GeoNue | Decision 2590233 – Gruner + Jahr GmbH & Co KG v. Nordai Srl

OPPOSITION No B 2 590 233

Gruner + Jahr GmbH & Co KG, Am Baumwall 11, 20459 Hamburg, Germany (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft MBB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Nordai Srl, Via Goito 11, 09123 Cagliari, Italy (applicant), represented by Lexico Srl, Via Cacciatori delle Alpi 28, 06121 Perugia, Italy (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 590 233 is partially upheld, namely for the following contested goods and services:

Class 9: Software; Education software; Interactive computer software; Computer software packages; Computer operating programs; Application software; Computer software platforms; Computer application software; Recorded computer software; Computer graphics software; Interfaces for computers; Interactive video software; Games software; Software programs for video games; Computer software for creating dynamic websites.

Class 41: Organisation of Webinars; Publishing of web magazines.

Class 42: Software as a service [SaaS]; Cloud computing; Computer systems integration services; Configuration of computer software; Maintenance of software; Updating of computer software; Computer software design; Software customisation services; Software development; Rental of web servers; Design of web pages; Website development services; Hosting web sites; Computer website design; Hosting computer sites; Website design; Web site design and creation services; Building and maintaining websites; Creating and maintaining websites; Hosting websites on the Internet; Creation of internet web sites; Creating web pages for others; Maintenance of websites and hosting on-line web facilities for others.

2. European Union trade mark application No 14 289 672 is rejected for all the above goods and services. It may proceed for the remaining 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 14 289 672. The opposition is based on, inter alia, international trade mark registration No 863 134 designating the European Union. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the reputation of international trade mark registration No 863 134. Reputation is claimed in the entire European Union.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The Opposition Division considers it useful to list the relevant goods and services.

The earlier goods and services for which the opponent claims a reputation are as follows:

Class 9: Magnetic, optical, magneto-optical and electronic sound and image recording carriers and data memories, in particular CDs, CD ROMs, CD-Is, DVDs, floppy disks, video tapes, recording discs and microfilm, for on and off-line use; tape recorders, equipment for receiving, as well as for recording, transmission and reproduction of sound and images; hardware, in particular data processing apparatus, computers and computer peripheral devices; software; data processing programs, computer operating programs.

Class 16: Printed matter; bookbinding material.

Class 35: Services of a electronic commerce platform, namely presentation of goods and services, reception of orders and order processing services, as well as auditing services for electronic ordering systems; publication of publicity texts; compilation and systemization of information into computer databases.

Class 38: Services in the field of telecommunications; transmission of information to third parties on the Internet; dissemination of information on wireless or cable networks; online content provider services, namely providing user access to a global computer network and information about the Internet; broadcasting of radio and (cable) television programmes.

Class 41: Education, providing of training, entertainment, in particular radio and television entertainment; services of a publisher (except printing); publication and issuing of texts in printed and electronic form as an off-line and online publisher, included in this class; sporting and cultural activities.

Class 42: Computer programming; design and development of database programs; exploitation and management of intellectual property.

The contested goods and services are the following:

Class 41: Organisation of Webinars; Publishing of web magazines.

Class 42: Software as a service [SaaS]; Cloud computing; Urban planning; Architectural design for town planning; Planning in relation to town planning and commercial town planning; Town planning advisory services; Computer systems integration services; Configuration of computer software; Maintenance of software; Updating of computer software; Computer software design; Software customisation services; Software development; Rental of web servers; Design of web pages; Website development services; Hosting web sites; Computer website design; Hosting computer sites; Website design; Web site design and creation services; Building and maintaining websites; Creating and maintaining websites; Hosting websites on the Internet; Creation of internet web sites; Creating web pages for others; Maintenance of websites and hosting on-line web facilities for others.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 24/06/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 16: Printed matter; bookbinding material.

