OPPOSITION DIVISION
OPPOSITION No B 2 805 748
Fashiontv.com GmbH, Elsenheimerstr. 43, c/o R.A.W. Unternehmensberatung
GmbH, 80687 München, Germany (opponent), represented by Mitscherlich, Patent-
und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 München, Germany
(professional representative)
a g a i n s t
Edwin Snelderwaard, Kruisbes 37, 2318BA Leiden, The Netherlands, and
Paradise2Morrow Ltd, Suite 1, Second Floor, Sound&Vision House, Francis Rachel
Str., Victoria, Maha, Seychelles (applicants).
On 20/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 805 748 is partially upheld, namely for the following
contested services:
Class 41: Provision of non-downloadable films and television programs via pay
television; Provision of non-downloadable films and television
programs via pay-per-view television channels; Entertainment by IP-
TV; Provision of non-downloadable films and television programs via
a video-on-demand service; Electronic viewing guide services;
Entertainment by means of wireless television broadcasts;
Entertainment in the nature of mobile phone television;
Entertainment provided via a global communication network;
Provision of multimedia entertainment programs by television,
broadband, wireless and on-line services; Rental of television
programmes; Education services provided by television
programmes; Provision of radio and television entertainment
services.
2. European Union trade mark application No 15 750 466 is rejected for all the
above services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against all the services of European Union trade
mark application No 15 750 466 for the word mark ‘M2M TV’. The opposition is based
Decision on Opposition No B 2 805 748 page: 2 of 10
on European Union trade mark registration No 15 104 102 for the figurative mark
. The opponent invoked Article 8(1)(a) and (b) and
Article 8(5) EUTMR.
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.
According to Article 95(1) EUTMR, in proceedings before it the Office will examine
the facts of its own motion; however, in proceedings relating to relative grounds for
refusal of registration, the Office will be restricted in this examination to the facts,
evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part) the Office will give the opposing party the
opportunity to present the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR (in the version in force at the time of
commencement of the adversarial part), when the opposition is based on a mark with
reputation within the meaning of Article 8(5) EUTMR, the opposing party must
provide evidence showing, inter alia, that the mark has a reputation, as well as
evidence or arguments showing that use without due cause of the contested trade
mark would take unfair advantage of, or be detrimental to, the distinctive character or
the repute of the earlier trade mark.
In the present case, the notice of opposition was not accompanied by any evidence
of the alleged reputation of the earlier trade mark.
On 01/12/2016 the opponent was given two months, commencing after the end of the
cooling-off period, to submit the abovementioned material. This time limit expired on
13/04/2017.
The opponent did not submit any evidence concerning the reputation of the trade
mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the
opposition must be rejected as unfounded insofar as this ground is concerned.
Decision on Opposition No B 2 805 748 page: 3 of 10
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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear.
Class 41: Film production, motion picture rental, projection of films, radio and
television entertainment; services in the field of education and entertainment
(included in Class 41), musical, singing, theater and dancing performances, live and
via media; education via radio or television; production of radio and television
programs, sporting and cultural activities; production, rental and showing of films
(entertainment), educational and entertainment films, stored on recorded video
carriers and CDs, CD ROMs and DVDs; organization of award shows; organization
and arranging of fashion shows for entertainment purposes; entertainment.
Class 45: Legal services; security services for the protection of property and
individuals; escorting in society (chaperoning); marriage agencies; agency services
for arranging personal introductions; matchmaking services; dating services, internet
dating services, dating agency services, video dating services, computer dating
services.
The contested services are the following:
Class 35: Subscription to a television channel.
