OPPOSITION No B 2 716 051

Minus Inc, 2010-1055 West Georgia Street, P.O. Box 11140, Vancouver, British Columbia V6E 3P3, Canada (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, London, EC2N 2DG, United Kingdom (professional representative)

a g a i n s t

Minus One Ltd Cyprus., 3 Makarios III Ave., Loukaides Court, 4th Floor, 4000 Mesa Geitonia Limassol, Cyprus (applicant), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595DA Den Haag, The Netherlands (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 716 051 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 004 807. The opposition is based on European Union trade mark registration No 12 449 823. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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

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

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Abacuses; Accounting machines; Accumulators, electric; Acid hydrometers; Acidimeters for batteries; Acoustic conduits; Acoustic couplers; Actinometers; Adding machines; Aerials; Aerometers; Agendas (Electronic -); Air analysis apparatus; Alarm bells, electric; Alarms; Alcoholmeters; Alidades; Altimeters; Ammeters; Amplifiers; Amplifying tubes; Anemometers; Animated cartoons; Anode batteries; Anodes; Answering machines; Anti-glare glasses; Anti-glare visors; Anti-interference devices [electricity]; Anti-theft warning apparatus; Anticathodes; Apertometers [optics]; Armatures [electricity]; Asbestos clothing for protection against fire; Asbestos gloves for protection against accidents; Asbestos screens for firemen; Astronomy (Apparatus and instruments for -); Audiovisual teaching apparatus; Automated teller machines (ATM); Azimuth instruments; Balances [steelyards]; Balancing apparatus; Bar code readers; Barometers; Batteries, electric; Batteries, electric, for vehicles; Batteries for lighting; Battery boxes; Battery chargers; Battery jars; Beacons, luminous; Bells [warning devices]; Betatrons; Binoculars; Blinkers [signalling lights]; Blueprint apparatus; Boiler control instruments; Branch boxes [electricity]; Breathing apparatus, except for artificial respiration; Breathing apparatus for underwater swimming; Buzzers; Cabinets for loudspeakers; Cables, electric; Calculating disks; Calculating machines; Calibrating rings; Calipers; Camcorders; Cameras [photography]; Capacitors; Capillary tubes; Carpenters' rules; Carriers for dark plates [photography]; Cases especially made for photographic apparatus and instruments; Cases fitted with dissecting instruments [microscopy]; Cash registers; Cassette players; Cathodes; Cathodic anti-corrosion apparatus; Cell phone straps; Centering apparatus for photographic transparencies; Chargers for electric batteries; Chemistry apparatus and instruments; Chips [integrated circuits]; Choking coils [impedance]; Chromatography apparatus for laboratory use; Chronographs [time recording apparatus]; Cinematographic cameras; Cinematographic film, exposed; Circuit breakers; Circuit closers; Cleaning apparatus for phonograph records; Clinometers; Clothing especially made for laboratories; Clothing for protection against accidents, irradiation and fire; Clothing for protection against fire; Coaxial cables; Coils, electric; Coin-operated apparatus (Mechanisms for -); Coin-operated mechanisms for television sets; Collectors, electric; Commutation (Electric apparatus for -); Commutators; Compact disc players; Compact discs [audio-video]; Compact discs [read-only memory]; Comparators; Compasses (Directional -); Compasses [measuring instruments]; Computer game programs; Computer keyboards; Computer memory devices; Computer operating programs, recorded; Computer peripheral devices; Computer programmes [programs], recorded; Computer programs [downloadable software]; Computer software, recorded; Computers; Conductors, electric; Connections for electric lines; Connectors [electricity]; Contact lenses; Contacts, electric; Containers for contact lenses; Containers for microscope slides; Control panels [electricity]; Converters, electric; Copper wire, insulated; Correcting lenses [optics]; Cosmographic instruments; Counter-operated apparatus (Mechanisms for -); Couplers [data processing equipment]; Couplings, electric; Covers for electric outlets; Crash test dummies; Cupels [laboratory]; Current rectifiers; Cyclotrons; Darkroom lamps [photography]; Darkrooms [photography]; Data processing apparatus; Decompression chambers; Demagnetizing apparatus for magnetic tapes; Densimeters; Densitometers; Detectors; Diagnostic apparatus, not for medical purposes; Diaphragms [acoustics]; Diaphragms for scientific apparatus; Diaphragms [photography]; Dictating machines; Diffraction apparatus [microscopy]; Discharge tubes, electric, other than for lighting; Disk drives for computers; Disks, magnetic; Distance measuring apparatus; Distance recording apparatus; Distillation apparatus for scientific purposes; Distribution boards [electricity]; Distribution boxes [electricity]; Distribution consoles [electricity]; Divers' masks; Diving suits; DNA chips; Dog whistles; Dosimeters; Downloadable image files; Downloadable music files; Downloadable ring tones for mobile phones; Dressmakers' measures; Drying apparatus for photographic prints; Drying racks [photography]; Ducts [electricity]; DVD players; Dynamometers; Ear plugs for divers; Editing appliances for cinematographic films; Egg-candlers; Electric door bells; Electric installations for the remote control of industrial operations; Electric loss indicators; Electricity conduits; Electricity mains (Materials for -) [wires, cables]; Electrified fences; Electrified rails for mounting spot lights; Electro-dynamic apparatus for the remote control of railway points; Electro-dynamic apparatus for the remote control of signals; Electrolysers; Electromagnetic coils; Electronic notice boards; Electronic pens [visual display units]; Electronic pocket translators; Electronic publications, downloadable; Electronic tags for goods; Encoded identification bracelets, magnetic; Encoded magnetic cards; Enlarging apparatus [photography]; Epidiascopes; Ergometers; Exposure meters [light meters]; Extinguishers; Eyeglass cases; Eyeglass chains; Eyeglass cords; Eyeglass frames; Eyepieces; Eyepieces (Instruments containing -); Facsimile machines; False coin detectors; Fermentation (Apparatus for -) [laboratory apparatus]; Fibre [fiber (Am.)] optic cables; Film cutting apparatus; Films, exposed; Filters for respiratory masks; Filters for ultraviolet rays, for photography; Filters [photography]; Fire alarms; Fire beaters; Fire blankets; Fire boats; Fire engines; Fire escapes; Fire hose; Fire hose nozzles; Flash-bulbs [photography]; Flashlights [photography]; Floppy disks; Fluorescent screens; Fog signals, non-explosive; Food analysis apparatus; Frames for photographic transparencies; Franking (Apparatus to check -); Frequency meters; Furniture especially made for laboratories; Fuse wire; Fuses; Galena crystals [detectors]; Galvanic batteries; Galvanic cells; Galvanometers; Garments for protection against fire; Gas testing instruments; Gasometers [measuring instruments]; Gauges; Glass covered with an electrical conductor; Glazing apparatus for photographic prints; Global Positioning System [GPS] apparatus; Gloves for divers; Gloves for protection against accidents; Gloves for protection against X-rays for industrial purposes; Goggles for sports; Grids for batteries; Hands free kits for phones; Head cleaning tapes [recording]; Headphones; Heat regulating apparatus; Heliographic apparatus; Hemline markers; High-frequency apparatus; Holders for electric coils; Holograms; Horns for loudspeakers; Hourglasses; Hydrometers; Hygrometers; Identification sheaths for electric wires; Identification threads for electric wires; Identity cards, magnetic; Ignition (Electric apparatus for remote -); Incubators for bacteria culture; Inductors [electricity]; Integrated circuit cards [smart cards]; Integrated circuits; Intercommunication apparatus; Interfaces for computers; Inverters [electricity]; Invoicing machines; Ionization apparatus not for the treatment of air or water; Jigs [measuring instruments]; Juke boxes for computers; Juke boxes, musical; Junction boxes [electricity]; Junction sleeves for electric cables; Knee-pads for workers; Laboratory centrifuges; Laboratory trays; Lactodensimeters; Lactometers; Laptop computers; Lasers, not for medical purposes; Leather (Appliances for measuring the thickness of -); Lens hoods; Lenses for astrophotography; Letter scales; Levelling instruments; Levels [instruments for determining the horizontal]; Life