OPPOSITION No B 2 712 613

Mediaproduccion, S.L.U, Avda. Diagonal 177 – 183, 15a planta ‘Edificio Imagina’, 08018, Barcelona, Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046, Madrid, Spain (professional representative)

a g a i n s t

MediaArea.net, Chemin du Vernay, 73190, Curienne, France (holder), represented by Josquin Louvier, 25 Rue Pierre Semard, 38000, Grenoble, France (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 712 613 is upheld for all the contested goods and services.

2.        International registration No 1 295 019 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 295 019 ‘MediaConch’. The opposition is based on European Union trade mark registration No 13 063 599 . 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 goods and services on which the opposition is based are the following:

Class 9:         Computer software; Software; Data communications hardware; Computers and computer hardware; Computer hardware; Disk drives for computers; Computer hardware for use in computer-assisted software engineering; Network access server hardware; Computer software applications, downloadable.

Class 35:        Rental of advertising time on communication media; Radio and television advertising; Publicity and sales promotion services; Advertising, including on-line advertising on a computer network; Promotion [advertising] of business; Exhibitions for commercial or advertising purposes; Advertising via electronic media and specifically the internet; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Provision of space on web-sites for advertising goods and services; Exhibitions for commercial or advertising purposes.

Class 42:        Development of hardware for digital signal processing; Development of hardware for audio and video operators; Design of hardware for multimedia data storing and recalling; Development of hardware for multimedia data storing and recalling; Development of hardware for compression and decompression of multimedia contents; Consultancy in the field of computers; Design of computer hardware; Computer hardware development; Computer hardware development; Advice and consultancy in relation to computer networking applications; Updating of software; Configuration of computer software; Developing computer software; Software engineering; Design of software; Computer software consultancy; Software creation; Installation of computer software; Maintenance of software; Design of software; Configuration of computer software; Installation and maintenance of computer programs; Maintenance of and updating of computer software; Computer hardware and software consultancy.

The contested goods and services are the following:

Class 9:         Software for computer file analysis.

Class 38:         Provision of access to databases containing data obtained from software for computer file analysis.

Class 42:         Design and development of computers and software; research and development of new products for others; technical project studies; development (design), installation, maintenance, updating or rental of software; computer programming; computer system analysis; design of computer systems; consultancy in the design and development of computers; software as a service (SaaS); cloud computing; information technology (IT) consultancy; electronic data storage; all the aforesaid services intended for software for computer file analysis.

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 software for computer file analysis is included in the broad category of the opponent’s computer software. Therefore, they are identical.

Contested services in Class 38

The contested provision of access to databases containing data obtained from software for computer file analysis are services aimed at allowing people to access data obtained from software. Whilst they differ in nature to the opponent’s computer software and hardware since one are services and the other software and hardware, they can be used for the same purpose (i.e. to have access to data via computer databases, websites and portals) and can have the same distribution channels. They can also target the same consumers and can be complementary, and they frequently come from the same companies. Therefore, they are similar.

Contested services in Class 42

The contested design of computers and software; all the aforesaid services intended for software for computer file analysis are included in the broad categories of the opponent’s design of computer hardware; design of software respectively. Therefore, they are identical.

The contested development of computers and software; all the aforesaid services intended for software for computer file analysis overlap with the broad categories of the opponent’s development of hardware for multimedia data storing and recalling; developing computer software respectively. Therefore, they are identical.

The contested development of new products for others; development (design), installation, maintenance, updating of software; all the aforesaid services intended for software for computer file analysis overlap with and are therefore considered identical to the opponent’s developing computer software; installation of computer software; maintenance of software.

The contested computer programming; all the aforesaid services intended for software for computer file analysis overlap with and are therefore considered to be identical to the opponent’s installation and maintenance of computer programs.

The contested design of computer systems; all the aforesaid services intended for software for computer file analysis are design services for computer systems which could include computer software and hardware. Therefore, they are included in the opponent’s broader design of computer hardware; design of software. Therefore, they are considered to be identical.

The contested consultancy in the design and development of computers; all the aforesaid services intended for software for computer file analysis are included in the broad category of the opponent’s consultancy in the field of computers. Therefore, they are identical.

The contested information technology (IT) consultancy; all the aforesaid services intended for software for computer file analysis are considered identical to the opponent’s broader computer hardware and software consultancy.

The contested research of new products for others; technical project studies; all the aforesaid services intended for software for computer file analysis involve the research and assessment of technical aspects of any given subject in order to assess viability and sufficiency of the given subject. Since researching and assessing technical feasibility involves an evaluation of, for example, computer software and hardware (and the design, development, installation and maintenance thereof) there is a connection between the services. This is particularly the case in IT projects since the purpose of which is to design IT tools that are customised to the needs of a particular organisation. Generally, the research and technical studies precede the development and project implementation stages, such as programming, analysis and design of computer systems plus the consulting related thereto. Further, those who offer the research of new products for others and technical project studies may also then offer the services to implement, monitor and manage the proposals. Therefore, the abovementioned contested services are considered to be similar to the opponent’s computer hardware development.

