OPPOSITION No B 2 452 798
Independent Film and Television Alliance, 10850 Wilshire Blvd, 9th Floor, Los Angeles, California 90024, United States of America (opponent), represented by Jeffrey Parker and Company, The Grange, Hinderclay, Suffolk IP22 1HX, United Kingdom (professional representative)
a g a i n s t
American Franchise Marketing Limited, 3rd Floor, 207 Regent Street, London W1B 3HH, United Kingdom (applicant).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 452 798 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 224 068 ‘AFM’, namely:
Class 9: Downloadable electronic publications in the nature of electronic magazines, guides and newsletters in the field of business franchising, business opportunities and investments; computer application software for mobile devices, namely, software for downloading electronic publications, blogs, pod casts and web casts.
Class 25: Clothing; footwear; headgear.
Class 38: Radio and television broadcasting services concerning franchising, franchisors, franchisees, licenses and similar; transmission via worldwide computer networks of information on franchising, franchisors, franchisees, licenses and similar.
The opposition is based on the following earlier rights:
(i) European Union trade mark registration No 438 226 ‘AFM’ for the services in Class 35, namely arranging an annual trade show for the motion picture industry, in relation to which the opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR;
(ii) earlier well-known mark ‘AFM’ for goods in Class 16, namely printed publications promoting the licencing and distribution of motion pictures; arranging an annual trade show for the motion picture industry, and services in Class 41, namely arranging an annual trade show for the motion picture industry, in relation to which the opponent invoked Article 8(1)(a) and (b) EUTMR;
and
(iii) the non-registered trade mark ‘AFM’ used in the course of trade of more than mere local significance in the Netherlands, Estonia, the Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for marketing services; entertainment services; exhibition services; provision of entertainment information through a website; business advice and consultancy; representative services; organising conferences; publicity; information services; franchising and information services relating thereto; electronic publications; radio and television information and marketing, in relation to which the opponent invoked Article 8(4) EUTMR.
I PRELIMINARY REMARK
The major part of the opponent’s submissions concern the alleged bad-faith behaviour of the applicant. It should be noted that, in the context of Article 8 EUTMR, bad faith cannot be a basis for the opposition. The motives and earlier conduct of the applicant do not affect the scope of the tasks to be performed by the Opposition Division in examining the grounds laid down in Article 8 EUTMR and invoked by the opponent in the current case as the basis of the opposition. Therefore, this point raised by the opponent will not be addressed further in the examination.
II ASSESSMENT OF THE SUBMITTED EVIDENCE
The outcome of the opposition as far as it is based on European Union trade mark registration No 438 226 ‘AFM’ on the grounds of Article 8(1)(b) EUTMR and Article 8(5) EUTMR and on the earlier well-known mark ‘AFM’ on the grounds of Article 8(1)(b) EUTMR depends to a great extent on the conclusions in relation to the evidence submitted by the opponent in order to prove the well-known character and the reputation of the earlier marks. Therefore, in this section, the Opposition Division will first set out the submitted evidence in its entirety and will determine whether the earlier allegedly well-known mark qualifies as such and whether the earlier EUTM acquired reputation.
Such an approach is justified by the fact that the two earlier signs are identical and that there is no substantial difference in the standards applied to assessing the well-known character and/or reputation of a sign.
Although the expressions ‘well-known’ (a traditional expression used in Article 6bis of the Paris Convention) and ‘reputation’ denote distinct legal concepts, there is a substantial overlap between them, as shown by a comparison between the way well-known marks are defined in the WIPO Recommendations and the way reputation was described by the Court in its judgment of 14/09/1999, C-375/97, Chevy, EU:C:1999:408 (which concluded that the different terminology is merely a ‘…nuance, which does not entail any real contradiction …’, § 22).
In practical terms, the threshold for establishing whether a trade mark is well known or enjoys reputation is usually the same. Therefore, it will not be unusual for a mark that has acquired well-known character to have also reached the threshold laid down by the Court in its judgment of 14/09/1999, C-375/97, Chevy, EU:C:1999:408, for marks with reputation, given that, in both cases, the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public, and that the thresholds required for each case are expressed in quite similar ways (‘known or well-known at the relevant sector of the public’ for well-known marks and ‘known by a significant part of the relevant public’ as regards marks with reputation).
