OPPOSITION No B 2 742 206

Medusa Film S.p.A., Viale Aventino 26, 00153 Rome, Italy (opponent), represented by Carlo Sala, Via Fabio Filzi 27, 20124 Milano, Italy  (professional representative)

a g a i n s t

Elaheh Sütterlin, Gemmingen Straße 24, 75181 Pforzheim, Germany (applicant), represented by Kanzleikooperation Eventlawyers, Friedrichstraße 133, 10117 Berlin, Germany (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 742 206 is partly upheld, namely for the following    contested goods and services in Classes 9, 28, 38 and 41:

Class 9 (in its entirety): Apparatus for recording, transmission or reproduction of sound or images; Magnetic, optical, mechanical and electronic audio, voice, text, cinematographic, image and/or data carriers; sound recording strips; webcams.

Class 28 (in its entirety): Games; Toys, in particular sex toys.

Class 38 (in its entirety): Telecommunications; Live transmissions accessible via home pages on the internet [webcam]; Streaming audio and video material on the Internet; Streaming of video material on the internet; Streaming of data; Telephone services.

Class 41: Entertainment; in particular in the form of pre-recorded sex-oriented messages by telephone; Organisation and conducting of events.

2.        European Union trade mark application No 15 028 161 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponents filed an opposition against some of the goods and services of European Union trade mark application No 15 028 161 (figurative mark:
“”), namely against all the goods and services in Classes 9, 28, 38 and 41 (according to the opponent´s observations accompanying the opposition note, page 1, II. Introduction). The opposition is based on the following earlier Italian trade marks:

1. No 855 328 (figurative mark: “”);
2. No 723 210 (figurative mark: “”);
3. No 830 984 (word mark: “MEDUSA FILM”);
4. No 828 396 (figurative mark: “”),according to the opponent’s observations accompanying the opposition note, page 6, III, ‘Grounds of opposition’.).

The opponents invoked Article 8(1)(b), 8(4) and 8(5) EUTMR, see opponent´s observations together with the filing of the opposition, page 6.

ADMISSIBILITY

According to Rule 15(2)(b) EUTMIR, the notice of opposition must contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

where the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, an indication of its kind or nature, a representation of the earlier right, and an indication of whether this earlier right exists in the whole Union or in one or more Member States, and if so, an indication of the Member States.

According to Rule 17(2) EUTMIR, if the notice of opposition does not clearly identify the earlier mark or the earlier right on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

On 20/07/2016, the opponent filed a notice of opposition against the contested application. However, the opponent failed to include a depiction of the earlier non-registered right and the goods and services on which it was based (including the relevant territory for which it was claimed); therefore, it was not clearly identified in the opponent’s observations.

The opposition must therefore, be rejected as inadmissible, as far as it is based on this earlier right and the related ground of Article 8(4) EUTMR.

SUBSTANTIATION OF EARLIER ITALIAN TRADE MARK No 723 210

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the evidence filed by the opponent consists of a registration certificate from the national database.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because it was not accompanied by a renewal certificate.

On 02/08/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 14/12/2016. The mark was last renewed on 25/01/2005 for 10 years (see certificate dated 22/07/2008). Therefore, the extension of the trade mark ended on 25/01/2015. Another renewal certificate was not submitted.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

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 Italian trade mark registration No 828 396.

1. The goods and services

The goods and services in Classes 9, 28, 38 and 41 on which the opposition is based are the following:

Class 9: Televisions; decoders for television sets; radios; radio recorders; radio transmitters; record players; discs; tapes; cassette players; video tapes and video recorders; optical disc readers; photographic, optical, weighing, measuring and signalling apparatus; television cameras; apparatus for filming and broadcasting television shows.

Class 28: Games and playthings.

Class 38: Services in the communications sector; transmission of radio and television programs; cable transmission of programs.

Class 41: Production of radio and television programs; production of television and cinema films; movie studios; rental of motion pictures and cinematographic cameras; theatre productions; cinemas; production of films, radio and television programs; services provided in the sectors of tuition, education, entertainment and recreation; a service provided in the show and prize competition sectors; organisation of sports competitions and events; services relating to the development and practice of sports; gymnasium services; services of a publishing company, consisting of processing texts and articles for publication; an activity carried out by a recording company; rental of sound recordings; musical and singing events; organization of exhibitions for cultural or educational purposes.

The contested goods and services in Classes 9, 28, 38 and 41 are the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; Magnetic, optical, mechanical and electronic audio, voice, text, cinematographic, image and/or data carriers; sound recording strips; webcams.

Class 28: Games; Toys, in particular sex toys.

Class 38: Telecommunications; Live transmissions accessible via home pages on the internet [webcam]; Streaming audio and video material on the Internet; Streaming of video material on the internet; Streaming of data; Telephone services.

Class 41: Entertainment; in particular in the form of pre-recorded sex-oriented messages by telephone; Providing of training for photographic models, fashion models, presenters, actors and artists; Operation of a modelling and artists' agency, in particular consultancy, support and providing of photographic models, fashion models, presenters, actors and artists; Organisation and conducting of events.

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 ‘in particular’, used in the applicant’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 (see the judgment of 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.

Contested goods in Class 9

The contested Apparatus for recording, transmission or reproduction of sound or images include, as a broader category, the opponent’s Televisions; video recorders. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested webcams are included in the broad category of, or overlap with, the opponent’s apparatus for filming and broadcasting television shows. Therefore, they are identical.