The contested rental of software; computer system analysis; all the aforesaid services intended for software for computer file analysis are considered to be similar to the opponent’s updating, design, installation and maintenance of software and computer software consultancy since they belong to the same sectors, namely IT, and so they target the same public. They have the same distribution channels and are provided by the same undertakings. They are similar.

The contested software as a service (SaaS); all the aforesaid services intended for software for computer file analysis is a software licensing and delivery model in which software is licensed on a subscription basis and is centrally hosted. The aforementioned services cannot be rendered without the opponent’s design and development of computer hardware and software. They are complimentary to and they coincide in nature, purpose and provide design and development of computer hardware and software. They are similar.

The contested cloud computing; all the aforesaid services intended for software for computer file analysis are software services for the hosting of information and data online. Therefore, they coincide with providers (undertakings within the IT sector), their nature, purpose and target the same relevant public as the opponent’s software engineering. They are similar.

The contested electronic data storage; all the aforesaid services intended for software for computer file analysis are similar to the opponent’s development of hardware for multimedia data storing and recalling. They coincide in nature (i.e. the storage of data), purpose, producers and there is a degree of competition between them.

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 considered to be identical and similar are specialised and directed at business customers with specific professional knowledge or expertise. The degree of attention is considered to be high.

3. The signs

	MediaConch
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, for reasons related to the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier trade mark is a figurative mark which consists of ‘MEDIACOACH’ on a black rectangular background with part of the top right hand corner in white. ‘MEDIA’ is in white and ‘COACH’ in red. The rectangular background (with the corner part in white) has little (if any) stylisation and is considered to be merely decorative. To most members of the relevant public, the word ‘MEDIACOACH’ would be an invented word with no meaning. To the remaining members of the relevant public, particularly since ‘MEDIA’ is in a different colour font, it would be recognised and understood as, amongst many other things, meaning ‘half’ or ‘medium’. The word ‘COACH’ does not have a meaning in Spanish. However, it may be understood by those that have a grasp of English, when used with ‘Media’ as being ‘an instructor or trainer’. The words are considered to be the distinctive elements of the mark, regardless of whether they would be understood or not.

The contested sign is a word mark, ‘MediaConch’. It is borne in mind that use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate. Therefore, the relevant public would merely view the mark as an invented word with no meaning. Although signs cannot be artificially dissected, it must be taken into account that when a sign contains sequences of letters that constitute words, prefixes or suffixes that are known for the public perceiving it, it is likely that they will mentally divide the mark into the recognized terms or familiar parts forming it (e.g. prefixes or suffixes). Therefore, it cannot be excluded that at least part of the relevant public will distinguish at the beginning of the sign the word ‘Media’ which is meaningful in Spanish, as explained above. Regardless of whether the word composing the contested mark or its part would be understood or not, these verbal elements are distinctive in relation to the relevant goods and services.

Visually, the signs have the same length and nine letters out of ten, which are all placed in the same position. They coincide in the sequence of letters ‘MEDIACO*CH’ and differ insofar that the eighth letter is an ‘A’ in the earlier trade mark and an ‘N’ in the contested sign. They also differ in that the earlier trade mark is depicted in colours and has a rectangular background though this is considered to be decorative and has little (if any) distinctive character.

Therefore, the signs are considered to be visually similar to a high degree.

Aurally, in Spanish language the pronunciation of the signs coincides in the sound of the letters ‘MEDIACO*CH’ present in both signs. The pronunciation differs in the ‘A’ sound in the earlier sign and the ‘N’ sound of the contested sign. Further they have almost the same rhythm and intonation.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Some members of the relevant public will recognise and understand the word ‘MEDIA’ in the respective marks so the marks share this concept. Therefore, for this part of the relevant public the marks are conceptually similar to an average degree. However, for the remaining members of the relevant public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

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. 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.

e)         Global assessment, other arguments and conclusion

All of the goods are considered to be identical. Some of the respective services are identical and the rest are similar. The signs are visually and aurally similar to a high degree. To those members of the relevant public that recognise ‘MEDIA’ in the respective marks, they share this concept. For the remaining part of the public, a conceptual comparison is not possible.

The earlier trade mark has a normal degree of distinctive character. With regard to the level of attention, this has been pitched as high and so the chances of confusion are less. However, even for consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In view of the overall high degree of visual and aural similarity between the respective marks, and even where a conceptual comparison is not possible, it is considered that the difference between the word elements of the marks being only one letter, is not sufficient to differentiate the marks. Therefore, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. This is even the case when taking into account there being higher level of attention paid upon purchasing the relevant goods and services. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 063 599. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 holder 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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.

The Opposition Division

Birgit FILTENBORG

Mark KING

Zuzanna STOJKOWICZ

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.