belts; Life-buoys; Life jackets; Life nets; Life saving apparatus and equipment; Lifesaving rafts; Light dimmers [regulators], electric; Light-emitting diodes [LED]; Light-emitting electronic pointers; Lighting ballasts; Lightning arresters; Limiters [electricity]; Locks, electric; Logs [measuring instruments]; Loudspeakers; Magic lanterns; Magnetic data media; Magnetic encoders; Magnetic tape units for computers; Magnetic tapes; Magnetic wires; Magnets; Magnets (Decorative -); Magnifying glasses [optics]; Manometers; Marine compasses; Marine depth finders; Marking buoys; Marking gauges [joinery]; Masts for wireless aerials; Material testing instruments and machines; Mathematical instruments; Measures; Measuring apparatus; Measuring devices, electric; Measuring glassware; Measuring instruments; Measuring spoons; Mechanical signs; Megaphones; Mercury levels; Metal detectors for industrial or military purposes; Meteorological balloons; Meteorological instruments; Meters; Metronomes; Micrometer screws for optical instruments; Micrometers; Microphones; Microprocessors; Microscopes; Microtomes; Milage recorders for vehicles; Mirrors for inspecting work; Mirrors [optics]; Modems; Money counting and sorting machines; Monitoring apparatus, electric; Monitors [computer hardware]; Monitors [computer programs]; Motor fire engines; Mouse [data processing equipment]; Mouse pads; Nautical apparatus and instruments; Naval signalling apparatus; Navigation apparatus for vehicles [on-board computers]; Navigational instruments; Neon signs; Nets for protection against accidents; Nose clips for divers and swimmers; Notebook computers; Objectives [lenses] [optics]; Observation instruments; Octants; Ohmmeters; Optical apparatus and instruments; Optical character readers; Optical condensers; Optical data media; Optical discs; Optical fibers [fibres] [light conducting filaments]; Optical glass; Optical goods; Optical lamps; Optical lenses; Oscillographs; Ovens for laboratory use; Oxygen transvasing apparatus; Ozonisers [ozonators]; Parking meters; Particle accelerators; Pedometers; Peepholes [magnifying lenses] for doors; Periscopes; Personal stereos; Petrol gauges; Phonograph records; Photocopiers [photographic, electrostatic, thermic]; Photometers; Phototelegraphy apparatus; Photovoltaic cells; Physics (Apparatus and instruments for -); Pince-nez; Pipettes; Plane tables [surveying instruments]; Planimeters; Plates for batteries; Plotters; Plumb bobs; Plumb lines; Pocket calculators; Polarimeters; Portable media players; Portable telephones; Precision balances; Precision measuring apparatus; Pressure indicator plugs for valves; Pressure indicators; Pressure measuring apparatus; Printed circuit boards; Printed circuits; Printers for use with computers; Prisms [optics]; Probes for scientific purposes; Processors [central processing units]; Projection apparatus; Projection screens; Protection devices against Xrays, not for medical purposes; Protection devices for personal use against accidents; Protective helmets; Protective helmets for sports; Protective masks; Protective suits for aviators; Protractors [measuring instruments]; Punched card machines for offices; Push buttons for bells; Pyrometers; Quantity indicators; Racks (Photographic -); Radar apparatus; Radio pagers; Radiological apparatus for industrial purposes; Radiology screens for industrial purposes; Radios; Radiotelegraphy sets; Radiotelephony sets; Railway traffic safety appliances; Readers [data processing equipment]; Receivers (Audio– and video–); Record player needles (Apparatus for changing -); Record players; Reducers [electricity]; Reflecting discs for wear, for the prevention of traffic accidents; Refractometers; Refractors; Regulating apparatus, electric; Relays, electric; Remote control apparatus; Resistances, electric; Respirators for filtering air; Respirators, other than for artificial respiration; Resuscitation mannequins [teaching apparatus]; Retorts; Retorts' stands; Revolution counters; Rheostats; Riding helmets; Road signs, luminous or mechanical; Rods for water diviners; Rods [surveying instruments]; Rulers [measuring instruments]; Rules [measuring instruments]; Saccharometers; Safety restraints, other than for vehicle seats and sports equipment; Safety tarpaulins; Salinometers; Satellite navigational