OPPOSITION No B 2 751 447

Red Light Management, Inc., P.O. Box 1467, Charlottesville, Virginia 22902-1467, United States (of America) (opponent), represented by Mewburn Ellis LLP, City Tower 40 Basinghall Street, London EC2V 5DE, United Kingdom (professional representative)

a g a i n s t

Tribal Gathering Limited, 3 Nelson Street, London E1 2DL, United Kingdom (applicant).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 751 447 is partially upheld, namely for the following contested goods and services:

Class 9:        Sound recordings; video recordings; digital music [downloadable] from the Internet; video recordings [downloadable] from the Internet; all the aforesaid goods relating to music, entertainment and lifestyle, disc jockeys or fashion; computer games.

Class 41:        Entertainment and leisure services; nightclub and discotheque services; dance club services; arranging, operating and providing facilities for nightclubs and discotheques; publishing services; distribution of films and video tapes; production of films and video tapes; production of radio and television programmes; recording studio services; organisation of events; amusement arcade services; musical performances; booking agency services; cabaret services; casino services; cinema services; club entertainment services; organisation of dancing competitions; organisation and conducting of competitions; concert services; fashion show services; ticket reservation services; digital music [not downloadable] provided from the Internet; video recordings [not downloadable] provided from the Internet; organisation of music festivals.

Class 43:        Services for providing food and drink; restaurant, bar and catering services; cafe services; club services for the provision of food and drink; night club services (provision of food)

2.        European Union trade mark application No 14 501 969 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

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 14 501 969, namely against all the goods and services in Classes 9, 41 and 43. The opposition is based on European trade mark registration No 10 986 404. 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.

1. The goods and services

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

Class 35:         Management of performing artists; publicity agents; agents for performing artists; Advertising, promotional, publicity and marketing services; business management; business administration; marketing agency services; marketing assistance; promotional and marketing services; advisory and consultancy services relating to all the aforesaid services.

Class 41:        Entertainment services, Presentation and production of live performances; Production of music, Recording studio services, Music publishing and music recording services; Arranging of festivals for entertainment purposes; advisory and consultancy services relating to all the aforesaid services.

Class 45:        Licensing of intellectual property; Licensing services relating to music publishing; Copyright Management; advisory and consultancy services relating to all the aforesaid services.

The contested goods and services are the following:

Class 9:        Sound recordings; video recordings; tapes, audio and video cassettes, compact discs, records, cartridges, discs; digital music [downloadable] from the Internet; video recordings [downloadable] from the Internet; apparatus for recording, transmission, reproduction of sound or images; computers; all the aforesaid goods relating to music, entertainment and lifestyle, disc jockeys or fashion; computer games; photographic and cinematographic apparatus and instruments; video recorders and video reproducing apparatus; sunglasses; cases for sunglasses; mp3 players; compact disc players; tape recorders, radio, cassette tape recorders; parts and fittings included in Class 9 for all the aforesaid goods.

Class 41:        Entertainment and leisure services; nightclub and discotheque services; dance club services; arranging, operating and providing facilities for nightclubs and discotheques; publishing services; distribution of films and video tapes; production of films and video tapes; production of radio and television programmes; recording studio services; organisation of events; amusement arcade services; musical performances; booking agency services; cabaret services; casino services; cinema services; club entertainment services; organisation of dancing competitions; organisation and conducting of competitions; concert services; fashion show services; ticket reservation services; digital music [not downloadable] provided from the Internet; video recordings [not downloadable] provided from the Internet; organisation of music festivals.

Class 43:        Services for providing food and drink; restaurant, bar and catering services; booking and reservation services for restaurants; cafe services; club services for the provision of food and drink; night club services (provision of food).

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 Opposition Division notes that, although the term parts and fittings included in Class 9 for all the aforesaid goods in class 9, generally refer to any contested good listed before, it is, however, nonsensical in relation to recorded content (data) and computer games (software), since these goods are non-physical.

The contested sound recordings; video recordings; digital music [downloadable] from the Internet; video recordings [downloadable] from the Internet; all the aforesaid goods relating to music, entertainment and lifestyle, disc jockeys or fashion are recorded content (data) of music and/or videos. There is a certain connection to the opponent’s presentation and production of live performances; production of music, music publishing and music recording services, since those services and the contested goods may coincide in their purpose, the relevant public and their producers and providers. Therefore, they are similar.

The contested computer games and the opponent’s entertainment services can target the same relevant public and their producers and providers. Furthermore they are complementary. Therefore, they are similar to a low degree.

