OPPOSITION No B 2 654 872
Pink TV, Société par actions simplifiée, 20/22, rue de Turenne, 75004 Paris, France (opponent), represented by Promark, 62 avenue des Champs Elysées, 75008 Paris, France (professional representative)
a g a i n s t
PinkNews Media Group Ltd, Wisteria, The Grange Barn, Pikes End, Pinner, HA5 2EX, United Kingdom (applicant).
On 17/03/2017, the Opposition Division takes the following
1. Opposition No B 2 654 872 is upheld for all the contested services.
2. European Union trade mark application No 14 796 049 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the services of European Union trade mark application No 14 796 049. The opposition is based on, inter alia, French trade mark registration No 3 760 776. The opponent invoked Article 8(1)(b) 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 French trade mark registration No 3 760 776.
- The services
The services on which the opposition is based are, inter alia, the following:
Class 41: Providing on line electronic publications, not downloadable, publication of books, television program editing, publication of electronic books and journals on-line.
The contested services are the following:
Class 41: Publishing a newspaper for customers on the Internet.
The applicant argues that the conflicting marks are used for different services due to the different businesses of the parties.
It must be recalled in this regard that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).
Contested services in Class 41
The contested publishing a newspaper for customers on the Internet is identical to the opponent’s publication of journals on-line. Using synonymous wordings, these services designate the same activity, namely the publication of a newspaper/journal online.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the services found to be identical are directed at the public at large whose degree of attention is average.
- The signs
Earlier trade mark
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).
Both signs are word marks, therefore it is irrelevant whether they are written in lower or upper case letters.
A significant part of the public will understand the meaning of the word ‘PINK’ of the earlier mark since it is a basic English word denoting a colour, widely used in business and advertising (26/06/2015, R 1677/2014-5, PINK/Pinktrotters, § 21).
The applicant claims that this element is not distinctive since it indicates that the newspapers are intended for the gay, lesbian, bisexual and transgender community (it filed documents to support its observations).
The Opposition Division does not share this point of view and considers that since this word is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive. Indeed, the pink colour has many symbolic meanings (femininity, gender symbolism, love, etc.), among which the association with homosexuality is marginal. Furthermore, although the meaning of the word ‘PINK’ will be known by a significant part of the public, nevertheless, being a foreign word, it is less commonly used than ordinary French words for colours.
Regarding the contested sign ‘PinkNews’, the Court has held that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). In the present case, it is reasonable to assume that a significant part of the public will dissect the contested sign into the meaningful elements ‘PINK’ and ‘News’. Furthermore, the second part ‘News’ is easily recognizable due to the capital letter ‘N’. The word ‘PINK’ has been defined above and is considered as a distinctive element. The word ‘News’ is used in French to designate a weekly magazine reporting on current events (see definition extracted from dictionary le Grand Robert de la langue française at http://gr.bvdep.com/robert.asp: ‘magazine hebdomadaire illustré qui présente l’actualité dans des dossiers, des reportages, des analyses’). In relation to the services (publishing a newspaper for customers on the Internet), this element is thus non-distinctive. Consequently, the most distinctive element of the contested sign is the word ‘PINK’.
Visually, the earlier mark is wholly included at the beginning of the contested sign which is generally the part that primarily catches the consumer’s attention and therefore will be remembered more clearly than the rest of the sign. The signs differ in the additional element ‘News’ of the contested sign which is non-distinctive in relation to the relevant services. Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in their first syllable /pink/ and differ in the additional syllable /news/ of the contested sign. Taking into account the above considerations about the distinctive elements of the signs, the signs are considered aurally similar to a high degree.
Conceptually, the earlier mark and the distinctive element of the contested sign will be associated with the pink colour. The element ‘News’ of the contested sign refers to a weekly magazine that reports and comments on current events. Given that this element is non-distinctive in relation to the services, it does not create a significant distance between the signs which are thus considered conceptually similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 the present case, as explained above, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
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).
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).
The services are identical and the earlier mark has an average distinctive character.
The signs are visually, aurally and conceptually similar to a high degree on account of the common element ‘PINK’ which constitutes the entirety of the earlier mark and the distinctive element of the contested sign placed at the beginning of the sign where the attention of the public is focussed on.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
In the present case, the relevant consumer is highly likely to perceive the contested mark as a variation of the earlier mark intended for designating a specific range of services (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the public.
The applicant argues that its EUTM has reputation for its high quality online newspaper (it filed various pieces of evidence to substantiate this claim) whereas the opponent’s trade mark is active in a different field.
The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.
In addition, the actual use of the signs is irrelevant since the Office is bound by the goods and services listed in the signs and cannot analyse the actual use made of them (unless Article 42 EUTMR concerning proof of use is applicable, but it is not in this case).
Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 760 776. It follows that the contested trade mark must be rejected for all the contested services.
As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.