OPPOSITION No B 2 752 676

Radio Santec GmbH, Max-Braun-Str. 2/4, 97828 Marktheidenfeld, Germany (opponent), represented by Blumbach · Zinngrebe, Alexandrastr. 5, 65187 Wiesbaden, Germany (professional representative)

a g a i n s t

France New Resplendence Inte Home Furnishing Industry Limited, Room 5,7/F Ho King Commercial Centre,2-16 Fa Yuen Street, Mongkok, Kowloon, Hong Kong, People’s Republic of China (applicant), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 München, Germany (professional representative).

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 752 676 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 15 378 111, namely against all the goods in Classes 3, 5, 10, 14, 18, 20, 24 and 25. The opposition is based on international trade mark registration No 1 053 121 designating the European Union. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

On 25/07/2016, the applicant filed a limitation request and Classes 18 and 25 were removed from the specification. The opponent was duly informed and the opposition was maintained. Consequently, the opposition is directed against all the remaining Classes.

Sophia TV
Earlier trade mark	Contested sign

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.

1. The goods and services

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

Class 9: Recorded data carriers of all kinds, especially CDs and DVDs such as picture and/or sound recordings; electronic publications (downloadable), especially on the Internet.

Class 38: Broadcasting of radio broadcasts and programmes, particularly sound and television broadcasts and programmes; broadcast on satellite and cable television; transmission of TV, radio and telecommunications signals via wired and/or wireless analogue and digital networks; telecommunications using platforms and portals on the Internet; providing access to computer databases; providing data to mobile phones.

Class 41: Broadcast entertainment, particularly radio and television entertainment; compilation of radio and television programmes; production of film, audio, video and television; publishing and distribution of electronic publications; publishing and distribution of printed materials; organisation of competitions; organisation and realisation of concert, theatre, sports and entertainment events as well as of conferences, meetings, seminars, courses, exhibitions for cultural or educational purposes, and cultural, educational and entertainment presentations; information on events; religious education.

Class 45: Film, television and video licensing; grant of licenses to intellectual property rights; management of intellectual property and copyrights; organisation of religious events.

The contested goods are the following:

Class 3: Facial cleansers; washing-up liquids; leather polishes; polishing stones; essential oils; cosmetics; dentifrices; incense; cosmetics for animals; aromatics.

Class 5: Ginseng for medicinal use; dietetic substances adapted for medical use; food for babies; dog washes; air purifying preparations; dietary supplements; diapers for pets; herbal medicine; belts for sanitary napkins [towels]; dental lacquer.

Class 10: Thermometers for medical purposes; dental apparatus; feeding bottles; spoons for administering medicine; galvanic therapeutic appliances; hair prostheses; orthopaedic articles; suture materials; babies' pacifiers [teats]; condoms.

Class 14: Precious metals, unwrought or semi-wrought; jade; jewellery; bracelets [jewellery, jewelry (am.)]; wristwatches; jewellery cases [caskets]; necklaces [jewellery, jewelry (am.)]; agates; ornaments [jewellery, jewelry (am.)]; platinum [metal].

Class 20: Furniture; mattresses; furniture fittings, not of metal; bedding, except linen; cushions; pillows; bolsters; inflatable pillows; bamboo blinds; horn, unworked or semi-worked.

Class 24: Shrouds; non-woven fabric; wall hangings of textile; woolen blankets; bed linen; place mats, not of paper; coverings (furniture -) of textile; banners; face cloths of towelling; towels of textile.

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

The term ‘particularly’ and ‘such as’, used in the opponent’s list of goods and services, indicates that the specific goods and 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

The contested goods are mainly toiletries, cleaning preparations, cosmetics, medical and veterinary preparations and articles, dietetic preparations, medical apparatus and instruments, precious metals, jewellery, furniture, beddings, textile and household linen whereas the opponent’s earlier goods and services are recorded data carriers, electronic publications, telecommunication services, entertainment, production and publication services and legal services. The contested goods are dissimilar to any of the opponent’s goods and services since, as just explained, they have a different nature. They also have different purposes and different method of use. They are not complementary nor in competition. Finally, they are not provided through the same undertakings.

The opponent argues that the contested shrouds are similar to some of the earlier services rendered in the religious field, such as the organisation of religious events, since shrouds can be used in the preparation of funerals. Nevertheless, it must be noted that the nature of goods and services is, per sé, different since goods are tangible and services are intangible. Moreover, their ultimate purpose is different since shrouds are meant to wrap bodies whereas the purpose of organizing a religious event is to reveal, teach or transmit religious information. As a matter of fact, the shrouds and the organisation of religious events have different methods of use and are neither complementary nor in competition. Finally, they are normally not provided by the same undertaking.  Consequently, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on this ground.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above-mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Italy, Germany, United Kingdom, Spain and France.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 27/04/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 38: Broadcasting of radio broadcasts and programmes, particularly sound and television broadcasts and programmes; broadcast on satellite and cable television; transmission of TV, radio and telecommunications signals via wired and/or wireless analogue and digital networks; telecommunications using platforms and portals on the Internet; providing access to computer databases.

 

Class 41: Broadcast entertainment, particularly radio and television entertainment; compilation of radio and television programmes; production of film, audio, video and television; publishing and distribution of electronic publications; publishing and distribution of printed materials; organisation of competitions; organisation and realisation of concert, theatre, sports and entertainment events as well as of conferences, meetings, seminars, courses, exhibitions for cultural or educational purposes, and cultural, educational and entertainment presentations; information on events; religious education.        

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 22/12/2016 the opponent submitted the following evidence:

• An affidavit dated 21st December 2016, signed by Gert-Joachim Hetzel, the managing director of Radio Santec GmbH stating that the TV station, Sophia TV, is reaching about 294 million homes in Europe and that it can also be broadcasted through the German TV station ‘Die Neue Zeit TV’, through the TV station ‘TV Sender Neu Jerusalem’ and through the website www.radio-santec.com. It also mentions that a brochure of the Sophia TV program is sent to approximately 1 800 subscribers per month. An electronic version of the brochure is downloaded by approximately 3 000 users per month. Furthermore, Mr Hetzel indicates that the Sophia TV is broadcasted by around 550 radio stations and 650 TV stations. Finally, EUR 105 000 were spent for advertising purposes during 2015.

• An undated extract from Radio Santec website. Although it is not very legible it can still be read that Sophia TV is broadcasted in several countries and is available in several languages.

• An undated table showing the number of users that have accessed to the Radio Santec website during 2016 is also attached to the affidavit. The graphic enclosed is illegible.

The Opposition Division finds that even though the evidence submitted by the opponent is acceptable, it is insufficient as it does not demonstrate that the earlier trade mark acquired a reputation.

Despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark. The affidavit only states that EUR 105 000 were spent for advertising purposes during the year 2015. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public since it exclusively comes from the opponent and it is not corroborated by an external and independent source. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

2. Conclusion

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and 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

Benoit VLEMINCQ

Sandra IBAÑEZ

Adriana VAN ROODEN

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.