OPPOSITION No B 2 751 652

Gruner + Jahr GmbH & Co KG, Am Baumwall 11, 20459 Hamburg, Germany (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft Mbb, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

VIVA Media Group AB, Stålgatan 20, 754 50 Uppsala, Sweden (applicant), represented by Ports Group AB, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative).

On 07/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 751 652 is partially upheld, namely for the following contested goods and services:

Class 9:         Application software; programmable digital read-out units; computer search engine software; computer e-commerce software; software for commerce over a global communications network.

Class 35:         Provision of advertising space, time and media; advertising via electronic media and specifically the internet; processing of business survey results; presentation of goods on communication media, for retail purposes; digital advertising services; search engine optimisation; search engine optimisation for sales promotion; consultancy relating to search engine optimisation; analysis of business information; analysis of market research statistics; analysis of market research data; marketing research and analysis; analysis relating to marketing; analysis of market research data and statistics; business advice relating to strategic marketing; marketing; conducting market surveys; marketing advice; marketing forecasting; market campaigns; provision of marketing reports; marketing assistance; providing business information in the field of social media; providing marketing consulting in the field of social media; organisation of exhibitions and events for commercial or advertising purposes; analysis of advertising response; business advice relating to marketing; statistical analysis and reporting; presentation of companies on the Internet and other media; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes.

2.        European Union trade mark application No 15 409 873 is rejected for all the above goods and services. It may proceed for the remaining services.

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 15 409 873. The opposition is based on, inter alia, German trade mark registration No 30 558 213. 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 German trade mark registration No 30 558 213.

1. The goods and services

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

Class 8:         Table cutlery.

Class 9: Magnetic, optical, magneto/optical, electronic image/sound recording carriers and data memories, in particular CD, CD ROM, CDI, DVD, floppy disks, as included in Class 9.

Class 16: Printed matter, photographs.

Class 21:         Household or kitchen utensils and containers (not of precious metal or coated therewith); glassware, porcelain and earthenware included in this class.

Class 32:  Beer.

Class 33: Alcoholic beverages (except beer and vines).

Class 35:         Advertising, namely creation and publication of advertisements in off/ or online media.

Class 39: Travel arrangement.

Class 41: Services of a publishing house (except printing services), publication and editing of products of a publishing house; sporting and cultural activities.

Class 43: Temporary accommodation.

The contested goods and services are the following:

Class 9:         Application software; programmable digital read-out units; computer search engine software; computer e-commerce software; software for commerce over a global communications network.

Class 35:         Provision of advertising space, time and media; advertising via electronic media and specifically the internet; processing of business survey results; presentation of goods on communication media, for retail purposes; digital advertising services; data processing; search engine optimisation; search engine optimisation for sales promotion; consultancy relating to search engine optimisation; analysis of business information; analysis of market research statistics; analysis of market research data; marketing research and analysis; analysis relating to marketing; analysis of market research data and statistics; business advice relating to strategic marketing; marketing; conducting market surveys; marketing advice; marketing forecasting; market campaigns; provision of marketing reports; marketing assistance; providing business information in the field of social media; providing marketing consulting in the field of social media; organisation of exhibitions and events for commercial or advertising purposes; analysis of advertising response; business advice relating to marketing; statistical analysis and reporting; presentation of companies on the Internet and other media; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes.

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

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

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 programmable digital read-out units overlap with the opponent’s magnetic, electronic image/sound recording carriers and data memories in Class 9, since the latter may have as an integrated part the former goods. Therefore, these goods are considered identical.

The contested application software; computer search engine software; computer e-commerce software; software for commerce over a global communications network are similar to a low degree to the opponent’s magnetic carriers and data memories in Class 9, since they can coincide in producer. Furthermore they are complementary.

