OPPOSITION No B 2 663 345

Clear Channel España, s.l.u., C/ Arturo Soria 336 Planta-1, 28033 Madrid, Spain (opponent), represented by Aguilar I Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative).

a g a i n s t

Shenzhen Next Star Technology Co. Ltd., 8th Floor, Yongfeng Complex Building, Xinhu Rd. and Laodong Rd. intersection, Xixiang Street, Bao'an, Shenzhen, People's Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center VERTAS Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 24/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 663 345 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 14 764 187 namely against some of the goods in Classes 9 and all the services in Class 35. The opposition is based on Spanish trade mark registration No 2 799 058. 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.

1. The goods and services

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

Class 35:        Advertising; business management; business administration; office functions.

The contested goods and services are the following:

Class 9:        Electronic advertising displays.

Class 35:        Advertising; import-export agencies; rental of advertising space; on-line advertising on a computer network; layout services for advertising purposes; television advertising; design of advertising materials; procurement services for others [purchasing goods and services for other businesses]; planning and conducting of trade fairs, exhibitions and presentations for commercial or advertising purposes.

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 9

The contested electronic advertising displays are dissimilar to the opponent’s services in Class 35. Even though the contested goods can be used as a medium for disseminating the opponent’s services they are fundamentally different in nature and purpose from the contested goods. They also differ in distribution channels, providers and relevant public.

Contested services in Class 35

Advertising are identically contained in both lists of services.

The contested rental of advertising space; on-line advertising on a computer network; layout services for advertising purposes; television advertising; design of advertising materials are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested import-export agencies are similar to the opponent’s business management. These services target the same public and share the same distribution channels. The services can also be in competition.

The contested procurement services for others [purchasing goods and services for other businesses] are similar to a low degree to the opponent’s business management which are services intended to help companies manage their business. These services target the same public and can have the same origin.

The contested planning and conducting of trade fairs, exhibitions and presentations for commercial or advertising purposes are similar to a low degree to the opponent’s advertising since they are both aimed at promoting the launch and/or sale of a company’s products/services, and may target the same undertaking seeking help with the promotion of their products/services.

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 or similar to various degrees are directed at business customers with specific professional knowledge or expertise, such as companies seeking assistance in how to be successful, take advantage of business opportunities or promote the launch or the sale of their goods and services (e.g. advertisement services in Class 35).

Due to the degree of sophistication and the cost of some of the business-related services, their infrequent purchase and the serious and long-term impact they may have on the purchaser’s business, the relevant public’s degree of attention in relation to them is considered higher than average.

3. The signs

PREMIUM MADRID
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 mark is a word mark consisting of two verbal elements, ‘PREMIUM’ and ‘MADRID’.

The contested mark is a figurative mark with the verbal element ‘ipremium’ on a black background. The first letter, ‘i’, is in orange colour and whilst noticeable it is hardly legible as a separate letter considering its stylisation and placement close to the letter ‘p’ giving the impression that the mark consist of the verbal element ‘premium’ instead of ‘ipremium’. This is reinforced by the fact that the rest of the letters in the verbal element are in white. The tittle over the second ‘i’ is also in orange colour and looks like a tilted diamond.

The word ‘PREMIUM’, present in both signs, will be understood in the relevant territory, because it is often used in commerce to indicate a higher level of quality. Consequently, as the relevant public is used to perceiving this word as a laudatory term indicating that the goods and services in question are excellent or of a superior quality, the impact of this element is limited (22/05/2012, T-60/11, Suisse Premium, EU:T:2012:252, §§ 46, 48 and 49; see also decision of 14/11/2016, R 1310/2015-2, Csíki Sör / CIUC PREMIUM et al., § 49 and § 71). Furthermore, referring to the widespread use of the word ‘PREMIUM’, in particular in relation to foodstuffs, to describe the qualities of the goods, the Court rejected the claim that this word would not be understood by the non-English-speaking consumers in the European Union (§ 48 and § 49).

The element ‘MADRID’ in the contested sign will also be understood by the relevant public as the capital city of Spain. This element may only give an indication as to where the services are offered or where the opponent has its business and is therefore weak and has a limited impact on the comparison.

Visually, the signs coincide in the element ‘PREMIUM’, which nevertheless is of limited distinctiveness. They differ in the remaining elements of the signs, namely, the figurative elements of the contested sign and the word ‘MADRID’, which is weak, of the earlier mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the word ‛PREMIUM’, present in both signs, although, the impact of this coincidence on the consumers is limited given the limited distinctiveness of this element. The pronunciation differs in the sound of the word ‛MADRID’ of the earlier mark, which has no counterpart in the contested sign. For the consumers perceiving the figurative element of the contested sign as a stylised letter ‘i’, the pronunciation also differs in the sound of this letter. Consequently, the signs are aurally similar at most to a low degree as the coincidence in the sound of the word ‘PREMIUM’ cannot be given much weight because of its laudatory meaning.

Conceptually, for the part of the public that only see the word ‘PREMIUM’, commonly used to indicate that something is of superior quality, in the contested sign the signs are conceptually similar to a low degree as the signs will be associated with a similar meaning although conveyed by the element which cannot be given much weight. The word ‘MADRID’ in the earlier sign will give the concept as explained above, however it will not change the overall impression of both marks that is indicating a superior quality of the relevant services.

A mere combination of simple geometric forms in the contested sign does not convey any meaning. However, if seen as a stylized representation of the letter ‘i’, this element will be perceived with the concept of this letter of the alphabet.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of services in question, namely in Class 35.

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 of art. 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 a 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 and similar to various degrees and partly dissimilar. Furthermore, the degree of attention is considered to be higher than average. The signs are visually, aurally and conceptually similar only to a low degree. These similarities result from the coincidence in the word ‘PREMIUM’ which is of limited distinctiveness. This word is widely used for marketing purposes. For this reason, the consumers, who are used to seeing this laudatory word on products or in regards to services will focus their attention on other elements of the signs to distinguish the services of one undertaking from those of the other.  

Therefore, the presence on the market of the signs in question is not likely to confuse the consumers only because they both contain the word ‘PREMIUM’ which is widely exploited in commerce for marketing purposes and has a limited distinctive character. The marks seen as a whole, together with their other elements, do not create sufficient impression of similarity between them to cause confusion.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, 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

Boyana NAYDENOVA

Benjamin Erik WINSNER

Martina GALLE

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.