OPPOSITION DIVISION

OPPOSITION No B 2 833 302

Editoriale Domus S.p.A., Via Gianni Mazzocchi, 1/3, 20089 Rozzano (Milan), Italy

(opponent), represented by Gianluca De Cristofaro, Via della Moscova, 18, 20121

Milan, Italy (professional representative)

a g a i n s t

The Spanish Ratpack S.L., C/ La Granja 15 Edif. B Planta Baja, 28108 Madrid,

Spain (applicant), represented by Bermejo & Jacobsen Patentes-Marcas S.L., Av.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade

mark application No 15 814 891 for the word mark DOMUS. The opposition is based

on European Union trade mark registration No 11 319 076 for the figurative mark

. The opponent invoked Article 8(1)(b) EUTMR.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

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

Decision on Opposition No B 2 833 302 page: 2 of 7

goods and services, the distinctiveness of the earlier mark, the distinctive and

dominant elements of the conflicting signs, and the relevant public.

a) The services

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

Class 38: Providing access to an interactive commercial website; broadcasting via

organizing competitions; providing interactive websites enabling users to buy tickets

for events and shows; ticket reservation services for events and entertainment;

education; providing of training; entertainment; sporting and cultural activities.

The contested services are the following:

Class 38: Broadcasting of radio and television programmes; broadcasting services;

cable television broadcasting; satellite transmission; news agencies; news agencies;

telecommunication services.

Class 41: Production of radio and television programmes; organization of shows

(impresario services); production of shows; scriptwriting services; entertainer

services; news reporters services; recording studios; record publishing; rental of

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

The contested broadcasting of radio and television programmes; broadcasting

services; cable television broadcasting; satellite transmission; telecommunication

services are included in the broad category of the opponent’s telecommunications.

Therefore, they are identical.

The contested news agencies; news agencies (the repetition of terms is due to the

translation from the original Spanish list of the terms news agencies; press agencies)

are services consisting in the transmission of news and current affairs information,

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The contested production of radio and television programmes; production of shows

are similar to the opponent´s entertainment, since they share the same purpose,

scriptwriting services consist of writing the text of a play, film, or broadcast, while the

contested recording studios; rental of show scenery; rental of theatre or television

studio lighting apparatus; rental of audio equipment; rental of cinematographic

apparatus and accessories, music composition services; orchestra services are

services that are necessary for the production of shows or programmes and as such

The contested record publishing is included in the broad category of the opponent’s

publishing. Therefore, they are identical.

Entertainment is identically contained in both lists of services.

The contested publication of texts (other than publicity texts) overlaps with the

opponent’s publication, including via fixed or mobile electronic and/or telephonic

communications platforms or networks of any kind, of newspapers, magazines,

books and printed matter in general. Therefore, they are identical.

The contested news reporters services are similar to the opponent’s publication,

including via fixed or mobile electronic and/or telephonic communications platforms

or networks of any kind, of newspapers, magazines, books and printed matter in

b) Relevant public — degree of attention

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 or similar are mostly directed

at the public at large, except for the scriptwriting services; recording studios; rental of

show scenery; rental of theatre or television studio lighting apparatus; rental of audio

equipment; rental of cinematographic apparatus and accessories, music composition

services; orchestra services, which are specialised services directed at business

customers with specific professional knowledge or expertise, namely television

producers or directors.

The fact that the relevant public consists of business customers for part of the

scenery; rental of theatre or television studio lighting apparatus; rental of audio

services; orchestra services, these services are habitually and systematically

Decision on Opposition No B 2 833 302 page: 4 of 7

warrant more than an average degree of attention from the professional public. The

degree of attention of the public at large will also be average.

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 mark consists of the word “DOMUS” and the contested sign also contains

“DOMUS” as its first element. “DOMUS” has no meaning in any of the languages

spoken in the relevant territory. However, the word “DOMUS” is a Latin word meaning

"house". This meaning will be perceived by some consumers in the relevant territory,

such as professionals across the EU who have regular contact with Latin words (e.g.

doctors, lawyers, legal academics, linguists, historians, etc.) as well as at least some

Italian consumers due to the well-known Italian archaeological sites of Roman or

element “DOMUS” is the most dominant and eye-catching element of the sign due to

its central position and size compared with the words “SURVIVING MARS”, which

are written in very small letters.

The words “SURVIVING MARS” will be understood by the English-speaking part of

the public as referring to continuing to live or exist, especially in spite of danger or

hardship, on the planet Mars. These words, both for the part of the public that will

understand their meaning in English and the part of the public for whom they have no

meaning, are also distinctive since they are meaningless in relation to the services.

Regarding the figurative elements of the contested sign, when signs consist of both

verbal and figurative components, in principle, the verbal component of the sign

services.

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Visually, the earlier mark and the distinctive and dominant element “DOMUS” of the

figurative elements of the contested sign, as described above. Bearing in mind the

foregoing assessment concerning the distinctive and dominant components of the

signs, it must be concluded that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables /do-mus/. The signs

concerning the distinctive and dominant components of the signs, and the fact that it

content conveyed by the marks. For at least part of the public, the signs are

conceptually similar to an average degree, since the shared element “DOMUS”

conveys the concept of the Latin word meaning "house". The signs differ in the

additional concepts present in the contested sign which, however, have a lesser

impact due to their small size in the case of the words “SURVIVING MARS” and their

condition of background to the dominant element “DOMUS” in the case of the brown

rectangular label depicting the surface of a planet viewed from space. For the part of

the public that considers the element “DOMUS” of the contested sign meaningless,

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.

in the global assessment of likelihood of confusion.

distinctiveness “since it does not convey any particular meaning to the average

consumer and does not have any relation to the products for which it has been

registered”. 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.

e) Global assessment, other arguments and conclusion

relevant factors and, in particular, a similarity between the marks and between the

services may be offset by a greater degree of similarity between the marks and vice

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The services are partly identical and partly similar. The distinctiveness of the earlier

The signs are visually similar to an average degree, aurally similar to a high degree

and, for part of the public, conceptually similar to an average degree. For the rest of

the public, the signs are not conceptually similar. The similarities lie in the distinctive

element “DOMUS” of the contested sign, which is visually clearly perceptible as an

independent element, and which is the dominant element of the contested sign. All

sufficient to counterbalance the similarities and to safely distinguish between the

In addition, 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, when

encountering the marks at issue, it is highly conceivable that the relevant consumer

will perceive the contested mark as a sub-brand, a variation of the earlier mark,

configured in a different way according to the type of services that it designates

(23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of

confusion on the part of the public and therefore the opposition is well-founded on the

basis of the opponent’s European Union trade mark registration No 11 319 076.

According to Article 109(1) EUTMR, the losing party in opposition proceedings must

bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the

costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former

Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the

costs to be paid to the opponent are the opposition fee and the costs of

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

Decision on Opposition No B 2 833 302 page: 7 of 7

According to Article 67 EUTMR, any party adversely affected by this decision has a

right to appeal against this decision. According to Article 68 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

filed within one month of the date of notification of this fixation of costs and will be

deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)

EUTMR) has been paid.