OPPOSITION No B 2 637 679

G+J Holding GmbH, Parkring 12, 1010 Wien, Austria (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Deutschland (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 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 637 679 is partially upheld, namely for the following contested goods and services:

Class 9                 Computer software [recorded] for the editing and transmission of images; computer software [recorded] for the creation, editing and transmission of  videos, music and games and for assisting the driving of vehicles; Electronic publications [downloadable]; Set-top boxes; Television apparatus; Televisions; Projection apparatus; Computer operating programs, recorded for the creation, editing and transmission of images, videos, music and games and for assisting the driving of vehicles; Portable media players; portable telephones; Cell phones; Smartphones.

Class 35         Rental of Advertising space; On-line advertising on a computer network; Rental of advertising time on communication media; Production of advertising films; Advertising and marketing services, namely, promoting the goods and services of others.

 

Class 38         Television broadcasting; Radio broadcasting; Message sending; Transmission of messages and images (Computer aided); Communications by fiber [fibre] optic networks; Electronic bulletin board services [telecommunications services]; Providing telecommunications connections to a global computer network; Providing internet chat rooms; Providing virtual facilities for real-time interaction among computers users; Providing telecommunications connections to the internet or databases; Transmission of digital files.  

Class 41         Organization of competitions [education or entertainment]; Providing on-line music, not downloadable; Providing on-line videos, not downloadable; Publication of electronic books and journals on-line; Shows (Production of); Film and video tape film production; Entertainment information; Providing on-line computer games; Modelling for artists; Radio and television programmes (Production of).

 

Class 42         Computer software design for the creation, editing and transmission of images, videos, music and games and for assisting the driving of vehicles; Rental of computer software for the editing and transmission of images,  Rental of computer software for the creation, editing and transmission of videos, music and games and for assisting the driving of vehicles; Conversion of data or documents from physical to electronic media; Hosting the web sites of others on a computer server for a global computer network; Computer services, namely, provision of Internet search engines.

2.        European Union trade mark application No 13 883 401 is rejected for all the above goods and services. It may proceed for the remaining goods and 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 13 883 401. The opposition is based on international trade mark registrations No 897 928 and No 897 966 designating the European Union. The opponent invoked Article 8(1) (b) and 8(5) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 26/01/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. After being extended once by the Office, this time limit expired on 31/07/2016.

On 31/07/2016 the opponent submitted database extracts regarding the earlier international trade mark registrations No 897 928 and No 897 966 on which the opposition is based.

Regarding international trade mark registration No 897 966  the submitted extract states that the mark was registered on 19/05/2006 and the expected expiration date of the registration is 19/05/2016, that is before the expiry of the time limit for substantiation of the opposition.

If the opponent has submitted a certificate of registration but the registration is due to expire before the expiry of the time limit for substantiation, it must file a renewal certificate or equivalent document in order to prove that the term of protection of the trade mark extends beyond the time limit or an extension thereof has been given to it to substantiate its opposition. What counts is the date on which the registration would expire, and not the possibility to renew the mark within the six-month grace period under the Paris Convention.

No renewal certificate was filed during the abovementioned time limit. Only after the expiry of the abovementioned time limit, on 08/03/2017, did the opponent file evidence to prove the renewal of international trade mark registration No 897 966.

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.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on International trade mark registration No 897 966.

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.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use of international trade mark registration No 897 928. The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 14/10/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from14/10/2010 to 13/10/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 9         Magnetic, optical, magneto-optical and electronic image and sound recording carriers and data memories, in particular CD, CD-ROM, CD-I, DVD, floppy disks, video tapes, records and microfilm, all for on and off-line uses; tape recorders; equipment for receiving, as well as for recording, transmission and reproduction of sound and images; hardware, in particular data processing equipment, computers and computer peripheral devices; software; data processing programs; computer operating programs. 

Class 16         Printed matter, bookbinding material. 

