OPPOSITION No B 2 693 011

Fashion Tele Settlement Corporation Limited, 3rd Floor, 207 Regent Street, London W1B 3HH, United Kingdom (opponent)

a g a i n s t

fashiontv.com GmbH, Elsenheimerstr. 43, c/o R.A.W. Unternehmensberatung GmbH, 80687 München, Germany (holder), represented by Mitscherlich Patent- und Rechtsanwälte PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 693 011 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of international registration designating the European Union No 1 257 660 for the figurative mark , namely against all the services in Classes 38, 41 and 43. The opposition is based on Austrian trade mark registration No 275 814, Benelux trade mark application No 1 271 312, German trade mark registration No 302 013 041 360, Estonian trade mark registration No 201 300 700 and Maltese trade mark registration No 52 993, all of them for the figurative trade mark . The opponent invoked Article 8(1)(a) and (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 Maltese trade mark registration No 52 993.

1. The services

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

Class 38:        Cable, digital and satellite television broadcasting; broadcasting and transmission of television programmes; broadcasting via telecommunication networks including the Internet.

The contested services are the following:

Class 38:        Telecommunications services; broadcasting of radio programs; broadcasting of cable television programs and television programs; provision of access to information in the Internet, namely electronic communication in the fields of fashion and music as well as broadcasting of radio and television programs via the Internet; collection and transmission of news (news agencies); transmission of sound and images via satellites.

Class 41:        Film production, motion picture rental, projection of films, radio and television entertainment; services in the field of education and entertainment (included in this class), musical, singing, theater and dancing performances, live and via media; education via radio or television; production of radio and television programs; sporting and cultural activities; production, rental and showing of films (entertainment), educational and entertainment films, stored on recorded video carriers and CDs, CD ROMs and DVDs; organization of award shows; organization and arranging of fashion shows for entertainment purposes; providing of training.

Class 43:        Services for providing food and drink and temporary accommodation; services of a café; hotel services; providing hotel accommodation; catering; services of a restaurant; service of a snack-bar; services of a self service restaurants.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the holder’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 38

Telecommunications is a field that covers the exchange of information over (significant) distances by electronic means and refers to all types of content: voice, data, video etc. The contested telecommunications services include, as a broader category, the opponent’s services in Class 38 (e.g. broadcasting and transmission of television programmes). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested broadcasting of cable television programs and television programs and broadcasting of television programs via the Internet are identically contained in both the holder’s and the opponent’s lists or are included in the broad category of the opponent’s broadcasting of television programmes. These services are, therefore, identical.

The contested broadcasting of radio programmes and broadcasting of radio programmes via the Internet are included in the broad category of the opponent’s broadcasting via telecommunication networks including the Internet. These services are, therefore, identical.

The contested collection and transmission of news (news agencies); electronic communication in the fields of fashion and music and transmission of sound and images via satellites overlap with the opponent’s broadcasting via telecommunication networks including the Internet because they all relate to the sharing and transmission of information to end users. Therefore, they are identical.

Contested services in Class 41

All the contested services in Class 41 are dissimilar to the opponent’s services in Class 38.

Although large, usually government run, companies may offer both entertainment and broadcasting services, this is not the norm and these services are considered dissimilar.

As regards the contested production services in Class 41, they have a different nature and purpose from the opponent’s broadcasting services in Class 38.

In addition, the contested sporting and cultural activities and providing of training have different natures and purposes from the opponent’s services in Class 38. They have different providers and are neither complementary to nor in competition with each other.

Contested services in Class 43

The contested services in Class 43 are dissimilar to all the opponent’s services. They have different natures and purposes. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and relevant publics are also different. Consumers would not think that these services come from the same or from economically linked undertakings.

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 services found to be identical are directed at the public at large as well as business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of their delivery and their price.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Malta.

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 earlier sign is a figurative mark composed of a bold upper case letter ‘F’ and the bold lower case letters ‘shion’, the letters ‘TV’ in bold upper case underneath and a figurative depiction of a woman between the letters ‘F’ and ‘S’.

Although the letter ‘A’ in the verbal element ‘FSHION’ is missing, the figurative element of a woman is positioned in place of the missing letter ‘A’, so that the relevant consumers will perceive immediately, without further reflection, the meaningful English word ‘FASHION’.

In the earlier sign, no element is more dominant, i.e. eye-catching, than any other element; however, the figurative element is more distinctive than the verbal elements, ‘FASHION’ and ‘TV’. When a sign consists 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). However, in the present case the verbal elements ‘FASHION’ and ‘TV’ are clearly descriptive of the services in Class 38 for which the earlier sign is registered and the relevant consumers will grasp the meaning immediately, without further reflection, of television that shows fashion- and lifestyle-related content. Due to the pervasive nature of the global fashion industry, it is a well-known fact that the word ‘fashion’ is very commonly used and is understood in all European Union Member States, in particular by business customers whose professions concern fashion-related services but also by the public at large, who are exposed on an almost daily basis to the international fashion industry in the press, on television and in shops, and in which the English word ‘fashion’ has become synonymous with this international industry (26/01/2017, R 258/2016-4, f.fashion, § 44). Furthermore, the ending, ‘TV’, of the earlier sign will be immediately understood by the relevant public as the means, namely through television, by which this fashion-related content is distributed. In addition to that, the earlier mark was registered with the disclaimer that the registration gives no right to the exclusive use of the letters ‘TV’. Therefore, the verbal element ‘FASHION TV’ is non-distinctive in relation to the opponent’s services in Class 38.

