ART WEDNESDAY | Decision 1999021 – Gruner + Jahr GmbH & Co KG v. Max Bergius

OPPOSITION No B 1 999 021

Gruner + Jahr GmbH & Co KG, Am Baumwall 11, 20459 Hamburg, Germany (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft Mbb, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Max Bergius, 8 Quebec Wharf 315 Kingsland Road, London, E8 4DJ, United Kingdom (applicant).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 999 021 is partially upheld, namely for the following contested goods and services:

Class 16: Printed matter; Publications; magazines and periodicals; printed art work; fine art prints; posters; postcards; lithographs; printed tour guides; art catalogues; art exhibition and art gallery guides; books; photographs; instructional and teaching material (except apparatus).

Class 41: Education; providing of training; entertainment; cultural activities; organisation of art and photography exhibitions; organisation of fashion events; educational and training services relating to art and history; art exhibition services; art gallery services; including the provision of the aforesaid services on-line; provision of news, reviews, interviews, listings, recommendations and information relating to art, culture, literature, music, current affairs, photography, film, theatre, and entertainment and cultural activities and events; publication of news, reviews, interviews, listings, recommendations and information relating to art, culture, literature, food, drink, music, current affairs, environmental issues, photography, fashion, film, theatre, and entertainment and cultural activities and events; publishing services; information, advisory and consultancy services relating to the aforesaid.

2. European Union trade mark application No 10 379 139 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 opponent filed an opposition against some of the goods and services of European Union trade mark application No 10 379 139, namely against all the goods and services in Classes 16 and 41. The opposition is based on German trade mark registrations No 994 008 and No 986 217 , non-registered right, work title ‘’. The opponent invoked Article 8(1)(b) and 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

Non-registered right, work title

Claimed in respect of: Magazines, books and website, which deal mainly with both major events, developments and latest trends in the international art scene as well as painting, sculpture and architecture as well as newer genres such as photography, video art and design.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The claim under Article 8(4) has been found admissible according to the guidance given by the Boards of Appeal in their Decision of 3 September 2015 – R 954/2013-1 – EUROart (fig.) / art das Kunstmagazin aus dem Hause Gruner + Jahr (fig.) et al., the respective findings of which are enforced in full also in the present case.

Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 28/10/2011. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Germany prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for Magazines, books and website, which deal mainly with both major events, developments and latest trends in the international art scene as well as painting, sculpture and architecture as well as newer genres such as photography, video art and design.

On 10/10/2016 the opponent filed the following evidence:

Magazine covers, in German, containing the title ‘art’, founding year 1979 and the opponent as publisher. The covers correspond to a high volume of issues from 2010-2011. The sales volumes are between 36118 to 49 795 per each issue. The opponent also includes extracts from its website www.guj.com showing the covers separately, including also product description.
Printouts from the opponent’s online shop showing the covers for issues from 2014-2016.
A table indicating the average circulation per each issue, incl. sales, from 2003-2016.
A table of annual averages of the circulated copies per issue both in Germany and outside of Germany, according to the www.pz-online.de website which belongs to a press cover organisation Verband Deutscher Zeitschriftenverleger referring to the data of IVW, a German association that provides data on dissemination of media.
Company registration details from the Germany company register.
Excerpts from German research and survey institution AWA from 2009-2015 and based on an independent research institute researches.
An affidavit of Mrs Dauletiar indicating data of circulation and market segment situation.

The documents presented show that the place of use is Germany. This can be inferred from the language of the documents, the currency mentioned, and all the research and polling data referred to.

The evidence is mainly dated before the relevant date.

Furthermore, the evidence dated after the relevant date confirms use of the opponent’s sign before the relevant date. This is because the use it refers to is very close in time to the relevant date and is continuous to the previous use.

The evidence shows that the opponent’s sign has been used in the course of trade for magazines, books and website, which deal mainly with both major events, developments and latest trends in the international art scene as well as painting, sculpture and architecture as well as newer genres such as photography, video art and design.

The circulation data provided from different sources and cross checked with the affidavit and visible on the magazine excerpts themselves in the impressum provide sufficient information concerning the commercial volume of use, the length of time of use and the frequency of use. It is clear from the evidence that the opponent’s trade under the sign at issue was of more than mere local significance. The opponent has established to have sold, to a considerable extent and since the early 1980s, a periodical in Germany under the sign ‘ ’ that is issued monthly and deals with the subject area of art. This is clear, in particular, from the front covers of the magazine submitted in conjunction with the excerpts from the database of the Verband Deutscher Zeitschriftenverleger e.V.. Bearing in mind that art magazines constitute a rather narrow market segment targeting a relatively small group of consumers, the number of copies sold per year has been significant. These findings have not been disputed by the applicant.