The remaining contested goods tapes, audio and video cassettes, compact discs, records, cartridges, discs; apparatus for recording, transmission, reproduction of sound or images; computers; all the aforesaid goods relating to music, entertainment and lifestyle, disc jockeys or fashion photographic and cinematographic apparatus and instruments; video recorders and video reproducing apparatus; sunglasses; cases for sunglasses; mp3 players; compact disc players; tape recorders, radio, cassette tape recorders; parts and fittings included in Class 9 for all the aforesaid goods are, however, dissimilar to all the opponent’s services in Classes 35, 41 and 45. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, the contested goods and the opponent’s services have different methods of use and are neither in competition nor necessarily complementary. Unlike the previously compared goods, the ones listed in this paragraph would not have the same producers/providers or the relevant public as the opponent’s services.

In particular and as regards tapes, audio and video cassettes, compact discs, records, cartridges, discs and contrary to the opponent’s opinion, those goods are (magnetic) data carriers, that is, several kinds of memory devices. However, a distinction must be made between (magnetic) data carriers and recorded content on such carriers. Although the Nice Classification does not state explicitly that magnetic data carriers should be interpreted as being blank, it does include the following in the explanatory note: ‘This Class includes, in particular: all computer programs and software regardless of recording media or means of dissemination, that is, software recorded on magnetic media or downloaded from a remote computer network.’ This effectively distinguishes between ‘content’ and ‘blank’ media and in the case of content emphasises the lesser relevance of the media or means of dissemination by using ‘regardless’.

This distinction also comports 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 characterises the product and the maker of the medium (CD) is irrelevant. It would be wrong to ignore this and to have a situation where a term covers both blank and recorded media; the difference between the two is too significant.

Therefore, for the purposes of the comparison of goods and services, if (magnetic) data carriers have to be considered to be blank, they cannot be found to be similar, not only to any recorded content they could contain, but also to even more remote services like the opponent’s services in Class 41 which cover entertainment, music performances and productions, etc.

The opponent also argues that it is a commonplace practice that artists or entertainment events endorse or license their brands in relation to sunglasses and various kinds of apparatuses, e.g. sound mixing equipment or MP3 players. However, even if that was the case, such practice rather applies to (economically) successful performers or entertainment events and is not the rule in the entertainment industry. The market reality is that equipment for producing music and, even more so sunglasses, are manufactured by specialised companies and not by performers themselves or companies organising entertainment events. The possible link between these goods and services is not sufficient to deem them similar even to a low degree. The arguments that the opponent puts forward could possibly be more relevant in case of reputed marks invoked under Article 8(5) EUTMR, however, this is out of scope of the current proceedings as the opponent did not claim its mark to be reputed.  

As regards the decisions of the Office referred to by the opponent to support its arguments of similarity of the goods and services at issue, the Opposition Division notes that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198). Therefore, and contrary to the opponent’s arguments, the above listed contested goods are considered dissimilar.

 

Contested services in Class 41

Entertainment and leisure services; recording studio services are identically contained in both lists of services (including synonyms).

The contested nightclub and discotheque services; dance club services; arranging, operating and providing facilities for nightclubs and discotheques; organisation of events; amusement arcade services; musical performances; cabaret services; casino services; cinema services; club entertainment services; organisation of dancing competitions; organisation and conducting of competitions; concert services; fashion show services; digital music [not downloadable] provided from the Internet; video recordings [not downloadable] provided from the Internet; organisation of music festivals are included in, or overlap with, the broad category of the opponent’s entertainment services. Therefore, they are identical.

The contested publishing services include, as a broader category the opponent’s music publishing services. 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 production of radio and television programmes overlap with the opponent’s production of live performances, since such live performances, e.g. live music concerts, can be broadcasted simultaneously via TV and/or radio. Therefore, they are identical.

The contested distribution of films and video tapes; production of films and video tapes and the opponent’s entertainment services have the same purpose. Furthermore, they may coincide in the relevant public and their providers. Therefore, they are similar

Finally, the contested booking agency services; ticket reservation services are complementary to the opponent’s entertainment services. Furthermore, they may coincide in the relevant public and their producers and providers. Therefore, they are similar.