Class 35         Advertising. 

Class 38         Services in the field of telecommunications, sending of information to third parties on the Internet, distribution of information on wireless or cable networks, content provider services, namely making available of platforms or Internet information, transmission of radio and (cable) television programmes. 

Class 41         Instruction, training, entertainment, radio entertainment and television entertainment; services of publishers (except printing); publication and issue of printed matter in printed and electronic form with editorial content and partly advertising content off and online in the field of publishing, included in this class; sports and cultural activities. 

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.

According to Rule 22(2) EUTMIR, the Office gave the opponent until 31/07/2016 to submit evidence of use of the earlier trade mark. On 31/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Product presentation from the website www.guj.de which introduces the magazine VIEW as follows:

“VIEW -The best pictures of the month", a magazine by STERN, provides short, compact and competent information on the relevant topics of the month – in the form of images. VIEW explains topics to readers using a well-selected

combination of large-format photos and easy to understand texts which show readers the many surprising features of the world. VIEW's ”somewhat different viewpoint", which highlights new aspects of information for readers, is important in choosing the images for the magazine. Due to the opulence of the photos and their picture language, VIEW is a unique magazine on the German magazine market. VIEW caters for men and women who are interested in information, and is particularly popular with buyers who are looking for a refreshing visual balance to the daily influx of facts and figures.”

• Exemplary covers of the magazine VIEW from 2008 to 2014 and from 2015 to 2016, Exhibits O 3 and O 4; the mark appears as follows: 

• Several pages from the inside of the September 2013 issue of the magazine VIEW, showing photographs, news articles as well as advertisements, Exhibit O 5; German; the mark appears as depicted above, and as word mark.

• Screenshots from a website, www.pz-online.de; According to the opponent these show statistics of the German market research institution IVW with sales figures of the magazine VIEW, namely the average sales figures per issue, from 2007 to 2015, Exhibit O 6 (partial translation included) as well as the relevant source information, Exhibit O 7, German, partial translation included; According to the opponent ‘the magazine ‘VIEW’ has been published in Germany on a monthly basis since 2005. Since 2007, it has been subject to the evaluations of the German market research institution “Informationsgesellschaft zur Feststellung der Verbreitung von Werbeträgern e.V.” (IVW) which is a neutral and independent institution collecting and providing reliable and comparable information about the circulation of media, as has been confirmed by the Office (see, e.g., Opposition Division, decision of 13 July 2009, B 911133, p. 9). According to the statistics collected and published by the IVW, the annual average sales figures of the magazine ‘VIEW’ have been considerably higher than 100,000 copies sold per issue since 2007.’ 

• Excerpts from the 2011, 2012, 2013, 2014 and 2015 market analysis ‘Allensbacher Markt- und Werbeträgeranalyse (AWA)’ by the Institut für Demoskopie Allensbach, Exhibit O 8, German, partial translation included.  The statistics show that the magazine view was known by the following percentages of the German/German-speaking population older than 14 years of age: 2011: 27.9%; 2012: 29.8%; 2013: 30.5%; 2014: 31.0%; 2015: 31.6%.

• Product presentation from www.guj.de, Exhibit O 9; the mark appears as depicted above, and as word mark.

• Screenshots of an online photo community from 2014,  Exhibit O 10; the mark appears as depicted above, and as word mark.

• Screenshots of the website from the past years that have been taken from the internet archive “Wayback Machine” under the domain www.archive.org, Exhibit O 11.

• Screenshots from www.view.stern.de from 2014 showing an electronic magazine titled “VIEWspotlight”, with photographs and texts, including archived issues back till May 2008, Exhibit O 12.

• Covers of the aforesaid magazine, 2009-2015, Exhibit O 13.

• Screenshots of an online forum, „VIEW Fotocommunity Forum“, from 2014, showing posts from the years 2009, 2011 and 2012, Exhibit O 14.

