OPPOSITION No B 2 456 674

Mediaset España Comunicación, S.A., Ctra. Fuencarral Alcobendas, 4, 28049 Madrid, Spain (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Atlas Solutions LLC, 1601 Willow Road, Menlo Park, California 94025, United States of America (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, the Netherlands (professional representative).

On 28/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 456 674 is partially upheld, namely for the following contested goods and services:

Class 9:        Computer software for use in managing, measuring, and serving advertising of others.

Class 41:        Training in the field of strategic media planning relating to advertising, marketing and business; on-line journals, namely, blogs featuring advertising, marketing and business.

Class 42:  Providing temporary use of on-line non-downloadable software or use in managing, measuring, and serving advertising of others; application service provider featuring application programming interface (API) software for managing, tracking, reporting and measuring media planning, media buying and advertising of others.

2.        European Union trade mark application No 13 307 921 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 307 921. The opposition is based on Spanish trade mark registrations No 3 079 631  and No 2 993 639 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of earlier Spanish trade mark No 2 993 639.

The contested application was published on 12/11/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 12/11/2009 to 11/11/2014 inclusive.

The excerpts from the database of the Spanish Patent and Trade Mark Office, submitted by the opponent, show that the earlier mark is a combined registration of three other earlier marks (namely registrations No 2 409 402, No 2 409 403 and No 2 409 404), which have been merged together by the authority, as they present the same sign for three different classes. Each one of the merged signs had been registered for more than five years prior to the relevant date mentioned above (i.e. 12/11/2014). As they are not forming a new right per se, but make up one mark formed of three separate registrations, all of which had been registered for more than five years prior to the relevant date mentioned above, the applicant’s request (which was also submitted in due time) is admissible.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 35:        Advertising services; dissemination of advertisements; management assistance to radio and television companies; dissemination of advertisements (brochures, printed matter, prospectuses, samples); commercial business estimates; radio and television advertising; publicity columns preparation.

Class 38:        Communication services by radio and television, broadcasting of radio and television programmes; communication services over computer networks.

Class 41:        Editing and production of radio and television programmes; services for shows; organisation of radio and television entertainment.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 13/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 18/01/2016 to submit evidence of use of the earlier trade mark. Following a request of the opponent, this time limit was extended until 18/03/2016. On 11/03/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

Therefore, the evidence to be taken into account is the following:

• Corporate responsibility reports for 2010 to 2014. The reports refer to the company structure of ‘Grupo Telecinco’, which include, inter alia, entities bearing the name ‘Atlas’ with different additions to the name. The documents are in Spanish and there also references to activities in Spain. The documents further provide information about these companies’ activities, namely providing content through different media (news agencies), as well as information on the age and gender balance of the companies’ employees. Various prizes given to a company or companies or employees are also listed. No reference is made to the earlier sign.

• Screenshots from the website www.telecinco.es dated between 2009 and 2014, which provide information about the programmes on several different television channels. There is no reference to the earlier sign.

•  Screenshots from videos of TV programmes (dated by the opponent between 12/11/2009 and 12/11/2014), with some showing the sign  on microphones.

• Screenshots from the website mediaset.es (dated 13/04/2012), depicting several signs, inter alia the following: . There is no reference to the services in question.

• A photograph of a TV screen showing the following sign: .

• A business card showing the same sign as that above.

• Two videos, the first one dated 21/06/2009 (outside the relevant timeframe) and showing the sign  and the indication ‘Atlas Agencia de Noticias www.atlas-news.com’, and the other one dated 18/12/2010 and showing what appears to be a news piece, depicting a partial image of the above sign on a microphone.

• Printouts from es.wikipedia.org and en.wikipedia.org, providing information about ‘Atlas’, being ‘an agency of audiovisual information’, and newscasts developed by this agency. There is no reference to the earlier sign.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

After examining the evidence submitted, the Opposition Division concludes that the opponent did not succeed in proving use of the earlier mark on which the opposition is based.

Even though some of the indications point to the relevant territory (e.g. Spanish is used in some of the documents and there are references to Spain, e.g. in the corporate responsibility reports) and some of the information points towards the relevant timeframe, the opponent fails to prove the extent of use of the earlier sign or that the earlier sign is used in connection with the relevant services.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Although the reports submitted refer to the provision of content through different media channels and thus could be related to some of the services in Classes 38 and/or 41, these documents do not provide the Opposition Division with any information concerning the commercial volume, the duration or the frequency of use. In fact, none of these documents gives the turnover and the volume of sales of services under the earlier trade mark, as there is no reference to the earlier sign; only information on the activities of a certain number of companies is provided.

Furthermore, although the screenshots submitted from www.telecinco.es provide information on the TV programmes from different channels, they do not contain any reference to the earlier mark. The excerpts from mediaset.es do not provide any data on the relevant services.

The rest of the screenshots submitted, the video dated 18/12/2010 and the business card, all depicting the sign (as shown above), do not provide information regarding the services provided under the relevant sign.