Contested services in Class 43

The opponent’s services entertainment services in Class 41 contain as a broad category a variety of leisure services, inter alia, nightclub and discotheque services, aimed at providing entertainment within nightclubs by providing loud music (live or recorded) and dancing and also beverages. The market reality shows that some clubs may also have integrated or discrete dining areas. These services have a point in common with the contested services for providing food and drink; restaurant, bar and catering services; cafe services; club services for the provision of food and drink; night club services (provision of food), since the services may usually be provided contemporaneously and through the same supply channels and be directed to the same public. Furthermore, they can be complementary. Therefore, the services are similar.

Contrary to the opponent’s opinion, this finding, however, does not apply to the contested booking and reservation services for restaurants which have a rather different purpose than the opponent’s entertainment services in Class 41. Those services are usually not provided through the same distribution channels and they doe not target the same public. Furthermore, they are not in competition nor complementary. The services are dissimilar. For the same reasons this finding applies also in relation to the opponent’s other services in Classes 35, 41 and 45.

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 various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to above average depending on the price and frequency of purchasing of the goods and services.

3. The signs

RED LIGHT MANAGEMENT
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.

The common element ‘RED()LIGHT’, as a whole, is not meaningful in certain territories, for example, in those countries where English is not understood, such as in Greece. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the public.

The earlier mark is a word mark composed of the words ‘RED LIGHT MANAGEMENT’, and in the case of word marks it is the word as such that is protected, regardless its written form.

The contested sign is a figurative mark with the verbal element ‘The’ in very small white-to-pink fading letters and underneath the verbal element ‘REDLIGHT’ in much bigger uppercase white-to-pink fading letters. Both are depicted within a white label-like frame on a red-to-pink fading background.

The common verbal element ‘LIGHT’ of both marks has no meaning for the relevant public and is, therefore, distinctive. The word element ‘management’ will be associated with ‘organizing a business or company‘. However, since this meaning is not allusive or descriptive for the relevant goods and services it is distinctive to an average degree. Likewise, the common element ‘RED’ in both signs will be understood as the name of a colour, since it is a word of basic English vocabulary which will be understood throughout the whole European Union. However, since this meaning is not allusive or descriptive for the relevant goods (all being non physical) and the relevant services it is distinctive to an average degree. Therefore, the earlier mark has no elements that could be considered clearly more distinctive than other elements.

As regards the contested sign, it is composed of distinctive verbal elements and a less distinctive figurative element, namely the label-like frame of a mere decorative nature. Therefore, the verbal elements are more distinctive than the figurative element.

The verbal element ‘REDLIGHT’ in the contested sign is the dominant element as it is the most eye-catching, since it overshadows the other verbal element ‘The’ by virtue of its central position and size.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

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.

Visually, the signs coincide in the letters ‘REDLIGHT’. However, they differ in the space between ‘RED’ and ‘LIGHT’ in the earlier sign. They further differ in the presence of the additional words ‘MANAGEMENT’ in the earlier sign and ‘The’ in the contested one, the latter, however, being less legible and, thus, visually not dominant. Finally, the signs also differ in the graphical stylization (colours, typeface) and the figurative label-like element of the contested sign, which, however, is less distinctive.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘REDLIGHT’, present identically in both signs, since the space between them in the earlier mark is not influencing the pronunciation. The pronunciation differs in the sound of the letters ‛MANAGEMENT’ of the earlier sign, which have no counterparts in the contested mark. They may further differ in case the hardly legible letters ‘The’ of the contested mark will be pronounced. 

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

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘RED’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to an above 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.

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, 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 goods and services are partly identical and similar to various degrees and partly dissimilar. The signs are aurally, visually and conceptually similar to an above average degree.

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).

As stated above under part c), the verbal component of a mixed sign usually has a stronger impact on the consumer than the figurative component. This is more so in the present case where the figurative elements of the contested mark are limited to rather standard typographic characters and a less distinctive figurative element and are, therefore, less capable to influence the overall impression of the sign. Furthermore, the earlier mark is word mark. The visually dominant verbal element in the contested sign coincides almost identically with the earlier word mark’s two first words, the presence of a space between them leading only to a minor visual difference. Furthermore, since the first verbal element of the contested sign will most probably not be noticed due to its small size, the coincidences, therefore, affect the beginnings of both signs which, as stated above, are more important.

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). In the case at hand the above average degree of similarity between the signs outweighs the low similarity of part of the goods and services, even if the level of attention displayed is above average.

Finally, the applicant did not file any observations and/or arguments which could be taken into consideration.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Greek-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, even the ones to a low degree, 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.

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

Octavio MONGE GONZALVO

Konstantinos MITROU

Vita VORONECKAITE

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.