OPPOSITION No B 2 577 743

Sociedad Española De Radiodifusion, S.L., Calle Gran Via, 32, 28013 Madrid, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Allsafe Jungfalk GmbH & Co. KG, Gerwigstr. 31, 78234 Engen, Germany (applicant), represented by Patentanwälte Und Rechtsanwalt Weiss, Arat & Partner mbB, Zeppelinstr. 4, 78234 Engen, Germany (professional representative).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 577 743 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 091 227 ‘LaSi 4.0’, namely against all the goods and services in Classes 9 and 38. The opposition is based on European Union trade mark registration No 2 159 291 ‘LOS 40 PRINCIPALES’ and Spanish trade mark registrations No 2 534 427 ‘LOS 40’ and No 2 679 622 . The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims that earlier European Union trade mark registration No 2 159 291 and Spanish trade mark registrations No 2 534 427 and No 2 679 622 are reputed in Spain.

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.

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 will be 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)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 29/09/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/02/2016.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

On 19/09/2016, the opponent submitted evidence of use of its earlier European Union trade mark registration. This, however, was sent only after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that the abovementioned evidence cannot be taken into account, the opponent failed to establish that the trade marks on which the opposition is based have a reputation.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

The Opposition Division will further proceed with the examination of the opposition on the grounds of Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 534 427.

1. The goods and services

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

Class 9:        Apparatus for recording, transmission or reproduction of sound or images, optical, magnetic optical and digital data carriers, recorded or not, exposed films; sound recording discs and compact discs; downloadable publications on magnetic, electric, optical and digital data carriers.

        

Class 16:        Paper, cardboard and goods made of these materials not included in other classes; books , printed matter, journals, newspapers and magazines and, in general, printed publications of all kinds, printed matter; bookbinding material; photographs, trading cards, posters, stickers, transfers, banners of paper and paperboard, stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites, writing and drawing materials (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks; promotional literature and catalogs.

Class 35:        Advertising services, business management, business administration, organisation of events for commercial and advertising purposes. Organisation of events for business or advertising purposes; the bringing together, for the benefit of others, also by means of global computer networks (or any other method of communication) of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods. Advertising promotions. Direct mail advertising; representation services and sole agency.

Class 38:        Communications and transmissions in general and communication by computer terminals via global computer networks; message sending services; telephone services; radio and television broadcasting; telecommunications by any other element or sensory means that allows communications between people.

Class 41:        Education, training and entertainment services; publishing and production of discs, CDs and MCs; musical, cinema and video publications and productions, production of audiovisual recordings, all on any media, including electronic; production, recording and editing of films, radio and television serials and programmes; artists ‘ services; representation services, organisation, production, development and presentation of live performances, concerts, festivals, awards and competitions; organisation and development of sporting and cultural activities; publishing on any medium, including electronic, of content, books and texts, other than publicity texts; electronic on-line publishing via global computer networks, of content, books and texts, other than publicity texts.

The contested goods and services are the following:

Class 9:        Recorded content; information technology and audiovisual equipment; magnets, magnetizers and demagnetizers; safety, security, protection and signalling devices; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; parts and accessories for all the aforesaid goods, included in this class.

Class 38:        Telecommunication services; rental of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information in relation to the aforesaid services, included in this class.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large, but also at professionals, such as entities looking for specific telecommunication solutions for their business. The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods and services, their purpose, the frequency of purchase and their price.

3. The signs

LOS 40                                        LaSi 4.0

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

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. Therefore, the use of upper or lower case letters is immaterial.

The earlier mark consists of the verbal element ‘LOS’ – the Spanish definite article used for third person, plural, masculine, for objects or persons – and the numeral ‘40’, which will be perceived as such. The earlier sign as a whole will be perceived by the relevant public as meaning ‘the 40’ (‘the forty’). As the elements ‘LOS’ and ‘40’ are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.

The contested sign consists of the verbal element ‘LaSi’ and the numeral ‘4.0’. The element ‘LaSi’ has no particular meaning for the public in the relevant territory and is, therefore, distinctive.

The element ‘4.0’ of the contested sign will be perceived as the numeral ‘4’, as the decimal point placed after the ‘4’ and followed by a ‘0’ (zero) indicates the whole number ‘4’. The relevant goods and services are ‘a variety of apparatus and instruments; recorded content; magnetic devices; telecommunication services and services thereof’. As far as recorded content in Class 9 is concerned, it is noted that this could be in the form of software programs. Software programs come in versions (a way of categorising the unique states of the software) and they are often designated with a number and a decimal point, followed by another number. It is therefore considered that the element ‘4.0’ is weak for some of the relevant goods and services, namely for recorded content in Class 9, as it indicates the version of the product. For the rest of relevant goods and services, the element is considered distinctive.

Visually, the signs coincide in their first and third letters, namely ‘L’ and ‘S’, and in the presence of the numbers ‘4’ and ‘0’. However, they differ in their second letters, namely ‘O’ in the earlier mark versus ‘a’ in the contested sign, as well as in the fourth letter ‘i’ of the contested sign, which has no counterpart in the earlier mark. The signs also differ in the decimal point between the numbers ‘4’ and ‘0’ in the contested mark. The relevant consumer would be aware that the decimal point in the contested sign results in the number ‘four’ rather than ‘forty’ (present in the earlier mark), and this difference denoting a completely different number will be clearly recognised by the relevant public.

