OPPOSITION No B 2 642 463

Be TV SA, Chaussée de Louvain, 656, 1030 Brussels, Belgium (opponent), represented by Pronovem Marks Société Anonyme, avenue Josse Goffin, 158, 1082 Brussels, Belgium (professional representative)

a g a i n s t

Le Shi Internet Information & Technology (Beijing) Corporation, Room 6184, 6th Floor, Building 19, No. 68 Xueyuan South Road, Haidian, District Beijing, People’s Republic of China (applicant), represented by Zivko Mijatovic & Partners, Avenida Fotógrafo Francisco Cano 91A, 03540 Alicante, Spain (professional representative).

On 28/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 642 463 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 of European Union trade mark application No 14 515 423, namely against all the goods in Class 9. The opposition is based on Benelux trade mark registrations No 887 585 and 778 456. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Benelux trade marks No 887 585 and 778 456.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 20/10/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the Benelux from 20/10/2010 to 19/10/2015 inclusive. Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based.

On 03/11/2016 the opponent declared that it restricts the basis of the opposition by deleting Classes 16, 35, 41 and 42 as basis of the opposition for both earlier trade mark registrations.

The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 887 585.

The evidence must show use of Benelux trade mark No 887 585 “BeTV” (word) for the following goods and services:

Class 9         Electronic apparatus for data processing; electronic apparatus for measuring and testing; electronic sound amplification apparatus; transmitters of electronic signals for editing cinematographic films and television; apparatus and teaching instruments; apparatus and instruments for recordings, transmission, reproduction, storage, hiding, decoding, transformation and processing of sound or images; apparatus and audio visual instruments, telecommunication and telematics; software for storing; decoders; coders; devices access and of access control for apparatus of data processing; devices authentication intended for telecommunication networks; apparatus of confusion signals; apparatus of descrambling signals; apparatus of retransmission of signals; exposed films (films), video grams and sound recordings; magnetic tapes, tapes, video cassettes, video tapes, compact discs (audio and video), optical discs and CD-ROMs; cd rom readers; readers video discs digital; digital discs; disks; video discs; digital discs; video cartridges; phonograph records; electronic carriers for consoles games designed for being used only with television apparatus; monitors reception of data on data processing network world; telematics server; telecommunication satellites; apparatus and instruments programming simultaneous and selection of chains television; guide electronic television programs and radio; apparatus and instruments for programming and selection of television programs; apparatus and instruments television interactive; software for supply access for data processing network or data transmission, in particular for communication networks world (type Internet) or for access private or reserved (type intra clear). 

Class 38         Telecommunication; services of broadcasting interactive in frame of presentation of products; news agencies; information agencies (news); radio broadcasting, telephone, videophones and televised (diffusion); services of transmission of information by telematics (diffusion); message sending and images assisted by computer; television broadcasting; diffusion programs, in particular by informatics networks and by skew of radio, television, cable, hertzian way, by satellites or minitel; diffusion music and films; rental of telecommunication apparatus for send of messages; telecommunication by terminals computer; information in subject of telecommunication; telecommunication services for transmission of programs and relating to selection of chains television; supply access for data processing network; telecommunication services by television sets; consultations in the field of telecommunication; telecommunication services relating to diffusion, transmission, audio visual recordings, communication, telematic or for setting for disposal information; telecommunication services relating to setting for disposal transmissions and audiovisual productions; telecommunication transmission services, diffusion, retransmission or recorded programs and information; rental of access time for telecommunication networks; rental of telecommunication apparatus for obtaining access to audio visual programs.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 30/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent the opportunity to submit proof of use of its mark. The time limit to submit this evidence was extended once and expired on 05/11/2016. On 03/11/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Enclosure 1: Wikipedia extract concerning the company BETV SA, dated 28/10/2016, according to which the opponent BeTV SA is a Belgian digital cable television platform operating in Belgium since 2004.

• Enclosure 2: Wikipedia extract concerning the company BETV in French + translation, dated 28/10/2016, according to which several packages of pay-tv cable channels have been marketed under the name “Be tv” since 2004 and since 2 May 2016 Be tv content  is also available via the Internet on computer and mobile devices.

