OPPOSITION No B 2 229 113

Penguin Books Limited, 80 Strand, London WC2R 0RL, United Kingdom (opponent), represented by Marks & Clerk LLP, Fletcher House, Heatley Road, The Oxford Science Park, Oxford OX4 4GE, United Kingdom (professional representative)

a g a i n s t

Ooki SAS, 11 av. Albert Einstein, 69100 Villeurbanne, France (applicant), represented by Alain Jarniou, Ooki SAS, 11 av. Albert Einstein, 69100 Villeurbanne, France (employee representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 229 113 is partially upheld, namely for the following contested goods and services:

Class 9:        Scientific, nautical, photographic, cinematographic, optical, weighing, measuring, signalling, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting or accumulating electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; computer game software; downloadable video game programs; computer programs [downloadable software]; electronic datarooms; video game programmes.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; game services provided on-line from a computer network; providing interactive multi-player computer games via the internet and electronic communication networks; providing on-line computer games; publication of electronic books and journals on-line; electronic game services and competitions provided by means of the internet; amusement parks; publication of books; animation production services; film production.

2.        European Union trade mark application No 11 768 553 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 768 553, namely against all the goods and services in Classes 9 and 41. The opposition is based on international trade mark registration No 993 811 designating the European Union, European Union trade mark registration No 128 769 and United Kingdom trade mark registration No 2 497 827, all for the word mark ‘PENGUIN’. 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.

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 international trade mark registration No 993 811 designating the European Union.

1. The goods and services

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

Class 9: Video tapes; audio tapes; compact discs; video disks; laser disks; DVDs; CD-ROMs; electronic publications; digital media and recordings; pre-recorded digital media and recordings; audio books; electronic books; cinematographic films; downloadable electronic publications; downloadable digital media and recordings; downloadable digital media and recordings containing sound, images, text, information, signals or software; webcasts; podcasts; video podcasts; podscrolls; electronically recorded data; electronic files; databases; teaching apparatus and instruments; audio and visual teaching apparatus; computer games; educational computer games; downloadable computer games; computer software; computer programs; data-processing equipment; animated cartoons; compact disc players; tape recorders and tape cassette players; record players; MPEG players; mp4 players; mp3 players; apparatus and instruments all for the recording, reproduction and transmission of sound, images, video and data; computer software development tools for social networking, building social networking applications and for allowing data retrieval, upload, access and management; parts and fittings for all the aforesaid goods.

Class 35: The bringing together for the benefit of others of books, CDs, DVDs, audio books, tape cassettes, audio cassettes, audio CDs, eBooks, electronic publications, downloadable electronic publications, podcasts, blogs, book and gift vouchers, and computer programs, or of representations or descriptions of any of those goods, so as to enable customers conveniently to view, to select and to purchase those goods; retail services of a bookseller; retail services in the fields of books, CDs, DVDs, audio books, tape cassettes, audio cassettes, audio CDs, electronic publications, downloadable electronic publications, eBooks, podcasts, blogs, book and gift vouchers, and computer programs, all provided by way of stores, shops and retail outlets, by mail order, by telephone sales, by online catalogue, by way of a general interest web site or by way of a specialist web site; making available for purchase books, CDs, DVDs, audio books, tape cassettes, audio cassettes, audio CDs, eBooks, electronic publications, downloadable electronic publications, podcasts, blogs, book and gift vouchers, and computer programs; advertising; business management; business administration; office functions; computerised data storage services; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information.

Class 41: Publishing services; publication of magazines, books and printed matter; electronic publishing services; providing on-line electronic publications and/or digital music, books and journals including via the Internet or from the World Wide Web; providing on-line databases and directories; provision of non-downloadable electronic publications, digital media and recordings; provision of non-downloadable media and recordings containing sound, images, text, information, signals or software; book club services; advice and assistance in the selection of books; supply services for books; supply services for books to educational establishments, provision of information to customers on books; library services; education; providing training; entertainment; sporting and cultural activities; electronic games services provided by means of the Internet; provision of non-downloadable computer games and educational computer games; computer assisted education and training services; information, advisory and consultancy services relating to all the aforesaid services.

