OPPOSITION No B 2 517 673

Novapress SA, 127 avenue Ledru Rollin, 75011 Paris, France (opponent), represented by Jacobacci & Coralis, 14/16 rue Ballu, 75009 Paris, France (professional representative)

a g a i n s t

Xi’an NovaStar Tech. Co. Ltd., 4F Block D, Qinfeng Pavilion, Xi’an Software Park, #68 2nd Keji Rd, Xi’an, Shaanxi 710075, People’s Republic of China (applicant), represented by RWZH Rechtsanwälte, Barthstrasse 4, 80339 München, Germany (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 517 673 is partially upheld, namely for the following contested services:

Class 35:        Outdoor advertising; Publicity; Layout services for advertising purposes; Design of advertising materials; Television advertising; Writing of publicity texts; Production of advertising films; Distribution of samples; Direct mail advertising; Business management consultancy; Business inquiries; Business investigations; Marketing research; Business consultancy (Professional -); Business information; Marketing studies; Business research; Production of television commercials.

2.        European Union trade mark application No 13 702 139 is rejected for all the above 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 13 702 139. The opposition is based on French trade mark registrations No 3 029 684 and No 3 045 213 and international trade mark registration No 756 022 designating Germany, Spain, Italy and the United Kingdom. The opponent invoked Article 8(1)(b) EUTMR.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 3 029 684 ‘NOVA’.

---

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 shall 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 shall be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely, inter alia, French trade mark registration No 3 029 684 ‘NOVA’.

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 06/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 06/02/2010 to 05/02/2015 inclusive.

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

Initially, in the notice of opposition of 24/04/2015, the opponent indicated that the opposition was based on all the goods and services covered by the earlier registrations. However, in its submission of 24/09/2015, the list of goods and services on which the opposition was based was limited by the opponent to the following goods and services for all earlier marks, including French trade mark No 3 029 684:

Class 9:        Apparatus and media for recording, transmitting and reproducing sound, images and data; data processing equipment; software for radio or audiovisual presentations.

Class 16:        Photographs.

Class 35:        Advertising services; business advice or information; computer file management.

Class 38:        Press and information agencies.

Class 42:        Computing technical advice; computer programming; leasing access time to a computer database server.

According to Rule 22(3) EUTMIR, the evidence of use shall 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.

In the communication dated 11/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/04/2016 to submit evidence of use of the earlier trade marks. On 08/04/2016, within the time limit, the opponent submitted evidence of use.

The evidence submitted is the following:

• Advertising leaflet in French, indicating that ‘Radio Nova’ creates advertisements and carries out creative activities in relation to trade marks.
• Two invoices from 2009, in French, issued to various entities in France in relation to soundtrack production (EUR 1 076.40) and a publicity campaign (EUR 1 901.64).
• Two invoices from 2010, in French, issued to various entities in France and London for the amount of around EUR 5 500 in relation to the creation of two jingles and a publicity campaign.
• Two invoices from 2011, in French, issued to various entities in France in relation to musical search (EUR 1 495) and a publicity campaign (EUR 1 196).
• Two invoices from 2012, in French, issued to various entities in France in relation to the production of a CD of music (EUR 4 662.10) and a publicity campaign (EUR 4 543.60).
• Two invoices from 2013, in French, issued to various entities in France for the amount of around EUR 11 000 in relation to a publicity campaign and voice casting for advertisements.
• Two invoices from 2014, in French, issued to various entities in France in relation to a publicity campaign (EUR 9 638.47) and the recording of an audiobook (EUR 6 859.20).
• Seven invoices from 2015, in French, issued to various entities in France, namely an invoice dated 28/02/2015 in relation to a publicity campaign (EUR 552.74), an invoice dated 31/05/2015 in relation to a voice recording (EUR 3 020.40), an invoice dated 31/05/2015 in relation to radio technical expenses (EUR 26 400), an invoice dated 15/09/2015 in relation to radio spot recording (EUR 2 986.80), an invoice dated 15/10/2015 in relation to a publicity campaign (EUR 1 912.08), an invoice dated 31/12/2015 in relation to sound effects and music editing (EUR 7 841.90) and an invoice dated 31/12/2015 in relation to what was referred to as ‘all parts’ (EUR 1 954.50).
• Printouts from the website www.novaplanet.com dated 21/03/2016 of the article ‘Musical press review of Linda’, in French, by Linda Lorin. The article is dated 21/03/2016, that is, outside the relevant period of time.
• Printouts from the website www.originalmusicshirt.com dated 21/03/2016, in French, of an offer for ‘Nova headphones’. The date on which the products were offered is not specified.
• Tables containing information about the export sales of CDs of music, in the period 2011-2016, to the United Kingdom, Germany, Spain and Italy.
• Printouts from the website www.novaplanet.com dated 21/03/2016, in French, about the seventh edition of the photographic contest ‘Hostel photo, author photo (PHPA)’. The date of the contest is not specified.
• Printouts from the website www.novaplanet.com dated 21/03/2016, in French, about the photographic exhibition organised with Polka magazine. The article is dated 17/03/2016.
• Printouts from the website www.novaplanet.com dated 21/03/2016, in French, about the possibilities of listening to ‘Radio Nova’ online, with the application ‘novaplanet’ available on ‘iPhone’ and ‘iPad’, on the application ‘tunein’ and on smartphones with ‘Android’.
• Printouts from the website www.novaplanet.com dated 21/03/2016, in French, of the list of podcasts offered by ‘novaplanet’/‘Radio nova’.
• Printout from the website www.novaplanet.com dated 21/03/2016 of a video recording of a performance of Angelique Ionatos and various other videos. The videos are dated from 16/10/2014 to 05/11/2015.