• Screenshots taken from the internet archive “Wayback Machine” showing the online forum from 2009 to 2015, Exhibit O 15; the mark appears as depicted above, and as word mark.

• Screenshots of computer games offered under the earlier mark on the website www.view.stern.de/spiele from 2014, Exhibit O 16.

• Screenshots taken from the internet archive “Wayback Machine” showing the abovementioned online games in 2014 and 2015, Exhibit O 17.

•  Affidavit by Mr. Daniel Olzien, employee of the opponent, O 18, stating essentially:

• Affidavit dated 07/02/2016 by Ms. Daniela von Hey, Business Director of the opponent, Exhibit O 19, stating essentially:

Exhibit O 19 is accompanied by and, according to the opponent, partly based on two documents from independent third parties, namely measurements by “INFOnline GmbH” and by the web analytics software ‘appfigures’.

• Screenshots from 2014 showing a product presentation of the application, Exhibit O 20; the mark appears as depicted above, and as word mark .The presentation shows the use of the earlier mark for an application and contains a link to the Apple app store where the app is available and it explains the nature and features of the app.

• Screenshots of the App Store “iTunes” showing the offer of the ‘VIEW’ application for the “iPad” under the earlier mark from 2014 and 2015, Exhibits O 21 and O 22.

• Affidavit by Mr. Hans-Peter Junker, Editor-in-Chief of the magazine “VIEW, Exhibit O 23, stating essentially:

• Statistics by the web analytics software „appfigures“ from 2014, Exhibit O 24, according to which “the mobile application was downloaded 64,306 times in Germany from 1 January 2013 until 31 May 2016. For example, in the years 2013 and 2014 the software measured 30,772 and 23,261 downloads respectively. In addition, revenues amounting to EUR 50,650.45 were generated through purchases by users via the application under the earlier mark from 1 January 2013 until 31 May 2016. Said amount equals EUR 40.02 per day.”

• Screenshots of a website at www.gujmedia.de from 2014 where the printed magazine, the online presence and the mobile application are presented to potential advertising customers, Exhibit O 25.

• List of advertisement prices under the earlier mark, dated 1 January 2012, Exhibit O 26.

• Presentation under the earlier mark with respect to the mobile application which is directed at advertising customers and which is dated June 2013, Exhibit O 27.

• Table from the website www.pz-online.de which lists the total number of advertisement pages in each issue of the ‘VIEW’ magazine from 2010 until 2016, Exhibit O 28 (partial translation included).

• A table specifying the gross revenues per issue of the magazine “VIEW” (in k EUR) generated through the sale of advertisement space from 2007 to 2014, Exhibit O 29 (partial translation included).

• Printout of the complete Facebook wall dated March 2014 that goes back to 2009, Exhibit O 30; “As the printout shows, the page dates back to July 2009. It does not only show the earlier mark but also provides lots of entertaining content, particularly numerous spectacular photographs and texts related thereto. Furthermore, the page allows the users to post their own comments and to communicate with the operator of the page and other users. As the printout also shows, numerous users have made use of this opportunity.”

The applicant argues that the opponent did not submit translations of some of the evidence of use. The Opposition Division notes that key pieces of evidence, such as the average sales figures per issue, from 2007 to 2015, Exhibit O 6 and the excerpts from the market analysis ‘Allensbacher Markt- und Werbeträgeranalyse (AWA)’, Exhibit O 8, were indeed provided with a sufficient partial translation. Furthermore, the opponent is generally not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely screenshots, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation for these documents.

As far as the affidavits are concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier mark is registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors.

However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The evidence shows that the place of use is mainly Germany. This can be inferred from the language of the documents (German), the currency used (Euro) and explicit reference to Germany. Furthermore, other European countries are mentioned in some pieces of evidence, e.g. they appear with price information on the covers of the ‘VIEW’ magazine, namely Austria, The Benelux, Italy, Spain, Greece, Portugal and France. Also the excerpt from the database “app figures”, allows the conclusion that the app was not only sold in Germany, but also in other EU countries.

Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period. However, some pieces are dated outside the relevant period of time. Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the use it refers to is very close in time to the relevant period.

Extent of use

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.

The opponent has filed extensive documentation to prove the extent of use, including sales figures for the magazine and the app “VIEW”, witness statements, samples of magazines and the app, advertisements, printouts from websites and web-archives and market analysis extracts. In particular the sales figures of the magazine VIEW are well-documented. They originate in an independent party and support the witness statements. Furthermore, a considerable degree of consumer recognition regarding the magazine “VIEW” has been shown amongst the German public by the market analysis AWA.

It has to be noted that the evidence submitted relates mainly to Germany. However, as stated above, the territorial scope of the use is only one of several factors to be taken into account. Also, use of the mark need not be quantitatively significant for it to be deemed genuine. Furthermore, some evidence also shows use in several other member states of the EU, as already stated above.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark, at least in relation to certain goods and services

Nature of use

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).

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.

First, various pieces of evidence refer to the word mark ‘VIEW’. Second, it is considered that the use of the word element ‘VIEW’ on a red background and/or a figurative element in the form of a star –  – or with the addition of descriptive words such as ‘magazine’, ‘app’, etc. does not alter the distinctive character of the mark.

Therefore, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

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.

As regards the goods, the evidence filed by the opponent provides unambiguous information as regards the use of the mark in relation to a magazine (in physical and electronic form) and an app. An app is a software application (other than computer operating software) mostly used on mobile devices such as tablets, smartphones, etc. However, none of the evidence submitted by the applicant show use of the trade mark with regard to the remaining goods in Classes 9 (Magnetic, optical, magneto-optical and electronic image and sound recording carriers and data memories, in particular CD, CD-ROM, CD-I, DVD, floppy disks, video tapes, records and microfilm, all for on and off-line uses; tape recorders; equipment for receiving, as well as for recording, transmission and reproduction of sound and images; hardware, in particular data processing equipment, computers and computer peripheral devices) and 16 (bookbinding material).  

As regards advertising services in Class 35, the Opposition Division notes that the submitted presentation to potential advertising customers, the advertisement price lists, some third parties’ advertisements that can be seen on the applicant’s website and inside the magazine ‘VIEW’ and the provided turnover numbers are sufficient to prove that advertising in magazines has been provided under the trade mark.

As regards the services in Class 41 for which the earlier marks are registered, the Opposition Division finds that it does reach the minimum level necessary to establish genuine use only in relation to some services in the field of online entertainment and provision of online electronic non-downloadable publications; namely the use of the trade mark ‘VIEW’ in relation with an online version of the print magazine ‘VIEW’ , an online platform for uploading, sharing and commenting photos, and an online forum.

As regards the provision of an online magazine, the Opposition Division notes that the provision of an online text is considered a service as long as the text is not intended, by the provider, to be downloaded. In contrast, if the publications are downloadable they are classified in Class 9, because the user comes into possession of the end product that he or she would have possessed if the product had been recorded on a media. In the present case, the applicant provides an online electronic non-downloadable publication, namely the magazine ‘VIEW’ and therefore, this activity falls within the scope of the services in Class 41 for which the earlier marks are registered (publication and issue of printed matter in electronic form with editorial

content and partly advertising content online in the field of publishing. included in this

class). Furthermore, the provision of an online platform for uploading, sharing and commenting photos and an online forum is considered to fall within the scope of the entertainment services. Furthermore, the Opposition Division finds that the evidence does not show use of the trade marks with regard to the remaining services.

In relation with the remaining services in Class 41, the Opposition Division notes in particular that the evidence shows that the applicant publishes its magazine ‘VIEW’. This activity is covered by the goods in Class 16 for which the earlier mark is registered. Even though the placement on the market of a magazine involves services of publishers it cannot be concluded – taking into account the evidence submitted – that the applicant provides also publishing services to third parties (e.g. publishing of magazines, books, etc. under the trade mark ‘VIEW‘ for others). Therefore, the evidence does not show genuine use of the trade mark for services of publishers (except printing). 