The contested magnetic, optical, mechanical and electronic audio, voice, text, cinematographic, image and/or data carriers; sound recording strips are highly similar to the opponent’s discs, as they have the same purpose. They can coincide in producer, end users and distribution channels. Furthermore, they are in competition.

Contested goods in Class 28

Games; Toys, in particular sex toys are identically contained in both lists of goods (including synonyms).

Contested services in Class 38

The contested Telecommunications; Streaming audio and video material on the Internet; Streaming of video material on the internet; Streaming of data; Telephone services overlap with the opponent’s Services in the communications sector. Therefore, they are identical.

The contested Live transmissions accessible via home pages on the internet [webcam] overlap with the opponent’s transmission of radio and television programs. Therefore, they are identical.

Contested services in Class 41

The contested Entertainment; in particular in the form of pre-recorded sex-oriented messages by telephone overlap with the opponent’s services provided in the sectors of entertainment. Therefore, they are identical.

The contested Organisation and conducting of events overlap with the opponent’s organization of exhibitions for cultural or educational purposes. Therefore, they are identical.

The remaining contested Providing of training for photographic models, fashion models, presenters, actors and artists; Operation of a modelling and artists' agency, in particular consultancy, support and providing of photographic models, fashion models, presenters, actors and artists have different natures and purposes from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods and services come from the same or economically linked undertakings. Therefore, they are dissimilar.

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 a high degree are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, because they are not consumed or claimed on a daily basis and will, therefore, be selected carefully.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

Both signs are figurative marks. The figurative elements of the earlier trade mark consist of a stylised female face with tousled hair, inside a rectangle. Also included in the rectangle is the word ‘MEDUSA’ in upper case letters. The contested trade mark also shows a female face with tousled hair but inside a circle. The three words ‘Medusa Erotic Goddess’ are written over three lines to the right of the circle.

The internationally understood element ‘Erotic’ of the contested sign will be associated with ‘of, relating to, or tending to arouse sexual desire or excitement’ (Oxford Dictionary) and therefore will be understood by the Italian public in this way. Bearing in mind that the relevant goods and services are software, toys and programs, this element is non-distinctive for some of these goods and services, such as magnetic, optical, mechanical and electronic audio, voice, text, cinematographic, image and/or data carriers (Class 9), toys, in particular sex toys (Class 28) and entertainment; in particular in the form of pre-recorded sex-oriented messages by telephone (Class 41).

The word ‘GODDESS’ of the contested sign is not a basic English word and therefore will not be automatically understood. For the relevant public, this element is meaningless and distinctive.

Neither of the signs has any elements that could be considered clearly more dominant than other elements.

When signs consist 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).

Visually, both signs contain a female face with tousled hair (see above), although depicted slightly differently. They also have the word ‘MEDUSA’ in common. The word ‘Erotic’ of the contested sign does not have a significant influence on the visual comparison, because it is non-distinctive for some of the goods and services. The signs differ in the additional word ‘Goddess’ of the contested sign. The signs are visually similar to an above average degree. The degree of similarity is slightly lower in relation to the goods and services for which the word ‘Erotic’ is distinctive.

Aurally, the figurative elements will not be pronounced. The coinciding word ‘MEDUSA’ will be pronounced identically. The word ‘Erotic’ of the contested sign does not have a significant influence on the aural comparison, because it is non-distinctive for some of the goods and services. The signs differ in the additional word ‘Goddess’ of the contested sign. Therefore, the signs have a similar rhythm, pronunciation and intonation. The signs are aurally highly similar. The degree of similarity is slightly lower in relation to the goods and services for which the word ‘Erotic’ is distinctive.

Conceptually, the coinciding word ‘MEDUSA’ will be recognised by the public as having the same meaning in both signs, namely as one of the three gorgons. This is enhanced by the similar figurative elements in the marks, namely a female head with snakes for hair. The word ‘Goddess’ of the contested sign will not be understood and therefore has no influence on the conceptual comparison. The word ‘Erotic’ of the contested sign does not have a significant influence on the conceptual comparison, because it is non-distinctive for some of the goods and services. For those goods and services for which it is distinctive, the degree of similarity resulting from the word ‘MEDUSA’ is reduced. The signs are conceptually similar in relation to the goods and services for which the word ‘Erotic’ is distinctive, and highly similar when ‘Erotic’ is not distinctive.

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 meaning for any of the goods and 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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods and services are partly identical, partly highly similar and partly dissimilar. The signs have visual, aural and conceptual similarities (see above).

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 some of the services are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the visual, aural and conceptual similarities, the average degree of distinctiveness of the earlier trade mark and the identity and high degree of similarity between the goods and services, there is, even taking into account the high degree of attention of a part of the public, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This therefore also applies when the degree of attention is normal.

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/reputation 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 services, 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.

Contrary to the applicant’s opinion, the differences between the signs are not sufficient to distinguish them clearly from each other. They will be regarded as coming from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

The opponent has also based its opposition on earlier trade marks No 1 and 3 (see ‘Reasons’ section above). Since these marks cover the same or a narrower scope of goods and services as the mark already compared, the outcome for these marks cannot be more in favour for the opponent.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

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 abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

•        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

•        it is detrimental to the repute of the earlier mark;

•        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T 60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that consumers will establish a link between the trade marks because of the similarities between them, the opponent did not submit any facts, arguments or evidence that could support the conclusion that 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.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C 375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR.

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 shall 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

Magnus ABRAMSSON

Peter QUAY

Claudia MARTINI

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.