apparatus; Satellites for scientific purposes; Scales; Scanners [data processing equipment]; Screens for photoengraving; Screens [photography]; Screwtapping gauges; Semi-conductors; Sextants; Sheaths for electric cables; Shoes for protection against accidents, irradiation and fire; Shutter releases [photography]; Shutters [photography]; Sighting telescopes for firearms; Signal bells; Signal lanterns; Signalling buoys; Signalling panels, luminous or mechanical; Signalling whistles; Signals, luminous or mechanical; Signs, luminous; Simulators for the steering and control of vehicles; Sirens; Skins (Apparatus for measuring the thickness of -); Slide calipers; Slide projectors; Slide-rules; Slides [photography]; Smoke detectors; Sockets, plugs and other contacts [electric connections]; Socks, electrically heated; Solar batteries; Solderers' helmets; Solenoid valves [electromagnetic switches]; Sonars; Sound alarms; Sound locating instruments; Sound recording apparatus; Sound recording carriers; Sound recording strips; Sound reproduction apparatus; Sound transmitting apparatus; Sounding apparatus and machines; Sounding leads; Sounding lines; Spark-guards; Speaking tubes; Spectacle cases; Spectacle frames; Spectacle glasses; Spectacles [optics]; Spectrograph apparatus; Spectroscopes; Speed checking apparatus for vehicles; Speed indicators; Speed measuring apparatus [photography]; Speed regulators for record players; Spherometers; Spirit levels; Spools [photography]; Sprinkler systems for fire protection; Stage lighting regulators; Stands for photographic apparatus; Starter cables for motors; Steering apparatus, automatic, for vehicles; Step up transformers; Stereoscopes; Stereoscopic apparatus; Stills for laboratory experiments; Styli for record players; Sulphitometers; Sunglasses; Surveying apparatus and instruments; Surveying chains; Surveying instruments; Surveyors' levels; Switchboards; Switchboxes [electricity]; Switches, electric; Tachometers; Taperecorders; Taximeters; Teaching apparatus; Teeth protectors; Telegraph wires; Telegraphs [apparatus]; Telemeters; Telephone apparatus; Telephone receivers; Telephone transmitters; Telephone wires; Teleprinters; Teleprompters; Telerupters; Telescopes; Television apparatus; Temperature indicators; Terminals [electricity]; Test tubes; Testing apparatus not for medical purposes; Theft prevention installations, electric; Theodolites; Thermionic tubes; Thermometers, not for medical purposes; Thermostats; Thermostats for vehicles; Ticket dispensers; Time clocks [time recording devices]; Time recording apparatus; Time switches, automatic; Tires (Automatic indicators of low pressure in vehicle -); Tone arms for record players; Totalizators; Traffic-light apparatus [signalling devices]; Transformers [electricity]; Transistors [electronic]; Transmitters of electronic signals; Transmitters [telecommunication]; Transmitting sets [telecommunication]; Transponders; Triodes; Tripods [for cameras]; Urinometers; USB flash drives; Vacuum gauges; Vacuum tubes [radio]; Variometers; Vehicle breakdown warning triangles; Vehicle radios; Verniers; Video cassettes; Video game cartridges; Video recorders; Video screens; Video telephones; Videotapes; Viewfinders, photographic; Viscosimeters; Voltage regulators for vehicles; Voltage surge protectors; Voltmeters; Voting machines; Wafers [silicon slices]; Waistcoats (Bullet-proof -); Waling glasses; Walkie-talkies; Washing trays [photography]; Water level indicators; Wavemeters; Weighbridges; Weighing apparatus and instruments; Weighing machines; Weights; Whistle alarms; Wind socks for indicating wind direction; Wire connectors [electricity]; Wires, electric; Word processors; Workmen's protective face-shields; Wrist rests for use with computers; X-ray apparatus not for medical purposes; X-ray films, exposed; X-ray photographs, other than for medical purposes; X-ray tubes not for medical purposes; X-rays producing apparatus and installations, not for medical purposes; Prerecorded compact discs, vinyl records, digital video discs, downloadable audio and audio-visual files in the nature of .MP3, .WMA, .WAV, RM, .WMV and .SWF files, all of the foregoing containing music; USB cards; laptop computer bags and cellular, smartphone and handheld computer accessories namely, carry cases, protective cases and face plates.