The same applies to the services of publication and issue of printed matter in printed form. Moreover, none of the services concerned by the evidence can be considered to fall within the category of cultural services, and none of the evidence submitted by the applicant show use of the trade mark with regard to the remaining services in Class 41.

Finally, the provision of screenshots of websites, an online photo community, an online forum or the fact that the applicant uses wireless or cable telecommunication networks to provide content online does not mean that it also operates as a provider of any kind of telecommunication services offered to third parties.  The provision of an online platform for uploading, sharing and commenting photos and an online forum is considered to fall within the scope of online entertainment, not within the scope of content provider services, namely making available of platforms or Internet information, transmission of radio and (cable) television programmes, which by their nature entail the supply or making available of content for third parties to make their (online-)publications more attractive or useful for their users.

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).

In the present case, as regards Classes 9 and 16, the evidence proves use only for the magazine ‘VIEW' and the “VIEW” app. These goods can be considered to form coherent objective subcategories of printed matter in Class 16, namely magazines, and software in Class 9, namely application software, respectively.

In case of Class 35 the evidence proves use for magazine advertising which forms a coherent subcategory of the registered advertising.

Regarding Class 41, the evidence proves use for providing of an online magazine and online entertainment services such as a photo community platform and an online-forum. These services can be considered to form coherent objective subcategories of publication and issue of printed matter in printed and electronic form with editorial content and partly advertising content off and online in the field of publishing, included in this class and entertainment, namely publication and issue of magazines in electronic form with editorial content and partly advertising content online in the field of publishing, included in this class, and entertainment, namely online entertainment in the field of photography respectively.

Taking into account the foregoing, the Opposition Division finds that the evidence filed by the applicant proves that the earlier trade mark has been genuinely used for the following goods and services:

Class 9:         Application software.

Class 16:         Magazines.

Class 35:        Magazine advertising.

Class 41:         Online entertainment in the field of photography; publication and issue of magazines in electronic form with editorial content and partly advertising content online in the field of publishing, included in this class.

Therefore, the Opposition Division will only consider the abovementioned goods and 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 goods and services on which the opposition is based are the following:

Class 9         Application Software.

Class 16         Magazines. 

Class 35:        Magazine advertising.

Class 41         Online entertainment in the field of photography; publication and issue of magazines in electronic form with editorial content and partly advertising content online in the field of publishing, included in this class.

The contested goods and services are the following:

Class 9         Computer software [recorded] for the editing and transmission of images; computer software [recorded] for the creation, editing and transmission of  videos, music and games and for assisting the driving of vehicles; Electronic publications [downloadable]; Set-top boxes; Television apparatus; Televisions; Projection apparatus; Computer operating programs, recorded for the creation, editing and transmission of images, videos, music and games and for assisting the driving of vehicles; Portable media players; portable telephones; Cell phones; Smartphones; glasses. 

Class 35         Rental of Advertising space; On-line advertising on a computer network; Rental of advertising time on communication media; Production of advertising films; Advertising and marketing services, namely, promoting the goods and services of others; Import-export agencies; Business management of performing artists; Relocation services for business; Systemization of information into Computer databases; Sponsorship search.

 

Class 38         Television broadcasting; Radio broadcasting; Message sending; Transmission of messages and images (Computer aided); Communications by fiber [fibre] optic networks; Electronic bulletin board services [telecommunications services]; Providing telecommunications connections to a global computer network; Providing internet chat rooms; Providing virtual facilities for real-time interaction among computers users; Providing telecommunications connections to the internet or databases; Transmission of digital files. 