The indications and evidence required to provide proof of use must concern the place, time, extent and nature of use of the earlier trade marks for the registered goods and services.

In the present case, the evidence shows that the place of use is France. This can be inferred from the addresses of the customers on the invoices and from the language of the invoices, leaflets and websites. Therefore, the evidence relates to the relevant territory.

Eight of the invoices referring to the relevant goods and services are dated within the relevant period. The factor of the time of the use is therefore satisfied.

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 invoices reflect the provision of radio advertising services. The invoiced amounts are not high but were issued regularly throughout the relevant period. Token use can safely be excluded.

Therefore, the evidence submitted provides the Opposition Division with sufficient information concerning the extent of the use.

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 shall 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.

In the present case, the evidence of use shows use of the sign in the forms  and , which are slightly different from the registered form ‘NOVA’.

However, the term ‘regie’ is a specialised advertising term in French meaning ‘an entity responsible for marketing of advertising space’. The expression ‘spot’ indicates an advertising spot in French. Therefore, these alterations do not constitute an unacceptable variation of use, since the differing elements are not distinctive in respect of radio advertising services in the relevant territory and do not alter the distinctive character of the earlier trade mark in the form in which it was registered.

In view of the above, 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.

The applicant argues that the sign on the invoices was used as a company name only, not as a trade mark. However, the use of a sign as a company name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T-209/09, Alder Capital, EU:T:2011:169, § 55-56). In the present case, the signs  and  identify the commercial origin of the services rendered and therefore fulfil this condition. This argument of the applicant must therefore be set aside.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

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).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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

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 shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

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

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

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

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

In the present case, the evidence proves use only for provision of radio advertising campaigns, realization of jingles and radio spots and voice casting for advertising. These services can be considered to form an objective subcategory of advertising services, namely radio advertising services. Therefore, the Opposition Division considers that the evidence shows genuine use of earlier trade mark No 3 029 684 ‘NOVA’ only for radio advertising services.

The printouts from the website www.novaplanet.com dated 21/03/2016 of the article ‘Musical press review of Linda’ by Linda Lorin, in French, dated 21/03/2016, provided in relation to press and information services in Class 38, are dated outside the relevant period of time. Moreover, the mere presence of a trade mark on a website is, in itself, not sufficient to prove genuine use, unless the website also shows the place, time and extent of use or unless this information is otherwise provided. No complementary information was submitted.

The same applies to the printouts from the website offering headphones in relation to apparatus for recording, transmitting and reproducing sound, images and data in Class 9. There is no information about when these products were actually offered to the public and no information about the extent of its use.

The list of sales of CDs of music, in the period 2011-2016, to the United Kingdom, Germany, Spain and Italy is provided as a table on blank pages, without any indication as to its origin. The information included is not corroborated by any objective documents, such as accounting documents. Therefore, this document has very little probative value.

Moreover, media for recording, transmitting and reproducing sound, images and data in Class 9, without the specification about the recorded content, refers only to all kinds of blank data storage media.

The difference between blank and recorded media is crucial. This distinction is also in line with the reality of the marketplace, where blank recording media and media that contain recorded data are very distinct products. For example, the difference between the market for blank recordable CDs and that for CDs pre-recorded with music is vast. In the latter, the subject matter recorded on the CD determines the fundamental characteristic of the product. The consumer is, in essence, purchasing the recorded data. Consumers looking for a CD of their favourite band would not buy a blank CD instead or another music CD. The recorded data characterise the product, and the maker of the medium (CD) is irrelevant. (^[1]) Therefore, the information about the sales of CDs of music cannot be considered proof of use of media for recording, transmitting and reproducing sound, images and data in Class 9.

The printouts from the website provided in relation to photographs in Class 16 do not specify the date of the events (photographic contest) or are dated outside the relevant period (photographic exhibition). Moreover, they refer to services of exhibitions and contest for cultural purposes, rather than to goods such as photographs. Furthermore, the mere presence of a trade mark on a website is, in itself, not sufficient to prove genuine use, unless the website also shows the place, time and extent of use or unless this information is otherwise provided. No complementary information was submitted.