Consequently, the Opposition Division concludes that the opponent’s sign was used in the course of trade of more than local significance in Germany for magazines, books and website, which deal mainly with both major events, developments and latest trends in the international art scene as well as painting, sculpture and architecture as well as newer genres such as photography, video art and design before the filing date of the contested trade mark.

The right under the applicable law

Titles of magazines and other publications, or titles of similar categories of works such as films, television series, etc. fall under Article 8(4) EUTMR only if, under the applicable national law, they are protected as business identifiers (irrespective of whether they are also protected under copyright law, which does not constitute a valid basis for an opposition under the EUTMR).

In the present case, according to the law governing the sign in question, Section 15(2) and (3) of the German Trademarks Act (‘MarkenG’) (‘Exclusive right of the proprietor of a commercial designation; claim for a prohibitory injunction; entitlement to damages’) provides, inter alia, that:

(1) The acquisition of protection for a commercial designation grants its proprietor an

exclusive right.

(2) Third parties are prohibited from unauthorised use of the commercial designation or a similar sign in the course of trade in a way that may cause confusion with the protected designation.

(3) If the commercial designation is a commercial designation that is well known domestically, third parties are furthermore prohibited from using the commercial designation or a similar sign in the course of trade if there is no likelihood of confusion within the meaning of subsection 2 if the use without due cause of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the commercial designation.

The opponent claims that the requirements of Section 15(2) MarkenG (right of prohibition arising from a likelihood of confusion) as well as those of Section 15(3) MarkenG (right of prohibition arising from a threatened unfair advantage or detriment to the distinctive character or repute of the known sign) have been met in the present case.

Pursuant to established German case-law, the interdependence of the following factors needs to be taken into account for the assessment of a likelihood of confusion between a trade mark and a title of a work by the relevant public: the ‘vicinity’ of the economic sectors (‘Branchennähe’), the similarity of the opposing sign and the distinctive character of the earlier designation.

The earlier non-registered right is protected in Germany. The goods and services at hand are aimed both at a specialist public and at end consumers. Therefore, in the present case, the perception of the circumspect and reasonably observant general public in Germany is to be taken into account for the assessment of the likelihood of confusion within the meaning of Section 15(2) MarkenG.

The earlier title of work comprises the activity of creating and selling printed matter, namely art periodicals. The sectors are identical at least in so far as the

claimed by the contested EUTM can relate to the design, production and sale of printed art publications, in particular art periodicals and art related publications.

Furthermore, the following services claimed by the contested EUTM

are worded in such a way that they can all relate to the design, production and sale of printed art publications. In the present case, the assessment of the likelihood of confusion must therefore proceed on the basis that the sectors are identical or at least similar to all the opposed goods and services mentioned above.

The following goods and services are found dissimilar as they do not coincide in nature, purpose or methods of use and can not be found to be complementary nor having the same origins:

Class 16: artwork; goods made from these materials [paper, cardboard] and stationery and canvas bearing artistic works; goods made from these materials [paper, cardboard], not included in other classes; stationery; adhesives for stationery or household purposes; book binding material; Artists' materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes); printers' type; Printing blocks; paper, cardboard.

Class 41: sporting activities; organisation of evening and night time entertainment events; including the provision of the aforesaid services on-line; booking and reservation of tickets for art exhibitions, art galleries, museums and other entertainment and cultural activities and events; information, advisory and consultancy services relating to the aforesaid.

Likelihood of confusion

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.

ART WEDNESDAY

The earlier right The contested sign

The relevant territory is Germany.

The element ART in both signs will be perceived as meaning ‘kind, sort, type, method or nature’ (Collins German English Dictionary). Part of the public will also understand its English meaning and associate it with its equivalent in German ‘Kunst’. Bearing in mind that the relevant goods and services are printed matter, publication services and entertainment and organisation of events services, etc. (in the respective marks) it is considered that these elements are allusive for these goods and services (in the respective marks), in particular they describe their kind, content and/or subject matter.

The element WEDNESDAY, although not a German word, can be considered to be understood by the German public as an English term referring to a particular day of the week, for instance the day the issue of a publication is released. The element is therefore allusive for the goods and services concerned.