The contested goods and services are 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; computer game software; downloadable video game programs; computer programs [downloadable software]; electronic datarooms; video game programmes.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; game services provided on-line from a computer network; providing interactive multi-player computer games via the internet and electronic communication networks; providing on-line computer games; publication of electronic books and journals on-line; electronic game services and competitions provided by means of the internet; amusement parks; publication of books; animation production services; film production.

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

Teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; compact discs, DVDs; data processing equipment; computer software are contained in both lists of goods. Therefore, they are identical.

The contested scientific apparatus and instruments overlap with the opponent’s teaching apparatus and instruments, insofar as both categories cover apparatus and instruments that are used both in science and for teaching purposes, for example microscopes. Therefore, these goods are considered identical.

The contested weighing apparatus and instruments overlap with the opponent’s teaching apparatus and instruments, insofar as both categories include laboratory weighing scales. Consequently, these goods are identical.

The contested measuring apparatus and instruments overlap with the opponent’s teaching apparatus and instruments, as both categories include, for example, laboratory pipettes. Therefore, these goods are considered identical.

The contested nautical apparatus and instruments overlap with the opponent’s apparatus and instruments all for the transmission of sound, as both categories include nautical apparatus and instruments for sound transmission (e.g. sonar sounders, sound transmission over ocean). Therefore, these goods are identical.

The contested photographic; cinematographic; optical apparatus and instruments either are included in the broad categories of or overlap with the opponent’s apparatus and instruments all for the recording, reproduction and transmission of sound, images, video and data, as nowadays multi-media electronic devices include a variety of functionalities, such as video cameras, mobile phones, mobile computing platforms, etc. Therefore, they are identical.

The contested signalling apparatus and instruments overlap with the opponent’s apparatus and instruments all for the reproduction of sound, as both categories include, for example, acoustic alarms (sirens). Therefore, these goods are identical.

The contested magnetic data carriers include, as a broader category, or overlap with the opponent’s audio tapes, which are a magnetic tape recording format for audio recording. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested recording discs include, as a broader category, the opponent’s compact discs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested other digital recording media are included in the broad category of the opponent’s digital media. Therefore, they are identical.

The contested cash registers are mechanical or electronic devices for registering and calculating transactions at a point of sale. The contested calculating machines are mechanical devices used to perform the basic operations of arithmetic automatically. Computers are devices that can be instructed to carry out an arbitrary set of arithmetic or logical operations automatically. All of these contested goods are included in the broad category of the opponent’s data-processing equipment. Therefore, they are identical.

The contested computer game software, albeit worded slightly differently, is identical to the opponent’s computer games.

The contested downloadable video game programs; video game programmes are electronic games played on different platforms, such as personal computers and video game consoles. Therefore, these goods include, as a broader category, or overlap with the opponent’s downloadable computer games. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested computer programs [downloadable software] are included in the broad category of the opponent’s computer programs. Therefore, they are identical.

The contested life-saving apparatus and instruments and the opponent’s apparatus and instruments all for the reproduction of sound have certain points in common. These goods may have the same purpose, of ensuring safety. They can be sold through the same channels and their producers are often the same. Therefore, these goods are considered similar.

The contested apparatus and instruments for conducting or accumulating electricity include goods such as cables for conducting electricity and batteries. These goods and the opponent’s apparatus and instruments all for the recording, reproduction and transmission of sound, images, video and data have certain points in common. For example, the quality of the cables is one of the parameters that determines the quality of the recording of sound and/or images, while batteries (which are instruments for accumulating electricity) are indispensable for the use of multi-media electronic devices, such as video cameras. The goods under comparison may coincide in their consumers and distribution channels. Furthermore, they are complementary. Therefore, they are similar.

The contested electronic datarooms are virtual spaces used for housing data, usually of a secure or privileged nature. A virtual data room (VDR) is essentially a website with limited controlled access. These goods and the opponent’s computer software have certain points in common. The virtual spaces are linked to almost everything on computers and a local piece of software can utilise a form of cloud computing for storage. Furthermore, software is used for creating data rooms. These goods are complementary and can coincide in their providers, distribution channels and relevant public. Therefore, they are similar.