Class 42: Computer programming; design and development of database programs; exploitation and management of intellectual property.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 10/02/2016, the opponent submitted, inter alia, the following evidence:

Magazine covers: the earlier mark is well-known as being the title of a very popular general knowledge magazine in Germany which has been published monthly since 1976, in other words for nearly 40 years. Numerous magazine covers bearing the mark and dates have been submitted in order to demonstrate the presence of the sign on the market, such as the one below:

Distribution and sales figures: from 1979 to 2008, i.e. for more than 30 years, the average number of sales was always higher than 400,000 copies per issue in Germany. For 16 years, the average sales figures were even higher than 500,000 copies per issue. Although, the sales figures have slightly reduced due to the economic situation since 2009, the average sales are usually still higher than 250,000 sold copies per issue, and, are thus extraordinarily high. Tables of figures are attached to prove this. These statistics have been produced and published by the German Informationsgesellschaft zur Feststellung der Verbreitung von Werbeträgern e.V. (IVW) which is a neutral and independent institution collecting and providing comparable information about the circulation of media.

Distribution and sales figures for all German knowledge magazines: Statistics collected and provided by IVW showing the average annual distribution and sales figures of all general knowledge magazines for the period 2005 to 2011 and the period 2012-2015. ‘Geo’ magazine always appears in the top position, which confirms that it has always been, and still is, the magazine with the highest distribution and sales figures and the leader on the general knowledge magazine market.

Opinion poll: the Allensbacher Markt- und Werbeträgeranalyse (AWA). The AWA is a yearly analysis which is conducted and published by the neutral institution for public opinion polls Allensbach evaluating media and their market. According to the AWA, the magazine “GEO” was well-known to the following proportion of the German public older than 14 years of age, broken down per year:

2011: 66.2%

2012: 65.1%

2013: 64.9%

2014: 64.6%

2015: 64.8%

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Germany for Printed matter, namely magazines in Class 16. The Opposition Division considers that in view of the size and population of Germany, the opponent’s international registration has gained a reputation in a substantial part of the European Union and is known by a significant part of the public. Therefore, a reputation in Germany is sufficient to deem the earlier international registration reputed in the European Union as a whole (see judgment of 06/10/2009, C 301/07, Pago, EU:C:2009:611, § 29-30).

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures and market share shown by the evidence and the opinion polls submitted all unequivocally show that the mark enjoys a high degree of recognition among the relevant public. Finally, it is also worth noting that various decisions taken by the Office, at opposition or appeal level, have already established the reputation of the ‘GEO’ mark for these goods, for example opposition decision No B 1 826 331 of 06/05/2015.

The signs

GEO

Earlier trade mark

Contested sign

The relevant territory is the European Union. However, as seen above, reputation has been proved in Germany which is the territory to be taken into account here.

The element ‘GEO’, which is the entire earlier mark and the beginning of the contested sign will be understood by the relevant public as a prefix deriving from ‘Geografie. Geopolitik’ meaning ‘geography’ or ‘geopolitical’. ‘Geo’ will be clearly perceived in the contested sign since it is written in green, while the second word, ‘Nue’, appears in blue and with an initial capital. This prefix conveys the meaning ‘earth’. ‘Geo’ has limited distinctiveness in connection with some of the goods, namely, all of the software and data carriers in Class 9, the printed matter in Class 16 and the software development and computing services in Class 42. This is because it alludes to the subject matter of the goods and services, conveying the idea that they focus on geographical issues or can be put to use for geographical purposes. ‘Nue’ in the contested sign has no meaning for the relevant public and is therefore distinctive in connection with the goods and services. In this regard, although the applicant claims that ‘nue’ is the Sardinian word for ‘cloud’, it has no meaning for the relevant public which consists of German speakers. The contested sign also contains an image of a cloud with a terrestrial globe with grid lines nestled inside. The image of the globe will be connected with the concept of ‘earth’ and will be seen both as reinforcing ‘Geo’ and as less distinctive in connection with some of the goods and services for the same reasons given regarding the prefix ‘GEO’ above. The image of a cloud may be seen as alluding to the concept of ‘cloud computing’ and therefore has less distinctiveness in connection with all of the goods and services connected with computing. The blue background of the contested sign is merely decorative and without distinctive value. The slight stylisation of the earlier mark has no bearing on the comparison of the signs as it is so banal, merely consisting of grey shading and a basic font.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs are similar to the extent that they coincide in ‘GEO’. However, they differ in ‘Nue’ in the contested sign as well as the picture of a cloud and terrestrial globe. Even though ‘GEO’ has limited distinctiveness, the fact that the signs coincide in their beginnings is significant. Furthermore, the image of the globe reinforces the less distinctive word ‘Geo’ of the contested sign and the depiction of a cloud will be seen as less distinctive for the reasons given above.