• Enclosure 3: Extract of a website, dated 2015, named “Expats in Brussel”, that essentially states that the digital cable TV provider BeTV “gives access to exclusive thematic, BeTV channels featuring recent films, series and sports football matches (including Premier league, Liga, Bundesliga), tennis, golf, basketball…”

• Enclosures 4, 8, 11, 13: Printouts of Advertisements in French + translations.

These show advertising for TV services featuring sports, musical and other events, all offered under the signs   and “Be tv”. Partially they are advertising access to TV services on mobile platforms (tablets, etc) under the signs  and “Be tv GO”. According to the opponent these advertisements were regularly published from 2011 – 2015  in various newspapers and magazines in Belgium and via a food services and facilities management company present in Belgium; partially the years 2011, 2012, 2013, 2014 and 2015 appear on the printouts; partially a year is only indicated in the respective translation provided by the opponent. Partially the offers mention that the customer will receive a free “Samsung” home cinema together with his subscription, has the chance to win an “Acer” laptop, etc.  Some of the advertisements state that the respective offers are valid in Brussels and Wallonia.

• Enclosures 5, 6, 7, 9 10, 14:  Wikipedia extracts, dated 31/10/2016, containing general information about the aforementioned newspapers and food services company, essentially stating that they are located and active in Belgium.

• Enclosure 15: Extracts of the Website www.betv.be, French, no translation, dated 31/10/2016 . Among others the signs “Be tv” and  appear together with words like “films”, “series”, “télévision”, “programme”.

• Enclosure 16: Extract of a newspaper´s website (“L´Echo”), French + translation, dated 06/09/2015 stating essentially that “BeTV must compose with the arrival of Eleven´s sport channels in Belgium”.

• Enclosure 17: Wikipedia extract about the aforementioned newspaper, dated 31/10/2016, according to which it is a Belgian business newspaper mainly distributed in Wallonia and Brussels.

• Enclosure 18: Printout of a website, dated 26/10/2014, “TBI Vision”, stating essentially that “Belgium´s BeTV pre-empts Netflix with TV Everywhere service”.

• Enclosure 19: “Facebook”-screenshots, French + translation, 12/10/2014, 02/01/2015 and 27/11/2015, the signs   and “Be tv GO” appear with various statement like e.g. “With Be Tv Go, Be tv is now available on all your screens!”

• Enclosure 20-23: Website extracts in French + translations dated 4/11/2010, 24/11/2010, 31/10/2016, 28/08/2014, showing use of the signs Be tv, , Be tv GO in relation to TV services provided via the internet, a gaming console, a mobile application, as well a manual for a remote control with a “Betv” button

The Enclosures 4, 8, 11, 13, 15, 16 and 18-23 show that the place of use is Belgium and the time of use is between 4/11/2010 and 31/12/2015. This can be inferred from statements in the documents that the respective offers and activities relate to Belgium and the dates on several of the documents. Therefore, the evidence relates to the relevant territory and, at least partially, to the relevant time period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Although the evidence does not indicate a specific commercial volume, it shows continuous and uninterrupted use of the mark in the relevant territory within the relevant time period with the obvious intention to convince consumers to subscribe to certain TV services of the opponent. The submitted advertisements appear to have been regularly published in various Belgian publications, reaching a part of the relevant public that is not negligible The use in Belgium as part of the Benelux is deemed sufficient, as due to the unitary character of the Benelux trade mark it has identical protection in all the relevant territories.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The evidence shows the word mark “Be tv” has been used as an indicator of commercial origin of certain TV broadcasting services. The differences to the registered mark “BeTV” are negligible, as the introduction of a hyphen does not alter its distinctive character in this case and, being a word mark, it is protected in any type font and both a depiction in upper and lower case letters.

Furthermore, also the use of the sign  must be considered genuine use of the mark “BeTV”, as the figurative elements of this sign are rather decorative in nature and, therefore, do not alter the distinctive character of the mark. The dominating constituent elements remain the verbal elements “Be” and “tv”; thus it can be considered a variation of the  registered mark.

The same cannot be said however of the signs  and “Be tv GO”, as these introduce the additional distinctive verbal element “GO”, which does alter the distinctive character of the sign.

