OPPOSITION No B 2 561 580

Groupe Canal+, SA, 1, place du Spectacle, 92130 Issy Les Moulineaux, France (opponent), represented by Brandstorming, 11, rue Lincoln 75008 Paris, France (professional representative)

a g a i n s t

Jungin Electech CO. LTD, 201-1007, Chunui Technopark 2 198-18 Bucheon-Ro Wonmi-Gu, Bucheon-Si, Kyunggi-Do, Republic of Korea (applicant), represented by Newpatent, Puerto 34, 21001 Huelva, Spain (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 561 580 is partially upheld, namely for the following contested goods and services:

Class 9:         Portable telecommunications apparatus; Portable computers; Computer application software for mobile telephones; Radiotelephones; Computer software.

Class 35:         Wholesaling, retailing and sale via the internet of computer hardware and software, telephone goods and accessories.

Class 38:         Telecommunications, mobile telephony.

2.        European Union trade mark application No 13 901 335 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 all the goods and services of European Union trade mark application No 13 901 335. The opposition is based on European Union trade mark registration No 8 699 291 and French trade mark registration No 3 600 780. 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 must 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 will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The contested application was published on 08/05/2015. The opponent’s earlier European Union trade mark registration No 8 699 291 was registered on 27/05/2010, i.e. less than five years before the publication of the contested application. Therefore, the request for proof of use for that mark is inadmissible.

As regards French trade mark registration No 3 600 780, the request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The opponent was therefore required to prove that the earlier French trade mark registration was put to genuine use in France from 08/05/2010 to 07/05/2015 inclusive.

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

Class 9: Electronic data processing apparatus; apparatus and instruments for recording, transmission, reproduction, storage, encoding, decoding, conversion and processing of sound or images, in particular namely decoders; communications and telecommunications apparatus; audiovisual, telecommunications apparatus and instruments; peripheral devices for computers, namely modems, modems, decoders, encoders; access devices (apparatus) and access control devices for data processing apparatus; chip cards; electronic cards; integrated circuits and microcircuits; electronic components; worldwide computer network data reception monitors; smart cards, cards with microprocessors; batteries and cells.

Class 35: Business consultancy; professional business organisation and management assistance and consultancy for industrial and commercial companies; business information and advice; commercial advice for consumers (namely consumer information) relating to the choice of computer and telecommunications equipment; loyalty programs (tracts, prospectuses, printed matter, samples); arranging exhibitions and events for commercial or advertising purposes; television promotion with sales offers (sales promotion for others); retailing and wholesaling of audiovisual, computer and telecommunications goods namely couplers (data processing equipment), readers (data processing equipment), modems, computer memories, computer peripheral devices, processors (central processing units), recorded computer operating programs, chips (integrated circuits).

Class 38: Radio or video phone communications, communications by television, by personal stereo, by personal videoplayer, by interactive videography, by video phones; broadcasting (television -); transmission of information by data transmission; transmission of messages, telegrams, images, videos, mail; transmission of information by teleprinter; data communications; radio and television broadcasting; broadcasting of programmes by satellite, by cable, by computer network (in particular via the Internet), by radio networks, by radiotelephone networks and by hertzian wave; providing connections to telecommunications services; telecommunications consultancy; technical advice and assistance in the field of communications and telecommunications.

According to Rule 22(3) EUTMIR, the evidence of use must 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 20/07/2016, within the time limit given by the Office according to Rule 22(2) EUTMIR the opponent submitted evidence of use of the earlier trade mark.

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. This does not apply to information which is otherwise publicly available.

The evidence to be taken into account is the following:

• French-language handbook « Découvrez +Le Cube » (2011). According to the translation “The Canal+/Canalsat decoder, +LECUBE, “allows enjoying a various number of services included in your subscription and available by connecting your decoder to internet.” This decoder appears to be used to access, view and record television channels, programmes or videos.

• Website printout from 2011 showing the +LE CUBE HD Wi-Fi decoder with an external hard drive. “An easy access to the connected services via the Wi-Fi which connects wireless to an ADSL set top box (connection through an Ethernet cable is still available). The Cube is provided […] with Canal+5 and Canalsat 5 via satellite to allow access to Canalsat HD in high definition, CANALSAT on demand on TV or web and Canal exclusive previews.”

• French-language newspaper articles with partial translation about the decoder +Le Cube TNT and +Le Cube Satellite, offered by the opponent in France, from 2011 – 2014.