Class 38: Television broadcasting services for mobile phones; Broadcasting and
transmission of pay-per-view television programs; Broadcasting of television and
radio programs via cable or wireless networks; Access to content, websites and
portals; Broadcasting services; Audio and video broadcasting services provided via
the Internet; Audio, video and multimedia broadcasting via the Internet and other
communications networks; Audio broadcasting; Audiovisual transmission services;
Pay-per-view television transmission services; Dissemination of television
programmes relayed by cable link to television receivers; Dissemination of television
programmes relayed by microwave link to television receivers; Wireless
broadcasting; Wireless transmission and broadcasting of television programmes;
Electronic transmission of news; Data transmission and data broadcasting;
Information services relating to broadcasting; Communication of information by
television; Interactive television and radio broadcasting; Assisting others in providing
cable television communications services; Transmission of audio data via the
Internet; Radio and television broadcasting; Simulcasting broadcast television over
global communication networks, the Internet and wireless networks; Streaming of
television over the Internet; Broadcasting of financial information by television;
Decision on Opposition No B 2 805 748 page: 4 of 10
Television broadcasting; Providing telecommunication channels for teleshopping
services; Ticker tape services; Transmission of digital audio and video broadcasts
over a global computer network; Transmission of user-generated content via the
Internet; Transmission of videos, movies, pictures, images, text, photos, games,
user-generated content, audio content, and information via the Internet; Transmission
of video data via the Internet; Broadcasting services relating to Internet protocol TV;
Broadcast of information by means of television; Music broadcasting; Radio and
television program broadcasting; Transmission of radio and television programs;
Broadcasting of motion pictures by television; Broadcasting of teleshopping
programmes; Video-on-demand transmission; Video broadcasting; Broadcasting and
transmission of television programs; Subscription television broadcasting;
Broadcasting of audiovisual and multimedia content via the Internet; Broadcasting of
video and audio programming over the Internet; Broadcasting programs via a global
computer network; Broadcasting of programmes via the internet; Radio and
television broadcasting, also via cable networks; Broadcasting of motion picture films
via the Internet; Transmission of television programs; Broadcasting of television
programs using video-on-demand and pay-per-view television services; Broadcasting
of television programs via the Internet; Provision of access to television via decoding
apparatus; Provision of access to Internet protocol TV; Provision of communications
via television transmissions; Televisual communication services; Secure transmission
of data, sound or images; Secured data, sound and image transmission services;
Delivery of messages by audiovisual media; Communication by electronic means;
Communications via multinational telecommunication networks; Communication by
hertzian wave; Electronic network communications; Communication services for the
transmission of information; Communication services for the transmission of
information by electronic means; Communication services for the electronic
transmission of data; Communication services for the electronic transmission of
images; Digital transmission services; Digital transmission services for audio and
video data; Wireless communications services; Electronic transmission of images
(Services for the -); Electronic transmission and retransmission of sounds, images,
documents, messages and data; Interactive transmission of video over digital
networks; Interactive broadcasting and communications services; Reception of
television programmes for onward transmission to subscribers; Transmission of
database information via telecommunications networks; Transmission of coded
messages and images; Transmission of sound by electronic means; Transmission of
sound, video and information; Transmission of sound and vision via satellite or
interactive multimedia networks; Information transmission services via digital
networks; Telecommunication of information (including web pages); Transmission of
messages, data and content via the Internet and other communications networks;
Transmission of interactive television program guides; Transmission of sound or
visual recordings over networks; Transmission of sound via interactive multimedia
networks; Video transmission services; Video communication services; Video
transmission via digital networks; Computer aided transmission of images; Computer
aided transmission of information and images; Distribution of data or audio visual
images via a global computer network or the internet; Wireless electronic
transmission of images; Transmission of audio and video content via computer
networks; Transmission of sound, picture and data signals; Streaming audio and
video material on the Internet; Transmission and distribution of data or audiovisual
images via a global computer network or the Internet; Transmission of data, audio,
video and multimedia files; Transmission of data, audio, video and multimedia files,
including downloadable files and files streamed over a global computer network;
Video narrowcasting services; Transmission of data or audio visual images via a
global computer network or the internet; Video-on-demand transmission services;
Video, audio and television streaming services; Provision of telecommunication
access to television programs provided via an on-demand service; Provision of
Decision on Opposition No B 2 805 748 page: 5 of 10
access to an Internet portal featuring video-on-demand programs; Provision of
telecommunication access to films and television programs provided via a video-on-
demand service; Provision of telecommunication access to video and audio content
provided via an online video-on-demand service.