In view of the above, the Opposition Division considers that the evidence at least partially shows use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

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

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

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

Regarding the services in Class 38 the Opposition Division considers that the evidence as a whole does not show use for the registered broad category of telecommunication but only for an objective subcategory, namely telecommunication services related to television broadcasting. Furthermore, the evidence shows some use of the mark with respect to some other of the registered services, namely  televised (diffusion); television broadcasting; diffusion programs, in particular by informatics networks, television, cable; diffusion music and films; telecommunication services for transmission of programs and relating to selection of chains television; telecommunication services by television sets; telecommunication services relating to setting for disposal transmissions and audiovisual productions; telecommunication transmission services, diffusion, retransmission or recorded programs and information. For the remaining services in Class 38 no genuine use has been shown.

No genuine use has been shown for any of the goods in Class 9. The Opposition Division notes in particular that no invoices proving the sale of any of these goods have been filed. The fact that single pieces of the submitted advertisements make reference to goods like e.g. home cinema systems, laptops, receivers, remote controls, mobile applications, etc. is clearly not sufficient to prove that the mark has been put to genuine on the market in respect to these goods. Firstly, some of the goods shown clearly do not stem from the opponent but from other manufacturers. Secondly, the submitted advertisements do not prove that the opponent has tried to independently sell these goods under the mark. To the contrary, it is obvious that they were merely used either as promotional give-aways or incentives, or as ancillary goods to help market and/or access the opponent´s TV services (e.g. receivers, software, etc.).

Consequently, the evidence shows genuine use of the trade mark for the following services:

Class 38         Telecommunication services related to television broadcasting; broadcasting, televised (diffusion); television broadcasting; diffusion programs, in particular by informatics networks, television, cable; diffusion music and films; telecommunication services for transmission of programs and relating to selection of chains television; telecommunication services by television sets; telecommunication services relating to setting for disposal transmissions and audiovisual productions; telecommunication transmission services, diffusion, retransmission or recorded programs and information.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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

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

1. The goods and services

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

Class 38         Telecommunication services related to television broadcasting; broadcasting, televised (diffusion); television broadcasting; diffusion programs, in particular by informatics networks, television, cable; diffusion music and films; telecommunication services for transmission of programs and relating to selection of chains television; telecommunication services by television sets; telecommunication services relating to setting for disposal transmissions and audiovisual productions; telecommunication transmission services, diffusion, retransmission or recorded programs and information.

The contested goods are the following:

Class 9         Computer peripheral devices; Pedometers; Electronic notice boards; Smartphones; Measuring apparatus; Speed checking apparatus for vehicles; Speed indicators; Diagnostic apparatus, not for medical purposes; Electricity mains (Materials for -) [wires, cables]; Electric cables, wires, conductors and connection fittings therefor; Electricity conduits; Wire connectors [electricity]; Chips [integrated circuits]; Integrated circuits; Converters, electric; electronic power supplies; high-voltage power supplies; DC input power supplies; AC/DC power supplies; high-frequency switching power supplies; Electric igniting apparatus for igniting at a distance; Protective helmets; Theft prevention installations, electric; Locks, electric; Chargers for electric batteries; Video screens; Remote control apparatus; Eyeglasses; Spectacles [eyeglasses and goggles]; Goggles for sports; Self-timers [for cameras]; Selfie stick; Cameras [photography]; 3D spectacles; Low-voltage power supply; Headphones; Earphones; Television apparatus; Cabinets for loudspeakers; Computer operating programs, recorded; Downloadable computer application software; Mobile phone cases; Modems; Network routers; Set-top boxes; Tablet computer; Mouse pads; Smart cards [integrated circuit cards]; Computer game programs; Encoded key cards; Navigation apparatus for vehicles [on-board computers]; Television cameras; Camcorders; Portable media players; Projection apparatus; Plugs, sockets and other contacts [electric connections]; USB flash drives; Batteries, electric; Cinematographic film, exposed; Mobile phone straps; Reconfigurable processors for use in wireless communication handsets and network equipment in the field of wideband communications; Telecommunications and data networking hardware, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; Computers; Satellite navigational apparatus; Electronic publications, downloadable; Diaphragms [acoustics]; Acoustic couplers; Downloadable image files; Webcams; Mobile phone cases featuring rechargeable batteries; Rechargeable electric batteries; Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, {cell phones, MP3 players, personal digital assistants, tablet computers} [excluding gaming apparatus]; Computer memory devices; Transmitting sets [telecommunication]; Mini projector; Cell phone straps of precious metal.  

