OPPOSITION No B 2 160 466

1-2-3.tv GmbH, Bavariafilmplatz 7, 82031 Grünwald, Germany (opponent), represented by DLA Piper UK LLP, Jungfernstieg 7, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Prointel, S.L., Calle Apolonio Morales, 13 – E, 28036 Madrid, Spain (holder), represented by Roeb y Cía, S.L., Plaza de Cataluña, 4 – 1º, 28002 Madrid, Spain (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 160 466 is partially upheld, namely for the following contested goods and services:

Class 28:         Gymnastic and sporting articles not included in other classes.

Class 38:         Telecommunications services; services for transmitting and broadcasting of cinematographic, video, radio and television programs; providing access to a global computer network; leasing of access time to global computer networks; rental of message sending apparatus; electronic messaging services; message sending services; communications via computer terminals, via fiber-optic, telephone, radio and telegraph networks; teleconferencing services, providing of telecommunications channels for teleshopping services; providing of Internet chatrooms; providing of telecommunications connections to a global computer network or databases; providing access to databases; mediation of access to Internet databases; electronic mail services; computer-assisted transmission of messages and images; voice messaging services.

Class 41:         Education services; providing of training; entertainment; sporting and cultural activities; audiovisual productions on magnetic tape, disk, or any other electromagnetic media; television and radio production and editing services; rental of material and equipment relating to audiovisual media; theater performances; dubbing and synchronization of cinematographic films or tapes, video or any other media; scoring of cinematographic, video, television, radio, cultural or advertising programs via any type of media; show production; organization of shows (impresario services); variety shows and live shows; rental of show scenery; sales agency services and entry bookings; editing of texts other than for advertising purposes; book publishing; electronic publishing of books, newspapers, magazines, publications and fascicles; organization of exhibitions for cultural or educational purposes; arranging and conducting of concerts, conferences, colloquiums, conventions, seminars, symposiums and training workshops.

2.        International registration No 1 118 876 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 118 876. The opposition is based on, inter alia, European Union trade mark registration No 6 539 787. 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 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 6 539 787.

1. The goods and services

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

Class 35: Publicity and other advertising agency services; publication of publicity texts; business administration; business management services; business inquiries, business investigations, business information, business research, organisation consultancy and business appraisals; business assessment services; business management advisory and consultancy services; planning, being business management assistance, and other advisory services for business management; efficiency expert services and economic prognoses; opinion polling, market research and marketing research; organisation of trade fairs for commercial or advertising purposes; demonstration of goods, including conducting tastings; demonstration of services and the use of goods, for others (product demonstration); organization of fairs and exhibitions for commercial or advertising purposes; public relations; arranging of trading and economical contacts, also over the Internet; presentation of companies on the Internet and other media; arranging contracts for the buying and selling of goods, in particular advertising and merchandising articles, in particular within the framework of operating an electronic market place on the Internet; collation of data, in particular product or business-related data in databases; rental of advertising space, including in the form of banner advertising on the Internet; leasing of advertising time on radio, television and the Internet, namely arranging and concluding of leasing agreements for advertising time; rental of advertising material and objects for conducting promotional events, included in class 35; presentation devices and optical eye-catchers for product presentations; distribution of samples and advertising materials; conducting and evaluating surveys; casting, namely modelling agencies to select models for advertising purposes; selection, recruitment and placement of personnel, in particular personnel for trade fairs and for the media and advertising sector; personnel management consultancy; office functions; call centre services, included in class 35, namely commercial handling of customer enquiries, orders and complaints, telephone consumer information services, for others, telephone answering for others (for unavailable subscribers), cost-price analysis; drawing up of statistics; collating and systematic ordering of data in computer databases, in particular offers of goods and services, for others, on the Internet; importing and exporting agencies; office functions; auctioneering, in particular in the form of online auctions via the Internet; wholesale and retail services in relation to promotional or advertising articles, plants and supplies for gardeners and amateur gardeners, furniture, home textile goods; wholesale and retail services in relation to home accessories, namely pictures, cutlery, wall and table decorations, grandfather clocks and wall clocks, lights, candles, candlesticks, textile wall coverings, wall hangings, accessories for open fireplaces; wholesale and retail services in relation to DIY goods, namely building materials, tools, DIY machines and implements for craft and building works, plants and animal requisites; wholesale and retail services in relation to sporting articles and equipment, bookshops, pharmaceutical preparations and food supplements, plasters and materials for dressings, leather goods, including being clothing, textiles, foodstuffs, items of metal hardware and building materials, beverages, confectionery, newspapers and magazines, haberdashery, transport tickets, household appliances, music and films, software, audio apparatus, video apparatus and computer hardware, goods of a motor spares outlet, semi-finished goods, in particular of iron or plastic; wholesale and retail services of dealers in postage stamps and coins; wholesale and retail services in relation to raw materials and natural resources; including all the aforesaid trading services within the framework of an electronic market place on the Internet, or within the framework of homeshopping services on television or radio, or within the framework of auctions or being wholesale or retail trading services; arranging of contracts for the buying and selling of goods or the providing of services, in particular within the framework of an electronic market place on the Internet and within the framework of auction-type commercial transactions; electronic data storage; commercial administration of the licensing of goods and services, for others, in connection with the distribution of films, television films and video tape films; electronic data processing consultancy.

