OPPOSITION No B 2 693 433

Fashion Television International S.A., 35a, avenue J-F Kennedy, 1855 Luxembourg, Luxembourg (opponent)

a g a i n s t

fashiontv.com GmbH, Elsenheimerstr. 43, c/o R.A.W. Unternehmensberatung GmbH, 80687 München, Germany (holder), represented by Mitscherlich Patent- und Rechtsanwälte PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 04/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 693 433 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of international registration designating the European Union No 1 257 660 for the figurative mark , namely against all the services in Classes 38, 41 and 43. The opposition is based on Austrian trade mark registration No 284 753, Benelux trade mark application No 1 297 034, German trade mark registration No 302 015 100 217, German trade mark registration No 302 015 043 381, German trade mark registration No 302 015 041 897, German trade mark application No 3 020 150 405 434, Slovenian trade mark registration No 9 871 831, United Kingdom trade mark application No 3 084 556, European Union trade mark registration No 599 829 and European Union trade mark registration No 14 056 899, all of them for the figurative mark . The opponent invoked Article 8(1)(a) and (b) EUTMR.

SUBSTANTIATION OF GERMAN TRADE MARK APPLICATION No 3 020 150 405 434

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 trade mark which is not yet registered, the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) — Rule 19(2)(a)(i) EUTMIR.

In the present case the evidence filed by the opponent concerning the earlier German trade mark application No 3 020 150 405 434 consists of an extract from a data base.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because it does not contain all the necessary elements, namely the list of services in Classes 38 and 41 in respect of which registration of this earlier trade mark was sought.

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 this earlier right.

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 Benelux trade mark application No 1 297 034, German trade mark registration No 302 015 041 897, Slovenian trade mark registration No 9 871 831, United Kingdom trade mark application No 3 084 556 and European Union trade mark registration No 14 056 899.

1. The goods and services

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

Benelux trade mark application No 1 297 034

Class 35:        Television advertising and promotional services; rental of advertising space on cable, digital and satellite television channels; television advertising commercials.

Class 38:        Broadcasting and transmission of television programmes; cable, digital and satellite television broadcasting; broadcasting via telecommunication networks including the Internet; distribution of online television channels (transmission of online television programmes) via the Internet and other electronic media. 

Class 41:        Television entertainment services; production, presentation and syndication of online television channels via the Internet and other electronic media; production, presentation, syndication and distribution of television programmes and sound and video recordings for broadcasting by television, cable, satellite, video and by electronic means including via the Internet. 

German trade mark registration No 302 015 041 897

Class 25:        Clothing; Footwear; Headgear.

Class 38:         Broadcasting and transmission of television programmes; cable, digital and satellite television broadcasting; broadcasting via telecommunication networks including the Internet; distribution of online television channels (transmission of on-line television programmes) via the Internet and other electronic media.

Class 41:        Television entertainment services; production, presentation and syndication of on-line television channels via the Internet and other electronic media; production, presentation, syndication and distribution of television programmes and sound and video recordings for broadcasting by television, cable, satellite, video and by electronic means including via the Internet.

Slovenian trade mark registration No 9 871 831

Class 38:        Television broadcasting services comprising terrestrial cable or satellite broadcasting service interactive electronic communication.

Class 41:        Production and distribution of television programs to disseminate educational information and entertainment services through a satellite television, phone, video, audio and computer media, e-mail and the Internet.

United Kingdom trade mark application No 3 084 556

Class 38:        Provision of telecommunication transmission of and access to video and audio content provided via video on demand, interactive television, pay per view and pay television subscription services; video-on-demand transmission services; interactive television broadcasting and transmission services providing access to information from third party sources; Transmission, consumption, and/or integration of commercial video-on-demand through social networks; Broadcasting services and provision of telecommunication access to films and tv programmes provided via a video-on-demand service; Broadcasting services and provision of telecommunication access to video and audio content provided via a video-on-demand service via the Internet; Video-on-demand transmission services.