The opponent’s apparatus and instruments all for the reproduction of sound is such a broad category that it includes various sound reproduction devices, such as fire alarms (devices used to detect and warn people through visual and audio appliances). Therefore, the contested fire-extinguishing apparatus and the opponent’s apparatus and instruments all for the reproduction of sound have some points in common, as fire extinguishers and fire alarms (which are sound reproduction devices) may be sold by the same specialised companies through the same channels of trade. Therefore, these goods are similar to a low degree.

The remaining contested goods in Class 9 are not sufficiently related to the opponent’s goods and services in Classes 9, 35 and 41. The contested surveying and checking (supervision) apparatus and instruments are devices with rather specific applications. The contested apparatus and instruments for switching, transforming, regulating or controlling electricity include devices such as circuits, conductors, switches, transistors, wires, etc. The contested mechanisms for coin-operated apparatus consist of mechanisms for machines that perform the function of recognising the coin introduced into the machine at issue and releasing the corresponding item or material, or activating the function appropriate to the money inserted into the machine. The natures and intended purposes of the abovementioned contested goods are different from those of the opponent’s goods in Class 9 and services in Classes 35 and 41. Furthermore, they are neither in competition with each other nor complementary. In addition, the goods and services under comparison do not have the same producers and distribution channels. Therefore, the contested surveying and checking (supervision) apparatus and instruments; apparatus and instruments for switching, transforming, regulating or controlling electricity; mechanisms for coin-operated apparatus and the opponent’s goods and services in Classes 9, 35 and 41 are dissimilar.

Furthermore, it should be noted that the opponent has filed a declaration under Article 28(8) EUTMR in respect of its earlier international trade mark registration No 993 811 designating the European Union, which is registered for the entire class headings of Classes 35 and 41.

Article 28(8) of the Amending Regulation allows for a transitional period of six months during which proprietors of EU trade marks applied for before 22/06/2012, and registered in respect of the entire heading of a Nice class, may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading. This provision also applies to international registrations designating the European Union.

The opponent has declared that its intention on the date of filing of the abovementioned international trade mark registration had been to seek protection also in respect of writing of publicity texts in Class 35 and film production; movie studios; production of radio and television programmes; recording studio services; rental of motion pictures; rental of audio equipment; production of shows in Class 41. The opponent’s declaration has not yet been processed by the Office. Nevertheless, the Opposition Division notes that, even if these services are considered to also be covered by the earlier mark, they fall within the natural and usual meaning of the general indications of the class headings covered by the earlier mark and are also dissimilar to the contested surveying and checking (supervision) apparatus and instruments; apparatus and instruments for switching, transforming, regulating or controlling electricity; mechanisms for coin-operated apparatus for the same reasons as given above.

Contested services in Class 41

Education; providing of training; entertainment; sporting and cultural activities are contained in both lists of goods and services. Therefore, they are identical.

The contested game services provided on-line from a computer network; providing interactive multi-player computer games via the internet and electronic communication networks; providing on-line computer games; electronic game services and competitions provided by means of the internet; amusement parks are included in the broad category of, or overlap with, the opponent’s entertainment. Therefore, they are identical.

The contested publication of electronic books and journals on-line; publication of books are included in the broad category of the opponent’s publishing services. Therefore, they are identical.

The contested animation production services; film production and the opponent’s entertainment have the same general purpose and can coincide in their providers and relevant public. Therefore, they are similar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar (to different degrees) are directed at both the public at large and at business customers with specific professional knowledge or expertise in, inter alia, the IT field. The degree of attention may vary from average to higher than average depending on the price and the specific purposes of the goods and services.

3. The signs

PENGUIN	PENGUINS VS PARROTS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, for which the verbal elements of the marks are meaningful.

The earlier mark is the word mark ‘PENGUIN’ and the contested sign is the word mark ‘PENGUINS VS PARROTS’.

The word ‘PENGUIN’, constituting the earlier mark, will be understood by the relevant English-speaking part of the public as referring to ‘a large flightless seabird of the southern hemisphere, with black upper parts and white underparts and wings developed into flippers for swimming under water’.

The first word, ‘PENGUINS’, of the contested sign will be understood as the plural form of the word ‘PENGUIN’, defined above.

The word ‘PARROTS’ of the contested sign will be understood by the English-speaking part of the relevant public as the plural form of the word ‘PARROT’, referring to ‘a bird, often vividly coloured, with a short downcurved hooked bill, grasping feet, and a raucous voice, found especially in the tropics and feeding on fruits and seeds; many are popular as cage birds, and some are able to mimic the human voice’.