On 10/06/2016, the opponent submitted the following evidence:
Exhibit A A declaration, dated 11/03/2015, by Susan Cleary, Vice President and General Counsel of the opponent (IFTA) – an association that organises a motion picture trade event, American Film Market (AFM), where licensing agreements for motion pictures are negotiated. Ms Cleary states that AFM has received online registrations via its website from clients from every EU Member State for the past five years. Enclosed with the declaration are the following exhibits:
Exhibit 1 A list of IFTA member companies based in the EU.
Exhibits 2-5 Certificates of registration for the trade mark ‘AFM’ in the United States and in the EU.
Exhibits 6-7 A printout from the AFM website and a Google Analytics report related to it showing tens of thousands of visits to the website from within the EU in the period from June 2010 to October 2014.
Exhibit 8 Printouts from websites of exhibitors (at AFM) showing the mark AFM in connection with the licensing of their films.
Exhibits 9-13 Directories of exhibitors at the European Film Market 2014 (Berlin) and the Marché du Film (Cannes), in which the opponent features and which show registration of AFM at Marché du Film in the years 2010 to 2014; guide listings for MIPCOM (Cannes) and MIPTV (Cannes), which include information that the opponent organises the American Film Market, held annually in Santa Monica, California.
Exhibit 14 Numerous invoices addressed to European exhibitors for participation at AFM in 2014.
Exhibit 15 Advertisements for AFM inserted in the Cannes Directories.
| Exhibits 16 and 18 |
Copies of posters including the mark AFM or ‘The American Film Market’ from 1991 to 2011 and delivery notes for its sales in the Netherlands, the United Kingdom and France in 1999, 2000 and 2002. |
Exhibit 17 Photographs of AFM stands at, allegedly, Cannes in 2006, 2010 and 2012.
Exhibit 19 A licence agreement between the opponent and a Delaware company.
Exhibit 20 Royalty statements for sales of books; the EU is included in ‘the rest of the world’, where 53 paperback versions and 10 e-books were sold. From the enclosed e-mail correspondence it is clear that ‘the rest of the world’ comprises every country other than the USA and the opponent does not know if any books were sold in any EU Member State.
Exhibit B Decision of the Cancellation Division in Case C-9847, dated 28/10/2015, concerning a revocation action filed by the applicant in the current proceedings.
Exhibit C Cease and desist letter sent from IFTA to Mr Gleissner and Bigfoot, and related correspondence concerning the transfer of rights.
Exhibit D A EUIPO revocation application and a Benelux registration for the Independent Film and Television Alliance.
Exhibit E Provisional refusal of the registration of the trade mark application for the IFTA.
Exhibit F The EU Transparency Register and excerpts from IFTA public filings.
Exhibit G Gleissner affiliated companies.
Exhibits B-G are obviously filed in support of the opponent’s arguments regarding the applicant acting in bad faith. They give no information about the degree of recognition of the earlier mark among the relevant public at all. The same applies to Exhibits 2-5. The mere fact of registration does not give any indication as regards the degree of recognition of the earlier mark among the relevant public.
The remaining items of evidence demonstrate the opponent’s efforts to advertise in the EU a trade show for the motion picture industry that takes place in California, USA. The show is advertised at related events held in Europe, such as the Marché du Film in Cannes, France, or the European Film Market in Berlin, Germany. It is evident that a number of participants, who pay for services rendered within the event, are from various European countries (Sweden, Spain, Portugal, Hungary, Germany, France, Austria, Romania, the United Kingdom, the Netherlands). It is clear that the opponent is making successful efforts to create and maintain a market share for its services in the European territory. By participating in events similar to its own and advertising its own film market to the relevant European consumers, it is reaching the European market with the intention to gain and maintain clientele from the EU. Although the event takes place in the USA, the opponent competes for the relevant European public with organisers of other similar events and it is creating an outlet for its services among European consumers. Therefore, the opponent has clearly demonstrated use of its earlier mark for the services covered in the European Union.
However, there is no evidence indicating that these efforts and use of the earlier mark led to a degree of recognition of the earlier mark among the relevant public that would allow the Opposition Division to acknowledge its well-known character and/or reputation.