Class 41:        Provision of non-downloadable films and tv programmes via a video-on-demand service; Television and movie production and post production, location and studio production and post productions, dubbing and library services.

European Union trade mark registration No 14 056 899

Class 38:        Broadcasting and transmission of television programmes; cable, digital and satellite television broadcasting; broadcasting via telecommunication networks including the Internet; distribution of online television channels (transmission of on-line television programmes) via the Internet and other electronic media.

Class 41:        Television entertainment services; production, presentation and syndication of on-line television channels via the Internet and other electronic media; production, presentation, syndication and distribution of television programmes and sound and video recordings for broadcasting by television, cable, satellite, video and by electronic means including via the Internet.

The contested services are the following:

Class 38:        Telecommunications services; broadcasting of radio programs; broadcasting of cable television programs and television programs; provision of access to information in the Internet, namely electronic communication in the fields of fashion and music as well as broadcasting of radio and television programs via the Internet; collection and transmission of news (news agencies); transmission of sound and images via satellites.

Class 41:        Film production, motion picture rental, projection of films, radio and television entertainment; services in the field of education and entertainment (included in this class), musical, singing, theater and dancing performances, live and via media; education via radio or television; production of radio and television programs; sporting and cultural activities; production, rental and showing of films (entertainment), educational and entertainment films, stored on recorded video carriers and CDs, CD ROMs and DVDs; organization of award shows; organization and arranging of fashion shows for entertainment purposes; providing of training.

Class 43:        Services for providing food and drink and temporary accommodation; services of a café; hotel services; providing hotel accommodation; catering; services of a restaurant; service of a snack-bar; services of a self service restaurants.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

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.

Furthermore, as a preliminary remark the Opposition Division notes that for reasons of procedural economy it will not examine the priority dates in relation to all goods and services on which the opposition is based but will proceed at this point on the basis of the opponent´s claims.

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 services in Class 38

The contested telecommunication services include, as a broader category the opponent’s services in Class 38 (for example, broadcasting and transmission of television programmes). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested broadcasting of cable television programs and television programs and broadcasting of television programs via the Internet are identically contained in both the holder´s and the opponent´s list or are included in the broad category of the opponent’s broadcasting of television programmes. These services are, therefore, identical.

The contested electronic communication in the fields of fashion and music; collection and transmission of news (news agencies) and transmission of sound and images via satellites overlap with the opponent’s broadcasting via telecommunication networks including the Internet because they all refer to the sharing and transmission of information to end users. Therefore, they are identical.

The contested broadcasting of radio programs and broadcasting of radio programs via the Internet are included in the broad category of the opponent’s broadcasting via telecommunication networks including the Internet. These services are, therefore, identical.

Contested services in Class 41

The contested film production; production of radio and television programs; production of films (entertainment), educational and entertainment films, stored on recorded video carriers and CDs, CD ROMs and DVDs overlap with the opponent’s production of television programmes and sound and video recordings for broadcasting by television, cable, satellite, video and by electronic means including via the Internet. These services are, therefore, identical.

The contested motion picture rental, projection of films, radio and television entertainment; rental and showing of films (entertainment), educational and entertainment films, stored on recorded video carriers and CDs, CD ROMs and DVDs overlap with the opponent’s distribution of television programmes and sound and video recordings for broadcasting by television, cable, satellite, video and by electronic means including via the Internet. These services are, therefore, identical.

The contested services in the field of entertainment (included in Class 41), musical, singing, theater and dancing performances, live and via media overlap with the opponent’s television entertainment services and are, therefore, identical.

The contested services in the field of education (included in this class) and education via radio or television overlap with the opponent’s production and distribution of television programs to disseminate educational information and entertainment services through a satellite television, phone, video, audio and computer media, e-mail and the Internet and they are, therefore, identical.

