OPPOSITION No B 2 470 055

Intenso GmbH, Gutenbergstraße 2, 49377 Vechta, Germany (opponent), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Am Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative)

a g a i n s t

Mediabox Broadcasting International Ltd., Building 3, Chiswick Park, 566 Chiswick High Road, London W4 5YA, United Kingdom (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative).

On 07/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 470 055 is partially upheld, namely for the following contested services:

Class 38:        Telecommunication services; broadcasting of radio and television programmes; digital transmission of audio and video broadcasts, including via radio, television, satellite, cable, ethernet and via electronic means; providing electronic telecommunication connections; providing of access to telecommunications networks; communication by computer terminals; interactive communications via the internet, cable network or other forms of data transfer; cable television broadcasting; rental of (tele)communication apparatus; information and consultancy relating to the aforesaid services; all the aforesaid services, whether or not provided via electronic channels, including radio, television, teletext and the internet; none of the aforementioned services relating to music television broadcasting.

2.        European Union trade mark application No 13 458 948 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 13 458 948, namely against some of the services in Classes 38 and 41. The opposition is based on international trade mark registration No 1 061 212 designating the European Union. 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.

1. The goods and services

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

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

The contested services are the following:

Class 38:        Telecommunication services; broadcasting of radio and television programmes; digital transmission of audio and video broadcasts, including via radio, television, satellite, cable, ethernet and via electronic means; providing electronic telecommunication connections; providing of access to telecommunications networks; communication by computer terminals; interactive communications via the internet, cable network or other forms of data transfer; cable television broadcasting; rental of (tele)communication apparatus; information and consultancy relating to the aforesaid services; all the aforesaid services, whether or not provided via electronic channels, including radio, television, teletext and the internet; none of the aforementioned services relating to music television broadcasting.

Class 41:        Entertainment; presentation of music and entertainment programmes, including via radio, television, cable, ethernet, satellite and electronic means; providing interactive online computer games via computer networks and global communication networks; on-line games services; information and consultancy relating to the aforesaid services; all the aforesaid services, whether or not provided via electronic channels, including radio, television, teletext and the internet; none of the aforementioned services relating to music television broadcasting.

The term ‘including’, used in the applicant’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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

Contested services in Class 38

The contested telecommunication services allow people to communicate with one another by remote means. Consumers use apparatus for transmission or reproduction of sound or images and computers when they want to communicate with others. The contested services are, broadly speaking, broadcasting and/or transmission services, which provide the means of communication (e.g. the provision of a network of fibre optic cables; the provision of broadcasts or transmissions via geo-stationary satellite transmission facilities; the rental of communications apparatus and systems) and consultancy services related thereto.

The earlier trade mark is protected for apparatus for recording, transmission or reproduction of sound or images; computers in Class 9, which are apparatus and devices used to communicate audio or video information over a distance via radio waves, optical signals, etc., or along a transmission line. It is nowadays common for telecommunications companies to also sell goods such as telephones or computers and provide other complementary goods, such as routers or modems.

Consequently, a link exists between the contested telecommunication services; broadcasting of radio and television programmes; digital transmission of audio and video broadcasts, including via radio, television, satellite, cable, ethernet and via electronic means; providing electronic telecommunication connections; providing of access to telecommunications networks; communication by computer terminals; interactive communications via the internet, cable network or other forms of data transfer; cable television broadcasting; rental of (tele)communication apparatus; information and consultancy relating to the aforesaid services; all the aforesaid services, whether or not provided via electronic channels, including radio, television, teletext and the internet; none of the aforementioned services relating to music television broadcasting and the abovementioned goods of the opponent in Class 9, since they can be considered to have at least one purpose in common, namely the satisfaction of users’ telecommunication needs, whether by the provision of the telecommunication service itself or by the provision (selling or renting) of equipment necessary for such communications, including the provision of related information and consultations. Even though their natures are different, their purposes, users and distribution channels are the same. Furthermore, they are complementary. Therefore, they are similar.

Contested services in Class 41

The contested entertainment; presentation of music and entertainment programmes, including via radio, television, cable, ethernet, satellite and electronic means; providing interactive online computer games via computer networks and global communication networks; on-line games services; information and consultancy relating to the aforesaid services; all the aforesaid services, whether or not provided via electronic channels, including radio, television, teletext and the internet; none of the aforementioned services relating to music television broadcasting are all entertainment services, including the presentation of music or entertainment programmes that can be enjoyed via television, radio, etc., and online games services.