In the absence of any evidence that can clearly prove the extent of recognition among the relevant public, such as a survey on the mark’s recognition, opinion polls or other means of evidence such as sworn or affirmed statements, facts and figures originating from independent sources such as auditors or chambers of commerce, decisions of Courts or administrative bodies, bearing in mind the analysis of the submitted documents as a whole, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark is known by such a significant part of the relevant public that it reaches the quantitative threshold necessary for a finding of well-known character and/or reputation.
III SUBSTANTIATION
1. Earlier well-known mark ‘AFM’ and earlier trade mark with reputation ‘AFM’
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 well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory — according to Rule 19(2)(b) EUTMIR.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.
Based on the above provisions and taking into account the conclusions reached after examining the submitted evidence, namely that the well-known character and/or reputation of the earlier sign ‘AFM’ have not been proven, and also considering that the opponent did not put forward evidence or arguments showing that 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, the opposition is rejected at this stage of the examination as far as it is based on the following rights:
(i) European Union trade mark registration No 438 226 ‘AFM’ for the services in Class 35, namely arranging an annual trade show for the motion picture industry, in relation to which the opponent invoked Article 8(5) EUTMR;
(ii) earlier well-known mark ‘AFM’ for goods in Class 16 and services in Class 41, in relation to which the opponent invoked Article 8(1)(a) and (b) EUTMR.
2. Earlier non-registered trade mark ‘AFM’
According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.
Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.
As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.
Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.
In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the non-registered trade mark ‘AFM’ in the Netherlands, Estonia, the Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent. That is, the opponent did not provide any evidence regarding the acquisition, continued existence and scope of protection of the earlier non-registered right in any of the Member States mentioned above.
Therefore, the opposition has to be rejected as unfounded also as far as it is based on the non-registered trade mark ‘AFM’ used in the course of trade of more than mere local significance in the Netherlands, Estonia, the Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland in relation to which the opponent invoked Article 8(4) EUTMR.
The examination proceeds in relation to European Union trade mark registration No 438 226 ‘AFM’ for the services in Class 35, namely arranging an annual trade show for the motion picture industry, in relation to which the opponent invoked Article 8(1)(a) and (b) EUTMR.
IV DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.
It is obvious that the goods and services covered by both marks are not identical. According to Article 8(1)(a) EUTMR, the identity of the goods or services is a condition for its applicability. Since one of the necessary conditions of Article 8(1)(a) EUTMR is not fulfilled, the opposition must be rejected as far as it is based on this ground.
V 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 services on which the opposition is based are the following:
Class 35: Arranging an annual trade show for the motion picture industry.
The contested goods and services are the following:
Class 9: Downloadable electronic publications in the nature of electronic magazines, guides and newsletters in the field of business franchising, business opportunities and investments; computer application software for mobile devices, namely, software for downloading electronic publications, blogs, pod casts and web casts.
Class 25: Clothing; footwear; headgear.
Class 38: Radio and television broadcasting services concerning franchising, franchisors, franchisees, licenses and similar; transmission via worldwide computer networks of information on franchising, franchisors, franchisees, licenses and similar.
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 opponent’s services are quite specific and precisely specified. They have nothing relevant in common with the contested goods in Classes 9 and 25 according to the criteria referred to above. First, by their nature, goods are dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical (i.e. movables or real estate). Services, however, consist of the provision of intangible activities. From this, it follows that the methods of use of goods and services are inherently dissimilar. Furthermore, nothing suggests that these goods and services are manufactured/provided by the same undertakings or that they have the same distribution channels and the same usual end users. Finally, they are neither complementary nor in competition.
Similar considerations apply to the contested services in Class 38 in relation to the opponent’s services. The services under comparison are substantially different. The services applied for are services that consist essentially of the dissemination of radio and television programmes via worldwide computer networks with a very specific subject, namely franchise and licensing. These are services provided by telecommunication companies with specific technical know-how, as opposed to the opponent’s services, which require different knowledge. The services under comparison are provided by different companies, have different purposes and target different consumers. They are neither complementary nor in competition.
The opponent’s argument about the confusion created as a result of the way the marks are used on the market cannot be upheld. The Opposition Division notes that the services must be compared as they appear in the specifications of the conflicting marks, and not by reference to their alleged actual or intended use.
All in all, the goods and services under comparison are clearly dissimilar.
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.
VI 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
| Liliya YORDANOVA
|
Plamen IVANOV | Judit NÉMETH
|
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.