The contested sporting and cultural activities are similar to the opponent’s television entertainment services as they have the same purpose. They can coincide in the end user and the distribution channels.

The contested organization of award shows and organization and arranging of fashion shows for entertainment purposes are similar to the opponent’s television entertainment services because they have the same purpose, relevant public and provider.

The contested providing of training is dissimilar to all the opponent’s goods and services covered by the earlier trade marks, as they have different nature and purpose, they are neither complementary to nor in competition with each other. Their distribution channels and relevant public are also different.

Contested services in Class 43

The contested services in Class 43 are dissimilar to all the opponent’s goods and services covered by the earlier trade marks. They have different nature and purpose from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and relevant public are also different. Consumers would not think that these services come from the same or economically linked undertakings.

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 services found to be identical or similar are directed at the public at large as well as business customers with specific professional knowledge. The level of attention they will display in relation to the services will range from average to high depending on the services at hand, their price and frequency of delivery.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union (including Germany, Slovenia, the Benelux countries and the UK as regards the invoked national marks).

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 sign is a figurative mark composed of a stylised upper case letter ‘T’ with a depicted letter ‘F’ inside on the left side and the verbal elements ‘FASHION TELEVISION’ underneath one above the other, where the verbal element ‘FASHION’ is displayed in large bold black letters.

The figurative element, the stylised upper case letter ‘T’ with a depicted letter ‘F’ inside, is more distinctive than the verbal elements ‘FASHION TELEVISION’. When a sign consists 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). However, in the case at hand the verbal element ‘FASHION TELEVISION’ is clearly descriptive for all the relevant services covered by the earlier signs and the relevant consumers will grasp the meaning immediately, without further reflection, of a television which shows fashion- and lifestyle- related content. Due to the pervasive nature of the global fashion industry, it is a well-known fact that the word ‘fashion’ is very commonly used and is understood in all the European Union Member States, in particular by business customers whose professions concern fashion-related services but also by the public at large, who are exposed on an almost daily basis to the international fashion industry in the press, on television and in shops, and in which the English word ‘fashion’ has become synonymous with this international industry (26/01/2017, R 258/2016-4, f.fashion, § 44). Also the word ‘TELEVISION’ will be understood not only by the English-speaking public but throughout the whole relevant territory as the means by which the fashion content reaches the audience.

Therefore, the word combination ‘FASHION TELEVISION’ conveys the notion of a television showing fashion content. For this reason, the verbal element ‘FASHION TELEVISION’ is non-distinctive in connection to all the relevant services of the earlier signs.

However, the figurative element consisting of the letters ‘T’ and ‘F’ will be perceived as a fanciful stylization of these letters due to the representation of both letters and the position of the letter ‘F’ inside the letter ‘T’. This figurative element, even if perceived as reference to the first letters of the elements ‘FASHION TELEVISION’, as such does not convey any notion in respect of the relevant services of the earlier signs and, moreover, due to its layout and stylisation it is the more distinctive element within the earlier signs. Moreover, this figurative element, due to its size and position, is the most visually outstanding element of the earlier signs.

The contested sign consists of a diamond-shaped outline containing the letter ‘f’ and a small dot, to the right of which the word ‘FASHIONTV’ in lower case appears, all of this displayed on a black background (the latter being of merely decorative nature and, therefore, non-distinctive). For the above considerations regarding the element ‘FASHION’ and also taking into account that ‘TV’ is a common abbreviation for ‘TELEVISION’ in different languages of the relevant territory, the verbal element ‘FASHIONTV’ is non-distinctive for the relevant services in Classes 38 and 41 of the contested sign. The figurative element, i.e. the diamond device, does not, however, convey any notion in respect of the services in question and it is, therefore, the most distinctive element within the contested sign. The contested sign has no element that could be considered clearly more dominant than other elements.