Class 41: Provision of non-downloadable films and television programs via pay
television; Provision of non-downloadable films and television programs via pay-per-
view television channels; Entertainment by IP-TV; Provision of non-downloadable
films and television programs via a video-on-demand service; Electronic viewing
guide services; Entertainment by means of wireless television broadcasts;
Entertainment in the nature of mobile phone television; Entertainment provided via a
global communication network; Provision of multimedia entertainment programs by
television, broadband, wireless and on-line services; Rental of television
programmes; Education services provided by television programmes; Provision of
radio and television entertainment services.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Contested services in Class 35
The contested subscription to a television channel is dissimilar to all the opponent’s
goods and services in Classes 25, 41 and 45. The contested subscription to a
television channel is a subscription-based television service, usually provided by both
analogue and digital cable and satellite television but also increasingly by digital
terrestrial and internet television, whose purpose is to deliver television programming
to paying subscribers. This service has nothing in common with the opponent’s
clothing, footwear and headgear in Class 25, whose purpose is to cover the human
body. Moreover this contested service does not have any relevant points in common
with the opponent’s education and entertainment services and legal, security and
dating services in Classes 41 and 45. Even if the opponent’s services in Class 41
relate, inter alia, to the production of television programmes or to education via
television, this does not make them similar to the contested subscription to a
television channel. This is because this contested service and the opponent’s
services in Class 41, as well as the opponent’s goods and services in Classes 25 and
45, have different natures and purposes, are not usually provided or offered by the
same companies and are distributed through different channels. In addition, they are
not complementary or in competition.
Therefore, the goods and services under comparison are dissimilar.
Contested services in Class 38
The contested services are telecommunication services comprising mainly
broadcasting services, consisting in the diusion and the transmission of
radio and television programmes, films, music and other kinds of audio or video
content to a dispersed audience by any electronic mass communications medium.
Decision on Opposition No B 2 805 748 page: 6 of 10
They have nothing in common with the opponent’s clothing, footwear and headgear
for covering and adorning the human body in Class 25 and the opponent’s legal,
security and dating services in Class 45. Their producers or providers, purposes,
methods of use, distribution channels and targeted public are different. The
contested services are also different from the opponent’s services in Class 41, whose
purpose is to inform, educate or entertain, whereas the contested broadcasting
services have the purpose of communication. It may be that the latter services
release the material produced by the opponent’s film production, radio and television
entertainment; production of radio and television programs, sporting and cultural
activities, for example. However, this does not make these services similar. Their
different purposes and natures make them dissimilar. Moreover, although large,
usually government-run, companies may offer both entertainment and broadcasting
services, this is not the norm, and these services should continue to be considered
dissimilar. Therefore the Opposition Division cannot share the opponent’s opinion,
according to which ‘these services are almost identical and the average consumer
could not differentiate between these’. Consequently, the contested services in
Class 38 are considered dissimilar to all the opponent’s goods and services in
Classes 25, 41 and 45.
Contested services in Class 41
The contested services in Class 41 comprise the production of a range of
entertainment and educational content suitable to be disseminated through different
media, such as pay-per-view television channels, video-on-demand services, mobile
phone television and global communication networks. These services are included in
the broad category of the opponent’s services in the field of education and
entertainment (included in Class 41). Consequentially, they are identical.
b) 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 services found to be identical are directed at both the public
at large and the professional public. The degree of attention may vary from average
to high, depending on the price, or terms and conditions of the services purchased.
c) The signs
M2M TV
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
Decision on Opposition No B 2 805 748 page: 7 of 10
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The earlier mark is a figurative mark composed of the stylised letters and number
‘M2M’ in black, white and red, respectively. The number ‘2’ is placed within a red
pentagon.
The contested sign is the word mark ‘M2M TV’. The expression ‘M2M’, present in
both signs, is, inter alia, an abbreviation for the English expression ‘machine to
machine’. This is a technical expression, not commonly used outside the specialised
field of telecommunications, referring to communication of data between machines.
Therefore, the majority of the relevant public, such as the general public, will not be
aware of the meaning of the word element ‘M2M’. The Opposition Division will base
the evaluation of this decision on the majority of the public, for which ‘M2M’ does not
convey any evident meaning as a whole, other than being understood as a
combination of letters and a numeral, and for which it is thus distinctive in relation to
the relevant services.
The element ‘TV’ of the contested sign is a very widely used abbreviation for the
word ‘television’, so it will be perceived as such by the majority of the relevant public.
