffixes that are known for the public perceiving it, it is likely that they will mentally divide the mark into the recognized terms or familiar parts forming it (e.g. prefixes or suffixes). Furthermore, the elements ‘EMOTION’ and ‘QUBE’ might be distinguishable as separate elements due to the stylisation and size of the letter ‘Q’. The wording ‘QUBE’ does not convey any meaning to the consumers, although it might be seen as common misspelling of ‘CUBE’ for some part of the public, such as English-speakers.

 

Therefore, when examining the possibility of a risk of confusion it must be taken into account that the public will focus on the word ‘EMOTION-‘. ‘Emotion’ relates to “a feeling such as happiness, love, fear, anger, or hatred” (https://www.collinsdictionary.com/dictionary/english/emotion) and it will be understood by a great part of the public, such English-French or German speaking part of the public or others due to its very similar equivalent, such as “emoción” in Spanish.

 

The ‘+’ sign will be perceived as such in the earlier sign; this is nevertheless a basic symbol devoid of distinctiveness. ‘CUBE’ refers to “a solid object with six square surfaces which are all the same size” (https://www.collinsdictionary.com/dictionary/english/cube), (http://www.larousse.fr/dictionnaires/francais/cube/20903?q=cube#20782) in English and French. The earlier sign means ‘the cube’ in French: for the part of the public recognising it as a French definite article, ‘LE’ is a non-distinctive element.

 

CUBE, for the public who understand its meaning and can describe goods that have the shape of a cube, some of the goods in class 9 (apparatus and instruments for of sound for example) can have the shape of a cube due to their very nature. Therefore, CUBE or QUBE could be seen of a low distinctive character for the goods in Class 9.

 

Visually, the signs are similar to the extent that they contain the letters ‘-UBE’ at the end of the marks and a letter ‘E’ placed in different positions. On the other hand, they differ in the rest of their verbal elements, figurative element of the earlier mark, and stylisation and colours of the marks in conflict.

 

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 earlier mark will be split into three syllables, ‘LE-CU-BE’, for the majority of the relevant territory, or into two syllables, ‘LE-CUB’, when the final ‘E’ is silent as, for example, in French or English. If the figurative element of the earlier mark is perceived as a ‘plus’ symbol, the pronunciation is ‘PLUS-LE-CUB(E)’. However, this element (‘plus’ symbol) is likely not to be pronounced.

 

The pronunciation of the contested sign will be split into four or five syllables, [e-mo-tion-qube] (for the French or English speaking part of the public for eg.) or [e-mo-tion-qu-be] (in Spanish for e.g.).

 

Although in some parts of the relevant territory the verbal elements ‘CUBE’ and ‘QUBE’ will be pronounced as [cube] and [kube] (for example, by the Polish-speaking public and the Lithuanian-speaking public), for the majority of the public in the relevant territory the pronunciation of the signs coincides in the syllables ‘CU-BE/QU-BE’ or ‘CUB/QUB’, since the consonants ‘C’ and ‘Q’ are pronounced identically in the verbal elements ‘CUBE’ and ‘Qube’.

 

From the perspective of the public throughout the relevant territory, the pronunciation differs in the syllables ‘LE’, present in the earlier mark, and ‘emotion’, present in the contested sign.

 

Therefore, the signs are aurally similar to a low degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

 

It follows that the signs are conceptually similar to the extent that they share the concept of ‘CUBE’ if understood.

 

In other parts, as the signs will be associated with a dissimilar meaning, the signs 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.

 

According to the opponent the earlier trade mark has “a reputation within the European Union, namely in France in the fields of telecommunications, media and new technologies”.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion.

 

Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

 

The opponent submitted the following evidence:

 

• Article titled “Emotional Branding” on the online Encyclopaedia Wikipedia.

 

• Opposition decision No. B 2 322 371 – LE CUBE (fig) versus TUBE CUBE, issued by the OHIM on March 27, 2015.