However, the figurative element is fanciful and it does not convey any meaning in respect of the services for which the earlier sign is registered. Therefore, it is the most distinctive element of the earlier sign.

The contested sign consists of a diamond shape containing the letter ‘f’ and a small dot, to the right of which appears the word ‘fashiontv’ in lower case letters; all of these elements are depicted on a black background. For the above reasons, the verbal element ‘FASHIONTV’ is descriptive for the contested services in Classes 38 and 41 and it is, therefore, non-distinctive for these services. The figurative element, that is, the diamond device, does not, however, convey any meaning in respect of the services in question and it is, therefore, the most distinctive element of the contested sign.

Visually, the signs coincide in the sequence of letters ‘F*SHION’ and the letters ‘TV’, contained in both signs. They differ in the figurative elements and the letter ‘A’ of the contested sign. However, the missing letter ‘A’ in the earlier sign does not impede the perception of the meaningful word ‘FASHION’, as mentioned above. Another difference is the black rectangular background on which the elements of the contested sign are depicted, which has no counterpart in the earlier sign.

As the figurative elements do not have any features in common and the signs at issue coincide in only the non-distinctive verbal element ‘FASHIONTV’, they are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘FASHIONTV’.

The omission of the letter ‘A’ in the earlier sign does not lead to a different pronunciation of that sign, since the relevant public will immediately recognise the meaningful English word ‘FASHION’ and will pronounce it accordingly.

As this coinciding element is non-distinctive, the signs are aurally similar to no more than a low degree.

Conceptually, the figurative elements of the signs have no meaning, but the coinciding verbal elements convey a clear, direct and straightforward message, that is, that the services in question relate to fashion and lifestyle broadcasting and fashion-related TV shows, programmes or films. The signs are conceptually similar to no more than a low degree, given that the verbal element ‘FASHIONTV’ is non-distinctive for the services in question.

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 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 some non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The existence thereof must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22), in particular the degree of similarity between the trade marks and between the goods or services covered, the distinctiveness of the earlier mark (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19-20) and also the likelihood of association between the signs (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

It is settled case-law of the Court of Justice that the global assessment of a likelihood of confusion cannot take into consideration only one component of a composite sign and compare it with another sign. The comparison must be made by examining each of the signs in question as a whole (15/01/2010, C-579/08 P, Ferromix, Inomix, Alumix, EU:C:2010:18, § 71; 18/09/2013, R 1462/2012-G, ULTIMATE GREENS / ULTIMATE NUTRITION § 56; 15/09/2014, R 2519/2013-4, NEOFON / FON (fig.) et al., § 31).

Whereas a company is certainly free to choose a trade mark which consists of non-distinctive elements in relation to the relevant goods, it must accept, however, in so doing, that competitors are equally entitled to use the same descriptive components for such goods (23/05/2012, R 1790/2011-5, 4REFUEL / REFUEL, § 15; 18/09/2013, R 1462/2012-G, ULTIMATE GREENS / ULTIMATE NUTRITION § 59; 15/09/2014, R 2519/2013-4, NEOFON / FON et al., § 32).

The similarity between the signs at issue arises because each of them contains the English words ‘FASHION’ and ‘TV’, which will be seen by the relevant public as broadly descriptive and non-distinctive for all the services covered by the trade marks in Classes 38 and 41. The signs are not similar with respect to all other aspects, since they bear distinctive figurative elements that have no counterparts in the other. The coinciding descriptive and non-distinctive elements have little or no impact on the global assessment, as consumers are not likely to be confused about the origin of goods and services on the basis of the similarity of weak elements (04/02/2014, T-604/11 and T-292/12, Magnext, EU:T:2014:56, § 34) and are even less likely to be confused on the basis of non-distinctive elements.

Even for the services found to be identical, factors such as the non-distinctive character of the coinciding elements and the higher distinctive character of the other, differing figurative elements of the signs at issue are sufficient to exclude any likelihood of confusion, including the risk of association, even for the services for which the relevant public would display only an average degree of attention. A risk of association cannot be based on a non-distinctive element.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected in its entirety.

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

Austrian trade mark registration No 275 814, Benelux trade mark application No 1 271 312, German trade mark registration No 302 013 041 360 and Estonian trade mark registration No 201 300 700, all of them for the figurative trade mark for services in Class 38. Since these marks are identical to the one which has been compared and cover the same or a narrower scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. As already mentioned in section c) of this decision, the verbal elements ‘FASHION’ and ‘TV’ are widely understood in all European Union Member States, so that the findings mentioned above, which are based on the non-distinctiveness of these elements, apply accordingly to the other earlier rights. Therefore, no likelihood of confusion exists with respect to the other earlier rights either.

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lars HELBERT

Alexandra APOSTOLAKIS

Martin EBERL

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.