OPPOSITION No B 2 304 718

Promoconcert S.L., Pasaje del Jardinero, 19, 08197 Valldoreix (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative).

a g a i n s t

Wiener Johann Strauss Orchester, Lothringerstrasse 20, 1030 Wien, Austria (applicant).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 304 718 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 074 043. The opposition is based on Spanish trade mark registration No 2 772 371. 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 goods and services on which the opposition is based are the following:

Class 9:         Music recordings; image recordings; recording carriers, sound and image storage and reproduction; sound recording carriers; audio-visual recording carriers; magnetic data carriers; recording disks; compact disks; magnetic disks; optical disks; magnetic tapes; optical data carriers; magnetic data carriers; electronic publications.

Class 16:         Printed matter; catalogues, books, magazines, brochures.

Class 41:         Entertainment; cultural activities; orchestral services; music concert services; arranging and producing of music concerts; organisation of cultural performances; arranging and producing of shows; ticket reservation for shows; information related to entertainment; publication of books and magazines; publication of books and magazines on line; edition of texts; arranging and conducting of conferences, congresses and exhibitions for cultural purposes; music publishing; music recording; audio-visual recording production, sound and video recording production.

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.

Class 16:         Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 41:         Education; providing of training; entertainment; sporting and cultural activities.

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.

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.

Contested goods in Class 9

Magnetic data carriers, recording discs; compact discs, DVDs are identically contained in both lists of goods (including synonyms).

The contested other digital recording media includes as a broader category the opponent’s sound recording carriers. 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 apparatus for recording, transmission or reproduction of sound or images; data processing equipment, computers are complementary to the opponent’s magnetic data carriers. In addition, they are distributed through the same channels and target the same end consumer. Finally, they can be manufactured by the same producers. Therefore, they are highly similar.

The contested teaching apparatus and instruments are similar to a high degree to the opponent’s image recordings to the extent that the applicant’s goods include apparatus such as data processing apparatus, apparatus for the reproduction of sounds and images and the opponent’s data carriers contain a recorded content (they are not blank) which can relate to the provision of education. Therefore, these goods are complementary, they target the same consumers and they have the same distribution channels and producers.

The contested photographic, cinematographic, optical apparatus and instruments are complementary to the opponent’s magnetic data carriers. In addition, they are distributed through the same channels and target the same end consumer. Finally, they can be manufactured by the same producers. Therefore, they are similar.

The contested computer software is complementary to the opponent’s magnetic data carriers. There is a close correlation between software and recording devices, as very often recording devices come with their own integrated software. Consumers could be confused into believing that these goods coincide in origin or producer. Therefore, they are similar to a low degree.

The rest of the contested goods in Class 9, scientific, nautical, surveying, weighing, measuring, signalling, checking (supervision), life-saving apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; mechanisms for coin-operated apparatus; cash registers, calculating machines; fire-extinguishing apparatus, are apparatus and instruments with a different purpose than the opponent’s goods in Class 9. In addition, they are distributed through different channels and target different end consumers. Finally they are manufactured by different producers and are not complementary nor in competition. The same applies to the opponent’s goods and services in Class 16 and 41. Therefore, they are dissimilar.

Contested goods in Class 16

Printed matter is identically contained in both lists of goods.

The contested instructional and teaching material (except apparatus) includes, as broader category, the opponent’s printed matter, such as text books. 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 goods made from paper and cardboard, not included in other classes include, as broader category, the opponent’s printed matter; catalogues, books, magazines, brochures. 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 photographs have certain connections with the opponent’s magazines in the same class. The goods have, in a broad sense, the same nature (to the extent that the contested goods are images printed on paper and the opponent’s goods are printed materials) and may serve the same purpose. Indeed, the opponent’s goods are intended not only to entertain but also to be informative on a broad range of topics; on the other hand, the contested goods can also serve to communicate some information. Furthermore, they target the same consumers and have the same distribution channels. They are, therefore, considered similar to a low degree.

The rest of the contested goods in Class 16, paper, cardboard; bookbinding material; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes); printers' type; printing blocks, are different types of stationery, plastic materials and material used for printing. These goods have a different purpose than the opponent’s goods in Class 16. In addition, they are distributed through different channels and target different end consumers. Finally they are manufactured by different producers and are not complementary nor in competition. The same applies to the opponent’s goods and services in Class 9 and 41. Therefore, they are dissimilar.