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

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and 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 applicant´s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The contested remote control apparatus; downloadable computer application software; modems; network routers; set-top boxes; smart cards [integrated circuit cards]; encoded key cards; telecommunications and data networking hardware, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; electronic publications, downloadable; downloadable image files; television apparatus; transmitting sets [telecommunication] are similar to a low degree to the opponent´s telecommunication services related to television broadcasting as they can coincide in distribution channels and relevant public and can be complementary, as the contested goods can be necessary to access the services of the earlier mark

The contested Computers; Computer peripheral devices; Pedometers; Electronic notice boards; Smartphones; Measuring apparatus; Speed checking apparatus for vehicles; Speed indicators; Diagnostic apparatus, not for medical purposes; Electricity mains (Materials for -) [wires, cables]; Electric cables, wires, conductors and connection fittings therefor; Electricity conduits; Wire connectors [electricity]; Chips [integrated circuits]; Integrated circuits; Converters, electric; electronic power supplies; high-voltage power supplies; DC input power supplies; AC/DC power supplies; high-frequency switching power supplies; Electric igniting apparatus for igniting at a distance; Protective helmets; Theft prevention installations, electric; Locks, electric; Chargers for electric batteries; Video screens; Eyeglasses; Spectacles [eyeglasses and goggles]; Goggles for sports; Self-timers [for cameras]; Selfie stick; Cameras [photography]; 3D spectacles; Low-voltage power supply; Headphones; Earphones; Cabinets for loudspeakers; Computer operating programs, recorded; Mobile phone cases; Tablet computer; Mouse pads; Computer game programs; Navigation apparatus for vehicles [on-board computers]; Television cameras; Camcorders; Portable media players; Projection apparatus; Plugs, sockets and other contacts [electric connections]; USB flash drives; Webcams; Batteries, electric; Cinematographic film, exposed; Mobile phone straps; Reconfigurable processors for use in wireless communication handsets and network equipment in the field of wideband communications; Satellite navigational apparatus; Diaphragms [acoustics]; Acoustic couplers; Mobile phone cases featuring rechargeable batteries; Rechargeable electric batteries; Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, {cell phones, MP3 players, personal digital assistants, tablet computers} [excluding gaming apparatus]; Computer memory devices; Mini projector; Cell phone straps of precious metal are dissimilar to the opponent´s services in Class 38. They have a different nature and purpose, come from different producers and are neither in competition nor complementary to each other.

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 found to be lowly similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The goods may vary in complexity and price, accordingly, the degree of attention of the relevant public will vary from average to high.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

BeTV
Earlier trade mark	Contested sign

The relevant territory is the Benelux, comprising of Belgium, the Netherlands and Luxembourg.

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 unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The element ‘TV’ in both signs is commonly used and understood in all parts of the Benelux as indicating ´television´, the system of transfer of sounds and images by electric signals over a distance to people´s homes, the pieces of equipment to watch these transmissions, all its available programmes, and also the industry making television programmes and broadcasting them. It is non-distinctive for all the relevant goods and services, as it merely indicates that they are part of television or intended to be used in the production or operation or to gain access to television.

Part of the public may understand the element ‘Be’ of the earlier mark as an abbreviation for ‘Belgium’, as this combination of letters is e.g. used as a country code top level domain in internet addresses of Belgian websites (e.g. ‘www.xyz.be’). This part of the public may understand ‘Be’ as an indication that the opponent´s services in Class 38 are provided in Belgium, and, therefore, only as lowly distinctive.

For another part of the public however, which will not make the abovementioned association, the element ‘Be’ of the earlier mark has no meaning and is, therefore, distinctive. Considering that this constitutes the best case scenario for the opponent, the Opposition Division will focus on this part of the public for the remainder of the examination.

The element ‘Le’ of the contested sign has no meaning for a part of the relevant public, namely German and Dutch speakers within the Benelux, and is, therefore, distinctive. For French speakers within the Benelux, the element ‘Le’ of the contested sign will be understood as a male definite article that is commonly used before nouns and might, therefore, be considered of lower than average distinctiveness.

However, given that the following element “tv” is non-distinctive, it will still be seen as the sole distinctive element of the contested sign for all parts of the public.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually and aurally, the signs coincide in the letters of their respective second element “tv”, which is however non-distinctive, and in the second letter “e” of their respective first elements “Be” and “Le”. They differ however in the first letter of their respective first elements (namely “B” vs “L”) and the stylization of the contested sign, namely the slightly angled depiction of the letter “e”.