The element ‘VS’, connecting the two nouns in the contested sign, will be perceived as a common abbreviation of the word ‘VERSUS’, meaning ‘against (especially in sports and legal use); as opposed to; in contrast to’ (definitions extracted from Oxford English Dictionaries online on 17/01/2017 at https://en.oxforddictionaries.com/).

The expression ‘PENGUINS VS PARROTS’ will, therefore, be perceived as a fight, conflict or juxtaposition between penguins on the one hand and parrots on the other.

The meaningful elements of the marks do not describe or allude to any of the essential characteristics of the goods and services and are, therefore, of average distinctiveness.

Neither of the marks has any elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘PENGUIN’, which forms the earlier mark in its entirety and is included in the contested sign’s first word, ‘PENGUINS’. However, they differ in the final letter, ‘S’, of the contested sign’s first word and in the additional verbal elements, ‘VS’ and ‘PARROTS’, of that sign.

The letters that the signs have in common, ‘PENGUIN’, occur at the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the beginning of the sign (the initial part) the one that first catches the attention of the reader.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘PENGUIN’, constituting the entire earlier mark and present in the first word, ‘PENGUINS’, of the contested sign. The pronunciation differs in the sound of the additional letter ‘S’ at the end of the contested sign’s first word and in the sound of the second and third words of that sign, ‘VS’ (which will be read and pronounced as ‘VERSUS’) and ‘PARROTS’, which have no counterparts in the earlier mark. Therefore, the signs are aurally similar to an average degree.

Conceptually, as seen above, all elements of the marks will be perceived with their meanings defined above by the part of the public taken into consideration.

The signs are conceptually similar for the English-speaking part of the relevant public to the extent that they both refer to the concept of a penguin. The marks differ conceptually to the extent that the contested mark conveys additional concepts, namely those conveyed by the rest of its verbal elements. Consequently, the noun ‘PENGUINS’ will be perceived as being set against the noun ‘PARROTS’ in the contested sign.

Therefore, the signs are conceptually similar to an average 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be 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).

The goods and services under comparison are partly identical, partly similar (to different degrees) and partly dissimilar.

The signs are similar on account of the highly similar words ‘PENGUIN’, which constitutes the earlier mark in its entirety, and ‘PENGUINS’, which is the first word of the contested sign. The marks differ in the additional two words of the contested sign, ‘VS’ and ‘PARROTS’. These additional verbal elements of the contested sign will not go unnoticed by the relevant consumers. However, the element ‘PENGUINS’ is distinguishable in the contested sign as an independent and distinctive element at the beginning of that sign, which, as seen above, is the part that first catches the consumer’s attention. Moreover, as explained above, the highly similar elements ‘PENGUIN’ (in the earlier mark) and ‘PENGUINS’ (in the contested sign) will link the marks on a conceptual level, thus further contributing to the overall similarity between the marks.

All the aforementioned findings lead to the conclusion that the coincidences outweigh the differences in the overall impressions produced by the marks, even for goods that are similar to only a low degree.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).

In the present case, consumers may legitimately believe that the contested trade mark, ‘PENGUINS VS PARROTS’, is a new version or a brand variation of the earlier mark, ‘PENGUIN’, originating from the same undertaking as the earlier mark or from an economically linked undertaking. In other words, consumers may confuse the origins of the conflicting goods and services.

Therefore, taking into account 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, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, for the English-speaking part of the public, even considering that the degree of attention with regard to some of the relevant goods and services may be higher than average. Even consumers with a higher 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). As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 993 811 designating the European Union.

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

The rest of the contested goods 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 cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier rights:

• European Union trade mark registration No 128 769 for the word mark ‘PENGUIN’ for the following goods and services:

Class 9: Sound, video and data recordings; computer programs; texts in encoded or film/fiche form; tapes, discs and records, all bearing or for recordal of sound, video and data, storage and memory devices, RAMs and ROMs; cassettes and cartridges for all the aforesaid goods.