• English-language newspaper articles from 2008, one about the highly-specified HDTV box +Le Cube “which includes a live Ethernet port and permits interactivity and lnternet access as part of its core service.”, one stating “+Le.Cube 'has been designed to support and enable new services to CANAL+ and CANALSAT subscribers”, and one about “Europe's first Satellite / lP hybrid set-top box” +Le Cube; the latest article was also published in German.

• Spanish-language newspaper article about the launch of a new decoder “+LE CUBE”

• Certificate signed by an employee of the opponent showing sales figures for +Le Cube decoders

• Article from DMEurope dated 2010 about Canal Plus revenues and the impact of the success of the new +Le Cube set-top box.

• Pictures of promotion booths showing “+LE CUBE”

• Invoice from 2013 issued to the opponent for the production of a commercial for “LE CUBE” and youtube screenshot of the video “Canalsat LE CUBE “Le Robot”; transcript of the shot and its English translation

• French-language advertisement material for + LE CUBE decoder dated 2010-2015, including different reception modes for CANAL+ and CANALSAT programmes, including WIFI/TNT with ‘Set-top box Le CUBE S’ and satellite with ‘set-top box +LE CUBE’

• Newspaper articles about different awards given to the decoder + LE CUBE, notably the ‘RED DOT’ award (2016), or the l'IPTV World Series awards in the category 'Best Hybrid Broadcast-IP Video Delivery Solution' (2009)

• Information about the number of visitors in 2015 to the website www.pluslecube.fr showing its ranking in France and worldwide

• The mark is featured on the decoders advertised in the following manner:

From the advertisements, the language of the documents, and the content of the newspaper articles it is clear that the place of use is France. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period.

As regards to the probative value of the certificate signed by an employee it should be noted that statements coming from the sphere of the owner of the earlier mark (drawn up by the interested parties themselves or their employees) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (decision of 11/01/2011, R 0490/2010-4, BOTODERM, § 34; decisions of 27/10/2009, B 1 086 240 and of 31/08/2010, B 1 568 610).

This does not mean that such statements are totally devoid of all probative value (judgment of 28/03/2012, T-214/08, Outburst, EU:T:2012:161, § 30). The probative strength of the further material submitted is very important nevertheless.

In the present case the evidence, in particular the press articles, the advertisements in the press and via TV commercials, distributed throughout the relevant period, and the awards received by the opponent’s decoder provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows use of the marks as registered. The different colour representations of term ‘CUBE’, e.g. in black, do not affect the mark’s distinctive character. The depiction of the element [S] on some of the decoders simply refers to a newer version of the same product.

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).

Taking into account the evidence in its entirety, it does reach the level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

It is clear that the opponent’s main field of activity under this mark is related to decoders which enable to access, view and record television channels, programmes or videos.

In the present case, therefore, the evidence shows genuine use of the trade mark for the following goods and services:

Class 9: Modems, decoders, encoders.

Class 35: Retailing and wholesaling of modems.

Class 38: Communications by television; broadcasting (television -); transmission of images, videos; radio and television broadcasting; broadcasting of programmes by satellite, by cable, by computer network (in particular via the Internet), by radio networks, by radiotelephone networks and by hertzian wave; providing connections to telecommunications services.

At the same time, the Office considers that use not has been shown for the remaining goods and services.

As regards services in Class 35 it must be recalled that services in this class are generally provided for other businesses, and no evidence of such activities has been submitted. As for the goods in Class 9 or the remaining services in Classes 35 and 38, while there is indeed increasing convergence in the telecommunication and media sectors, as the opponent argues, this cannot justify extrapolating the evidence beyond reason and accepting use for all the goods and services in these sectors, in the absence of specific evidence.

Therefore, as far as the earlier French trade mark registration is concerned, the Opposition Division will only consider the abovementioned goods and services in its further examination of the opposition.

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

European Union trade mark registration No 8 699 291, following the revocation of part of the goods and services by Cancellation Decision No C 11012 of 11/16/2016:

Class 9: Decoders; Remote controls; antennas satellite dishes.  

Class 35: Retailing and wholesaling of set-top boxes; Retail sale of aerials; Arranging subscriptions to audiovisual programmes; Arranging subscriptions to a television channel.