   

Visually, the signs coincide in the non-distinctive verbal element ‘FASHION’ and the letters ‘TV’ contained in both signs. They differ in the figurative elements of both signs and the letters ‘E-L-E-I-S-I-O-N’ in the earlier sign. Another difference is the black rectangular background on which the contested sign is represented, not contained in the earlier sign.

Besides the letter ‘F’ which is displayed in the figurative elements of both signs but it is, however, in a different typeface, there is no other counterpart in the contested sign to the earlier signs’ more distinctive figurative element, nor is there any element in the earlier sign visually similar to the distinctive figurative device in the contested sign. Overall, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in the various parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘FASHION’, present identically in both signs. As this common element is non-distinctive, the signs are phonetically similar to no more than a low degree.  

Conceptually, the figurative elements of the signs have no meaning but the verbal elements convey a clear, direct and straightforward message that the services in question relate to fashion and lifestyle broadcasting and fashion-related TV shows, programmes or films. The signs are conceptually similar to a lower than average degree, given that the verbal elements ‘FASHION TELEVISION’ and ‘FASHIONTV’ are non-distinctive for the services in question.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of some non-distinctive elements in the marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The risk that the relevant public might believe that the services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The existence thereof must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22), in particular the degree of similarity between the trade marks and between the goods or services covered, the distinctiveness of the earlier mark (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19-20), and also the likelihood of association between the signs (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

It is settled case-law of the Court of Justice that the global assessment of a likelihood of confusion cannot take into consideration only one component of a composite sign and compare it with another sign. The comparison must be made by examining each of the signs in question as a whole (15/01/2010, C-579/08 P, Ferromix, Inomix, Alumix, EU:C:2010:18, § 71; 18/09/2013, R 1462/2012-G, ULTIMATE GREENS / ULTIMATE NUTRITION § 56; 15/09/2014, R 2519/2013-4, NEOFON / FON (fig.) et al., § 31).

Whereas a company is certainly free to choose a trade mark which comprises non-distinctive elements in relation to the relevant services, it must accept, however, in so doing, that competitors are equally entitled to use the same descriptive components for such services (23/05/2012, R 1790/2011-5, 4REFUEL / REFUEL, § 15; 18/09/2013, R 1462/2012-G, ULTIMATE GREENS / ULTIMATE NUTRITION § 59; 15/09/2014, R 2519/2013-4, NEOFON / FON et al., § 32).

The similarity between the conflicting signs at issue consists of the fact that each of them contains the English words ‘FASHION’ and ‘TELEVISION’, respectively the abbreviation ‘TV’ which will be seen as broadly descriptive and non-distinctive for all the relevant services covered by both trade marks in Classes 38 and 41. The signs are dissimilar with respect to all other aspects, since they bear more distinctive figurative elements which have no commonalities, except for the common letter ‘F’, written, however, in different typeface. The common descriptive and non-distinctive elements have little impact in the global assessment as consumers are not likely to be confused about the origin of services on the basis of the similarity of weak elements (04/02/2014, T-604/11 and T-292/12, Magnext, EU:T:2014:56, § 34) and even less on the basis of non-distinctive elements.

Even for the services found to be identical or similar, the other factors, such as the non-distinctive character of the common elements and the higher distinctive character of the other, non-shared elements of the signs are sufficient to exclude any likelihood of confusion, including the risk of association, even for the identical services for which the relevant general public would display only an average level of attention.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

Austrian trade mark registration No 284 753, German trade mark registration No 302 015 100 217, German trade mark registration No 302 015 043 381, European Union trade mark registration No 599 829, all of them for the same figurative mark . Since these marks are identical to the one which has been compared and cover the same or a narrower scope of services, the outcome cannot be different with respect to the services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services. Likewise, since the opposition is not successful on the basis of all goods and services claimed by the opponent, the issue of the relevant priority dates will be not further examined.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

 

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin EBERL

Alexandra APOSTOLAKIS

Denitza STOYANOVA-VALCHANOVA

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.