Contested services in Class 35

The contested provision of advertising space, time and media; advertising via electronic media and specifically the internet; digital advertising services; marketing; market campaigns; presentation of companies on the Internet and other media; providing information about products via telecommunication networks for advertising and sales purposes; organisation of exhibitions and events for commercial or advertising purposes; presentation of goods on communication media, for retail purposes; search engine optimisation; search engine optimisation for sales promotion are similar to at least a high degree to the opponent’s creation and publication of advertisements in off/ or online media in Class 35. These services have the same nature, purpose and target the same consumers and come from the same undertakings.

The contested consultancy relating to search engine optimisation; analysis of advertising response; processing of business survey results; analysis of business information; analysis of market research statistics; analysis of market research data; marketing research and analysis; analysis relating to marketing; analysis of market research data and statistics; statistical analysis and reporting; business advice relating to strategic marketing; conducting market surveys; marketing advice; marketing forecasting; provision of marketing reports; marketing assistance; providing business information in the field of social media; providing marketing consulting in the field of social media; business advice relating to marketing are usually rendered by companies specialised in this specific field such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand market share. These services include any ‘consultancy’, ‘business research’, ‘analysis’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to increase market share; how to deal with competitors; how to develop new products; how to communicate with the public; how to market good and services; how to research consumer trends; how to launch new products; how to create a corporate identity; etc. When comparing these services with the opponent’s creation and publication of advertisements in off/ or online media in Class 35, it should be noted that advertising is an essential tool in business management, because it makes the business itself known in the market. The purpose of advertising services is ‘to reinforce the [business’s] position in the market’ and the purpose of business management services is to help a business ‘to develop, expand and acquire market share’. There is no clear-cut difference between ‘reinforcing a business’s position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in that advice, because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as a part of their services and, therefore, the relevant public may believe that these two services have the same professional origin. Consequently, considering the above, these services are similar to a low degree.

The above mentioned reasoning cannot apply insofar as the contested data processing is concerned. Data processing is the creation and implementation of technology that automatically processes data. Thus, it cannot be considered being business management services, as alleged by the opponent, but it is an office function. The Opposition Division would like to draw the opponent’s attention to the fact that office functions cover services which are aimed at performing day-to-day operations (which definitely include different types of data processing) that are required by a business to achieve its commercial purpose. Thus, it is dissimilar to the opponent’s creation and publication of advertisements in off/ or online media in Class 35 and to the opponent’s other goods and services, as they have nothing relevant in common; their nature and purpose differs as do their producers, consumers and distribution channels. Furthermore, they do not share a complementary nature nor are they in competition with one another. In fact, contrary to the opponent’s assertions, the contested services have more of an executive nature and will not be associated with either business management as such or the opponent’s advertising related services, namely creation and publication of advertisements in off/ or online media in Class 35. A fortiori, they are dissimilar to the opponent’s goods and services in Classes 8, 9, 16, 21, 32, 33, 39, 41 and 43.

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, for example in the advertising and business management fields. The degree of attention may vary from average to high depending on the cost and degree of specialisation of the goods and services. Moreover, as far as the services are concerned, they could have some consequences for the functioning of a business.

3. The signs

VIVA	VIVA MEDIA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier mark is a word mark composed of the term ‘VIVA’ which does not have any obvious meaning for the relevant public in relation to the services at issue. Therefore, it is distinctive to an average degree.

The contested sign is a word mark made up of two words ‘VIVA’ and ‘MEDIA’. The term ‘VIVA’ is meaningless for the relevant public, whereas the term ‘MEDIA’ is the plural form of the German word ‘MEDIUM’ having the same meaning. Therefore, it is reasonable to assume that a majority of the relevant public will understand this term as a reference to television, radio, newspapers and magazines. Consequently, since its meaning might be very broad, it is considered rather weak in relation to the goods and services at stake, as most likely it will be perceived as related to the content or mode of their transmission of the respective goods and services.

Visually and aurally, the signs coincide in the word/ sound of ‘VIVA’ which not only forms the whole earlier mark, but also the first element of the contested sign. They differ in the appearance and pronunciation of the additional verbal element of the contested mark, namely ‘MEDIA’. However, since this element is considered rather weak in relation to the goods and services concerned at least by a majority of the relevant public, therefore, it has a limited impact of the consumer’s visual and aural perception of the marks.