Class 16: Paper, paper articles; cardboard, cardboard articles; books, printed matter, publications; stationery; photographs; pictures; posters; artists’ materials; instructional and teaching materials; decalcomanias, greeting cards; book marks; coasters; playing cards; book ends, paper weights, clothing patterns; calendars and diaries.

Class 41: Publication services.

• United Kingdom trade mark registration No 2 497 827 for the word mark ‘PENGUIN’ for the following goods and services:

Class 9: Video tapes, audio tapes, compact discs, video disks, laser disks, DVDs, CD-ROMs, electronic publications, digital media and recordings, pre-recorded digital media and recordings, audio books, electronic books, cinematographic films, downloadable electronic publications, downloadable digital media and recordings, downloadable digital media and recordings containing sound, images, text, information, signals or software, webcasts, podcasts, video podcasts, pod scrolls, electronically recorded data, electronic files, databases, teaching apparatus and instruments, audio and visual teaching apparatus, computer games, educational computer games, downloadable computer games, data-processing equipment, compact disc players, tape recorders and tape cassette players, record players, MPEG players, MP4 players, MP3 players, apparatus and instruments all for the recording, reproduction and transmission of sound, images, video and data, computer software development tools for social networking, building, social networking applications and for allowing data retrieval, upload, access and management, parts and fittings for all the aforesaid goods.

Class 16: Paper articles, cardboard articles, printed matter, books, annuals, publications, printed publications, comic books, song books, albums, manuals, maps, magazines, newsletters, newspapers, periodicals, journals, catalogues, pamphlets, leaflets, posters, all relating to books, book products, publishing, or publishing services, labels for books, office requisites, drawing and painting materials, apparatus and instruments, writing instruments, pens, pencils, instructional and teaching materials in the form of games, book binding materials, book covers, book marks, printing sets, drawings, paintings, photographs, prints, pictures, all relating to books and/or bearing representations of book titles, calendars, paintbrushes, paint kits tags, gift wrap, gift wrap cards, gift wrap tissue, gift boxes, wrapping paper, note pads, paper napkins and other decorative paper items, paper party goods an d paper party decorations, paper table cloths and table covers, paper mats, paper party streamers, decorative transfers, rulers, erasers, greetings cards, promotional stickers for book covers, paper signs, banners, charts relating to books and publishing, packaging materials, paper, cardboard, parts and fittings for all the aforesaid goods.

Class 35: The bringing together for the benefit of others of books, CDs, DVDs, audio books, tape cassettes, audio cassettes, audio CDs, e-books, electronic publications, downloadable electronic publications, podcasts, blogs, book and gift vouchers, and computer programs, or of representations or descriptions of any of those goods, so as to enable customers conveniently to view, to select and to purchase those goods; retail services connected with the sale of books, CDs, DVDs, audio books, tape cassettes, audio cassettes, audio CDs, electronic publications, downloadable electronic publications, ebooks, podcasts, blogs, book and gift vouchers, and computer programs, all provided by way of stores, shops and retail outlets, by mail order, by telephone sales, by online catalogue, by way of a general interest web site or by way of a specialist web site; advertising; business management; business administration; office functions; electronic data storage; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information.

Class 41: Publishing and electronic publishing of magazines, books, electronic books and printed matter; providing on-line electronic publications of books and journals including via the Internet or from the World Wide Web; providing on-line databases and directories in the fields of printed matter, books and electronic publications (downloadable and non-downloadable); provision of non-downloadable electronic publications, digital media and recordings of magazines, books, journals and printed matter relating to books and publishing; provision of non-downloadable media and recordings containing sound, images, text, information, signals or software; provision of social and fan club services relating to books; consultation and information services relating to books and the publication of books; lending of books; provision of information to customers on books; library services; education and providing training relating to books and publishing; sporting and cultural activities; electronic games services provided by means of the Internet; provision of non-downloadable computer games and educational computer games; computer assisted education and training services relating to books and publishing; information, advisory and consultancy services relating to all the aforesaid services.

The remaining contested goods in Class 9 have already been found to be dissimilar to the goods and services in Classes 9, 35 and 41 of earlier international trade mark registration No 993 811 designating the European Union.

The reasoning that led to the finding that these remaining contested goods are dissimilar to the goods and services covered by the earlier mark compared above is applicable mutatis mutandis when comparing these same remaining contested goods with the goods and services in Classes 9, 35 and 41 listed above of earlier European Union trade mark No 128 769 and United Kingdom trade mark No 2 497 827.

