OPPOSITION No B 1 752 347

Black Entertainment Television LLC d/b/a BET Limited, One Bet Plaza, 1235 W. Street N.E., Washington D.C. 20018, United States of America (opponent), represented by Maucher Jenkins, 26 Caxton Street, London SW1H 0RJ, United Kingdom (professional representative)

a g a i n s t

Robert Gorham, 24 Elsie Road, East Dulwich, London, SE22 8DX, United Kingdom, (applicant), represented by James Love Legal Limited, One Sceptre House, Hornbeam Square North, Harrogate HG2 8PB, United Kingdom (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 752 347 is partially upheld, namely for the following contested goods and services:

Class 9:  Sound recordings; carriers including records, discs, tapes, cassettes, cartridges and cards bearing sound recordings; interactive compact discs; CD-ROMs; digital music provided from the Internet; digital music provided from Internet web sites; DVD's; electronic publications; downloadable sound recordings, or publications in MP3 or other electronic form supplied on-line or from facilities provided on the Internet; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions.

Class 16:        Printed matter; brochures; books; booklets; pamphlets; programs; stationery; posters; diaries; flyers; leaflets; tickets and passes; printed publications; newsletters; magazines; brochures; albums; promotional literature; bookmarks; erasers; notepads; pens and pencils; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions.

Class 41:         Music entertainment services in the nature of record label services, disc jockey services, production of musical recordings; arranging and conducting musical events, namely live concerts; entertainment services featuring live presentation of musical sound recordings; arranging, conducting, organising and management of music festivals; digital music provided via the Internet which is not downloadable; none of the aforesaid services relating to gospel music or to singing competitions or talent competitions.

2.        European Union trade mark application No 9 206 079 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 all the goods and services of European Union trade mark application No 9 206 079. The opposition is based on European Union trade mark registration No 6 747 984. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR AND LIKELIHOOD OF

CONFUSION – ARTICLE 8(1)(b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

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 are the following:

Class 41:        Education and entertainment services; production and distribution of motion pictures, comedy, musical and dramatic television series, documentaries, sporting events and other attractions rendered through media of television, cable and satellite systems and/or via the Internet; providing information in the field of entertainment and education rendered via the Internet.

The contested goods and services after the limitation done by the applicant on the 24/11/2016 are the following:

Class 9:        Sound recordings; carriers including records, discs, tapes, cassettes, cartridges and cards bearing sound recordings; interactive compact discs; CD-ROMs; digital music provided from the Internet; digital music provided from Internet web sites; record bags; apparatus and equipment for reproducing sound; DVD's; electronic publications; downloadable sound recordings, or publications in MP3 or other electronic form supplied on-line or from facilities provided on the Internet; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions.

Class 16:        Printed matter; brochures; books; booklets; pamphlets; programs; photographs; stationery; posters; cards; postcards; greetings cards; diaries; calendars; flyers; leaflets; tickets and passes; printed publications; newsletters; magazines; brochures; albums; promotional literature; stickers and transfers; temporary tattoos; bookmarks; erasers; notepads; pens and pencils; paper or card beer mats and coasters; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions.

Class 41:         Music entertainment services in the nature of record label services, disc jockey services, production of musical recordings; arranging and conducting musical events, namely live concerts; entertainment services featuring live presentation of musical sound recordings; arranging, conducting, organising and management of music festivals; digital music provided via the Internet which is not downloadable; none of the aforesaid services relating to gospel music or to singing competitions or talent competitions.

An interpretation of the wording of the applicant’s list of goods and services is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of services, in Class 41, to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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

The contested sound recordings; carriers including records, discs, tapes, cassettes, cartridges and cards bearing sound recordings; interactive compact discs; CD-ROMs; DVD's; electronic publications; downloadable sound recordings, or publications in MP3 or other electronic form supplied on-line or from facilities provided on the Internet; digital music provided from the Internet; digital music provided from Internet web sites; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions and the opponent’s education services are complementary, as it is common to offer educational materials using the  opponent’s goods as learning support materials. Given the close link between the goods and services in question as regards their relevant public, common origin, distribution channels, and the fact that the goods complement the services, these goods and services are considered similar.