Class 41         Organization of competitions [education or entertainment]; Providing on-line music, not downloadable; Providing on-line videos, not downloadable; Publication of electronic books and journals on-line; Shows (Production of); Film and video tape film production; Entertainment information; Providing on-line computer games; Modelling for artists; Radio and television programmes (Production of). 

 

Class 42         Technical research; Meteorological information; Weather forecasting; Industrial design; Design of interior décor; Dress designing; Computer software design for the creation, editing and transmission of images, videos, music and games and for assisting the driving of vehicles; Rental of computer software for the editing and transmission of images,  Rental of computer software for the creation, editing and transmission of videos, music and games and for assisting the driving of vehicles; Conversion of data or documents from physical to electronic media; Hosting the web sites of others on a computer server for a global computer network; Computer services, namely, provision of Internet search engines.

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 ‘namely’ used in the applicant´s list of goods and services 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 and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 goods in Class 9

The contested computer software [recorded] for the editing and transmission of images; computer software [recorded] for the creation, editing and transmission of  videos, music and games and for assisting the driving of vehicles overlaps with the opponent´s  application software, therefore they are identical.

Electronic publications [downloadable] are similar to the opponent´s application software as they can coincide in producer, relevant public, method of use and distribution channels.

Computer operating programs, recorded for the creation, editing and transmission of images, videos, music and games and for assisting the driving of vehicles are similar to the opponent´s application software as they can coincide in nature,  producer, relevant public and distribution channels.

Set-top boxes; Television apparatus; Televisions; Projection apparatus; Portable media players; portable telephones; Cell phones; Smartphones are similar to a low degree to the opponent´s application software as they can coincide in producer, relevant public and distribution channels, given that nowadays the contested goods regularly appear in “smart” versions (e.g. Smartphones, Smart TV’s, etc.) that are capable of running software applications. Furthermore they can be complementary, as application software needs a device to be executed on, such as e.g. the contested goods.

Glasses are dissimilar to all the opponent´s goods and services. No points of contact exist between them.

Contested services in Class 35

The contested rental of advertising space; online advertising on a computer network; rental of advertising time on communication media; production of advertising films; advertising and marketing services, namely, promoting the goods and services of others are similar to the opponent´s magazine advertising as they coincide in nature,  producer, relevant public, and distribution channels.

The contested import-export agencies; business management of performing artists; relocation services for business; systemization of information into computer databases sponsorship search are dissimilar to all the opponent´s goods and services. They differ in nature, relevant public, producer, distribution channels and are neither complementary nor in competition with each other.

Contested services in Class 38

The contested television broadcasting; radio broadcasting; message sending; transmission of messages and images (computer aided); communications by fiber [fibre] optic networks; electronic bulletin board services [telecommunications services]; providing telecommunications connections to a global computer network; providing internet chat rooms; providing virtual facilities for real-time interaction among computers users; providing telecommunications connections to the internet or databases; transmission of digital files are similar to the opponent´s application software as they can coincide in purpose, end user and distribution channels. Furthermore they can be complementary.

Contested services in Class 41

The contested organization of competitions [education or entertainment]; providing on-line music, not downloadable; providing on-line videos, not downloadable; entertainment information; providing on-line computer games is included in the broad category, or overlaps with the opponent´s online entertainment in the field of photography Therefore they are identical.

The contested publication of electronic books and journals online overlaps with the opponent´s publication and issue of magazines in electronic form with editorial content and partly advertising content online in the field of publishing, included in this class. Therefore they are identical.

The contested shows (production of); film and video tape film production; radio and television programmes (production of are similar to the opponent´s online entertainment in the field of photography as they can coincide in purpose, producer and end user.

Modelling for artists is similar to the opponent´s online entertainment in the field of photography as they can coincide in purpose, producer and end user.