 

• Opposition decision No. 14-5265/EB, issued by the French Trademark Office (INPI) on April 8, 2015 and its partial translation into English.

 

• Articles dedicated to the satellite TV receiver/decoder for which the trademark is registered and their partial translation into English.

 

• Advertising campaign focused on the trademark conducted on the Opponent’s website.

 

• Article dedicated to the “Cube Canal+” from the Wikipedia online Encyclopaedia.

 

• «Ventilation par technologies» (Apportionment by technologies) and «Mix Second Décodeur» (Mix Second Decoder), supported by an attestation of the Products and Services Marketing Director of the Opponent, and their partial translation into English.

 

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use for the opponent’s goods and services in question.

 

The documents submitted show some use of the earlier trade mark on the opponent’s websites, Wikipedia, in a catalogue and in advertisement articles. The evidence submitted also shows that the earlier trade mark is used in relation to television receivers/decoders in France.

 

As regards the printout from Wikipedia mentioning that there are 165 000 subscribers to +LeCube on the opponent’s commercial network, this document has little probative value. Wikipedia is an open-source internet encyclopaedia containing articles that can be edited by anyone with access to the site. The open nature of Wikipedia has led to various concerns, such as the quality of writing, the amount of vandalism and the accuracy of information. It is widespread knowledge that some articles contain unverified or inconsistent information. Therefore, the Opposition Division cannot accept this information on its own as proof of the enhanced degree of distinctiveness of the opponent’s earlier mark.

 

Although the evidence shows some use of the earlier trade mark for some of the goods and services, it does not prove the enhanced distinctiveness of the mark in connection with these goods on the basis of which the opposition was entered, as there is no evidence of the public perception in respect of any of these goods or services. Sufficient information on the commercial volume, for instance, is missing. No survey on the mark’s recognition or information about awareness of the mark, market share and frequency or intensity of use, price lists, invoices, evidence coming from independent sources providing a relevant link to the opponent’s goods and services were presented.

 

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, despite the presence of the symbol + of non-distinctive character.

 

 

5. Global assessment, other arguments and conclusion

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison ‘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).

 

The opponent has claimed that the earlier mark on which the opposition is based has an enhanced degree of distinctiveness as a result of the use that has been made of the mark. However, for the reasons stated below, the opponent has not satisfied the conditions for the application of those arguments and the assessment of a likelihood of confusion must, therefore, be based on the inherent distinctiveness of the mark in question. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

Although the conflicting signs have the letters ‘UBE’ in common, they also have significant dissimilarities as a result of the differences in the rest of the letters and figurative elements. Since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35), the striking dissimilarities present outweigh the signs’ similarities and, consequently, cause a rather different overall impression.

 

The differences between the marks are clearly perceptible. Confusion would be even less likely considering that, for some goods and services, the relevant public is knowledgeable and attentive.

 

Therefore, the Opposition Division considers that their differences are such that they outweigh the similarities, they are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks, including the likelihood of association.

 

The opponent refers to a previous national decision to support its arguments. However, decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European trade mark regime is an autonomous system which applies independently of any national system (judgment of 13/09/2010, T-292/08 ‘Often’).

 

Although previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

 

The previous case referred to by the opponent (lNPI, decision OPP 14-5265/EB, April 08, 2015) is, however, not relevant to the present proceedings because the signs in question are not comparable. In the present case, the contested sign contains the wording EMOTION conjoined to the letters QUBE, rather than the letters THE in a different colour to QUBE.

 

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

 

The opponent has also based its opposition on the following earlier trade mark:

 

• French trade mark registration No (08)3 600 780 for the figurative mark .

 

Since this mark is identical to the one which has been compared and cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to these goods and services.

 

 

COSTS

 

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

 

Since the 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

 

 

Cristina CRESPO MOLTÓ

José Antonio GARRIDO OTALOA

Loreto URRACA LUQUE

 

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.