OPPOSITION No B 2 578 899
Zinkia Entertainment, S.A., Infantas, 27, planta 1, 28004 Madrid, Spain (opponent), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative)
a g a i n s t
Cinkciarz.PL Sp. z o.o., Sienkiewicza 9, 65-001 Zielona Góra, Poland (applicant), represented by Sołtysiński Kawecki & Szlęzak – Kancelaria Radców Prawnych i Adwokatów, ul. Jasna 26, 00-054 Warszawa, Poland (professional representative).
On 28/03/2017, the Opposition Division takes the following
1. Opposition No B 2 578 899 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 839 683. The opposition is based on, inter alia, European Union trade mark registration No 3 781 234. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 3 781 234.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Cartoons, films, computer programs and video games, sound, image and data carriers of all kinds, in particular DAT tapes, videotapes, floppy disks, CD-ROMs, all the aforesaid goods recorded or blank, and cassettes.
Class 38: Radio and television broadcasting, communications via international computer networks, in particular digital communications.
Class 41: Education, providing of training, entertainment, sporting and cultural activities, audiovisual and musical productions, stage shows and performances of musical works, audiovisual works and works of plastic art.
The contested goods and services are the following:
Class 9: Apparatus, appliances and instruments for recording, transmission, sending, reproduction and playing (back) of sound and/or images; Television antennas; Satellite aerials; Identity cards, magnetic; Magnetic data carriers; Magnetic information carriers; Modems; Transmitters [telecommunication]; Transmitters of electronic signals; Optical information carriers; Optical data carriers; Transmitting sets [telecommunication].
Class 35: Advertising; Advertising agencies; Advertising services and production of television commercials; Cost price analysis; Marketing (market) analysis; Business (market) inquiries; Business research; Presentation(offering) of goods on communications media, for retail purposes (trade); Professional business consulting; Business management and organization consultancy; Business information; Economic forecasting; Consumers (Commercial information and advice for -) [consumer advice shop (point)]; Arranging subscriptions (agency) to telecommunication services for others; Rental of advertising time on communication media; Sale, retailing, wholesaling, and sale for others of the following goods: apparatus, appliances and instruments for recording, transmission, sending, reproduction and playing (back) of sound and/or images, television antennas, satellite aerials, magnetic identity cards, magnetic data carriers, magnetic information carriers, modems, transmitters (telecommunication), transmitters of electronic signals, optical information carriers, optical data carriers, transmitting sets (telecommunication).
Class 37: Installation and repair of television receiving (reception) apparatus, sound systems, and audiovisual equipment.
Class 38: Telecommunications; Telecommunication services; Message (information) sending; Television; Cable television broadcasting; Terrestrial television; satellite television; Internet-ready televisions; News agencies; Information about telecommunication; Providing Internet chatrooms (discussion forums); Providing user access to a global computer network (service providers); Transmission of television programs; Satellite transmission; Rental of modems; sending apparatus (rental of message-); Rental of telecommunication equipment; Television channel (TV stations); Transmission of voice and images; Sound transmission; Receiving and transmission of messages; Transmission of sound and images; Operation of satellites; Organisation of transmission systems; Audio and/or video (vision) transmission; Diffusion (distributing) of television programs.
Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 assumed to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise in technologies, telecommunications and entertainment.
The degree of attention may vary from average, for goods such as television antennas, to high, for more specialised services such as economic forecasting.
- The signs
Earlier trade mark
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark, ‘ZINKIA’, has no meaning for the relevant public and is, therefore, distinctive. In the case of word marks, the word as such is protected, not its written form. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.
The verbal element ‘cinkciarz’ of the contested sign will be understood as ‘money changers’ by the Polish-speaking part of the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive. For the remaining large majority of the relevant public, it has no meaning and is, therefore, also distinctive.
The figurative element of the contested sign could be perceived as a black and white infinity symbol that contains the letters ‘tv’, that is, the abbreviation commonly used to refer to ‘television’ and is, therefore, non-distinctive for those goods and services that are directly related to telecommunications, such as television antennas, satellite aerials, transmitters [telecommunication], cable television broadcasting and transmission of television programs. Furthermore, it may also have connotations with respect to some services that are related to cultural and sporting activities, such as live band performances or stage shows that may be broadcast on television or services for which television might be complementary, such as the production of television commercials. The public will not pay as much attention to this weak or non-distinctive element as to the other, more distinctive, element of the mark, namely ‘cinkciarz’.