In view of the reasoning given above, the signs are visually similar to an average degree.

Aurally, the signs are similar to the extent that they coincide in ‘GEO’. However, they differ in ‘Nue’ in the contested sign. Even though ‘GEO’ has limited distinctiveness, the fact that the signs coincide in their beginnings is significant.

In view of the reasoning given above, the signs are aurally similar to an average degree.

Conceptually, in view of the meanings explained above, the signs coincide in the concept conveyed by the prefix ‘GEO’. They differ conceptually in the image of a cloud contained in the contested sign. They also differ in the image of a globe in the contested sign, although at the same time, there is a certain link with the prefix ‘GEO’, as explained above.

As such, the signs are conceptually similar to an average degree.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are considered similar for the purposes of Article 8(5) EUTMR.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙ the degree of similarity between the signs;

∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙ the strength of the earlier mark’s reputation;

∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙ the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

First, the signs bear similarities. The earlier mark, ‘GEO’, is included at the beginning of the contested sign. Even though the Opposition Division has stated that ‘Geo’ could be seen as having a more limited degree of inherent distinctiveness, this issue pales into insignificance in the face of the massive reputation possessed by the opponent for magazines in Germany, a reputation which is long-standing and widely acknowledged. ‘Geo’ will be easily perceived in the contested sign since it is at the beginning and the following word, ‘Nue’, appears in a different colour and with an initial capital. It is also worth noting that the opponent provided evidence to show that the ‘GEO’ trade marks have been used in line extensions for further magazines covering similar, though not identical topics, for example, ‘Geo special’ or ‘Geo Epoche’. Therefore it is reasonable to assume that the public would naturally be led to establish a link between the two marks, a fact which is reinforced by the considerations regarding the goods and services as explained below.

The earlier mark has a reputation for magazines. The contested goods are various types of software and Interfaces for computers in Class 9, organisation of webinars and publishing of web magazines in Class 41, and various types of software development and design services, website related services and town planning services in Class 42. The opponent argues that ‘there is a clear overlap between magazines like those marketed by the Opponent on the one hand and software on the other hand. This overlap is due to the fact that, for several years already, the majority of magazines on the market is not only distributed in the form of printed magazines, but also in the form of apps for, e.g., tablet computers and smartphones like iPad, iPhone etc.’. The Opposition Division agrees that there is a link between the earlier reputed goods and most of the contested goods and services. It is clear that in the digital age, magazines no longer belong to the exclusive realm of paper publications. They may be accessed and downloaded for reading using a variety of electronic methods, as described by the opponent. As such, it would not be unusual for the publisher of such a successful magazine to branch out into not too distant areas such as producing and selling software to assist with the dissemination of its highly successful publication. The link with the publishing of web magazines in Class 41 is self-explanatory considering that the opponent’s reputation is for magazines as such. Regarding the contested Organisation of Webinars, it is not uncommon on the market for specialised magazines to provide webinars via the online version of their publications. So a link with these services is also conceivable.

The contested Urban planning; Architectural design for town planning; Planning in relation to town planning and commercial town planning; Town planning advisory services are not, however, capable of being linked with the earlier mark’s reputed magazines. While the relevant section of the public for the goods or services covered by the conflicting marks is the same or overlaps to some extent, those goods or services are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. The contested services are highly specialised services aimed at the comprehensive planning of the physical and social development of a town including the construction of facilities. They are services that cost vast amounts of money, are commissioned on an exceptional basis and are mainly aimed at municipal authorities. The reputed goods are magazines, an everyday item bought for leisure purposes. Even bearing in mind the opponent’s long established reputation for these goods, the Opposition Division finds it highly unlikely that the contested services offered under the applicant’s sign would bring to mind the earlier mark. The goods and services are not complementary and they would not be provided via the same channels. Finally, they serve completely different purposes. It is also worth noting that the opponent did not provide any arguments at all in support of a link between these contested services and the earlier reputed goods.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark in connection with all the goods and services it covers except for Urban planning; Architectural design for town planning; Planning in relation to town planning and commercial town planning; Town planning advisory services in Class 42, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR

(26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙ it is detrimental to the repute of the earlier mark;

∙ it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that when faced with the contested mark, consumers will instantly be reminded of the reputed earlier mark and will therefore benefit from the fame and power of attraction of the earlier mark.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