The Wikipedia entries cannot be considered a reliable source of information, as they can be amended by Wikipedia’s users. For the sake of completeness, it is noted that the Wikipedia entries do not provide any information on the use of the earlier sign in relation to the relevant services.

The video dated 21/06/2009, showing the sign (as shown above) and referring to ‘Atlas Agencia de Noticias’, is dated outside the relevant timeframe. In principle, evidence referring to use outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. This video predates the relevant timeframe and could not be related to use made during the relevant period and, therefore, cannot be taken into account.

The evidence submitted, taken together, gives no information about the services provided under the depicted sign(s). Clearly, the use of the signs is unconnected to relevant services. All the references made to the relevant services, as pointed out above, are linked not to the earlier mark, but to activities of a company or companies.

Furthermore, the opponent submitted no evidence, such as turnover or market figures, or documents that could show any actual marketing of the services under the earlier mark. Consequently, the opponent failed to submit information on or indications of the extent of use of the earlier sign or use in relation to the relevant services.

Considering the above, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

The Opposition Division will, therefore, continue with examining the opposition in regard to the other earlier right invoked, namely Spanish trade mark registration No 3 079 631.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 38:        Communication services by radio and television, telecommunications services; television broadcasting; communication services over computer networks; providing of telecommunications channels for teleshopping; forums [chat rooms] for social networking; electronic mail; providing access to database; voice mail services;

electronic transmission of data and documents via computer terminals and electronic devices; teleconferencing services; computer aided transmission of messages, information and images; news agencies; sending [transmission] of news.

Class 41:        Production of radio and television programs; organization of radio and television entertainment; radio or television entertainment services; videotape film production; film production; news reporters services; photographic reporting; television entertainment; production of shows; videotaping; on-line publication of electronic books and journals (not downloadable); use of on-line electronic publications (not downloadable by data transmission); page layout not for advertising purposes; television entertainment programs; news program services; news syndication reporting; preparation of news programs for broadcasting; news syndication for the broadcasting industry.

The contested goods and services are the following:

Class 9:        Computer software for use in managing, measuring, and serving advertising of others.

Class 35:        Advertising services; business and advertising services, namely, media planning and media buying for others; business and advertising services, namely, advertising services for tracking advertising performance, for managing, distributing and serving advertising, for analyzing advertising data, for reporting advertising data, and for optimizing advertising performance; consulting services in the field of advertising, namely, customizing marketing efforts of others; commercial information services, namely, advertisement management by providing reports, advertisement targeting, and management of electronically stored advertising, for use on a global computer network.

Class 41:        Training in the field of strategic media planning relating to advertising, marketing and business; on-line journals, namely, blogs featuring advertising, marketing and business.

Class 42:        Providing temporary use of on-line non-downloadable software for use in managing, measuring, and serving advertising of others; application service provider featuring application programming interface (API) software for managing, tracking, reporting and measuring media planning, media buying and advertising of others.

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 ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

Furthermore, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 computer software for use in managing, measuring, and serving advertising of others is software designed to help users advertise on computer devices or a range of websites, which allows advertisers, for instance, to buy, manage and place mobile advertisements, including mobile banner and video advertisements.

The opponent’s on-line publication of electronic books and journals (not downloadable) in Class 41 refers to the provision of such publications (which could be of any nature, including material for the purposes of advertising) to enable their use by the end user. The contested goods, therefore, coincide with the opponent’s services in their purpose (the provision of certain content) and they may have the same producers/providers and end users. It follows that they are similar.

Contested services in Class 35

The contested advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. The rest of the contested services in this class, business and advertising services, namely, media planning and media buying for others; business and advertising services, namely, advertising services for tracking advertising performance, for managing, distributing and serving advertising, for analyzing advertising data, for reporting advertising data, and for optimizing advertising performance; consulting services in the field of advertising, namely, customizing marketing efforts of others; commercial information services, namely, advertisement management by providing reports, advertisement targeting, and management of electronically stored advertising, for use on a global computer network, are very specific kinds of advertising-oriented services. All of the contested services in this class differ in their nature and purpose from all of the opponent’s services (which are communication-providing services in Class 38 and entertainment, publication and provision of broadcast-related services in Class 41). Furthermore, these services do not coincide in their providers or distribution channels. They are neither in competition nor necessarily complementary. It follows that the contested services are dissimilar to the opponent’s services.

Contested services in Class 41

The contested on-line journals, namely, blogs featuring advertising, marketing and business are included in the broader category of the opponent’s on-line publication of journals (not downloadable). These services are considered identical.

There is a connection between the contested training in the field of strategic media planning relating to advertising, marketing and business and the opponent’s on-line publication of electronic books and journals (not downloadable), as the latter could be used and be a necessary prerequisite for providing the contested services when the subject matter of the publications provided is advertising, marketing and business. There is a complementarity between the services and they could be, furthermore, provided through the same distribution channels. It follows that they are similar to a low degree.