Class 25: Clothing, headgear; Aprons [clothing]; Ascots; Babies' pants [clothing]; Bandanas [neckerchiefs]; Bath robes; Bath slippers; Bathing caps; Bathing trunks; Beach clothes; Belts [clothing]; Berets; Bibs, not of paper; Boas [necklets]; Bodices [lingerie]; Brassieres; Breeches for wear; Camisoles; Cap peaks; Caps [headwear]; Chasubles; Clothing; Clothing for gymnastics; Clothing of imitations of leather; Clothing of leather; Coats; Collar protectors; Combinations [clothing]; Corselets; Corsets [underclothing]; Cuffs; Cyclists' clothing; Detachable collars; Dress shields; Dresses; Dressing gowns; Ear muffs [clothing]; Fishing vests; Fittings of metal for footwear; Footmuffs, not electrically heated; Fur stoles; Furs [clothing]; Gabardines [clothing]; Gaiter straps; Galoshes; Garters; Girdles; Gloves [clothing]; Hat frames [skeletons]; Hats; Headbands [clothing]; Headgear for wear; Heelpieces for stockings; Heels; Hoods [clothing]; Hosiery; Jackets [clothing]; Jerseys [clothing]; Jumper dresses; Knitwear [clothing]; Layettes [clothing]; Leg warmers; Leggings [trousers]; Liveries; Maniples; Mantillas; Masquerade costumes; Mitres [hats]; Mittens; Money belts [clothing]; Motorists' clothing; Muffs [clothing]; Neckties; Outerclothing; Pants; Paper clothing; Paper hats [clothing]; Parkas; Pelerines; Pelisses; Petticoats; Pocket squares; Pockets for clothing; Ponchos; Pullovers; Pyjamas; Ready-made clothing; Ready-made linings [parts of clothing]; Saris; Sarongs; Sashes for wear; Scarfs; Shawls; Shirt fronts; Shirt yokes; Shirts; Shoes; Short-sleeve shirts; Shoulder wraps; Shower caps; Singlets; Ski boots; Ski gloves; Skirts; Skorts; Skull caps; Sleep masks; Slippers; Slips [undergarments]; Smocks; Sock suspenders; Socks; Spats; Stocking suspenders; Stockings; Stockings [sweat-absorbent]; Stuff jackets [clothing]; Suits; Suspenders; Sweaters; Swimsuits; Teddies [undergarments]; Tee-shirts; Tights; Tips for footwear; Togas; Top hats; Topcoats; Trousers; Turbans; Underpants; Underwear; Underwear (Anti-sweat -); Uniforms; Veils [clothing]; Vests; Waterproof clothing; Wet suits for water skiing; Wimples; T-shirts; sweatshirts, lanyards, scarves; swim suits.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; production of television and radio programs; distribution of television and radio programs for others; production and publishing of music, providing online entertainment, namely providing sound and video recordings in the field of music and music based entertainment; entertainment services, namely providing on line non-downloadable prerecorded musical sound and video recordings via a global computer network; fan clubs; development and dissemination of educational materials of others in the field of music and entertainment; radio entertainment production and distribution; audio and sound recording and production; record production; videotape production; production of motion picture films; distribution of motion picture films; television program syndication; entertainment in the nature of ongoing television programs in the field of music and entertainment; entertainment, namely a continuing music and entertainment show distributed over television, satellite, audio, and video media; publication of books and magazines; entertainment in the nature of ongoing radio programs; entertainment in the nature of live concerts and performances by musical artists and groups; entertainment services, namely personal appearances by musical groups, musical artists and celebrities; entertainment services in the nature of performances rendered by musical artists through the medium of television, radio, and audio and video recordings; entertainment services, namely recorded performances by musical artists; educational and entertainment services, namely, production and presentation of television shows, sports events, fashion shows, game shows, music shows, award shows and comedy shows before live audiences which are all broadcast live or taped for later broadcast; entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials; entertainment services, namely, providing on-line reviews of music, musical artists and music videos; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; entertainment services namely live, televised and movie appearances by a professional entertainer; conducting entertainment exhibitions in the nature of music festivals; entertainment services, namely, conducting exhibitions in the field of music and the arts; organizing exhibitions for entertainment purposes featuring music and the arts; and publishing of web magazines; distribution of music; distribution of musical sound recordings and video recordings; preparing audio-visual displays in the field of music; maintaining a library of recorded music tor licensing purposes; music publishing services; recording studio services.