Class 36: Operating stock exchanges and commodity exchanges on the Internet, services of a dealer in postage stamps and coins, namely appraisal of postage stamps and coins.

Class 38: Telecommunications and rental of apparatus for telecommunications and other message sending, including via computer data networks; news agencies; transmission of telegrams; call relaying, conference calls and SMS services being value-added services; providing Internet access (software); providing portals on the Internet; rental of telecommunication equipment; operating chat rooms, chatlines and forums; News agencies; videoconferencing; electronic advertising (telecommunications); electronic mail; electronic mail services; computer-aided transmission of messages and images; radio and telephone paging services; paging services by radio, telephone or other electronic communications systems; web messaging; receiving and sending of fax transmissions, for others; Call-relaying; information about telecommunications; broadcasting of television programmes; radio broadcasting, cable television broadcasting; providing telecommunications channels for teleshopping services; operating a teleshopping channel, namely technical transmission of offers for goods and services, for others, and of purchase offers, for others, via television programmes within the framework of teleshopping services; teletext services; leasing access time to a computer database.

Class 41: Providing of training, including within the framework of correspondence courses and distance learning, in particular in connection with instruction in the application of goods; training consultancy and further training consultancy; entertainment; organisation and arranging of colloquiums, conferences, congresses and seminars, included in class 41; arranging and conducting of seminars and promotional events; show, video and film production; sound recording studio services; production of television and radio programmes; publication of texts (other than publicity texts); entertainment; organisation and arranging of festivals, concerts, parties, beauty contests, sports contests, theatre productions, entertainment shows and sporting competitions; operating lotteries; artists’ and model agency services, namely agency services for artists and models for entertainment events, promotional appearances and film or television productions; arranging and advance sale of entrance tickets for entertainment, sporting or cultural events, for others; publishing services, including publication of texts, in particular company profiles and goods descriptions, operating instructions and user or processing guides for products and consumer goods, all other than publicity texts; production of radio, film or television programs; rental of books, CD-Rs, DVDs and video films.

Class 42: Providing platforms on the Internet; Telecommunications engineering consultancy; provision of search engines for the Internet; computer hardware and software consultancy; research and development (for others); weather forecasting; rental and maintenance of memory space for websites, for others (hosting); providing webspace (webhosting), technical planning of data processing installations; consultancy with regard to the design of homepages and Internet pages; Telecommunications engineering consultancy; providing computer programs on data networks; operating an Internet search engine; computer programming; graphic art design services; research and development. New products (for others); server administration; rental of data processing equipment and network technology apparatus; rental of webservers; electronic data security; franchising, namely providing of technical know-how.

Class 45: Licensing of software; licensing in connection with copyright on images and texts, and franchising, namely providing legal know-how, licensing of intellectual property rights in connection with trading in film, television and video licences.

The contested goods and services are the following:

Class 28: Games and toys; gymnastic and sporting articles not included in other classes; Christmas tree decorations.

Class 38: Telecommunications services; services for transmitting and broadcasting of cinematographic, video, radio and television programs; providing access to a global computer network; leasing of access time to global computer networks; rental of message sending apparatus; electronic messaging services; message sending services; communications via computer terminals, via fiber-optic, telephone, radio and telegraph networks; teleconferencing services, providing of telecommunications channels for teleshopping services; providing of Internet chatrooms; providing of telecommunications connections to a global computer network or databases; providing access to databases; mediation of access to Internet databases; electronic mail services; computer-assisted transmission of messages and images; voice messaging services.