‘By using the contested application, the Applicant would also take unfair advantage of the reputation of the earlier mark. […] while perceiving the contested application, the consumer will be immediately reminded of the earlier marks. Thus, it is clear that the applicant tries a free riding here in order to benefit from the fame and the power of attraction of the earlier marks, their reputation and prestige, and to exploit, without paying financial compensation, the long-standing and intensive marketing efforts of the Opponent. […] It is highly likely that the number of consumers who buy the goods under the contested application will be much higher (compared to the number of consumers in case the goods were offered under a different mark) because many of them will be reminded of the well-known earlier marks “GEO” and because an image transfer takes place, that is because the consumers will show more appreciation for the goods of the contested application than they have actually deserved’.

Taking into account the similarity between the marks, the high degree of reputation of the earlier mark and the link between the relevant goods and services as examined in detail above, it is concluded that the contested mark would indeed benefit from the attractiveness of the earlier mark and its intensive marketing efforts.

In the Opposition Division’s view, there is a probability of free-riding in the circumstances of this case. The opponent has put forward a coherent line of argument showing how unfair advantage would occur, and that it is indeed likely in the ordinary course of events. The long-established use and recognition of the earlier mark makes it probable that consumers’ economical behaviour would be swayed in favour of the applicant’s goods and services solely because they are commercialised under the contested sign.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark with regard to all the contested goods and services which have been applied for except for:

Class 42: Urban planning; Architectural design for town planning; Planning in relation to town planning and commercial town planning; Town planning advisory services

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply. There is also no need to examine whether these other types of injury apply in connection with the contested Urban planning; Architectural design for town planning; Planning in relation to town planning and commercial town planning; Town planning advisory services in Class 42 since it has already been established that a link will not be made between the signs in relation to these services. So, logically, there can be no risk of injury.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following contested goods and services:

Class 41: Organisation of Webinars; Publishing of web magazines.

The opposition is not successful insofar as the following services are concerned:

Class 42: Urban planning; Architectural design for town planning; Planning in relation to town planning and commercial town planning; Town planning advisory services;

As seen previously, reputation was found in Germany and as such the comparison of signs focused on the relevant consumer from this territory. It is not necessary to undertake any further analysis in this regard since the unitary character of the earlier mark means it 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).

The examination of the opposition will continue under Article 8(1)(b) EUTMR in connection with the remaining contested services and earlier rights as well as the earlier right examined above, namely international trade mark registration No 863 134, since this earlier right was also invoked under 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 goods and services

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

International trade mark registration No 863 134

Class 16: Printed matter; bookbinding material.

Class 42: Computer programming; design and development of database programs; exploitation and management of intellectual property.

German trade mark registration No 302 013 062 241

Class 9: CDs, DVDs and other digital recording media; software (recorded or downloadable), in particular apps and multimedia products; computer games (software, recorded or downloadable); databases (recorded or downloadable); electronic publications (recorded or downloadable), including multimedia publications; podcasts (recorded or downloadable ); videos (recorded or downloadable); recorded data files (recorded or downloadable).

Class 16: Printed matter, in particular books, periodicals (magazines) and posters; photographs.

Class 35: Advertising, in particular television- and Internet advertising; compilation, systemization, updating and maintenance of databases; retail services, also via media such as television, radio or Internet, relating to goods of classes 9 and/or 16; arranging of contracts on the purchase and sale of products and the rendering of services for others, also via media such as television, radio or Internet.

Class 38: Telecommunications, in particular broadcasting of television and radio programs and shows as well as of performances and other shows on the Internet and via other audiovisual media; electronic transmission of data; services of news agencies, namely collection and delivery of news, press releases and other information, also in the form of pictures; providing platforms, portals, blogs, chat rooms, chat lines, communities and forums on the Internet and other data networks, providing access to databases; data services of an online provider, namely electronic transmission of information, texts, drawings and images; providing access to software, apps, multimedia products and databases on the Internet and other data networks; providing of, as well as telecommunications via, portals on the Internet and other data networks.