The contested goods and services, following a limitation, are the following:

Class 9: Pre-recorded image, data and sound carriers, including CDs, and DVDs containing music and videos of a band; Downloadable sound, audio-visual and video files, namely music and video clips of a band, including to be played via streaming; Electronic and digital publications, downloadable or on data carriers, in relation to a band.

Class 25: Clothing, headgear, footwear, namely clothing and headgear for promotion of bands.

Class 41: Bands; Production and writing of music and songs of a band; Producing and providing of audio and/or video recordings of a band.

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 ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and opponent’s lists 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.

With regard to the applicant’s goods in Class 25, although the term ‘namely’ is exclusive and restricts the scope of protection only to the specifically listed goods, footwear does not include clothing and headgear, as these goods are considered similar to each other. It was the applicant’s intention to designate footwear on the one hand and clothing and headgear on the other. Consequently, the Opposition Division interprets the list of goods in Class 25 as designating footwear of all kinds and clothing and headgear for promotion of bands.

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 pre-recorded image, data and sound carriers, including CDs, and DVDs containing music and videos of a band overlap with the opponent’s prerecorded compact discs, vinyl records, digital video discs, all of the foregoing containing music. Therefore, they are identical.

The contested downloadable sound, audio-visual and video files, namely music and video clips of a band, including to be played via streaming are included in the broad categories of the opponent’s downloadable image files; downloadable music files. Therefore, they are identical.

Electronic and digital publications, downloadable in relation to a band are included in the broad category of the opponent’s electronic publications, downloadable. Therefore, they are identical.

Electronic and digital publications on data carriers, in relation to a band are similar to a high degree to the opponent’s electronic publications, downloadable, as they have similar natures and purposes and they can be in competition. These goods target the same public, are usually distributed via the same channels and can be offered by the same undertaking or economically linked undertakings.

Contested goods in Class 25

Clothing, headgear, namely clothing and headgear for promotion of bands are included in the broad categories of the opponent’s clothing, headgear. Therefore, they are identical.

The contested footwear includes, as a broader category, the opponent’s shoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 41

The contested bands are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

Production and writing of music and songs of a band; producing and providing of audio and/or video recordings of a band are included in the broad category of the opponent’s production and publishing of music, providing online entertainment, namely providing sound and video recordings in the field of music and music based entertainment. Therefore, they are identical.

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 and similar to a high degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is 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 earlier sign is figurative and is composed of the bold white characters ‘M*NUS’ with a black outline placed against a white background. The second character in the sign is formed by two rectangles joined together; as its depiction is somewhat fanciful, it will be perceived as a figurative element and not as a particular letter. The opponent argues that this element depicts a minus sign, ‘–’; however, as the central line is not separated from the borders of the rectangles, it is rather unlikely that the relevant public would perceive it as a minus sign. The applicant argues that the earlier sign will be pronounced ‘MENUS’ or ‘MONUS’ and the opponent argues that it can be pronounced ‘MINUS’; however, as stated above, the second character of the earlier sign, due to its fanciful depiction, is not likely to be perceived as any particular letter but rather as a figurative element.

The contested sign is also figurative and it is composed of a combination of letters and a number, ‘M1NUSONE’, depicted in slightly stylised bold white characters with the letters in upper case. This inscription is presented against a black background with a fairly big circular red element in the middle.