Class 41: Education services; providing of training; entertainment; sporting and cultural activities; audiovisual productions on magnetic tape, disk, or any other electromagnetic media; television and radio production and editing services; rental of material and equipment relating to audiovisual media; theater performances; dubbing and synchronization of cinematographic films or tapes, video or any other media; scoring of cinematographic, video, television, radio, cultural or advertising programs via any type of media; show production; organization of shows (impresario services); variety shows and live shows; rental of show scenery; sales agency services and entry bookings; editing of texts other than for advertising purposes; book publishing; electronic publishing of books, newspapers, magazines, publications and fascicles; organization of exhibitions for cultural or educational purposes; arranging and conducting of concerts, conferences, colloquiums, conventions, seminars, symposiums and training workshops.

An interpretation of the wording of the opponent’s list of services is required to determine the scope of protection of these goods and services.

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

However, the term ‘namely’, used in the opponent’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 goods in Class 28

The contested gymnastic and sporting articles not included in other classes are similar to a low degree to the opponent’s wholesale and retail services in relation to sporting articles in Class 35. In principle, retail services concerning the sale of particular goods are similar (to a low degree) to those particular goods (05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, they have similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The contested games and toys; Christmas tree decorations are dissimilar to all of the opponent’s services in Class 35 (which are, in general, publicity, business management, demonstrations of goods and services, organisation of fairs and exhibitions, rental of advertising space, selection, recruitment and placement of personnel, import and export agencies, and wholesale and retail services in relation to particular goods), Class 36 (operating stock exchanges and commodity exchanges on the internet and appraisal of postage stamps and coins), Class 38 (telecommunications-related services), Class 41 (which are, in general, training, entertainment, organisation of conferences, concerts and sporting competitions, publishing services, and production of radio, film or television programs), Class 42 (which are, in general, IT-related services, weather forecasting, graphic art design services, and research and development of new products for others) and Class 45 (licensing of software, of intellectual property rights and in connection with copyright on images and texts). Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with nor complementary to each other.

Contested services in Class 38

Telecommunications services; providing access to a global computer network; leasing of access time to global computer networks; rental of message sending apparatus; providing of telecommunications channels for teleshopping services; providing of Internet chatrooms; providing of telecommunications connections to a global computer network or databases; electronic mail services; computer-assisted transmission of messages and images are identically contained in both lists of services (albeit using slightly different wordings).

The contested services for transmitting and broadcasting of cinematographic, video, radio and television programs; electronic messaging services; message sending services; communications via computer terminals, via fiber-optic, telephone, radio and telegraph networks; teleconferencing services; voice messaging services; providing access to databases; mediation of access to Internet databases are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 41

Providing of training; entertainment; sporting and cultural activities; television and radio production services; theater performances; show production; organization of shows (impresario services); variety shows and live shows; sales agency services and entry bookings; organization of exhibitions for cultural or educational purposes; arranging and conducting of concerts, conferences, colloquiums, conventions, seminars, symposiums and training workshops are identically contained in both lists of services (albeit using slightly different wordings).

The contested audiovisual productions on magnetic tape, disk, or any other electromagnetic media are included in the broad category of the opponent’s show, video and film production. Therefore, they are identical.

The contested rental of material and equipment relating to audiovisual media includes, as a broader category, the opponent’s rental of CD-Rs, DVDs and video films. 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 dubbing and synchronization of cinematographic films or tapes, video or any other media are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested book publishing; electronic publishing of books, newspapers, magazines, publications and fascicles are included in the broad category of the opponent’s publishing services, including publication of texts, in particular company profiles and goods descriptions, operating instructions and user or processing guides for products and consumer goods, all other than publicity texts. Therefore, they are identical.

The contested editing of texts other than for advertising purposes is similar to a high degree to the opponent’s publication of texts (other than publicity texts), as they have the same purpose. They can also have the same providers, end users and distribution channels.

The contested education services and the opponent’s providing of training have the same nature (increasing knowledge and ability through teaching and training). These services can be provided by the same undertakings and they target the same public, namely consumers who want to be trained and educated in relation to a specific field. Therefore, these services are considered similar.

The contested television and radio editing services must be defined as preparatory work for an event providing entertainment or education. Specifically, it means ‘choose material for (a film or radio or television programme) and arrange it to form a coherent whole’ (information extracted from Oxford Dictionaries on 24/03/2017 at www.oxforddictionaries.com). Consequently, there is a link to the opponent’s production of radio or television programs, which refers to the process of or management involved in making a radio or television programme. In both cases, the purpose is to present a radio or television programme to the public. Consequently, these services have the same purpose and end users. They can also have the same providers and distribution channels. Furthermore, they are complementary. Therefore, they are considered similar.