The contested record bags; apparatus and equipment for reproducing sound; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions are accessories that normally fulfil another useful or necessary function than the opponent’s services. They are not produced by the same company that offers entertainment or educational services. They differ in nature, method of use. Therefore, as they do not have the same producers, distribution channels and are neither in competition nor complementary, they are dissimilar.

Contested goods in Class 16

The contested printed matter; books; printed publications; newsletters; magazines; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions are essential to the opponent’s education services. Therefore, these goods and services are complementary. This is because in order to supply educational services it is both helpful and usual to use educational textbooks, teaching manuals, etc. Service providers offering any kind of course often hand out these goods to participants as learning supports. Given the close link between the goods and services in question as regards their relevant public, common origin, distribution channels, and the fact that the goods complement the services, these goods and services are considered similar.

The contested brochures; booklets; pamphlets; programs; posters; flyers; leaflets; tickets and passes; brochures; albums; promotional literature; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions and the opponent’s services providing information in the field of entertainment and education rendered via the Internet may be provided by the same company. Although they have a different nature, their purpose is the same, to offer useful information about entertainment. They may have the same providers and target the same consumers. Therefore, they are similar at least to low degree.

The contested stationery; diaries; bookmarks; erasers; notepads; pens and pencils; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions and the opponent’s education services have the same purpose and target the same consumers. Therefore, they are considered similar to low degree.

The contested photographs; cards; postcards; greetings cards; calendars; stickers and transfers; temporary tattoos; paper or card beer mats and coasters; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions and the opponents services. These contested goods have nothing relevant in common with any of the opponent’s services. They differ in nature, purpose and method of use. They do not have the same producers, providers or distribution channels and are neither in competition nor complementary. Therefore, they are dissimilar.

Contested goods in Class 41

The contested music entertainment services in the nature of record label services, disc jockey services, production of musical recordings; arranging and conducting musical events, namely live concerts; entertainment services featuring live presentation of musical sound recordings; arranging, conducting, organising and management of music festivals; none of the aforesaid services relating to gospel music or to singing competitions or talent competitions are included in the broad category of the opponent’s entertainment services. Therefore, they are identical.

 

The contested digital music provided via the Internet which is not downloadable; none of the aforesaid services relating to gospel music or to singing competitions or talent competitions are included in the broad category of the opponent’s production and distribution of musical series and other attractions rendered through media of television, cable and satellite systems and/or via the Internet. Therefore, they are identical.

3. The signs

SUNDAY BEST	SUNDAY BEST
Earlier trade mark	Contested sign

The signs are identical.

4. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods and services, namely music entertainment services in the nature of record label services, disc jockey services, production of musical recordings; arranging and conducting musical events, namely live concerts; entertainment services featuring live presentation of musical sound recordings; arranging, conducting, organising and management of music festivals; digital music provided via the Internet which is not downloadable; none of the aforesaid services relating to gospel music or to singing competitions or talent competitions, in Class 41 are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these services.

Furthermore, the contested goods, namely sound recordings; carriers including records, discs, tapes, cassettes, cartridges and cards bearing sound recordings; interactive compact discs; CD-ROMs; digital music provided from the Internet; digital music provided from Internet web sites; DVD's; electronic publications; downloadable sound recordings, or publications in MP3 or other electronic form supplied on-line or from facilities provided on the Internet; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions, in Class 9; printed matter; brochures; books; booklets; pamphlets; programs; stationery; posters; diaries; flyers; leaflets; tickets and passes; printed publications; newsletters; magazines; brochures; albums; promotional literature; bookmarks; erasers; notepads; pens and pencils; none of the aforesaid goods relating to gospel music or to singing competitions or talent competitions, in Class 16, were found to be similar to various degrees to those covered by the earlier trade mark.

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).

Given the identity of the signs, the Opposition Division finds that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods and services, including the goods considered similar to low degree.

Some of the contested goods in Classes 9 and 16 are dissimilar. As the 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.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 02/05/2016 after several extensions the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 02/07/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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 will 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

Keeva DOHERTY

María Clara  IBÁÑEZ FIORILLO

Gailé SAKALAITE

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.