Bearing in mind that the relevant services in Class 41 are suitable to be disseminated
through television channels or are related to television programmes, the element ‘TV’
is considered weak, since it will be perceived as an indication of a characteristic of
these services. The figurative element of the earlier mark will be perceived by part of
the public simply as a pentagon, and for this part of the public it has a purely
decorative nature. For another part of the public, it will reflect the shape of a diamond
and will denote something of extraordinary quality, for example, and therefore its
distinctiveness will be below average. Be that as it may, its impact in the comparison
of the trade marks is limited, as is that of the stylisation of the letters in the earlier
mark, which is very slight.
Furthermore, in relation to the figurative element of the earlier mark, it has to be
stressed that, when signs consist of both verbal and figurative components, in
principle, the verbal component of the sign usually has a stronger impact on the
consumer than the figurative component, since the public does not tend to analyse
signs and will more easily refer to the signs in question by their verbal elements than
by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37; 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.),
§ 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.),
§ 59).
The signs under comparison have no element that could be considered clearly more
dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the expression ‘M2M’, which constitutes the only
verbal element of the earlier mark and the first and more distinctive element of the
contested sign. However, they differ in the figurative element and the slight stylisation
of the earlier mark and in the verbal element ‘TV’ of the contested sign. The figurative
element, as well as the minimal graphic stylisation of the earlier mark, will have a
very limited impact on consumers for the reasons mentioned above. In addition, the
verbal element ‘TV’ of the contested sign plays a less significant role than the
element ‘M2M’, given its low degree of distinctiveness.
Therefore, the signs are visually similar to a high degree.
Decision on Opposition No B 2 805 748 page: 8 of 10
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the letters
and number ‘M2M’, present identically in both signs. The pronunciation differs in the
sound of the letters ‘TV’ of the contested sign.
Taking into account the limited weight attributed to the element ‘TV’, it is concluded
that the signs are aurally similar to a high degree.
Conceptually, bearing in mind the above considerations regarding the meanings
attributed by the relevant consumers to the elements of the marks, for part of the
public one of the signs (the earlier mark) will not be associated with any meaning,
while the contested sign will be associated with meanings related to the element ‘TV’,
in which case the signs are not conceptually similar. For another part of the public,
the signs will be conceptually dissimilar, given the difference between the perception
of the diamond in the earlier mark and that of the word ‘TV’.
d) 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.
As seen above, the opponent claimed reputation under Article 8(5) EUTMR but failed
to submit evidence. Therefore, 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 weak element as stated above in
section c) of this decision.
e) Global assessment, other arguments and conclusion
In the present case, the contested services are partly identical and partly dissimilar to
the opponent’s goods and services. The degree of attention varies from average to
high. The signs are visually and aurally similar to a high degree to the extent that they
coincide in the expression ‘M2M’, which is the only word element in the earlier mark
and the first and more distinctive element in the contested sign.
The fact that the marks are not conceptually similar or that they are dissimilar must
be put in the context of the contested sign containing a weak word element, namely
the word ‘TV’, or the figurative element in the earlier mark being perceived as a
diamond.
The differences between the marks are restricted to this weak element of the
contested sign, ‘TV’, and to the figurative element (the pentagon) and stylisation of
the earlier sign, which have a limited impact when assessing the likelihood of
confusion, as explained above in section c).
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).
Decision on Opposition No B 2 805 748 page: 9 of 10
Taking all the above into account, the Opposition Division considers that the
additional and differing figurative and verbal elements of the signs are not sufficient to
counteract the similarities between them, arising from the commonality in the
distinctive element ‘M2M’. Therefore, the relevant public, including the part displaying
a high degree of attention, when encountering the signs in relation to identical
services, is likely to think that they come from the same undertaking or, as the case
may be, from economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and, therefore, the opposition is partly well
founded on the basis of the opponent’s European Union trade mark registration
No 15 104 102.
It follows from the above that the contested sign must be rejected for the services
found to be identical to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services
is a necessary condition for the application of Article 8(1) EUTMR, the opposition
based on this article and directed at these services cannot be successful.
For the sake of completeness, it must be mentioned that the opposition must also fail
insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the
remaining services because the signs and the services are obviously not identical.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to
Article 109(3) 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 for only some of the contested services, both
parties have succeeded on some heads and failed on others. Consequently, each
party has to bear its own costs.
The Opposition Division
María Belén
IBARRA DE DIEGO
Angela DI BLASIO María Clara
IBÁÑEZ FIORILLO
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
Decision on Opposition No B 2 805 748 page: 10 of 10
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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.