Class 41: Education; training; entertainment; sporting and cultural activities; editing and publishing of printed matter (except for advertising purposes); editing and publishing of electronic publications (except for advertising purposes), including multimedia publications; editing and publishing of audio books (except for advertising purposes); editing and publishing of printed and/or electronic works consisting of texts (other than publicity texts) and/or images, also containing films and/or music, also in the form of combined works; providing online electronic publications (not downloadable). including multimedia publications online providing of texts, images, photographs and videos (not downloadable); services of photo agencies, namely photography, photographic reporting and providing (rental) of images and footage; radio, television and Internet entertainment; preparation, arrangement, production, compilation and presentation of television and radio shows and programs as well as of performances, shows and programs on the Internet and other audiovisual media; film (including television film) and audio production; production, compilation, organization, presentation, execution and performance of shows and quiz shows as well as competitions, also via television, radio, Internet and via other audiovisual media; production of video recordings.

Class 42: Design, development. maintenance and updating of computer hardware and software, apps, databases and multimedia products; maintenance of database software; providing temporary use of non-downloadable software, non-downloadable apps, non-downloadable databases and non-downloadable multimedia products; software as a service (SaaS).

German trade mark registration No 302 012 054 367

Class 9: Magnetic data carriers, recording discs; CDs, DVDs and other. digital recording media; software (recorded or downloadable), in particular apps; electronic publications (recorded or downloadable); podcasts (audio files); computer games (recorded or downloadable).

Class 16: Instructional and teaching material (except apparatus); photographs; printed matter.

Class 35: Advertising, in particular the publication of advertisements for third parties.

Class 38: Telecommunications, in particular providing platforms, portals, chatrooms and forums on the Internet; services of news agencies, namely, gathering and delivering news and information as images.

Class 41: Education; training; entertainment, including radio and television entertainment; cultural activities; publishing services (except printing); editing and publishing of printed matter (except for advertising purposes); editing and publishing of electronic publications (except for advertising purposes); publishing and publication of audio books (except for advertising purposes); editing and publishing of texts (other than publicity texts) and/or images and/or movies and/or music works, in particular multimedia works; providing of electronic publications (not downloadable) on the Internet; services of photo agencies, namely photography, photographic reporting and providing (rental) of images and movies.

German trade mark registration No 302 013 022 212:

Class 9: Magnetic data carriers, recording discs; CDs, DVDs and other digital data carriers; software (recorded or downloadable), in particular apps; electronic publications (recorded or downloadable); podcasts; software for computer games (recorded or downloadable).

Class 16: Instructional and teaching material (except apparatus); photographs; printed matter.

Class 38: Telecommunications, in particular providing of platforms, portals, chat rooms and forums on the Internet; press agencies, namely gathering and supplying of news and information, also in form of images.

Class 41: Education; providing of training; entertainment. including radio and television entertainment; cultural activities; publishing services (except printing); editing and publishing of printed matter (except for advertising purposes); editing and publishing of electronic publications (except for advertising purposes); editing and publication of audiobooks (except for advertising purposes); editing and publishing of works consisting of texts (other than publicity texts) and/or images and/or movies and/or music, in particular multimedia works; providing of electronic publications (not downloadable); services of photo agencies, namely photography, photographic reporting and providing (rental) of images and movies.

The contested services are the following:

Class 42: Urban planning; Architectural design for town planning; Planning in relation to town planning and commercial town planning; Town planning advisory services;

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 42

The earlier marks are protected for goods in Class 9, which include items such as software, magnetic data carriers, computer games, equipment for receiving, as well as for recording, transmission and reproduction of sound and images, and computer hardware. They are also protected for printed matter in Class 16. The contested services are are highly specialised services aimed at the comprehensive planning of the physical and social development of a town including the construction of facilities. They are services that cost vast amounts of money, are commissioned on an exceptional basis and are mainly aimed at municipal authorities. It is clear that the earlier goods and the contested services have no points of contact. The fact that some of the earlier goods may be used in the providing of the contested services is not sufficient for a finding of similarity. The earlier goods and the contested services will not be provided by the same companies, serve different purposes and are not complementary or in competition with one another. They are therefore dissimilar.

The earlier marks are also protected for advertising, publicity, and database compilation services in Class 35, various types of telecommunication services in Class 38, education, publication, entertainment, sporting and cultural activities in Class 41, and design, development, maintenance and updating of computer hardware and software, as well as computer programming, in Class 42. The earlier services do not have anything in common with the contested services. They serve very different purposes, will be provided by different companies and are not complementary or in competition with one another. These services are therefore dissimilar.

Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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

Vít MAHELKA

Lucinda CARNEY

Vanessa PAGE

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.

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