Contested services in Class 41

Entertainment and culture activities are identically contained in both lists of services.

The contested education is similar to the opponent’s printed matter in Class 16. Teaching material (such as printed matter in Class 16) is essential to educational services (such as provision of educational courses, providing of training). 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 sporting activities are similar to the opponent’s cultural activities in Class 41. These services share the same purpose and are directed to the same public. Furthermore, they have the same provider.

The contested providing of training is similar to a low degree to the opponent’s publication of books and magazines. These services are complementary and can have the same distribution channels.

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.

The degree of attention is considered to be average.

3. The signs

STRAUSS FESTIVAL ORCHESTRA	Vienna Johann Strauss Orchestra
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 marks are word marks.

The earlier mark consists of the words STRAUSS, FESTIVAL and ORCHESTRA. These words will be understood in their English lexical meaning by the relevant public since they are identical or very similar to their Spanish counterparts. The word FESTIVAL is identical in both languages and in Spanish the word ORCHESTRA is ORQUESTA. STRAUSS will be understood as the surname of the famous Austrian composer, Johann Strauss.

The contested sign consists of the words VIENNA, JOHANN, STRAUSS and ORCHESTRA. As with the earlier mark the relevant public will understand the different elements in the mark in their English lexical meaning. The words JOHANN and STRAUSS will be understood as the name and surname of the famous Austrian composer. As stated above the word ORCHESTRA is very similar to the Spanish word with the same meaning. Furthermore, the word VIENNA is spelled VIENA in Spanish and will therefore be understood as the capital of Austria.

As a whole both marks will give the relevant public association to an orchestra who plays music created by (a) member(s) of the Strauss family with the difference that the earlier mark gives the impression that it is connected to a festival while the contested sign gives the impression that the orchestra merely plays music of Johann Strauss and is located in Vienna.

Considering the above, the marks have no elements which are more distinctive than others, because all their word elements are either weak describing the subject matter of the goods and services at hand (e.g. printed matter in Class 16 and entertainment in Class 41) or distinctive insofar as they bear no meaningful relationship to the goods or services (e.g. data processing equipment in Class 9).

Visually and aurally, the signs merely coincide in the words ‘STRAUSS’ and ‘ORCHESTRA’. However, they differ in the additional word ‘FESTIVAL’ in the earlier mark which separates these words from one another and in that the contested sign also contains the words ‘VIENNA’ and ‘JOHANN’ in first position. The fact that these two additional words in the contested sign are located in the beginning of the mark, distances this sign from the earlier mark considering that 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. Moreover, the two words that are shared by the two marks are located in different parts of both marks which give the marks a different structure and length and aural pattern and rhythm. In the earlier mark they are positioned in the beginning and end, with a third word in the middle, whilst in the contested sign these words are located in the end of the mark with two words before them.

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with an orchestra playing music of the Strauss family, the signs are at most conceptually similar to an average degree. Indeed, insofar as this concept is perceived as the subject matter of the goods and services it is of little impact and does not really serve to distinguish the marks conceptually.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of goods and services in question, namely all goods and services in Classes 9, 16 and 41.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

In the present case, the relevant goods and services have been found identical, similar to various degrees and dissimilar. The relevant goods and services target the public at large with an average degree of attention. The signs are visually and aurally similar to a low degree. Moreover, the signs are conceptually at most similar to an average degree. Furthermore, the earlier mark is considered to enjoy a low degree of distinctiveness in relation to the relevant goods and services.

Therefore, taking into account the low distinctive character of the earlier mark, it must be held that the significant visual and aural differences between the marks in question are such as to cancel out, to a large extent, their conceptual similarity.

It must therefore be held that the degree of similarity between the marks at issue is not sufficiently great to conclude that the public might believe that the goods an services in question come from the same undertaking or, as the case may be, from undertakings which are economically linked.

The applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim.

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.

Taking into account the differences described above, the Opposition Division considers that the similarities between the marks are clearly outweighed by their differences and that the marks are sufficiently different to avoid confusion between them.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Adriana VAN ROODEN

Benjamin Erik WINSNER

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.