Class 38: Television communication; Transmission of images and videos; Television broadcasting; Broadcasting of programmes via satellite, via cable, via computer networks (in particular via the internet), and via radio waves; Audiovisual and cinematographic broadcasting, whether or not for interactive purposes; Rental of aerials and satellite dishes; Transmission of programmes and selection of television channels.

Class 41: Rental of decoders.

Class 42: Online downloading of films and other audiovisual programmes.

French trade mark registration No 3 600 780

Class 9: Modems, decoders, encoders.

Class 35: Retailing and wholesaling of modems.

Class 38: Communications by television; broadcasting (television -); transmission of images, videos; radio and television broadcasting; broadcasting of programmes by satellite, by cable, by computer network (in particular via the Internet), by radio networks, by radiotelephone networks and by hertzian wave; providing connections to telecommunications services.

The contested goods and services are the following:

Class 9: Portable telecommunications apparatus; Headsets for mobile telephones; Mobile telephone batteries; USB cables for cellphones; Devices for hands-free use of mobile phones; Cases adapted for mobile phones; Downloadable graphics for mobile phones; Carriers adapted for mobile phones; Portable computers; Display screen protectors in the nature of films for mobile phones; Computer application software for mobile telephones; Holders adapted for mobile phones; Keyboards for mobile phones; Radiotelephones; Screen protectors for mobile telephones and computer hardware, mobile computers; Computer software.

Class 35: Business consultancy relating to franchising; Administration of the business affairs of franchises; Business consultancy relating to franchising; Services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises; Assistance in business management within the framework of a franchise contract; Business management advisory services relating to franchising; Business administration; Business administration; Advertising; Marketing services; Wholesaling, retailing and sale via the internet of computer hardware and software, telephone goods and accessories; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Sales promotion; Operation of commercial businesses [for others]; Business promotion; Advisory service for organizational issues and business administration, with and without the help of electronic data bases; Business management advisory services relating to franchising; Advice relating to the organisation and management of business; Business information services provided on-line from a computer database or the internet; Business acquisitions consultation; Business management consulting with relation to strategy, marketing, production, personnel and retail sale matters; Business advertising services relating to franchising; Providing information about commercial business and commercial information via the global computer network; Establishing a network of business contacts (Service to assist in -); Project studies for businesses; Provision of business and commercial information; Import and export services; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Promotion, advertising and marketing of on-line websites; Advertising via electronic media and specifically the internet; Advertising through all public communication means; Product marketing; Market campaigns; Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; Organization, operation and supervision of sales and promotional incentive schemes; Sales promotion; On-line promotion of computer networks and websites; Distribution of promotional matter; Development of promotional campaigns for businesses, all the aforesaid relating to the sector of telephony, accessories for mobile telephones, computer hardware and software and accessories therefor.

Class 38: Telecommunications, mobile telephony.

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

Even though their nature is different, the contested portable telecommunications apparatus, radiotelephones share certain points of contact with the opponent’s transmission of images and videos, covered by European Union trade mark registration No 8 699 291 in Class 38, as the contested apparatus enables the viewing of the transmitted images and videos. Therefore, there is a strong complementary relationship taking into account that their purpose, i.e. transmission of images and sound, is the same. The goods and services can also coincide in producers and providers. They moreover target the same public. Therefore, they are similar.

Computer software is also similar to the opponent’s decoders (covered by both signs) given that decoders also operate with software, which is likely to be developed by companies specialising in computer software, an otherwise very broad category. The goods can also coincide in distribution channels.

Computer application software for mobile telephones is similar to the opponent’s transmission of images and videos services, which may well require the download of a specific computer application. The software and the transmission services, in this case, can be provided by the same companies. And as such they would also be complementary and target the same user.

Portable computers are similar to a low degree to the opponent’s decoders in the sense that they can be expected to be produced and marketed by the same IT companies active in the development of computers and computer hardware. They can also coincide in sales outlets.

The rest of the contested goods are accessories for mobile phone and computer hardware, which have nothing in common with the opponent’s goods in Class 9, or the services in classes 35, 38, 41 and 42. They differ in nature, purpose, producers, distribution channels, they are neither complementary nor in competition. The goods and the opponent’s goods and services are, therefore, dissimilar. 

Contested services in Class 35

The contested wholesaling, retailing and sale via the internet of telephone goods and accessories are similar to the opponent’s retailing and wholesaling of set-top boxes covered by European Union trade mark registration No 8 699 291. Retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use.  

