OPPOSITION DIVISION

OPPOSITION No B 2 814 245

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

Etic Telecom, 13 Chemin du Vieux Chêne, 38240 Meylan, France (applicant).

2. European Union trade mark application No 15 318 215 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 15 318 215 for the figurative mark

. The opposition is based on European Union trade mark

registration No 15 104 102 for the figurative mark . The

opponent invoked Article 8(1)(a) and (b), as well as Article 8(5) EUTMR.

Decision on Opposition No B 2 814 245 page: 2 of 9

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

and AIDS and issues relating to pregnant women and new mothers with HIV and

AIDS; services in the field of entertainment (included in class 41), musical, singing,

theatre and dancing performances, live and via media; education via radio or

television, not in the field of HIV and AIDS and issu.es relating to pregnant women

and new mothers living with HIV and AIDS; production of radio and television

programs, sporting and cultural activities; production, rental and showing of films

(entertainment); educational films excluding those in the field of HIV and AIDS and

issues relating to pregnant women and new mothers living with HIV and AIDS, stored

on recorded video carders and CDs, CD ROMs and DVDs; entertainment films,

stored on recorded video carriers and CDs, CD ROMs and DVDs; organization of

services.

The contested goods and services are the following:

Class 9: Magnets, magnetizers and demagnetizers; Scientific research and

laboratory apparatus, educational apparatus and simulators; Recorded content;

Navigation, guidance, tracking, targeting and map making devices; Safety, security,

protection and signalling devices; Devices for treatment using electricity; Optical

devices, enhancers and correctors; Measuring, detecting and monitoring

instruments, indicators and controllers; Information technology and audiovisual

equipment; Diving equipment.

Class 38: Telecommunication services.

Decision on Opposition No B 2 814 245 page: 3 of 9

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,

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.

goods and services have the same purpose, they are provided by the same

complementary.

education, but not referring to HIV and AIDS and issues relating to pregnant women

and new mothers with HIV and AIDS in Class 41. These goods and services are

provided by the same undertakings, they share the same distribution channels and

target the same relevant public. Moreover, they are complementary.

The remaining goods, namely magnets, magnetizers and demagnetizers; scientific

research and laboratory apparatus, navigation, guidance, tracking, targeting and

map making devices; safety, security, protection and signalling devices; devices for

treatment using electricity; optical devices, enhancers and correctors; measuring,

detecting and monitoring instruments, indicators and controllers; information

(education, entertainment, sporting and cultural activities) and 45 (legal, security and

production are concerned, it is true that they make use of audiovisual equipment.

However, it is clear that these goods and services have a different commercial origin.

With respect to the diving equipment, it is not usual for providers of sporting services

to sell diving equipment directly manufactured by them. Consequently, all the

remaining contested goods and the opponent’s goods and services have a different

nature, purpose and method of use. These goods and services are not

complementary nor in competition with each other. Furthermore, most of these goods

and services are provided by different undertakings, through different distribution

channels and target a different relevant public.

Contested services in Class 38

The contested telecommunication services are dissimilar to the opponent’s goods

and services in Classes 25, 41 and 45, of which a more detailed explanation has

Consequently, the contested telecommunication services and the opponent’s goods

and services have a different nature, a different purpose and a different method of

Decision on Opposition No B 2 814 245 page: 4 of 9

use. These goods and services are not complementary nor in competition with each

through different distribution channels and target a different relevant public.

Contested services in Class 42

The contested science and technology services are similar to the opponent’s

services in the field of education, but not referring to HIV and AIDS and issues

relating to pregnant women and new mothers with HIV and AIDS in Class 41. These

(legal, security and dating services). These goods and services have a different

complementary nor in competition with each other. Furthermore, most of these goods

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 goods and services found to be similar are directed at the

c) The signs

Decision on Opposition No B 2 814 245 page: 5 of 9

mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,

The marks as a whole have no meaning. However, the Court has held that, although

the average consumer normally perceives a mark as a whole and does not proceed

to analyse its various details, the fact remains that, when perceiving a word sign, they

will break it down into elements which, for them, suggest a specific meaning or which

resemble words they know (judgment of 13/02/2007, T-256/04, ‘Respicur’, paragraph

57).

perceive it, together with the preceding letter ‘M’, as the word ‘Me’, ‘a reference to the

perceive the element ‘Me’, it will also be likely that the number ‘2’ will be perceived as

therefore, distinctive regardless of the manner in which they are perceived.

As regards the earlier mark, it is composed of distinctive verbal elements and a less

distinctive figurative element of a purely decorative nature, namely the red figurative

element between the two letters ‘M’. Therefore, the verbal elements are more

distinctive than the figurative element. In this respect, it can also be noted 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. This is because the public does not tend to analyse signs and

will more easily refer to the signs in question by their verbal element than by

beginning of the contested sign. Consumers generally tend to focus on the beginning

of a sign when they encounter a trade mark. This is because the public reads from

left to right, which makes the part placed at the left of the sign (the initial part) the one

that first catches the attention of the reader. However, the marks differ in the last

green letter ‘e’ of the contested sign and in the less distinctive figurative element in

the earlier mark. Furthermore, the marks differ in their stylisation, which is, however,

not that elaborated that it can take away the attention from the verbal elements.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the

relevant public in the sound of the letters ‘M2M’, which will be pronounced depending

on the language as ‘M deux M’ (French), ‘M dos M’ (Spanish), ‘M twee M’ (Dutch),

the part of the relevant public that will perceive the element ‘Me’ in the contested

sign, the pronunciation will also slightly differ in the sound of the second letter ‘M’.

Decision on Opposition No B 2 814 245 page: 6 of 9

degree, while for another part of the relevant public, they are aurally similar to an

average degree.

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. As both signs will be associated with a similar

meaning on account of the number ‘2’ (in the sense of ‘two’ or ‘to’, as explained

above), while the contested sign also evokes, for part of the relevant public, the

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness,

but did not file any evidence in order to prove such a claim.

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 weak element in the mark, as stated above in

section c) of this decision.

appreciated globally, taking into account all factors relevant to the circumstances of

the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18;

11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence

between the relevant factors, and in particular, similarity between the trade marks

and between the goods or services. Accordingly, a greater degree of similarity

between the goods may be offset by a lower degree of similarity between the marks,

and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’,

EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24;

29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

The conflicting goods and services are partly similar and partly dissimilar. The

relevant public is the public at large and a professional public, the level of attention

Decision on Opposition No B 2 814 245 page: 7 of 9

The signs are visually and conceptually similar to an average degree, aurally they

verbal element ‘M2M’ of the earlier mark is fully included at the beginning of the

contested sign and plays and independent distinctive role therein. Indeed, the

differing last letter ‘e’ in the contested sign is represented in a different colour which

makes it easy to dissect the element ‘M2M’. Furthermore, the figurative element of

the earlier mark is less distinctive and the stylisation of the marks is not elaborated

enough to take away the attention of the verbal elements or to enable the relevant

public to distinguish between the marks.

§ 54).

Taking into account all relevant factors, and especially the similarities between the

linked undertakings.

It follows from the above that the contested trade mark must be rejected for the

goods and services found to be 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.

remaining goods and services, because the signs and the goods and services are

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

Decision on Opposition No B 2 814 245 page: 8 of 9

It follows that the Office cannot take into account any alleged rights for which the

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.

the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence

On 20/12/2016 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

25/04/2017.

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 these grounds are concerned.

apportionment of costs.

Since the opposition is successful for only some 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.

Decision on Opposition No B 2 814 245 page: 9 of 9

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

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.