Even though some of these services could require the opponent’s goods in Class 9, for example apparatus for recording, transmission or reproduction of sound or images and computers, for their provision, this is not sufficient for a finding of similarity. Although, in a broad sense, there may be a link between them regarding their intended purpose (entertainment), the contested services differ in their nature from the technical equipment that can be used to disseminate those entertainment programmes via radio, television, etc., or provide those computer games online. Similarly, the sole fact that some of the opponent’s goods, for example magnetic data carriers and recording discs, may be used for the recording of music or entertainment programmes does not eliminate their differences in nature or make them essential for each other.

Moreover, providers of these contested services do not usually produce the abovementioned or the remaining goods of the opponent in Class 9. Consequently, the manufacturer/provider of the opponent’s goods is not the provider of the contested services. Furthermore, the goods and services under comparison differ in their distribution channels. Even though some of them can have the same users, this coincidence is not enough to create a similarity. Therefore, the contested services in Class 41 are considered dissimilar to the opponent’s goods in Class 9.

2. The signs

Funbox	FUNBOX
Earlier trade mark	Contested sign

Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. According to case-law, two signs must be considered identical when the contested sign ‘reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54). This applies to the present case, since the fact that the earlier mark is in title case whereas the contested sign is in upper case is an immaterial difference that is likely to be disregarded by the relevant public.

Therefore, the signs are identical.

3. Global assessment, other arguments and conclusion

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).

The signs are identical and some of the contested services, namely all the contested services in Class 38, are similar to the opponent’s goods in Class 9.

In its observations, the applicant argues that the earlier trade mark should be considered descriptive in relation to the relevant goods in Class 9, since the word ‘Funbox’ will be perceived by the English-speaking part of the public as referring to ‘a device in a box-like housing used for fun or leisure purposes’ or ‘a container with flat base and sides, typically square or rectangular and having a lid’. In support of its argument, the applicant refers to several trade marks containing the word ‘BOX’, including the contested sign itself, that were refused on absolute grounds for the goods in Class 9 by the Benelux Office for Intellectual Property (BOIP).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Moreover, a part of the European Union can consist of only one Member State (14/12/2006, T-81/03, T-82/03 & T-103/03, Venado, EU:T:2006:397, § 76 & 83).

As regards the word ‘Funbox’, it cannot be unambiguously claimed that this word is directly descriptive of characteristics of the opponent’s goods in Class 9. At most, it can be considered allusive in relation to some of the goods (i.e. apparatus for reproduction of sound or images). Moreover, the word ‘Funbox’ does not have any meaning for the non-English-speaking part of the public and therefore would not be understood in the European Union as a whole. It follows that the degree of distinctiveness of the earlier mark ‘Funbox’ may be lower for the English-speaking part of the public in relation to some of the relevant goods in Class 9 and must be seen as normal for the part of the public that does not perceive its meaning. However, the degree of distinctiveness of the earlier mark is not relevant in the present case, since the signs under comparison are identical.

As regards the trade marks refused by the BOIP referred to by the applicant, as is clear from the case-law, the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant EU rules. Accordingly, the Office and, if appropriate, the EU judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark (17/01/2013, T-355/09, Walzer Traum, EU:T:2013:22, § 52). Therefore, the trade marks refused by the BOIP referred to by the applicant are not relevant to the present proceedings.

The applicant also affirms that the opponent’s trade mark is used in relation to ‘portable loudspeakers’ (and provides an example in its observations of 29/11/2016), whereas the applicant is a television broadcasting company, and argues that the services offered by the applicant are highly dissimilar to the goods (portable speakers, hardware, etc.) offered by the opponent.

The Opposition Division notes that the examination of the opposition under Article 8(1)(b) EUTMR is, in principle, limited to the trade mark as applied for and the earlier mark as protected, and that other circumstances, such as the commercial implications or manner of use cannot be taken into account. A comparison of the goods and services is part of the assessment of likelihood of confusion, but not an assessment of actual confusion or infringement. Therefore, in order to assess the similarity of the goods at issue, within the meaning of Article 8(1)(b) EUTMR, the group of goods and services protected by the marks at issue must be taken into account, and not the goods actually marketed subject to those marks (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

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 international trade mark registration No 1 061 212 designating the European Union.

It follows that the contested trade mark must be rejected for the services found to be similar to the goods 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)(b) 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 will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Judit NÉMETH

Rasa BARAKAUSKIENE

Ana MUÑÍZ RODRÍGUEZ

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.