OPPOSITION No B 2 730 979
Umeus ManCo ApS, Skodsborgvej 48 A, Søllerød, 2830 Virum, Denmark (opponent), represented by Høiberg P/S, Adelgade 12, 1304 Copenhagen K, Denmark (professional representative)
a g a i n s t
Patrick Scanlan, Bishop Street, Newcastlewest Limerick None, Ireland (applicant)
On 21/03/2017, the Opposition Division takes the following
1. Opposition No B 2 730 979 is upheld for all the contested services.
2. European Union trade mark application No 15 381 239 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the services of European Union trade mark application No 15 381 239. The opposition is based on European Union trade mark registration No 14 898 845. 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 services
The services on which the opposition is based are the following:
Class 41: entertainment; sporting and cultural activities; arranging of music events, sports events, entertainment events, social and entertainment activities.
The contested services are the following:
Class 45: On-line social networking services.
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 services in Class 45
The contested on-line social networking services are all related to online social networking, namely the provision of a supportive system of sharing information and building relationships among individuals and groups that share the same interests, activities, backgrounds or real-life connections. The core part of these services is to allow communications between people, however, nowadays people search for contacts in online social networks not only as a way to build relationship but also for fun. The new trend of using online social networking also as a form of entertainment is confirmed by the arrival on the market of online entertainment in the form of online games that incorporate social features such as interactions between users through video chat communications, forums, multiplayer gaming, reviews, ratings, and so on. Therefore, considering the connection between online social networking and online entertainment as regards their purpose and the fact that they target to the same public and are offered through the same channels, the contested services are similar to a low degree to the opponent’s entertainment.
- The signs
Earlier trade mark
The signs are identical.
- Global assessment, other arguments and conclusion
The relevant services are similar to a low degree, the marks are identical.
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).
Bearing in mind the above principle and considering the identity between the signs, the opposition is successful, as the identity between the marks is enough for the consumers to be confused about the commercial origin of the relevant services found to be similar to a low degree.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 898 845. It follows that the contested trade mark must be rejected for all the contested services.
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
IBARRA DE DIEGO
Angela DI BLASIO
BENEDETTI – ALOISI
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.