The goods in Class 16 of these earlier marks are also clearly different from the remaining contested goods. They do not have the same commercial origin and they are sold in different outlets. These goods have different natures, serve different purposes and have different methods of use from the opponent’s goods. They are not complementary or in competition. Therefore, they are dissimilar.

Consequently, the outcome cannot be different in relation to these earlier rights with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Consequently, the examination continues in relation to the remaining grounds of the opposition in relation to the dissimilar goods.

REPUTATION – ARTICLE 8(5) EUTMR

According to the opponent, earlier international trade mark registration No 993 811 designating the European Union, European Union trade mark registration No 128 769 and United Kingdom trade mark registration No 2 497 827 are reputed in the European Union and the United Kingdom for some of the goods and services.

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 shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which took into consideration the English-speaking part of the relevant public, as this is the most favourable scenario for a finding of similarity between the signs at each of the three levels and overall, and these findings are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade marks

According to the opponent, earlier international trade mark registration No 993 811 designating the European Union has a reputation in the European Union, and earlier European Union trade mark registration No 128 769 and United Kingdom trade mark registration No 2 497 827 have a reputation in the United Kingdom.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 25/04/2013. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom and the European Union prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely the following:

International trade mark registration No 993 811 designating the European Union

Class 41: Publishing services; publication of magazines, books and printed matter; electronic publishing services.

European Union trade mark registration No 128 769 and United Kingdom trade mark registration No 2 497 827

Class 41: Publishing and electronic publishing of magazines, books, electronic books and printed matter.

For reasons of procedural economy, the Opposition Division will not undertake a full examination of the evidence submitted by the opponent. The examination of the opposition will proceed on the assumption that the earlier marks have a reputation in the relevant territories for all the services for which reputation is claimed, namely publishing services; publication of magazines, books and printed matter; electronic publishing services in Class 41 for earlier international trade mark No 993 811 designating the European Union and publishing and electronic publishing of magazines, books, electronic books and printed matter in Class 41 for earlier European Union trade mark No 128 769 and United Kingdom trade mark No 2 497 827.

3. The ‘link’ between the signs

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

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

According to the Court of Justice of the European Union,

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

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

The Court of Justice has also noted,

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

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

The services of the earlier trade marks for which reputation has been assumed are essentially publishing services in Class 41. The contested goods for which the opposition is not successful under Article 8(1)(b) EUTMR are surveying and checking (supervision) apparatus and instruments; apparatus and instruments for switching, transforming, regulating or controlling electricity; mechanisms for coin-operated apparatus in Class 9.

When analysing whether a link exists, consideration must be given to the fact that the goods and services in question constitute completely distinct market sectors that have no material overlap and, in essence, have nothing whatsoever in common. The goods and services covered by the trade marks in conflict are of different natures and have different purposes. They have completely different distribution channels, target consumers with different needs and are offered by different companies or suppliers. Although the earlier trade marks are assumed to enjoy a reputation for certain services, this does not imply that a link between the signs in completely different areas of the economy, such as the abovementioned sectors, will be triggered. It is unlikely that, when intending to purchase the contested goods in Class 9, the relevant public will link them to trade marks that have a reputation for services in the publishing sector. Therefore, the goods and services at issue have nothing whatsoever in common and this large gap makes it unlikely that the contested mark would remind the relevant consumer of the earlier marks.

Even though the relevant section of the public for the goods and services in conflict may overlap to some extent, the goods and services at issue are so different that the later mark is unlikely to bring the earlier marks to mind among the relevant public.

The Opposition Division also notes that the opponent did not submit any coherent line of argument in relation to the necessary link between the signs in dispute, in particular as regards common aspects between the goods in Class 9 mentioned above and the opponent’s services in Class 41.

Taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

Therefore, given that the relevant public is unlikely to establish a link between the trade marks at issue, it is considered that the use of the contested trade mark will not take advantage of or be detrimental to the distinctive character or repute of the earlier trade marks as required by Article 8(5) EUTMR. Indeed, as one of the necessary requirements is not met, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division 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

Pedro JURADO MONTEJANO

Boyana NAYDENOVA

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.