As regards the contested wholesaling, retailing and sale via the internet of computer hardware and software, they are even commonly retailed in the same outlets as set-top boxes, and therefore they must be considered highly similar to the opponent’s retailing and wholesaling of set-top boxes.

The remaining contested services are, however, dissimilar to all the goods and services of the opponent. They are related to services in the field of advertising, business management, business administration, which are provided by specialised companies to help with the smooth running of businesses or the promotion of their activities. The opponent argues that all these services necessitate telecommunication equipment or services; this might indeed be the case, however this link is too remote to lead to similarity under the relevant criteria. Consumers will not think that the contested services or the opponent’s goods and services would be provided by the same undertaking. The contested services differ from the opponent’s goods and services in purpose, providers and channels of distribution.

Contested services in Class 38

The contested telecommunications is a broader category which includes, while the contested mobile telephony is a category which overlaps with the opponent’s transmission of images and videos covered by European Union trade mark registration No 8 699 291 in Class 38. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant, they are considered identical to the opponent’s services.

The Opposition Division finds it appropriate to take into account only the earlier mark European Union trade mark registration No 8 699 291 for the further examination of the opposition. The identical or similar goods and services have been found in comparison with the goods covered by this earlier right, while the dissimilar goods and services are also dissimilar to the goods and services covered by the earlier French trade mark registration. The two earlier signs are almost the same, the earlier French trade mark only differing in colour. Therefore, further examination of this earlier right would not have a further impact on the finding of a likelihood of confusion

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 or similar to various degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

Earlier trade mark	Contested sign

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 is a figurative mark consisting of the word element “LE CUBE” written in grey standard upper case characters, preceded by a ‘+’ sign within a black rectangle. The contested sign consists of the expression ‘CUBE UP’ written in black, slightly elongated but otherwise standard capital letters.

The ‘+’ sign will be perceived as such in the earlier sign; this is nevertheless a basic symbol devoid of distinctiveness. ‘CUBE’ refers to a solid object with six square surfaces which are all the same size in French and English. The earlier sign means ‘the cube’ in French: for the part of the public recognising it as a French definite article, ‘LE’ is a non-distinctive element. ‘UP’ in the contested sign indicates a direction that is away from the ground or towards a higher level in English. Neither ‘CUBE’ nor ‘UP’ have a relation with the goods and services at hand and therefore their distinctiveness is normal.

Conceptually, where the above meanings are understood, the signs coincide in the concept of ‘CUBE’ in which case they are highly similar, even if concepts in ‘LE’ or ‘UP’ set the concepts somewhat apart. Where the signs are meaningless, the conceptual comparison in principle does not influence the assessment of the similarity of the signs, except for the difference in the non-distinctive ‘+’ element of the earlier sign which in any event has a limited impact.

Visually, the signs coincide in the element ‘CUBE’. Although it is written in slightly different colour and stylisation in the two marks, both depictions are quite commonplace. They differ in the elements ‘LE’, ‘UP’ and the ‘+’ sign, although ‘LE’ and ‘+’ has limited distinctiveness for some or all of the relevant public, and ‘UP’ is the second element of the contested sign, while the public tends to read from left to right.

Therefore, the signs are visually similar to an average 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 word ‘CUBE’ present identically in both signs. The pronunciation only differs in the sounds of the letters ‘L-E’ in the earlier sign, which some will see as non-distinctive, and the second element ‘UP’ in the contested sign. Even if the ‘+’ would also be pronounced in the earlier sign, this would have limited impact.

Therefore, the signs are aurally similar to an average degree.

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 goods and 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 non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The signs visually, aurally and, for part of the public, also conceptually coincide in the element ‘CUBE’. The earlier sign differs in a non-distinctive figurative element and a verbal element which may also lack distinctiveness for some, and in any event consist of only two letters. The contested sign only differs in a two-letter word which is placed after the coinciding initial word. The stylisation of the verbal elements is fairly basic and thus unlikely to leave a lasting impression.

Consequently, given its length, position and distinctive character, the coinciding element ‘CUBE’ will have the most impact on consumers. Therefore, the above mentioned differences are insufficient to enable the relevant public to safely distinguish between the signs in the context of identical or similar, even lowly similar goods and 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 European Union trade mark registration.

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

The rest of the contested goods and 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 goods and 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 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

Cynthia DEN DEKKER

Marianna KONDAS

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.