The element ‘M*NUS’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The number ‘1’ of the contested sign will be understood as the lowest cardinal number by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The combination of the remaining letters of the contested sign is meaningless and is, therefore, distinctive.

The marks have no elements that could be considered clearly more distinctive or more dominant than other elements.

Visually, the signs coincide in ‘M*NUS’. However, they differ in ‘1’ and the three final letters ‘ONE’ of the contested sign as well as in the graphic representations and figurative elements present in both signs described above. Although it is true that in both signs the characters are presented in bold white typefaces, the remaining graphic and figurative elements contribute to differentiating the signs significantly. The earlier sign is presented on a white background whereas in the contested sign the verbal element is placed against a black background with a red figurative element. The shared feature of the signs is the replacement of their second letters by a figurative device in case of the earlier sign and by the numeral ‘1’ in the contested sign. However, it does not contribute to the visual similarity between the signs but rather sets them further apart as these components are not similar to each other.

Therefore, the signs are visually similar to a low degree.

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 ‛M-NUS’, present identically in both signs. The pronunciation differs in the sound of the numeral ‛1’ and the sound of the final letters ‘ONE’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the numeral ‘1’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade mark has a reputation in the European Union in connection with all the goods and services for which it is registered. 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).

On 25/10/2016 the opponent submitted the following evidence:

• Printouts from the website http://enterstore.tictail.com presenting some pieces of clothing offered under a word mark ‘Minus’. The earlier sign does not appear anywhere as registered;
• Printouts from the opponent’s official website http://www.m-nus.com regarding the membership offer. The earlier sign does not appear as registered;
• Printouts from the official Facebook page of Minus regarding the history of a music label ‘MINUS’ which started in 1998 and announcements of some cultural events on which the earlier sign appears as registered.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Despite showing some use of the trade mark, the evidence provides no information on the extent of such use and a possible recognition of the trade mark among the relevant public in relation to the relevant goods and services for which the reputation is claimed. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation. For the sake of completeness it needs to be added that the evidence is also insufficient to prove that the earlier mark acquired enhanced distinctiveness. The evidence also does not demonstrate that the earlier mark will be perceived as MINUS by the relevant public.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the goods and services are identical and similar to a high degree and they target the public at large and business customers with specific professional knowledge or expertise with an average degree of attention.

The marks are visually and aurally similar to only a low degree: both marks are figurative marks, but they have clearly different graphic depictions, allowing the signs to be safely distinguished.

Moreover, the shared letters ‘M*NUS’ are amalgamated within the verbal element of the contested sign and they do not play an independent role in this sign. The mere fact that the signs have some letters in common does not lead to a likelihood of confusion.

Therefore, it is considered that the similarities, mainly arising from the letters the signs have in common, ‘M*NUS’, are not sufficient to establish that the average public might believe that the goods and services come from the same undertaking or economically linked undertakings, as the differences between the signs outweigh the similarities. Even in the case goods and services found to be identical and highly similar, the overall impressions created by the marks at issue would not give rise to a likelihood of confusion in the mind of the relevant public.

In this respect it must be noted that, generally, in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the different figurative elements are particularly relevant when assessing the likelihood of confusion between them as far as the goods in Class 25 are concerned.

For the sake of completeness, the Opposition Division considers that this absence of a likelihood of confusion equally applies in the event that part of the public, namely the English-speaking part, should perceive the verbal element of the contested sign as a play of letters and numbers and interpret the whole as ‘MINUSONE’ in which this part of the public would recognise the words 'MINUS' and 'ONE'. This is because this part of the public will not, in any event, perceive ‘MINUS’ in the earlier sign and therefore, this perception of the contested sign does not render the signs conceptually closer. The relevant public will be still able to safely distinguish between the signs due to their different graphic representations and the fact that the similarity in the string of letters ‘M*NUS’ is not sufficient to lead to a likelihood of confusion in case of the signs at issue.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected under Article 8(1)(b) 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.

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.

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 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.

As indicated above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Boyana NAYDENOVA

Katarzyna ZANIECKA

Frédérique SULPICE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.