As a result of the above and taking into account what has been said regarding the distinctiveness of the elements of the signs, the sign are considered visually similar to a low degree.

Aurally, the pronunciation of the signs, as far as their verbal strings ‘LOS’ and ‘LaSi’ are concerned, coincides in the sounds of their first and third letters, namely ‘L’ and ‘S’, present identically in both signs. The pronunciation differs in the sounds of the second letters of the signs, namely ‘O’ in the earlier mark versus ‘a’ in the contested sign, as well as in the sound of the fourth letter ‘i’ of the contested sign. The element ‘LOS’ of the earlier mark contains one syllable, while the element ‘LaSi’ of the contested sign contains two syllables.

As far as the numerals of the signs are concerned, the element ‘40’ in the earlier mark will be pronounced as ‘cuarenta’ and the element ‘4.0’ of the contested sign will be pronounced as ‘cuatro punto cero’. It follows that, as far as the numerals are concerned, the pronunciation of the signs coincides in the sounds of the letters ‘c’, ‘u’ and ‘a’, forming the sequence ‘cua’ in both signs, as well as in the letters ‘r’ and ‘t’, although these letters are present in different places. The pronunciation differs in the sounds of the letters ‘e’, ‘n’ and ‘a’ in the earlier mark and the letter ‘o’ in the contested sign, as well as in the sounds of ‘punto’ and ‘cero’ of the contested sign. It follows from all the above that the signs have different rhythms and intonations.

Taking into account what has been said above, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their elements. As the earlier mark will be perceived as ‘the forty’, while only the element ‘4.0’ of the contested sign will be understood as having a meaning, namely the number ‘four’, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 claimed that the earlier trade mark enjoys a reputation but did not file any evidence in order to prove such a claim within the established deadline, as explained above in the section concerning Article 8(5) EUTMR.

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.

5. Global assessment, other arguments and conclusion

The contested goods and services were assumed to be identical to the opponent’s goods and services and the earlier mark is considered to enjoy an average degree of distinctiveness. The degree of attention is considered to vary from average to above average.

The signs are visually and aurally similar to a low degree, due to the letters, numbers and sounds they have in common, as specified above. The differences, however, are clearly perceptible by the relevant public, which lie in their differing letters and sounds (and syllables), the decimal point in the contested sign and the concepts conveyed by the marks (or elements thereof).

The abovementioned differences are enough to outweigh the similarities between the signs originating from the letters and numbers they have in common. Following on from the above, the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered reasonably well informed and reasonably observant and circumspect, might believe that the goods and services, which are assumed to be identical, come from the same undertaking or economically linked undertakings.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent refers to a previous decision of the Office (12/03/2003, R 0184/2002-3, CLUBE 1840 / CLUB 18-30) to support its argument that there is a likelihood of confusion in the present case. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

However, the previous case referred to by the opponent is not relevant to the present proceedings, as the marks under comparison in the present case lack the conceptual link and the structural similarities between the signs present in the cited case.

The opponent has also based its opposition on the following earlier trade marks: European Union trade mark registration No 2 159 291 ‘LOS 40 PRINCIPALES’ and Spanish trade mark registration No 2 679 622 .

The other earlier rights invoked by the opponent are not any more similar to the contested mark than Spanish trade mark registration No 2 534 427, already compared above. The earlier EUTM, as well as the elements ‘LOS 40’, contains an additional verbal element, namely ‘PRINCIPALES’, which is not present in the contested sign. This additional verbal element will have a meaning for part of the relevant public, such as the Spanish-speaking public which will perceive it as the plural form of ‘the first in importance, main’, and it will be meaningless for part of the relevant public, such as the Bulgarian-speaking part of the public. As far as the rest of the elements are concerned, the numerals in both signs would be understood throughout the European Union in the way described above. As far as the elements ´LOS´ and ‘LaSi’ are concerned, for part of the relevant public the element ´LOS´ would have a meaning (such as for the Spanish-speaking public, as explained above), while the element ‘LaSi’ would not have a particular meaning; and for other part of the relevant public, such as the Finnish-speaking part of the public, only the element ‘LaSi’ would have a meaning (understood as ‘glass’ in Finnish), while the element ´LOS´ will not have a meaning. Finally, for part of the relevant public, such as the Bulgarian-speaking part, only the numerals, and none of the other elements of the marks, would have a meaning. This makes this other earlier right (due to the additional verbal element) even less similar to the contested sign than the mark already compared above.

As far as earlier Spanish trade mark registration No 2 679 622 is concerned, apart from containing a highly stylised element resembling the numeral ‘40’, it also contains the verbal element ‘pop’ (understood as a music style of Anglo-American origin), which is not present in the contested sign. Therefore, the structure and the combination of the elements (and concepts thereof) of this mark are clearly different from the structure, the combination of elements (and the concept of the numeral) in the contested sign.

Therefore, the outcome cannot be different even if the goods and services of earlier European Union trade mark registration No 2 159 291 and Spanish trade mark registration No 2 679 622 are identical to those of the contested sign; no likelihood of confusion exists with respect to those goods and services and these other earlier rights.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

André Gerd Günther BOSSE

Irina SOTIROVA

Erkki MÜNTER

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.