The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements. However, 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).
Visually, the signs coincide in the sequence of letters ‘*INK*IA*’. However, they differ in their first letters, ‘Z’ of the earlier mark and ‘C’ of the distinctive verbal element of the contested sign, and in the additional letters ‘C’ and ‘RZ’, which are in the middle and at the end of the distinctive verbal element of the contested sign, respectively. The signs differ further in the figurative element of the contested sign, which contains the letters ‘tv’ and is weak or non-distinctive, as explained above.
Therefore, taking into account that the distinctive verbal element of the contested sign has different letters at the beginning, middle and end and that the signs have clearly different lengths, namely six letters in the earlier mark versus nine letters in the contested sign, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘*INK*IA*’, present identically in both signs, although not all in the same positions. The pronunciation of their differing first letters, ‘C’ and ‘Z’, in combination with the following letters that the signs have in common, that is, ‘CINK’ and ‘ZINK’, coincides for only a part of the public in the relevant territory, such as the Danish-, Spanish- and Swedish-speaking part of the public. The pronunciation differs in the sound of the additional letters in the middle and at the end of the distinctive verbal element of the contested sign, namely ‘C’ and ‘RZ’. The pronunciation of the signs differs further in the sound of the letters ‘tv’ of the contested sign, which have no counterparts in the earlier mark, but have been considered weak or non-distinctive.
Therefore, the signs are aurally similar, at most, to an average degree.
Conceptually, although the public in the relevant territory will perceive the meaning of the verbal element ‘tv’ (and the meaning of the distinctive verbal element ‘cinkciarz’, in the case of the Polish-speaking part of the relevant public) of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.
- Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
The goods and services are assumed to be identical. The relevant public has a degree of attention that may vary from average to high.
The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
In the present case, the strong visual differences between the signs, namely the clearly different lengths of the signs, which are due to the additional letters at the beginning, middle and end of the distinctive verbal element of the contested sign, in addition to the figurative element, which contains two additional letters, make the conflicting signs easily distinguishable. Furthermore, the signs are aurally similar to, at most, an average degree, because of the sound of the additional letters in the contested sign, and conceptually dissimilar. All these factors prevail even if it is assumed that the earlier mark enjoys an enhanced degree of distinctiveness and that the goods and services in question are identical.
As stated by the opponent, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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).
However, in the present case, the assumed identity of the goods and services cannot offset the low degree of visual similarity between the signs.
The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, since the conflicting signs in those cases had similar lengths and either their beginnings and endings were identical (i.e. ‘SIWIND’/‘SERWIND’, ‘REWELL’/‘RAYWELL’ and ‘MIXERY’/‘MYSTERY’ ) or the signs differed only in one letter (i.e. ‘BONAX’/‘SONAX’ and ‘RADOVIR’/‘ZADOVIR’). The two other cases referred to by the opponent were also based on a different scenario, since the conflicting signs raised the issue of the similarity between the signs due to the translation of their verbal elements (i.e. ‘CHAIN MASTER’/‘MASTER CADENA’ and ‘OPERATION SOURIRE’/‘OPERATION SMILE’).
Considering all the above, even assuming that the goods and services are identical, the Opposition Division finds that the differences between the signs are sufficient to exclude any likelihood of confusion on the part of the public, including the risk that the consumers will believe that the respective goods and services come from the same or from economically linked undertakings. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.
The opponent has also based its opposition on earlier European Union trade mark registration No 7 154 222 for the figurative mark for goods and services in Classes 9, 28, 35, 41 and 42.
This other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains figurative elements, namely the abstract shape that seems to include an eye, the colours and the stylisation of the verbal element, which are not present in the contested trade mark and, therefore, add more differences between the signs. Moreover, since it has been assumed that the goods and services in question are identical, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.
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.
The Opposition Division
Marta GARCÍA COLLADO
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.