The same applies to the printouts from the website provided in relation to software for radio or audiovisual presentations in Class 9. No complementary information was provided regarding the time, place, extent and nature of use.

Part of the evidence provided by the opponent, namely some of the invoices, reflect the use of the trade mark ‘NOVA’ in relation to other services, such as the recording of audiobooks, voice and music recording, musical search, radio technical expenses, sound effects and music editing, which form part of recording studio services. However, the opposition is not based on these services and the evidence of such use is irrelevant to the present case.

In view of the above, the evidence submitted shows genuine use of French trade mark No 3 029 684 ‘NOVA’ solely for radio advertising services in Class 35.

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

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

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

1. The goods and services

The services on which the opposition is based, and for which use has been proven, are the following:

Class 35:        Radio advertising services.

The contested goods and services are the following:

Class 9         Data processing apparatus; Computer programmes [programs], recorded; Computer operating programs, recorded; Computer software, recorded; Monitors [computer programs]; Computer programs [downloadable software]; Computer peripheral devices; Couplers [data processing equipment]; Microprocessors; Integrated circuit cards [smart cards]; Computer memory devices; Floppy disks; Interfaces for computers; Monitors [computer hardware]; Light-emitting diodes [LED]; Transponders; Computer networking and data communications equipment; Photometers; Coaxial cables; Integrated circuits.

Class 35        Outdoor advertising; Publicity; Layout services for advertising purposes; Design of advertising materials; Television advertising; Writing of publicity texts; Production of advertising films; Distribution of samples; Direct mail advertising; Business management consultancy; Business appraisals; Business inquiries; Business investigations; Marketing research; Business consultancy (Professional -); Business information; Economic forecasting; Marketing studies; Business research; Production of television commercials.

Class 42        Technical research; Project studies (Technical -); Research and development for others; Computer programming; Computer software design; Computer software (Updating of -); Consultancy in the design and development of computer hardware; Maintenance of computer software; Computer system design; Data conversion of computer programs and data [not physical conversion]; Monitoring of computer systems by remote access; information technology [IT] consultancy; off-site data backup; electronic data storage; providing information on computer technology and programming via a web site; cloud computing; Providing search engines for the internet; Conversion of data or documents from physical to electronic media; Recovery of computer data; Computer virus protection services.

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 goods in Class 9 comprise data processing apparatus, computer software and hardware and its component parts, as well as computer memory devices, light-emitting diodes [LED]; transponders; computer networking and data communications equipment; photometers; coaxial cables.

The opposition is based on radio advertising services. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.

Therefore, the contested goods are dissimilar to the opponent’s radio advertising services, as they have different natures (product versus service), purposes and methods of use. They are neither in competition nor complementary. Moreover, they have different distribution channels and producers.

Contested services in Class 35

The contested publicity includes, as a broader category, the opponent’s radio advertising services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested writing of publicity texts overlap with the opponent’s radio advertising services. Therefore, they are identical.

The contested outdoor advertising, television advertising, production of advertising films; distribution of samples; direct mail advertising, production of television commercials are various forms of advertising. They are considered highly similar to the opponent’s radio advertising services, as they have the same purpose and relevant public. They may have the same commercial origin. Moreover, those services may be in competition.

The contested layout services for advertising purposes; design of advertising materials are services rendered as a part of visual forms of advertising. They are similar to a low degree to the opponent’s radio advertising services, as they have the same purpose. Moreover, they can coincide in their commercial origin and end user.

The contested business management consultancy; business inquiries; business investigations; marketing research; business consultancy (professional -); business information; marketing studies; business research are services usually offered by consulting companies and consist principally in counselling businesses in their managerial activities. There is no clear-cut difference between these services and the opponent’s radio advertising services. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, the contested business management consultancy; business inquiries; business investigations; marketing research; business consultancy (professional -); business information; marketing studies; business research are similar to a low degree to the opponent’s radio advertising services.

The contested business appraisals; economic forecasting are services which are focused on delivering necessary business information to help a company acquire, develop and expand market share. They differ in their nature, method of use and origin from the opponent’s radio advertising services. They are neither in competition nor clearly complementary. Therefore, they are dissimilar.

Contested services in Class 42

The contested services in Class 42 comprise research and development services, technical research and project studies, and various information technology services, including consultations and maintenance. They are dissimilar to the opponent’s radio advertising services, as they have different natures, purposes and methods of use. They are neither in competition nor complementary. They have different distribution channels and commercial origins.

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.

The services at issue are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention will be high, as the services at issue are rather expensive and not frequently purchased. Moreover, they concern important aspects of the functioning of a business.