The public will focus on the short elements “Be” and “Le” as they are the distinctive elements of the signs and are located at the beginning of the signs. The elements “Be” and “Le” comprise of only two letters, therefore the public will easily perceive the difference in their respective first letters “B” vs. “L” which are neither visually nor aurally similar.

Therefore, the signs are similar to a low degree.

Conceptually, although the coinciding word “tv” will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional verbal elements, which in any case do not share any concept. Therefore, the signs are not similar conceptually.

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.

According to the opponent the earlier trade mark enjoys a high degree of distinctiveness as result of its intensive use in Belgium in connection with the services for which it is registered in Class 38. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent has already been listed above in the assessment of proof of use. Having examined this evidence, the Opposition Division concludes that it does not demonstrate that the earlier trade mark has acquired a high degree of distinctiveness through its use.

As already set out in the assessment of proof of use, the evidence at most shows some use of the mark for services in the field of television broadcasting services. However, based on the evidence submitted, this use cannot be considered as particularly intensive. Furthermore, in the absence of any substantial evidence regarding commercial volumes and consumer recognition in the relevant territory, such as independent consumer surveys, proof of market share, etc., it clearly fails to unequivocally prove that the mark has acquired a high degree of distinctiveness.

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. 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 contested goods have been found to be partially similar to a low degree, otherwise dissimilar. The signs are visually and aurally similar to a low degree. Conceptually they are not similar. The distinctiveness of the earlier mark is normal and the attention of the relevant consumer will vary from average to high.

Given that the similarities between the signs mainly concern an element which is non-distinctive (“TV”) and the fact, that the distinctive elements of the signs “Be” and “Le” are very short, so the public will easily perceive the difference in their respective first letter, it is highly unlikely that the public may actually confuse the signs or assume, that the goods in question would originate from the same or economically linked undertakings.

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 mark:

Benelux trade mark registration No 778 456 , registered for

Class 9        Electronic apparatus for data processing; measuring apparatus and electronic control; electronic sound amplification apparatus; transmitters of electronic signals for editing cinematographic films and television; apparatus and teaching instruments; apparatus and instruments for recordings, transmission, reproduction, storage, hiding, decoding, transformation, processing of sound or images; apparatus and audio visual instruments, telecommunication and telematic; software for storing, decoders, coders, devices access and of access control for apparatus of data processing; devices authentification intended for telecommunication networks; apparatus of confusion signals and descrambling signals and retransmissions; exposed films (films), videograms and sound recordings, magnetic tapes, tapes, video cassettes, video tapes, compact discs (audio and video), optical discs, cd roms, cd rom readers, digital video discs; digital discs, disks, video disks digital, video cartridges, phonograph records; electronic carriers on console games; monitors reception of data on data processing network world, telematic server; satellites for use telecommunication; device programming simultaneous and selection of chains television; guide electronic television programs and radio; apparatus and instruments for programming and selection of television programs; apparatus and instruments television interactive; software for supply access for data processing network or data transmission, in particular for communication networks world (type Internet) or for access private or reserved (type intra clear).

Class 38         Telecommunication and communications; services of broadcasting interactive carrying on presentation of products; news agencies and information; radio broadcasting, telephone or videophonic, by television; services of transmission of information by telematics; message sending and images assisted by computer; television broadcasting; diffusion programs in particular by informatics networks, radio, television, cable, radio frequencies, satellites, minitel, and videograms and sound recordings; rental of message transmission apparatus; communication by computer terminals; information in subject of telecommunication; services of transmission of programs and selection of chains television; services of supply access for data processing network; telecommunication services via television set; consultations in the field of telecommunication; diffusion services, transmission, recordings relating to audio visual, communication, telematic, telecommunication at the disposal subscribers and not subscribers; services relating to setting for disposal transmissions, audio visual supports, means of transmission, diffusion, retransmission, recorded programs and information in field aforesaid.

This other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements, as can be seen in its depiction above, which are not present in the contested trade mark. It is registered for the same goods and services as the mark that has already been compared and the proof of use submitted is the same as already assessed above. Therefore, it enjoys the same scope of protection as the mark already compared.

Consequently, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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

Peter QUAY

Tobias KLEE

Martin EBERL

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.