Contested services in Class 42

Computer software design for the creation, editing and transmission of images, videos, music and games and for assisting the driving of vehicles; rental of computer software for the editing and transmission of images,  rental of computer software for the creation, editing and transmission of videos, music and games and for assisting the driving of vehicles;  conversion of data or documents from physical to electronic media; hosting the web sites of others on a computer server for a global computer network; computer services, namely, provision of internet search engines are similar to the opponent´s application software in Class 9 as they can coincide in producer, relevant public, and distribution channels.

The contested technical research; meteorological information; weather forecasting; industrial design; design of interior décor; dress designing are dissimilar to all the opponent´s goods and services. They differ in nature, relevant public, producer, distribution channels and are neither complementary nor in competition with 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 and services found to be identical or similar are directed at the public at large and business customers with specific professional knowledge or expertise. They can vary in price and complexity. Accordingly, the degree of attention may vary between average and high.

3. The signs

VIEW	Leview
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element VIEW is meaningful in certain territories, for example, in those countries where English is understood. The Opposition Division finds it appropriate to focus the comparison of the signs on the Non-English-speaking part of the public such as in Germany.  

The element ‘VIEW’ has no meaning for the relevant public and is, therefore, distinctive. The same is true for the word ‘Leview’ of the contested sign.

Visually and aurally, the signs coincide in the string of letters VIEW, forming the entirety of the earlier mark and four out of six letters of the contested sign. They differ in the additional letters LE in the beginning of the contested sign, which have no counterpart in the earlier mark.

Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 has a reputation and enjoys a high degree of distinctiveness as result of its long standing and intensive use in Germany in connection with part of the goods and services for which it is registered, namely magazines. 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 has already been listed and assessed above. Reference is made to the above findings. The Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market for magazines, given that the market analysis provided by the opponent proves a considerable amount of consumer recognition among the relevant public for its magazine ‘VIEW’.

For the rest of the goods and services the evidence filed is not sufficient to prove a high degree of distinctiveness.  Consequently, for these goods and services, the distinctiveness of the earlier mark lasts on its inherent distinctiveness, which is considered normal, as the mark has no meaning in relation to these goods and services.

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 goods and services are identical, similar to various degrees and dissimilar. The sign are visually and aurally similar to an average degree. The attention of the consumer will vary between average and high and the earlier mark has high distinctiveness for magazines and normal distinctiveness for the rest of the goods and services.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Taking into account the aforesaid principles, a likelihood of confusion cannot safely be excluded in the present case, as the contested sign includes the entirety of the earlier mark whilst just adding two letters.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public. This is due to the similarity of the signs also the case for lowly similar goods and for consumers with a high degree of attention. Therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or (lowly) similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

REPUTATION – ARTICLE 8(5) EUTMR

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.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.  The signs are similar to the extent as set out above.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Accordingly, the sign enjoys reputation on the market for magazines, given that the market analysis provided by the opponent proves a considerable amount of consumer recognition among the relevant public for its magazine ‘VIEW’.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed for magazines 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.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)

In the present case, there is no overlap between the relevant sections of the public for the trade marks regarding the opponent´s magazines in Class 16, for which the earlier mark enjoys reputation, and the remaining contested glasses in Class 16, import-export agencies; business management of performing artists; relocation services for business; systemization of information into computer databases; sponsorship in Class 35 and technical research; meteorological information; weather forecasting; industrial design; design of interior décor; dress designing in class 42

Each trade mark targets a different type of public. The contested goods in Class 16 target consumers that need visual aids, the contested services in Class 35 target consumers that seek assistance and/or support in business and administrative matters and the contested services in Class 42 target consumers that seek technical research, meteorological information or design services. The earlier trade mark however was found to only have a reputation among consumers of magazines, in particular magazines related to photography. There is no proximity between the respective market sectors whatsoever.

Given that the public for the contested trade mark is completely distinct from the relevant section of the public among which the earlier trade mark enjoys a reputation, no association will be made between the signs.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

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

Martin EBERL

Tobias KLEE

Sigrid DICKMANNS

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.