3. The signs

NOVA
Earlier trade mark	Contested sign

The relevant territory is France.

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 trade mark is a word mark composed of one element, ‘NOVA’. Due to its similarity to the French words ‘novateur’ (innovator) and ‘innovation’ (innovation) and their derivatives, this element will be associated with newness and novelty. The word ‘NOVA’ also refers to a type of star, but this is a scientific term which is unlikely to come to the mind of the public in relation to the services in question. Moreover, this meaning is known and recognised in the expression ‘SUPER NOVA’, not as the word ‘NOVA’ independently.

The element ‘NOVA’ of the earlier mark therefore has a slightly lower than average degree of distinctiveness, since in relation to the relevant services (advertising services), it may trigger a remote association with their innovative character.

The contested sign is a figurative trade mark composed of a verbal element, ‘NOVASTAR’, in slightly stylised upper case characters. An incomplete oval outline surrounds the first letter ‘A’ and divides the contested sign into two words, ‘NOVA’ and ‘STAR’. Therefore, these two separate words can easily be distinguished by the relevant public.

The verbal element ‘NOVA’, as explained above, will be associated with newness and novelty by the French public and, therefore, has a slightly lower than average degree of distinctiveness.

The verbal element ‘STAR’ is a word which forms part of basic English vocabulary and whose meaning is widely known throughout the European Union (21/01/2010, T-309/08, G Stor, EU:T:2010:22, § 32). In French, it means a celestial object or a famous person and it is also used as a reference to high quality, which is often indicated by a number of stars. As a combination of its last two meanings, it is used in commerce in the expression ‘le produit star’ (the star product), which is something purchased very often and of superior quality. The degree of distinctiveness of the element ‘STAR’ is therefore low, since, in relation to the relevant services, it will be perceived as an indication of their superior ‘star’ quality.

The figurative element of the contested sign, namely the incomplete oval outline surrounding the first letter ‘A’, is merely decorative and consequently is of limited distinctiveness. Moreover, it is relatively small and does not attract the attention of the public. Therefore, the verbal elements ‘NOVA’ and ‘STAR’ are the co-dominant elements in the contested sign.

Visually, the signs coincide in the fact that the entire earlier mark, ‘NOVA’, is included in the contested sign and as its first part. However, they differ in the second verbal element of the contested sign, namely ‘STAR’, and its figurative element, which have no counterparts in the earlier sign. These elements have, nevertheless, a lower degree of distinctive character than the coinciding element of the signs.

Moreover, 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.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‛NO-VA’, present identically in both signs as the only element of the earlier mark and the most distinctive element of the contested sign. The pronunciation differs in the sound of the letters ‛STAR’ of the contested sign, which have no counterparts in the earlier mark. This element is, however, of limited distinctiveness.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be allusive of the concept of newness and novelty. It is, however, only an allusion, not a direct meaning of the verbal element ‘NOVA’. The contested sign also conveys the concept of a ‘STAR’, which is not present in the earlier mark. This concept does not significantly differentiate the signs in question, due to its laudatory character as explained above.

Therefore the signs are conceptually similar to a low degree.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In view of what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as slightly below average for all the services in question.

---

5. Global assessment, other arguments and conclusion

The services are partly identical, partly similar (to various degrees) and partly dissimilar. The degree of attention of the relevant public is high. The signs are visually and aurally highly similar and conceptually similar to a low degree.

The earlier mark is formed of a single verbal element, ‘NOVA’, which is entirely included in the contested sign. Although the distinctiveness of the coinciding element is slightly lower than average, the differences between the signs are attributable to other elements in the contested sign that have an even lower degree of distinctiveness (‘STAR’ and the incomplete oval outline) and are visually relatively small (the incomplete oval outline); therefore, they have a very limited impact for the reasons explained above in section c) of this decision.

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).

Moreover, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public, despite its high degree of attention and even for the services that are similar to a low degree. Therefore, the opposition is partly well founded on the basis of the opponent’s French trade mark registration No 3 029 684 ‘NOVA’.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar (to various degrees) 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.

The other earlier rights invoked by the opponent are French trade mark registration No 3 045 213  and international trade mark registration No 756 022  designating Germany, Spain, Italy and the United Kingdom. As established in the opponent’s letter of 24/09/2015, they cover the same scope of goods and services. They are also under the proof of use requirement. The evidence submitted by the opponent and listed above in its entirety in relation to French trade mark No 3 029 684 ‘NOVA’ serves also as proof of use of these earlier rights. Since the scope of goods and services together with the evidence of proof of use of these earlier rights are the same as those of French trade mark registration No 3 029 684 ‘NOVA’, use could not be proven for goods and services other than radio advertising services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected, on account on their dissimilarity; no likelihood of confusion exists with respect to those goods and services.

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 shall 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

Catherine MEDINA

Anna ZIÓŁKOWSKA

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.

---