Moreover, it must be taken into account that the common element ‘VIVA’, as the first element of the contested sign, will catch the primary attention of the consumer when encountering the mark. This is justified by the fact that 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. Consequently, the fact that the first verbal element of the contested sign coincides with the earlier mark has to be taken into account when assessing the likelihood of confusion between the marks.

Hence, the marks are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory might perceive the meaning of one of the elements of the contested sign, as explained above, which has a limited impact on the comparison due to its rather weak character, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded, the contested goods and services are partly similar to different degrees and partly dissimilar to the opponent’s goods and services and are directed at the public at large and at business customers whose level of attention varies from average to high. Furthermore, the earlier mark has a normal degree of distinctiveness. The signs are visually and aurally similar to a high degree whereas conceptually they are not similar. The signs have the distinctive element ‘VIVA’ in common. This element forms the entire earlier mark and plays an independent distinctive role at the beginning of the contested sign.

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). Having said that, it is stressed that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In addition, it should be stressed that 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers may reasonably assume that the signs at stake distinguish different lines of goods/services provided by the same undertaking or from connected entities.

In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the services may be offset by a greater degree of similarity between the marks, in the case at hand, the high similarity of the marks offsets the low degree of similarity between some of the goods and services. This reasoning does not apply insofar as the dissimilar services are concerned.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s German trade mark registration 30 558 213.

It follows from the above that the contested trade mark must be rejected for application software; programmable digital read-out units; computer search engine software; computer e-commerce software; software for commerce over a global communications network in Class 9 and provision of advertising space, time and media; advertising via electronic media and specifically the internet; processing of business survey results; presentation of goods on communication media, for retail purposes; digital advertising services; search engine optimisation; search engine optimisation for sales promotion; consultancy relating to search engine optimisation; analysis of business information; analysis of market research statistics; analysis of market research data; marketing research and analysis; analysis relating to marketing; analysis of market research data and statistics; business advice relating to strategic marketing; marketing; conducting market surveys; marketing advice; marketing forecasting; market campaigns; provision of marketing reports; marketing assistance; providing business information in the field of social media; providing marketing consulting in the field of social media; organisation of exhibitions and events for commercial or advertising purposes; analysis of advertising response; business advice relating to marketing; statistical analysis and reporting; presentation of companies on the Internet and other media; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes in Class 35 that were found to be identical or similar to different degrees to those of the earlier trade mark.

The remaining contested services, namely data processing in Class 35 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 services cannot be successful.

For the sake of completeness, the Opposition Division points out that the opponent has also based its opposition on German trade mark registration No 30 558 214 for the figurative mark   for not only the same goods and services as the earlier examined mark, but also for goods in Classes 29 (meat, fish, poultry and game, meat extracts; preserved, dried and cooked fruits and vegetables; jellies; jams, compotes, eggs, milk and milk products; edible fats and oils), 30 (coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread; honey, golden syrup; yeast, baking-powder; salt, mustard, vinegar, sauces (condiments), spices), 31 (fresh fruits and vegetables; animal foodstuffs), 32 (mineral waters and aerated waters and other non-alcoholic beverages; juices and fruit juices; syrups and other preparations for making beverages) and services in Classes 35 (advertising, namely the design of advertisements in offline and online media) and 43 (services for providing food and drink; catering).

This earlier right invoked by the opponent is similar to the contested mark. Despite the fact that the figurative earlier mark is registered for more goods and services than the above examined one, the reasoning on lack of similarity of the compared data processing vs the above listed additional goods and services covered by this earlier mark is the same. These goods and services have nothing relevant in common; their nature and purpose differs as do their producers, consumers and distribution channels. Furthermore, they do not share a complementary nature nor are they in competition with one another. Therefore, the outcome cannot be different; there is no likelihood of confusion in relation to data processing.

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

Chantal VAN RIEL

Klaudia MISZTAL

Saida CRABBE

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.