Visually and aurally , the signs are similar to an average degree to the extent that they coincide in the element ART present in both signs and differ in the element WEDNESDAY and in the slight stylization of the earlier mark, namely in its colour and typeface used.

Conceptually, the similarity of the marks is average, based on the coinciding term ART.

Taking into account the abovementioned coincidences, the signs under comparison are similar.

Global assessment of the conditions under the applicable law

Pursuant to Section 5(1) and (3) MarkenG, titles of works generally serve only to distinguish one work from another (see, for instance, BGH, 01/03/2001, I ZR 211/98, Tagesschau; and Goldman, Der Schutz des Unternehmenskennzeichens, 3rd ed., 2014, § 39; Pahlow, in: Ekey/Klippel/Bender, Markenrecht I, Section 15, § 75, with further references).

Pursuant to German case-law, they are therefore only protected, in principle, against a likelihood of confusion between works – i.e. if there is a direct likelihood of confusion in the narrower sense (see BGH, 16/07/1998, I ZR 6/96, Wheels Magazine, further references in Strobele/Hacker, MarkenG, Kommentar, Section 15, § 67; see also Fezer, MarkenG, Kommentar, Section 15, § 348-351). In the present case, a considerable visual and aural similarity and also a conceptual similarity exist between the signs.

The coincidence in the element ART is significant, despite of its slightly allusive character. The additional word WEDNESDAY is also found allusive. The signs are similar since, from the point of view of the relevant public, they are at least partially identical as regards several relevant aspects (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 26).

Intrinsically, the earlier right has a less than average distinctive character since the word ‘art’ is allusive in relation to the activities protected by it. The sign primarily obtains its distinctive character in Germany firstly since it is a foreign word and secondly from the particular graphic stylization and the red colour of the element, written with a grammatically incorrect way [in German] of a lower-case letter for a noun.

In the present case, the opponent refers to the increased distinctive character of the earlier title obtained through intensive use in Germany. The opponent has also submitted evidence which establishes the reputation, in Germany, of the periodical ART, namely excerpts from the database of the Verband Deutscher Zeitschriftenverleger e.V. (http://www.pz-online.de) and the statistics of an independent institute for media evaluation in Germany (‘AWA’) according to which, in 2009, more than 19.4 % of the German population knew the opponent’s magazine. This evidence has not been contested by the applicant. It is further confirmed by the findings of the Landgericht Hamburg in a judgment of 04/05/2012 (Case 312 O 535/11) filed by the opponent.

Given the identity and the closeness of the sectors concerned, the similarity of the signs and the reputation acquired by the earlier non-registered right on the relevant market, it has, thus, to be concluded that a likelihood of confusion exists within the meaning of Section 15(2) of the German Trademark Act.

Considering all the above, the Opposition Division finds the opposition is well founded on the basis of the opponent’s earlier sign insofar as it is directed against the following goods and services:

The opposition is not successful insofar as the remaining goods and services are concerned.

The opposition will continue under Article 8(1)(b) EUTMR in respect of goods and services found dissimilar.

LIKELIHOOD OF CONFUSION UNDER ARTICLE 8(1)(b) EUTMR

As mentioned, 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 goods and services

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

DE No 994 008

Class 41: Publication of printed matter, in particular books, newspapers and periodicals.

DE No 986 217

Class 16: Printed matter, especially periodicals, journals and books.

The contested goods and services are the following:

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 terms ‘in particular’ and ‘especially’, used in the opponent’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 16

The contested artwork; goods made from these materials [paper, cardboard] and stationery and canvas bearing artistic works; goods made from these materials [paper, cardboard], not included in other classes; stationery; adhesives for stationery or household purposes; book binding material; Artists' materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes); printers' type; Printing blocks; paper, cardboard; have a different nature, purpose and methods of use compared to all the goods of the opponent. They have different manufacturers/origins and do not coincide in distribution channels. The goods are dissimilar.

Contested services in Class 41

The sporting activities; organisation of evening and night time entertainment events; including the provision of the aforesaid services on-line; booking and reservation of tickets for art exhibitions, art galleries, museums and other entertainment and cultural activities and events; information, advisory and consultancy services relating to the aforesaid have different nature, purpose and methods of use compared to all the goods of the opponent. They have different distribution channels. The goods and services are dissimilar.

Conclusion

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

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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 will 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

José Antonio GARRIDO OTAOLA

Erkki MÜNTER

Irina SOTIROVA

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.

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