OPPOSITION No B 2 754 367
Yes Music AG, Breitenweg 6, 6370 Stans, Switzerland, (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB-Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)
a g a i n s t
Ariston – S Ltd, 121, Lipnik Blv, 7013 Ruse, Bulgaria (applicant), represented by Ariston – S Ltd, Pavel Iliev, 121, Lipnik Blv., 7013 Ruse, Bulgaria (employee representative).
On 23/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 754 367 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 437 155. The opposition is based on European Union trade mark registration No 1 652 262 and International Registration No 852 811. The opponent invoked Article 8(1)(b) EUTMR.
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BOBO
(EUTMR No 1 652 262)
(IR No 852 811) |
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Earlier trade marks |
Contested sign |
SUBSTANTIATION
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case the notice of opposition was not accompanied by any evidence as regards the earlier International Registration No 852 811 on which the opposition is based.
On 02/09/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 07/01/2017.
The opponent did not submit any evidence concerning the substantiation of the earlier trade mark International Registration No 852 811. The opponent did, however, send extracts from the Romarin Database for six other International Registrations of the same holder namely International Registrations No 632 990, No 706 716, No 734 626, No 925 236, No 1 022 795 and No 1 113 091. The opposition is not based on any of these International Registrations because they were not invoked within the opposition period nor did they appear in the notice of opposition that was received within the opposition time limit. It follows that these extracts are irrelevant for the present proceedings.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on International Registration No 852 811.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition was based on two earlier trade marks. As one of the marks was not substantiated as explained above, the Opposition Division finds it appropriate to examine the opposition in relation to the other mark, European Union trade mark registration No 1 652 262.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 09: Image and sound carriers excluding overhead projectors.
Class 35: Business management for performing artists, sales promotion via the Internet, merchandising.
Class 41: Live music concerts and performances.
The contested goods are the following:
Class 24: Textile goods, and substitutes for textile goods; filtering materials of textile.
Class 25: Clothing; shoes; hats.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.
The contested goods in Classes 24 and 25 are dissimilar to the opponent’s merchandising in Class 35. Contrary to the opponent’s arguments, the fact that some of the contested goods could be used in merchandising is not sufficient reason to find similarity between these goods and services. By their nature, goods are generally dissimilar to services. This is because goods are articles of trade or wares. Their sale usually entails the transfer in title of something physical. Services, on the other hand, consist of the provision of intangible activities. The purpose and method of use of these goods and services are also different. They are not in competition. The relevant public and distribution channels will not normally coincide and these goods and services do not normally come from the same undertakings.
The contested goods in Classes 24 and 25 are also dissimilar to all the other goods and services of the opponent. The nature, purpose and method of use of these goods and services differ. They are not in competition nor are they competitive. The relevant public and distribution channels will not usually coincide and these goods and services do not usually come from the same undertakings.
- 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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
The opponent submitted numerous press and internet articles on the musician/performer DJ Bobo on 05/01/2017 as part of the information to substantiate the earlier marks. In addition the opponent claims in its submission on 11/04/2017 that the earlier marks on which the opposition is based are reputed marks within the meaning of Article 8(5) and goes on to present figures on turnover between 2008 and 2012.
However this does not amount to a valid claim due to the fact that Article 8(5) was not invoked within the opposition deadline. According to Article 41(1) of the EUTMR within a period of three months following the publication of the contested EU trade mark application a notification opposition can be filed and, according to Article 41(3) it shall specify the grounds on which the opposition is made. The ground specified by the opponent within the opposition 3 month deadline was 8(1)(b). The opponent’s arguments relating to reputation of the earlier marks are inadmissible during the substantiation phase and must be set aside.
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
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Tobias KLEE
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Lynn BURTCHAELL |
Claudia MARTINI
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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.