Contested services in Class 42

The contested providing temporary use of on-line non-downloadable software for use in managing, measuring, and serving advertising of others; application service provider featuring application programming interface (API) software for managing, tracking, reporting and measuring media planning, media buying and advertising of others are, by their nature, services for the provision of software for the specific purposes already explained above in the comparison of the contested goods in Class 9. These services are similar to the opponent’s providing access to database in Class 38. The undertakings that provide access to databases normally also provide access to specific database software, as well as to its newest and quickest versions. These services are complementary to each other, coincide in their purpose and are normally provided by the same kinds of undertakings through the same channels.

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 and similar to different degrees are directed at the public at large, but also at business customers with specific professional knowledge or expertise (e.g. those looking for advertising solutions for their products/businesses). The degree of attention will vary between average and higher than average depending on the purpose and the price of the specific goods and services.

3. The signs

                         ATLAS

Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of the word ‘Atlasagencia’ written in a slightly stylised typeface, with the element ‘Atlas’ in white, title case letters and the element ‘agencia’ in red, lower case letters. The whole word is placed against a black rectangle with a red dot in its top left-hand corner and with each corner marked out in white lines. The relevant public is likely to perceive the word ‘Atlasagencia’ of the earlier mark as a juxtaposition of the words ‘Atlas’ and ‘agencia’, especially because the elements ‘Atlas’ and ‘agencia’ are separated by their different colours.

The contested sign is the word mark ‘ATLAS’. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters.

The element ‘ATLAS’ in both signs will be perceived by the relevant public with the same meaning as in English: ‘a collection of maps, usually in book form; a book of charts, graphs, etc, illustrating aspects of a subject’ (information extracted from http://dictionary.reverso.net/english-definition/atlas). The element has no meaning in relation to the relevant goods and services and is, therefore, distinctive.

The word ‘agencia’ in the earlier mark will be perceived as ‘a company providing services or management’ (‘empresa de servicios o de gestión’, information extracted from http://dictionary.reverso.net/spanish-definition/agencia). The earlier mark as a whole could be perceived as an agency or company named ‘Atlas’.

Bearing in mind that the relevant services are database provision, provision of publications and layout services, it is considered that the element ‘agencia’ is weak for these services, as it indicates the origin of the services, namely that they come from an agency or a company. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other, more distinctive, verbal element of the mark, namely ‘Atlas’, which has a normal degree of distinctiveness for the relevant goods and services. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The earlier mark also contains a rectangular background and a dot, which will be perceived as such. However, these are less distinctive elements than the verbal element ‘Atlas’, as they are simple geometric forms of a purely decorative nature. Therefore, the verbal element ‘Atlas’ is more distinctive than these figurative elements.

Furthermore, 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).

Both signs contain the element ‘ATLAS’, which is placed at the beginning of the earlier mark and is the only element of the contested sign. Consumers generally tend to focus on the beginning (the first element) of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the coincidence in the first element of the earlier sign and the only element of the contested sign is of material importance when assessing the likelihood of confusion for the relevant public.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

As specified above, conceptually, the signs coincide in the meaning of the element ‘ATLAS’, which is distinctive for the relevant goods and services. As they differ only in the concepts of the less distinctive elements ‘agencia’ and the rectangular shape and the dot, it is considered that the signs are conceptually highly similar.

Visually and aurally, the signs coincide in the element ‘Atlas’, which is the first and distinctive verbal element of the earlier mark and the only element of the contested sign. The signs differ in the element ‘agencia’ (and the sound of it) and the rectangular background and the dot (all of which are of limited distinctiveness) of the earlier mark, which have no counterparts in the contested sign. The signs also differ in the colours and the slight stylisation of the letters of the earlier mark; however, the stylisation would not divert the attention of the consumer from the letters as such.

As the signs coincide in the only element of the contested sign, which is also the most distinctive element of the earlier mark, the signs are considered visually and aurally highly similar.

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 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, despite the presence of some less distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods are similar to the opponent’s services and the contested services are partly identical, partly similar to different degrees and partly dissimilar to the opponent’s services. The degree of attention may vary from average to higher than average when choosing the relevant goods and services.

It is established above that the similarities between the signs originate from the verbal, aural and conceptual coincidence in the element ‘ATLAS’, which is the first and distinctive verbal element of the earlier mark and the only element of the contested sign. The differing elements, namely ‘agencia’ and the figurative elements of the earlier mark, are of limited distinctiveness and could not counterbalance the coincidences originating from the shared element.

The relevant consumers might be led, therefore, by the visual, aural and conceptual similarity arising from the element ‘ATLAS’ to believe that the identical and similar (to various degrees) goods and services covered by the marks come from the same undertaking or economically linked undertakings. It can reasonably be concluded that consumers will not be able to distinguish between the marks and will perceive them as having the same origin, even when the degree of attention is higher than average.

Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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). In the present case, the high degree of visual, aural and conceptual similarity between the signs outweighs the low degree of similarity found between some of the relevant services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 079 631.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, including to a low degree, to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

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

Elisa ZAERA CUADRADO

Irina SOTIROVA

Julie GOUTARD

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.