The contested scoring of cinematographic, video, television, radio, cultural or advertising programs via any type of media; rental of show scenery are similar to the opponent’s organisation and arranging of festivals, concerts, parties, beauty contests, sports contests, theatre productions, entertainment shows and sporting competitions because it is not uncommon for the contested services to be provided as complementary and/or ancillary services to those of organising events. They are, therefore, likely to be offered by the same providers to the same consumers through the same distribution channels.

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 found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

1-2-3.shopping	ONE, TWO, THREE (1, 2, 3)
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both signs contain English words. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The signs in conflict are both word marks.

The numerals ‘1’, ‘2’ and ‘3’, which the signs have in common, whether connected by hyphens (in the earlier mark) or by commas (in the contested sign), will be perceived as the first three numbers after zero. As they are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.

The elements ‘ONE, TWO, THREE’ of the contested sign are the English words corresponding to the numerals ‘1, 2, 3’. Therefore, they are also distinctive.

The element ‘shopping’ of the earlier mark will be understood as ‘the action or activity of buying goods from shops’ (information extracted from Oxford Dictionaries on 24/03/2017 at www.oxforddictionaries.com). Bearing in mind that the relevant services involve the act of purchasing goods directly (e.g. in the case of wholesale and retail services in relation to sporting articles in Class 35, providing Internet access (software) in Class 38 or advance sale of entrance tickets for entertainment, sporting or cultural events, for others in Class 41) or indirectly (e.g. in the case of providing of telecommunications channels for teleshopping services in Class 38 or publishing services, including publication of texts, in particular company profiles and goods descriptions, operating instructions and user or processing guides for products and consumer goods, all other than publicity texts in Class 41), this element is at least weak for a significant number of the relevant services. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue, and this will be taken into account below.

Visually and aurally, since the signs coincide in the sequence of numerals ‘1’, ‘2’ and ‘3’, connected by hyphens in the earlier mark and by commas in the contested sign, they will be pronounced identically as ‘one, two, three’. Taking into account that the contested sign is ‘ONE, TWO, THREE (1, 2, 3)’, it is probable that the relevant public will pronounce ‘one, two, three’ only once, as, aurally, the numerals are merely a repetition of the preceding sounds, and furthermore they are presented within parentheses. However, the signs differ in the additional element ‘shopping’ of the earlier mark, which is separated from the preceding numerals, ‘1-2-3’, by a dot.

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, they are conceptually highly 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 clear 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 in the mark of an element that is weak for a significant number of the relevant services as stated above in section c) of this decision.

5. 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 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 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).

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The relevant public has a degree of attention that varies from average to high and the earlier mark enjoys a normal degree of distinctiveness.

The signs are visually, aurally and conceptually highly similar on account of the coinciding sequence of numerals ‘1’, ‘2’ and ‘3’. The additional elements of the contested sign, ‘ONE, TWO, THREE’, are the words corresponding to those numerals, and the additional element of the earlier mark, ‘shopping’, is at best weak in relation to a significant number of the relevant services.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, it is conceivable that the relevant public, even that paying a higher than average degree of attention, will perceive the mark applied for as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, the relevant public may regard the contested goods and services and the opponent’s services as belonging to two ranges of goods and services coming, nonetheless, from the same undertaking.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 6 539 787. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

For the sake of completeness, there is no need either to consider the opponent’s arguments and evidence submitted in relation to the existence of a ‘family of marks’, as the question of the likelihood of association between the contested trade mark and the earlier mark has already been considered. Therefore, the result would be the same even if the Office had found the opponent’s argument to be well founded.

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

• European Union trade mark registration No 3 763 133, for the word mark ‘1-2-3.TV’, registered for services in Classes 35, 38 and 41;

• European Union trade mark registration No 6 054 779, for the figurative mark  , registered for services in Classes 35, 38, 41 and 42;

• European Union trade mark registration No 6 539 704, for the word mark ‘1-2-3.community’, registered for services in Classes 35, 36, 41, 42 and 45;

• German trade mark registration No 30 455 073 for the word mark ‘1-2-3.TV’, registered for services in Classes 35, 38 and 41.

These other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements (in earlier European Union trade mark registration No 6 054 779) or differing words, namely ‘TV’ (in earlier European Union trade mark registrations No 3 763 133 and No 6 054 779 and German trade mark registration No 30 455 073) and ‘community’ (in earlier European Union trade mark registration No 6 539 704), that are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of the services. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alexandra APOSTOLAKIS

Marta GARCÍA COLLADO

Richard BIANCHI

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.